Motorola Mobility suffered a drubbing in its defense against Microsoft's Android-related patent infringement claims. According to an 88-page claim construction order of April 22 that was recently published, an ITC judge -- Administrative Law Judge Theodore R. Essex -- rejected Motorola's proposals to narrow the scope of Microsoft's asserted patents in 17 out of 22 instances. The judge furthermore accepted 12 definitions on which the parties had agreed.
In patent infringement disputes, claim construction is a milestone of major importance. It precedes the determination of whether any valid patent claims are infringed. Any of the wordings in the patent claims that have a less than clear-cut meaning can either be construed more broadly, which makes it more likely that a patent is found to read on the accused products, or more narrowly, which could enable a defendant to escape infringement.
Eight months into the process (which is roughly half the time required by the ITC to take a final decision on a possible import ban), things don't look too good for Motorola -- nor for the Android ecosystem at large, as other Android device makers would face the same or greater challenges if they had to defend themselves against Microsoft.
Microsoft's asserted patents and the related infringement allegations appear rather strong -- in fact, much more solid than the claims made by Apple and Nokia in their ITC battles against each other. At this stage of the process, Nokia had already dropped one patent from its complaint, and Apple even felt forced to give up four of those at issue in ITC investigation no. 337-TA-710. Later they both lost even more of them. By contrast, all of Microsoft's nine asserted patents are still standing, and I haven't seen any indication in the ITC docket that would suggest an impending withdrawal of any Microsoft patent.
It's worth noting that Motorola is represented by the law firm of Quinn Emanuel and, in particular, that firm's Charles Verhoeven, a true rock star among patent litigators in the United States. In other words, Motorola's difficulties in defending itself can't just be blamed on its attorneys.
As I reported yesterday, Microsoft and Motorola are also embroiled in various federal lawsuits, and while nothing substantive has happened in them yet, Motorola's attempts to shift the center of gravity of that dispute to the Western District of Wisconsin have failed. Motorola has to defend itself mostly (or even entirely, subject to the outcome of another transfer motion) in Microsoft's home state of Washington. Against the assertion of three Motorola video codec patents, Microsoft has brought defenses and counterclaims related to possible contractual obligations on Motorola's part to license those patents on reasonable and non-discriminatory terms -- a circumstance that could, as the court pointed out, limit the amount of damages Motorola could obtain in a best-case scenario.
While we are still a few quarters away from formal decisions, I think Motorola increasingly comes under pressure to settle. Furthermore, these developments probably strengthen those who champion (inside Motorola Mobility) the idea of replacing Android with a new internally-developed operating system. There's no way to be safe from patent assertions with any smartphone operating system, but Android with its 44 related lawsuits and Google's purely opportunistic approach is currently a surefire way to get into IP trouble...
The score card of a drubbing
If you're interested in more detail concerning the judge's claim construction decision, I have summarized it like an annotated score card of a ball game. That format isn't meant to downplay the seriousness of the situation, but I thought it's a presentation with which many people are familiar. Note that I'm against software patents, so I'm not "cheering" on anyone here like in a soccer game -- if it were up to me, those patents wouldn't exist and there wouldn't even be a dispute over them. But I do want to convey the information in an understandable and maybe even entertaining fashion.
By the way, I already mentioned the claim construction order toward the end of yesterday's post on Microsoft v. Motorola, but I had not yet finalized my analysis of the 88-page order and other pertinent documents. Here it is:
'517 and '352 patents (FAT patents)
"short filename"
Microsoft (like in most cases) supported the ordinary meaning of the words and proposed an alternative, more verbose definition. Motorola wanted to introduce a more limiting definition concerning the maximum length and the characters of which the filename can consist, but the judge found "that it fails for several reasons."
Microsoft 1, Motorola 0
"long filename for the file"
Microsoft proposed a lengthy but inclusive definition ("some or all..."). Motorola wanted a shorter but more limiting definition. The judge adopted Microsoft's proposal.
Microsoft 2, Motorola 0
"a second operating system that only supports short filenames"
Microsoft and Motorola agreed on a definition.
score unchanged (Microsoft 2, Motorola 0)
"location of the file"
Microsoft proposed what every C or assembly language programmer would consider reasonable: "a pointer to the beginning of the data contained in the file". Motorola wanted to set a higher hurdle, requiring information on the location of all parts of the file. The judge adopted Microsoft's proposal. As a programmer, I have to agree.
Microsoft 3, Motorola 0
"a next portion of the long filename"
Microsoft and Motorola agreed on "the next group of characters comprising the long filename."
score unchanged (Microsoft 3, Motorola 0)
'054 patent (synchronization patent)
"while the client is on-line with the server"
Microsoft supported the plain meaning or, alternatively, "while the client is able to communicate with the server", whereas Motorola wanted to limit this to situations in which "the client is communicating with the server". The judge supported Motorola. I personally think that the truth would have been in the middle between the two definitions and the judge should have developed his own definition. Being able to communicate with the server may have been a bit too broad, but "is communicating" is too narrow in my view because in on-line communications it's not just about the period in which data is actually being sent or received -- there are also connectionless packet-based protocols and architectures in which a connection is on-again-off-again like a Hollywood relationship. At any rate, this was Motorola's first goal.
Microsoft 3, Motorola 1
"placing the client in an off-line condition with respect to the server"
Microsoft supported the plain meaning or, alternatively, "the client is unable to communicate with the server", whereas Motorola wanted to define this as "placing the client in a state such that it is not communicating with the server". The judge's own construction, "placing the client in a state in which it is not immediately capable of actively communicating with a server", doesn't bear any significant resemblance to Motorola's proposal. It's essentially a more precisely-phrased version of Microsoft's proposal, and the words inserted by the judge ("immediately", "actively") don't look to me like they serve Motorola's purposes in the slightest, given the context of this synchronization patent.
Microsoft 4, Motorola 1
"the synchronization being performed at least in part by transmitting [...]"
Microsoft supported the plain meaning. So did the judge, who disagreed with Motorola that synchronization would be performed by the server, given that the client's involvement is undeniable based on the language of the patent. If Motorola had won this one, it might have solved its problem with that patent -- but it didn't.
Microsoft 5, Motorola 1
"resource state information representing [...]"
Microsoft and Motorola agreed on "information identifying the state of the resource stored at the server at a selected moment".
score unchanged (Microsoft 5, Motorola 1)
"the resource"
It's hard to imagine a more fundamental term that might have to be construed. It is very broad. Microsoft supported a list of terms found in another patent application by the same inventors, which said "data, data objects, databases, folders, systems, programs etc. that may be stored at the client." Motorola wanted a more narrow definition ("a data object, such as a word processing document, email message, or spreadsheet"). The judge agreed with Microsoft.
Microsoft 6, Motorola 1
'566 patent (meeting scheduler patent)
"mobile device"
Microsoft and Motorola agreed that this should not include a laptop computer.
score unchanged (Microsoft 6, Motorola 1)
'746 patent (flash erasure patent)
"physical sectors [that] are free to receive data"
Microsoft and Motorola agreed that this means "physical sectors that are available to accept data without the need to be erased first."
score unchanged (Microsoft 6, Motorola 1)
"erase operation"
Microsoft proposed the plain meaning or "erasing or clearing". The judge agreed that the plain meaning would work, and that Microsoft's alternative definition is also appropriate. Motorola's first choice was an unbelievably limiting definition ("setting all the bits of one or more blocks to logical 1"), or alternatively, "setting one or more blocks to a condition allowing such blocks to receive new data." But the judge agreed that the patent wasn't tied to such a specific definition of what would have to be done for the purpose of erasing or clearing a block.
Microsoft 7, Motorola 1
"physical sector"
Microsoft proposed the plain meaning or "portion of a block". The judge concurred on the latter and didn't support Motorola's proposal ("the unit of memory on which read and write operations are performed").
Microsoft 8, Motorola 1
"block"
Microsoft proposed the plain meaning or "contiguous data on a data storage device". Motorola wanted a lengthy and more limiting definition. The judge defined this as "units of memory organized into a larger collective unit". On the surface that sounds a lot like Motorola's proposal, which was "the unit of memory on which the erase operation is performed, comprising a plurality of sectors", but the fact that the judge used some of Motorola's preferred words does not change the fact that the meaning is now closer to what Microsoft wanted: Motorola wanted to introduce the criterion that this would relate to the unit "on which the erase operation is performed", but that one was thrown out. Arguably, the judge's definition is even broader than Microsoft's proposal, which contained the word "contiguous", which is at least theoretically another criterion. Since breadth favors Microsoft, this is more of a goal for them than for Motorola.
Microsoft 9, Motorola 1
"physical sector address"
Microsoft and Motorola agreed on "number(s) that represent the location of a 'physical sector'". I would agree, as a programmer, that an address is, in this context, one or more numbers that specify a location.
score unchanged (Microsoft 9, Motorola 1)
"insufficient in quantity to receive write requests [...]"
Microsoft and Motorola agreed on "not enough to write the data requested by the file system".
score unchanged (Microsoft 9, Motorola 1)
'762 patent (radio interface layer patent)
"without knowledge of the [...] network"
Microsoft supported the plain meaning, "without knowledge of the telephony radio or cellular network", or an alternative wording ("independent of a particular radio or a particular network"), while Motorola wanted a more limiting definition. The judge chose the plain meaning, which was Microsoft's first choice.
Microsoft 10, Motorola 1
"proxy layer" and "proxy"
Those are two terms but closely related, and the judge discussed them in the same section. Microsoft supported the plain meaning or alternatively wanted a proxy to be considered "an intermediary" and a "proxy layer" to be defined as "software that acts as an intermediary". Motorola wanted a definition that would have limited this to telephony functions (as opposed to a general-purpose proxy) and would have required such a software module to reside "just below the application modules". The judge found that Motorola's arguments failed and agreed with Microsoft, saying that the plain meaning works fine and Microsoft's alternative definition is also accurate. While these are two terms, they are related and were decided by the judge as a single issue, which is why I will count this as only one goal in Microsoft's favor (though others might count two goals).
Microsoft 11, Motorola 1
"driver layer" and "radio driver"
Those are again two closely related terms that the judge combined. Microsoft supported the plain meaning or alternatively wanted a "driver layer" to be considered "software that communicates with hardware" (as a programmer, I think that's what it is) and a "radio driver" to be defined as "software that communicates with a radio". Motorola tried a similar approach as with the two previously discussed terms, and the judge again dismissed it and sided with Microsoft. In my view, the whole discussion over those terms would probably have been easier if Microsoft's patent applications had avoided the word "layer" in the first place. That's a marketing buzzword that can (except under special circumstances where it's really about where certain software resides from an architectural point of view) introduce a lot of unnecessary confusion into patent construction.
While these are two terms, they are related and were decided by the judge as a single issue, which is why I will count this as only one goal in Microsoft's favor.
Microsoft 12, Motorola 1
"hardware independent"
Microsoft and Motorola agreed on "without regard to a specific hardware implementation". I'm not sure I would support that definition in all instances in which "hardware independent" appears, but in the context of this particular patent it's probably fine.
score unchanged (Microsoft 12, Motorola 1)
'376 patent (state change notification patent)
"data store"
Microsoft supported the plain meaning or just "something that stores data", while Motorola offered two more limiting definitions that introduced additional criteria. The judge chose the plain and broad meaning, and agreed that Microsoft's alternative wording reflected it accurately, too.
Microsoft 13, Motorola 1
"notification broker"
Microsoft supported the plain meaning or just "software that manages notifications", while Motorola proposed "an underlying driver responsible for adding, updating and removing data from the data store". The judge chose Motorola's language and inserted "at least" (between "for" and "adding"). This is a win for Motorola, and the insertion of "at least" doesn't hurt Motorola (though I'm not sure it has any useful effect either).
Microsoft 13, Motorola 2
"determine"
Microsoft supported the plain meaning or "identify or receive notice of", while Motorola proposed "perform an operation to make a decision". The judge chose the plain meaning, which was Microsoft's preference.
Microsoft 14, Motorola 2
"determine"
Microsoft and Motorola agreed on "a state property for which a client has requested notifications".
score unchanged (Microsoft 14, Motorola 2)
'910 patent (contact database change patent)
"contact card"
Microsoft supported the plain meaning or "information related to a contact", but Motorola convinced the judge that "a structure with data fields that can contain data related to a contact" was appropriate. The judge found that the patent clearly relates to contact cards consisting of data fields.
Microsoft 14, Motorola 3
"replacing the existing contact card [...]" and "an existing [...] is replaced"
Microsoft supported the plain meaning or other wordings ("saving updated information in the contact database for an existing contact card", "changing information in a contact card"). Motorola wanted to narrow this down to a particular implementation strategy in which the existing contact card would be deleted and then substituted. The judge supported the plain meaning. Knowing that there are different ways for how to replace data in a database, I, too, believe Motorola's proposal was too limiting.
While these are two terms, they are related and were decided by the judge as a single issue, which is why I will count this as only one goal in Microsoft's favor.
Microsoft 15, Motorola 3
"die"
It's pretty remarkable that claim construction is required to fix a typo in a patent. It doesn't reflect well on those who processed the application. The word "die" is replaced -- as Microsoft and Motorola easily agreed -- with "the". It's actually a German article, so maybe a native German speaker was involved in the drafting of the application and no one fixed the typo. Yes, patent quality reform is needed badly -- including improvements at a simple clerical and editorial level...
score unchanged (Microsoft 15, Motorola 3)
'133 patent (context menu patent)
"a menu selection relating to a class of objects [...]"
and "a menu selection, related to [...]"
Microsoft supported the plain meaning ("a menu selection relating to a class of objects to which the selected computer resource belongs"; "a menu selection, related to the class of objects or information related to a contact") or an alternative wording in which "menu selection" would be replaced with "a choice or option in a menu" and "class of objects [...]" with "a category of objects that includes selected computer resource". Motorola proposed "a menu selection connected to a selected object's class", which the judge found too limiting. The judge's own construction used Microsoft's proposed construction of menu selection ("a choice or option in a menu"), followed by "based upon or determined by the class of objects to which the selected computer resource belongs". In terms of the technical meaning, this is much closer to Microsoft's proposal than to Motorola's suggestion that the relevant menu selection should be connected to a particular class.
While these are two terms, they are related and were decided by the judge as a single issue, which is why I will count this as only one goal in Microsoft's favor.
Microsoft 16, Motorola 3
"a menu selection associated with a container [...]"
and "a menu selection that is associated [...]"
Here we have a similar situation as with the previous two terms: the judge adopted Microsoft's proposal to define "menu selection as "a choice or option in a menu" and added a qualifier starting with "based upon or determined by", but rejected Motorola's more limiting definition ("a menu selection provided by the container in which the selected object is located"). Instead, Microsoft's proposal to use the rather broad term "environment [that includes one or more items]" was adopted by the judge -- he even added "or context" to it. So in terms of breadth, the judge essentially came down on Microsoft's side.
While these are two terms, they are related and were decided by the judge as a single issue, which is why I will count this as only one goal in Microsoft's favor.
Microsoft 17, Motorola 3
"displaying upon the display the set of menu selections [...]" and "displaying the menu with [...]"
Microsoft and Motorola agreed on "displaying on the display the set of menu selections positioned at or near the location of a graphical representation".
score unchanged (Microsoft 17, Motorola 3)
"label"
This term is broad and the question was how to interpret it in this particular context. Microsoft proposed the plain meaning or "an identifier", which is similarly broad. Motorola convinced the judge of "a set of characters entered by a user in a document for which the context menus are generated".
Microsoft 17, Motorola 4
"file system object"
Microsoft and Motorola agreed on "object associated with a file system".
score unchanged (Microsoft 17, Motorola 4)
"file system object menu selection corresponding to a file system object"
Microsoft proposed the plain meaning or "menu selection corresponding to a 'file system object.'" Motorola prevailed on this item with its proposal of "menu selection representing a 'file system object'". The difference between "corresponding to" and "representing" is very subtle, but it's Motorola's fifth goal without a doubt.
Microsoft 17, Motorola 5
"document"
The parties agreed on "work created with an application".
score unchanged (Microsoft 17, Motorola 5)
FINAL SCORE:
Microsoft 17, Motorola 5
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