Friday, March 16, 2012

German appeals court lets Motorola continue to enforce its push notification patent against Apple

For a significant period of time (which could be a year or more), Motorola gets to continue its enforcement of a German patent injunction that obligated Apple to deactivate the push notification feature of its iCloud and MobileMe service offerings for customers using those services in Germany.

A spokeswoman for the Karlsruhe Higher Regional Court (the appeals court for the circuit the Mannheim Regional Court belongs to) just confirmed to me over the phone that an Apple motion to suspend the aformentioned enforcement was denied. The denial was ordered on Wednesday (March 14).

Subsequently, Motorola issued this statement: "We are pleased with [Wednesday's] ruling in Germany denying Apple's motion to stay the injunction related to our push email patent. We will continue to protect our intellectual property."

This afternoon, Judge Andreas Voss of the Mannheim Regional Court (who presides over most of the smartphone litigations pending at that court, including all of the ones involving Apple) mentioned that decision by the appeals court at a hearing on a lawsuit in which Motorola Mobility is asserting the same push notification patent against Microsoft. (With all that's going on here, and due to many hours spent in courtrooms in Munich and Mannheim, I have a backlog of three German patent trials to report on, including that one.)

The push notification patent is not a FRAND-pledged standard-essential patent. In a different matter, Motorola won and temporarily enforced an injunction over a patent essential to GPRS, the mobile Internet extension of the GSM wireless standard. But the enforcement of that particular injunction was suspended by the Karlsruhe Higher Regional Court, initially for a few weeks and subsequently for the duration of the appellate proceedings, which will probably take well over a year, if not two years. That suspension was based on an amended version of Apple's FRAND defense. But against the push notification patent, there is no FRAND defense. Based on what Apple announced after the related injunction was ordered in early February, I presume that Apple's motion for a suspension was primarily based on its invalidity contentions (though I believe Apple additionally contested the Mannheim court's finding of infringement).

In the push notification case, the appeals court apparently wasn't convinced of Apple being more likely than not to succeed with its appeal. I hope to see the ruling soon so I can tell whether the technical issues Apple raised just didn't lend themselves to a motion for suspension of enforcement (simply for being technically too complicated) or whether the appeals court has serious doubt about the merits of Apple's appeal.

At any rate, the denial of Apple's motion for a suspension of enforcement in this case underscores the significance of Apple's ability to win a suspension in the standard-essential patent case. There were some people who never tried to find out about the specifics of German patent litigation but nevertheless claimed that suspensions of enforcement were pretty much a routine thing here. I have previously said that such suspensions are granted only under extraordinary circumstances (such as Apple's strong FRAND defense). This week's denial and the earlier denial of Apple's first motion to suspend enforcement of the standard-essentia patent injunction (only the second such motion succeeded) should convince all those who believe such suspensions are low-hanging fruit in Germany.

I just mentioned that Apple needed a second motion to get the enforcement of the standard-essential patent injunction suspended. But a second motion for suspension can't succeed unless it raises new issues that weren't previously considered. In the FRAND case, Apple amended its licensing proposal, which it was free to do anytime. In the push notification case, Apple is not too likely to come up immediately with new facts warranting reconsideration. Apple has presumably presented all of the arguments it has at this stage. Favorable developments in an ongoing nullity action against that patent could persuade the appeals court to take another look and, potentially, grant such a motion. I don't know the schedule of the nullity action, but there'll be significant intervals between any written opinions or decisions.

While the standard-essential patent injunction affected Apple's ability to sell certain products, the push notification injunction only causes a certain amount of inconvenience to some of Apple's customers who live in or travel to Germany. If Apple had gotten to pick one of the two cases to be suspended, it would not have hesitated for even one second to pick the FRAND case, not the push notification case. But even the push injunction means that Motorola's patent enforcement is for the time being having more of an effect on Apple's business than the other way round. Apple won two German injunctions against Motorola, one over certain slide-to-unlock mechanisms and another one over a page-turning feature of the Android photo gallery (in zoomed-in mode), and while those affect the user experience in my opinion (Motorola unsurprisingly disagrees), they aren't devastating, especially in light of the fact that Motorola's German business isn't huge (while Apple's clearly is).

Google is in the process of acquiring Motorola Mobility. Observers expect the deal to close soon, possibly within a matter of weeks. At this week's German trials involving Motorola, a high-ranking Google inhouse lawyer and a member of her IP litigation team were in the audience. It's possible that Google lawyers previously attended German Android-related trials, but this was the first time that Google had a noticeable presence in the courtroom. Google is certainly looking to build leverage against Apple and Microsoft through court rulings in Motorola's favor, particularly in Germany, where certain courts move fast and the overall legal framework and mentality favor the interests of patent holders.

The push notification patent, even if enforced for several more years, won't force Apple to settle with the entire Android ecosystem on Google's terms. But Motorola has many more patents, and Google acquired thousands of patents from IBM and other sellers last year. There is potential for more litigation. However, Google's acquisition of Motorola also makes any German patent rulings in Apple's and Microsoft's favor more valuable: Google is a global player and will have ambitious plans for Motorola's German business, given the size of the market.


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