IP Law Daily, PATENT—N.D. Cal.: Unwired Planet’s infringement claims against Apple narrowed for trial, (Feb 15, 2017)

By Cheryl Beise, J.D.

Unwired Planet LLC’s claims accusing Apple’s Siri service of infringing three voice recognition patents were not amenable to resolution on summary judgment; however, the federal district court in San Francisco ruled that Unwired Planet was precluded from obtaining pre-suit damages with regard to two patents and could not pursue a claim for pre-suit indirect infringement of the third patent. The court will hold a bench trial on Apple’s inequitable conduct defense as to one asserted patent, and a jury will decide the remaining issues. The court previously granted summary judgment of no infringement to Apple, but the Federal Circuit reversed as to the three patents-in-suit (Unwired Planet LLC v. Apple Inc., February 4, 2017, Chhabria, V.).

Unwired Planet sued Apple for infringement of U.S. Patent Nos. 6,532,446 (the ’446 patent), 6,647,260 (the ’260 patent), 6,317,831 (the ’831 patent), and 6,321,092 (the ’092 patent), which claim an invention related to extending speech recognition capabilities to mobile devices with limited resources by relying on network-based resources. In May 2015, the district court granted summary judgment of noninfringement to Apple, after concluding that no reasonable jury could find that Apple’s Siri app transmitted voice input over a "voice channel." On July 22, 2016, the Federal Circuit affirmed the district court’s summary judgment of no infringement as to the asserted claims of the ’831 patent, but vacated the noninfringement judgment as to the asserted claims of the ’446, ’260, and ’092 patents. Both sides again moved for summary judgment.

Indirect infringement. Indirect infringement, whether induced or contributory, "requires knowledge of the patent in suit and knowledge of patent infringement." Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1926 (2015). "Knowledge" can be established with evidence of actual knowledge or willful blindness. The court initially granted summary judgment of no indirect infringement on the ’092 patent based in part on "the strength of Apple's noninfringement argument." The Federal Circuit, however, clarified willful blindness cannot depend on "the objective strength of Apple's non-infringement arguments," but must instead be tied to Apple's subjective beliefs.

The court remained skeptical of Unwired’s allegations regarding Apple’s knowledge of the ’446 and ’260 patents in the pre-suit period, but Unwired offered at least some evidence that Apple was apprised of both patents during licensing negotiations, and was given enough detail that it could have been on notice of the mechanism of infringement. The issue of whether Apple took deliberate steps to avoid knowledge by not responding to infringement allegations was a question for the jury. However, with regard to the ’092 patent, Unwired produced no evidence at all from which a jury could infer that Apple was aware of a probability of infringement before suit was filed. The court accordingly granted Apple’s motion for summary judgment of no indirect infringement on the ’092 patent with respect to the pre-suit period, but its motion was otherwise denied.

Anticipation (the ’446 patent). Apple argued that the ’446 patent was invalid as anticipated by a prior art reference, U.S. Patent No. 5,956,681 ("Yamakita"). The court previously denied Apple’s argument, based on its finding that that Yamakita failed to disclose the "voice input" limitation of the ’446 patent as the court had construed it. Although this conclusion was no longer valid in light of the Federal Circuit’s revised construction of "voice input," summary judgment on invalidity was not warranted because Apple had not yet provided clear and convincing evidence that Yamakita fully disclosed all other claim limitations.

Inequitable conduct (the ’260 patent). The court found that Apple supplied enough evidence to create a triable question of fact on whether the inventors of the ’260 patent intentionally failed to disclose certain prior art during the application process. Apple also supplied enough evidence of the materiality and non-cumulativeness of the prior art. While the court was somewhat skeptical that Apple could meet its high burden of proving inequitable conduct, the court decided to hold a bench trial to more fully evaluate the record.

Laches (the ’446 and ’260 patents). The court previously granted summary judgment for Unwired on Apple's laches defense on the ’092 patent. It saw no reason to reach a different conclusion regarding the’446 and the ’260 patents. Unwired was granted summary judgment on Apple’s laches defense.

Patent marking (the ’446 and ’260 patents). The court previously granted summary judgment for Unwired on Apple's marking defense on the '092 patent because it was "directed to a process or method," making the marking requirement inapplicable. Unwired argued that the same logic applied to the ’260 patent because no apparatus claims from that patent remain at issue in this litigation. However, Unwired originally had asserted apparatus claims and it could not avoid the patent marking requirement by dropping those claims mid-suit, the court said. On both the ’446 and the ’260 patents, Apple identified unmarked products that practiced the patents. Unwired did not produce evidence that it complied with the marking statute, nor did it point to another form of pre-suit notice. The court therefore granted Apple’s request for summary judgment of no pre-suit damages on the ’446 and ’260 patents.

The case is No. 3:13-cv-04134-VC

Attorneys: Courtland Lewis Reichman (McKool Smith Hennigan, P.C.) for Unwired Planet, LLC. Brooke Myers Wallace (Gibson Dunn and Crutcher LLP) for Apple Inc.

Companies: Apple Inc.; Unwired Planet, LLC

Cases: Patent TechnologyInternet CaliforniaNews