It's an oddity that on the third day of the Apple v. Samsung II trial in California the debate is not about whether Google and Samsung infringe Apple's patents-in-suit but whether Apple itself practices its patents, or more specifically the asserted patent claims. This morning by California time, Apple and Samsung just made submissions in response to Judge Koh's Thursday evening order. The judge presiding over this trial had largely denied Apple's motion for permission to present evidence (and curative instructions) but requested further briefing "as to what timely produced and/or timely disclosed evidence exists in the record as to whether Apple in the past practiced Claim 20 of the '414 Patent, Claim 18 of the '172 Patent, and Claim 25 of the '959 Patent" (emphasis added). The deadline was at 7:30 AM California time today, Friday.
Judge Koh was right to take a closer look given that Samsung's counsel had made statements that involved not only the Apple products at issue in this trial but also earlier Apple products when he said that Apple concededly didn't practice the asserted patent claims. But given that Apple had stipulated that its current products don't practice those three claims (the parties disagree on the other two claims), it's clear at any rate that there are alternative ways to implement the relevant features than the particular claims Apple accuses Samsung of infringing.
Samsung's submission is almost entirely sealed. The public can just see that Samsung makes an argument for Apple's non-practice of those three claims-in-suit, and that it points to various items in the evidentiary record to support that claim. Apple's filing is sealed in part, but at least the main part is available. I will now quote Apple's claim-by-claim response and comment. At first sight I think it's possible that something will be told to the jury about Apple's claim of past use, but what Apple has filed is probably not strong enough, especially in light of the stipulation, to fundamentally change the jury's perception. The jury now knows and will still know, even if Apple makes a past-practice argument, that those three asserted claims are simply not coextensive with the "features" Apple alleges Google and Samsung have copied. This means that the features can be implemented without infringing those claims, and it limits the commercial value of the claims. I think the name of the game for Apple in connection with practice, non-practice and past price is now just to contain the damage.
"Claim 20 of the '414 [Synchronization] Patent: Gordon Freedman, the inventor of the ’414 patent, testified during his deposition that an iPhone synchronization prototype and the original iPhone included 'software that embodied all the ideas in Claim 20 of the '414 patent.' ([...] (identifying 'software on the iPhone in the first release').)"
My take: Of the three past-practice claims Apple makes in its submission, this one is, relatively speaking, the strongest one, but even here the limits of the scope of the claim are visible. The excerpt from the inventor's deposition transcript that Apple submitted shows that he originally discussed claim 11 -- on which claim 20 is dependent, i.e., claim 20 introduces additional limitations:
20. The storage medium as in claim 11 wherein the synchronization software component is configured to synchronize structured data of a first data class and other synchronization software components are configured to synchronize structured data of other corresponding data classes.
The way to look at such claim language is that lawyers find additional opportunities to argue that an implementation of the relevant feature does not infringe because, for example, the synchronization software component in their client's products is allegedly not configured to synchronize structured data of a first data class or, if it is, then other such components are not configured to synchronize structure data of other (this is a formal requirement for something to be different) corresponding data classes. So claim 20 is weaker than claim 11, and easier to work around.
Still, according to the deposed inventor, "it's essentially what was in the shipping product" -- the first iPhone. Whatever "essentially" means.
"Claim 18 of the '172 (autocomplete) Patent: Kenneth Kocienda, an inventor of the ’172 patent, testified during his deposition that Japanese, Chinese, and other non-English language keyboards for the iPhone 'employ' claim 18 of the '172 patent. [...] He also testified that he built a prototype in the 2005-2006 time period that met all the elements of claim 18. [...]"
A pre-release iPhone prototype is not a product that was ever shipped, so it doesn't really count, though in a very legalistic sense one could argue that it was also a way to "practice" the patent claim. It doesn't help Apple in front of the jury because it means that they temporarily implemented the feature based on that claim, but not when they released the product. It underscores the limited scope and strength of the claim.
As for "employ[ing]" claim 18 in products that ever shipped, the discussion is just about Asian-language keyboards, which is not a strong point to make at a U.S. trial. And the inventor just said "I believe that the languages which I listed earlier, Japanese, Chinese, et cetera, do employ this" (emphasis added). To "believe" is not hard evidence.
"Claim 25 of the '959 [unified search] Patent: In Apple's Response to Interrogatory No. 42 dated June 13, 2013 and Apple's Third Supplemental Response to Interrogatory No. 25 dated June 19, 2013, Apple identified specific source code files with respect to iOS version 6 as implementing the feature or functionality that practices the asserted claims of the '959 patent, which included claim 25. (Krevans Decl., Ex. 3 at 17-18; Krevans Decl., Ex. 4 at 16.)"
That response Apple cites to is not publicly-accessible. Apple's filing refers only to "specific source codes files with respect to iOS version 6", so this sounds to me like code that the developers created for purely internal purposes but the compiled, executable version of which was never shipped to customers. The iPhone 5 is one of the accused products in this case, and according to Wikipedia, "the iPhone 5 came installed with iOS 6 starting September 21". But Apple stipulated that its products (the ones at issue in this case) don't practice this patent claim. So this looks like the weakest one of Apple's we-do-practice claims in the latest filing.
With the '959 unified search patent there are two other issues that call into question its strength and value. As I explained when I commented on Apple's motion (which I considered reasonable at the time and still consider reasonable to some extent), Apple filed the related patent application ten years before acquiring Siri Inc., so this is not a case of a company making an invention and then, right away, building a product on its basis. And when Apple sought and temporarily (until it was lifted by the appeals court) obtained a preliminary injunction against the Galaxy Nexus, it relied on another patent from the same patent family, the '604 patent. If you want to obtain a preliminary injunction, you pick your strongest patent (because you don't have a full trial to argue your case), and that one failed because the appeals court concluded that Apple, besides not meeting the requirements for injunctive relief, was not likely to succeed on its infringement theory based on the appeals court's reversed claim construction.
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