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Further Remarks
Regarding the (Final and Interim) Results of
222 U.S., German and UK utility (i.e., technical) patent infringement assertions

Florian Mueller
Oct. 1, 2014


Procedural Stages

 Final: all appeals exhausted or not appealed or appeal withdrawn
 On appeal: appellate proceedings are known to be ongoing
 Appealable: an appeal could be or could have been brought (but it is not known if an appeal
actually was or will be brought)
 Settled: stated outcome was the last word before a settlement, but there have been or may
have been ongoing appellate or other proceedings (otherwise: "Final before settled")
 Pending suits withdrawn: "second-class settlement" under which no license is extended; can
have complex procedural implications depending on stage of proceedings (for example, if a
German nullity complaint is withdrawn during an appeal of a Federal Patent Court ruling, the
patent technically survives regardless of unfavorable FPC decision, though any infringement
actions brought over it in the future would be highly likely to be stayed)
 ITC staff recommendation: while the ITC staff (officially, "Office of Unfair Import
Investigations") is not a decision-making body and its recommendations are not binding in
any way on the Administrative Law Judge handling an investigation or the Commission, its
recommendations, which often become publicly-known at trial time, bear considerable
weight with the judges and especially the Commission
 Could be reasserted: withdrawal was without prejudice (and dispute is still ongoing, at least
in the relevant jurisdiction); even a claim that was withdrawn with prejudice could resurface
in a different form, but only if certain criteria are met (e.g. assertion of same patent against
products raising new infringement issues)


Color-Coding

Green indicates
 (in the "Outcome (Merits)" column) a liability finding in plaintiff's favor and
 in the "Injunctive Relief" column that a sales and/or import ban was imposed (or, in Nokia v.
HTC, recommended by an Administrative Law Judge).

Red corresponds to any of the following decisions in the "Outcome (Merits)" column:
 Non-infringement or successful contract-based or equitable defense
 Successful invalidity defense
 Patent declared invalid as a result of (Federal Patent Court) nullity complaint,
(USPTO) reexamination, or (EPO) opposition proceeding; while USPTO reexaminations take
years to be resolved if all appeals are exhausted by a patentee and the outcome in the
infringement case itself could be more favorable to the patentee, enforcement of any
prospective remedies ends once a patent is finally invalidated

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 Stay ordered by or stipulated in German court in the most common scenario, in which the
hurdle for a court-ordered stay is a high (80% is a reasonable number to assume) probability
of invalidation in parallel nullity action
 Stay ordered by or stipulated in German court because infringement assertion failed in
parallel case, the final (post-appeal) resolution of which will be awaited before continuing

In the "Injunctive Relief" column, red can relate to any of the following scenarios:
 None available: infringement assertion failed or is failing, thus no remedy of any kind is or
will (once the current state of affairs becomes the final outcome) be available
 Lifted: an injunction was granted but had to be lifted (on a final basis or pending final
resolution of an appeal) as a result of (final or non-final) invalidation of a patent
 To be lifted: an injunction has not been lifted yet, but it would have to be lifted if the current
state (e.g. preliminary negative opinion on validity of patent) became a final decision
 Not sought: against the background of a European Commission antitrust investigation,
Samsung withdrew in late 2012 all pending European requests for injunctive relief over
standard-essential patents
 Veto (FRAND): the Obama Administration vetoed (for FRAND reasons) an import ban
Samsung had obtained from the USITC against Apple over a standard-essential patents
 Enforcement prohibited ("Enfcmt prohib'd"): Motorola was barred by the United States
District Court for the Western District of Washington (affirmed by the United States Court of
Appeals for the Ninth Circuit) from enforcing two German SEP-based injunctions against
Microsoft; meanwhile the two patents have expired (and Motorola at some point accepted a
Microsoft offer to take a license, though the parties disagree on whether this acceptance
resulted in a valid contract)

Orange signals (in the "Outcome (Merits)" column) any of the following scenarios:
 a claim was dropped (with or without prejudice) outside the context of a settlement of an
entire case or a set of cases;
 a case was stayed by a German court after determining that the hurdle for a stay was lower
than usually (the standard requirement is a high likelihood of invalidity, but if no injunctive
relief is sought, a case is more likely to be stayed because German case law is, contrary to the
U.S. approach, far more concerned about irreparable harm to a patentee from not being able
to enforce than to the product-based business of a defendant in the event of wrong
enforcement, which German case law considers to be covered by a bond/deposit); the
standard is also lower for utility models ("Gebrauchsmuster"), which are not examined
 a negative recommendation was given by the ITC staff (Office of Unfair Import
Investigations); arguably, ITC staff recommendations are no less reliable than initial
determinations by Administrative Law Judges, but formally the staff is not a decision-maker

In the "Injunctive Relief" column, orange is used for the unavailability of injunctive relief due to a
withdrawal of a claim or due to a stay, and for a stay of enforcement of an injunction pending an
appeal.



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Further Remarks Regarding Certain Patent Assertion Outcomes

1. Apple's Offensive Claims

1.1 Apple v. Nokia at the USITC

There were two investigations, one in which Nokia was the sole defendant and another one in which
Nokia and HTC were co-defendants against a certain set of patents. Apple and Nokia settled before
an initial determination by an Administrative Law Judge. The staff recommendations were, however,
known at the time of settlement, and they were negative for Apple's claims against Nokia in both
investigations.

There were Apple v. Nokia lawsuits in federal court, but no decision or recommendation of any kind
became known, nor were any claims withdrawn, by the time of settlement.

1.2 Apple v. HTC

1.2.1 Apple v. HTC at the USITC

There were two investigations. The earlier one (337-TA-710) was on appeal at the time of settlement.
The second one (337-TA-797) was in the early stages, but Apple had already dropped a first patent.

At the time of settlement, an enforcement dispute over the scope of the granted exclusion order
(relating to the '647 patent) had not been resolved yet. An Apple motion for emergency relief had
been denied. Basically, Apple and HTC disagreed on the scope of the order in terms of which Android
apps were covered by it, but also on technical issues concerning purported workarounds. In any
event, the settlement occurred more than six months after the import ban entered into force, which
shows that this Apple win was not decisive.

1.2.2 Apple v. HTC in the UK

This declaratory judgment action was a complete defensive victory for HTC before the EWHC. The
parties settled while the case was on appeal (Apple appealed only the decisions regarding the '948
and '022 patents). As a result of the settlement, HTC no longer defended the EWHC decision before
the Court of Appeals. The appeals court upheld the decision with respect to the '022 patent and
reversed it with respect to the validity (not the non-infringement) of one of the claims of the '948
patent, but if the EPO revokes the patent as a whole on a Europe-wide basis (which was the outcome
of the opposition proceeding, though Apple has appealed it), it will also be invalid in the UK
regardless of the appellate decision. In any event, the '948 patent was not held infringed

1.2.3 Apple v. HTC in Germany

The multilingual character set case in Mannheim was stayed at the time of the Apple-HTC
settlement, but Samsung and Motorola continued to challenge the patent and achieved its
invalidation by the Federal Patent Court (which Apple did not appeal because this patent was a lost
cause).


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It is worth noting that Apple would have lost three Munich cases against HTC, in which a decision
would have come down not long after the settlement. The patents-in-suit were subsequently
declared by the Federal Patent Court. The Munich I Regional Court was also inclined to find no
infringement with respect to two of the patents and only an infringement of strategically irrelevant
scale with respec to the third one (which would have become completely irrelevant as a result of
invalidation).

1.3 Apple v. Motorola

1.3.1 Apple v. Motorola at the USITC

While the remand proceedings following Apple's partly-successful appeal relating to the '828 and
'607 patents would probably not have resulted in any decision of strategic impact, it is more likely
than not that Apple would have achieved a formal win over one or two patents on remand.

1.3.2 Apple v. Motorola in the Northern District of Illinois

Here, too, Apple would likely have scored a win, even if not of strategic importance, on remand. The
Federal Circuit reversed certain parts (but also affirmed certain claim constructions) of Judge
Posner's decision, but never issued a mandate because the parties settled before. Also, Judge Posner
had dismissed the case because the parties were, in his opinion, not entitled to remedies, so there
was no formal decision on liability except with respect to patents subject to summary judgment
decisions.

1.3.3 Apple v. Motorola in the Southern District of Florida

A trial had been scheduled in this case for the second half of 2014, but the settlement occurred
before. Apart from a non-final USPTO decision on the autocomplete patent and a claim construction
ruling under which Apple, absent a reversal, did not see any chance to prevail on two of the patents,
no decisions on the merits of any kind came down. The parties dropped many patents under
pressure from the court to narrow the case. These withdrawals occurred at a stage when they had a
fair amount of information available to assess their chances of success.

1.3.4/1.3.5 Apple v. Motorola in Germany

At the time of settlement, a German injunction over the rubberbanding patent was in force, but if
the EPO adopts as a final decision the preliminary opinion that the patent is invalid, that injunction
would have had to be lifted.

1.4 Apple v. Samsung

1.4.1 Apple v. Samsung at the USITC

While the procedural stage of this analysis was in certain Motorola cases rather unfavorable to
Apple, this ITC case appear far more successful than it was in commercial terms. Technically, Apple
obtained an exclusion order over two patents, but at the same time the USITC approved Samsung's
proposed workarounds (over Apple's procedural objections). The import ban entered into force in
October 2013 and had no commercial effect. The decision became final because Apple and Samsung

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agreed to withdraw each other's appeals of ITC decisions – but this is attributable to the absence of
commercial impact, not to the strength of the related cases or the likelihood of affirmance.

1.4.2/1.4.3 Apple v. Samsung in Germany

Apple unsuccessfully sought a preliminary injunction over the rubberbanding patent in Munich. It
then asserted the same patent on a different procedural basis (main proceeding) in Mannheim,
where the case was stayed pending an EPO opposition proceeding.

In August 2014 Apple and Samsung agreed to withdraw all pending infringement actions outside the
United States.

1.4.4 Apple v. Samsung in the Northern District of California

All withdrawals in this district were without prejudice.

Apple prevailed on three software patents at either (2012 and 2014) trial, but the '915 (first case)
and '172 (second case) patents were subsequently declared invalid by the USPTO in reexamination
proceedings. The '915 decision is on appeal; the '172 is not yet final with respect to the Central
Reexamination Division but came down approximately a year after the decision to reexamine the
patent was reached. As clarified on the first page of this document, USPTO reexaminations take years
to be resolved if all appeals are exhausted by a patentee and the outcome in the infringement case
itself could be more favorable to the patentee, but enforcement of any prospective remedies ends
once a patent is finally invalidated. For the purpose of a "what if all present decisions were final"
analysis, the related patent assertions are therefore deemed to have failed.

2. Microsoft's Offensive Claims

2.1 Microsoft v. Motorola

2.1.1 Microsoft v. Motorola at the USITC

It is fair to say that one could have ruled a bit more favorably on Microsoft's complaint against
Motorola than the ITC did, and it is a fact that ITC decisions are rather difficult to appeal, especially in
this case, in which the ITC ruling was in no small part based on aspects of a case with respect to
which the ITC enjoys more deference than federal courts (substantial evidence standard of review).
Microsoft insisted on an ITC decision on a larger number of patents than the ITC recommends
complainants to assert, which backfired. The finding that the '352 patent was invalid was at least
questionable, and it became final because a related appeal would not have made sense for Microsoft
to bring shortly before expiration of the patent. By contrast, the ITC ruling on the '762 patent was
based on a perspective subsequently shared by the Mannheim Regional Court.

Microsoft appealed successfully with respect to the '133 patent, but the remand proceedings never
took place because the patent expired. The Federal Circuit did not resolve the question of liability
definitively in Microsoft's favor, with potential issues remaining to be adjudicated by the ITC. Even if
one argued that the pendulum had swung in Microsoft's favor, the partly-successful appeal changed
nothing about the fact that Motorola's workaround would have been in the clear at any rate.


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An enforcement dispute arose over the scope of the import ban Microsoft had obtained over the
'566 patent. Microsoft sought a preliminary injunction against U.S. Customs, but those proceedings in
the District of Columbia appeared to go nowhere (by the time of this analysis, at least). The dispute
was to some extent about the question of which apps were or were not allowed to implement the
relevant scheduler feature. There are no signs of the import ban having affected the marketability of
Motorola's products in the U.S. so far.

2.1.2 Microsoft v. Motorola in Germany

EP'124, asserted not only against Motorola's Android devices but also against Google, could have
been the most impactful non-standard-essential patent in the global "smartphone patent wars."
Microsoft was close to obtaining an injunction, but the case was stayed at the 11th hour, and the
patent was declared invalid. Microsoft appealed the invalidity ruling the very next day, but it is
unlikely that the appellate decision will come down in time for an injunction to be issued (if the
patent survives) by the infringement court before the patent expires in August 2015.

EP'540 ("FAT") had previously been declared invalid by the Federal Patent Court only for the Federal
Court of Justice to reverse. However, it has expired.

2.2 Microsoft v. Barnes & Noble (at the USITC only)

ITC staff recommendations are not formal decisions but have been fairly reliable indicators of final
Commission decisions in the other smartphone patent cases monitored, no less reliable than initial
determinations by Administrative Law Judges.

3. Motorola's Offensive Claims

3.1 Motorola v. Apple

3.1.1 Motorola v. Apple at the USITC

Motorola withdrew its second ITC complaint against Apple relatively shortly after the Commission
instituted an investigation. However, since it did so long before an agreement between the parties to
withdraw all pending suits, the withdrawal of that particular complaint has a similar significance as
withdrawals of individual patents from cases.

3.1.2 Motorola v. Apple in the Northern District of Illinois

In the "Posner case", Motorola was relying entirely on standard-essential patents. It took only one of
them to trial after three were thrown out by Judge Posner on summary judgment and two others
withdrawn. The sole remaining patent-in-suit, the '898 patent, would not have entitled Motorola to
an injunction if the remand proceedings had taken place. The Federal Circuit reversed Judge Posner's
holding that Motorola was not entitled to damages but upheld (though it was divided on that one,
with Chief Judge Rader taking Motorola's side) the denial of injunctive relief.


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3.1.3 Motorola v. Apple in the Southern District of Florida

This was Motorola's non-SEP case. It would have gone to trial a few months after the agreement with
Apple to withdrawal all pending infringement actions.

3.1.4 Motorola v. Apple in Germany

Motorola was able to enforce its synchronization patent against Apple for 19 months. The injunction
was lifted only based on the preliminary opinion of the Federal Patent Court. Later the Federal
Patent Court upheld the patent only in a narrowed form. The narrowed version of the patent would
not have prevented Apple from providing push notifications to end users (it merely covered a
resource-saving enhancement that is not essential to push functionality).

The '336 GPRS countdown patent never went to trial in the Federal Patent Court because Motorola
obligated Apple, as a court-imposed requirement for Apple's FRAND (compulsory licensing) defense
to stand any chance, not to challenge the validity of the patent. There is no reason why that patent
should have fared better in the Federal Patent Court than the majority of other challenged patents if
it had gone to trial. Motorola was able to enforce an injunction against one Apple entity for about a
day in early 2012, but it was lifted based on an amended offer by Apple to take a license. Motorola
later accepted that offer, and subsequently sued Apple because of a disagreement on what would
constitute a FRAND royalty level (the contract did not state a particular royalty amount, leaving it for
courts of law to determine a royalty if the parties could not agree).

3.2 Motorola v. Microsoft

3.2.1 Motorola v. Microsoft at the USITC

Motorola was asserting four standard-essential patents (two H.264 video codec patents, two IEEE
802.11 WiFi patents) and one non-SEP. It withdrew two of the four SEPs a few months before, and
two shortly after, a consent decree by the U.S. Federal Trade Commission before a final ITC ruling
(the initial determination had been very favorable to Motorola, but the investigation was remanded
to the Administrative Law Judge on a legal basis that considerably upped the ante for Motorola).
Motorola's appeal with respect to the sole non-SEP in the case faces considerable hurdles for ITC-
specific jurisdictional and procedural reasons.

3.2.2 Motorola v. Microsoft in the UK (declaratory judgment action)

This decision, which was affirmed on appeal, was the most devastating one for any patent in the
disputes monitored. The key claim was held invalid for four independent reasons. Additionally, the
UK court found that Microsoft was licensed to the patent as per the date of Google's acquisition of
Motorola Mobility, narrowing the issues in the case to damages for past infringement.

3.2.3 Motorola v. Microsoft in Germany

Motorola's two H.264 SEPs-in-suit ('667 and '384) were being challenged by Microsoft in the Federal
Patent Court at the time of the Mannheim infringement trial, but the court obligated Microsoft to
withdraw those nullity actions immediately in order to stand any chance of prevailing on a license-

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based defense. As a result, the validity of those patents (both of them expired by now) was never
ascertained.

While Motorola prevailed under German law, it never got to enforce the related injunctions because
of a temporary restraining order, converted into a preliminary injunction, by the United States
District Court for the Western District of Washington (affirmed by the Ninth Circuit).

4. Nokia's Offensive Claims

4.1 Nokia v. Apple at the USITC

Nokia was on the losing track here and brought a second ITC complaint against Apple, but nothing
happened in the related investigation due to a settlement. The settlement was largely attributable to
developments in Germany, where Nokia appeared very likely to win an injunction that would have
affected the App Store.

4.2 Nokia v. HTC

4.2.1 Nokia v. HTC at the USITC

Nokia and HTC settled their dispute, after almost two years, on the last business day before the final
ITC determination on Nokia's complaint. It is likely that the '260 and '247 patents, which the
Administrative Law Judge held valid and infringed, were difficult (or at least costly) for Qualcomm
and Broadcom to work around, putting serious settlement pressure on HTC. However, it was also key
for Nokia to demonstrate that HTC needed to take a license to its non-SEPs, so it may have made
very significant concessions.

4.2.2 Nokia v. HTC in the UK

Nokia brought offensive counterclaims to a declaratory judgment action by HTC over most or all of
the patents Nokia had asserted in Germany. The UK court held the patent valid and infringed. It
subsequently ordered an injunction, but enforement was stayed pending resolution of the appeal on
the merits.

4.2.3 Nokia v. HTC in Germany

Timing suggests that the Nokia-HTC settlement was far more attributable to the state of the ITC
proceedings than the German cases, though Nokia had a series of German wins in the two months
preceding the settlement. HTC had to withdraw its nullity complaints. Further analysis into whether
Google, which intervened in some cases, continued to pursue its nullity actions is needed.
Presumably Google was not a party to the Nokia-HTC settlement in any way.

If the patents underlying Nokia's German injunctions had all come to judgment in the Federal Patent
Court, it is very likely that Nokia would have lost some (if not all) of them. The timing of the HTC
settlement was favorable to Nokia on the validity side.


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4.3 Nokia v. ViewSonic (only in Germany)

Google intervened in some of the Nokia v. ViewSonic cases. It is nevertheless remarkable that such a
small player defended itself so intelligently and efficiently that Nokia had not won any German case
against it by the time of the global settlement.

5. Samsung's Offensive Claims Against Apple

5.1 Samsung v. Apple at the USITC

At the ITC, Samsung prevailed on one wireless standard-essential patent (the '348 patent), but the
Obama Administration vetoed the import ban for FRAND-based public interest reasons. The
Presidential veto could not be appealed. On appeal, Samsung was trying to prevail on a second SEP
(and did not pursue its non-SEPs). Apple and Samsung agreed to withdraw all ITC-related appeals.

5.2 Samsung v. Apple in the Northern District of California

All withdrawals in that district were without prejudice.

Samsung prevailed, "in the lion's den", on the '449 patent, but did not seek an injunction over it
(acting consistently with its position that injunctive relief against multifunctional products based on
patents covering single feature should not be available).

5.3 Samsung v. Apple in Germany

Shortly before a Statement of Objections handed down by the European Commission, Samsung
withdrew, in late 2012, all of its European SEP-based injunction requests. As a result, the hurdle for
staying its Mannheim cases over the '373 and '803 position was lowered, and the cases were stayed
even though the related nullity challenges might not have taken the usual (higher) hurdle.

Samsung is the only litigant in the cases monitored to have salvaged two patents, in a narrowed
form, in the Federal Patent Court (Microsoft and Motorola each salvaged one, and Apple was unable
to salvage even a single one).