Posted: May 1, 2014

If you read Part 1 of this article, you’re now looking for the flipside of the Apple vs. Samsung analysis – claims by Samsung. The key point of this two part blog is that the ability to extract and understand claim limitations is critical. This will play a key role in the trial and subsequent judgment that will determine winner and loser – how much money flows and where.

Contributed by Richard Moses

Part 1 of this blog series observed that in patent law, the claims are arguably the most important part of the patent. This trial centers on claims of infringement and validity, or more accurately Literal Infringement and Anticipation.  Part 1 covered Apple’s claims. Let’s have a closer look at the Samsung side of the equation to see exactly what is at stake by both sides before final judgment is rendered.

Samsung as the Defendant and Counterclaimant initially accused Apple of infringing US patents Nos:

  • 7,577,757;
  • 6,226,449;
  • 5,579,239;
  • 7,756,087 and
  • 7,551,596.

In order to streamline the case for trial, contentions were limited to ten asserted claims. Some of these have already been judged invalid as well as withdrawn from the trial.

The ‘757 Patent (Multimedia Synchronization)

The ‘757 patent entitled “Multimedia synchronization method and device,” was filed on October 19, 2006, and issued on August 18, 2009.  The patent is a continuation of a prior application filed in June 2001, now Patent 7,136, 934.  Samsung limited its assertions to claim 1 and dependent claims 14 and 15 against various Apple products, presumably related to iTunes and iCloud. The patent is directed to multimedia files stored on a central storage system and synchronized automatically with portable media player devices in multiple locations or zones. The system also automatically synchronizes a user’s multimedia collection and provides backup redundancy. Claim 1 discloses “A system for synchronizing devices in a multimedia environment” comprising a “central storage and interface device”, wherein audio, video, or photographic data and content management information are stored in a “zone specific storage and interface device”. Dependent claims 14 and 15 include “coupled to a wireless mobile device” via LAN and WAN respectively.

Judge Koh’s summary judgment ruled the patent invalid, specifically that US patent No. 7,587,446 anticipates claims 1, 14, and 15 of the ’757 patent. The ’446 patent, entitled “Acquisition and Synchronization of Digital Media to a Personal Information Space,” was filed in November 2000 – seven months before the claimed priority date of the ’757 patent. ‘446 Claim 1 discloses “maintaining a personal information space”, including “media data”,  “the personal information space being coupled to a server and a network” and  “transferring a digital media file over the network containing the difference information….in response to a sync request made from a web browser at the network-coupled apparatus by the user”. In essence, the ‘446 discloses a system for synchronizing a user’s “personal information space” to devices including personal computers, PDAs and others.  Given the timing of Samsung’s acquisition of patent’757 – less than six months after the dispute with Apple started – suggests the objective was to leverage it in a counterclaim against Apple.

The original Assignee for this patent is Request Inc., a small operating company founded in 1998 and based near Albany, New York. The ‘757 and the aforementioned ‘934 patents were reassigned to Samsung in September 2011. We have no idea what caused them to sell their patents to Samsung; perhaps a bag of cash?

The ‘449 Patent (Digital Camcorder/Camera)

The ‘449 patent entitled “Apparatus for recording and reproducing digital image and speech,” was filed on April 17, 1997 and issued on May 1, 2001.  The ‘449 patent describes a digital camcorder using different compression and file organization methods for both still and moving images. The ‘449 patent is limited to claim 25 and dependent claim 27. Claim 25 discloses video analog-to-digital conversion, signal compression, recording, and display – representative of digital video recording and display systems found in most modern mobile platforms.  The claims include using “different compression methods” as well as a “classification mode” and “classification data” to differentiate moving images from still images. Dependent claim 27 includes the limitation wherein the user can change classifications, e.g., specify JPEG, MPEG, etc. formatted data. As observed with ‘757, the ‘449 patent was acquired circa September 2011, this time from Hitachi Ltd., and  is one of several Hitachi camcorder related US patents acquired by Samsung.  Hitachi has filed hundreds of patents related to digital video recording, however post 2007, its filing rate has dropped significantly, reflective of its scaled down consumer camcorder business.

Samsung was unsuccessful with the offensive ‘757 patent.  The jury is still out on ‘449.

The ‘239 Patent (Remote Video)

The ‘239 patent entitled “Remote video transmission system,” was filed on February 16, 1994, and issued on November 26, 1996. The ‘239 asserted claims were limited to claims 1 and 15, however in March 2014, Samsung withdrew claim 1. Claim 15 is a surprisingly short claim; its scope is quite broad, disclosing real-time video transmission functionality, presumably targeting use in Apple’s FaceTime.  Claim 15 includes a “computer including a video capture module to capture and compress video in real time” and a “means for transmission of said captured video over a cellular frequency”. Similar to the previous patents, ‘239 is an acquired patent, also in 2011. The ‘239 patent is registered to Chad Boss, Michael C, Michael H. and Richard C. Freeman. Michael C. Freeman is listed as a Vice president at an Oklahoma based fire prevention products.  Also noteworthy is the expiry date of the ‘239 patent – February 16, 2014.

Again the timing of this acquisition by Samsung could be a critical determining factor in whether Samsung is successful.

The ‘596 Patent (Uplink Packet Data)

The ’596 patent, entitled “Method and Apparatus for Signaling Control Information of Uplink Packet Data Service in Mobile Communication System,” was filed on November 9, 2005 and issued on June 23, 2009, but claimed priority to a Korean patent application filed on November 9, 2004. Samsung limited its assertions to claim 13 and sought summary judgment on the earlier priority date to secure validity of claim 13.

The patent describes a method and system to improve data transmission from a mobile device to the network. Certain mobile communications systems allocate dedicated channels between the mobile device and network equipment to ensure optimal data transmission. These channels are called enhanced uplink dedicated channels or E-DCH. The network equipment receives MAC-e (Medium Access Control for E-DCH) control information from mobile devices requesting to transmit data. The network equipment then uses this information to allocate transmission resources; once allocated, the mobile device starts its transmission over the E-DCH. The data transmitted us called MAC-ePDU or a Medium Access Control- enhanced Protocol Unit.

The ‘596 patent is a Samsung invention registered with ETSI as being essential to standards TS 25.321 for Medium Access Control (MAC) protocols and to ETSI TS 36.212 - a standard for ‘Evolved Universal Terrestrial Radio Access (E-UTRA); Multiplexing and channel coding.

The ‘596 patent relates to a method and system for efficiently signaling the MAC-e control information, specifically forming a header “corresponding to the first PDU using a “data description indicator (DDI) field”. While the term “DDI field” did not appear in the Korean patent application, Samsung argued that claim 13 and the priority application use different words to describe the same thing. Notwithstanding, Samsung’s motion for summary judgment that the ‘596 patent is entitled to the earlier priority date was denied. “Plain and ordinary meaning” of the claim term “data description indicator (DDI) field” was left for the jury to decide – which was not to happen, as explained below.

The ‘087 Patent (Enhanced Uplink Data Channel)

The ‘087 patent, entitled “Method and apparatus for performing non-scheduled transmission in a mobile communication system for supporting an enhanced uplink data channel,” was filed on July 18, 2005, and issued on July 13, 2010.  Similar to ‘596, the patent describes a method and system to improve data transmission from a mobile device to the network base station. Specifically, data transmission time intervals (TTI) are used to improve the performance of packet transmission in the enhanced uplink dedicated channels or E-DCH.  A shorter transmission time interval (TTI) results in higher system throughput, hence high-speed data transmissions. Transmitting uplink data through the E-DCH can be either scheduled or non-scheduled. Non-scheduled transmission transmits E-DCH data faster by omitting a series of processes for sending scheduling information from the mobile device (“user equipment”) to the network equipment. Claim 10, which depends on claim 9, describes E-DCH “non-scheduled transmission information’ configured by “k TTIs” and a bit map of N bits indicating the bit values of k.

Similar to ‘596, the ‘087 patent is a Samsung invention and has been declared as standards essential to ETSI TS 25.309 FDD enhanced uplink and ETSI TS 25.331 Radio Resource Control (RRC) protocol specification.

On March 7, 2014, Apple and Samsung filed a stipulation with the Court that narrows their case. Under the stipulation, the asserted claims of the '087 and '596 standard essential patents (SEPs) were withdrawn and Apple withdrew all of its counterclaims relating to Samsung's SEPs, including all FRAND (fair, reasonable, and non-discriminatory) counterclaims. Over-reliance on SEPs proved to be a poor strategy in Samsung’s patent infringement assertions in previous rounds.  While there is no indication in the stipulation why Samsung decided to pull its patents, the result is that Samsung has avoided the FRAND licensing issues attached to SEPs.  At least for now.

Closing Comments

Apple has decidedly bypassed hundreds of its iPhone patents in favor of key patents related to the user interface (UI) – possibly easier to present to a jury. Nonetheless, the arguments by expert witnesses on several highly technical fronts present a difficult challenge for the jury. Samsung will only be able to assert two patents compared to Apple’s five and will have to rely on invalidity arguments on the patent it was deemed to have infringed.

Samsung is a long term developer and innovator of mobile phones, with more than 45,000 US patents compared to Apples ~6,500 US patents.  Samsung is making its case that it has developed lots of patented technologies in the mobile arena that differentiate their products. The reality however is that for “iTrial-2” Samsung is relying on patents that others have filed. Where are Samsung’s killer phone patents?  It is a constant source of surprise and wonder that a goliath like Samsung cannot find valuable patents in its own portfolio to assert against Apple.  Instead it is relying upon patents from others most likely purchased on the open market.