I have received a fair amount of positive feedback to my lists of Android patent infringement findings as well as infringement findings in countersuits brought by Android device makers. Knowing that those two lists are being used as reference material by professionals in the financial services industry as well as the high-tech sector (and that to the best of my knowledge no one else has endeavored to publish this kind of cross-jurisdictional overview), I will now update them more frequently in order to reflect new developments, such as new findings, successful appeals, or patent invalidations and expirations. Updates will also reflect other decisions relating to the enforceability of injunctions, such as stays.
The most recent versions of these lists were published on September 26, 2012 ("Android devices have already been found to infringe 17 valid Apple and Microsoft patents") and September 28, 2012 ("The Android camp is enforcing only one patent injunction against Apple (and none against Microsoft)").
These are the most recent changes (in chronological order):
On September 28, a few hours after I updated the second list, the United States Court of Appeals for the Ninth Circuit ruled against Motorola Mobility's appeal of a district court injunction barring the enforcement of Motorola's German H.264 patent injunction against Microsoft. In this context let me also mention that the United States District Court for the Western District of Washington confirmed again, in what was a de-facto denial of a Motorola motion, that the outcome of its proceedings will be a worldwide H.264 and IEEE 802.11 patent license agreement on FRAND terms covering Microsoft's implementation of those standards.
On October 1, 2012, Samsung won the dissolution of a Galaxy Tab 10.1 preliminary injunction based on a design patent. For the reasons provided further below, this dissolution was expected and does not change the number of infringement findings. It also does not change the number of ongoing enforcements since Apple is technically still enforcing the European equivalent of this design patent against the Galaxy Tab 7.7 in Europe based on a ruling by the Düsseldorf Higher Regional Court.
On October 9, 2012, the expiration of one of the aformentioned Motorola H.264 patents was recorded by the official German patent register. This reduces the number of infringement findings of currently-valid patents held by Android companies from 7 to 6. It doesn't change the number of ongoing enforcements (only 1).
On October 11, 2012, an appeals court in Seoul, South Korea, granted Apple, as expected by local observers, a stay of two 3G patent injunctions Samsung recently won.
Later that day, the United States Court of Appeals for the Federal Circuit reversed a U.S. preliminary injunction against the Galaxy Nexus smartphone and clarified that Apple is unlikely to prove infringement at trial. This reduces the number of Android infringement findings from 17 to 16, and the number of distinct patents presently being enforced from 9 to 8.
On this basis, the current score is that different Android devices have been found to infringe 12 valid Apple patents (one of them even in three countries, and another one in two countries) and 4 Microsoft patents, while Apple has been held to infringe five valid patents held by Android device makers (four of which are standard-essential) and Microsoft only one (since another one expired), which is also standard-essential. Only one such patent is presently being enforced against Apple, and none against Microsoft, while eight patents are presently being enforced against Android devices.
Below please find the updated versions of the list of Android infringement findings and the list of infringement findings identified in countersuits.
16 different patents have been deemed valid and infringed by Android devices
EP2059868 on a "portable electronic device for photo management"
I call this one the "photo gallery page-flipping" patent.
The Rechtbank 's-Gravenhage (a court in the Dutch city of The Hague) deemed this patent valid and infringed in an August 24, 2011 decision granting Apple a preliminary injunction against certain Samsung smartphones. On March 1, 2012, the Munich I Regional Court granted Apple a permanent injunction over this patent against Motorola Mobility, which became a wholly-owned Google subsidiary in May 2012.
U.S. Patent No. 7,469,381 on "list scrolling and document translation, scaling, and rotation on a touch-screen display"
This is the "overscroll bounce" or "rubber-banding" patent. I once called it "Apple's favorite make-Android-awkward patent". Apple has convinced courts on three continents (North America, Europe and Asia) that Android-based devices infringe this patent.
The United States District Court for the Northern District of California deemed this patent valid and infringed in a December 2, 2011 decision denying an Apple motion for a preliminary injunction against four Samsung devices. The denial was based on an insufficient showing of the nexus between the identified infringement and the alleged harm to Apple's business.
On August 24, a jury rendered a verdict according to which this patent is valid and infringed by all 21 Samsung devices accused of infringement of this patent. Apple can still win an injunction on this basis (it formally requested one on Friday). Even if no injunction was granted, Apple could, at a minimum, seek monetary compensation.
Approximately 20 hours before the California verdict, Samsung was found to infringe this patent by a court in its own country, the Seoul Central District Court.
On September 13, the Munich I Regional Court ordered a German patent injunction against Google's Motorola Mobility over this patent.
U.S. Design Patent No. D618,677 on an "electronic device"
This is an iPhone-related design patent.
In the aforementioned December 2, 2011 decision, the United States District Court for the Northern District of California deemed this design patent valid (with a narrowed scope) and infringed, calling it a "close question" and denying an injunction for balance-of-hardship reasons.
On August 24, 2012, a jury deemed this design patent valid and infringed by 11 Samsung smartphones (mostly Galaxy devices). Apple is pursuing a permanent injunction on that basis.
U.S. Patent No. 5,946,647 on a "system and method for performing an action on a structure in computer-generated data"
I dubbed this one the "data tapping" patent, a term that has since been adopted by a number of journalists.
The United States International Trade Commission (ITC) deemed this patent valid and infringed in a December 19, 2011 order of a U.S. import ban against HTC.
I published the winning claim chart.
In a June 29, 2012 order of a preliminary injunction against the Galaxy Nexus smartphone, the United States District Court for the Northern District of California deemed this patent valid and infringed, but denied an injunction on the basis of this patent for balance-of-hardships reasons.
Motorola Mobility failed with summary judgment motions in a litigation in the Northern District of Illinois to prove this patent invalid or not infringed. The recent dismissal of that lawsuit was based on other reasons than the merit of Apple's infringement claims.
EP1964022 on "unlocking a device by performing gestures on an unlock image"
This is the first slide-to-unlock patent.
On February 16, 2012, the Munich I Regional Court granted Apple an injunction over this patent against Motorola Mobility.
U.S. Patent No. 6,370,566 on "generating meeting requests and group scheduling from a mobile device"
On May 18, 2012, the ITC ordered a U.S. import ban against Motorola's Android-based devices that infringe this Microsoft patent.
EP1304891 on "communicating multi-part messages between cellular devices using a standardized interface"
On May 24, 2012, the Munich I Regional Court granted Microsoft an injunction over this patent against Motorola's Android-based devices. This was the first Microsoft v. Google decision ever. It came down only days after Google completed its acquisition of Motorola Mobility. The ruling is already being enforced in Germany.
U.S. Design Patent No. D504,889 on an "electronic device"
This is an iPad-related design patent.
On June 27, 2012, the United States District Court for the Northern District of California granted Apple a preliminary injunction against the Galaxy Tab 10.1 following a partly-successful appeal to the Court of Appeals for the Federal Circuit. A jury deemed it valid but not infringed by Samsung. On this new basis, Samsung won the dissolution of the preliminary injunction, while Apple has asked the court to overrule the jury on this item. I decided to leave it on this list because judges overrule juries and not the other way round, and especially in light of the Federal Circuit's take on this patent. The jury's finding contradicts Judge Koh's earlier decision and the position the appeals court took in its opinion on Samsung's preliminary injunction appeal, and Judge Koh did not dissolve the injunction immediately since the chances of Apple's Rule 50 ("overrule-the-jury") motion have yet to be evaluated -- a fact that she reiterated in her dissolution decision. Even though the preliminary injunction has been dissolved, a new and permanent one could issue after a December 6 hearing.
In the summer of 2011, the Düsseldorf Regional Court had granted Apple a preliminary injunction against the same product over the European equivalent, a so-called Community design, of this U.S. design patent. The appeals court, the Düsseldorf Higher Regional Court, later upheld the injunction but did so on the basis of German unfair competition law, not on the grounds of the asserted Community design. Later, in July, it granted Apple a cross-border injunction against the Galaxy Tab 7.7 based on that Community design, which is still being enforced. Last month, the regional court looked at the matter again. It stayed the main proceeding (but none of the injunctions in place) and expressed doubts about Apple's infringement allegations. Apple previously lost cases over this patent in the Netherlands and the UK.
U.S. Patent No. 8,046,721 on "unlocking a device by performing gestures on an unlock image"
This is the second slide-to-unlock patent.
In its aforementioned Galaxy Nexus decision, the United States District Court for the Northern District of California deemed Samsung and Google to infringe on this patent, which it considered valid. The injunction was not based on this patent only for balance-of-hardship reasons. Apple may still win a permanent injunction or, at least, seek damages if the preliminary findings of infringement and validity are upheld.
U.S. Patent No. 8,074,172 on a "method, system, and graphical user interface for providing word recommendations"
This is an autocorrect patent.
In its aforementioned Galaxy Nexus decision, the United States District Court for the Northern District of California deemed Samsung and Google to infringe on this patent, which it considered valid. The injunction was not based on this patent only for balance-of-hardship reasons. Apple may still win a permanent injunction or, at least, seek damages if the preliminary findings of infringement and validity are upheld.
EP0618540 on a "common name space for long and short filenames"
On July 27, the Mannheim Regional Court granted Microsoft a German patent injunction against Google's Motorola Mobility over this file system patent. It decided the infringement question in Microsoft's favor and did not find Google's invalidity arguments strong enough to order a stay.
U.S. Design Patent No. D539,087 on an "electronic device"
While Judge Koh said in her preliminary injunction decision in December 2011 that Samsung had raised substantial questions concerning the validity of this patent, a jury later (on August 24) found it valid (and also infringed). Unlike Judge Koh's strong conviction of infringement of the tablet design patent, she did not rule out that Apple could prevail on this patent at trial, and Apple did prevail. More importantly, the appeals court rejected Judge Koh's ruling that this patent is likely invalid, and upheld the denial of a preliminary injunction over this patent solely for equitable reasons. With the jury verdict in its favor, Apple is now pursuing a permanent injunction based on this patent.
U.S. Patent No. 7,844,915 on "application programming interfaces for scrolling operations"
This Apple patent is inevitably infringed by any reasonable implementation of the pinch-to-zoom gesture. On August 24, the California jury found 21 Samsung Android devices to infringe this patent, which it also deemed valid.
U.S. Patent No. 7,864,163 on a "portable electronic device, method, and graphical user interface for displaying structured electronic documents"
On August 24, the California jury found this Apple "tap-to-zoom" patent valid and infringed by 16 Samsung Android devices.
U.S. Design Patent No. D604,305 on a "graphical user interface for a display screen or portion thereof"
This Apple design patent is software-related. It's about the arrangement of icons. On August 24, the California jury found 13 Samsung devices to infringe this patent, and deemed it valid.
EP1040406 on a "soft input panel system and method"
On September 20, the Munich I Regional Court granted Microsoft a German patent injunction against Google's Motorola Mobility over this operating system patent. This was already the third time a German court found a Microsoft patent infringed by Motorola Mobility's Android-based devices, and the fourth time worldwide. Microsoft is embroiled in litigation with only one Android device maker, while Apple is also suing Samsung and HTC. Relative to the number of adjudged patents, Microsoft has a higher hit rate than Apple.
The list above is limited to Apple and Microsoft patents (12 from Apple, 4 from Microsoft). I don't follow litigation by non-practicing entities anymore, and I'm not aware of any particular decision in favor of an NPE against Android, but many cases are pending and haven't come to judgment yet. As far as other major players than Apple and Microsoft are concerned, Oracle is certain to appeal its case against Google to the Federal Circuit, British Telecom is still suing Google, Nokia has recently asserted dozens of patents in the U.S. and Germany against HTC and Viewsonic, and BlackBerry maker Research in Motion (RIM) is in such dire straits that it's probably only a matter of time (the company appears to be in a serious disarray right now) until it also asserts some of its wireless email patents against Google and/or Google's hardware partners. A smaller but nevertheless interesting plaintiff is Skyhook Wireless, which just brought a second patent infringement action against Google, alleging infringement of eight more patents by Android and Google Maps.
Only a minority of all patent assertions brought against Android-based devices have been adjudicated so far. The number of patents held to be infringed will keep growing.
6 infringement findings in countersuits by Android device makers -- only 1 injunction presently enforceable
Samsung, HTC and Google's Motorola Mobility are suing Apple. Motorola is also suing Microsoft, but Samsung and HTC are not. All major Android device makers except for the Google subsidiary already have a royalty-bearing Android patent license from Microsoft. So this post is about the results that Samsung has achieved against Apple, Motorola against Apple, and Motorola against Microsoft.
HTC is suing Apple but hasn't won any offensive case yet (nor has it been hit too hard: it's only being affected by one Apple patent at this stage).
Three Samsung patents and two Motorola patents have been found infringed by Apple, and two Motorola patents (on the same standard), one of which has meanwhile expired, were deemed infringed by Microsoft. All three winning Samsung patents and three of Motorola's four successful patents (again, one of them expired) are FRAND-pledged standard-essential patents. And the non-standard-essential patent Motorola asserted against Apple is the only one over which an injunction is presently being enforced (in Germany).
Here's a summary of the Android camp's half a dozen offensive wins, in chronological order of the rulings:
EP1010336 on a "method for performing a countdown function during a mobile-originated transfer for a packet radio system"
On December 9, 2011, Motorola Mobility won a permanent German injunction over this cellular standard-essential patent against Apple in Mannheim. In early February 2012, Apple temporarily removed a few products from its German online store as a result of Motorola's enforcement of this injunction. After about a day, the appeals court (the Karlsruhe Higher Regional Court) temporarily suspended enforcement. On February 27, 2012, this stay was extended for the entire duration of the appeals process. Six months later, Motorola Mobility confirmed that Apple is now licensed to its wireless SEPs in Germany, with only the amount of a FRAND royalty and damages for past infringement left to be determined by the courts. Google-owned Motorola will get paid, but it won't be enough to force Apple to stop its patent enforcement against Android. What Motorola really wanted was the ability to block Apple's sales in Germany in order to have leverage for a global settlement.
EP847654 on a "multiple pager status synchronization system and method"
On February 3, 2012, and again in Mannheim, Motorola won a German patent injunction over this non-standard-essential push notification patent against Apple. Three weeks later, Apple informed its customers of Motorola's enforcement of this injunction. On March 14, 2012, the Karlsruhe Higher Regional Court denied an Apple motion for a stay. Enforcement is still ongoing based on what I hear from some German Apple customers.
H.264-essential patents: EP0538667 on an "adaptive motion compensation using a plurality of motion compensators" (expired) and EP0615384 on an "adaptive compression of digital video data"
Technically these two patents are at the heart of separate parallel cases, but for the purpose of this overview, they present the same issues. One of them recently expired. On May 2, 2012, the Mannheim Regional Court granted Motorola Mobility injunctive relief against Microsoft over these two patents. English translations of these rulings became available later that month. By the time the injunction was ordered, the United States District Court for the Western District of Washington had already barred Motorola, which previously offered in the United States a worldwide license to all of its H.264 (and IEEE 802.11) SEPs to Microsoft, from enforcing any such German injunctions. In mid-May, the related temporary restraining order (TRO), which Motorola appealed a few weeks later, was converted into a preliminary injunction (with Motorola's appeal obviously continuing).
The Ninth Circuit (since this is a contract matter, not a patent infringement or validity case) held a hearing on this appeal on September 11, 2012 and ruled against Google/Motorola. So far, Motorola cannot enforce those H.264 patent injunctions, and the Seattle-based district court has confirmed that it will ensure that a license agreement result from the proceedings before it, which will forever bar enforcement. Even if Motorola could surprisingly avoid a worldwide license agreement, it would still face significant hurdles in Germany.
EP1188269 on an "apparatus for encoding a transport format combination indicator for a communication system"
On June 20, 2012, Samsung finally won its first offensive case against Apple in The Hague, Netherlands, over this 3G/UMTS-essential patent. But the court had previously ruled out injunctive relief over this FRAND-pledged patent. Samsung will receive some money for Apple's past infringement and future use of this patent, but it won't be much (the market is small and the court indicated that Samsung's 2.4% royalty demand was way out of the FRAND ballpark).
Two Korean 3G-essential patents
On August 24, 2012, approximately 20 hours before the California jury verdict, the Seoul Central District Court granted Samsung two injunctions over 3G/UMTS-essential patents. No enforcement has happened so far, and Apple won a stay on October 11, 2012. The Korean antitrust authority is investigating Samsung's related conduct, showing that the Korean government is aware of the wider-ranging negative implications of SEP abuse.
In light of the facts, claims that there have been "wins and losses on both sides" or suggestions that Motorola is in a strong position against Apple in Germany are grossly misleading. A more accurate portrayal is that the Android camp's most significant wins have been defensive (fending off claims as opposed to successfully asserting one's own patents against a rival), that the entire Android camp is presently enforcing only one patent against Apple and none against Microsoft, and that SEP abuse has not proven to be a viable strategy (it has not resulted in any presently-enforceable injunction, but it has triggered multiple antitrust investigations). Implying a balance where (such as in this case) there isn't one is just as wrong as claiming an imbalance that doesn't exist (which happens in some contexts).
Just to be clear, it's not just about numbers: the key question is what the actual business impact is. In that regard, what matters more than anything else is injunctive relief. No one can seriously argue that the enforcement of a push notification against Apple in Germany (which is a temporary nuisance to some users but doesn't affect Apple's sales) effectively counterbalances Apple's and Microsoft's enforcement of injunctive relief over eight patents in different jurisdictions. Arguably, even Apple's ITC import ban against HTC over the "data tapping" patent, which is not devastating, has at least as much impact as (if not more than) the push notification patent, which is the only one over which the Android camp is presently enforcing injunctive relief against a rival anywhere in the world.
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