Thursday, February 2, 2012

Judge Posner wants Apple and Motorola to 'winnow' more patents out of Chicago litigation

On Tuesday (January 31, 2012), Circuit Judge Posner, who is serving by designation on the United States District Court for the Northern District of Illinois to preside over an Apple v. Motorola Mobility lawsuit, entered an order that became electronically retrievable on Wednesday (February 1, 2012) and, among other things, tells the parties that there are still too many patents in play.

The order acknowledges that Apple and Motorola made a January 30 submission (which is not in the public electronic record, at least at this stage) that complied with a request to inform the court "of what patents they wish to litigate in the liability trial", but "not
fully satisfactorily". The judge wants more "winnowing" (as he likes to call the narrowing of a case by dropping patent claims) to take place:

"I'm not satisfied with the winnowing to date, which leaves nine patents for trial."

Originally, there were 21 patents at issue: 15 Apple and 6 Motorola patents. The judge threw out some of those claims on summary judgment, and the parties dropped others in order to be cooperative and narrow the case. This "winnowing" effort had the judge himself confused at some point. On January 23, he listed eight Apple and three Motorola patents that he believed were at issue. After he ruled, by summary judgment, that two of Apple's remaining patents weren't infringed, there would have been six Apple and three Motorola patents in play. But two days later, he listed seven -- not six -- Apple patents. Nothing changed about the list of Motorola's three patents selected for trial. The judge apparently knew that he might forget about a patent. In the January 23 order, he asked: "have I left anything out?" And in the January 25 order his patent list started with a similar expression of uncertainty: "unless I am mistaken (please point out if I am)"

Despite all of this confusion, I believe it's a reasonable assumption that the nine patents that are still at issue (based on what the judge said in his latest order) include six Apple and three Motorola patents. It's unlikely that Motorola dropped any of its three remaining patents.

All three Motorola patents that are presumably still being asserted in this action are patents that Motorola, according to what an order in the Western District of Wisconsin says, "has declared essential to certain standards" and therefore pledged to license on FRAND terms, an obligation that Apple claims Motorola didn't honor (it made an offer that Apple doesn't believe to meet FRAND criteria). These are the three patents:

The other three patents that Motorola originally asserted in this action were also FRAND-pledged patents that had been declared essential to standards.

At this point, I don't know which one of the seven patents Judge Posner listed in his Januar 25 order has been dropped. But let me provide the shortlist of seven patents because there are some interesting ones on that list (and we should soon know which one Apple dropped):

Whichever six out of those seven patents Apple has selected, and whether or not there will be some further "winnowing" as per Judge Posner's request, the Chicago case involves some very interesting patents. The strongest ones of those patents could give Apple major leverage against Motorola, especially if Motorola can't overcome Apple's FRAND defense.

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