After 19 months of patent trolling by Motorola, German iCloud users get push email back

More than 19 months after now-Google-subsidiary Motorola Mobility forced Apple to deactivate push email notifications for German iCloud users (over a patent that should never have been granted in the first place), Apple has finally been able to make the feature available again. I'm happy to share this piece of good news with end users, who were unfortunately held hostage in this context. The feature came back at approximately 9 PM local time in Germany (that's 3 PM Eastern Time in the U.S.). Apple's support website confirms the reactivation of the feature.

The unavailability of the feature had only a limited effect on users of the iCloud's email service. No email was lost. But it is more convenient to get instant notifications upon receipt of a new message than to have one's email client check periodically.

Considering just how weak this patent is, it's amazing that it took so long -- and that Apple had to post a $132 million bond only to stop Motorola from causing further inconvenience to iCloud users. To put this into perspective: the main claim of his patent is the only patent claim in the entire ongoing wave of smartphone patent disputes to have been found invalid for four independent reasons by a court of law (in the UK, last December). Even if Google's Motorola -- a convicted patent troll -- overestimated the quality of this patent when it originally sued over it, the UK ruling should have made it recognize its error and cease enforcement. The next splendid opportunity for this presented itself in early April 2013 when the Karlsruhe Higher Regional Court urged Google's counsel to stipulate to a stay of the appellate proceedings in light of his assessment of likely invalidity. Then the Mannheim Regional Court -- the same court that granted the push notification injunction against Apple in February 2012 -- stayed a Motorola v. Microsoft case in April 2013 over doubts concerning the validity of this patent. And finally, on July 9, 2013, the Federal Patent Court of Germany communicated in writing its inclination to hold the patent invalid over at least two of the prior art references that had defeated the patent in the UK.

But, very disappointingly, Google again and again refused to stipulate to the only appropriate thing to do under the circumstances: an unconditional stay of the enforcement of this injunction. For a company that has criticized assertions of "bogus patents", this behavior is, to say the least, inconsistent. And it's not in its own best interest. It will owe Apple damages for premature enforcement of an improper injunction. Also, most iCloud users are also users of Google's products and services.

After the Federal Patent Court's preliminary ruling, Apple filed with the Karlsruhe-based appeals court a motion to stay enforcement against Google's will. In early September, the Karlsruhe Higher Regional Court granted it. I published my own (obviously unofficial) English translation of the order. The order revealed that Apple had to post a 100 million euro ($132 million) bond to get the injunction actually lifted. The paperwork for all of this apparently took a few weeks and presumably Apple's technical staff conducted some internal tests before finally reactivating the push notification feature for end users -- which it did today.

The Federal Patent Court, which is based in Munich, will hold a nullity (invalidation) hearing concerning this patent on November 13, 2013. I will attend the hearing, but the outcome is clear. This patent is finished.

This is one of many examples of the unnecessary damage (sometimes massive, unlike in this case) that the enforcement of injunctions over invalid patents can cause in jurisdictions that allow infringement rulings to come down ahead of (in)validity determinations, an approach called "bifurcation". This is also a major concern in connection with Europe's future Unified Patent Court. In that political context, Google is actually on the good side and has joined Apple, Microsoft, Samsung and others in promoting more balanced rules of procedure for the UPC. The UPC would be able to grant Europe-wide injunctions in cases like this one.

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German appeals court lifts Google's bogus patent injunction over push email against Apple's iCloud

Google wasted a ton of money on Motorola's patents. As of today, it has zero -- I repeat, zero -- enforceable patent injunctions in place against Apple and Microsoft, after almost three years of litigation. By contrast, Apple and Microsoft have scored a number of real wins against Motorola Mobility.

I already mentioned in my previous post (on the Microsoft-Nokia deal) that a spokesman for a German appeals court has confirmed to me that Motorola's push notification injunction -- the only patent injunction Motorola has recently been enforcing against Apple -- has been stayed. Shortly before finishing the previous post, I called a spokesman for the Oberlandesgericht Karlsruhe (Karlsruhe Higher Regional Court), who was able to confirm to me officially that this appeals court granted an Apple motion stay the enforcement of the Mannheim Regional Court's February 2012 injunction.

As soon as Apple posts a bond (a requirement meant to secure Motorola's ability to collect infringement damages should it, against all odds, prevail at the end of this litigation and, equally unlikely, Apple go bankrupt in the meantime), it can give the push email feature back to all Germany-based iCloud users. No email got lost as a result of Motorola's enforcement, but as soon as users accessed the iCloud's email service from within the borders of Germany, the push notifications informing a client device of the arrival of a new message were automaticaly deactivated in order to comply with the injunction. The workaround solution was to configure the email client to periodically check for new email.

In practical terms, this means that German iCloud email users get push notifications back in what I believe is just a matter of days (just a small amount of paperwork). And when all is said and done, the most likely outcome (by far and away) is not going to be that Motorola collects infringement damages from Apple: instead, Apple will (if it prevails on the merits) be able to collect damages from Google's Motorola for enforcement of an injunction that shouldn't have been granted in the first place. Google can file this under "Motorola Mobility acquisition costs".

I wrote in July that "[i]t's time for Google to stop its trollish enforcement of a bogus patent against Apple in Germany", considering that the patent had been considered invalid by three different courts. But Google kept on trolling Apple and pointlessly inconveniencing its users regardless of the crystal clear illegitimacy of continued enforcement. Given that Google has publicly complained about "bogus patents", it should have recognized its error and ceased enforcement. It kept on trolling regardless, but yesterday the Karlsruhe-based appeals court put an end to it. Finally! I got asked all the time (mostly via Twitter) by German Apple users who wanted their push email notifications back.

Motorola had been enforcing this injunction for more than 18 months. Apple was saying from the beginning that Motorola's push notification patent is invalid, which is also the preliminary position of the Federal Patent Court of Germany. I really respect the Mannheim Regional Court because of its in-depth understanding of patent cases, but when I attended the related trial in November 2011, I strongly disagreed with the court: I considered this one a very clear case of a patent that is either invalid (if interpreted as broadly as Motorola did) or not infringed. When I heard the presiding judge describe this ridiculous patent, I thought Mannheim was the Eastern District of Texas on steroids. Then the injunction came down because under Germany's bifurcation regime there is no such thing as a full invalidity defense in an infringement case, enforcement began in late February 2012, and the following month the Karlsruhe-based appeals court denied a first Apple motion to stay enforcement. It's relatively difficult to get a German patent injunction stayed by an appeals court (unless the underlying facts change, such as if a new FRAND licensing offer is made, which applies only to standard-essential patents, not this one).

In April, the Karlsruhe court held the appellate hearing (on the merits, not on enforcement), and due to an illness I was unable to attend in person. I heard that the appeals court was inclined to agree with at least one of the four reasons for which a UK court had, further to a declaratory judgment complaint by Microsoft, held the patent invalid, and suggested to Google's counsel to stipulate to stay, which he initially declined but ultimately felt forced to do. Based on what I heard, I mistakenly thought that push email was going to be reactivated shortly thereafter. I didn't know that the suggested stipulation to a stay related only to the appellate proceedings, not to the then-ongoing enforcement. I learned that the hurdle is actually lower to get an appeal stayed than to get enforcement stayed -- that's because the German philosophy with respect to injunctive relief is pretty much the opposite of the U.S. approach. In the U.S., the assumption is that the patent holder can usually be made whole through monetary compensation, so if there's too much doubt, enforcement isn't allowed. In Germany, the whole idea is that a patent is next to worthless unless you can enforce an injunction, and the victim of premature enforcement of an injunction that isn't upheld on appeal can always seek damages later. As a result, there's a higher hurdle (in terms of how convinced a court must be of the likely invalidity of patent-in-suit) for getting the enforcement of an injunction stayed than for getting the appellate proceedings on the merits stayed. I admit that it was a mistake on my part to apply U.S. thinking concerning injunctive relief to a German litigation -- well, no one is perfect, and I promise to continue to work hard to provide the most accurate coverage of smartphone patent issues.

Even though Germany's injunction-friendly rules allowed further enforcement for some time, the right thing for Google to do would have been to cease enforcement under the circumstances. It knew the UK ruling; it knew the Karlsruhe appeals court's thinking; and shortly after the appellate hearing in the Apple case, the Mannheim court, which had granted the injunction against Apple, stayed a separate Motorola case against Microsoft over doubts concerning the validity of this patent. There was no shortage of guidance that should make a reasonable litigant back down.

The game changer in Apple's favor was that earlier this summer the Bundespatentgericht (Federal Patent Court of Germany) informed the parties of its preliminary position that this patent is indeed invalid. The Federal Patent Court will hold a nullity (invalidation) hearing in November, and I'm sure that this patent will be declared invalid (which in Germany has retroactive effect). On the basis of the Federal Patent Court's preliminary position, Apple brought a second motion to stay enforcement, and last week the Karlsruhe Higher Regional Court granted it.

It's regrettable that Apple even had to bring a motion when everyone knows that this patent is dead in the water. But Google, which speaks out and lobbies against patent trolls all the time, wanted to enforce the only enforceable patent injunction it had. It didn't want to practice what it preaches.

$12.5 billion is a lot of money to pay for a company acquired primarily for patents when those patents don't provide its acquirer, at this point, with even a single enforceable injunction anywhere on this planet. Quite clearly, the kind of behavior Google/Motorola showed in connection with the push notifications bogus patent is not the solution to Android's IP infringement problems. Google needs a better plan than that. And it shouldn't do things that only cause a hassle to end users. At the end of the day, Apple's users are also potential (and most of them actual) users of Google's services.

[Update] The following day I published my (unofficial) translation of the order to stay. Apple is required to post a $132 million bond (or to make a deposit of the same amount), and the order reveals that Google initiated three contempt proceedings against Apple over this bogus patent. [/Update]

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Appeals court likely to give German iCloud users push email back on 24th, lift Google's injunction

Due to an injunction Google's Motorola Mobility won against Apple over a dubious patent in Germany in February 2012 and started to enforce that same month, Apple was forced to deactivate push notifications for users accessing the iCloud (or its predecessor, MobileMe) from Germany. This relates primarily to push email but also includes contact and calendar updates, and it's not about whether users can access their email and other data but only about whether it is automatically sent to them or whether they have to configure their devices to check periodically for updates. Still, a hassle is a hassle, and this hassle has been caused for well over a year. But there's light at the end of the tunnel: the Karlsruhe Higher Regional Court will announce a decision on Apple's appeal on April 24, and based on how yesterday's hearing went, my prediction is that the enforcement of this injunction will come to an end:

The most likely outcome is a stay pending a parallel nullity (invalidation) action before Germany's Bundespatentgericht (Federal Patent Court). In fact, there are two nullity actions that will be heard together: one brought by Apple and another one brought by Microsoft. Over the last eight days the Federal Patent Court has already invalidated two other patents asserted in high-profile wireless disputes: Apple's slide-to-unlock patent and -- making yesterday a doubly successful day for Apple's defensive litigation in Germany -- a Samsung 3G (UMTS) declared-essential patent. I can't imagine that Motorola's push patent, which a UK court found invalid last year for multiple independent reasons, will survive the nullity proceeding unless its claims are amended to the extent that its scope is narrowed to what the claimed invention originally related to: ensuring the delivery of messages to pagers attached to different garments. Such a narrowing amendment would, of course, render the patent commercially valueless in today's market.

I wasn't able to attend yesterday's hearing in person (I fully intended to, but for reasons beyond my control I couldn't). But I've been able to obtain information on how it went, and I learned from a reliable source that the court expressed doubts about the validity of the patent in light of at least one of the prior art references underlying Microsoft's resounding victory in the UK. I published the UK ruling in February. Its paragraphs 89-97 discuss the prior art reference the Karlsruhe-based court is mostly interested in, Internet Message Access Protocol (IMAP) version 4, described in RFC 1730 dated December 1994 and published by the Internet Engineering Task Force (IETF). Look at it this way: Google, which claims to be all for open Internet standards and against proprietary technologies, has been enforcing an injunction for more than a year against Apple, and has been (unsuccessfully) pursuing one against Microsoft since 2011, over a feature that an open and universal Internet standard already described before the priority date of the relevant patent. This is like filing a patent on hyperlinks and suing Apple and Microsoft over it.

The court even suggested to Google's counsel to stipulate to a stay pending the nullity action, but Google declined. The fact that the court encouraged a stipulated stay is yet another indication that Google doesn't have much of a chance to continue its enforcement of this injunction come April 24. Also, it's not common for a decision to be scheduled so soon after the appellate hearing, suggesting that the appeals court wants to put an end to illegitimate enforcement.

It's also possible that the court will clear Apple of infringement. The court spent a considerable amount of time discussing Apple's non-infringement defense, but did not indicate an inclination, and certainly not as clearly as in connection with the obvious (in)validity of the patent-in-suit.

If Google ultimately loses this case, as I believe it will, then it will owe Apple damages for enforcement of an improperly-granted injunction.

A few months after suing Apple over this patent, Motorola also asserted it against Microsoft. Not only was the case against Microsoft filed later but it also took much more time as it involves some additional defenses Apple did not and could not raise (Exchange-specific prior user rights and grant-back obligation under ActiveSync license). The Mannheim Regional Court will announce a decision on that one in a week from tomorrow (April 19), and the way I see it, Google's case will be stayed or dismissed right away. The Mannheim court is presumably in close contact with its appeals court and well aware of it position now following yesterday's hearing.

Google's German push email injunction against Apple is presently the only injunction any "Android company" is presently enforcing anywhere in the world against Apple (and nothing is being enforced against Microsoft). In two weeks' time, even this one will likely be history. There are people out there saying that there are wins and losses on both sides, but the fact of the matter is that the only "wins" the Android camp scores are non-defeats, not true wins in terms of offensive achievements. That's why licensing -- not litigation -- is the only pragmatic solution for Android device makers to address their platform's infringement problems.

Google's Motorola is represented by Quinn Emanuel. Both Apple (in the appellate proceedings) and Microsoft are represented by Freshfields Bruckhaus Deringer, and Bird & Bird scored a strategic victory over this patent for Microsoft in the UK.

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Microsoft defeats push patent in UK that Google's Motorola is also using against Apple in Germany

Bloomberg reports that Judge Richard Arnold of the UK High Court has today ruled that Google's (Motorola Mobility's) EP0847654 on a "multiple pager synchronization system and method", which is already being enforced against Apple's iCloud email service and over which Google is suing Microsoft (both in Germany), "is invalid and should be revoked".

I've always been skeptical of this patent. The claimed invention was made to address synchronization issues involving pagers and relates to a situation in which a user has different pagers attached to different garments. It's a bit of a stretch to assert it against today's push notification services. If interpreted that broadly, it should be held invalid as Judge Arnold determined today.

The decision comes ahead of a trial scheduled by the Mannheim Regional Court for February 1, 2013, which will be the second trial (after a reopening of proceedings following the first one) in this Motorola v. Microsoft case. There are also two upcoming opportunities (both likely in 2013) for Apple to leverage this ruling in connection with an injunction against the iCloud's push email feature. Motorola won that injunction in early February 2012, started to enforce it only three weeks later, and an Apple motion (brought with the appeals court in Karlsruhe) to stay the injunction was denied in mid-March.

While courts in different European countries decide independently, they do take note of each other's rulings on the same (in)validity and infringement issues. There are no less than three German court hearings (all of them either scheduled for, or about to be scheduled and likely to take place in, 2013) at which today's UK court ruling will be leveraged by Apple and Microsoft:

• The aforementioned Mannheim trial on February 1, 2013. A first trial over Motorola's attempt to enforce this patent against ActiveSync in connection with Microsoft Exchange, Hotmail and Xbox Live (and products implementing the related services) was held in mid-March 2012, and Microsoft raised a multiplicity of defenses. One of those defenses, prior user rights, persuaded Judge Andreas Voss ("Voß" in German), who also presided over the Apple case involving this patent, to reopen proceedings. The court considered it a possibility that Microsoft already made use of the patented technique, in Germany, before Motorola filed its patent application -- not in a way that would necessarily count as prior art, but which might be sufficient to support a prior user rights defense.

  At the time, Judge Voss said the court had proposed that the parties provide further briefing on this defense and that the court would then issue a ruling without another trial. But just this week I found out from the court that a second trial has been scheduled for February 1. A ruling would then likely come down in late March or in April, and the UK ruling supports Microsoft's motion for a stay pending a parallel nullity (invalidation) proceeding at the Munich-based Federal Patent Court. A stay would only have to be decided if an injunction would otherwise be granted.

  German courts stay infringement proceedings only if they are convinced of a high probability of invalidation. Apple was denied a stay, but Microsoft would be able to point not only to the UK ruling but even more importantly to the fact that the Federal Patent Court's decision would come down not much later.

• The aforementioned nullity action before the Federal Patent Court will likely also be decided in 2013. The Federal Patent Court's decision can (and absent a settlement will) be appealed by the losing party to the Federal Court of Justice. In that case, the patent, which has an August 1995 priority date, might expire before a final non-appealable ruling on its validity in Germany.

• At some point in 2013 (I have not yet been able to find out the exact date, and it may not have been set yet) there should also be the hearing at the Karlsruhe Higher Regional Court on Apple's appeal of Motorola's injunction. The fact that the appeals court didn't stay the injunction doesn't mean that Motorola is going to win. The hurdle is reasonably high for German appeals courts to order stays. (It is often underestimated by observers because stays get more attention than denials.) The appeals court could stay the appeal, and simultaneously the enforcement of the existing injunction against Apple, until the end of the nullity (invalidation) action, possibly including its appeal to the Federal Court of Justice.

It is worth noting that the patent which Microsoft defeated today is the only patent over which an Android device maker is presently enforcing an injunction anywhere in the world against Apple. A couple of injunctions that Samsung won in Korea are currently stayed (for the duration of the appeals). HTC never won anything against Apple, and Motorola also won some injunctions over standard-essential patents (SEPs) against Apple (a cellular patent) and Microsoft (two H.264 patents in Germany, one of which has expired), but can't enforce those: Apple is licensed, except that the court has yet to determine the FRAND royalty rate on which the parties can't agree, and Microsoft won an anti-enforcement injunction in the United States that was recently replaced by a summary judgment ruling, both of worldwide effect because Motorola originally offered the relevant patent families on a worldwide basis to Microsoft in a letter sent from the Chicago area to the Seattle area and Microsoft brought a U.S. contract action eight to nine months before Motorola's German lawsuits.

The push notification patent is not essential to an industry standard set by a consortium (and not subject to the FRAND contract case in the U.S.), but there might be a licensing issue because of Google's assertion of this patent against ActiveSync given that Google at some point took an ActiveSync patent license. So did Motorola, a fact that was discussed at the first Mannheim trial.

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Motorola forces Apple to deactivate iCloud and MobileMe push notifications for German customers

Last night, Apple posted some new information (in German) to its German support knowledge base, informing customers using the iCloud or MobileMe push email service in Germany of the need to pull their email manually (by bringing up their email client) or configuring their email clients to check periodically for new messages. (Just to avoid misunderstandings: iCloud and MobileMe are both operational, but their push notification features are affected, within the borders of Germany.)

This was previously reported by the leading German news agency, dpa (Deutsche Presse Agentur).

Apple points to a Motorola patent ruling that is under appeal and stresses that this "only impacts customers in Germany who use a Push setting to get their MobileMe and iCloud email". The affected customers will still receive email -- new messages just won't be pushed to them BlackBerry-style. Apple also says that it is appealing the decision and "believes this patent is invalid".

It appears that Motorola Mobility, which is in the process of being acquired by Google, has sent Apple an enforcement letter demanding compliance with a permanent (but appealable) patent injunction that was handed down three weeks ago by the Mannheim Regional Court. The Motorola patent at issue in that litigation harks back to the time of pagers, a predecessor of text messages.

This is the first time that Apple's customers (in one particular country) start to see and feel the effects of the ongoing patent disputes in the smartphone and tablet computer industry in the form of a (temporary) removal of certain functionality. Earlier this month, Apple also had to temporarily remove some of its products from its German online store.

The key difference is that the temporary removal of products was due to an injunction over a standard-essential patent. A week ago, it became known that Apple lodged a formal antitrust complaint against Motorola Mobility with the European Commission over MMI's allegedly anticompetitive use of standard-essential patents. This week, Microsoft also complained about this kind of conduct by MMI. But the patent that now affects Apple's push email service in Germany does not appear to be essential to any industry standard. If the very same patent was standard-essential, Apple couldn't just switch off a certain feature: it would have to stop selling its products altogether.

I don't blame Motorola for seeking the enforcement of an injunction based on a patent that is not standard-essential. This is fair. Like I said, it's the first time that Apple's customers experience a certain kind of technical restriction, but as a result of Apple's own enforcement of patents, Android users see this happen all the time, with features either being removed or hobbled. For example, as a Samsung customer, I no longer get the overscroll bounceback feature on my device; I have to unlock my device with the inferior slide-to-unlock circle (last week, Apple won a German ruling against Motorola based on the relevant patent); and a few months ago, after I updated my firmware, I noticed that turning pages in the Android photo gallery was different (and less convenient).

Apple may be right that Motorola's push messaging patent is invalid. One thing that German patent law has in common with U.S. patent law (but not with UK patent law, for example) is that it is designed to allow the enforcement even of patents that should never have been granted in the first place. In the United States, a court will only deny an infringement ruling if there is "clear and convincing evidence" (a relatively high standard) of invalidity, and in Germany, a regional court like the one in Mannheim will only stay an infringement case for the duration of parallel nullity actions in other courts if it is convinced of a "high probability" of invalidity. In my experience, Mannheim is a particularly difficult court to persuade of the invalidity of asserted patents. The judges there routinely point out that it's not their job to analyze in full detail whether a patent-in-suit is valid. In particular, they are highly reluctant to question the non-obviousness of a granted patent.

The big problem with the American and German approach is that in this industry, a majority of all granted patent claims are invalid as granted. Patent offices aren't really able to identify all of the relevant prior art. A patent examiner may spend about 15 hours (spread out over the course of several years) on the examination of a patent application. That's by far not enough to research the whole body of prior art in this field, where a lot of prior art isn't even contained in any patent database.

It's basically a value judgment of lawmakers (and, within their respective wiggle room, of judges) whether they think it's better to hand down too many rulings in favor of the holders of dubious patents than to be more skeptical of the validity of issued patents. In my opinion, both the United States and Germany are on the wrong track here simply because statistics show that too many patent claims are invalid as granted. If most patent claims were valid, it might be acceptable (though still problematic) to take into account that some rulings are based on patents that should never have been granted. But in this industry, the fact that a patent office issued a patent isn't sufficiently meaningful to justify injunctions and other remedies.

From a strategic point of view, it wouldn't make sense for Apple to back down at this stage and settle on Google's and Motorola's terms. The impact of this enforced injunction in Germany is visible, but it is clearly limited. It causes a minor inconvenience that won't result in any loss of sales or any appreciable reduction of customer satisfaction.

There are probably some people at Apple who look at this and think to themselves: "Is this already all that Motorola can do? FRAND abuse and a push notification patent? And that's worth $12.5 billion to Google?"

With a view to Apple's appeal, the hurdle for a suspension of the enforcement of the injunction is lower when an appeals court (in this case, the Karlsruhe Higher Regional Court) evaluates Apple's invalidity contentions. A German appeals court is willing to stay if it sees a probability above 50% of the patent being invalid. There's no "high probability" (which suggests something like 70% or 80%) requirement at that stage. But it may take Apple a year or so to get to the point at which the appeals court makes this determination (though a stay could also happen much more quickly).

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Google authorized Motorola to seek an injunction against the iPhone 4S and iCloud

These days, you can probably hear a pin drop if Apple and Google are in the same room. Tensions are rising high as a direct legal clash increasingly appears to be inevitable. The latest hostility is a new lawsuit filed yesterday by Motorola Mobility, with green light from Google, in the Southern District of Florida, seeking an injunction against the iPhone 4S and the iCloud over a package of six patents previously asserted against older Apple products in the same court.

Google must have authorized this action because this complaint formally represents a new lawsuit (since it was too late to inject supplemental infringement contentions into the first Florida action) and Section 5.01(j) of the Google-Motorola merger agreement does not allow MMI to "assert any Intellectual Property Right in any new Action" without Google's consent (either under the agreement or in a separate document, which is what presumably happened in this case).

All six Motorola patents-in-suit are asserted against the iPhone 4S. All but two (the '987 and the '737 patents) are also asserted against the iCloud.

Here's a list of the patents:

• U.S. Patent No. 5,710,987 on a "receiver having concealed external antenna"

• U.S. Patent No. 5,754,119 on a "multiple pager status synchronization system and method"; Motorola is asserting the European equivalent of this patent against Apple in Mannheim, with a decision (that will likely be favorable for Motorola) scheduled for Friday of next week (February 3, 2012)

• U.S. Patent No. 5,958,006 on a "method and apparatus for communicating summarized data"

• 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. 6,008,737 on an "apparatus for controlling utilization of software added to a portable communication device"

• U.S. Patent No. 6,377,161 on a "method and apparatus in a wireless messaging system for facilitating an exchange of address information"

As I mentioned before, Motorola would have preferred to add the iPhone 4S and the iCloud to the list of technologies accused in an action that started in late 2010. However, that litigation is already far along, with a trial scheduled for this summer, and the judge rejected Motorola's supplemental infringement contentions as untimely but said that MMI would be free to accuse those technologies in a separate lawsuit.

It's unclear at this stage how long it will take for this second Florida lawsuit to go to trial. The Southern District of Florida moves relatively fast. The fact pattern will be largely consistent with that of the first Florida action, but there will be some differences. Also, with reexaminations of some of the patents-in-suit ongoing, there could be new information from the patent office that might affect the outcome. But the court will be able to recycle some of the work it did for the first action, such as on claim construction (unless any new evidence relevant to claim construction is presented in the course of this new litigation).

Since the product release cycles of tech companies are much shorter than the average time to trial of U.S. patent infringement lawsuits or ITC complaints, it's the normal course of business that companies look for ways to use previously-asserted patents against new products.

Another example is that Apple, at a recent Mannheim hearing, presented supplemental infringement contentions relating to the Samsung Galaxy Nexus smartphone, the official lead device for Android 4.0 (aka Ice Cream Sandwich). Today I saw that the Korea Herald quotes an unnamed Samsung spokesperson as saying that the Nexus was not on the list of accused products. In this case, I am absolutely convinced that I am right and the Korea Herald's source doesn't have up-to-date information. I attended the hearing and Apple's lead counsel in that action, Dr. Frank-Erich Hufnagel of Freshfields Bruckhaus Deringer, presented contentions and said that they are "new" and relate to "the Nexus" (he mentioned the same at least twice). In an Apple v. Samsung infringement lawsuit, what would "the Nexus" mean, if we talk about "new" contentions, if not the Samsung Galaxy Nexus? Certainly not an HTC phone. Samsung is a large organization and Apple's new contentions may not yet have been received and processed accordingly, but just to be clear, I don't make these things up. There were various other spectators at the hearing, not just me.

Getting back to this new Motorola lawsuit, it's certainly not the same kind of aggressive escalation as a lawsuit over a new set of patents would have been, but this shows that Motorola continues to fight hard.

The fact that Google signs off on an additional lawsuit at this stage -- as opposed to waiting for its purchase of MMI to close -- also says something. Two days ago I blogged about the possibility of Google ratcheting up patent enforcement after the closing of its proposed acquisition of Motorola Mobility.

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Judge rules AGAIN that Motorola can't attack iPhone 4S, iCloud and iTunes in Southern Florida litigation

There's been some back-and-forth in a Southern Florida lawsuit involving Apple and Motorola Mobility over the question of whether Motorola was still allowed to add, as it recently did, the iPhone 4S, iCloud and iTunes to its list of accused products, and to amend its infringement allegations with respect to other and older products. On November 29, 2011 (exactly one week ago), the court granted an Apple motion to strike Motorola's supplemental contentions, only to vacate the decision the next day in light of the fact that Motorola had replied in time but the court had ignored Motorola's reply because it was, mistakenly, considered to have been filed after the relevant deadline.

After Motorola's response to Apple's motion was accepted, Apple had until yesterday to reply to it. Apple defended its original motion and also opposed a Motorola request for an oral argument (a hearing in court or, which Motorola indicated it would consider sufficient, a conference call).

Today, Judge Ursula Ungaro has entered a new decision, once again granting Apple's motion to strike Motorola's supplemental infringement contentions. In other words, the iPhone 4S, iCloud and iTunes are once again outside the scope of this litigation, presumably on a definitive basis.

The judge found Motorola's arguments in opposition to Apple's motion "unpersuasive":

• Motorola argued that a deadline for filing those additional contentions, which was set in a Scheduling Order by the court, was never described as a "final" deadline. The court, however, tells Motorola that deadlines are deadlines with or without the word "final".

• Motorola also argued that "Apple’s conduct gave Motorola the
  impression that the infringement contentions could be supplemented after the June 1, 2011, deadline", but Apple denied this, and even if Apple had consented to a belated filing of those contentions, the parties would have had to file a motion to ask the court, for "good cause", to extend the deadline.

• Motorola also pointed to the way the United States District Court for the Western District of Wisconsin handled another litigation between the same two parties, and to a lawsuit involving other parties (Biax Corp. v. Nvidia Corp.) in the District of Colorado. However, the court found that those case were distinguishable from the Florida action.

• Motorola argued that there's still time for discovery until January 17, 2012, and apparently argued that as long as that deadline can be met (though new contentions result in new discovery requests), the deadline for supplemental infringement contentions shouldn't matter. The judge found "the logic of Motorola's argument [...] wanting" and doesn't want to open the door to unpredictable delays that could result from discovery issues arising from late supplemental infringement contentions.

• the court also tells Motorola that it isn't "prejudice" if Motorola needs "to file an entirely new case against Apple" to go after those additional products and services, given that "Motorola has already filed several cases against Apple" anyway and that the related filing fees are not substantial to such a large corporation.

If Motorola adopts the judge's advice, we may see yet another lawsuit between those two companies. They are already suing each other in multiple fora in the United States and in Germany.

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After judge recognizes error, Motorola may still be allowed to attack iPhone 4S, iCloud and iTunes in Southern Florida

Earlier this week I reported on an order in a litigation between Motorola Mobility and Apple in the Southern District of Florida. The federal judge presiding over that case granted an Apple motion to strike Motorola's supplemental infringement contentions, which included newly-minted accusations of patent infringement targeting the iPhone 4S, iCloud, and iTunes.

When I saw the order, I noticed that it made reference to Apple's motion but not to Motorola's reply filed the previous day. The judge initially considered that reply untimely: it appeared to be late by one day.

District courts set motion briefing deadlines in their local rules.

But on Wednesday, Judge Ursula Ungaro entered an "order vacating [the] order granting [Apple's] motion to strike [Motorola's new accusations]". What had happened is that the judge got confused about the exact deadline:

"The Court neglected to grant Motorola the full time to respond to Apple's Motion (D.E. 178). Since the response deadline fell during the Thanksgiving holiday, Motorola filed a timely response when it submitted its response on the first business day following the holiday."

The judge (or whoever keeps track of those deadlines for her) is probably a bit embarrassed now, but these things can and do happen.

The net effect is that the original order was based only on Apple's side of the argument, with Motorola's opposition brief having been erroneously ignored. The judge will therefore make a final decision taking into consideration both sides of the argument. This also means that Apple, as the moving party, gets the chance to reply to Motorola's finally-accepted opposition brief. Apple has until Monday to do so.

The judge may very well reach the same conclusion as last time. According to Apple, Motorola brought those supplemental infringement contentions involving the iPhone 4S, iCloud and iTunes (and also some new contentions involving previously-accused products) five months after a deadline set by the court.

But it's always easier to win without resistance (in this case there was resistance, but it was erroneously ignored). Motorola's opposition brief raises various issues that could now result in a reversal, and Motorola is now trying to capitalize on the opportunity presented by the reopening of the motion briefing process: Motorola has asked the court for a hearing, which Motorola said wouldn't take more than 30 minutes per party and could be held by telephone. Apple, however, disagrees with Motorola's argument that this would help "narrow the issues" and, in a brief filed today, asks the court to decide based on the parties' written pleadings.

The court will presumably hand a ruling on Motorola's supplemental infringement contentions shortly after Apple files its reply brief.

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Motorola's default judgment against Apple to be reviewed by German court in February

On November 4, I was first to publish a default judgment entered by the Mannheim Regional Court in favor of Motorola Mobility against Apple Inc., relating to two patents allegedly infringed by some or all of Apple's mobile devices.

The default judgment came down after Apple's lawyers failed to show up for a hearing on October 21, 2011. It's still unclear whether this was due to an administrative oversight or procedural tactics.

German default judgments are preliminarily enforceable, but all of the German lawyers I asked expected Apple to request and to be granted a stay simultaneously with its objection to the default judgment, which objection is not the same as an appeal to a higher court but simply a means of requesting a second hearing before the same court.

Today the press department of the Mannheim Regional Court confirmed that a hearing in this case has indeed been scheduled for February 3, 2012, at 1 PM.

The court didn't provide any further detail, but the only explanation for such a second hearing date is that Apple, quite expectedly, objected to a default judgment. It's also a given that Motorola Mobility won't be able (and possibly wouldn't even want) to enforce the default judgment until the court hands a substantive ruling.

Four hours prior to that hearing, the court will pronounce its ruling on another litigation involving Motorola and Apple. That timing makes too much sense to be a coincidence. The other case relates to a patent allegedly infringed by the iCloud and its predecessor, MobileMe, and the defendant in that case is Apple Sales International, an Irish Apple subsidiary. That patent is one of the two patents asserted against Apple Inc. (the worldwide parent company) in the default judgment case.

I attended the related hearing on November 18 and it appears to me that MMI is fairly likely to prevail. Whatever the ruling on February 3 may be, the subsequent hearing will likely focus on the other patent-in-suit, which appears to be a FRAND-pledged patent declared essential to the 3G telecommunications standard. That said, Apple does have the opportunity to present new evidence and arguments with respect to the "iCloud patent".

While it appears that Motorola won't be enforcing the default judgment, a fact that validates Apple's initial reaction, Apple may be in for a "Mannheim steamroller" in only a couple of months.

Tomorrow (Friday, December 2, 2011), there will be another Mannheim hearing on a third Motorola v. Apple litigation. The leading German news agency, dpa (Deutsche Presse-Agentur), reported that hearing date a few weeks ago. I don't know which patents are going to be at issue tomorrow, nor do I have the names of the defendants, but I suspect that this is an action against Apple GmbH (the German subsidiary) and possibly also Apple Retail Germany GmbH, the Apple entity running the official German Apple Stores. I will report on that hearing tomorrow.

In the smartphone patent wars, Mannheim is a particularly important venue -- currently it's the center of gravity for all such litigation outside the United States. Besides the Motorola v. Apple cases I just mentioned, Motorola and its wholly-owned subsidiary General Instrument Corporation are also suing Microsoft in that forum; Samsung has three Mannheim lawsuits going against Apple (two of which will be adjudicated in the second half of January); and patent holding firm IPCom is now enforcing a Mannheim ruling against HTC over a 3G-essential patent after HTC withdrew an appeal.

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Motorola not allowed to attack iPhone 4S, iCloud and iTunes in ongoing litigation in the Southern District of Florida

Today the United States District Court for the Southern District of Florida granted an Apple motion to strike Motorola Mobility's supplemental infringement contentions, i.e., accusations of infringement that Motorola brought into the game at a rather late stage.

Motorola filed those contentions on October 28, 2011. The document didn't enter the public record, but Apple filed a motion to strike, Motorola replied to it (too late), and the court issued an order. From the pleadings, I've gathered that Motorola's supplemental contentions not only raised new issues with respect to certain originally-accused products but also brought three new products into that lawsuit: the iPhone 4S, the iCloud, and iTunes.

In its (belated) opposition brief, Motorola Mobility said that "[i]f the motion to strike were granted [as it now has been], Motorola seemingly would have to file an entirely new case against Apple to claim that these products infringe exactly the same patents at issue here". MMI furthermore complained that it "would risk having its new case heard before a new Court lacking in familiarity with claim construction principles or the technology at hand—in other words, Motorola would have to present its case all over again, and risk an inconsistent verdict on claim construction and other legal and factual questions".

We will see what the outcome of this litigation is. The trial is scheduled for August 2012. There are ways in which rulings concerning the infringement of a given patent with a given kind of technology can also affect more recent products. It's possible that MMI somewhat overstated the impact of Apple's motion to strike, but there's no doubt that it would have been in MMI's interest to inject those new issues into this ongoing litigation.

While today's court order is favorable to Apple's interests, previous case management orders worked out better for MMI. In particular, Apple couldn't get this Southern Florida lawsuit transferred to the Western District of Wisconsin, and, more recently, the court denied an Apple motion to stay this litigation pending the consummation of Google's proposed acquisition of MMI.

With respect to the ability of a party to attack new products at a late stage in a lawsuit, there are clearly differences between the various jurisdictions in which those two companies are litigating. In Mannheim, Germany, injunctions are typically phrased in a way that does not name particular products. Apple is still trying to convince the court that the iPhone 4S does not infringe two Samsung baseband patents, and the judge is willing to take a look at a brief that Apple will file until December 23. Motorola, however, appears fairly likely to win an injunction against Apple in Germany that will probably affect the iCloud.

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Motorola fairly likely to win German patent injunction against iCloud in February -- Apple demands 2 billion euro ($2.7B) bail

The German city of Mannheim is slowly but surely giving Cupertino some serious headache.

After a default judgment against Apple Inc. over two patents and preliminary indications (a week ago) of a possible injunction or two (or three) in Samsung's favor in the second half of January, Apple experienced a dreadful hearing today in an action brought by Motorola Mobility against Apple Sales International, an Irish company that supplies products to many if not all German customers. The court doesn't appear to buy any of Apple's defenses at this stage. It may still change mind until the ruling, which is scheduled for February 3, 2012, 9 AM local time, but if it had had to rule today, I have no doubt that Apple would have lost.

In this litigation, MMI asserts only one patent:

EP (European Patent) 0847654 (B1) on a "multiple pager status synchronization system and method"; this is the European equivalent of U.S. Patent No. 5,754,119. This is one of the two patents asserted in the action in which a default judgment was entered against Apple.

Apple has not raised any standards-related defenses with respect to this one. Apple's counsel said that they're not currently aware of any industry standard this patent is essential to. (And there wasn't any talk about patent exhaustion either -- this is not a baseband patent.)

The court consistently rejected Apple's attempts to narrow the scope of the patent. The interpretation of the words "responsive to" was discussed in detail, and MMI's broader construction is the one supported by the court, at least at this stage. Apple will file a post-hearing pleading (as will MMI) until December 16, 2011. But it will be hard to achieve a narrower interpretation of the patent.

Apple's invalidity contentions appear to be dead in the water as far as the Mannheim court is concerned. Apple would have to show that their nullity action is more likely than not to succeed, and the court is very far from believing so.

Accused technologies: MobileMe and iCloud

The related complaint was filed on April 1, 2011 (April Fools' Day -- what a day to bring a patent infringement suit).

At the time, MMI accused Apple's MobileMe service of infringing the patent. In a later pleading, which was submitted after Apple's announcement of the iCloud ahead of this year's Worldwide Developer Conference (WWDC), MMI told the court that it also considered the iCloud to infringe the related patent. According to MMI, MobileMe is "integrated" into the iCloud, and this also results in a name change. But Apple says that MMI's infringement accusations lack specificity and therefore refuses to defend itself against them. However, unlike in the United States, where a party could move for the dismissal of non-actionable claims, the German court isn't even interested in this. The presiding judge made it clear that if an injunction is ordered, it will relate to the infringement of a particular patent by whatever technology (by whichever name it may go), without specifying any products by name.

This means that a February ruling in MMI's favor would leave some important questions unanswered, and would give rise to subsequent disputes over the enforcement of an injunction against particular products and services.

The issue for Apple here is that it would probably (if not almost certainly) be accused of infringing the patent-in-suit with any products containing the iCloud client software. While the patent covers a synchronization technology that requires a server, and Apple Sales International does not operate the servers (maybe Apple Inc. does, or otherwise some Apple subsidiary other than the Irish distribution organization), all Apple devices containing the client software could be deemed to infringe the patent-in-suit contributorily.

In light of this risk, Apple's lawyers have asked the court to determine that MMI will have to give a 2 billion euro bail(US$ 2.7 billion based on today's exchange rate) if it seeks to enforce the patent. The purpose of such a bail is to ensure that an alleged infringer will be compensated if the enforced injunction is later overturned by an appellate court. The court was wondering whether that hefty amount truly reflects the economic damages Apple would suffer from enforcement, given that the iCloud is only one Apple offering and doesn't correspond to the entire value of its products. But Apple's lawyers insisted that an enforcement against its product sales in Germany could result in damages of that magnitude.

MMI's counsel was moderately receptive to the idea of setting different bails for the enforcement of the patent against processes/services and against actual products. I thought MMI's lead litigator believed to be in a strong position and wasn't in the mood to make any concessions.

The presiding judge indicated the possibility of a workaround. For example, the patent relates to highly automated synchronization techniques and might not be deemed infringed if Apple's client software sent certain messages to the iCloud server to trigger synchronization. But Apple's counsel didn't appear willing to downplay the economic relevance of this matter. I also think that the presence of senior in-house counsel from both parties -- sitting next to their German lawyers -- is indicative of the relevance of this action. Apple additionally flew in an outside attorney from California, Christine Saunders Haskett of the Covington & Burling firm.

If the iCloud cannot work around that patent without becoming much less useful (or next to useless in a hypothetical worst-case scenario), Apple will clearly limit its market potential in Germany by removing its client software. Again, it remains to be seen what a non-infringing workaround might look like. Maybe Apple doesn't concede that there are viable workarounds just in order to maximize the bail that Motorola would have to give if it enforces an injunction. But Apple's concerns over the economic implications of this could also be genuine.

On December 2, there will be another Motorola Mobility v. Apple hearing in Mannheim. It's unknown which legal entity or entities will have to defend themselves in that action. I guess the third action is against Apple GmbH (the German subsidiary) and Apple Retail Germany GmbH, which appears to operate the German Apple Stores.

Follow-up on the prohibition of in-court tweeting

In my report on the Samsung v. Apple hearing a week ago I mentioned that the presiding judge didn't allow live tweets from his courtroom. That mentioning resulted in a couple of articles in Germany. Today the presiding judge clarified that the reason why the use of Twitter is prohibited is that one must not use devices in the courtroom that could also be used to record the hearing. The only electronic devices allowed are counsel's portable computers and simultaneous translation equipment. As a result, one must not use smartphones, and therefore can't tweet.

Right after clarifying this at the very start of the session, the presiding judge interrupted the hearing for five minutes so those who (unlike me) hadn't done so previously could place their handsets in lockers.

The attack on the iCloud and the demand for a 2 billion euro bail would actually have been worth tweeting about.

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