Over the last few months, Apple and Motorola have escalated the Southern Florida part of their patent spat. In late January, Motorola brought a second lawsuit in that district against Apple in order to attack the iPhone 4S and the iCloud with six patents that it's also asserting in an earlier lawsuit against Apple in the same district. In mid-March Apple brought counterclaims in that action to accuse newer Motorola products of infringement of Apple's previously-asserted Florida patents and to assert six more patents. Apple decided to simultaneously sue HTC over the same six patents, though HTC was not previously a party to any MMI-Apple lawsuit. Motorola is now searching for a window of opportunity to assert six more patents of its own against Apple (MMI proposed to add them to the second Florida litigation by way of an amended complaint).
Meanwhile, the court in Southern Florida has asked the parties for proposals to consolidate those two actions in whole or in part. The three parties have different ideas:
Motorola wants this case resolved as quickly as possible -- that's it's only near-term chance to enforce any non-standard-essential U.S. patents against Apple. While MMI is against full consolidation, it knows that it can't argue against consolidation of overlapping claims (anything relating to patents at issue in either action) and with respect to U.S. Patent No. 8,046,721, Apple's new slide-to-unlock patent (it's already asserting the older one in that same litigation). Motorola proposes a March 2013 trial date for the earlier case, and a July 2013 trial date for the second one.
Apple is interested in delaying resolution of the earlier case a bit, but doesn't want to wait forever to have the new claims adjudicated. Apple's preference would be full consolidation and a December 2013 trial date. If there's only partial consolidation, Apple proposes an August 2013 trial date for the first case and a December 2013 trial date for the second one.
HTC doesn't want to be sued; if it is to be sued, it only accepts Delaware; but even in Delaware, it tries to delay and avoid it. On Friday, HTC brought a motion to sever Apple's Florida assertions against HTC from the Motorola case and transfer them to Delaware. HTC rejects Apple's "efficiency" argument, saying that "Apple has also asserted four of the patents in suit here in actions against Samsung in the Northern District of California". If its motion to sever is denied, HTC proposes an April 2014 trial date for the second Florida case (HTC doesn't want consolidation with the earlier Florida case).
HTC likes Delaware because it's a slow venue and a few months ago, that district court stayed all of Apple's claims in that district pending an ITC investigation that only relates to a limited subset of all of Apple's Delaware claims against HTC.
Two weeks ago, Apple asked the court in Delaware for permission to bring new counterclaims against HTC in a Delaware lawsuit HTC started last summer (after obtaining some patents from Google for the purpose of asserting them against Apple). HTC opposed this, arguing that the four patents Apple wishes to assert relate to different layers of smartphone technology than the ones HTC is asserting there. The court will now have to decide.
The four new Apple patents HTC is running away from in Delaware are the following ones:
U.S. Patent No. 5,473,777 on a "wrapper for enabling an object otented application to maintain virtual memory using procedural function calls" (not previously asserted in litigation)
U.S. Patent No. RE41,922 on a "method and apparatus for providing translucent images on a computer display" (Apple is also asserting this one against Samsung at the ITC)
U.S. Patent No. 7,856,605 on a "method, system, and graphical user interface for positioning an insertion marker in a touch screen display" (not previously asserted in litigation)
U.S. Patent No. RE42,639 on an "apparatus and method for rotating the display orientation of a captured image" (not previously asserted in litigation)
If Apple had brought those counterclaims earlier (i.e., along with its original answer to the relevant HTC complaint), there wouldn't be a debate over whether those claims would be allowed. But since it waited and then later decided to ask for permission to amend its answer to HTC's complaint in order to bring those counterclaims, it depends on the court. From the court's perspective, it would be the most efficient solution to allow the amendment. Otherwise, Apple could bring a new, separate Delaware lawsuit against HTC. Also, the Delaware court previously defined the concept of related claims and technologies very broadly (by staying far more than just the claims pending simultaneously at the ITC). HTC's argument that those Apple patents relate to a different kind of smartphone technology than its own patents-in-suit is based on a much narrower concept of related technologies than the one the court applied a few months ago in its sweeping order to stay several lawsuits.
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