Microsoft announces its 21st Android patent licensee, 26th known Android patent deal in total

Over the course of the last few weeks, four royalty-bearing Android patent license agreements have been announced. Three of them settled pending litigation (Rockstar-Huawei, Ericsson-Samsung, Nokia-HTC). The latest one was entered into on an amicable basis between Microsoft and Voxx Electronics, a consumer electronics producer. The terms of the agreement are confidential except for the fact that it is royalty-bearing and provides Voxx with "broad coverage under Microsoft's patent portfolio for devices running the Android OS, including rear-seat entertainment devices, tablets and other consumer devices".

This makes Voxx the 21st announced Microsoft Android patent licensee. The Microsoft-Voxx agreement is the 26th Android-related royalty-bearing patent license agreement to have become known. 16 of those 21 Micosoft-Android deals (more than three-quarters) have occurred after the Google-Motorola Mobility merger agreement, a fact that proves no one in this industry believed Google was going to be able to secure a "free ride" for Android by cross-licensing Motorola Mobility's patents. Here's an updated list of all known deals:

1. April 27, 2010: Microsoft Announces Patent Agreement With HTC

2. June 27, 2011: Microsoft and General Dynamics Itronix Sign Patent Agreement ("Agreement will cover General Dynamics Itronix devices running the Android platform.") (FOSS Patents coverage)

3. June 29, 2011: Microsoft and Velocity Micro, Inc., Sign Patent Agreement Covering Android-Based Devices (FOSS Patents coverage)

4. June 30, 2011: Microsoft and Onkyo Corp. Sign Patent Agreement Covering Android-Based Tablets (FOSS Patents coverage)

5. July 5, 2011: Microsoft and Wistron Sign Patent Agreement ("Agreement will cover Wistron's Android tablets, smartphones and e-readers.") (FOSS Patents coverage)

6. September 8, 2011: Microsoft and Acer Sign Patent License Agreement ("Agreement will cover Acer's Android tablets and smartphones.") (FOSS Patents coverage)

7. September 8, 2011: Microsoft and ViewSonic Sign Patent Agreement ("Agreement will cover ViewSonic's Android Tablets and smartphones.") (FOSS Patents coverage)

8. September 28, 2011: Microsoft and Samsung Broaden Smartphone Partnership ("Under the terms of the agreement, Microsoft will receive royalties for Samsung's mobile phones and tablets running the Android mobile platform.") (FOSS Patents coverage)

9. October 23, 2011: Microsoft and Compal Electronics Sign Patent Agreement Covering Android and Chrome Based Devices

10. January 12, 2012: Microsoft and LG Sign Patent Agreement Covering Android and Chrome OS Based Devices (FOSS Patents coverage)

11. April 25, 2012: Microsoft and Pegatron Corp. Sign Patent Agreement Covering Android- and Chrome-Based Devices

12. April 30, 2012: Barnes & Noble and Microsoft Form Strategic Partnership to Advance World-Class Digital Reading Experiences for Consumers" ("Barnes & Noble and Microsoft have settled their patent litigation, and moving forward, Barnes & Noble and Newco will have a royalty-bearing license under Microsoft's patents for its NOOK eReader and Tablet products.") (FOSS Patents coverage)

13. July 9, 2012: Microsoft and Aluratek Inc. Sign Patent Agreement Covering Android and Chrome Based Devices

14. July 9, 2012: Microsoft and Coby Electronics Sign Patent Agreement Covering Android and Chrome Based Devices ("Although the contents of the agreement have not been disclosed, the parties indicate that Microsoft will receive royalties from Coby under the agreement.")

15. November 7, 2012: Microsoft Signs Licensing Agreements for exFAT With Sharp, Sigma, NextoDi, Black Magic and Atomos Global ("The agreements cover Sharp Android tablets, Sigma and NextoDi high-end cameras and accessories, and Black Magic and Atomos Global broadcast-quality video-recording devices.")

16. November 11, 2012: HTC and Apple Settle Patent Dispute (FOSS Patents coverage)

17. December 11, 2012: Microsoft and EINS Sign Android Patent Agreement ("EINS manufactures Android tablets under the Cat brand in Germany.") (FOSS Patents coverage)

18. December 11, 2012: Microsoft and Hoeft & Wessel AG Sign Patent Agreement ("Agreement will cover Hoeft & Wessel devices running the Android platform.") (FOSS Patents coverage)

19. February 21, 2013: Microsoft and Nikon Sign Android Patent Agreement ("Agreement covers certain Nikon cameras running the Android platform.") (FOSS Patents coverage)

20. April 16 (U.S.)/17 (Asia/Europe), 2013: Microsoft and Foxconn Parent Hon Hai Sign Patent Agreement For Android and Chrome Devices ("Agreement provides broad coverage under Microsoft's patent portfolio to manufacturer of more than 40 percent of the world's consumer electronics.") (FOSS Patents coverage)

21. April 23 (U.S.)/24 (Asia/Europe), 2013: With ZTE, Most Major Android Makers Choose Licensing ("Under the agreement, Microsoft grants ZTE a license to Microsoft’s worldwide patent portfolio for ZTE phones, tablets, computers and other devices running Android and Chrome OS") (FOSS Patents coverage)

22. October 24, 2013: LG agrees to pay Vertical Computer Systems for another Android patent license (FOSS Patents coverage)

23. January 21, 2014: Huawei settles with Rockstar Consortium, will pay for Android's infringement of ex-Nortel patents (FOSS Patents coverage)

24. January 27, 2014: Ericsson and Samsung reach agreement on licensing terms (FOSS Patents coverage)

25. February 7, 2014: Nokia and HTC signed a patent and technology collaboration agreement (FOSS Patents coverage)

26. February 13, 2014: Microsoft and Voxx Electronics sign patent agreement for Android devices

This list is inevitably non-exhaustive: most deals are never announced. Also, one could make an argument that Intellectual Ventures' license agreements with the likes of Samsung and HTC should be added to the list. IV is claiming in its dispute with Motorola Mobility (where a mistrial lately occurred in Delaware, but that's not the end of the story) that Android infringes some of its countless patents. It's rather conservative not to list those IV deals here, but the moment IV proves any infringement of an Android patent in court or announces a license deal that involves Android or settles litigation that targets Android, I'll add those deals to the list.

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Google's once-secret, restrictive Android license agreements with Samsung and HTC published

Late on Wednesday, the Wall Street Journal's Rolfe Winkler reported on the publication of "[p]reviously undisclosed documents [that] show how Google has put limits on what it calls the 'open' Android ecosystem". The WSJ story contains some documents and, for further information and material, links to a blog post by Harvard (associate) professor Benjamin Edelman. Professor Edelman published Google's Mobile Application Distribution Agreement (MADA) in the versions it was signed by Samsung in 2011 and by HTC in 2010. The PDFs I just linked to even bear the signatures of Andy Rubin, on Google's behalf, and senior executives of those OEMs.

It's an interesting story all by itself how these -- normally highly confidential -- documents entered the public domain. There was no foul play involved. Both were admitted for use in open court during the first Oracle v. Google Android-Java trial in 2012 (I said "first" because there can be no reasonable doubt that, absent a settlement, there will be a second jury trial in that case, at the very least to determine damages, possibly also for "fair use"). According to Professor Edelman, "court staff confirm that both documents are available in the case records in the court clerk's office", though not available for direct download.

Antitrust authorities have presumably seen these, and similar, contracts before. Last June it became known that the European Commission is (on a preliminary basis) looking into a complaint over Google's Android business model. That complaint is apparently about the fact that Android's dominance reinforces the dominance of Google's search-centric, online advertising-based core business.

In March 2011, Bill Gurley, a partner at Benchmark Capital, one of Silicon Valley's best venture funds (I was fortunate to be a small fellow shareholder of theirs in MySQL AB), wrote a blog post entitled "The Freight Train That Is Android", describing Android as a moat around the Google castle: an additional protective element. Obviously, no competitor likes to be run over by a freight train, and while investors naturally like moats around castles, antitrust law is meant and designed to ensure that there is a healthy degree of competition in a given market. Mutually-reinforcing dominant market positions are a shareholder's dream, but a nightmare for a wide range of other stakeholders and, particularly, the concept of choice.

Google's basic approach to controlling Android was previously known (see, for example, these articles published by ArsTechnica and The Guardian), but the latest revelations provide more detail than before and confirm what a lot of people thought.

It's key to distinguish between those Android components that are available on free and open source software (FOSS) licensing terms -- such as Linux, the operating system of which Android represents a fork (derivative product) -- and those that are closed-source, commercial software: various key Android apps that users in pretty much all countries but China would typically find pre-installed on their devices. The Google Play store client app, the Google Maps/Google Navigation client, Google Mail, etc. -- even on-screen keyboards according to the ArsTechnica article I linked to in the previous paragraph.

Technically you can take the free and open parts of Android (in terms of the amount of code, that's probably the vast majority, though the share of closed, tightly-controlled components appears to be on the rise) and build a device without signing any individual license agreement with Google, and some have indeed done so. If that is so, why did Samsung and HTC sign those agreements that have now come to light? For commercial reasons.

If you want your Android device to sell, you normally want to be able to call it an Android device. To do that, you need a trademark license from Google. Open source licenses cover software copyright, they may come with patent provisions, but licenses like the GPL or ASL (Apache) don't involve trademarks.

The trademark -- the little green robot, for example -- is commercially key. In order to get it, you must meet the compatibility criteria Google defines and enforces, which are mostly about protecting Google's business interests: the apps linked to its services must be included. And those apps are subject to closed-source, commercial licensing terms. That's what the MADA, the document Samsung and HTC and many others signed, is about.

Even if you decided that the trademark isn't important to you, you would want at least some of the apps subject to the MADA. What's a mobile operating system nowadays without an app store? Or without a maps/navigation component? Google gives OEMs an all-or-nothing choice: you accept their terms all the way, or you don't get any of those commercially important components. And if you take them, then you must ensure that the users of your devices will find Google services as default choices for everything: search, mail, maps/navigation, etc.

I'm not going to discuss this in detail on this occasion, but Google+ (a service I use a lot) also plays a key role. Google is using Android and some of its online services in various ways to strengthen the Google+ social network.

In his blog post, Professor Edelman explains that people basically overrated the breadth of Google chairman Eric Schmidt's testimony in Congress that "Google does not demand that smartphone manufacturers make Google the default search engine as a condition of using the Android operating system". This referred only to the "operating system", not the trademark or the apps subject to the MADA.

There are examples of devices running Android without any of those closed-source Google components. In China, that's normal, and even there, competition enforcers are concerned. But outside of China, the only commercially successful Android fork was created by Amazon. Amazon has its own app store, and it has the power to make something like this fly. Others are not able to do that.

This month there may very well be a second major example in the Western hemisphere: Nokia is reportedly going to launch an Android phone that does not run any of Google's closed-source apps. Nokia has its Here mapping service and other technologies that enable it to do so -- even more so after being acquired by Microsoft (the deal has not yet closed formally, but it has been cleared by U.S. and EU authorities). Nokia is a special case, again.

There are also some cases in which other handset makers had a different search engine installed on certain carrier-specific versions of devices. In those cases, there were apparently some deals in place between Google competitors and carriers, and Google allowed some exceptions from its general rule at a time when it just needed to acquire market share. It's presumably much less flexible now that Android is the leading smartphone platform in the world.

Google's Android licensing practices and their effect on competition in a variety of markets and market segments are an important subject. Transparency helps, so I'm glad that Professor Edelman published the MADA documents signed by Samsung and HTC.

As an app developer I'm also a stakeholder with an interest in this. Android will be one of the first two platforms on which I'll launch my app (in early 2015 based on current plans). Up to a certain point it's definitely good for app developers if Google fights fragmentation. There's positive fragmentation (for example, the availability of different form factors, even though it requires user interface definitions and the related code to be more flexible) and there's negative fragmentation. If my app sends out an Intent (an Android message that one app sends out and that any other app(s) can follow up on), I obviously want it to have the desired effect, and I want that effect to be predictable. Anything else would be negative fragmentation. Possibly even very negative. But as an app developer I wouldn't want Google to be the one company to rule them all because, in the long run, this would also diminish my opportunities in the ecosystem, and limit my choices as an Internet user.

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Samsung wants Rockstar patent lawsuit over Android dismissed for jurisdictional reason

On Monday, Samsung brought a motion to dismiss the Rockstar Consortium's Android-related patent infringement lawsuit filed on Halloween 2013 in the Eastern District of Texas (to which Google was added as a co-defendant on New Year's Eve). None of the other Android OEMs sued has responded to the complaint yet (one of them, Huawei, settled before responding in any way). It's possible that similar motions to dismiss will also be filed in one or more of the other pending Rockstar Android cases.

Samsung's motion to dismiss has two distinct parts. In the narrower part, Samsung's lawyers (from the Quinn Emanuel firm) argue that claim 5 of U.S. Patent No. 6,463,131 on a "system and method for notifying a user of an incoming communication event" covers an abstract idea and should be thrown out because the claimed invention does not constitute patent-eligible subject matter. The broader part of the motion requests dismissal of the entire case for lack of subject-matter jurisdiction. In the following, I'll focus on that part because it would have further-reaching implications should it be granted.

The Android OEM cases in Texas were filed by the Rockstar Consortium as well as a subsidiary it created on the eve of these lawsuits (on October 30, 2013), named MobileStar Technologies. Samsung's motion quotes a Rockstar/MobileStar filing in the Northern District of California (where Google filed a declaratory judgment complaint right before Christmas in an effort to move the Rockstar-Android matters out of Texas over to California) according to which "MobileStar is an indispensable party to this litigation—it is the owner of five of the seven patents-in-suit and the exclusive licensee of the other two patents."

Samsung argues that Rockstar, therefore, "does not have standing to pursue its claims itself, without MobileStar also appearing". But MobileStar allegedly lacked standing at the time the complaint was filed because it was founded in Delaware, not Texas, making it a "foreign entity" in Texas that, under § 9.001 of the Business Organizations Code of Texas, needs to register with the Secretary of State in order to "transact business in this state".

According to Samsung's motion, that registration was made only on December 2, 2013, "more than a month after filing this action". Here's the header of that registration (click on the image to enlarge):

But further down I found something on that page that Samsung's motion does not address. The form does explicitly allow for registration after the first business transaction in Texas occurred, and MobileStar stated that this was the case on October 30, 2013, i.e., the day it was founded, and the day before the patent infringement complaints were filed (click on the image to enlarge or read the text below the image):

The date on which the foreign entity intends to transact business in Texas, or the date on which the foreign entity first transacted business in Texas is: 10/30/2013

Samsung's motion is interesting because of the effect it could have. If the action was dismissed, Rockstar would have to refile to pursue those claims. In that case, however, Google's declaratory judgment action in California would be the first-filed action, which it is not as long as the Texas lawsuits can go ahead. Google would then probably win the venue war.

But the motion faces significant hurdles. It would fail in any of the following scenarios (or any other scenario not listed here):

• The court may find that MobileStar's subsequent registration conferred standing retroactively because the registration form explicitly allows after-the-fact registrations and MobileStar declared that it first transacted business in Texas on the day before Halloween.

• The court may disagree with Samsung that a deficiency at the time of filing the complaint can't be cured.

• Limitations of a company's ability to sue in Texas state court may not apply in federal court (which is where this case was filed), despite Samsung's claim that they do.

Even if this motion failed, it would likely cause some delay nonetheless. If you're interested in all the details, here's the motion along with all of the exhibits (more than 800 pages):

14-02-10 Samsung Motion to Dismiss Rockstar Patent Lawsuit by Florian Mueller

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Are U.S. and EU antitrust enforcers taking a rather soft line on standard-essential patent issues?

Violators of competition laws often get away with a slap on the wrist. This has been repeatedly the case with respect to the abuse of FRAND-pledged standard-essential patents (SEPs). Years ago the European Commission missed out on major opportunities to set the FRAND record straight by letting alleged offenders off the hook all too easily. This leniency proved to have been a strategic mistake when SEP holders like Samsung and Motorola Mobility tried to get Apple's gadgets banned in key European markets and Motorola additionally attempted the same against Windows and the Xbox gaming console. Those were symptoms of a lack of clear guidance from Brussels.

The EU has still made more of an effort in this area than its U.S. counterparts (the DoJ and the FTC). The FTC's consent decree in the Motorola case has not stopped Google from pursuing SEP-basd injunctive relief at least against Apple. Two FRAND-related Motorola-Apple cases are pending before the United States Court of Appeals for the Federal Circuit, and U.S. bans of the iPhone and the iPad are still a possibility.

Last week there were three statements on FRAND antitrust cases by EU and U.S. regulators that I'd now like to comment on:

• On Friday, the United States Department of Justice (DoJ) announced its decision to close its investigation of Samsung's use of standard-essential patents against Apple. The DoJ said it would continue to monitor further developments in this area but felt that it was no longer necessary to pursue this case in light of last summer's veto of a U.S. import ban sought by Samsung. I can easily see the political reasoning here: the veto was (even though incorrectly in my view) portrayed by some as an act of protectionism, and if the U.S. government had now additionally imposed fines on Samsung for what it attempted to do, those voices would only have become louder. However, the timing of this announcement is odd. The DoJ could have done so shortly after the veto. But now we're very close to a California trial (scheduled to stat on March 31) in which Samsung will assert two SEPs against Apple (and two non-SEPs, which don't raise antitrust issues. Samsung's prayers for relief in that litigation include a request for an injunction.

  I mentioned in my commentary on Judge Koh's Friday decision to deny a retrial but to criticize Apple's counsel's national-interest type of argument to a jury in November that the court in California has always been, and continues to be, very concerned about not appearing to favor Apple. That makes sense and is a good thing per se, but only within reason. Too much of this can actually result in the opposite of a level playing field.

• Also on Friday, European Commission Vice President Joaquín Almunia said that the EU feels Samsung's amended proposal for a settlement of the antitrust matter appear acceptable, though there will be a market test giving stakeholders a chance to comment. I had commented very negatively on Samsung's initial proposal. In December it became known that the Commission saw room, or even a need, for improvement. I don't know anything about Samsung's new proposal and will comment on it after I've seen it.

• The EU-Google-Motorola antitrust situation is complex and potentially confusing. There are four different antitrust matters in the EU involving Google. Last week Mr. Almunia said the EU would settle the antitrust matter relating to how Google's search engine treats competitors. However, this is separate from a preliminary investigation of Google's Android licensing practices and two parallel investigations of how Google's Motorola Mobility used and continues to use SEPs against Apple and Microsoft in Europe. In the Apple-related case, a Statement of Objections (SO), a preliminary antitrust decision, came down last May. I'm not aware of an SO over Motorola's attempt to get certain Microsoft technologies banned in Europe. Last week it was said that a "prohibition decision" would issue in the Apple case. For now I don't know what to make of this -- and I mean this nonjudgmentally at this stage.

In my observation, the strategies of aggressive SEP holders increasingly shift to the pursuit of damages and supra-FRAND royalties. Billion-dollar claims can be a similar threat to companies as injunction bids. I believe EU and U.S. antitrust regulators should make clear that an overbroad royalty base, for example, is also anticompetitive. It's obviously difficult for competition regulators to get into the patent valuation business, but some demands are so outrageous that they could, if they politically wanted to do this, find some demands to have been far outside the FRAND ballpark and provide guidance on such issues as the proper royalty base. Unreasonable demands that alleged SEP infringers sign far-reaching non-disclosure agreements prohibiting them from coordination with their chipset makers are another issue that has nothing to do with injunctions but should nevertheless have regulators concerned. If U.S. and EU authorities continue to turn a blind eye to those issues, it could very well happen that future landmark decisions will increasingly come from Asia, particularly India.

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Nokia-HTC deal was 25th announced royalty-bearing patent license to involve Android

It's settlement season with three major deals (Rockstar-Huawei, Ericsson-Samsung, Nokia-HTC) having been struck during these past three weeks. Friday's settlement between Nokia and HTC was the 25th royalty-bearing patent license agreement to have been announced so far in connection with Google's Android mobile operating system. Most of those deals are primarily about Android and Nokia-HTC is mostly (though not exclusively) about Android, while Ericsson-Samsung is about it to only a limited extent.

HTC was first to take an Android patent license from Microsoft (in 2010), from Apple (in 2012) and now from Nokia (in 2014). While it has to pay royalties under each of these agreements, it at least has peace of mind with respect to those major patent holders. It can't be first anymore to license Rockstar's patents: Huawei was quicker to settle. But I believe it will do a deal with Rockstar rather soon as well. I wonder what the licensing situation between HTC and Ericsson is -- maybe they have a deal in place and never made noise about it, or maybe they still have something to sort out.

It's time to update my list of Android patent license deals:

1. April 27, 2010: Microsoft Announces Patent Agreement With HTC

2. June 27, 2011: Microsoft and General Dynamics Itronix Sign Patent Agreement ("Agreement will cover General Dynamics Itronix devices running the Android platform.") (FOSS Patents coverage)

3. June 29, 2011: Microsoft and Velocity Micro, Inc., Sign Patent Agreement Covering Android-Based Devices (FOSS Patents coverage)

4. June 30, 2011: Microsoft and Onkyo Corp. Sign Patent Agreement Covering Android-Based Tablets (FOSS Patents coverage)

5. July 5, 2011: Microsoft and Wistron Sign Patent Agreement ("Agreement will cover Wistron's Android tablets, smartphones and e-readers.") (FOSS Patents coverage)

6. September 8, 2011: Microsoft and Acer Sign Patent License Agreement ("Agreement will cover Acer's Android tablets and smartphones.") (FOSS Patents coverage)

7. September 8, 2011: Microsoft and ViewSonic Sign Patent Agreement ("Agreement will cover ViewSonic's Android Tablets and smartphones.") (FOSS Patents coverage)

8. September 28, 2011: Microsoft and Samsung Broaden Smartphone Partnership ("Under the terms of the agreement, Microsoft will receive royalties for Samsung's mobile phones and tablets running the Android mobile platform.") (FOSS Patents coverage)

9. October 23, 2011: Microsoft and Compal Electronics Sign Patent Agreement Covering Android and Chrome Based Devices

10. January 12, 2012: Microsoft and LG Sign Patent Agreement Covering Android and Chrome OS Based Devices (FOSS Patents coverage)

11. April 25, 2012: Microsoft and Pegatron Corp. Sign Patent Agreement Covering Android- and Chrome-Based Devices

12. April 30, 2012: Barnes & Noble and Microsoft Form Strategic Partnership to Advance World-Class Digital Reading Experiences for Consumers" ("Barnes & Noble and Microsoft have settled their patent litigation, and moving forward, Barnes & Noble and Newco will have a royalty-bearing license under Microsoft's patents for its NOOK eReader and Tablet products.") (FOSS Patents coverage)

13. July 9, 2012: Microsoft and Aluratek Inc. Sign Patent Agreement Covering Android and Chrome Based Devices

14. July 9, 2012: Microsoft and Coby Electronics Sign Patent Agreement Covering Android and Chrome Based Devices ("Although the contents of the agreement have not been disclosed, the parties indicate that Microsoft will receive royalties from Coby under the agreement.")

15. November 7, 2012: Microsoft Signs Licensing Agreements for exFAT With Sharp, Sigma, NextoDi, Black Magic and Atomos Global ("The agreements cover Sharp Android tablets, Sigma and NextoDi high-end cameras and accessories, and Black Magic and Atomos Global broadcast-quality video-recording devices.")

16. November 11, 2012: HTC and Apple Settle Patent Dispute (FOSS Patents coverage)

17. December 11, 2012: Microsoft and EINS Sign Android Patent Agreement ("EINS manufactures Android tablets under the Cat brand in Germany.") (FOSS Patents coverage)

18. December 11, 2012: Microsoft and Hoeft & Wessel AG Sign Patent Agreement ("Agreement will cover Hoeft & Wessel devices running the Android platform.") (FOSS Patents coverage)

19. February 21, 2013: Microsoft and Nikon Sign Android Patent Agreement ("Agreement covers certain Nikon cameras running the Android platform.") (FOSS Patents coverage)

20. April 16 (U.S.)/17 (Asia/Europe), 2013: Microsoft and Foxconn Parent Hon Hai Sign Patent Agreement For Android and Chrome Devices ("Agreement provides broad coverage under Microsoft's patent portfolio to manufacturer of more than 40 percent of the world's consumer electronics.") (FOSS Patents coverage)

21. April 23 (U.S.)/24 (Asia/Europe), 2013: With ZTE, Most Major Android Makers Choose Licensing ("Under the agreement, Microsoft grants ZTE a license to Microsoft’s worldwide patent portfolio for ZTE phones, tablets, computers and other devices running Android and Chrome OS") (FOSS Patents coverage)

22. October 24, 2013: LG agrees to pay Vertical Computer Systems for another Android patent license (FOSS Patents coverage)

23. January 21, 2014: Huawei settles with Rockstar Consortium, will pay for Android's infringement of ex-Nortel patents (FOSS Patents coverage)

24. January 27, 2014: Ericsson and Samsung reach agreement on licensing terms (FOSS Patents coverage)

25. February 7, 2014: Nokia and HTC signed a patent and technology collaboration agreement (FOSS Patents coverage)

This list is inevitably non-exhaustive: most deals are never announced. Also, one could make an argument that Intellectual Ventures' license agreements with the likes of Samsung and HTC also should be added to the list. IV is claiming in its dispute with Motorola Mobility (where a mistrial occurred in Delaware last week, but that's not the end of the story) that Android infringes some of its countless patents.

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Samsung, Google lawyers to represent patent licensing firm in tomorrow's $2 billion Apple trial

It's too early to tell how much, if any, of IPCom's $2 billion damages claim in Germany Apple will ultimately be ordered to pay. But even before the trial begins, a long list of German patent litigation and prosecution firms is sure to benefit from this litigation and IPCom's other standard-essential patent (SEP) disputes. Oddly and admittedly, this applies to me by extension: I'm going to watch the trial on behalf of a law firm and its clients, who will get my internal report (I promised a certain degree of exclusivity, so I won't be able to blog about it, at least not about the core FRAND issues in the case).

IPCom's previous assertions of the patents-in-suit were heard by the panel Judge Andreas Voss ("Voß" in German) presides over. The Presiding Judge of the Mannheim Regional Court's Second Civil Chamber (panel), Judge Dr. Holger Kircher, will be in charge of tomorrow's trial. Judge Dr. Kircher hears many patent infringement cases and saw some of these lawyers only recently in connection with the now-settled Nokia-HTC dispute. Initially I thought he was rather plaintiff-friendly in one particular SEP-related context (Motorola v. Microsoft), but later I saw him dismiss and stay a number of Nokia lawsuits (though he also sided with Nokia on two patents). I don't doubt anymore that he's balanced. He's always very well-prepared and usually makes clear at the very beginning of a trial which side faces a steep challenge. I believe IPCom may very well be able to convince him of its infringement theories, but even if so, I doubt that he can be persuaded to award $2 billion in damages over a single FRAND-pledged SEP.

Just because it shows how many lawyers IPCom keeps busy, I wanted to quickly put together this list of various firms and lawyers known to be involved with either this case or other cases involving the same patents-in-suit, and to mention some of their key clients. This list is, despite its length, non-exhaustive. IPCom's litigations are, effectively, the German Patent Attorneys and Litigators Full Employment Act.

Courtroom 1 of the Mannheim Regional Court will be "overlawyered" tomorrow with half a dozen firms involved with that particular case and various others keeping an eye on developments that may be relevant to their own IPCom cases.

In alphabetical order (by firm):

Bird & Bird (Nokia): Nokia and IPCom have been embroiled in litigation for more than five years. At several IPCom trials I saw Oliver Jan Juengst ("Jüngst" in German) defend Nokia. He also represented Nokia in a couple of offensive cases against HTC, one of which resulted in the last Nokia win over HTC before last week's settlement.

df-mp (PCom): Patent attorney David Molnia, who has dual American-German citizenship, prosecuted the patents-in-suit initially and defended it throughout various nullity and opposition proceedings. I also saw him at various IPCom infringement trials.

Freshfields Bruckhaus Deringer (Apple): Dr. Frank-Erich Hufnagel and Wolrad Prinz zu Waldeck und Pyrmont fended off, at least for the time being, all seven Samsung lawsuits against Apple in Germany, five of them over SEPs. A few months ago they also won a stay of a rate-setting lawsuit brought by Google (Motorola). Tomorrow they are going to face some of Samsung and Google's lawyers, who also do a fair amount of work for IPCom, once again. Given their perfect track record, it's no surprise that Apple keeps relying on them here.

Frohwitter Intellectual Property Counselors (IPCom): Bernhard Frohwitter, the founder of this firm, is also a shareholder and chief executive of IPCom. He advised and represented Bosch in connection with its wireless patent portfolio. After Bosch had exited the car phone business, Mr. Frohwitter raised capital from U.S. private equity investors to acquire those patents. Frohwitter attorney-at-law Dr. Roman Sedlmaier coordinates IPCom's worldwide litigations (with cases pending on three continents, so he spends a lot of time on airplanes and has acquired an in-depth cross-jurisdictional understanding of patent enforcement), and patent attorney Jan Gigerich is involved with IPCom's prosecution and nullity/opposition proceedings. They both did a fair amount of work on the EPO opposition proceeding that resulted in last month's affirmance of the "#100A" patent in a narrowed firm. Ten years ago the two also authored recommendations for the City of Munich in connection with patent infringement risks relating to the city administration's use of the Linux operating system and other free and open source software.

HengelerMueller (IPCom): Dr. Wolfgang Kellenter is IPCom's lead outside counsel in Germany. He also appeared on Samsung's behalf at some German SEP trials, where he focused on FRAND issues including the implications of the European Commission's investigation of Samsung's pursuit of injunctive relief over SEPs for the German infringement proceedings and remedies.

Hogan Lovells (HTC): Dr. Martin Chakraborty will presumably watch tomorrow's proceedings in his role as HTC's lead outside counsel in Germany. He has been defending HTC against IPCom for several years. While Nokia won four patent infringement cases against HTC in Germany (in all of which HTC was represented by Hogan Lovells, though only in one of them -- which resulted in the highest bond ever ordered in connection with a German patent injunction -- by Dr. Chakraborty personally), he and his colleagues fended off 18 (!) other Nokia lawsuits in Germany, an unprecedented number.

Hoffmann Eitle (Ericsson): Dr. Georg Siegert represented Ericsson at the recent EPO hearing on the "#100A" patent. His firm's clients include Apple (Dr. Thomas Koch is on Apple's team in various Samsung cases), but it appears that Hoffmann Eitle is working exclusively for Ericsson in this context.

Krieger Mes (IPCom): Axel Verhauwen, who has also represented (very successfully so) different contributors to MPEG LA's multimedia patent pools in Germany, is on IPCom's legal team in some of the Nokia and HTC cases. It appears that he is not involved with the Apple FRAND damages matter. He did represent Samsung against Apple in two SEP cases.

Quinn Emanuel (IPCom): Internationally, this is the most famous firm on the list. It also represents Samsung and Google's Motorola against Apple -- in the U.S. as well as Germany, where it handles all Motorola litigations and represented Google against Microsoft and as an intervenor in various Nokia cases. The firm also appeared on Samsung's behalf as co-counsel in all of its Apple cases and as lead counsel in a couple of non-SEP matters. The head of QE's German offices, Dr. Marcus Grosch, has been representing IPCom in Mannheim, his home court, for several years. He is now also building QE's presence in Munich, the European patent capital. For what I know, he will be joined at tomorrow's IPCom v. Apple trial by Dr. Nadine Herrmann, Motorola's lead counsel in the Apple FRAND rate-setting case, and Jérôme Kommer.

Samson & Partner (Apple, Nokia): This well-known firm -- specifically, its founder, F. R. von Samson-Himmelstjerna, Dr. Tobias Stammberger and Dr. Oswald Niederkofler -- are traditionally Nokia's lead patent counsel in the German IPCom cases (and were also involved with various Nokia-HTC matters in Germany, where they helped Nokia offensively as well as defensively).

Wagner & Geyer (HTC): HTC's patent attorneys in the German IPCom cases are Eric Emde and Dirk Carstens.

I said before that this list is non-exhaustive. In some IPCom cases there have been numerous intervenors. Also, IPCom brought varous lawsuits against wireless carriers and retailers. Deutsche Telekom (T-Mobile) settled with IPCom last year. T-Mobile was represented by leading patent litigation firm Reimann Osterrieth Koehler Haft, which also represented Nokia in various HTC cases (as well as in some Apple cases in 2010/2011, contributing very significantly, if not decisively, to the 2011 Nokia-Apple settlement). Vodafone has not yet settled with IPCom. It also opposed the EPO's decision to grant the "#100A" patent, the patent on which IPCom's $2 billion damages claim from Apple is based.

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Judge denies Samsung retrial of retrial but disapproves Apple's appeal to jurors' national bias

The trial in the second Apple v. Samsung case in the Northern District of California will start in less than eight weeks. Meanwhile, the first dispute between these parties in the same district is approaching the point of final (i.e., appealable) judgment. In an order entered late on Friday, Judge Lucy Koh, the federal judge presiding over these two Apple-Samsung cases, denied both parties' motions for judgment as a matter of law (JMOL) with respect to the November 2013 limited damages retrial, in which a federal jury awarded Apple a $290 million replacement of a $410 million portion of the August 2012 billion-dollar verdict, resulting in a total damages figure (in the sum of both trials) of $929 million.

In the JMOL motions, either party argued that the jury could have come down on only one side, and it was obvious that Judge Koh would deny those motions. In addition, Samsung requested a retrial of the retrial, which would have caused further delay and was also a long shot from the beginning. Samsung based its request for a re-retrial on several theories, one of which was centered around the allegation that Apple's lead counsel in the retrial appealed to racial, ethnic or national prejudice. The part about bias had more than one component as well. To the extent that Apple's counsel, in an attempt to challenge the credibility of a Samsung expert witness, referred to the possibility of information being lost in translation, Samsung's allegations were more than far-fetched and didn't impress Judge Koh. However, there was a portion in Apple's closing argument that the judge does consider disappointing and troubling -- in my view, that portion was not about racial or ethnic bias, but certainly an appeal to patriotism, basically suggesting to Silicon Valley jurors that the prosperity of their home region was at stake because of foreign companies copying U.S. innovators without legal consequences:

"We are extremely fortunate to live in what I'll call the Greater Bay Area. Not only is it beautiful, but we live in the center of one of the most vibrant economies in the world. Intel, Yahoo, Oracle, Facebook, eBay, and hundreds and hundreds of other companies, including Google, and including Apple, and these companies attract talented employees at every level. Even, we heard, Samsung has opened a research center here so that they can take advantage of the talent in this area.

The companies provide jobs. They create technology that improves the way people work. And the company -- and this economy supports an education system that is second to none in the world, Berkeley, Stanford, San Jose State, U.S. [sic] Santa Cruz, even Santa Clara where I went to school.

These educational institutions interact with this economy, interact with these companies and create a place that the whole world knows as Silicon Valley.

But let's be equally clear about one thing. Our vibrant economy absolutely depends on fair competition. It depends on a patent system that encourages inventors to invent, it encourages investors to invest, and it encourages employers to hire.

If we allow that system of law to decay, investors will not invest, people will not take risks, and our economy will disappear.

When I was young, I used to watch television on televisions that were manufactured in the United States. Magnavox, Motorola, RCA. These were real companies. They were well known and they were famous. They were creators. They were inventors. They were like the Apple and Google today.

But they didn't protect their intellectual property. They couldn't protect their ideas. And you all know the result. There are no American television manufacturers today."

Judge Koh's order states that this was "troubling". Also, "the Court expresses its disapproval and disappointment in the comments that led to the instant motion [for a retrial of the retrial]". With a view to the trial starting next month, "[c]ounsel are encouraged to be mindful of the important role that lawyers play in the actual and perceived fairness of [the U.S.] legal system as they prepare for and litigate the next round of this patent dispute".

But a retrial is not warranted in Judge Koh's opinion (and I agree). This was an isolated statement (as opposed to a pervasive tactic), the court instructed the jury more than once to put prejudice aside, the damages award was not excessive (which would have been a sign of prejudice affecting the decision), and the jury's request for office supplies indicated that they were focused on number-crunching rather than national bias.

Judge Koh's concern is nevertheless appropriate in light of a study she cites in her order, Xenophobia in American Courts, written by now-Federal Circuit Judge Kimberly A. Moore (before she joined the Fed. Cir.):

"Judge Moore's study found that 'foreign patent holder win rates in jury trials against domestic infringers (38%) are significantly lower than domestic patent holder win rates against foreign infringers (82%). In contrast, in cases decided by judges, the patentee win rate is almost identical, with domestic patentees winning 35% of the time against foreign infringers, and foreign patentees winning 31% of the time against domestic infringers.' [...] Moreover, Judge Moore found that while foreign inventors acquire 45% of patent rights annually, they seek to enforce their patent rights in only 13% of litigated cases, notwithstanding the fact that litigated foreign patents are, according to Judge Moore, likely to be stronger than their domestic counterparts. [...] As Judge Moore states, '[t]he disparity is important in part because it may reflect foreigners' cynicism about their prospects of enforcing patents in U.S. courts.' [...] Judge Moore concluded that '[t]he perceptions, and verifiable accuracy of the perceptions, of xenophobic bias in the U.S. patent litigation process likely have substantial impact on international trade and foreign relations and undermine confidence in the U.S. legal process for foreign and domestic parties alike.'"

So there is empirical evidence that U.S. juries have national bias against foreign companies. And that's not the only problem with having juries decide patent infringement cases. They also often don't understand that workarounds (provided that they are workarounds in a legal sense) are a good thing (because they actually advance innovation), which is one of the points Judge Posner, who generally believes juries struggle to understand the technical issues in these cases, makes when he talks about the problem of having juries decide the factual parts of patent cases.

It's not Apple's (or its counsel's) fault that juries decide patent cases often on a non-technical basis. If a jury can't figure out technical detail, it may just be led by emotions, regardless of how often the court instructs it not to be influenced by prejudice. Was Apple's counsel trying to take advantage of patriotism? Having read the related passage of the closing argument a few times, I think so. Judge Koh apparently thinks so, too. But it's preposterous to say that Apple appealed to "racial" or "ethnic" prejudice. It was just about regional (Silicon Valley) and national economic interests. It wasn't particularly bad. And that's why a retrial would have been disproportionate.

I'm sure Apple will proceed with greater caution in this regard at next month's trial.

The question of whether Samsung gets treated fairly in the U.S. has been influencing Judge Koh's decisions all along. Whenever Samsung raised a "me too" kind of argument, the court tried hard to avoid any impression of favoritism, even if Apple had a stronger basis for a certain type of motion than its counterpart. What made things worse were the allegations of protectionism that came up last fall when a U.S. import ban won by Apple entered into effect while another one won by Samsung had been vetoed by the Obama Adminstration. I believe that this is a large part of the reason for the decision by the United States Department of Justice (DoJ) to close the investigation of Samsung's assertions of standard-essential patents against Apple (despite the fact that Samsung is still seeking injunctive relief over such patents). I'll comment on various FRAND antitrust matters including this one on Monday.

Here's the full text of Judge Koh's order:

14-02-07 Order Denying Apple and Samsung's Motions for JMOL by Florian Mueller

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