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Apple v. Samsung: Claim Construction at the Federal Circuit

Last month, the Court of Appeals for the Federal Circuit dealt a blow to Apple in its battle with Samsung. Procedurally, Judge Koh in the District Court for the Northern District of California had issued a preliminary injunction that blocked sales of Samsung’s Galaxy Nexus smartphone based on likely infringement of an Apple patent. Samsung was appealing that injunction.

U.S. Pat. No. 8,086,604, “Universal Interface for Retrieval of Information in a Computer System”

Preliminary injunctions are issued before the case is ultimately decided, and one requirement of a preliminary injunction is a finding that the patent owner has a likelihood to succeed on the merits of their suit. Part of the analysis required is a construction of the claims that are being asserted. In this case, Judge Koh read the claims in a way that would likely have lead to a finding of infringement by Samsung. The Federal Circuit, however, disagreed and held that a more restrictive claim construction was appropriate. With the narrower construction, Apple was not likely to win so the injunction was vacated.

This happened a month ago so I’m not trying to report a news story. Rather, I want to lay out the claim language at issue and help people understand how the process works. Personally, I agree with the Federal Circuit’s interpretation and I think the case is informative for attorneys who draft claims and clients who review them before filing. I’ve written before on the power of narrow claims, and this case emphasizes the problems associated with ambiguity in claim language.

The claim at issue was to searching on a device, such as a mobile device. The claim requires that the device comprise “a plurality of heuristic modules” that are used in searching. “Comprising” is an open ended transitional phrase in patent claims. That means that additional limitations and features may be present in an infringing device, but if that device includes all the limitations of the claim, it will still infringe.

The claim then goes on to say, “each heuristic module corresponds to a respective area of search and employs a different, predetermined heuristic algorithm.” Apple and Samsung had different ideas about what this language should mean. Apple argued that “each heuristic module” refers to the individual modules encompassed by the “plurality of heuristic modules” recited earlier in the claim while Samsung argued that “each heuristic module” refers to each module used by the device.

While that may sound like a small variation, it is the difference between infringing the Apple patent, or not. Under Samsung’s interpretation, each and every heuristic module used by the device must have its own predetermined algorithm that is different from all the others and each one must correspond to a different area of search. Samsung’s search used multiple heuristics, but some used an identical algorithm for different areas of search. Accordingly, the addition of those heuristics would avoid infringement despite the “comprising” transitional phrase used in the claim.

The Federal Circuit agreed with Samsung and went so far as to provide guidance to patent drafters on how to avoid such a construction. The Federal Circuit suggests that changing the language to “each of the plurality of heuristic module corresponds to a respective area of search and employs a different, predetermined heuristic algorithm” would have avoided the problem for Apple. In conjunction with the “comprising” transitional phrase, this would have been interpreted as requiring a set of multiple heuristic modules, each of which corresponded to an area of search and each with a predetermined and different algorithm. The addition of heuristic modules that did not meet that requirement would not have mattered.

This whole issue sounds esoteric, but the language used by the Federal Circuit is how I draft claims and it’s because of the ambiguity that would otherwise exist. When you draft a claim, you must look at it from a variety of angles and decided if there are any reasonable interpretations that could be reached that would not be consistent with what the client wants to protect. I learned this practice drafting chemical cases where we wanted to keep a competitor from avoiding infringement by adding another compound to a formulation. It translates to other areas, even simple mechanical devices where I’ve used similar language.

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Apple Scores a Big Jury Verdict Against Samsung, But What About an Injunction?

There are some very good summaries of the Jury verdict, and there is also a lot of speculation about what happens now that the jury found various Samsung patents infringe Apples patents and trade dress. The jury’s verdict form shows how they answered the various IP claims. In summary, all of Apple’s and Samsung’s patents (utility and design) were found valid. However, none of Samsung’s patents were infringed and the vast majority of Apples were. However, the jury form also gives a some indications of what may happen next in this case.

While a lot will be written in the next week on pending appeals and cross appeals, motions for judgement notwithstanding the verdict (JNOV), and other post trial maneuvers, Judge Koh will also have to decide if she will award an injunction preventing future sales and imports of the infringing products. Injunctions are imposed as an equitable remedy by the judge, not the jury. In deciding whether or not to grant an injunction in patent cases, federal judges must apply the eBay factors, named for the 2006 eBay v. MercExchange case in which the Supreme Court clarified the factors that must be weighed. Those factors that a plaintiff must demonstrate include:

(1) that it has suffered an irreparable injury;

(2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury;

(3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and

(4) that the public interest would not be disserved by a permanent injunction.

Since that case, courts have been more reluctant to grant permanent injunctions at the end of a patent trial. One reason cited for the decline in injunctions is that the presumption of irreparable harm is dead. This case is a bit different though.

In addition to the patents infringed, Samsung was found to both infringe and dilute Apples iPhone trade dress (both registered and unregistered). The strength of Apple’s trade dress is in its distinctiveness and Apple’s continued use of it. Trade dress protection is only available so long as the trade dress serves as a source identifier for the product. If another manufacturer can sell goods that infringe or dilute Apple’s trade dress going forward, that would likely do irreparable harm to Apples trade dress rights against other parties.

In this case, there is significant overlap between the design patents and Apple’s trade dress. There is even an arguable overlap between the utility patents and trade dress as the rebounding scroll lists covered by some of the utility patents are part of the look and fee of the various iOS devices. In this unique case, Apple is in a position to argue that failing to provide a permanent injunction would pose an irreparable harm to Apples other intellectual property, namely it’s trade dress.

My personal feeling is that Apple has a better than average chance of obtaining a permanent injunction. Whether the rationale behind it will be based solely on the patents, trade dress, or a combination where the various forms of intellectual property reinforce a showing of irreparable harm will be interesting to see. Keep in mind, that while it isn’t a slam dunk, Judge Koh did show a willingness to impose a preliminary injunction early in the case.

As it stands now, Apple will file its motion and brief on August 29, Samsung will reply on or before September 12 (the rumored launch date of the iPhone 5), and a hearing before Judge Koh will be held on September 20.

UPDATED: Judge Koh, has scheduled the hearing for Decmeber 6.

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A Review of the Legal Claims in Apple v. Samsung: Utility Patent Infringement

Friday was the last day of evidence in the Apple v. Samsung case. Closing arguments will likely be on Tuesday week and then the jury will get the case. I posted earlier on the trade dress and design patent claims Apple has made against Samsung in Apple’s complaint. In this post I’ll focus on Apple’s utility patents.

Unlike design patents and trade dress, utility patents protect useful articles and methods. Here is a list of the patents originally asserted by Apple in its Complaint:

With over a year of pretrial motions, hearings, and orders, the list of asserted patents has been whittled down to three: the ‘163, ‘381, and ‘915 patents. These patents relate to various features of the iOS UI including pinch to zoom, rebounding list scrolling, and rebounding scrolling on the home screen, respectively. These patents are not so broad as to block any competing smartphone. If fact, earlier versions of the Android operating system did not include rebounding scrolling and

In preparation for closing arguments, Apple prepared and filed a chart outlining which Samsung devices were accused of infringing Apples various patents.

Samsung is arguing that the patents are not valid because the features claimed were already known when Apple filed its patent applications.

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A Review of the Legal Claims in Apple v. Samsung: Design Patent Infringement

Today should be the last day of evidence in the Apple v. Samsung case. Closing arguments will likely be on Tuesday next week and then the jury will get the case. I posted earlier on the trade dress claims Apple has against Samsung that are in Apple’s complaint. In this post I’ll focus on Apple’s three asserted design patents related to the iPhone.

Design patents protect the appearance of an article rather than the functional features. Here is a table with the design patents and their titles:

Design Patent Table from Apple’s complaint

When looking at a design patent, the solid lines show what is claimed and protected. Broken lines provide context but don’t limit the patent. So, while the D677 patent shows the iPhone 4, only the front screen area is in solid lines, so the side buttons and other features don’t restrict the scope of the patent. Similarly, the D790 patent claims the GUI. Only the icons and rectangular touch screen limit the scope of the patent. Below is a table comparing the Samsung Galaxy to these three patents:

Apple’s design patent comparison to Samsung’s Galaxy from Apple’s complaint

Samsung is attacking the validity of these design patents by trying to show that phones with the claimed design elements were publicly known prior to the filing of the applications that issued as these patents. Samsung can also avoid liability if they convince the jury that the design features are functional rather than aesthetic.

One thing Samsung won’t be able to rely on is an argument that they independently developed their own design. In copyright cases a defendant can avoid a claim of infringement if they came up with the material without any reference to the copyrighted material. That is because copyright law protects against, as the name suggests, copying. Patent law, however, doesn’t allow for a defense of independent development.

From what I’ve read so far, Samsung isn’t spending much time arguing that their designs are not similar to Apple’s, but are attacking the validity of the design patents. The jury will get to decide that issue.

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Apple v. Samsung: Independent Development is Not a Defense

There has been a lot of coverage of the Apple v. Samsung case going on. I’ve posted on the value of design patents that this litigation highlights. One topic is that of the public release of excluded evidence by Samsung’s lawyers. Some tech blogs have taken issue with the ruling saying Samsung should be able to show evidence that the design was their own idea.

This misses a critical point. Independent development is not a defense to patent infringement. Even if you never saw the design or the patent you are accused of infringing, that will not protect you. This is true even in you came up with the idea first.

Unless an earlier developed design fits into a statutory category of prior art (such as a printed publication, patent, article for sale, etc.) then its existence is irrelevant to validity and infringement. This surprises some people and it is different than other areas of intellectual property law.

For example, trade secret law protects against misappropriation; copyright law protects from copying. In these areas, a defendant can avoid liability by demonstrating independent development. I’m sure the attorney’s for Samsung were well aware of this, and it will be interesting to see what Judge Koh does in response to the public statements and release of evidence that was deemed irrelevant.

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Apple v. Samsung: The Power of Design Patents

Design patents are often maligned as limited in their usefulness. Many clients want to obtain one or more utility patents for their new products but don’t think of the potential power of design patents. In the United States, design patents are used to protect the aesthetic aspects of a product. That may sound narrow or easy for competitors to design around, but that may not always be the case.

Apple’s design patents for the iPhone are an extreme example of the potential power of design patents. It should be noted that nearly 80% of Apple’s damages claim is based on design patent infringement.

Like any other patent, Apple can (and has) also assert infringement in the International Trade Commission. The result of a finding of infringement in the ITC is not damages, but rather an exclusion order that is enforced by customs who prevent the infringing devices from being imported. In the electronics (and many other industries) where production is done offshore, this is a heavy hammer to wield that effectively excludes the infringing products from one of the larges consumer markets in the world.

Because ITC proceedings are streamlined, they are considerably less expensive than litigation. This makes them available to a broader range of patent owners, including smaller companies.

Update —

The Federal Circuit has again held that patent licensing companies can utilize the ITC. There is a requirement that their be potential damage to “domestic industry” and licensing satisfies that requirement.

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In Response to Hyperbole: Apple and the “Andriod Killer” Patent

There has been a lot of discussion of a patent issued to Apple last week. U.S. Patent 8,223,134, issued to Apple on July 17, 2012, and has been called everything from an “Android Killer” to something all other smartphone makers should fear. This patent relates to the the user interface of various iOS devices. However, many people don’t realize how the exclusionary power of a patent is defined. Only the claims, those numbered paragraphs at the end of the patent, define what is protected.

Some have characterized the claims of the ‘134 patent a overly broad, but take a look at the broadest device claim:

A portable multifunction device, comprising:

a touch screen display;

one or more processors;

memory; and

one or more programs,

wherein the one or more programs are stored in the memory and configured to be executed by the one or more processors,

the one or more programs including instructions for: displaying a portion of an electronic document on the touch screen display, wherein the displayed portion of the electronic document has a vertical position in the electronic document;

displaying a vertical bar on top of the displayed portion of the electronic document, the vertical bar displayed proximate to a vertical edge of the displayed portion of the electronic document,

wherein: the vertical bar has a vertical position on top of the displayed portion of the electronic document that corresponds to the vertical position in the electronic document of the displayed portion of the electronic document; and

the vertical bar is not a scroll bar;

detecting a movement of an object in a direction on the displayed portion of the electronic document;

in response to detecting the movement: scrolling the electronic document displayed on the touch screen display in the direction of movement of the object so that a new portion of the electronic document is displayed,

moving the vertical bar to a new vertical position such that the new vertical position corresponds to the vertical position in the electronic document of the displayed new portion of the electronic document, and

maintaining the vertical bar proximate to the vertical edge of the displayed portion of the electronic document; and

in response to a predetermined condition being met, ceasing to display the vertical bar while continuing to display the displayed portion of the electronic document, wherein the displayed portion of the electronic document has a vertical extent that is less than a vertical extent of the electronic document.

The claims are actually fairly narrowly tailored to cover the iPhone and other devices non-scroll bar on list and document displays. The vertical bar must not be a scroll bar; it mus be imposed over the image being displayed; it must change its position as the image is moved vertically by the user (who must be moving the image via natural scrolling); the vertical bar must stop being displayed, i.e., after a preset time with no movement on the screen. All of these conditions must be met by another device’s UI before it can infringe this claim. Omitting any of them will avoid literal infringement.

I realize it’s not as exciting as claiming that the patent will shut down all competition in smartphones, but it won’t.

I personally think this shows the value of patents in this area. What Apple has done with these claims is to provide itself with some protection against direct copying of these features of its UI. Other companies still have a lot of room to develop competing systems and devices, even better ones. These patents help prevent knockoffs from eliminating the incentive to create while still leaving the door open to new competition. In the end, consumers win.

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New Microsoft Tablet an ‘iPad Killer’?

I first heard about this from Mashable.  Apparently, Microsoft is jumping into the tablet market with its own device that is being billed as an “iPad Killer.” It’s not the first time they’ve made a device. After all, the X-box has been a big success. But the tablet market is very different from the game console market, and that’s because Apple has really shaped the market around a concept: the Apple Ecosystem.

Apple’s mobile products (iPad, iPhone, and iPod Touch) run iOS which is exceptionally user friendly and makes it possible to move content across devices.  With the soon to be released OS X Mountain Lion, iCloud will be much more powerful and user friendly and more seamlessly link the Mac on your desk to the mobile devices that are always with you. All this creates inertia for users, and while some can be persuaded to move to a new device, it will be harder to convince them to leave the entire Ecosystem behind.

Microsoft will need to integrate its tablet with smart phones and cloud services to effectively compete. Even then, it may be difficult to overcome the inertia that exists. However, it’s not impossible.

Some studies suggest that Windows phones may overtake iOS by 2016.  A competitive tablet and Microsoft ecosystem could accelerate adoption. Apple has left the door open to a competing ecosystem by releasing iCloud with shortcomings that have been lamented by many Apple fans. While much of the functionality that would make iCloud a terrific service is technically present, only power users are able to make it reach its potential. iCloud will have to become more accessible and seamless from the user’s perspective. Apple’s best strategy in competing with the soon to come Microsoft tablet may not be to build an ever better iPad, but to build a better iCloud.

In any event, this won’t be a tablet war. This will be a battle of ecosystems and the winners will be consumers who will see ever improving platforms vying for supremacy.

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Amazing Customer Service From Apple

This doesn’t necessarily fit with the theme of this blog, but when a company treats me this well, I feel compelled to talk about it.

I purchased a used 2008 MacBook Air a year and a half ago. The machine had Apple Care, Apple’s transferable extended warranty. My wife was using it and unfortunately the hard disk had to be replaced.  Apple handled the repair quickly.  However, it happened again, this time after the expiration of the Apple Care plan.  Apple again repaired the machine quickly, but we were nervous about this becoming a recurring issue.

The third time the machine started to act up, my wife took it into the local Apple Store. The manager looked at the service history and surmised that the problem would likely keep repeating itself. He gave us a choice: either repair

The new MacBook Air in the home office

the machine for a third time in a year, or he would replace it with another 13 inch MacBook Air.  Of course, a new (mid 2011) MacBook Air is a bit of an upgrade.  Okay, it’s a huge upgrade. I no longer even have a hard disk since this machine has an SSD.  I am also now running Lion instead of Snow Leopard.

Granted, Apple may be saving itself more headaches with continued repairs, but this went beyond what I would have expected.  My next purchase will be an Apple Care plan for this notebook.