At 1:29 AM local time (!), Apple and Samsung just filed a joint statement ahead of a case management conference at which they will discuss with Judge Lucy Koh the schedule and related issues for the three months between now and the envisioned trial date (the trial is scheduled to start on July 30, 2012). I am now doing two posts on that filing to separate the technical part -- narrowing of claims -- from the political/psychological one (such as requests for excluding evidence regarding labor conditions in China and for obscuring the Samsung logo on the court's video display for jurors). This first post is on the technical part because that's what the timeline depends on.
The "joint" filing simply juxtaposes the parties' opposing views on each issue. There's hardly any common ground, while accusations are flying. For example, Samsung complains that "[d]espite repeated inquiries from Samsung over the course of the last week, Apple did not identify for Samsung until 2 pm the day of the filing what, if any, claims it would be prepared to drop", an allegation countered by Apple's claim that it would have been available to meet anytime on Saturday, Sunday or Monday to discuss and that "Samsung waited until after 9:30 p.m. on the evening that this Joint Statement was due to advise Apple of its position and to raise the arguments it makes here, depriving Apple of any meaningful opportunity to respond in this submission". If they worked together like this in the electronics components business, Samsung would never sell anything and Apple would have to buy from other suppliers. But litigation is a different kind of business.
According to Samsung's part of the filing, "[t]he Court clearly told Apple that if it wanted a trial in July and August, it would have to significantly reduce its claims to fit 25 hours per side", but "Apple has not done so". I think Apple might be willing to engage in some further narrowing down the road, but if the narrowing of claims that Apple just offered is all that it's prepared to do, then Samsung is right and the trial may have to be postponed.
If there really is no further narrowing, then I would take that as a sign that Apple would rather score a broadbased and very meaningful victory a little later than take the risk of not winning much (if anything) based on a drastically-narrowed set of claims. In light of the very high drop-out rate of intellectual property claims in this field, that approach (if it really is the way Apple's litigators view it) would make a whole lot of sense.
In the following I will summarize the parties' initial proposals for narrowing. So far, no infringement claims have been dropped since Apple amended its complaint and Samsung effectively merged its originally-standalone California lawsuit into this action as counterclaims (both of which occurred in June 2011).
Apple's narrowing proposal: dozens of claims but only one entire utility patent (out of eight)
Apple currently plans to take seven of its eight asserted patents to trial.
The only patent that it's prepared to drop in its entirety is U.S. Patent No. 7,812,828, which covers ellipse-fitting algorithms to interpret touches. Claim construction in this California action actually went very well for Apple. But the track record of this patent is not great because it's one of three patents that failed against Motorola at the ITC.
Apple is willing to drop multiple claims from each of the seven remaining patents, amounting to a total of 74 claims. While dropping only some claims from a given patent also has a narrowing effect, the amount of trial time that is saved because one has to explain and debate fewer claims is minimal (and often next to nil), while the withdrawal of an entire patent eliminates the need to discuss certain distinct issues. These are the claims that Apple is dropping from patents other claims of which would still have to be discussed at trial:
claims 4, 6, 7, 9, and 10 of U.S. Patent No. 6,493,002 (status bar), which is also at issue between Apple and Motorola in Chicago;
claims 2, 3, 5, and 10 of U.S. Patent No. 7,469,381 ("overscroll bounce" patent, described by Apple in this filing as "rubber-banding effect when over-scrolling"), which Apple is asserting in multiple actions in the U.S., Germany and presumably elsewhere;
claims 2, 3, 6, 7, and 10 of U.S. Patent No. 7,663,607 (touchscreen hardware), which I described as "a strategic one" in connection with Apple's ITC complaint against Motorola;
claims 1, 5, 9, 10, 12, 14, and 16 of U.S. Patent No. 7,920,129 (touchscreen hardware), which Apple is also asserting in its second ITC action against HTC;
claims 7 and 14-21 of U.S. Patent No. 7,844,915 (gestures), which Judge Koh agreed with Apple doesn't need construction and which is another patent at issue in Apple's second ITC action against HTC;
claims 14-15, 17-21, 23, 39-40, 42-46, 48, 51-52, 55-56, 64-71, and 73-74 of U.S. Patent No. 7,853,891 (timed window), which Judge Koh also construed favorably to Apple; and
claims 5, 8-9, 29, 33-34, 36, 38, and 52 of U.S. Patent No. 7,864,163 (tap to zoom and navigate).
Apple's lawsuit is not just about utility (technical) patents but also about lots of design-related rights:
Apple offers to drop one of its seven design patents, U.S. Patent No. D622,270, and says "it will take little time to present" the remaining six:
U.S. Patent No. D504,889 (iPad 2 body style);
U.S. Patent No. D593,087 (iPhone body style)
U.S. Patent No. D618,677 (iPhone body style);
U.S. Patent No. D604,305 (iPhone GUI [Graphical User Interface]);
U.S. Patent No. D617,334 (iPhone GUI); and
U.S. Patent No. D627,790 (iPhone GUI).
The parties are having a dispute over whether design patents require claim construction by the judge or merely the presentation of images. Apple says it's not needed, while Samsung insists on it. Interestingly, there's one Federal Circuit decision from 2008 that both parties cite in their pleadings (Egyptian Goddess Inc. v. Swisa, Inc., 543 F.3d 665, 679). Samsung claims that the ruling held that "trial courts have a duty to conduct claim construction in design patent cases", which is a totally ridiculous out-of-context quote and misrepresentation of what the Federal Circuit said. I've read the claim construction part of that decision and the first thing I noticed is that it was not about whether a court must construe the claims of a design patents -- it was about whether the court's decision to do so despite a preference for avoiding such construction court’s decision was legal error. And the decision said that a district court's "decision to issue a relatively detailed claim construction will not be reversible error". But even in that case, the appeals court found it was not "not clear that the considerable effort needed to fashion the verbal description contributed enough to the process of analyzing the case to justify the effort". And the passage from which Samsung quoted actually says the following:
"While this court has held that trial courts have a duty to conduct claim construction in design patent cases, as in utility patent cases, [...] the court has not prescribed any particular form that the claim construction must take. To the contrary, the court has recognized that design patents 'typically are claimed as shown in drawings,' and that claim construction 'is adapted accordingly.' [...]. For that reason, this court has not required that the trial court attempt to provide a detailed verbal description of the claimed design, as is typically done in the case of utility patents."
That's the opposite of what Samsung claims. That's what happens when someone quotes from a subclause that starts with the word "while". The Egyptian Goddess ruling even states (as Apple gladly cites) that "[g]iven the recognized difficulties entailed in trying to describe a design in words, the preferable course ordinarily will be for a district court not to attempt to 'construe' a design patent claim by providing a detailed verbal description of the claimed design."
Samsung also cites other decisions than Egyptian Goddess but those are either related to non-design patents or district court decisions that deemed claim construction necessary for particular design patents -- and even if they said "construction" was necessary, the part I quoted above shows that the Federal Circuit is very flexible about the form such construction may take, while Samsung insists on a detailed verbal description.
Finally, besides utility and design patents, Apple also asserts other intellectual property rights, particularly registered and unregistered trade dresses as well as trademarks on icons.
Apple is prepared to drop iPhone trade dress Registration No. 3,475,327 iPhone trade dress Registration No. 3,475,327 and the unregistered trade dress for the original iPhone and the iPhone 4, but still intends to assert the following trade dresses at trial:
iPhone trade dress Registration Nos. 3,470,983 and 3,457,218;
iPhone 3G (unregistered) trade dress;
iPhone/iPhone 3G/iPhone 4 (unregistered) trade dress; and
iPad and iPad 2 (unregistered) trade dress.
Samsung says that "[d]ropping this one trademark [3,475,327] will not significantly reduce the case because, as can plainly be seen, the 'dropped' claim is duplicative of two other substantially identical claims" (3,475,327 and 3,470,983).
Out of its trademark claims for seven icons plus a trademark for the iTunes Store, Apple offers to withdraw Registered Trademark 3,889,685 (settings icon) and Registered Trademark 3,889,642 (messaging icon) but plans to continue to assert the following trademarks:
3,886,200 (yellow and green sunflower for photos);
3,886,169 (yellow notepad for 'notes');
3,886,197 (male silhouette on spiral notebook for 'contacts');
3,886,196 (green and white phone handset for making phone calls);
2,935,038 (eighth note and CD for iTunes music service); and
U.S. Application 85/041,463 (white circle with 2/8 musical note for iTunes music service).
Besides infringement claims, Apple also pursues antitrust, unfair competition and breach-of-contract claims. Those were, for the most part, necessitated by Samsung's assertion of FRAND-pledged standard-essential patents.
Samsung offers to drop three patents, keeps asserting nine others
Samsung's counterclaims are entirely about technical patents. Twelve of them, originally. Samsung is now willing to drop three of those:
U.S. Patent No. 7,200,792 (HSDPA-related);
U.S. Patent No. 7,386,001 (CDMA-related); and
U.S. Patent No. 7,079,871 on a "portable telephone and method of displaying data thereof".
These are the nine remaining Samsung patents:
U.S. Patent No. 6,928,604 on a "turbo encoding/decoding device and method for processing frame data according to QoS", the European equivalent of which the Mannheim Regional Court did not deem infringed;
U.S. Patent No. 7,675,941 on a "method and apparatus for transmitting/receiving packet data using pre-defined length indicator in a mobile communication system";
U.S. Patent No. 7,362,867 on an "apparatus and method for generating scrambling code in UMTS mobile communication system";
U.S. Patent No. 7,447,516 on a "method and apparatus for data transmission in a mobile telecommunication system supporting enhanced uplink service";
U.S. Patent No. 7,050,410 on an "apparatus and method for controlling a demultiplexer and a multiplexer used for rate matching in a mobile communication system", the European equivalent of which the Mannheim Regional Court did not deem infringed;
U.S. Patent No. 7,069,055 on a "mobile telephone capable of displaying world time and method for controlling the same";
U.S. Patent No. 7,456,893 on a "method of controlling digital image processing apparatus for efficient reproduction and digital image processing apparatus using the method" (Samsung's part of today's filing has a typo in the number of this patent);
U.S. Patent No. 7,577,460 on a "portable composite communication terminal for transmitting/receiving and images, and operation method and communication system thereof"; and
U.S. Patent No. 7,698,711 on a "multi-tasking apparatus and method in portable terminal" (Apple apparently gained only limited ground against this one at the claim construction stage).
While Samsung can claim that its offer to drop 25% of its asserted patents is more generous than Apple's offer, there are also different ways to look at it. Samsung still wants to assert nine technical patents, while Apple would assert only seven -- and technical patents tend to be more powerful intellectual property rights than design patents, let alone trade dresses and trademarked icons. Furthermore, Samsung did not offer to drop two patents that the Mannheim Regional Court already said Apple doesn't infringe. There's no discovery in Germany, so maybe Samsung hopes to find evidence in the U.S. that supports its claims, but still those patents would be obvious candidates for further narrowing. And most importantly, if Samsung really wanted to streamline the case to a very meaningful extent, it should drop all of its FRAND-pledged standard-essential patents. That would render Apple's antitrust and breach-of-contract defenses and counterclaims unnecessary, and it would be a gesture of goodwill with a view to regulatory agencies that are increasingly concerned, in different parts of the world, over Samsung's and Motorola's pursuit of injunctive relief and out-of-line royalty demands based on standard-essential patents, an assertion campaign engineered and coordinated by the same U.S. lawyers.
But it's obvious that Samsung isn't actually interested in a swift resolution of the California litigation. It just doesn't want to appear considerably less cooperative in the eyes of the court. Maybe the parties will just agree to disagree on further streamlining: Apple because it wants to preserve its chances of a meaningful victory, and Samsung because it wants to stall without being too transparent about it.
If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.
Share with other professionals via LinkedIn:
