Google asks appeals court to move Rockstar patent cases against Android device makers out of Texas

Google really doesn't want its Android device makers to mess with the Rockstar Consortium (which is owned by Apple, BlackBerry, Ericsson, Microsoft, and Sony) in Texas. Last December it brought a declaratory judgment action against the Rockstar Android cases in the Northern District of California, and the chief district judge held that California was a proper venue because Rockstar's patent lawsuits advance Apple's interests (Apple is headquartered in that district). As I said at the time, the Rockstar Consortium is so opaque that Apple isn't necessarily responsible for those lawsuits -- but responsible or not, Apple is a potential beneficiary.

But the California decision didn't persuade Judge Gilstrap in the Eastern District of Texas (who has previously been overruled by the Federal Circuit because he denied transfers of venue) to put his case on hold or to transfer it to California. When two district courts practically disagree on the proper venue, clarity can only be provided by an appeals court. That's why Google filed a petition for writ of mandamus (i.e., a request for the appeals court to interfere with an ongoing case, as opposed to an appeal in the narrow sense of the word, which relates to a final ruling) with the Federal Circuit last week. The objective is to have the Texas cases transferred to California (where Google developed Android) or at least to stay the Texas litigations until the California case has been resolved (which would have the same effect as a transfer).

This is what I expected to happen. In fact, I expected it a while ago. In February I wrote that "[w]e m[ight] very well see one or more mandamus petitions in this context" because "these defendants won't leave a stone unturned in their attempts to move the matter out of Texas." In March, I predicted that Judge Gilstrap wouldn't grant the Android device makers' motion to transfer venue, but that his decision wouldn't "dissuade Google and its OEMs from filing a somewhat likely mandamus petition with the Federal Circuit." I noted that Google could lose in Texas or win in California, but "especially with a view to pretrial decisions (summary judgment etc.), the Northern District of California would clearly be a better venue for the defendants in these cases." There we go.

While Apple and Samsung recently dropped all of their ex-US patent infringement actions against each other and Google (jointly with Motorola) reached a similar ceasefire agreement (even of worldwide scope) with Apple, the Rockstar lawsuits are continuing. In addition to still dealing with Apple in the U.S. (directly and through Rockstar) Samsung now basically has a two-front war with Microsoft: a contract action in New York plus that Rockstar lawsuit in Texas.

Some of the same players (as in the direct disputes between certain key organizations) are involved. Quinn Emanuel, the firm that had the lead in fending off Apple and Microsoft's lawsuits against Android (except for Samsung's defensive efforts in Germany, where credit for preventing Apple from ever enforcing any software patent against Samsung goes to the firms of Rospatt, a litigation firm, and Zimmermann & Partner, a patent prosecution firm with considerable litigation expertise) to the point that neither of those players ever achieved significant leverage, brought the mandamus petition against Judge Gilstrap's "what is filed in Texas stays in Texas" approach. I think it's very likely that Quinn Emanuel will defuse the Rockstar lawsuits just the way it defused the lawsuits brought by two of Rockstar's largest owners. But that is going to be more feasible in the Northern District of California than in the Eastern District of Texas.

[Update] I have a small correction to make. While the official caption of the Federal Circuit cases is In re Google, Google is (which comes as no surprise) not alone in this effort. For example, Samsung also filed a petition, and that's the one I downloaded first from the docket and published here. There are several related case numbers. [/Update]

If you're interested in further detail, here's Samsung's petition:

14-08-14 Google Petition for Writ of Mandamus (Rockstar Cases) by Florian Mueller

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Rockstar fine-tuning its Android lawsuits, now asserting four more patents against Google

There hasn't been much progress so far with the Rockstar Consortium's Halloween lawsuits against Google and seven Android device makers (one of whom, Huawei, has already settled) because the parties are still debating the proper venue. But the venue fight does involve some substantive issues, and as a side effect of the related motion practice it became known that Nortel employees told Google back in 2010 that it infringed certain patents that Rockstar is asserting now.

Just for a brief update, Rockstar has made some adjustments to its complaints in order to increase its chances of defeating Google's (and the Android OEMs') push for moving the cases out of the Eastern District of Texas:

• Late last year Rockstar already added Google as a co-defendant to its Samsung lawsuit. That was the first amended complaint in Rockstar v. Samsung. Rockstar is now seeking permission to file a second amended complaint. In the first one, it asserted only three of the seven patents-in-suit against Google. The objective of the proposed second amended complaint (i.e., the third version in total) is to additionally asserted the four other patents against Google as well. Since those four patents were previously already asserted against Samsung and were addressed by Google in its declaratory judgment action in the Northern District of California, Rockstar argues there's no reasonable basis for Google to oppose this addition. But there is a disagreement.

• Samsung was first to bring a motion to dismiss Rockstar's lawsuit(s) for lack of standing at the time of filing and, with respect to one of the patents-in-suit, on the grounds of invalidity. The other Android OEMs brought similar, though not in all cases identical, motions to dismiss shortly thereafter. ZTE was last to do so (mentioned in this post) and additionally argued that Rockstar lacked a basis to allege willful infringement of the '551 patent. Rockstar amended its complaint against ZTE accordingly, rendering the '551 willfulness issue moot.

I guess Rockstar's procedural steps will be sufficient to dissuade Judge Gilstrap in Texas from granting any motion to transfer, but won't dissuade Google and its OEMs from filing a somewhat likely mandamus petition with the Federal Circuit. Google could lose in Texas or win in California; so could Rockstar. But especially with a view to pretrial decisions (summary judgment etc.), the Northern District of California would clearly be a better venue for the defendants in these cases.

Finally, on a somewhat related note I'd like to mention something here on which I already commented on Twitter. Bloomberg reported on Google's successful efforts to find out who is behind a patent troll named Suffolk Technologies LLC that is suing it over a former BT patent, and it turned out that "Suffolk is owned by Corporate Research Partners, which is owned by IPValue, formed in 2001 by a joint venture of Goldman Sachs, General Atlantic Partners and Boston Consulting Group". A spokeswoman for Goldman Sachs "said the company has a minority, non-controlling stake in iFormation Group, the parent of IPValue", reports Bloomberg. This doesn't reflect favorably on Goldman Sachs at all, and Google did the world a service by naming and shaming Goldman Sachs for its involvement with patent trolling. But the Bloomberg article misses an important point: while Google supports disclosures of the real party in interest in connection with litigation, it has said that it's not really interested in ensuring transparency in patent ownership before litigation is brought. And that's where transparency should begin. So, while I congratulate Google on its revelations regarding Goldman Sachs, I would encourage it to promote transparency in patent ownership at all levels and all stages, not just selectively.

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HTC, LG, ASUSTeK, Pantech join Samsung in moving for dismissal of Rockstar Android lawsuits

A week ago I reported and commented on Samsung's motion to dismiss the patent infringement lawsuit brought against it by the Rockstar Consortium and its MobileStar Technologies subsidiary in the Eastern District of Texas. The next day ASUSTeK brought a motion raising the same issues (alleged invalidity of one patent and, which has potentially broader implications, lack of standing at the time the lawsuit was filed). Yesterday HTC, LG and Pantech followed suit. Technically, due to the AIA's joinder rule, each defendant faces a different Rockstar lawsuit, though the issues are near-identical, except that the case Rockstar brought against Google itself (apart from the fact that Google was later added as a co-defendant to the Samsung case) is about search engine patents.

Of the seven Android device makers sued on Halloween, one (Huawei) has settled, five (firstly Samsung, then ASUSTeK, HTC, LG, Pantech) have brought motions to dismiss, and one (ZTE) has yet to respond. Presumably ZTE will also move for dismissal, unless it settles before.

What we're seeing here is just the overture in the form of a venue fight. Google filed a declaratory judgment action in the Northern District of California shortly before Christmas. Google's partners are meanwhile trying to get the Texas cases dismissed, which would make the California action the first-filed case. At the same time, Rockstar is trying to win the dismissal of the California lawsuit, arguing that there's no point in litigation in two districts "when a single suit in Texas, combined with six existing suits in Texas, can fully safeguard Google's interest".

In each case in which a motion to dismiss should fail, we're going to see a motion to transfer venue. In its reply brief in California, Rockstar has already described a transfer motion as "the predictable next step should this [California] case survive a motion to dismiss", and Rockstar and MobileStar "of course, reserve the right to file such a motion, if necessary, at an appropriate time".

From what I heard (from a major industry player who is neither a client of mine nor a party to Rockstar's Google/Android-related cases), Judge Rodney Gilstrap, who is presiding over the Rockstar-Android cases in Texas, is notoriously unwilling to transfer cases out of his court to other districts, but some defendants have apparently won such transfers through petitions for writ of mandamus filed with the Federal Circuit. We may very well see one or more mandamus petitions in this context as well. I believe these defendants won't leave a stone unturned in their attempts to move the matter out of Texas.

While all of this delays resolution of the actual infringement issues, even the procedural maneuvering that is going on at this stage does involve some arguments touching on the substance of these cases. In last week's reply brief by Rockstar in California I found the following passage particularly interesting:

"C. Google Is Incorrect That Rockstar's Claims Concern Only Android

Throughout its opposition, Google argues that the asserted patents in this action and the Texas litigation concern solely the Android operating system. [...] This is misleading and mistaken. Rockstar and MobileStar are accusing various mobile devices that, while including the Android operating system, also include hardware and software components that infringe Rockstar and MobileStar patents, not the Android operating system alone. [...] For example, at least one patent (U.S. Patent No. 5,838,551) asserted against these mobile devices in the Texas actions has nothing to do with their operating system, but is directed solely to a type of component contained in those devices.

For this reason, Google is mistaken in invoking the customer-suit exception to the first-to-file rule. That exception applies only 'where the first suit is filed against a customer who is simply a reseller of the accused goods, while the second suit is a declaratory action brought by the manufacturer of the accused goods.' [...] Here, the Texas defendants are not resellers of devices or Android operating systems obtained from Google, but rather design, manufacture, and sell the devices themselves (which use the Android operating system). [...] This is hardly the situation of a patentee taking advantage of a customer who unknowingly purchased an infringing product from a manufacturer.

In any event, Google cannot have it both ways. If Google wishes to paint the Texas litigation as a direct assault on Google itself, then Google cannot plausibly hold out this suit as the 'first-filed' case. It is undoubtedly the second-filed case under any logical view of the substance of each suit."

The '551 patent covers an "electronic package carrying an electronic component and assembly of mother board and electronic package", which is obviously Android-unrelated. I'm still going to refer, for the sake of brevity, to these cases as the "Rockstar Android lawsuits" because all defendants have in common that they make Android-based devices and because most of the asserted patents are allegedly infringed by Android itself. When I say "Rockstar Android lawsuits", I mean "Rockstar's lawsuits against six (originally seven) Android OEMs". But for the legal question of whether a dismissal or transfer is warranted, the distinction must be made, and I do agree with Rockstar that Android device makers -- rather large and sophisticated companies, by the way -- can't be compared to the targets of typical customer suits such as hotels or restaurants offering WiFi access.

The potential scope and usefulness of a customer suit exception is also a hotly contested issue in the ongoing U.S. patent reform debate.

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Google tries to get Rockstar's Android lawsuits transferred out of the Eastern District of Texas

On Halloween 2013, the Rockstar Consortium -- the winner of the 2011 Nortel patent auction -- brought patent infringement actions against Google and seven of its Android hardware partners (Samsung, Huawei, ZTE, LG, HTC, Pantech, and ASUSTeK) in the Eastern District of Texas. The lawsuit against Google itself involves seven "associative search engine" patents, while the seven patents-in-suit in the actions against Android OEMs cover a diversity of hardware and software features.

So far, no defendant has answered to the complaint. They were all granted extensions.

On Monday (December 23), Google filed a declaratory judgment lawsuit in the Northern District of California against Rockstar and its MobileStar Technologies subsidiary over the seven patents-in-suit in the Android OEM cases (this post continues below the document):

13-12-23 Google N.D. Cal. DJ Action Against Rockstar Consortium by Florian Mueller

The complaint contains a lot of rhetoric, accusing Rockstar of having "placed a cloud on Google's Android platform" and threatening "Google's business and relationships with its customers and partners, as well as its sales of Nexus-branded Android devices". One tidbit previously unknown to me is that "MobileStar [the subsidiary that is a co-plaintiff in the Rockstar suits against Android device makers) was formed for litigation one day before Rockstar filed its lawsuits against Google's customers". Other than that, it's the usual anti-troll rhetoric, blaming Rockstar's shareholders, with a particular focus on Apple, for the fact that Google's aggressive pursuit of the Nortel patent portfolio (as a matter of fact, Google won the "stalking-horse bid" in 2011) forced other industry players to join forces in order to clear the market of these patents. If not for Google's aggressive pursuit, these patents would have sold at a fraction of the price.

Google alleges that "Rockstar intends the Android OEM Actions to harm Google's Android platform and disrupt Google's relationships with the Android OEM Defendants". Google does not adduce any particular evidence at this stage; it just refers to an Ars Technica article.

I've previously commented on Google's hypocrisy in connection with patents, such as in an op-ed published last month on The Hill's Congress Blog, entitled "Sue when you're winning".

Presuambly none of the defendants wants the liability issues and remedies to be decided in the Eastern District of Texas. But in order to move the Rockstar Lawsuits out of Texas, they need to present a superior alternative. We'll see soon whether they all advocate that their lawsuits be moved to Northern California, where they could and would be consolidated with Google's declaratory judgment action, or whether some or all OEMs additionally bring declaratory judgment actions in districts where their U.S. subsidiary are based.

Rockstar will presuambly request that Google's DJ action be transferred to the Eastern District of Texas and consolidated with the earlier-filed infringement cases.

Quinn Emanuel filed the Northern California action on Google's behalf. Quinn Emanuel has already done, and continues to do, a lot of work for Android device makers (especially Samsung, HTC and Motorola). It remains to be seen whether all defendants agreed that QE should lead their collective defense, or whether some of them have other preferences.

The case was filed with the San Jose division (that's the one closest to Google's Mountan View HQ) and automatically assigned to Magistrate Judge Paul S. Grewal, known for his work on discovery disputes (including the "Patentgate" affair, which also involves QE) on the Apple v. Samsung cases Judge Lucy Koh is presiding over. If any of the parties declines to proceed before a Magistrate Judge, the case will have to be assigned to a United States District Judge. I'm sure Judge Grewal could handle a case like this just as well as any district judge, but chances are someone will want the case reassigned.

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Failed $4.4 billion bid for Nortel patents comes back to haunt Google and friends on Halloween

Almost two and a half years ago, Google lost the Nortel patents auction to a consortium of six industry leaders (Apple, BlackBerry, EMC, Ericsson, Microsoft, Sony) who just wanted to clear the market before anyone would abuse Nortel's patents, particularly its 4G/LTE patents, the way Google's Motorola Mobility still tries to abuse its standard-essential patents. The price for preventing abuse was $4.5 billion, several times what analysts expected before the auction. Google had won a "stalking-horse" bid, which was not the real game, with a $900 million bid. It famously bid pi billion dollars and other multiples of mathematical constants, showing a strange sense of humor with shareholders' money. Its highest bid, as is now documented in a publicly-accessible court filing, was $4.4 billion -- then it dropped out, Rockstar won, and Google later, in panic mode, wasted $12.5 billion on the acquisition of Motorola Mobility, over whose patents Google currently has precisely zero (you know, the number that looks like the letter O) enforceable injunctions in place against its rivals on a worldwide basis and whose video codec and WiFi patents entitle it to less than $2 million a year in royalties from Microsoft.

Fast forward to Halloween 2013. Apparently the Rockstar Consortium's efforts to subsequently negotiate patent license deals with Google and the wider Android ecosystem have been unsuccessful because at least eight Rockstar lawsuits were filed in the Eastern District of Texas: separate actions against Google, Samsung, Huawei, ZTE, LG, HTC, Pantech, and ASUSTeK. I don't know what happened in those negotiations, but maybe Google was a sore loser and tried to defy logic. The simple logic here is, in my view, that if you bid $4.4 billion for a patent portfolio (just not enough to win the auction), you can hardly dispute later that the patent portfolio in question is a treasure trove. And if you want to license a treasure trove, it costs you more than licensing something of little value such as some Motorola patents covering pre-World-War-II-style interlaced video and minor WiFi features. You can't just bid $4.4 billion -- thereby validating the portfolio in the commercially most meaningful way -- and later refuse to pay a significant amount for a license. This is, figuratively speaking, a case of venire contra factum proprium. No jury, whether in East Texas or elsewhere, is going to buy that.

No one can assert thousands of patents at the same time. Rockstar has now made its initial picks, and it presumably thought very carefully about which patents would likely give it leverage in litigation. It has apparently taken its time and tried hard to resolve the issue through licensing rather than litigation. But litigation turned out inevitable, and it surely prepared for that scenario, too. That's the nature of patent licensing.

There are two categories of lawsuits. A lawsuit against Google's core business -- its search engine -- involves different patents (all from the same family of associative search engine patents, which goes back to the time before Google was even founded!) than the seven lawsuits against certain Google hardware partners. Google has been proud of its own search engine patents, including the patent without which Google might not even exist today (the PageRank patent) or at least not be a monopolist. It now has to respect the work Nortel did in this area and which Google built on. It will have to pay up because Congress is not going to bail it out. The Rockstar Consortium is a co-plaintiff in all eight cases (Google and the OEM cases). Against Google, it is joined by its subsidiary NetStar Technologies, and by another subsidiary, MobileStar Technologies, against the device makers.

Defendants will presumably try to move these cases out of the Eastern District of Texas to other districts. It would be more efficient to keep at least the device maker cases in Texas since it's all about the same patents, but I can understand that defendants have different preferences. In Rockstar's case, resources are not going to be an issue. If necessary, it can pursue these cases in eight different districts in parallel, or bring even more lawsuits if others don't get the message from the Halloween lawsuits and continue to refuse to pay up.

I'll now publish the complaint against Google, followed by a list of the patents asserted against Google, and then the Samsung lawsuit (the lawsuits against the other device makers appear to be consistent), also followed by a list of the patents-in-suit.

13-10-31 Rockstar Patent Complaint Against Google by Florian Mueller

Patents-in-suit against Google

• U.S. Patent No. 6,098,065 on an "associative search engine"

• U.S. Patent No. 7,236,969 on an "associative search engine"

• U.S. Patent No. 7,469,245 on an "associative search engine"

• U.S. Patent No. 7,672,970 on an "associative search engine"

• U.S. Patent No. 7,895,178 on an "associative search engine"

• U.S. Patent No. 7,895,183 on an "associative search engine"

• U.S. Patent No. 7,933,883 on an "associative search engine"

13-10-31 Rockstar Patent Complaint Against Samsung by Florian Mueller

Patents-in-suit against Google's hardware partners (Samsung, Huawei, ZTE, LG, HTC, Pantech, ASUSTeK)

• U.S. Patent No. 5,838,551 on an "electronic package carrying an electronic component and assembly of mother board and electronic package"

• U.S.Patent No. 6,037,937 on a "navigation tool for graphical user interface"

• U.S. Patent No. 6,128,298 on an "Internet protocol filter"

• U.S. Patent No. 6,333,973 on an "integrated message center"

• U.S. Patent No. 6,463,131 on a "system and method for notifying a user of an incoming communication event"

• U.S. Patent No. 6,765,591 on "managing a virtual private network"

• U.S. Patent No. 6,937,572 on "call trace on a packet switched network"

Rockstar and MobileStar are seeking a permanent injunction ove the above patents.

Some of these device makers also build Windows Phone products, but the infringement allegations are limited to "mobile communication devices having a version (or an adaption thereof) of Android operating system", showing once again that Google's intellectual property stategy for Android is a failure that exposes its ecosystem to liability issues. Some of the infringement allegations appear to be Android-specific, possibly resulting in interventions by Google in the device maker lawsuits and suggesting that no one will be able to build Android devices without a license from Rockstar/MobileStar.

22 royalty-bearing Android patent license deals have already been announced. It also appears that Nokia has reached, or is very close to reaching, a tipping point in its dispute with HTC, which will result in another such deal pretty soon -- and not just a Nokia-HTC deal but deals between Nokia and the rest of the Android ecosystem (it's also negotiating with Samsung). And RockStar will strike patent license deals with each and every Android device maker. One Android device maker, Sony, is a member of the consortium -- and patent licensing could increase Sony's competitiveness within the market for Android devices.

By the way, as Intellectual Asset Management (IAM) magazine points out on Twitter, "[a]ccording to the FTC definition, Rockstar should not be regarded as a patent assertion entity (PAE)". Google got more help from U.S. antitrust regulators than any other company in this industry, but there's a limit even to that, and it will now be left to its own devices to sort out this situation. It can sort it out with money. A rather substantial amount of money, I guess.

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Presumptive Acacia subsidiary sues HTC, LG, ZTE, BlackBerry over Nokia Siemens Networks patents

Nokia's wireless patents are ubiquitous. In addition to Nokia's direct monetization, a number of ex-Nokia patents have been sold to different licensing firms, who occasionally try to enforce such patents in court. Last week I noted that Intellectual Ventures' second patent infringement lawsuit against Google's Motorola Mobility involves, among other things, two former Nokia patents. Yesterday a handful of lawsuits against wireless device makers and carriers by what appears to be an Acacia subsidiary were filed in the Eastern District of Texas, and they are all about former Nokia Siemens Networks patents. The assignment record of at least one of the patents-in-suit reveals Acacia's involvement. In late December, Nokia Siemens Networks, a telecommunications infrastructure maker, entered into a license agreement with Acacia and a few days later (on December 31, 2012) Acacia announced that "a subsidiary has acquired patents for Wireless Infrastructure and User Equipment Technology from Nokia Siemens Networks relating to second (2G), third (3G) and fourth (4G) generation wireless technologies".

Cellular Communications Equipment LLC, whose name never showed up on the Internet prior to yesterday's patent infringement complaints, brought separate lawsuits targeting HTC, LG, ZTE, BlackBerry (Research In Motion) and Pantech. Each of these complaints also targets wireless carriers who redistribute devices by those companies. Verizon and AT&T are a defendant in each case. T-Mobile as well as Sprint and its Boost Mobile subsidiary are named as defendants in all cases but the Pantech-related one.

This tactic of separate suits per device maker but with significant overlap among co-defendants is interesting in light of the America Invents Act's multi-defendant joinder rule. Each device maker would presumably like to get their lawsuit transferred to the home state of their U.S. subsidiary. But in that case there would be some duplicative discovery effort involving the same carriers in multiple districts.

The sale of those Nokia Siemens Networks patents to Acacia was announced about a week after the BlackBerry company's recent settlement with Nokia. It appears that BlackBerry was not licensed to the Nokia Siemens Networks patents that were subsequently transferred and now asserted against it, or maybe to none at all.

HTC is still embroiled in litigation with Nokia over approximately 50 patents (and countersuing over two patents of its own, with trials taking place in Germany on Thursday and Friday). It will have to sort out licensing issues not only with Nokia itself but also with Acacia.

Acacia is asserting different sets of patents in yesterday's lawsuits. Some were obtained by Nokia Siemens Networks, while others previously belonged to Nokia or Siemens before being assigned to their joint venture. Here's a list of the patents-in-suit and the patent-specific defendants:

• U.S. Patent No. 6,377,804 on "mobile communication systems" (all but ZTE)

• U.S. Patent No. 6,819,923 on a "method for communication of neighbor cell information" (all but BlackBerry)

• U.S. Patent No. 7,215,962 on a "method for an intersystem connection handover" (all defendants)

• U.S. Patent No. 7,218,923 on "control of terminal applications in a network environment" (all but BlackBerry)

• U.S. Patent No. 7,941,174 on a "method for multicode transmission by a subscriber station" (all but BlackBerry)

• U.S. Patent No. 8,055,820 on an "apparatus, system, and method for designating a buffer status reporting format based on detected pre-selected buffer conditions" (all defendants)

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