In the build-up to the December 6 injunction hearing in Judge Koh's court, Apple and Samsung are fighting hard over which evidence and arguments will be admitted. The dispute over Samsung's lawyers' access to the full Apple-HTC settlement agreement including license fees (all other parts were not in dispute) has been resolved by the court, which basically said that access is granted but relevance is doubtful. Now there's an actually much more important evidentiary dispute going on and it relates to Samsung's claim that it has worked around the asserted claim (claim 8) of Apple's '915 patent (U.S. Patent No. 7,844,915 on "application programming interfaces for scrolling operations"), which I generally call the "pinch-to-zoom API patent" and which I have previously described as a "pinch-to-zoom-essential patent", meaning that while it's not a gesture patent in a literal sense, it is, in the opinion I've held thus far and continue to hold until I see surprising evidence to the contrary, inevitably infringed by any reasonable implementation of the pinch-to-zoom gesture.
The idea of a pinch-to-zoom workaround is not that new. For example, a journalist recently claimed that all of this colleagues in the media were "confused" in giving Apple a monopoply on pinch to zoom that it never had in his opinion, and his article included a Google statement that said Apple's patent only covered "a very specific software implementation" of pinch-to-zoom -- as opposed to pinch-to-zoom as a whole. Just like Samsung's workaround theories, he also focused on one particular claim limitation: the distinction between a one-figure and a two-finger gesture (one finger meaning scrolling, two fingers meaning a pinch), which is the core of the '915 patent.
There's no question that one can work around that claim limitation, like any claim limitation of any given patent, in a legal sense, and there's also no question that the '915 patent doesn't cover all scrolling and all pinching operations, but the question is what price one has to pay for non-infringement in terms of a degradation of the user experience. Is it intuitive? Are more fingers needed to get the job done than would otherwise be necessary? Is valuable screen real estate sacrificed? For example, you don't infringe if scrolling is performed with the help of a traditional scroll bar, but that would be pre-iPhone-like. Also, you don't infringe if your phone has an on-screen or physical button that you push to put the device in a pinching mode. You might even have a non-infringement argument (not necessarily meritorious, but sufficient to require some new discussion) if scrolling requires the use of two fingers and pinching the use of five fingers. But the question is whether the pinch-to-zoom gesture that Apple has made so popular that it's commonly expected, and instinctively performed, by users can be implemented without infringing the '915 patent or adversely affecting the user experience.
The way to make pinch-to-zoom work smoothly, without introducing additional icons or requiring awkward gestures such as zooming in and out by drawing circles on a screen in a clockwise or counterclockwise direction, is to interpret a single-finger gesture as a scrolling operation and certain two-finger gestures as pinching operation (zomming in or out, depending on whether the two fingers move closer to each other or away from each other).
Samsung apparently agrees. That's why it recently claimed that its workaround still allows users "to scroll web pages using one finger and zoom in and out of web pages using two fingers". I reported on this claim more than a month ago and commented that "what Samsung does and does not say in public about the '915 'pinch-to-zoom API' workaround suggests to me that an enforcement dispute over this one is at least somewhat likely". I was right that the '915 workaround theory was debatable, and the dispute is already in full swing, even prior to the enforcement stage. With Samsung arguing that an injunction should not be granted since it has a workaround (which in my view would actually, if true, weigh in favor of an injunction since there wouldn't be any harm from discontinuing the infringement identified), the question of whether or not the '915 patent is still being infringed is part of the debate over injunctive relief.
On November 9, Apple filed a reply declaration by a professor from Toronto, Karan Singh, who went to the offices of Quinn Emanuel, Samsung's law firm in this dispute, to look at the workaround code and while "Samsung failed to provide a full code tree or folder as it would typically be kept in Samsung's ordinary course of business" (and as Samsung apparently did earlier in this litigation), saw enough code to opine that "the modified code [he] reviewed demonstrates continuing infringement of the '915 patent".
The Singh reply declaration is heavily-redacted, especially in the parts that are most interesting (the ones in which he discusses Samsung's source code). The publicly-accessible parts of the declaration show that Professor Singh identified literal infringement as well as (which represents only a fallback theory) infringement under the doctrine of equivalents (DoE), and that he contradicted Samsung's claims that prosecution history estoppel prevented Apple from presenting an infringement theory under the DoE.
On November 20, Apple claimed that "Dr. Singh exposed the fiction in [Samsung expert] Mr. Gray's declaration that dressing up infringing code in different clothing renders it non-infringing".
Meanwhile, Samsung has brought a motion to strike three declarations attached to Apple's reply brief in support of a permanent injunction, and the Singh declaration is one of them, with Samsung's motion to strike arguing that Apple "never discusses the content of the Singh Declaration in its Reply". Courts don't want parties to circumvent page limits by making arguments in declarations that aren't really referenced in the actual pleading. But Apple filed a reply to that motion late on Monday and says that its reply brief "described Dr. Singh's declaration as showing that Samsung's 'modified code still infringes because it distinguishes between a single input point and multiple input points.'" Apple says this is more than Samsung said about the declarations in which it presented its workaround theories. Samsung just said that it "has implemented non-infringing design-arounds" and then pointed to three declarations.
Samsung's motion to strike also argued that Dr. Singh offered a "new infringement theory", but Apple says this is "overstated" given that Dr. Singh made these two observations:
Samsung's "modified code flow is very similar to that for the Galaxy Tab 10.1, which the jury found to infringe".
"When Dr. Singh used a Samsung device with the modified code, he 'observed the exact same infringing behavior as in the old code.'"
I doubt that Apple's reply declaration will be stricken unless Samsung's '915 workaround declaration is stricken, too. If the court doesn't strike the parties' workaround-related declarations, there may have to be some '915 infringement discussion at the December 6 hearing, unless Judge Koh declines to adjudge this issue at this stage. She could declare it irrelevant to the injunction analysis and say that the parties can still have an enforcement dispute over it later, after an injunction (if one is granted after the hearing).
At any rate, the fight the parties are having over the workaround theory shows how important this issue is. It's all about whether Samsung will have to modify its pinch-to-zoom implementation in a way that would affect the user experience. Samsung says it can provide the same functionality by merely changing the inner workings of its code. Apple says that those modifications to the code amount to "dressing up infringing code in different clothing", and I already saw this dispute coming more than a month ago, while I thought Samsung had presented credible workarounds for the other two multitouch patents the jury found infringed.
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