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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Final: all appeals exhausted or not appealed or appeal withdrawn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Pending suits withdrawn: "second-class settlement" under which no license is extended; can have complex procedural implications depending on stage of proceedings (for example, if a German nullity complaint is withdrawn during an appeal of a Federal Patent Court ruling, the patent technically survives regardless of unfavorable FPC decision, though any infringement actions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was without prejudice (and dispute is still ongoing, at least in the relevant jurisdiction); even a claim that was withdrawn with prejudice could resurface in a different form, but only if certain criteria are met (e.g. assertion of same patent against products raising new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).