Patently-O Bits & Bytes by Lawrence Higgins

Samsung v. Apple: The Battle Continues

  • A Netherland court recently denied Samsung's request for an injunction banning Apple from selling iPhones and iPads. Samsung claims that Apple should not be allowed to sell devices with 3G technology because they infringe Samsung patents. The court stated that because the 3G technology is the industry standard, Samsung is obliged to offer Apple licenses under fair, reasonable, and nondiscriminatory (FRAND) terms. It seems that the licensing fee Samsung sought was not a FRAND offer and that if Samsung does make a FRAND offer and for some reason an agreement is not reach Samsung may file another patent suit and ask for a new injunction request. [Link]


  • Those who couldn't make it along to the UK IPO's event "Understanding the Use and Impact of Design Rights on the Design Sector" hosted by the Designs Council on 21 September 2011 can either listen to the presentations or download Word-format transcripts from this webpage. The event was a presentation of the economic research conducted for the IPO by the researchers, moderated by an expert panel and followed by a lively discussion. The research itself is published here. [Link]

Taiwan Will Form Patent Bank

  • The quasi-government agency, the Industrial Technology Research Institute (ITRI) announced the bank, saying it could be similar to existing defensive patent aggregators such as RPX and Allied Security Trust. The director of ITRI stated that the bank will assist Taiwanese manufactures with the creation of patent portfolios and patenting strategies during the manufactures' R&D periods and later assist in defending them from suits and in expanding their market share. HTC is a Taiwan based company, who has been in a heated patent infringement battle against Apple, and it would be to their advantage for an IP bank like this. [Link]

Patent Jobs

  • King & Spalding is searching for a patent attorney with 1-2 years of experience to work at their Houston office. [Link]
  • McDonnell Boehnen Hulbert & Berghoff is seeking a junior associate with 2-3 years of experience, to work in their electrical arts group. [Link]
  • Rambus is seeking a Senior Patent Counsel with 8+ years of experience and a BSEE or related degree. [Link]
  • Sheppard Mullin is searching for 2 attorneys: (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • The University of New Hampshire School of Law's Franklin Pierce Center for IP is seeking to hire a full-time professor of patent prosecution practice. [Link]

Upcoming Events:

  • The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
  • Back to School: The New Patent Law Explained, conference will be hosted by Berkeley Center for Law and Technology on October 21 in Berkeley, California. Professors and practitioners will provide detailed explanations of the changes and discuss the impact on patent prosecution, counseling, and litigation. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • Whittier Law School's Center for IP Law and Law Review will host the 29th Annual Law Review Symposium: The Law of the Smart Phone on November 3rd. The symposium will feature presentations and panel discussions devoted to the privacy, regulation, economics, and intellectual property issues surrounding smart phone technology. Guest speakers include, Gerald Faulhaber, Mark Roark, Alan Friel, Susan Freiwald and many others. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

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29 thoughts on “Patently-O Bits & Bytes by Lawrence Higgins

  1. 28

    But Diamond V. Diehr makes no mention of a controlled Computer. And the time wasted on Statutes while information is morphed for effect or kept for only those they share it with while covering information that may bring attention to the Issue at hand.

  2. 25

    Same straw, same answer.

    While the illustrated point shines through better with the first amounts, the counter-point is still the same with the second amounts.

    Even though the target pool may increase, the neglected point of “necessary” and “required” still are the same.

    BTW, the proper royalty question is still a red herring – you have given the answer as the mandated RR.

  3. 24

    Same straw, same answer.

    While the illustrated point shines through better with the first amounts, the counter-point is still the same with the second amounts.

    Even though the target pool may increase, the neglected point of “necessary” and “required” still are the same.

    BTW, the proper royalty question is still a red herring – you have given the answer as the mandated RR.

  4. 23

    Proposition: a programmed computer is patentable subject matter.

    A program by definition is at least one instruction, but typically comprises a sequence of instructions of some length. Assuming there is no patentable difference between one instruction and a plurality of instructions for section 101 purposes, the proponents of the patentability of a programmed computer would have us believe that the following is patentable subject matter when performed in a general purpose digital computer:

    Add location A to location B and store the result in location C.

    Not enough? We can add some instructions to take the results of C and do some more things with it. Assume we write down all the instructions of the computer on a piece of paper. Let us say we make 10 copies of this piece of paper. Next, we cut out each instruction on each of the 10 pages and paste them on blocks. Next we throw the blocks into the air. After they fall on the ground in somewhat random order, we assemble them in sequence and then read the resulting “program” into the computer.

    Is this patentable subject matter? Certainly this is new. Certainly it is nonobvious. It perhaps has no utility, but leave that aside for the moment.

    Is this a new machine?

    Now some would say it is a special-purpose machine. But a program, which is not automatically loaded and executed, is quite a bit different than a program which is automatically loaded and executed. I could agree that when a program is automatically loaded and executed the programmed computer is a special-purpose machine. But not otherwise.

  5. 22

    Obviously, the dollar amount was simply set forth to illustrate a point .

    Why don’t we try again with more realistic amounts . Let’s say a computer cost $1000. And the software cost $50.

    What is the proper royalty?

  6. 21

    The computer for $10 million.

    RR are mandated by statute at 25%

    Two matches for this strawman:

    At $10 million per computer, your target pool for litigation will be EXTREMELY small (and given the actual litigation rate of active and current patents at being less than 1%,….

    If RR is mandated by statute, the “shock value” of the strawman argument that a $1 incremental improvement ot a $10 million dollar machine will be what it is: $2.5 million. But this neglects the obvious work around that a $1 piece of software improvement to the machine will simply not be added. If that $1 piece of additional equipment is necessary to have a new machine to do whatever that new machine is required to do, then that new machine is obviously different than the bare starting point (albeit very expensive starting point) $10 million dollar machine.

    A “good” thing about such strawmen is the amount of “smoke” they produce when you torch them.

  7. 20

    Proposition: a programmed computer is a new machine.

    Assume the program retails for $1.

    The computer for $10million.

    RR are mandated by statute at 25% of the value of a machine made or sold.

    Is the RR, 25 cents or $2.5 million?

  8. 19

    Number 27, I would agree with you completely with respect to standards that are completely formed by the private industry and which are not government standards.

    I think there is a difference though if the standard is a standard imposed by government, regardless how the standard was formed. Regardless of whether Samsung was involved in setting the standard, I believe that Samsung should have no ability to obtain an injunction, leaving it only with reasonable, nondiscriminatory royalties.

    In the United States, we developed a similar doctrine with respect to government purchases. The patent owner must seek a remedy in the Court of Claims and cannot obtain an injunction. I hope you understand why this is necessary and why this is so.

    So clearly distinction I am making here is this: when the standard is a government standard, there is no injunction and royalties are reasonable and nondiscriminatory.

  9. 18

    I think you must have hit on it there. It must have been a condition imposed by the standards committee, because I don’t think it’s a sufficient condition for ‘licence of right’ under any statute, AFAIK. So, that makes it a matter of contract law, then.

  10. 16

    According to my scorecard, Samsung has lost in every stage of this global litigation war against Apple except for in Korea.

  11. 15

    Ned Heller:

    I think it matters a great deal whether the patent owner was invovled in the process that led to adoption of the standard. If the patentee participated in the standard process he/she could have asserted the patent and objected to adoption of the standard. On the other hand, if the patent owner disclosed the patent he/she could announce they were OK with industry using the standard and would provide FRAND licensing. Most standards organizations require disclosure and condition participation on FRAND licensing in the event disclosure is not forthcoming from the participating patent holder.

    If Samsung was not involved in the standards setting process then I would agree it could charge whatever royalties it saw fit. To allow otherwise would enable competitors, in the name of standards development, to usurp standardization for the purpose of forcing lower licensing fees.

    So the justification for FRAND, in my view, hinges on the patentee’s level of participation in the standards development process. You would not want a patentee to actively encourage industry groups to unwittingly adopt of a patented technology, invest considerable sums of money setting up to implement the standard only to then have a patent owner, who could have alerted the standards group, stick them all up.

  12. 14

    Let’s assume, just the sake of argument, that Samsung had a patent that dominated a legal public standard such that if it were granted injunctions against every and all competitors, it would be the sole source of products complying with the standard. I would think that the patent in this circumstance could be viewed as an essential resource, which would justify compulsory licensing. We have recognized such a right in United States to the extent that the United States government is the infringer. There is a statutory compulsory license, and the patent owner must seek remedy in the Court of Claims for compensation.

    But where the standard is not a public standard, in the sense that the standard is simply an agreement among industry, I hardly see a similar justification. Under these circumstances, I see no justification at all for not allowing the patent owner his injunction and whatever royalties he demands in lieu of the injunction.

  13. 12

    The FRAND limitations is a direct result of the fact that the industry standardized on a patented technology. I would have to guess Samsung knew of this standardization and at least implicity agreed to FRAND if the industry adopted the standard. It does not make sense that it would be imposed upon Samsung if its competitors adopted Samsung patented technology without Samsung’s knowledge. That would allow competitors to use the standards-setting process to force more favorable licensing terms on patent owners, doubtful.

    I have no idea of the particular circumstances at play here but I do know that the FRAND requirement is directly connected to the industry’s adoption of the patent technology as its standard. There may well have been a requirement imposed on all those participating in the standards setting organization to disclose patented technologies under consideration for standardization and/or accept FRAND should their patented technology be adopted as the standard.

  14. 11

    Can it not be argued that the more valuable public interest lay in a strong patent system (and thus strong and enforceable patent rights)?

    I may have not have been clear enough with the profit note above – as the public should not care at all about a particular private firm’s profit (hence the italics around “private”).

  15. 10

    BTW, a primary justification for socializing patents is that they are allegedly a public right and not a property right, a privilege granted by the government and not a property right secured by a patent. Thus, it is argued, the government can at any time limit or remove the right at its pleasure and without compensation. How else can the denial of an injunction be justified?

    But why is this so? Land patents are property. Mine patents are property. When a trespasser is on the land, he is removed. This is a private dispute between two people. The public interests are remote.

    So then we have a patent. Why is it that a patent owner does not have a right to an injunction, at least where the public interest is remote?

    The whole thinking here that patents are a public right is wrong headed.

  16. 9

    Statutory compulsory licencing in Europe is normally only invokable if the patentee fails to work the invention. I don’t think that would apply in this case, because I presume Samsung makes phones that fall within the scope of the patents, so they would be ‘working the invention’.

    I’m not familiar with the controlling law here, but it appears that the existence of the standard invokes some right to FRAND licencing terms. I could be wrong, but I don’t think this is statutory. EPO member states have national patent laws that are harmonised with the EPC, and that at least is available in English and not just Dutch. I don’t think it’s in the EPC, and Dutch law is all Dutch to me!

  17. 7

    Does eBay really hold that?

    Since when is one private company’s profit (the infringer’s profit) synonymous with “public benefit?”

    I think that people have tendency to read too much into eBay. To me, all eBay did was slap the CAFC and say “DON’T TAKE SHORTCUTS

  18. 6

    Number, if one does not have a right to an injunction, all one can ever get is FRAND.  

    Europe long had compulsory licensing.  The US did not — that is, until EBay.  There no long is a categorical right to an injunction in the US, a right all but guaranteed in the constitution at least in terms of a presumption of irreparable harm and the inadequacy of a legal remedy.  

    EBay really screwed the US patent system and remade it into a European system where property rights are socialized, where the benefit to the public predominates a private dispute between two parties over property rights.

  19. 5

    I suppose the court does not want to assist Samsung in extracting licensing fees above those allowed by law, given the standard has been adopted by industry and Samsung is obliged to offer its technology with FRAND terms & conditions.

  20. 3

    How does Samsung’s refusal to license on FRAND terms provide a basis for not enforcing the patent, as opposed to a basis for calculating damages should it later be determined that Apple has infringed Samsung’s 3G patent? I understand a European court might, probably would, view exorbinant licensing demands by a patentee who owns an adopted industry standard as an abuse of a dominant position, but that would seem to be a separate matter with a different though related remedy.

  21. 1

    The Whittier Law website originally listed the date as November 3rd. That is incorrect. The event is slated for Friday, November 4th. The website has been corrected.

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