In early February, Judge Richard Posner told Apple and Motorola that he was "not satisfied" with the "winnowing" they had done at the time, which would have left six Apple and three Motorola patents for trial. On Monday, he made his own contribution to "winnowing" by declaring an Apple patent on an operating system wrapper invalid, and by issuing a host of additional claim constructions based on which Apple and Motorola could now negotiate some further narrowing.
In other litigations (an ITC investigation against Samsung and a Motorola lawsuit in Florida), Apple has recently shown quite some willingness to withdraw patent claims that become realistically unwinnable, mostly as a result of unfavorable claim constructions. That approach is generally appreciated by judges.
Due to travel during the first half of the week, I am now commenting with a delay of a few days on Judge Posner's second claim construction order (a January 25 order ruled on summary judgment motions and provided some claim constructions) and another order entered on the same day, Monday. The other Monday order denied a motion to compel that Apple brought with respect to the Google-Motorola deal. After Apple succeeded with a previous discovery motion in this context, I already pointed out that it had a lot of questions (86 topics and 80 categories of "documents and things"). The motion to compel that was denied on Monday had been filed on March 16 and listed 13 areas of interest to Apple, including, among others, any analysis of Motorola's patents conducted by Google or its external advisers, "[t]he reasons for Google's acquisition of Motorola", and "Google's total U.S. R&D, engineering, and any other costs incurred to develop" the first version, as well as each subsequent version, of Android. Motorola objected, and Judge Posner found its objections persuasive. Unfortunately, those are sealed. I believe Apple's first motion to compel was partly overreaching and a narrower one may succeed and prove quite valuable to Apple at any rate.
Let's now look at the status of the patents addressed by Judge Posner's second claim construction order.
Apple's U.S. Patent No. 5,519,867 (operating system wrapper patent) declared invalid for indefiniteness
The claim construction order describes the invention claimed by Apple's '867 patent as "a 'wrapper' [...] that enables object-oriented applications to access procedural operating system services". Presumably, Android needs to use this kind of technology in order to make object-oriented Android-specific technologies work with Linux, its underlying procedural operating system.
Judge Posner's order declares claim 1 of the patent "invalid because the specification discloses no structure corresponding to 'means for storing said executable program logic in an object‐oriented class library.'" He recalls that "[a] single indefinite limitation invalidates an entire claim". The parties asked for interpretation of three other terms, but those all appear in claim 1.
In the headline of this blog post and the subhead above this section I didn't say that Judge Posner's order mentions only claim 1, but that simplification is defensible: all independent claims of this patent contain the same indefinite limitation, and the problem isn't solved by the language of the claims, or by the specification, for any claim (whether independent or dependent). Judge Posner's comment was only on claim 1 because that appears to be the only claim asserted in this litigation at this stage (otherwise the order would have had to explain why any other claims, all of which contain or incorporate by reference the indefinite passage, don't have the same problem). But his rationale renders the patent as a whole invalid according to my analysis.
Apple's U.S. Patent No. 6,493,002 (toolbar patent): Apple has upper hand but Motorola hasn't lost yet
The judge describes this patent as covering "the well-known control strips and toolbars found in personal computer operating systems". That sounds broader than it is. The key thing here is that an area of the screen, such as a status bar, can be protected against overlapping by regular windows.
Four terms were submitted to the judge for interpretation. On one of them the parties subsequently reached an agreement (they weren't far apart and settled for Apple's proposal). On another one, the judge sided with Apple. On two others, he adopted his own constructions. The judge's constructions don't reflect Motorola's attempts to narrow the scope of the patent (which is a win for Apple), but they are vague enough that Motorola can probably come up with all sorts of non-infringement arguments.
Apple's U.S. Patent No. 6,343,263 (realtime API patent): judge's construction is consistent with Apple's position
In the first claim construction order, Judge Posner's interpretation of a key term of the '263 patent (which the ITC didn't deem violated by HTC, a finding that is being appealed) was a major breakthrough for Apple. The second round of claim constructions provided Motorola with an opportunity to win an interpretation of another important term in order to reduce the likelihood of the jury finding an infringement, but the judge's own construction of "realtime signal processing subsystem" ("subsystem that processes data subject to explicit (bounded) response-time constraints and is capable of handling data transmitted at a constant bit rate") appears largely consistent with footnote 5 of Apple's March 9 brief, which argued that it's acceptable to understand the term as requiring that "the realtime signal processing subsystem must be capable of outputting data to the user at a constant bit rate", as opposed to Motorola's proposal that the subsystem "must assure constant bit-rate handling".
From a technical point of view, the requirement of being "capable of handling data transmitted at a constant bit rate" isn't really a limitation: if a system can handle transmissions within time limits, then the handling of a constant throughput is not an additional challenge but merely falls within what the system can do anyway.
I believe Motorola would face a steep challenge from this patent if technical experts had to analyze infringement within the framework of the judge's constructions, but since this is a very abstract and complicated issue, the jury's decision is far from predictable.
Apple's U.S. Patent No. 5,566,337 (centralized event alerts): Motorola has strong defense now
This Apple patent is a pretty good candidate for withdrawal. Motorola's proposal was adopted on two key terms, though the judge says that one of them "will have to be substantially simplified before it is presented to a jury". With respect to the two terms "broadcast consumers" and "sequential consumers", Motorola convinced the judge to adopt a couple of significant limitations (requiring registration and actual receipt, and referring to different "mode[s] of distribution", a terminology that at least creates uncertainty).
This one has become a long shot for Apple.
Apple's U.S. Patent No. 5,946,647 (data tapping patent): Motorola achieves narrowing of scope
This is the patent based on which the ITC ordered an import ban against HTC (which HTC will avoid by dropping the "data tapping" feature). For the term "linking actions to the detected structures", Motorola won a very narrow construction: "creating a specified connection between each detected structure and at least one computer subroutine that causes the CPU to perform a sequence of operations on that detected structure". Based on that construction, I think there'll be a big fight over how specified a "specified connection" must be. It's too early to tell who will prevail, but Motorola clearly made some significant headway at the claim construction stage.
I recently found out that HTC appealed the ITC decision to the Federal Circuit (as did Apple). The interpretation of the '647 patent, as well as the '263 patent and some others, will therefore depend on the Federal Circuit, but in the near term, Apple needs to win cases like the one in Chicago to enforce it against additional Android device makers.
Apple's U.S. Patent No. 7,479,949 (touchscreen heuristics patent):
This is a potential killer patent if interpreted as broadly as Apple would like it to be, and Judge Posner has realized that fact, as indicated by the following quote from his order:
"Apple's patent cannot cover every means of performing the function of translating user finger movements into common computer commands on a touch-screen device--that would be a patent on all touch-screen computers."
His January 25 order sided with Apple and dismissed Motorola's claim of indefiniteness of the term "heuristics". The ITC, too, denied that the patent is indefinite. But Judge Posner is now looking at some other terms in the patent claims. While he sides with Apple on the term "based on the angle of the initial movement of the finger contact" (which Motorola wanted to be interpreted narrowly), he has determined that claims 1, 2 and 10 are means-plus-function claims ("despite not using the word 'means'") and is wondering "whether the specification recites sufficient structure for the functions in claims 1, 2, and 10". If the answer was no, those claims, and many others, would be invalid. The order says that "[the parties] have not briefed the question whether the specification contains enough structure to justify the other limitations" and tells them to file "file simultaneous briefs on this question by March 26".
I wouldn't say that there's an inclination to find those claims invalid, but the fact that the judge asks for such briefs means that he is at least having second thoughts about whether the patent has enough particularity. I have said on two previous occasions that I, contrary to Judge Posner's and the ITC's preliminary findings, believe this patent is incredibly broad. Whether it is found invalid or given a more specific meaning, something must be done about it.
Motorola's U.S. Patent No. 6,175,559 (CDMA preamble patent): Apple wins constructions that make infringement finding unlikely
This patent is related to CDMA, which in turn is related to 3G/UMTS. Judge Posner adopted two Apple constructions and rejected Motorola's counterproposals. If Motorola is still looking for another patent to drop, it will likely be this one. Interestingly, Motorola lost a case in Germany over another CDMA-related patent, where it prevailed on a GRPS patent (the European equivalent of the next -- and last -- patent discussed in this post).
Motorola's U.S. Patent No. 6,359,898 (GPRS countdown patent): Motorola on winning track
This is the U.S. equivalent of the essential wireless patent that resulted in the temporary removal of various Apple products from its German online store. On a key disputed term, Judge Posner now adopted Motorola's proposed construction. It's increasingly likely that standard-essentiality will be Apple's strongest defense against this patent.
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