Retrial jury awards Apple $533 million in design patent and $5 million in utility patent damages from Samsung

A cartoon showing Homer Simpson using an iPhone may indeed have had an impact on a high-profile smartphone patent dispute as the screen design patent it relates to apparently accounts for approximately half a billion dollars in design patent damages. After three days and a half of deliberation, the re-retrial jury in the first Apple v. Samsung case in the Northern District of California awarded Apple a total of approximately $538.6 million in damages from Samsung (related to some old phones--mostly the first two generations of the Galaxy S), $533.3 million of which relate to design patents and $5.3 million to utility (i.e., technical) patents. Here's the verdict form (this post continues below the document):

18-05-24 Apple v. Samsung Jury Verdict by Florian Mueller on Scribd

The amount is similar to what Apple won in previous trials. The August 2012 billion-dollar verdict included trade dress (later thrown out by the Federal Circuit) and a third utility patent (the '915 pinch-to-zoom API patent, which has been held invalid in the meantime, though theoretically it could still be revived). A retrial over some products was materially consistent with the original verdict. And so is, after years of appellate and post-appellate proceedings and despite the extremely important clarification of the law that Samsung had obtained from the Supreme Court, the latest verdict.

The jury had asked two questions, and both questions showed they were really struggling with determining the relevant article of manufacture (AoM). If the jury had determined that the design patents in question covered only certain components (casing and screen), the amount would have been in the tens--not hundreds--of millions of dollars, but given that Apple was seeking more than $1 billion, the jury would probably have been inclined (in that hypothetical scenario) to award substantially more than the amount Samsung described as reasonable (less than $30 million). At the same time, given that juries often come down somewhere in the middle, a billion-dollar award was a possibility, but far less probable than the combination of agreeing with Apple on the AoM but with Samsung on most or all of its deductions.

One juror explained to Law360's Dorothy Atkins how the jury arrived at the conclusion that the design patent damages award had to be based on the entire smartphone, not on components (this post continues below the two tweets):

For the 305 patent they found the Aom was the entire phone and the d677 patent covered parts. She says she was the sole juror disagreeing with the others today and yesterday.

— Dorothy M. Atkins (@doratki) May 24, 2018

Juror says she didn't think about the financials or about punishing Samsung and they all agreed pretty quickly that the d'305 covered the whole phone bc can't see the design without the phone.

— Dorothy M. Atkins (@doratki) May 24, 2018

Throughout the years, including this month, I've repeatedly expressed concern over software patents styled as screen design patents. The amount wasn't shocking because, again, it was consistent with previous verdicts, even though I, as a juror, would have arrived at a different AoM determination and, therefore, a lower amount. In my opinion, the law should be changed to allow apportionment because an AoM-based figure is quite often going to be the wrong one, especially in a case like this where there was a huge discrepancy between the economics of the two approaches to the AoM. But with the current statute, the question was just whether Apple would be undercompensated or hugely overcompensated, and the latter is what that jury verdict comes down to. But the shocking and somewhat unexpected part is the fact that a screen design patent was ultimately considered decisive is what I'm concerned about. That will encourage patent trolls to obtain and assert more screen design patents.

According to media reports, Apple reiterated how much value it attaches to design, and Samsung is now going to consider its options. Those options are post-trial motions and, possibly, another appeal.

While the focus in recent years was on the AoM question and proper interpretation of 35 U.S.C. § 289, I have already expressed on prior occasions that I'd have liked to see more of a focus on the question of whether screen layouts should be patentable.

I read on Twitter that Apple and Samsung may actually settle the case now, which would be good. Better late (more than seven years after the filing of the initial complaint) than never. Let's see what happens now. And regardless of what happens here, it's high time that more people woke up and understood the threat that screen layout design patents--which can cover subject matter that wouldn't pass the patentability criteria (including, but not limited to, patent-eligibility) for utility patents--pose. Apple v. Samsung is an extraordinary case in various ways. My concern is about a huge number of other cases in which such patents might be asserted.

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Will Homer Simpson sway the Apple v. Samsung design patent damages retrial jury?

It would have been preferable to give the Apple v. Samsung design patent damages re-retrial jury in San Jose (Northern District of California) a chance to render a verdict before the weekend. In that case, jurors might have put an end to this disruption of their lives. But the way things worked out, they're now going to think about what position to take on Monday morning when official deliberations begin. In the meantime, they're not allowed to talk to anyone about the case or to take a look at any media reports (whether some jurors do so anyway is another question, but they're not supposed to).

As in the previous trials in this case, and as I mentioned a few days ago, Apple's lawyers portrayed Samsung as an intentional infringer, an unrepentant copyist, with Samsung being barred from presenting some evidence that could have shed a different kind of light on that question.

The holdings that (i) Samsung infringed those three design patents (a long time ago) and (ii) that those patents are valid are "law of the case" and the re-retrial jury must presume both to be the case. It is worth noting, however, that courts in other jurisdictions looked at international equivalents of those intellectual property rights (and at devices from the same generation of Android-based Samsung products) and reached rather different conclusions. But things are the way they are for the purposes of this U.S. case, so the focus is just on damages, and the single most important question in this regard is what "article of manufacture" a disgorgement of Samsung's profits should be based on: the entire device (which was considered a foregone conclusion in previous trials, but the Supreme Court and, previously, the United States Department of Justice disagreed with Judge Koh, the United States Court of Appeals for the Federal Circuit, and Judge Lucy H. Koh) or one or more components?

In that context, the most surprising tweet from the courtroom (thanks to Mike Swift, Joshua Sisco and Stephen Shankland for some excellent coverage!) indicated that Apple's lead counsel, Bill Lee, could live with a $370 million verdict:

Before the break, Apple's Lee in his Wagner cross tried to give the jury other damages options between Samsung's $28M and Apple's $1.067B - $370M if jury concludes the AOM is the full phone, but adopts Samsung's cost deductions. #appsung

— Mike Swift (@Swiftstories) May 18, 2018

Given that Apple's own damages demand is almost three times as high, the above observation suggests more than a crack in the shell. As I followed the trial on Twitter, I felt that Samsung's lawyers and experts drove some very important points home, though Apple also made some good points, considering that Apple's position is a very extreme one in this case. Is Apple now happy with getting a little bit less for those design patents than before? Or is it simply waving a white flag because it's afraid the jury might arrive at a much lower figure? W won't ever know.

If stakeholders could file amicus curiae briefs with this jury, Apple would really be in trouble and even the $370 million "compromise" proposal would be ambitious. Hardly anyone wanted to support Apple's "entire device" position in filings with the Supreme Court. Most of those who supported Apple said they just wanted to ensure that a disgorgement of infringer's profits under 35 U.S.C. § 289 would continue to be available in other cases (such as with respect to running shoes).

The world outside that San Jose courtroom overwhelmingly prefers a component-based damages determination. This InsideSources article on the problems that an excessive damages amount in the Apple v. Samsung case could cause tech and non-tech companies alike is a good example. But jurors won't have the benefit of such information on the wider ramifications of what they're required to decide.

The tech sector at large (with a few exceptions merely proving the rule) is also concerned about patents on screen designs. The D'305 patent covers a screen layout. That one is a software patent styled as a design patent because it wouldn't meet the patentability (including, but not limited to, patent-eligibility) standards for utility (i.e., technical) patents. While I can imagine Samsung saw the most immediate threat in this case in the original "it must be a complete device" standard for the determination of the relevant article of manufacture, it was very unfortunate that Samsung didn't additionally ask the Supreme Court to hold such subject matter ineligible for design patents. Now Samsung's lawyers say that a screen is the proper article of manufacture for a software user interface patent. That would mitigate the damage to Samsung, but it doesn't alleviate my concern, as an app developer, over patents like D'305 in the slightest.

Apple has some of the best lawyers in the world, and they dug up something that might have impressed the jury (this post continues below the YouTube video):

That video shows Homer Simpson with an iPhone, and what makes the iPhone particularly identifiable is the app menu matrix everyone knows. Actually, most non-iPhone devices have such a matrix as well. They still do, despite Apple's lawsuits against Samsung, Motorola, and HTC (the three leading Android device makers earlier this decade, i.e., when Apple's patent assertions against Google's ecosystem began). In other words, this is iconic and hard to protect at the same time. And the reason it's hard to protect is because it's just a very logical screen layout.

Should Apple get many hundreds of millions of dollars, or theoretically even a billion dollars, then Homer Simpson--or, in the real world, Homer's creator, Matt Groening--deserves a commission.

One of the questions that jurors will be asking themselves this weekend is likely whether (again, basing everything on the previous findings of infringement and validity, irrespectively of what courts in other countries concluded) Samsung should face the maximum penalty, a slap on the wrist, or something in between.

For more than one reason, there's no way I could ever have ended up on that jury. If--in a hypothetical alternative reality--I had to make a decision, I wouldn't agree with either party, but I'd sooner award Apple two or three times of what Samsung considers reasonable than half or a third of Apple's demand. The primary reason for this would be that such components are manufactured separately and can be bought as replacement parts--and there are hundreds of thousands of other potentially-patentable elements in a smartphone, not just three design patents.

That's why this is not a question of whether one respects Apple's designs, Apple's investment in design and innovation, or Apple's right to defend the uniqueness of its products. Over the course of almost eight years, this blog has repeatedly stated that Apple couldn't be different and think different if everyone else was allowed to "copy." Even the fact that Apple founder Steve Jobs once said that "good artists copy, great artists steal" and that Apple had "shamelessly" stolen other people's creations doesn't mean too much in this context.

The problem is just that, no matter whether a screen layout covered by a design patent appeared in a Simpsons episode, the kinds of products at issue in this Northern California case contain many technical components--hundreds of thousands of at least potentially patentable concepts--and so many visual designs (for instance, many other screen layouts than just the app matrix) that a damages award over a very few patents just shouldn't be excessive. Otherwise everything else in such a phone would be implicitly devalued, and that would neither be fair not would it be in the interest of consumers who expect an electronic device not only to look good but also to be fully functional.

When it's not about design patents, Apple itself is a proponent of the "smallest salable patent-practicing unit" (SSPPU) rule (damages or royalties should be determined based on the smallest component that is deemed to infringe or practice a patent) as opposed to complete products. I've supported Apple's related thinking in disputes with Google/Motorola, Ericsson, Qualcomm, and... Samsung. After all those years, I'm not going to be inconsistent. That's why I hope the jury will do precisely what Apple advocates when the shoe is on the other foot, and focus on the smallest salable patent-practicing unit(s).

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Copying allegations could--but shouldn't--decide the Apple v. Samsung retrial on design patent damages

There we go again. For the fourth time in six years (minus a few months), Apple and Samsung will square off again, starting today, in the San Jose building of the United States District Court for the Northern District of California. It's the third trial in the first Apple v. Samsung case (the related complaint was filed in April 2011) and the fourth in total (if we add the 2014 trial in the second case, filed in 2012).

Via Twitter I provided the parties with a link to the Guinness Book of Records website. This might be a new record: four trials between the same two parties in one federal district court within less than six years.

In some ways, it's déjà vu all over again, or Groundhog Day, as Korean-American Judge Lucy H. Koh calls it. But not in all ways. Samsung scored a major victory in the Supreme Court in 2016 on what should be considered the appropriate article of manufacture for determining design patent damages in the form of a disgorgement of unapportioned infringer's profits under 35 U.S.C. § 289. Apple had been awarded huge amounts at two previous trials, based on a standard overthrown by the highest court in the land. Now it will be up to a jury whether the ultimate outcome will, or will not, be reflective of Samsung's SCOTUS victory.

There's the legal part, which is a test that the U.S. government laid out in an amicus curiae brief filed with the Supreme Court. That one is suboptimal, and people far more qualified than me to discuss design patent law find it wanting. There are various restrictions on the parties, especially on Samsung, as to what kind of evidence and testimony they're allowed to present and what kinds of argument they're allowed to raise. And what may ultimately decide is psychology: whether the jury will, or will not, buy Apple's portrayal of Samsung as a copyist.

It's impossible to go into full detail here on all these questions, but let's take a quick look at a few of them. My loyal readers know that I like both Apple and Samsung much better when they're defending themselves against patent infringement allegations and overreaching remedies than when they're playing the offensive part.

Over the years I've had a handful of different iPhones and Samsung Galaxy phones. It's true that the earliest Galaxy products looked much more similar to the iPhone than later ones do. That's why this re-retrial is about old products. A blast from the past.

Apple will argue that Samsung's phones had a rather different look prior to the iPhone launch than subsequently to it (and will point to that old "crisis of design" email):

On the left side one can see that those older phones usually had physical keyboards. While it's true that early Galaxy S phones looked more iPhone-like, what had happened in between was that Android came out, Samsung adopted it, and physical keyboards were history. But in none of those trials did Samsung get the chance to make its strongest defensive point--nor it will it get it this week. Even before the iPhone, Samsung's designers had created some touchscreen phone designs that had various visual elements that are now considered "iPhone-like":

Even if--just for the sake of the argument--one agreed with Apple that Samsung was a copyist, had a major benefit from it (relative to other Android device makers such as Motorola and HTC, not vis-à-vis Apple), and should pay the price, that still doesn't mean that a draconian remedy--disgorgement of entire profits--is a fair and just outcome.

Fairness would require new legislation. § 289 would have to be amended in order to allow apportionment. Then we could have a rational conversation about the extent to which a particular device maker's success depends on certain designs or, more accurately, certain design elements. But Congress hasn't touched that statute in ages, so the law of the land is what it is for the purposes of this trial. Faced with the choice between a devastating AoM definition that will encourage abusive litigation by others and a scenario in which Apple would get less than it deserves, but still an amount far closer to a reasonable apportionment than the "nuclear option," let's hope that jurors will mitigate the damage.

Judge Koh could have adopted a different test (set of criteria) for determining the article of manufacture. The Department of Justice is part of the executive branch of government; its positions are neither law (unless Congress likes and adopts its ideas) nor precedent.

Professor Sarah Burstein, who studied design and the law, wrote a very interesting paper last fall, published by the Harvard Journal of Law & Technology, about the "Article of Manufacture" question and proposed going back to the original definition, which excluded machines. No machine would mean "no smartphone."

Carl Cecere, an appellate attorney, authored an article for law.com. He, too, considers the adopted test a threat to patent holders and their competitors alike. Like Professor Burstein, Mr. Cecere is concerned about lay jurors having to make a determination without sufficient guidance.

Furthermore, I'd like to point to articles on law360.com and IPWatchdog.com.

But the San Jose jury will have to hand down a verdict under the chosen test. It's free to do pretty much anything. Unfortunately, it won't have as much help as it could have been given:

• With respect to the second AoM factor (relative prominence of design), the word "relative" would be given more meaning by highlighting other features and components not affected by the design. There's a whole lot of technology in those phones, and one would totally devalue it by finding that the entire device is the AoM for design patent damages purposes.

• As for the third factor (whether the design is conceptually distinct from the product as a whole), the Department of Justice had said that "[i]f the product contains other components that embody conceptually distinct innovations, it may be appropriate to conclude that a component is the relevant article." This is just an example of how much more specific the instructions to the jury could have been.

• Finally, a Samsung expert, Mr. Wagner, conducted a survey in order to show that design is only one of various factors influencing smartphone purchasing decisions. But the court did not allow him to employ that particular methodology.

Jury trials are unpredictable. Apart from how much the jury's thinking may be influenced by the "copying" allegations that Samsung can't fully counter because it's not allowed to present its independent pre-iPhone designs, a lot will depend on how much weight the jury will give to the fourth factor: whether one can purchase a separate component that embodies a design. In this regard, Samsung will be able to show some evidence such as replacement parts offered on Amazon.com.

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Apple and Samsung disagree on how to avoid jury confusion regarding the article of manufacture

We're just days away from yet another Apple v. Samsung trial in the Northern District of California. IT's a re-retrial over damages, following a trial, a retrial, Samsung's successful appeal to the Supreme Court and various other procedural steps on the way back to where we are. By the way, the dispute started more than seven years ago (mid-April 2011).

Judge Koh's final jury instructions will inform the jury of the relevant factors for the article-of-manufacture determination. If the jury determines the relevant AoM is an entire smartphone, Apple gets a huge damages award. If the jury concludes the casing/screen is more reasonable, then the amount will be less extreme amount, but still a chunk of money.

This is what Judge Koh's tentative final jury instructions would say about the relevant factors and how to consider them:

"The scope of the design claimed in Apple's patent, including the drawing and written description;

2. The relative prominence of the design within the product as a whole;

3. Whether the design is conceptually distinct from the product as a whole; and

4. The physical relationship between the patented design and the rest of the product, including whether the design pertains to a component that a user or seller can physically separate from the product as a whole, and whether the design is embodied in a component that is manufactured separately from the rest of the product, or if the component can be sold separately.

In weighing these factors, your objective should be to identify the articles of manufacture that most fairly can be said to embody Samsung's appropriation of Apple's patented designs."

The jury will be free to attach to each of these factors whatever weight it deems reasonable. Based on what jurors told the media after multifactorial "weighting exercises," some juries spent a lot of time evaluating each factor and even more time thinking about how much weight each of them should have, while other juries focused on what they felt would be a reasonable result.

In a pretrial order, Judge Lucy Koh ordered the parties to "develop a joint proposed limiting instruction related to the use of the phrase 'article of manufacture' in the claim constructions and patents" and to "specify when they would like the limiting instruction to be given." Apple will not be allowed to tell the jury that the design patent claims-in-suit resolve the article-of-manufacture question because of a determination by a patent examiner who decided to issue a patent. But Apple will obviously seek to convince the jury to attach tremendous weight to the claims. The message from Apple's lawyers is going to be the next best thing to "the name of the game is the claim." Therefore, Samsung proposes--in response to Judge Koh's order--the following limiting instruction:

"Neither the Court nor the Patent and Trademark Office has determined the relevant articles of manufacture in this case. The words in the design patents and in the Court’s claim constructions do not determine the relevant articles of manufacture. That is a question for you to decide."

Apple's lawyers disagree, particularly on the second sentence:

"It is extremely prejudicial to Apple and improperly suggests to the jury that the words in the design patents and the Court's claim constructions are not relevant to identifying the articles of manufacture."

Samsung's first footnote stresses that its proposed instruction "does not say that the words in the patents and constructions are 'not relevant.' It says only that those words are not determinative." (emphasis in original)

Apple's objection makes clear that Apple is not just concerned about the jury potentially misinterpreting "determinative," but about the jury potentially giving less weight to the claim language than Apple would like.

"Determinative" is not part of everyday language, but it isn't too uncommon either. Reasonably educated people should figure out what it does mean and what it doesn't. Numerous other passages of the preliminary and final jury instructions contain words that jurors may misunderstand in similar ways as Apple fears.

The parties couldn't agree, so Judge Koh will have to decide. Technically, "not determinative" is simply accurate. In colloquial language, one could add a few words like "in their own right," though one could also argue that any additional words could create confusion, too.

Generally speaking, Judge Koh's proposed preliminary and final jury instructions combined don't really tell the jury much about how to make the article-of-manufacture determination. For an example, the amicus curiae brief filed by the Obama Administration with the Supreme Court contains additional helpful guidance that Judge Koh could, but apparently won't, provide to the jury.

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One month prior to yet another Apple v. Samsung trial, old and new disagreements on design patents surface

On May 14, Apple and Samsung will square off in court again. It's going to be the third trial in their first California case alone. What makes it interesting is that it will involve a design patent damages determination (damages in this case amounting to a disgorgement of infringer's profits) following a Supreme Court ruling in the same case. The exact amount of money that will change hands between Apple and Samsung won't impact the parties' positions in the smartphone market. However, it will be a signal to other design patent holders, including patent trolls. Should Apple be awarded a huge amount that Samsung could ultimately afford but the equivalent of which would potentially put many other companies out of business, design patents would be used in aggressive, extortionate ways.

Last week, Judge Lucy Koh ruled on the parties' Daubert motions. Daubert motions and rulings are hard to figure out from the outside unless they're just about numbers (such as damages claims that a court does or does not permit) because one would need to know the related expert reports to really understand the context. What became clear to me from Judge Koh's ruling, however, is that she gave Apple various opportunities beyond the test proposed by the United States government in 2016 to argue that the relevant article of manufacture for a disgorgement of design patent infringer's profits in this case is an entire phone, not just a casing. While Judge Koh adopted the broad lines of the DoJ's proposed test, her Daubert order explicitly and intentionally declines to apply parts of what the DoJ had argued in its amicus curiae brief to the Supreme Court.

This week, Apple and Samsung filed their motions in limine. Judge Koh allowed either party to bring three such motions for excluding evidence from the upcoming trial. Motions in limine are more instructive for third-party observers like you and me because one can largely understand their meaning without having access to the parties' expert reports, and because it's often very telling what kinds of evidence a party believes would be particularly prejudicial to its case.

Apple's motions in limine

Apple's first motion in limine appears to be its strongest one. The court previously excluded evidence relating to smartphone designs independently developed by Samsung before the iPhone--which nevertheless looked a lot like the iPhone--except in the context of invalidity and infringement. This slide shows some examples on the left, and the first iPhone on the right (click on the image to enlarge):

Let's see how Samsung will respond to this motion, but it won't be easy to persuade Judge Koh that this kind of evidence should be admitted now in the article-of-manufacture context if it was excluded from the previous damages retrial. It's not that it isn't interesting or powerful. In fact, if the jury saw this, it could have a major impact in Samsung's favor. But Judge Koh's cherished "Groundhog Day" principle is that what wasn't allowed at previous Apple v. Samsung trials won't be allowed next time.

By contrast, Apple's second motion in limine appears overreaching at least in key parts (this post continues below the document):

18-04-09 Apple Motion in Limine Against Unasserted Patents by Florian Mueller on Scribd

In that second motion in limine, Apple seeks to preclude Samsung from referring to "unasserted patents." If you scroll through the above PDF document, you'll see that the term "unasserted patents" relates to a wide array of rather disparate references to other patents. The question Judge Koh will ask herself is whether or not the probative value of any evidence is outweighed by prejudicial jury confusion. I'd be surprised if she agreed with Apple on each and every part of that motion. For an example, Apple argues that patents not asserted in this case are irrelevant to the determination of the relevant article of manufacture. However, I can't see how the existence of other smartphone-related patents (utility patents as well as design patents) would not have probative value: the single strongest argument for a narrowly-defined article of manufacture (just the casing) simply is that there is so much more in and on a smartphone than just a very few, narrow designs. Therefore, if the unapportioned profits made by Samsung with entire devices were to be disgorged, everything else would be deemed to have no commercial value at all (which would be a ridiculous proposition, of course).

Just like I would probably grant Apple's first motion in limine at first sight, I'd largely or completely deny the second one because Samsung must have the chance to argue to the jury--not only, but also on the basis of other patents--that other patents cover other elements of smartphones.

There's one thing in that entire PDF that I think shouldn't be shown to the jury. On PDF page 111 there is the following user comment:

"The most idiotic source of much of Apple's patent litigiousness has been the design patents -- almost all of the claims being totally farcical. For example, they claimed 'rounded corners' on rectangular phones. Hope you discuss that."

That would indeed be unfair to Apple. This blog has previously debunked the "rounded corners" myth; but that still doesn't mean that anyone could reasonably support a disgorgement of infringer's profits generated with entire devices.

Apple's third motion in limine is hard to analyze from the outside; let me say that for now I'm unconvinced of it. It's about evidence from after the period relevant to the damages determination the jury will have to make. For an example, Samsung provided some screenshots from Amazon's website that show replacement smartphone casings (with a screen) that are sold separately and at a price much lower than that of an entire phone. If the point Samsung wants to make is that casings are sold separately, I'm not sure the exact date matters. It certainly can't matter if the underlying facts (such as the availability of such replacement parts) was already true during the damages period.

Samsung's motions in limine

Samsung's first motion in limine seeks to "preclud[e] Apple from offering evidence, testimony, or attorney argument that improperly implies that Samsung's increased market share was caused by the introduction of features found to infringe in this lawsuit," such as the claim "that Samsung’s market share increased because of the introduction of features found to infringe."

Samsung says such evidence was previously allowed because it was relevant to an analysis of profits that Apple lost, but it isn't relevant now that it's all about the article of manufacture and Samsung's related profits.

For now it is indeed unclear to me how that kind of evidence would help--and not just confuse--the jury with respect to the article-of-manufacture determination. Let's see how Apple will respond.

Just like Apple's second motion in limine is the broadest one, so (though by far not equally broad, and clerly stronger in my view) is Samsung's second motion "for an order prohibiting Apple from presenting evidence or argument suggesting that this Court, the prior jury, or the U.S. Patent and Trademark Office ('PTO') has already determined the articles of manufacture to which Samsung applied the patented designs."

One of the things Apple would like to do is highlight to the jury how often the words "an electronic device" appear in the design patent documents. I agree with Samsung that the United States Patent & Trademark Office didn't accept or reject certain claim language with a view to an article-of-manufacture determination in a future damages case. No matter how often a patent says "an electronic device," it may nevertheless just relate to a component.

Samsung's third motion in limine relates to the '915 pinch-to-zoom API patent. The asserted claim was rejected by the USPTO on reexamination, and the Federal Circuit (which salvaged other Apple patents in other cases) affirmed the USPTO's decision. The way I understand Samsung's motion is that the disagreement between Apple and Samsung is not about whether the '915 patent is relevant to the damages determination in the upcoming retrial. Instead, the disagreement is whether the related adjustments made by Apple and its experts were sufficient.

There's nothing spectacular about those motions in limine, but they do raise some interesting issues. I'll comment again when Apple and Samsung have responded to each other's motions--particularly to each party's second motion.

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Samsung never quits, finally gets design patent damages retrial in long-running Apple case

If one thought it appropriate to label a company's in-house and outside counsel, collectively, a "Comeback Kid," the term would surely apply to Samsung's IP litigation group and Quinn Emanuel. Yesterday (Sunday), Judge Lucy Koh of the United States District Court for the Northern District of California determined that a new Apple v. Samsung trial on design patent damages, which Samsung had been fighting for in courts on both coasts of the United States since the 2012 verdict, is indeed going to happen. You can read her decision (as always, perfectly-structured and clear, whether one agrees or not) right below or, if you lack the time, my Reader's Digest version further below:

17-10-22 Order Requiring New Apple v. Samsung Trial on Design Patent Damages by Florian Mueller on Scribd

Samsung had originally asked Judge Koh for a retrial (in vain at the time), then the Federal Circuit (in vain), then requested an en banc (in vain), then petitioned for a writ of certiorari (successfully), then convinced the Supreme Court that the standard to design patent damages that had originally been applied was incorrect, then dissuaded the Federal Circuit from affirming the original ruling after the SCOTUS opinion, and, just last summer, persuaded Judge Koh that it had not waived its "article of manufacture" argument. But theoretically the retrial could still have been denied: Judge Koh explained that the test for the relevant article of manufacture (with respect to which Apple would be entitled to an otherwise-unapportioned disgorgement of infringer's profits) had to be determined first. The result could have been one under which Judge Koh would have held that, as a matter of law, the original approach of treating Samsung's entire products (certain smartphones) as the relevant article of manufacture had been undoubtedly correct, in which case the original jury instruction would probably have been deemed not to have been prejudicial to Samsung. Right for the wrong reasons, sort of.

Samsung has also taken this final pre-retrial hurdle, and no matter what the ultimate outcome of this case (which may even be ripe for a settlement now) may be, this is a heroic achievement by Samsung and Quinn Emanuel.

Since the Supreme Court had merely tossed the original approach but not (yet) established a new test, Judge Koh had three alternative proposed tests before her to choose from (short of coming up with her own):

• Apple's proposal, which involved criteria Samsung criticized as being too vague and subjective;

• Samsung's proposal, which was claim-centric (the article of manufacture actually claimed by a design patent would have played the key role) and, in Apple's opinion, overly restrictive; and

• the one proposed by the United States Department of Justice last year in an amicus brief filed with the Supreme Court.

Judge Koh has adopted the DoJ's approach, as had the United States District Court for the Southern District in a different case. This was a safe choice for her in some respects, especially since counsel for both parties had expressed that it viewed the DoJ proposal far less negatively than that of the respective adversary. Based on what Judge Koh quoted, Apple merely said it thought it "could live with" the DoJ test, while Samsung's counsel even said it "has a lot of merit." So I guess neither party is downbeat right now, but presumably the folks at Samsung and Quinn Emanuel are a bit happier.

These are the winning factors:

• "[T]he scope of the design claimed in the plaintiff's patent, including the drawing and written description";

• "[T]he relative prominence of the design within the product as a whole";

• "[W]hether the design is conceptually distinct from the product as a whole"; and

• "[T]he physical relationship between the patented design and the rest of the product," including whether "the design pertains to a component that a user or seller can physically separate from the product as a whole," and whether "the design is embodied in a component that is manufactured separately from the rest of the product, or if the component can be sold separately."

This test presents challenges and opportunities for either party when arguing to the jury. Apple will have the benefit of a local jury, and all in all the wordings of the adopted test appear more favorable to Apple than to Samsung, but Samsung will still have plenty of opportunity to persuade the jury that the outcome would be absurd and devastating if a disgorgement of profits made with entire smartphones was awarded. Anything's possible, but there's a relatively high likelihood that Samsung will manage to bring the award down, even though the jury will be picked from Apple's backyard.

After adopting this test, which makes it possible (though far from certain) that disgorgement will relate to something other than the end product, the retrial was inevitable.

The question of the burden of proof has now been resolved as well. Apple will have to persuade the jury that those entire Galaxy phones are the appropriate articles of manufacture, while Samsung will have to prove an alternative article and any deductions. On this one, Samsung clearly got a rather favorable outcome.

The parties now have until October 25 to propose a case schedule and retrial date. There's enough money at stake that the retrial may indeed happen, but I believe there is at least a 30% chance that they will settle before. They're both fine with the DoJ test, they've both shown to the world (including Qualcomm and its increasingly-impatient shareholders, who shouldn't necessarily share Qualcomm's CEO's optimism about a favorable settlement in the forseeable future) that they're prepared to see this kind of litigation through over the course of many years, and they have bigger issues (again, Qualcomm) to focus on. Plus, since they work together so closely (on the iPhone X, for example), they can structure this settlement in a way that whatever Samsung might pay would just be compensated somewhere else. I would recommend to them that Samsung pay, for the design patent-related part per se, less than half of the $400 million portion of the award that is in dispute now, given that Apple's risk of the award being reduced to a relatively small amount is greater than Samsung's risk of Apple being awarded more than half of the original award next time. But right now they'd probably both disagree, and if they need a mediator, they'll find someone more qualified than a blogging app developer.

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Samsung another step closer to design patent damages retrial: Judge Koh finds no waiver

Judge Lucy Koh of the United States District Court for the Northern District of California, who has been presiding over Apple v. Samsung since the Carter presidency (or not long thereafter, it feels) and recently positioned herself as a Judge Posner-like thought leader on standard-essential patent abuse, entered an order Friday evening local time that could very well (but won't necessarily) lead to another "AppSung" retrial (this post continues below the document):

17-07-28 Apple v. Samsung No Waiver of AOM Issue by Florian Mueller on Scribd

In April, Judge Koh had ordered the two perennial litigants to explain why Samsung had (as Apple claimed) or had not (as Samsung argued) waived the "article of manufacture" issue, which is central to any further determination of design patent damages in this case since the Supreme Court had overruled both the Federal Circuit and Judge Koh on that one. So the court is now dealing with the fallout of the first Apple v. Samsung matter that had made it to the top U.S. court while the Department of Justice is determining what positions to take on three issues raised in connection with the second Apple v. Samsung case.

I really like the structure and clarity of Judge Koh's analysis in her latest order because she simply declined to conflate procedures and merits. The court is now cracking one nut at a time, and the first nut was only waiver. However, in at least one context (footnote 5) the order goes beyond what was strictly necessary to arrive at a no-waiver finding and declares cases cited by Apple to be inapposite to the question of whether Apple was entitled to a disgorgement of profits on Samsung's entire phones.

As I had written on more than one occasion, it appeared unlikely that, in a dispute where both parties have spent enormous resources and generally pursued a throw-in-the-kitchen-sink approach, Samsung would not have said or produced anything that one could reasonably deem to have been sufficient to preserve the "article of manufacture" issue. The order now explains the chronology of this case, and as I had also said before, Samsung had not emphasized the article-of-manufacture question that much in the beginning, but over time that question got more and more attention.

What helped Samsung here was that it had proposed a jury instruction that explicitly raised the issue. There were also other references, though Samsung's earlier arguments in the case were apportionment-centric, and apportionment didn't get traction at any of the three levels (district court, appeals court, SCOTUS). Still, some of the arguments and especially some of the evidence related to apportionment can also be used in the article-of-manufacture context.

After succeeding with an extremely strong, "slam dunk" cert petition, after avoiding that the DoJ would have sided with Apple on statutory interpretation, after winning reversal, after persuading the Federal Circuit to remand the case to California, and after avoiding "sudden death" on remand, Samsung has cleared another hurdle. But that one still wasn't the final one.

Judge Koh now wants the parties to propose a test for identifying the relevant article of manufacture--a question with respect to which the Supreme Court previously didn't feel it got much help from the parties, but that was because the name of the game was to win (Samsung) or avoid (Apple) reversal, not to solve the whole problem. The second and third questions raised in the order relate to burden of proof. In my reaction to the Supreme Court decision I had already said that, while it's obvious the Supreme Court didn't need and especially didn't want to do it, it would really have been helpful if that one could have been clarified at that stage. Whoever will lose the next round is going to appeal the test Judge Koh will adopt and/or the decision she makes on the burden of proof...

Judge Koh's order leaves the door open to a finding on her part that she had previously been right for the wrong reasons. She may find that, based on the evidence in the record, those entire Samsung phones were the correct article of manufacture, so that even under the Supreme Court's statutory interpretation, the outcome would be the same as before. In that case, there wouldn't be another trial (unless there was another successful appeal). That would be an unfortunate outcome and lead to even more litigation over design patents (though future sophisticated defendants would obviously build their article-of-manufacture argument from the get-go).

The parties have until Tuesday to propose a briefing schedule, and a case management conference will be held on Wednesday.

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Oracle files proposed notice of deposition of Google witnesses regarding discovery misconduct

On August 25, Oracle and Google filed sworn statements (and Oracle also filed an objection) regarding Oracle's motion for an Android-Java copyright re-retrial over alleged discovery misconduct and lies to the jury. Judge Alsup then ordered the parties to respond to each other's filings with new sworn declarations, which were due today.

To be of service to loyal readers following the case in detail, I have uploaded Google's declaration as well as Oracle's filing (a declaration as well as a proposed notice of deposition of Google witnesses) to Scribd.

Unfortunately, I don't have time, at least at the moment, to analyze these documents in detail and share any observations. However, I don't want this to be misunderstood as my positions on the issues in this case or my belief as to the most likely outcome having changed. So I'd like to explain, just quickly:

Due to my focus on two app development projects, my blogging has slowed down massively in recent years. For example, this is only my 36th post this year (with more than two thirds of the year already behind us), while I wrote a minimum of 40 posts in any given month of the year 2012. Some slowdown would obviously have resulted from the fact that many smartphone disputes have been settled, but not to this extent.

I'm working very hard right now to launch both games (one on iOS first, the other one on Android and iOS simultaneously) before Thanksgiving weekend. Both games are almost feature-complete, with a lot of the current efforts already relating to final touchup and testing. Both have taken much longer to develop than initially planned, but they've also become even better than I would have predicted at the outset--and those were ambitious projects from the beginning.

I have to focus as there still is some hard work on my part to be done, though I have recently stopped doing any coding myself. Now, after six years of "smartphone IP wars," there are only two really big cases pending: this copyright case here and the Apple v. Samsung design patent matter. As a right holder who has already invested a huge amount of money as well as "sweat equity" in software development, I care very much about Oracle v. Google, which is no longer really about APIs as much as it is about software copyright in general. As a potential future defendant against trolls, I'm deeply concerned about the prospect of an unapportioned disgorgement of profits over a design patent on a single icon or whatever other design.

The Supreme Court will hear Samsung's appeal in a month (one month and two days, to be precise). This is obviously not the time to reduce or discontinue my coverage of that matter. It will be over soon. I guess the decision will even come down before Christmas, or in January maybe.

By contrast, Oracle v. Google will take much longer. I honestly can't predict how much time I'll find to comment on it. It could be that I'll somehow manage to find the time to blog about it like in the past, especially because I disagree with 99% of everything else I read about that case, but it could also be that my next post on this case after this one will be my commentary on the final outcome after a settlement or after all appeals have been exhausted. Or anything in between those extremes. Whatever it may be, it has nothing to do with how important this matter is to software developers like me or with what I believe the legally and factually correct outcome should be.

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Oracle pushing hard for Android-Java re-retrial while Google fails to justify its lies to the jury

In litigation, the devil is often in the detail, but not always. Sometimes there are overarching issues that decide a dispute and the legal detail is simply worked out in order to reach the only result that any remotely reasonable person could consider correct. The situation surrounding Oracle's push for a re-retrial is clear: Google's expert witnesses told the opposite of the truth to Judge Alsup and the jury. In Judge Alsup's case, there is evidence that the lies were outcome-determinative because he denied Oracle's first motion for judgment as a matter of law JMOL) on that basis. And with respect to the jury, there can be no reasonable doubt that its deliberations--the details of which are not known--would have been very, very, very different if Google had been unable to base its "transformative use" and "no market harm" arguments on the claim that "Java SE runs on desktops, Android is on smartphones" (because Oracle could have pointed to the Marshmallow-Chrome project as conclusive evidence that it was a lie).

Before the re-retrial is ordered (and I'm sure it will happen, be it by order of Judge Alsup or be it the outcome of an appeal that will, if it has to be filed, be a slam dunk), some procedural details concerning what went wrong in the discovery process may have to be discussed. But at the end of the day, it doesn't really matter what Google told its lawyers. All that matters is what absolute untruths Google's expert witnesses, directed by Google's lawyers, told the judge and, especially, the jury.

Google is trying to hide behind Judge Alsup's pretrial orders that limited the scope. It can run, but it can't successfully hide. Those orders were bad and unfair in their own right. So even if Judge Alsup tried to let Google get away with it, what would happen then? The whole thing would be presented to the appeals court (which is the opposite of hostil to intellectual property right holders). After the first page and a half of an Oracle opening brief, it would already be clear that this here is not just a case about software theft but also about a stolen trial.

Judge Alsup can only make things worse for himself by adopting Google's excuses the way he once adopted Google's misinterpretation of the Sega and Sony Ninth Circuit cases. Everyone knows how that one ended.

The appeals court would simply not let a judgment stand that is based on lies of the worst kind. The expert witnesses communicated those lies to the jury, but they presumably hadn't been briefed and instructed correctly. But the bottom line was that Google, as a party, lied to the jury. Even if Judge Alsup found Google's conduct excusable, the judges above him almost certainly wouldn't.

So instead of going into detail here on how certain discovery responses allegedly came into being and why certain things were said or not said or asked or not asked, I'll just highlight three things now and then I'll show you all three documents filed today (written declarations by attorneys for both parties, and an Oracle response and objection to last week's follow-up order to the motion hearing).

1. I wrote above that the platform-related lies were outcome-determinative with respect to the denial of Oracle's first JMOL motion. Here's a sentence from that order:

   "With respect to Factor Four, our jury could reasonably have found that use of the declaring lines of code (including their [structure, sequence and organization]) in Android caused no harm to the market for the copyrighted works, which were for desktop and laptop computers."

2. In my previous post I wrote I had also interpreted the Ninth Circuit's Jones v. Aero/chem decision (which remanded a case with certain similarities to a district court so a hearing would be held) the way Judge Alsup outlined in last week's order. But Oracle's declaration now explains that a "hearing on the motion" was actually held in the Jones proceedings, but, Oracle's lawyers explain, "[w]hat the district court had not done was hold its contemplated hearing where evidence could be presented in order to determine whether there was discovery misconduct."

3. Google's arguments as they try to now say that the unified Android-Chrome platform is not a "full" version of Marshmallow are ridiculous. Two particularly crazy examples: they argue that "the Google Play Store is not part of (the Marshmallow version of) Android, but is rather a separate application that is available for Android," even though everybody knows that Google contractually requires Android licensees (unless they use Android on open source terms without the right to show the green robot logo etc.) to ship the Play Store (and other proprietary Google apps) with Android. And they write that "the runtime for (the Marshmallow version of) Android that can be run inside of Chrome OS does not include the Linux Kernel at the bottom of the Android stack," even though everybody with a modicum of technical knowledge knows that the Linux kernel has its own APIs that are simply not relevant to a case about the Java APIs.

   I will continue to admire Google regardless, but this is really very bad.

So now, finally, the three documents. I'll start with Google's declaration because Google is the party that really has some 'splaining to do here, followed by Oracle's response and objection (Oracle pushes hard for a re-retrial and argues that the declaration the court requested from a Google attorney is not sufficient but much more is needed to bring the relevant facts to light) and then, finally, a declaration by an attorney for Oracle.

16-08-25 Google Attorney Declaration by Florian Mueller on Scribd

16-08-25 Oracle Response and Objection by Florian Mueller on Scribd

16-08-25 Oracle Attorney Declaration by Florian Mueller on Scribd

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Don't blame Ars Technica for the inevitability of an Oracle v. Google Android-Java copyright re-retrial

It ain't over till it's over, and Oracle v. Google is very far from over.

At a Wednesday hearing, Judge Alsup told Google that it should have disclosed its Marshmallow Chrome project. As a follow-up to the hearing, he issued an order on Thursday, which I'll quote from and comment on below:

"By THURSDAY AUGUST 25, AT NOON, Christa Anderson, counsel for Google, shall submit a sworn statement explaining why the discovery responses referenced in Court yesterday were not updated, including the full extent to which counsel knew Google's intention to launch a full version of Marshmallow, including the Google Play Store, for Chrome OS."

This could be one last chance for Google to justify the unjustifiable and, which is what I guess is going to happen, for Google's lawyers to avoid consequences for themselves. Oracle's counsel claimed at the hearin g that "they" were "LYING" to the jury. At least that was the net effect of what happened. In a fairly recent post I quoted those lies.

But who is "they" in "they were LYING?"

The expert witnesses were instructed by Google's trial counsel. It's highly unlikely--if not simply implausible--that the expert witnesses were aware of the secretive Marshmallow Chrome project whne testifying.

The net effect of this was that the jury was being lied to. The requested declaration may shed some light on how this happened and on who has to accept responsibility. But Google and its lawyers are less interested in bringing the truth to light. What they'll try to do is to reinforce the points they made at the hearing about why they thought Marshmallow Chrome was outside the scope of the trial though the Marshmallow version of Android undoubtedly was at issue.

I'll comment on that declaration once it is filed. I presume it will be made public, at least large parts of it. For now I doubt that it will change anything with respect to the likelihood of a re-retrial. And the primary reason I doubt it is that Judge Alsup would be headed for another overruling, far worse than last time, if he denied Oracle's motion for a new trial even though the appeals court will then see very clearly that

• Google's expert witnesses told the opposite of the truth about the single most important issue in the case (given that Marshmallow Chrome affects the "transformative use" analysis as well as the assessment of market harm) and

• Google itself made it clear, and reporters and industry watchers clearly understood, that the integration of Marshmallow into Chrome is totally unrelated to the App Runtime for Chrome (ARC). I'll talk about the Ars Technica article and its implications further below.

In the event of an appeal, the appeals court will also get to see a list of other problems (I'm sure there would be an appeal on multiple grounds, which is also what Oracle announced after the spring retrial) and a consistent pattern of Oracle being disadvantaged by the judge. At the hearing he again sought to justify some of his decisions to limit Oracle's ability to present the full story to the jury with case management arguments. I've been watching this case for more than six years now and while Judge Alsup has put case management above the truth on various occasions, he has not even been perfectly consistent (for example, he didn't care in 2012 about wasting jury time instead of firstly ruling on copyrightability but then bifurcated merits and damages on remand) except that his case management decisions have always helped Google and harmed Oracle. That kind of consistency would also be easy for the appeals court to see, and let's not forget that the Federal Circuit is generally quite sympathetic to intellectual property right holders trying to enforce their rights against infringers.

"By the same date and time, Annette Hurst, counsel for Oracle, shall submit a sworn statement setting forth, after full inquiry, the full extent to which Oracle neglected to update its discovery responses by reason, in whole or in part, of one or more rulings by the judge."

The word "neglected" in the above passage is a bit strange. All dictionary definitions of the word show that it has a very negative connotation in terms of a failure to do something a careful person should have done. A non-judgmental term would have been "decided not [to update]" or something like that. He certainly was non-judgmental in the paragraph quoted further above concerning Google's statement, though in Google's case it's now clear that something was not disclosed that should have been disclosed, while in Oracle's case it's, at best, hypothetical (it's possible that no such thing exists at all but, above all, there doesn't appear to be the slightest indication of any wrongdoing). But I've seen far worse things in connection with this case. Maybe I'm just being hypersensitive after all that has already gone awry. (Again, I'll try my best to look at the proceedings relating to a re-retrial, unless Judge Alsup denies it and the appeals court orders it (in which case it would be absolutely impossible to have too much faith in his fairness), as if nothing had gone wrong before.)

Can this part help Google? I doubt this, too. At most Oracle's response might bring up stuff that would have to be discussed at a re-retrial. But the question of whether a re-retrial is necessary has everything to do with Google's conduct and nothing with Oracle's conduct.

"The same statement shall explain why counsel repeatedly represented that the Jones v. Aero/chem decision required an 'evidentiary hearing' when that decision, as it turns out, made no mention of an 'evidentiary hearing' and instead remanded because no 'hearing' or other consideration at all had been given to the issue of discovery conduct by the district judge."

Despite my other concerns and reservations, I took a quick look at that decision and I understand that decision and the circumstances leading to it just the way Judge Alsup also describes that precedent. What I don't know is what exactly Oracle's counsel said about that case at the hearing. So let's see what Oracle files.

This, again, is nothing that can have any bearing on the pressing need for a re-retrial.

"By the same date, counsel shall meet and confer and advise the Court whether the form of judgment should be amended to reflect that it is not a final judgment but a Rule 52(c) judgment on partial findings, given that Oracle is entitled to challenge further uses of Android herein."

This paragraph here is hard to interpret because everything depends on what will happen with respect to Google's decision to keep the Marshmallow Chrome project secret from Oracle's lawyers. What's certain, however, is that it reflects the fact this dispute could get substantially broader soon.

I don't have the slightest idea of how Oracle and Google's lawyers will address this one. In my opinion, it was a final judgment that must be set aside because Marshmallow was part of the case and the jury was being lied to. However, if the case continues, it might indeed make sense to present everything to the jury including other devices than just smartphones. That is more of a question of admissible evidence to me than anything else.

Ars Technica

In my previous post I already linked to and quoted from the Ars Technica article Google's counsel presented at the Wednesday motion hearing.

Oracle's counsel called Ars Technica "the premier publication in this industry." That's hyperbole, and I attribute it to two factors. One, she obviously wanted to give that article maximum weight at the motion hearing. Two, she had written an op-ed for Ars Technica after the spring retrial.

Ars is certainly influential and widely read. And one could probably define a set of criteria based on which it would be number one. But it's not number one in this industry by all measures and standards. Also, its coverage of Oracle v. Google is neither enlightening nor fair.

Interestingly, when the author of that Ars Technica article heard about how Oracle tried to use it at the trial, he immediately felt compelled to portray another story, but for lack of knowledge about what was really at issue in the motion hearing, he actually just confirmed again why his article helps Oracle:

For the record @Oracle, I called Android on Chrome OS "a shocker" because the underpinnings weren't what I expected. https://t.co/OH5zVe6RNW

— Ron Amadeo (@RonAmadeo) August 17, 2016

Google spent like three years building ARC, the "App Runtime for Chrome" then threw it out for a container solution. That was shocking.

— Ron Amadeo (@RonAmadeo) August 17, 2016

It is all about the underpinnings. It's about the inner workings.

That's because the App Runtime for Chrome (ARC), which according to Google could not even have passed its Android compatibility test, really was separate from Android, while the Marshmallow Chrome project serves as a great unifier.

What shocked Oracle's lawyers? Not the fact that Google would in some way, shape or form make Android apps run on Chrome. That was old news. The shocker was that Google would actually incorporate the Android Marshmallow APIs into Chrome: APIs that contain APIs Google should have licensed from Oracle a long time ago.

Many people out there have been misled. If all software developers truly understood what this case is about and what it is not (for example, the retrial was not about whether APIs are protected but just about whether Google's trial counsel could manipulate a jury by presenting witnesses who made it sound like everything related to Java, especially the APIs, was for the taking), Ars Technica's Ron Amadeo wouldn't have had to try to put his article into perspective. I'll talk about implications for developers again on some other occasion. The timing of that will very much depend on procedures. I, for my part, would be shocked if the request for a re-retrial was denied.

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Judge may order a new Oracle v. Google retrial over evidence unwisely withheld by Google

Thanks to Twitter coverage by Mike Swift (MLex), Sarah Jeong (Motherboard, EFF) and Ross Todd (The Recorder), I just had the opportunity to "follow" the Oracle v. Google post-trial motion hearing in the Northern District of California. Since I already shared my observations, opinions and predictions last week, I can keep this post here brief:

• As expected, Judge Alsup is not going to agree with Oracle on JMOL. He continues to believe that the jury had a reasonable basis for reaching its verdict based on the evidence and testimony it saw/heard.

• I'm pleased to see that Judge Alsup, Google and Oracle all affirmatively agreed with me today that Oracle could, as a last resort, bring a new copyright infringement lawsuit to raise issues that were kept out of this year's retrial. Such consensus is unusual. Google tried to somehow nuance its concession by saying "collateral estoppel issues aside," but it's unclear how that would work--not just to me but, more importantly, also to Judge Alsup.

• Based on the quotes I read on Twitter, I initially felt that Judge Alsup was not quite inclined to order a new trial. But Oracle's counsel, Orrick's Annette Hurst, didn't give up. She pointed to how Google's lawyers had "lied" to the jury and committed "fraud" by centering a transformative-use argument around differences between personal computers and smartphones. She also dealt a blow to Google's argument that the integration of the Marshmallow APIs into Chrome OS was essentially just the same as the Android App Runtime for Chrome (ARC), and in this context she read parts of this Ars Technica article aloud. Here's an unbelievably powerful passage that makes Google's ARC-based excuse downright ridiculous:

  "The real shocker here is that this release of Google Play on Chrome OS is not based on ARC. Zelidrag Hornung, the engineering director of Chrome & Android, filled us in on the details: "We have redone this completely differently. There are no connecting points between the two projects (ARC and today's announcement) from an implementation perspective."

Judge Alsup told Google that at the time it decided not to disclose its Marshmallow Chrome project, "this was possibly an important point." And while he made it clear that he wasn't yet at the point of expressing his position on the new trial motion, a re-retrial definitely is a possibility, especially since he also told Google's counsel: "If I had been in your position, I would have disclosed it."

It's also important to consider that Marshmallow was part of the retrial and the jury verdict was not about particular devices but about Android versions up to and including Marshmallow. I noted on Twitter that this is a key difference between Oracle v. Google and the various Apple v. Samsung trials, where juries made device-specific determinations on the merits and on damages.

All in all, the things I read on Twitter suggest that Judge Alsup was a whole lot more evenhanded today than at any point during the retrial and its preparations. I do believe that this "fair use" issue should never have been put before a jury in the first place, but if a new trial is ordered and the Marshmallow-related evidence becomes part of the case, even Judge Alsup's JMOL analysis (under those new circumstances) may be a different one than so far. What I consider less important is that he appears to consider a Google motion for fees "greedy" and said he might just deny it if the parties couldn't reach an agreement on this one. A motion about a few million dollars of expenses is just a sideshow in the context of a multi-billion dollar case. But the Marshmallow Chrome issue is absolutely pivotal, and in case Judge Alsup orders a re-retrial, it will be a whole new ball game and in that case I'll form my opinion on each and every decision before, during and after the re-retrial as if the things that went wrong last time had never happened in the first place. Yes, the spring 2016 retrial may soon be water under the bridge, and a correct outcome may be possible even prior to an appeal.

In retrospect it's really hard to understand what Google did here. And even harder to justify.

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Google's integration of Android into Chrome makes a third Android-Java copyright trial 100% inevitable

About a month ago, Oracle renewed its motion for judgment as a matter of law against Google and brought a Rule 59 motion for a new trial. While such post-trial motions are common and expected in high-stakes IP cases, there's much more to it here.

Unless the parties settle, it's not just likely or very likely, but absolutely certain, that there will be (at least) a third Oracle v. Google Android-Java copyright trial.

Trust me: there will be one. The only question is whether it will result from

• a potential decision by Judge Alsup that Google is guilty of serious discovery misconduct,

• the appeals court overruling the trial judge again, or

• a new lawsuit that Oracle would have to bring according to Google's position.

The first of these possibilities is much more likely than I initially thought. Judge Alsup will hold a post-trial motion hearing next week. It's a safe guess that he won't agree with Oracle on JMOL. It's also a safe guess that he'll disagree with various Rule 59 arguments that are based on his own pre-trial decisions. He's afraid of Oracle's appeal (this much is sure based on the way he denied JMOL a couple of months ago) but he's not going to say that he messed up. It's hard to think of any judge who would do that but even harder to think of a judge less likely to do it than him. But Google's misconduct actually provides him with a nice exit strategy. He can avoid the potentially huge embarrassment of being overruled twice in the same case by judges who are more powerful and more IP-savvy than him, and put the blame on Google.

I have no idea whether he will do that, but it would be a very appropriate and rational thing to do. And it would be convenient, too, because he could correct some of his pre-trial errors very elegantly without having to backtrack: it would simply be a whole new ball game, especially with respect to the admissibility of evidence relating to Android's non-mobile target markets. Even the question of whether a bifurcated trial prejudiced Oracle (in my opinion, it did, even massively) could be avoided and the third trial could, for whatever case management reason, be a single trial. Furthermore, evidence that Oracle wasn't allowed to use last time to counter some utterly dishonest statements by Google's lawyers could also be admitted in the event Google were to make certain statements again at the third trial.

Judge Alsup can either seize this splendid opportunity to correct some of his mistakes or he can make another huge mistake by letting Google's lawyers get away with what they've done, which is so bad that Oracle would be very likely to get a new trial on appeal (if it doesn't succeed on JMOL anyway, which it might and in my view should, but for the appeals court it would probably also be easier to just look at the integration of Android into Chrome and simply remand for a new trial).

For the huge, game-changing implications of Google's integration of Android Marshmallow into Chrome (i.e., Android is competing with Java SE on desktop and laptop computers, not just in mobile markets), may I refer you to my post on Oracle's Rule 59 motion. Simply put, the whole "fair use" analysis changes, especially with respect to market harm and "transformative" use.

In its July 20 opposition filing, Google essentially argued that it had no obligation to make any disclosures regarding the Marshmallow/Chrome project because it had provided information regarding the Google App Runtime for Chrome (ARC). Google basically said that the integration of Marshmallow into Chrome was just an evolution of ARC ("update"), which Oracle knew about and which was "outside the scope of the retrial." A week later, however, Oracle's lawyers filed a very powerful reply brief that exposes Google's ARC-related arguments as extremely flimsy (this post continues below the document):

16-07-27 Oracle Reply in Support of Motion for New Trial by Florian Mueller on Scribd

The first thing to consider here is that Marshmallow was part of the trial (in a February 16 follow-up trial order, Judge Alsup wrote that "Marshmallow shall be added to the named versions of Android to be in play at the trial") and there was no question about whether it contained the asserted material: Google conceded this much, and the jury was instructed accordingly ("it has already been established that [Marshmallow] used [...] the declaring code and [SSO: structure, sequence and organization] of 37 Java API packages"). That already makes it a very different situation from the one concerning ARC.

On the technical side, the most important difference is, as Oracle's reply brief points out, that ARC could not have passed Google's own Android compatibility test because lots of Android apps wouldn't work with it, and even those that do wouldn't run right away without modifications.

Oracle also notes that fact discovery closed before the orders on trial scope that Google claims put the Marshmallow/Chrome project outside the trial scope. But Google couldn't know at the time what the subsequent orders would be.

What I find disgusting is that Google's technical and economic experts told the jury things that make absolutely no sense in light of Marshmallow/Chrome:

• Google's only technical expert at trial, Dr. Astrachan, said that Android includes "libraries [that] are designed specifically for the mobile platform, which is a different platform from where the 37 [Java SE] API packages came from." He meant that desktop and laptop computers are a different type of platform. But that's exactly the Chrome market.

• Similarly, Google's economist Dr. Leonard said "the two products are on very different devices [...] Java SE is on personal computers. Android [...] is on smartphones." In his closing argument, Google's counsel said the same: "Android is not a substitute. Java SE is on personal computers; Android is on smartphones."

There cannot be the slightest doubt that the trial could have had a different result if Oracle had been able to counter those untruths with references to Marshmallow/Chrome.

I look forward to whatever the court reporters attending next week's motion hearing will observe. There's a good chance that Judge Alsup will be very angry with Google. If he is, then a retrial will loom large.

If not, Oracle has another silver bullet for its appeal.

But if everyone told Oracle that Marshmallow/Chrome was outside the scope of that trial, Oracle could and certainly (knowing that Oracle never quits in those kinds of disputes) would file a new complaint over newer Android versions. That would also lead to a third Oracle v. Google trial, though things would take a bit longer then.

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