In connection with the patent dispute between Apple and Motorola Mobility, the Google subsidiary's assertions of FRAND-pledged standard-essential patents (SEPs) have recently received most of the attention (allegation that Motorola demanded more than 12 times the royalty from Apple that it charged others, finalization of FTC-Google consent decree, upcoming Federal Circuit hearing on the "Posner appeal"). But Motorola is also asserting some non-SEPs against Apple (and, of course, all of Apple's assertions against Motorola relate to non-SEPs), such as the infamous, clinically-dead push notification patent is is still enforcing against Apple in Germany. In the United States, a Motorola ITC complaint against Apple involving SEPs and non-SEPs was dismissed (and is being appealed). And between 2010 and 2012 Motorola asserted a dozen non-SEPs against Apple in the Southern District of Florida, where Apple countersued over the same number of patents.
The 24-patent Miami litigation is currently scheduled to go to trial in August 2014. Judge Robert N. Scola, the federal judge presiding over this case, was thoroughly disappointed that the parties couldn't agree on how to narrow their case without asking the court to provide a large number of claim constructions as guidance to aid that process. As a result, he pushed back the case by four months, which is more of a problem for Google (which still has nothing to show in U.S. litigation in terms of leverage from the $12.5 billion Motorola deal) than for Apple, whose focus is clearly on the dispute with Samsung.
Yesterday (Monday, July 29 2013) Apple and Motorola filed a stipulation to dismiss a total of 14 patents from the Miami case. Apple had previously dropped two patents (though it reserved some rights subject to what happens on appeal), so the case was down from 24 to 22 patents. Under yesterday's stipulation, Motorola drops eight patents and Apple withdraws six, restoring parity. Subject to the court's (very likely) approval of this stipulation, either party will be asserting four patents going forward. Some of the dismissals are with prejudice and some without. To the extent that there is prejudice, it only bars reassertions of those patents against the accused products/services in this action and those that are no more than colorably different. In other words, if new infringement issues arise in the future relating to the same patents, they can be litigated again.
A couple of Apple's withdrawals relate to Motorola's set-top box business, which has meanwhile been divested.
It appears to me that the parties are, not surprisingly, focusing on patents that could give them some leverage should they obtain injunctive relief and have put some patents with reasonably-promising damages claims on the back burner, knowing that damages awards are unlikely to have too much impact on the terms of a future Apple-Google settlement. There's one notable exception: Apple's '560 patents (for details see list of remaining patents-in-suit further below) has already expired, but it might give Apple a damages claim against the acquirer of Motorola's set-top box business.
For the complex procedural history of this case, let me refer you to my previous posts, and the two posts on the Miami litigation that I just linked can serve as a starting point. I'm now going to list the patents that the parties dropped and the ones that are still in the case.
Patents dismissed by Apple under yesterday's stipulation
Dismissals with prejudice:
U.S. Patent No. 5,594,509 on a "method and apparatus for audio-visual interface for the display of multiple levels of information on a display"
U.S. Patent No. 5,621,456 on "methods and apparatus for audio-visual interface for the display of multiple program categories"
U.S. Patent No. 7,657,849 on "unlocking a device by performing gestures on an unlock image" (this is the original slide-to-unlock patent; a newer, optimized version, the '721 patent, is among the patents dismissed without prejudice)
Dismissals without prejudice:
U.S. Patent No. 8,046,721 on "unlocking a device by performing gestures on an unlock image" (this is the newer slide-to-unlock patent; the older one is dismissed with prejudice)
U.S. Patent No. 7,853,891 on a "method and apparatus for displaying a window for a user interface"
U.S. Patent No. 8,074,172 on a "method, system, and graphical user interface for providing word recommendations" (for the time being, Apple is still asserting this patent against Samsung in California; an anonymous reexamination request relating to this patent was discovered last month)
Patents dismissed by Google (Motorola) under yesterday's stipulation
Dismissals with prejudice:
U.S. Patent No. 5,710,987 on a "receiver having concealed external antenna"
U.S. Patent No. 5,958,006 on "method and apparatus for communicating summarized data"
U.S. Patent No. 6,377,161 on a "method and apparatus in a wireless messaging system for facilitating an exchange of address information"
Dismissals without prejudice:
U.S. Patent No. 5,689,825 on a "method and apparatus for downloading updated software to portable wireless communication units"
U.S. Patent No 6,002,948 on a "method and apparatus for radio system with mode based subscriber communications"
U.S. Patent No. 6,463,534 on a "secure wireless electronic-commerce system with wireless network domain"
U.S. Patent No. 7,024,183 on a "communication device with intelligent communication management and method therefor"
U.S. Patent No. 7,509,148 on a "message alert system and method of providing message notification"
The parties' eight remaining patents-in-suit
Motorola's patents-in-suit:
U.S. Patent No. 5,754,119 on a "multiple pager status synchronization system and method" (this is the push notification patent that's already dead in the water in Europe)
U.S. Patent No. 6,008,737 on an "apparatus for controlling utilization of software added to a portable communication device"
U.S. Patent No. 6,101,531 on a "system for communicating user-selected criteria filter prepared at wireless client to communication server for filtering data transferred from host to said wireless client"
U.S. Patent No. 7,243,072 on "providing assistance to a subscriber device over a network"
Apple's patents-in-suit:
U.S. Patent No. 5,583,560 on a "method and apparatus for audio-visual interface for the selective display of listing information on a display"
U.S. Patent No. 8,014,760 on a "missed telephone call management for a portable multifunction device" (like the dismissed word recommendation patent, this one is being asserted against Samsung in the second California case and has been the target of a recently-discovered anonymous reexamination request)
U.S. Patent No. 8,031,050 on a "system and method for situational location relevant invocable speed reference"
U.S. Patent No. 8,099,332 on a "user interface for application management for a mobile device"
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:
