FOSS Patents

It's official: Microsoft co-founder Paul Allen's Interval Licensing can be added to the long list of patent holders asserting their rights against Google's Android mobile operating system.

In late August I blogged about Interval's patent infringement suit against multiple defendants including Apple and Google. On 10 December 2010, the US District Court for the Western District of Washington dismissed the original suit for lack of "sufficient factual detail" concerning the alleged infringements (particularly, the accused products and services) and set a 28 December 2010 deadline for an amended suit.

Some commentators overrated the relevance of that decision. It happens all the time that plaintiffs try to get away with broad and vague allegations at this stage of the game (i.e., before discovery). If their allegations are too unspecific, they will be told to do their homework. It's unrelated to the merits of the case.

For example, in an ITC investigation against Apple, Nokia needed three attempts to withdraw its infringement claims concerning one of its patents (for details see page 19 of the PDF document in my previous post). Apple didn't even oppose Nokia's desire to do so, but the Administrative Law Judge in charge of the case felt that Nokia's first two motions lacked some information required by the ITC. So let's always separate formal shortcomings from actual weakness.

After the dismissal of Interval's original complaint, spokesperson for Paul Allen confirmed immediately that the company was going to refile an amended suit with more specific allegations. And so it did yesterday (just in time before the deadline). The Seattle Times reported on the refiling and linked to the amended complaint.

The amended complaint makes a number of infringement allegations against Google, and those relate to (among other Google offerings) Android. There are two paragraphs that accuse Android. The first one:

44. Defendant Google has infringed and continues to infringe at least claims 4, 8, 11, 15, 16, 17, and 18 of the ’652 patent under 35 U.S.C. § 271 by making, using, selling, distributing, and encouraging customers to use devices containing the Android Operating System and associated software such as Text Messaging, Google Talk, Google Voice, and Calendar. Devices containing the Android Operating System and associated software infringe by displaying information including, e.g., text messages, Google Voice messages, chat messages, and calendar events, to a user of a mobile device in an unobtrusive manner that occupies the peripheral attention of the user. For example, as demonstrated by Exhibit 24, when a user receives a new Google Voice message, the Android Operating System and Google Voice software display a notification in the status bar screen for a short period of time.

The relevant patent is US Patent No. 6,034,652 on an "attention manager for occupying the peripheral attention of a person in the vicinity of a display device".

Paragraph 54 makes an equivalent assertion concerning a related patent:

54. Defendant Google has infringed and continues to infringe at least claims 1, 3, 7, 9, 10, 12, 13, and 15 of the ’314 patent under 35 U.S.C. § 271 by making, using, selling, distributing, and encouraging customers to use devices containing the Android Operating System and associated software such as Text Messaging, Google Talk, Google Voice, and Calendar, and by making and using the hardware and software that operate the Android and Android Market infrastructure. Google’s infringement of the ’314 patent that relates to Android results from substantially the same activities as its infringement of the ’652 patent, described above in [paragraph] 44.

The '314 patent is US Patent No. 6,788,314 and has the same title as the aforementioned '652 patent. The '314 patent is a continuation of a continuation of the patent application that resuled in the '652 patent.

If any of those infringement assertions against Android is true, this can spell trouble for makers of Android-based devices, and for Android application developers. The two paragraphs I quoted state clearly that the alleged infringement is an issue of "devices containing the Android Operating System", and the "Android Market infrastructure" is mentioned in the same context.

Patent holders can choose to sue Google, device makers, application developers, users, or any combination of the foregoing options. Most patent infringement suits related to Android target only device makers such as Motorola and HTC, but Interval Licensing is one of four right holders to sue Google directly. The others are Oracle, and Gemalto. Interval and Oracle could opt at any time to file suits against Android device makers, such as for the purpose to increase the pressure on Google. Gemalto and Vertical went after Google as well as some leading manufacturers.

Should Google be served an injunction as a result of Interval's suit, owners of Android phones (a group that includes me, by the way) would experience a very significant degradation of the user experience. Android's usability is generally under threat now because Apple already asserts various user interface (particularly multi-touch) patents against HTC and Motorola, and in its latest claims against Motorola, Microsoft also asserted a couple of touchscreen patents.

As I just mentioned Apple, it's also among the defendants named by Interval Licensing, but the infringement assertions don't target the iOS operating system. They relate to content recommendations provided to users by iTunes, the App Store, and Apple TV.

Was this the last smartphone patent suit for this year? It may have been, but not necessarily. A year ago, Nokia filed two complaints against Apple on the 29th of December.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents.

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ZDNet blogger Ed Bott has already made the case that Microsoft co-founder Paul Allen and his Interval Licensing company don't meet the definition of a "troll".

They sue a number of large players over some patents, but there's some history there that sets them apart from other licensing (or "non-practicing") entities. Among 11 defendants, the lawsuit targets Google (as well as its YouTube subsidiary), and Google once gave credit to Interval Research (the company whose patents are now being enforced) on its About page (shown toward the bottom of this screenshot).

This indicates that Interval did indeed contribute to Internet innovation.

A matter of business models

I for my part prefer the business model of companies putting out actual products and don't like the notion of software innovation being largely a matter of patent filings.

However, Google's founders applied for the PageRank patent very early on through Stanford University, where they developed their technology prior to founding their company, and owe their success in no small part to that kind of exclusivity (which Google still maintains by not licensing its most important patents to any competitor). So if Google favors this kind of business model and knowingly and willingly cooperated with Paul Allen's company on that basis, it may now have to eat its own dogfood.

Of course, there are some other companies who may never have had a working relationship with Interval but get sued anyway, such as Facebook. But I haven't seen any company on the list of defendants (Apple, Google + YouTube, eBay, Facebook, Yahoo, Netflix, AOL, Office Depot, OfficeMax, and Staples) who would ever have spoken out against software patents.

Contrary to opposing software patents, Google essentially supported the patentability of software in its Bilski brief, Apple goes after HTC very aggressively, Yahoo is known to be pro-patent and eBay co-financed lobbyists who advocated software patents in the EU and against whom I fought with the NoSoftwarePatents campaign at the time.

So they now have to respect the rules they themselves favor.

Recognition

Based on what a spokesman for Paul Allen has said (quoted by Ed Bott), I believe that this is a matter of recognition for contributions to innovation.

In the world of business, being paid for a contribution -- in this case, for patents -- is the sincerest form of recognition. Unfortunately, it seems that a lawsuit was necessary to (maybe) get there.

Given Paul Allen's biography, a categorization as a "troll" just wouldn't make sense. If other world-class entrepreneurs such as Larry Ellison, Steve Jobs, Larry Page or Sergey Brin founded a research company and later tried to commercialize their patents, they couldn't be called "trolls" either.

To me a troll is someone who never contributes in any serious way to innovation and simply leverages the patent system (which has serious problems, let there be no doubt about it) for his purposes. Entrepreneurs who have actually proven -- in Paul Allen's case multiple times -- that they can build real businesses aren't trolls.

Similarly, if a company like Yahoo registers some web domains for future use, that can hardly be considered an act of "domain grabbing" except under the most egregious of circumstances.

By contrast, NTP, the company that received 612ドル million from the BlackBerry company in 2006, was set up by lawyers. No programmers, no entrepreneurs. Just legal experts who identified and seized a business opportunity by obtaining a monopoly on some key functionality and litigating. They're still doing it, now suing Apple, Google, HTC, LG, Microsoft and Motorola.

Legal implications: entitlement to injunctive relief

In addition to image and psychological considerations, the question of "troll or not" has a very important legal aspect: in the US, "trolls" usually don't get injunctions anymore.

The possibility of obtaining an injunction -- a court order that forces an "infringer" to stop offering infringing services or products -- is powerful leverage in the hands of a patent holder. I explained in this earlier posting that injunctions are the most dreadful use of software patents and without that threat the BlackBerry company would probably not have felt forced to cough up 612ドル million back in 2006.

Only a few months after the BlackBerry blackout was averted at the 11th hour, the US Supreme Court decided on a different patent matter: eBay vs. MercExchange.

In that context, the key question put before the SCOTUS was under which circumstances a patent holder can obtain an injunction against an infringer and under which those patent holders have to content themselves with monetary indemnification (but can't disrupt the infringer's business).

That is a very US-specific kind of legal question. In Germany, for instance, no one even asks that question because §9 of the German "Patentgesetz" (patent act) makes an injunction an absolute right that any patent holder can demand. But the relevant part of the US Patent Act (35 U. S. C. §283.2) allows injunctions only "in accordance with the principles of equity" (the latter meaning "justice" or "fairness" in this context). So there can be an argument over whether an injunction is appropriate or overreaching in a particular scenario, all things considered.

The eBay vs. MercExchange ruling and what it means for Paul Allen's Interval Licensing company

Before the Supreme Court looked at the case, there had been two conflicting decisions by prior instances. Despite finding that eBay infringed MercExchange's patents (which were considered valid), MercExchange was denied an injunction by the first instance, a district court which argued that MercExchange was willing to license those patents (in other words, only after some license fees) and, very importantly, was not "practicing the patents" commercially. The latter was certainly an allusion to the term "non-practicing entities" (or some say "non-producing", but here we're talking about Internet services, not products per se), a euphemism in many cases for "trolls".

That was one extreme. The second instance, the Court of Appeals for the Federal Circuit (CAFC), took a diametrically opposed position. The CAFC believed that injunctions are the norm and refusal to grant them is a rare exception. In particular, the CAFC said that injunctions would be denied only under "exceptional circumstances [and] in rare instances [...] to protect the public interest." MercExchange would not have been exceptional only for being a non-practicing entity.

The Supreme Court then took a unanimous decision disagreeing with both lower instances. The first instance had established a broad rule that the SCOTUS considered to be too hard on patent holders, while the second instance favored the rights of patentees too much (that case wasn't the first, only or last time where it did so).

Some misunderstood the SCOTUS decision as supporting pretty much the first instance (trolls can't get injunctions). But in reality, the SCOTUS outlined a more complex legal test than either of the lower instances and favors a significant degree of flexibility:

After reaffirming a sophisticated four-factor test that a patent holder must pass to obtain an injunction (irreparable harm, money not being enough, patent holder unjustly suffering more from not getting an injunction than the infringer would under an injunction, no disservice to public interest), the SCOTUS also explained that "some patent holders, such as university researchers or self-made inventors, might reasonably prefer to license their patents, rather than undertake efforts to secure the financing necessary to bring their works to market themselves. Such patent holders may be able to satisfy the traditional four-factor test [...]"

So it would be incorrect to claim that the SCOTUS wanted to deny all non-practicing entities the right to obtain injunctions against infringers. The ruling certainly raised the bar for non-practicing entities very considerably. Until that decision, a lot of judges in the US really thought that an injunction was pretty much a foregone conclusion (provided that there was an infringement of presumably valid patents).

But make no mistake: the SCOTUS also wanted to support the patent-centric business model I described further above.

In its lawsuit, Interval Licensing asked for an injunction but for the event that it can't get one just requested financial compensation. That's different from Apple and Oracle, who in their suits against (respectively) HTC and Google shoot for injunctions all the way. Apple and Oracle will have no problem with the "four-factor test". With Interval Licensing, it's not certain but just looking at the screenshot where Google gives Interval Research credit, this might be a case in which even a non-practicing entity could be entitled to an injunction, depending on a lot of things I don't know yet (such as the nature of its past contract with Google, and many other circumstances).

Whether it gets to the point where an injunction might be granted will depend on how quickly Paul Allen's company can settle with the 11 defendants. Since there are so many of them, it's possible that one or more of them will decide to see this case through, and then we may get clarification in a few years as to whether this plaintiff is treated by the courts more like a "troll" or more like a legitimate inventor.

Ed Bott was the first one to say this isn't a troll. A court -- possibly even the SCOTUS -- may have the last word on this.

If you are interested in international equivalents to the patents at the heart of this lawsuit, please read the previous posting.

If you'd like to be updated on patent issues affecting free software and open source, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents.

The three IT patent cases drawing the most interest these days are

1. Apple vs. HTC (over Android; suit filed in March)

2. Oracle vs. Google (over Java patents allegedly infringed by the Dalvik virtual machine; suit filed in August)

3. the latest: Paul Allen's Interval Licensing vs. 11 defendants (Apple, Google as well as its YouTube subsidiary, eBay, Facebook, Yahoo, Netflix, AOL, Office Depot, OfficeMax, and Staples; over fundamental web/e-commerce patents; suit filed in August)

All of those lawsuits were filed in the US. Apple, in addition to suing in a court, also lodged a complaint with the US International Trade Commission, which could ban imports of infringing merchandise into the US.

While suing only in the US, the three plaintiffs also filed for international equivalents of some of the patents-in-suit (the patents they are now trying to enforce in court). There's a misconception among some people that software patents are a purely American phenomenon. They do exist in Europe, Asia and Australia as well.

There are various reasons for which Apple, Oracle and Paul Allen's Interval Licensing sue only in the US. After all, it's the jurisdiction where they have more patents than anywhere else, it's the largest single market at this point (since the EU doesn't have a single patent that can be enforced Europe-wide in only one litigation), and it's the legal system with which they and their lawyers are most comfortable. If they prevail in the US, they can most probably resolve the matter with respect to the rest of the world through negotiation, typically by agreeing on a worldwide license fee or -- if they want (like Apple) an injunction instead of money, through local cease-and-desist orders or a related clause of an overall settlement.

Nevertheless it's interesting to take a look at the international (European, Asian and Australian) aspects of those spectacular patent cases. It tells something about how internationally oriented those companies were during different parts of their history, and in some cases it shows that some other jurisdictions don't grant patents as easily as the US.

Please note that the information provided below on international equivalents of some of those US patents-in-suit isn't guaranteed to be complete. It is possible that additional international versions of some of the patents-in-suit exist but weren't identified by me.

Of the three plaintiffs discussed in here, Apple clearly has the strongest position in terms of international patents. They always seemed to have been quite internationally oriented, and over the last decade or so even more than before.

Its patent on "time-based, non-constant translation of user interface objects between states" was filed internationally and is currently under examination at the European Patent Office (EPO).

The patent on a "touch screen device, method, and graphical user interface for determining commands by applying heuristics" was also applied for worldwide, in particular in Europe, South Korea, Japan, Canada and Australia. In addition to filing for a regular patent at the European level, Apple also obtained a utility model (a fast-track patent-like right) in Germany. Looking at that list, it's clear that Apple regards this patent as highly strategic.

Another highly strategic patent relates to "unlocking a device by performing gestures on an unlock image." Apple filed in South Korea, Japan, Europe (at the EPO as well as for a German patent, German utility model, Spanish patent and Austrian patent), Hong Kong, China, and Australia.

Also a pretty international patent application relates to "list scrolling and document translation, scaling, and rotation on a touch-screen display." Apple filed for this in China, South Korea, Australia, Canada, Japan, and massively in Europe where it designated 34 countries (even including tiny states like Liechtenstein and Monaco) and took out a fast-track German utility model in addition to applying for a full-blown patent.

Apple's patent application for an "automated response to and sensing of user activity in portable devices" was filed in Canada, China, Japan, South Korea, with the EPO, plus a fast-track German utility model.

Compared to those examples, Apple's patent application going back to 1995 and relating to a "method and apparatus for distributing events in an operating system" was modest. The European patent application only relates to the UK and Germany. They also filed for it in Australia and Japan.

Two other international patent applications from the mid-1990's were limited to Australia and Europe: "a network component system" and a "real-time processing system for serially transmitted data". The international scope of an application published three years ago, relating to an "extensible, replaceable network component system", is similarly limited.

Sun filed for a patent on "protection domains to provide security in a computer system" in Australia and at the EPO, where it withdrew it (probably by failure to pay fees) in 2000. Companies withdraw such applications only if the examiners have serious objections that make it a waste of time and money to continue the process.

The patent application for a "method and device for preprocessing and packaging of class file" was filed in Japan and with the EPO, where Sun designated six countries (Germany, France, UK, Italy, Netherlands and Sweden).

The James Gosling patent application for a "method and apparatus for resolving data references in generated code" is, surprisingly, still being processed by the EPO in some newer form but an older one appears to have been granted a long time ago. It was also filed for in Japan.

For its "method and system for performing static initialization", Sun filed in China, Japan and with the EPO, where the three largest contracting states (Germany, UK and France) were designated.

Interval filed for its patent on a "browser for use in navigating a body of information, with particular application to browsing information represented by audiovisual data" in Australia and with the EPO, where it, however, withdrew its application in 2000.

Finally, an Interval patent-in-suit with significant international presence relates to an "attention manager for occupying the peripheral attention of a person in the vicinity of a display device." It was filed for in Australia, Japan, and with the EPO, with Germany, the UK and France being the designated countries there.

This overview demonstrates that the patent game is a global one, even though there are reasons (mentioned further above) for which litigation usually takes place in the US when patents are enforced against major IT companies.