The rulings in Apple’s patent wars against Android are coming thick and fast now, and the latest is potentially a significant one, granting a temporary US ban on Samsung’s Galaxy Tab 10.1 tablet. The victory is an important symbolic one for Apple, endorsing its controversial usage of design patents in the law courts, but will have little effect on Samsung’s sales, since the 10.1 is nearing the end of its life. But another key case against Google unit Motorola Mobility has been thrown out in Chicago, while the ITC, in another battle involving those two rivals, is raising awkward questions about the use of injunctions as competitive weapons.
Late on Tuesday, US District Judge Lucy Koh accepted Apple’s arguments that its Korean rival had violated iPad design patents. “Although Samsung has a right to compete, it does not have a right to compete unfairly, by flooding the market with infringing products,” Koh wrote. “As a patent holder, Apple has a valid right to exclude others from practicing Apple’s invention.”
Design patents have been a controversial aspect of the Apple-Android wars, since they relate to features such as size and shape rather than technological innovation. The patent at issue in the California case describes the front, back and sides of the iPad. Apple has argued in various countries that the Tab 10.1 is a deliberate lookalike, and that it ‘slavishly copied’ the iPad.
And Koh, who has often be critical of Apple’s approach, and of the handset IPR lawsuits in general, agrees. She ruled that Samsung cannot import its flagship tablet, or any other product that is “no more than colorably different” and “embodies any design” that infringes Apple’s patent.
Apple has other outstanding suits against the 10.1 based on more conventional technology patents.
Samsung, which lodged an appeal within hours, said in a statement: “Apple sought a preliminary injunction of Samsung’s Galaxy Tab 10.1, based on a single design patent that addressed just one aspect of the product’s overall design. Should Apple continue to make legal claims based on such a generic design patent, design innovation and progress in the industry could be restricted.”
The company pointed out that other models are unaffected and claimed the order will not substantially affect its business. A similar ruling was made in Germany last year, but Samsung redesigned its slate to work around that (although Apple then filed suit against the amended design). US stores with Tab 10.1 inventory can continue selling the device. Samsung may not bother with the workaround since the 10.1 is nearing the end of its life anyway. The newer Galaxy Tab 2 has speakers around the bezel, making it look less like the iPad, according to reviewers.
Koh has shifted her position since last fall, when she said Apple’s design patent was likely to be found invalid on the basis that it was an obvious design (a rectangle with rounded corners) already seen in earlier tablets. On those grounds, she refused Apple’s request to impose a preliminary injunction on the Tab 10.1, which would have taken it off the shelves even before the outcome of the suit. However, Koh did say at the same time that she could not tell the difference between the two battling slates.
Apple successfully appealed Koh’s conclusion that the iPad design was ‘obvious’, and the case returned to Koh ‘ hence this week’s temporary injunction, which comes into force once Apple raises a $2.6m bond. The bond is necessary because the ban is only provisional, and could be reversed once the full trial takes place. However, the temporary injunction is a clear signal of how the judge thinks the final case will go ‘ especially as she has been reluctant to grant preliminary bans, and critical of the whole tactic. By the trial, of course, both models at issue will be in legacy territory.
In another landmark US case, Apple and Motorola Mobility have lost in their attempts to ban one another’s products for patent infringement. Judge Richard Posner, who has been overseeing the rivals’ fight in Chicago – one of the key arenas in the series of spats between the two ‘ has denied the requests, ending a lawsuit which was kicked off in 2010. It dismissed the claims ‘with prejudice’, so they cannot be resubmitted.
‘Neither party is entitled to an injunction,’ Posner wrote in a 38-page ruling. ‘Neither has shown that damages would not be an adequate remedy.’ This is the first major judgement in a Motorola case since it was acquired by Google, bringing the search giant more directly into the Apple-Android IPR wars round the world.
Posner has grown increasingly impatient of some of the demands in the case, and especially of the tactic of seeking preliminary injunctions, to remove products from the shelves even before a patent claim is finally decided, rather than damages. Earlier this month, he cancelled a jury trial scheduled for June 11.
On June 20, he heard arguments from Apple lawyers seeking an injunctions against Motorola products which allegedly infringe four of the iPhone maker’s patents, while Motorola wanted a similar ban regarding one of its cellular patents. The two companies have other chances to make their case, with cases pending before the US International Trade Commission, in other US federal courts and in Germany.
‘We are pleased that Judge Posner formally dismissed the case against Motorola Mobility,’ spokersperson Jennifer Erickson told Bloomberg. ‘As it relates to Apple’s violation of our patents, we will continue our efforts to defend our own innovation.’ The participants could still appeal in a higher court.
Posner has made a string of increasingly outspoken comments about the case, which earlier this month he said was ‘silly’, as it would cost more to the public than any perceived infringement by Motorola part would have involved. While cancelling the jury trial, he did allow Apple one more chance to argue its case, but that has now failed because Posner does not believe the firm has proved that it has been harmed by anything Motorola has done.
In essence, Posner believes that neither litigant has demonstrated that damages would not be an adequate remedy, even in the case of infringement. They have failed to make a prima facie case of the level of damages to which they would be entitled, but this was a simple failure of proof, he said, not a sign that such damages were impossible to assess. In other words, seeking an injunction requires a higher burden of proof than the firms produced.
Apple and Motorola Mobility will also soon face a final judgement in a case brought before the US ITC (International Trade Commission), which is to review an earlier judgement that Apple infringed a patent held by its rival. The fact that Google is now Motorola’s owner gives the review a new significance, but even more importantly, the ITC has widened its probe to include general issues of how standards-essential patents can be used as weapons.
This issue is exercising a variety of highly influential agencies, including antitrust bodies in the US and Europe. Specifically, they are questioning whether vendors should be able to seek injunctions against infringing products, when the patents are essential to an industry standard. As several judges on both sides of the Atlantic have recently argued too, there is a rising belief that product bans are inappropriate and anti-competitive where standards are concerned, and other remedies, such as court-mandated royalties, should be used instead. The EU has initiated probes against some vendors, notably Samsung, with regards to how they exploit their standards-essential IPR.
The ITC may add its weight to the debate as part of its new review of the Apple-Motorola dispute. Earlier this year, one of its judges ruled that Apple infringed one of four patents cited by its rival. As is common with ITC decisions, this will now be reviewed by the whole panel of four judges, which will also revisit three other patent claims originally filed by Motorola. If the smaller firm’s previous win is reversed, and/or Apple is cleared of infringing the other three patents, it will reduce the firepower Google has to protect Android from Apple’s attacks. Conversely, of course, Apple could find its own position weakened if it is found to be violating more than one of the patents in question, and the ITC does have power to impose import bans on offending products.
But more significantly for the wider IPR issues is the way the ITC has broadened the remit of its new enquiry. The agency has asked lawyers in the case, and the public, for comments on best practice in the case of lawsuits over standards-essential IPR. Of the 13 questions the ITC posed to lawyers on Monday, eight are related to this topic.
As Will Stofega of research firm IDC told Bloomberg: ‘There’s some sort of movement to reduce ‘competition through litigation’. ‘They really want to bring this whole issue to a head. Patent litigation is part of the ordinary due course of business, but this has gone beyond that.’
Two of the patents cited by Motorola relate to 3G standards, including the one that was previously found to be infringed by Apple (it covers ways to eliminate voice to make signals clearer). By contrast, most of the patents Apple has named in its various cases against Android rivals are not part of industry standards, but relate to specific product features, often in the user interface or even the design of a gadget. So ironically, the most aggressive of the IPR warriors stands to gain most if the legal tide turns against injunctions, when infringed patents are standards-essential. Apple competitors like Motorola/Google and Samsung are far richer in such patents than the iPhone maker and may be restricted in how far they can deploy these weapons to defend themselves against their chief rival.
Also at the ITC, the agency has delayed a decision on Motorola Mobility’s case against Microsoft, which also concerns standards-essential patents ‘ four of the five cited in the case relate to standards, for H.264 video compression or Wi-Fi. They are used in Windows and Xbox. The Commission now plans to rule on July 2, rather than this week.
That case has brought Apple and Microsoft into an unusual common cause. Permitting holders of essential patents to seek import bans would negate the purpose of creating standards in the first place, wrote Apple lawyers in a letter to the ITC, in support of Microsoft, earlier this month. It argued that royalties disputes should be handled in civil courts, not at the ITC.
‘Enabling hold-up of the industry could undercut the development of industry standards and reverse the gains in productivity that standardization produces, thereby damaging not only companies like Microsoft, but also US consumers and the public in general,’ Apple wrote in that filing.
Apple also has filed a complaint against Motorola at the European Union, accusing the Google unit of misusing essential patents for unfair competitive gain, and of breaching its contractual obligation to license such IPR on Frand (fair, reasonable and non-discriminatory) terms.