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1 - Cover - Motorola vs. Apple, Declaration Judgement Action 
Last week Motorola Mobility, Inc., a wholly-owned subsidiary of Motorola, launched three separate patent infringement lawsuits against Apple Inc. which are available for review in our archives. If that wasn't enough, Motorola Mobility Inc. has now launched an offensive Declaratory Judgment against Apple and NeXT. Motorola was fully aware of Apple's patent infringement lawsuit against HTC and it appears that they were even in confidential negotiations with Apple to license their technology so as to avoid litigation. Evidently the negations went sour and they are now preemptively trying to stop Apple from launching a similar patent infringement against them. The same patents presented in the Apple vs. HTC patent infringement lawsuit are the very same patents that Motorola wishes the court to declare invalid against them in this case. Motorola Mobility is actually asking for judgment to be entered finding that this is an "exceptional case entitling Motorola to an award." Well, we'll just have to see if the court agrees with Motorola Mobility on that count, won't we. For now, I simply smell fear. Don't you?  

 

Motorola Seeks Declaratory Judgement 

 

In the complaint's introduction we read that "This is an action brought by Motorola Mobility to obtain declaratory judgment that Apple has no rights against Motorola Mobility regarding "the Apple patents" [listed in full below]. Additionally, Motorola Mobility brings this action to obtain declaratory judgment that neither NeXT nor Apple has rights against Motorola Mobility regarding U.S. Patent No. 5,481,721 ("the '721 patent") (collectively with the Apple patents "the patents-in-suit")."

 

Case Background 

 

The complaint states that Apple and NeXT "have a history of asserting the patents-in-suit against the Android operating system for mobile phones. For example, Defendants filed two separate cases in this District against High Tech Computer Corp. ("HTC") and its affiliates, wherein they allege that phones using the Android operating system infringe the patents-in-suit (see C.A. Nos. 10-166 (involving the '721, '867, '337, '131, '852, '647, '705, '983, '263, and RE '486 patents) and 10167 (involving the '599 and '354 patents)). Moreover, in a case pending at the International Trade Commission (Investigation No. 337-TA-710), Defendants contend that the patents-in-suit are infringed by the Android operating system used in HTC's mobile phones."  

 

Furthermore, the complaint states that "like HTC, Motorola Mobility manufactures and sells mobile phones that also use the Android operating system, and Motorola Mobility has engaged in confidential negotiations with Defendants regarding the licensing of Defendants' intellectual property. As a result of these negotiations and Defendants' litigation history, including Defendants' recent assertion of the patents-in-suit against the Android operating system, Motorola Mobility has a reasonable apprehension that it faces an infringement suit related to the patents-in-suit."  

 

An Example of the Pattern of this Lawsuit

 

Below you'll find eleven Apple and/or NeXT related patents involved in this case whereby Motorola Mobility is declaring each to be invalid and that no infringement has been made on their part. There's a pattern to the case. Each patent is identified, then there's a declaration of non-infringement followed by a declaration that the patent is invalid against Motorola Mobility. Below you'll find a rough example or outline of how one case plays out in the complaint and then you'll understand that this is then repeated for the remainder of the patents in the case.

 

Firstly: The Patent Being Challenged

 

1995 Taligent Inc. Patent 5,455,599 entitled "Object-oriented graphic system" The patent generally relates to improvements in computer systems and more particularly to a system for enabling graphic applications using an object-oriented operating system. Patent 5,455,599 is then abbreviated to that of "the '599 patent" as noted below.

 

Secondly: Declaring Non-Infringement of Each Patent

 

On information and belief, Apple has professed rights against Motorola Mobility under the '599 patent based on Motorola Mobility's activities related to Motorola Mobility's Droid, Droid 2, Droid X, Cliq, Cliq XT, BackFlip, Devour A555, i1 and Charm products.

 

Motorola Mobility has not directly or indirectly infringed and is not directly or indirectly infringing any valid, enforceable claim of the '599 patent as defined by 35 U.S.C. § 271.

 

Thirdly: Declaring Each Patent Invalid

 

The claims of the '599 patent are also invalid for lack of enablement, insufficient written description, indefiniteness and/or failure to disclose the best mode of the invention as required by 35 U.S.C. § 112. The claims of the '599 patent are vague and indefinite and incorporate limitations that are neither disclosed, described, explained, nor enabled by the specification of the '599 patent.

 

An Overview of All of the Patents Listed in the Complaint

 

1995 Taligent Inc. Patent 5,455,599 entitled "Object-oriented graphic system" The patent generally relates to improvements in computer systems and more particularly to a system for enabling graphic applications using an object-oriented operating system.

 

1996 Taligent Inc. Patent 5,519,867 entitled "Object-oriented multitasking system."The patent generally relates to object-oriented computing environments, and more particularly to a system and method for providing an object-oriented interface for a procedural operating system.

 

1996 Apple Computer, Inc. Patent 5,566,337 entitled "Method and apparatus for distributing events in an operating system." The Patent Abstract: In a computer including an operating system, an event producer for generating an event and detecting that an event has occurred in the computer and an event consumer which need to be informed when events occur in the computer, a system for distributing events including a store for storing a specific set of events of which the at least one event consumer is to be informed, an event manager control unit for receiving the event from the event producer, comparing the received event to the stored set of events, and distributing an appropriate event to an appropriate event consumer, and a distributor for receiving the event from the control unit and directing the control unit to distribute an appropriate event to an appropriate event consumer.

 

1999 Apple Computer, Inc. Patent 5,915,131 entitled "Method and apparatus for handling I/O requests utilizing separate programming interfaces to access separate I/O services" The patent generally relates to the field of computer systems; particularly, the present invention relates to handling service requests generated by application programs.

 

1999 Apple Computer, Inc. Patent 5,929,852 entitled "Encapsulated network entity reference of a network component system." The patent generally relates to computer networks and, more particularly, to an architecture and tools for building Internet-specific services.

 

1999 Apple Computer, Inc. Patent 5,946,647 entitled "System and method for performing an action on a structure in computer-generated data." The patent generally relates to manipulation of structures in computer data. More particularly, the invention relates to a system and method for performing computer-based actions on structures identified in computer data.

 

1999 Apple Computer, Inc. Patent 5,969,705 entitled "Message protocol for controlling a user interface from an inactive application program." The patent generally relates to user interface control in a computer system. More specifically, the present invention relates to a messaging protocol which allows one application program to specify the appearance of an interface of a computer system while under control of a second application program.

 

2001 Object Technology Licensing Corp Patent 6,275,983 entitled "Object-oriented operating system." relates generally to object-oriented computing environments, and more particularly to a system and method for providing an object-oriented interface for a procedural operating system.

 

2002 Apple Computer, Inc. Patent 6,343,263 entitled "Real-time signal processing system for serially transmitted data." The patent relates to the transmission of data to and from a computer, and more particularly to a system for performing real-time signal processing of data that is serially transmitted to and from a computer.

 

2002 Object Technology Licensing Corporation Patent 6,424,354 entitled "Object-oriented event notification system with listener registration of both interests and methods." The patent generally relates to improvements in display systems and more particularly to a globally scalable method for notification of change events arising in an object-oriented environment such as an automated menu state processing by integrating menu processing operations into the operating system.

 

2007 Apple Computer, Inc. Patent RE 39,486 entitled Extensible Replacement Network Component System." The patent generally relates to computer networks and, more particularly, to an architecture for building Internet-specific services.

 

Motorola Mobility's Request for Relief

 

Motorola Mobility respectfully requests that: (a) Judgment be entered declaring that Motorola Mobility has not infringed, induced the infringement of, or contributed to the infringement of and is not infringing, inducing the infringement of, or contributing to the infringement of any valid, enforceable claim of any of the patents-in-suit; (b) Judgment be entered declaring that one or more claims of each of the patents-insuit is invalid; (c) Judgment be entered finding that this is an exceptional case entitling Motorola Mobility to an award of its attorneys' fees for bringing and prosecuting this action, together with interest, and costs of the action under 35 U.S.C. § 285; and (d) Judgment be entered awarding Motorola Mobility such other and further relief as this Court may deem just and proper.

 

MORRIS, NICHOLS, ARSHT & TUNNELL LLP filed the complaint with the court on behalf of Motorola Mobility Inc., who seeks a trial by jury. No judge as of yet has been assigned to this case. The case was filed in the U.S. District Court for the District of Delaware.

 

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Comments

Matt Macari

It's interesting to note that this Declaratory Judgment action by Motorola essentially forces Apple to counterclaim for infringement. In these preemptory DJ actions, the defendant patent owner will invariably have to assert the patents-in-suit as a "compulsory counterclaim" or risk losing the right to assert the patents at a later date against the plaintiff (Motorola).

Matt Macari
Skaar Ulbrich Macari

Burt

Apple patented their iPhone interface and the iPhone hardware configuration extensively. I doubt if Moto will get any sort of declatory judgement in it's favor. What is the Droid though, except a blatant and obvious iPhone rip-off?

Pete

I had no idea Motorola smartphones don't have a CPU, memory, storage, operating system, input and display and hence cannot be a computer. Good defense.

no

This is on behalf of google.

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