Google appeals dismissal of Motorola's ITC complaint against Apple to the Federal Circuit

If you spend $12.5 billion on an acquisition mostly positioned as a patent deal and the patents you have in your books at a value of $5.5 billion fail to give you leverage in litigation corresponding to even 1% of their book value, you might as well spend a few million dollars on a long-shot appeal. Yesterday Google's Motorola lost its ITC bid to ban Microsoft's Xbox gaming console, about a month after the U.S. trade agency had thrown out the remainder of its case against Apple. In both cases (Apple and Microsoft), only one patent remained in the case at the time of the final ruling. In Microsoft's case, the patent was WiFi-related, and in Apple's case, a patent on using a proximity sensor to deactivate a touchscreen if the phone is held close to the user's ear.

It has now become discoverable that the company gave notice of appeal of the final dismissal of the Apple case (click on the document to enlarge or read the text below the image):

UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

APPEAL NO. _____

MOTOROLA MOBILITY LLC,

Appellant,

v.

INTERNATIONAL TRADE COMMISSION,

Appellee.

On Appeal from the United States International Trade Commission, Investigation No. 337-TA-745

MOTOROLA MOBILITY LLC'S PETITION FOR REVIEW

Pursuant to 28 U.S.C. $ 1295(a)(6), 19 U.S.C. § 1337, Fed. R. App. P. 15(a) and Fed. Cir. R. 15(a)(2), Motorola Mobility LLC ("Appellant") hereby petitions the Court for review of and appeal from the International Trade Commission's "Notice of a Commission Decision Finding No Violation of Section 337 As To U.S. Patent No. 6,246,862; Termination of Investigation With a Finding of No Violation" entered on April 22, 2013 (attached as Exhibit 1) and its underlying determinations, including, but not limited to, the Commission Opinion issued on April 29, 2013 (attached as Exhibit 2) and the Initial Determination issued on December 18, 2012 (attached as Exhibit 3). This case was styled before the United States International Trade Commission as In the Matter of Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers and Components Thereof, Inv. No. 337-TA-745.

A check for the docketing fee of $450.00 payable to "Clerk of Court, United States Court of Appeals for the Federal Circuit" as required by Fed. Cir. R. 52 is also enclosed.

Dated: May 21, 2013

Respectfully submitted,

Charles K. Verhoeven

QUINN EMANUEL URQUHART & SULLIVAN, LLP

This is already Google's (Motorola Mobility's) second appeal from that ITC investigation. In August 2012 the ITC already threw out three of the patents-in-suit, leaving only the sensor user interface patent in the investigation. Google (Motorola) appealed the dismissal of those three patents about a month later. That appeal is ongoing. Motorola filed its opening brief in February. The ITC and Apple, which intervened in order to support the ITC's defense of its decision, submitted their answering briefs on May 6. Google will get to file a reply brief, and then a hearing will be scheduled. Given the advanced stage of that first appeal it wouldn't be easy for the Apple to persuade the Federal Circuit to consolidate the two appeals and hold only one appellate hearing addressing both appeals from the same ITC investigation, but this would conserve court resources.

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Nokia files third patent infringement complaint targeting Google's VP8 video codec

Google's WebM/VP8 video codec faces three kinds of patent issues that make it unlikely to be adopted as an Internet standard anytime soon:

1. While Google reached a license agreement with 11 companies that identified to MPEG LA patents they believe read on VP8, an open source community leader believes the license terms for implementers of the standard are irreconcilable with key aspects of software freedom and unworkable for open source. It's a FRAND-zero license: zero license fees, but other terms are imposed, and one needs to sign up in order to benefit from the agreement.

2. There may still be companies holding patents that read on VP8 but which didn't identify them to MPEG LA or didn't participate in the license deal with Google. VP8 is untested in court.

3. One company that has stated clearly that it opposes VP8's adoption as an Internet standard and is unwilling to extend a license (not even at a FRAND royalty rate, let alone as a freebie) to implementers of VP8 is Nokia. It's already suing HTC over VP8 patents, and it identified to the Internet Engineering Task Force (IETF) 64 granted patents and 22 then-pending patent applications that it believes read on VP8.

The latest news is that Nokia has now brought its third patent infringement lawsuit over VP8, in the form of a new (second) ITC complaint against Android device maker HTC. Item #3 on my list of patents asserted in that complaint is U.S. Patent No. 6,711,211 on a "method for encoding and decoding video information, a motion compensated video encoder and a corresponding decoder", which is also item #71 on the list of intellectual property rights Nokia identified to the IETF. Nokia's infringement allegations filed with the ITC specifically relate to (not only, but primarily) VP8.

This is the 37-page infringement claim chart that quotes extensively from the VP8 specifications (this post continues below the document):

Nokia VP8 Infringement Claim Chart for '211 Patent

The first Nokia patent assertion against VP8, in a lawsuit against HTC in Mannheim, Germany, went to trial in March (Google participated as an intervenor). The patent at issue in that litigation is EP1206881 on an "apparatus and method for compressing a motion vector field". A ruling had originally been scheduled for last Friday but was postponed to May 31 (next week's Friday).

The next VP8 patent trial (the defendant is HTC, again) will be held by the same court on June 14, 2013. The patent-in-suit in that action is EP1186177 on a "method and associated device for filtering digital video images".

Nokia is asserting 50 different patents against HTC in the U.S., UK and Germany, and three of them allegedly read on VP8 and are on the list of patents identified to the IETF. Nokia isn't just saying that VP8 infringes its patents -- it's actually suing to prove it in court.

In all three HTC VP8 cases, Nokia is pursuing injunctive relief. The German cases would result in sales bans (possibly along with a recall from retail and destruction of infringing goods) in that country; if Nokia prevails on its ITC complaint, there will be U.S. import ban and customs would hold infringing devices upon entry into the U.S.

With so much legal uncertainty, Google may at some point realize that VP8 does not offer a fundamental advantage over H.264 in terms of the licensing situation, but represents a questionable tradeoff: H.264 comes with predictable, limited royalties (even more so after Google's Motorola failed to convince a U.S. court of the merits of its exorbitant royalty claims), while VP8 products may get banned without any licensing obligation on the part of Nokia and possibly other patent holders.

The Electronic Frontier Foundation (EFF) has criticized Google for abandoning open standards in connection with chat services (Google Talk), as I just found out via Techmeme. It appears again and again that Google's commitment to openness is vey selective, and I believe VP8 is ultimately about control and cost reduction, not openness and freedom.

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Discovered: Nokia seeking U.S. import ban against HTC One in new (second) ITC complaint

I just reported on Nokia's new RFID-related U.S. patent infringement lawsuit against HTC in the Southern District of California, which others also discovered (Bloomberg, Priorsmart). What others haven't noticed yet -- but will presumably notice later today -- is that Nokia has also filed a second ITC complaint against HTC. Unlike the San Diego complaint, the ITC complaint hasn't become publicly available yet, but on the ITC's electronic document system I found this list of confidential exhibits filed by the Alston & Bird firm on Nokia's behalf (click on the image to enlarge):

The titles of those 20 attachments provide the following indications:

• The complaint involves at least two patents, the numbers of which end with '345 and '945 (Exhibits 015, 017, 042, and 044). The San Diego complaint is not a companion (mirror) lawsuit of the ITC complaint but both complaints involve different patents.

• The HTC One is one of the accused devices (Exhibit 026).

• Broadcom (Exhibit 022) and Qualcomm (Exhibit 047) chips are key to the infringement allegations.

• Like the Southern California filing this one appears to relate to radio frequency stuff (Exhibits 026 and 053), presumably RFID like in the federal lawsuit.

This filing comes a week before the trial in the investigation of Nokia's first complaint against HTC, which it brought in May 2012.

This is reminiscent of Nokia's litigation tactics against Apple. In March 2011 it also brought a second ITC complaint (in that case, after the trial in the first investigation, but also prior to a final ruling). Three months later, these parties settled (the fact that Nokia was making considerable headway in Mannheim, Germany, with rulings scheduled for the week following the settlement, may have played a far greater role than that second ITC complaint).

UPDATE: List of asserted patents

Subsequently to publishing this post I obtained a list of the six patents asserted in Nokia's new ITC complaint:

1. U.S. Patent No. 6,035,189 on a "method for using services offered by a telecommunication network, a telecommunication system and a terminal for it"

   Nokia' infringement allegation relates to the ability of HTC Android devices to install new features on the phone, such as through the Google Play store, likely to trigger an intervention by Google like in the already-ongoing ITC investigation

2. U.S. Patent No. 6,373,345 on a "modulator structure for a transmitter and a mobile station"

   The objective of this invention is to maximize the signal-to-noise ratio for mobile transmissions of speech and other data. A workaround may result in a degradation of speech quality and data speeds.

3. U.S. Patent No. 6,711,211 on a "method for encoding and decoding video information, a motion compensated video encoder and a corresponding decoder"

   Nokia alleges that VP8, among other video codecs, infringes this patent. I'll do a separate post on this. This is another patent likely to result in a Google intervention.

4. U.S. Patent No. 7,187,945 on a "versatile antenna switch architecture"

   This is about compact but multi-frequency-capable radio frequency (RF) components.

5. U.S. Patent No. 8,140,650 on "use of configurations in device with multiple configurations"

   Nokia alleges that HTC uses the claimed invention to manage app-specific permissions in a convenient and secure manner.

6. U.S. Patent No. 8,363,824 on a "portable electronic device"

   This has to do with the layout of components inside a phone, allowing an appealing design and high performance at the same time, and Nokia believes this reads on (among other things) unibody handsets.

With this week's nine new patents-in-suit (six patents at the ITC, three in the Southern District of California), the number of patents Nokia has in action against HTC totals 50.

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Google's $12.5B Motorola fails to win ITC import ban against Microsoft's Xbox gaming console

On April 3 I explained that Google faced (at least) a double hurdle in its quest for a U.S. import ban against Microsoft's Xbox gaming console after a March 22 preliminary ruling on remand by an Administrative Law Judge. The remand initial determination found that Google had waived its indirect infringement arguments, but even if it had not, the outcome would have been the same: a dismissal due to a finding of no violation whatsoever.

The Commission, the six-member decision making body at the top of the U.S. trade agency, yesterday -- one year and one day after Google's formal closing of the $12.5 billion acquisition of Motorola Mobility -- gave notice of its decision not to review Judge Shaw's remand initial determination, thereby terminating the case. Petitions for review are frequently granted, but in a minority cases, such as this one, they are denied.

Since mid-January this ITC investigation had been down to only one (non-standard-essential) patent after after Google withdrew four standard-essential patents (SEPs) from this case. Should Google appeal the Commission's final ruling to the Federal Circuit (where it would also face the double hurdle I outlined, even heightened by the deference that the ITC will be afforded), it can't assert the withdrawn patents. Meanwhile a federal district court has determined a FRAND royalty rate for Google's (Motorola's) SEPs, so Microsoft will be licensed anyway -- for an amount of money that is tiny compared to the $12.5 billion Google paid for Motorola.

Last year Microsoft won an import ban against Motorola's Android-based devices.

About a month ago the ITC also threw out whatever little was left of Google's (Motorola's) complaint against Apple. Like in the Microsoft case, that decision related to only one remaining patent. Last year the ITC had already tossed three other patents in a decision that Google is appealing.

On April 26 I listed Google's major losses and minor wins on the patent front during that month (and toward the end of the post also linked to the key results in March, which weren't really better for Google). My initial count was seven major losses, and I had even forgotten the dismissal of the ITC complaint against Apple. I have since corrected that oversight.

So far May appears to be the third bad month for Google in a row as far as its Android patent strategy is concerned. Earlier this month the European Commission issued a Statement of Objections (SO), a preliminary antitrust ruling, against Google's Motorola Mobility. A Motorola Mobility v. Apple patent trial in the Southern District of Florida was pushed back by four months (from April to August 2014). Google's proposed FRAND-zero patent license for the VP8 video codec has drawn criticism from a leader of the open source community. Now this ITC ruling. And next month may start with a blow of major proportions for Google: on June 3 the Munich I Regional Court will announce a decision on a Microsoft case against Google Maps.

I've said before that Google should license, not litigate. And others feel that it's time to formally write down the $5.5 billion book value of Motorola's patent portfolio. Its litigation results are too miserable to justify even a fraction of that amount.

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Nokia files another U.S. lawsuit against HTC, asserts three RFID-related patents

Yesterday I wrote that Nokia's patent enforcement against HTC and ViewSonic was progressing, but not as fast as Nokia presumably thought when it brought the original complaints in the U.S. and Germany in late April 2012. Nokia appears to agree that it needs to unleash more patents from its vast portfolio in order to get HTC to settle: it filed a new complaint, over three patents (from the same patent family) related to RFIC (radio frequency ID), in the Southern District of California (this post continues below the document):

13-05-23 Nokia v HTC Patent Complaint

The three patents in suit are U.S. Patent No. 7,775,432, U.S. Patent No. 8,308,065 and U.S. Patent No. 8,366,000, all entitled "Terminal, Method and Computer Program Product for Interacting With a Signaling Tag". This patent family also has some European members (such as EP1685689 and EP1965555), which Nokia might assert in the UK, Germany or other European countries. Here's claim 1 of one of the U.S. patents:

A method, comprising: receiving, at an apparatus, information regarding an electronic device including a radio frequency identification transceiver through a radio frequency identification interface; determining whether the apparatus is actively operating an application in a state of presenting data; and in an instance in which the apparatus is actively operating an application in a state of presenting data, transmitting data associated with the active application to the electronic device including the radio frequency identification transceiver.

The accused products include (but are not limited to) the HTC One S, HTC One V, HTC One X, HTC Evo 4G LTE, Droid Incredible 4G LTE, Droid DNA, HTC One X+, HTC First, HTC One, and HTC One VX. Nokia is seeking an injunction as well as damages.

Nokia has previously asserted approximately 40 different patents against HTC in the U.S., UK and Germany. The most recent German filing was made in mid-April and mentioned in a Nokia statement. The two Nokia v. HTC hearings I watched at the Munich I Regional Court yesterday had 2013 case numbers and were apparently filed only about three months ago.

Simultaneously with its new U.S. RFID-related complaint Nokia also filed the mandatory notice of related cases and pointed to the ITC investigation of its complaint against HTC (which will go to trial in about a week and involves, among other things, a tethering patent) as well as some Delaware lawsuits. Nokia stresses that there's no overlap between those cases pending on the East Coast and the new complaint brought in Southern California, where Nokia's U.S. operation has an office. Technologically that's true (it also appears that Nokia purposely selected very new products for the California filing), but HTC will presumably try to get the new cases transferred to Delaware and consolidated into the cases pending in that district, arguing that it promotes judicial efficiency, conserves party resources, and saves travel time for third-party witnesses (if it can argue that there will be any overlap with respect to such witnesses; with RFID at issue, it's actually more likely that third-party witnesses, such as employees of chipset makers, are based in California).

The Delaware court is proceeding on a schedule that comes down to a 2015 trial, and if any additional patents had to be consolidated into the Delaware case, there could be further delay. HTC also played this kind of game with Apple, which at the time of the parties' settlement had 32 patent assertions against HTC waiting to be adjudged in that district. Like Nokia, but with a weaker case for denying technology overlap, Apple had also tried to assert patents in another district (Southern District of Florida) but HTC won a transfer (it also got a case over standard-essential patent issues transferred) to Delaware. Apple was frustrated and said "HTC's transfer-and-stay strategy treats [the Delaware-based court] as a dumping ground for Apple's offensive cases". That's a scenario Nokia will definitely try to avoid, but courts enjoy considerable discretion in ordering transfers to other districts in which earlier-filed patent cases involving the same parties are pending.

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Nokia's patent enforcement against HTC and ViewSonic progressing -- but not a slam dunk

Approximately thirteen months after filing patent infringement lawsuits against HTC, ViewSonic and BlackBerry (then named Research In Motion), Nokia has a settlement with BlackBerry and an injunction it is enforcing against HTC to show. That's a decent -- but not stellar -- result at this stage. It looks like this effort may be more of a marathon than a sprint, especially when considering that few industry players currently have a license to any of Nokia's non-standard-essential patents, sitting on the sidelines and watching how Nokia's assertions against HTC and ViewSonic play out.

At a Mannheim trial in March relating to two standard-essential patents (while HTC has a license to Nokia's SEPs, ViewSonic does not), ViewSonic appeared to be very close to settling. Its German counsel even called the court to suggest that the trial could be canceled. But no deal has happened yet, and one of the two SEP cases tried in March -- over EP0754395 on "location udpating for a packet-switched data service in a mobile communication system" -- was dismissed today as the court determined there was no infringement. Nokia issued the following comment on the Mannheim ruling:

"Nokia was one of the originators of the GPRS standard and this patent is one of Nokia's many contributions to that standard. This is a technically complex area and we respectfully disagree with the court's understanding. We will consider our options to correct this. We continue to call on Viewsonic to pay fair compensation for its use of Nokia’s standards essential patents and cease using Nokia's other innovations."

Even if Nokia had won that case, the impact of a ruling would have been limited: ViewSonic has exited the European smartphone market. The impact would mostly have been the cost implications of losing a case, and damages, the amount of which would have had to be determined subsequently. ViewSonic defended itself inexpensively. It didn't even bring any challenge to the validity of this patent, and it's the only defendant not to raise any FRAND defense against SEPs in all of the cases I've watched so far.

Subsequently to today's Mannheim ruling, a trial was held over Nokia's assertion of a patent against ViewSonic's distribution of the Google Play app store. A different chamber (panel) of the same court dismissed Nokia'a assertion of that patent against HTC in March. Today's trial was conducted by the Second Civil Chamber, which Judge Dr. Holger Kircher presides over, while the March ruling, following a December trial, was made by the Seventh Civil Chamber, whose president is Judge Andreas Voss ("Voß" in German), the world's number one wireless patents judge in terms of the number of cases handled.

I didn't attend the announcement and trial in Mannheim because I went to a couple of Nokia v. HTC hearings at the Munich I Regional Court. The Munich court holds a first hearing in each patent infringement action, at which it discusses claim construction and infringement issues on a very preliminary basis. The second hearing is then tantamount to a trial. Today's hearings were first hearings and related to patents Nokia previously asserted, in the same court, against BlackBerry:

• EP0804046 on a "method and apparatus for updating the software of a mobile terminal using the air interface" (allows users to receive calls while downloading software updates)

• EP1148681 on a "method for transferring resource information" (sending URLs from one device to another over different types of connections including NFC)

Judge Dr. Matthias Zigann outlined in his introductory remarks which concerns Nokia would have to address satisfactorily in order to prevail on these claims. Based on the original complaints and HTC's responses, but prior to Nokia's reply and a full trial (to be held in the fall), both cases would have to be dismissed for failure to prove infringement. In both cases Nokia has to overcome certain hurdles relating to claim construction and present evidence of infringement going beyond screenshots that show what happens from the end user's perspective but not what goes on inside the devices (for example, in what kind of memory downloaded files are stored).

Nokia can still prevail on one or both of these cases. First hearings are very preliminary, and Nokia can amend its infringement contentions and strengthen its claim construction arguments. But once again, this is no walk in the park.

While HTC recently said the value of Nokia's patent portfolio had been "greatly exaggerated", it told a UK court last year that it would no longer be able to sell smartphones in Germany if Nokia prevailed on certain patents-in-suit. The breadth and depth of Nokia's patent portfolio is recognized in the industry. But you can't sue over a portfolio of thousands of patents. You have to pick a few, or maybe a few dozen (Nokia is asserting 40 or more different patents against HTC), and then gain leverage in court. Nokia will get there, and settlements can always happen overnight (think of Apple and HTC), but this could still take a while. Nokia and HTC have been defending themselves jointly, in close collaboration, against IPCom, a patent monetization entity from Germany, for more than five years. I don't believe Nokia and HTC will still be suing each other five years down the road, but unless it gets decisive leverage in the near term, Nokia may have to file even more infringement actions and/or wait until the Düsseldorf Regional Court (which is statistically very plaintiff-friendly but slower than Mannheim and Munich), the England and Wales High Court, and the Karlsruhe and Munich appeals courts adjudge some of the key cases. Also, HTC is challenging Nokia's patents at the Bundespatentgericht (Federal Patent Court), and if infringement cases take long enough, nullity (invalidation) trials will also take place (though sometimes about two years after the infringement trials).

There will be more Nokia-HTC encounters in court in the weeks ahead. Next week a different chamber (panel) of the Munich I Regional Court will hold a trial on Nokia's assertion of a text message (SMS) sorting patent, and the ITC will commence its evidentiary hearing (trial) in the investigation of Nokia's complaint against HTC, involving among other things a tethering patent. In mid-June the second Nokia v. HTC case targeting Google's VP8 video codec will go to trial in Mannheim. And HTC's own assertions against Nokia (1, 2) in Mannheim and Munich will also go to trial soon in Munich and Mannheim.

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Apple says Samsung brought ITC complaint before making ANY licensing offer specific to its SEPs

In my post on Tuesday on the landmark California ruling enjoining an owner of standard-essential patents (SEPs) from enforcing an ITC exclusion order, I also discussed the implications of that decision in Apple's home district for the upcoming ITC decision on Samsung's complaint against Apple. In a filing made yesterday, which entered the public record today, Apple summarizes (in unusual detail) Judge Whyte's Realtek v. LSI/Agere decision and says the following about the parallels between the two disputes:

"The Realtek case is strikingly similar to the instant case. Samsung brought an ITC complaint before making any offer specific to its declared-essential patents, let alone a FRAND-compliant offer. Just as in Realtek, when Apple responded to the ITC complaint by requesting that Samsung provide FRAND terms for the specific asserted patents, Samsung responded by making a non-FRAND demand based on the total price of the accused Apple products--rather than the cost of the relevant accused components. Indeed, Samsung's conduct here is even more egregious--[redacted] In short, just as in Realtek, Samsung's pursuit of an ITC exclusion order directly conflicts with its FRAND commitments."

(no emphasis added)

The fact that LSI/Agere sought an injunction against Realtek before making any licensing offer with respect to the relevant version of the standard (some royalty demand concerning older versions had been made nine years earlier, with no negotiations in between) was key to Judge Whyte's decision. He determined that this attempt to seek to gain unfair leverage must be thwarted. The same could happen to Samsung, though the fact that this investigation has been going on for a long time without Apple seeking a preliminary injunction against Samsung's enforcement of a potential import ban would be an issue -- and I don't know whether Apple plans to trigger a FRAND determination action of the kind RealTek brought against LSI/Agere. But whatever the Northern District of California may or may not do for Apple in this context, the ITC sees that federal district courts consider such conduct abusive.

Apple's notice relates not only to the RealTek decision but also points to some of the positions taken and defenses raised by Samsung in its dispute with Ericsson. When Ericsson sued Samsung (after five years of patent peace following an earlier settlement) in November, I said from the beginning that this could help Apple because it would force Samsung to defend itself against SEPs. Apple now highlighted some of what Samsung wrote in its response to Ericsson's complaint.

With little more than a week to go (unless there is another extension, which is unlikely because the last one was rather long), the ITC keeps getting interesting and relevant input concerning this case and the overarching SEP-related issues in it, including letters from bipartisan groups of United States Senators and United States Representatives.

Here's Apple's May 22 filing:

13-05-22 Apple Notice of New Authority and Facts in ITC Inv. No. 337-TA-794

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