Another patent battle for Android

In 2011, an auction was held for some 6,000 patents held by Nortel Networks. A consortium named Rockstar — formed by Microsoft, Apple, Sony, EMC, Blackberry (then Research In Motion), and Ericsson — competed in the bidding against Google. Rockstar won the bidding for a staggering $4.5 billion, roughly $750,000 per patent. Google, and its Chief Legal Officer David Drummond, were concerned at the time about those patents being used against Android — something that has now come to pass.

Google chose not to get involved with Rockstar, despite being invited to join the consortium. Drummond explained that the company refused to join because it suspected that the acquisition terms would not have included extending patent licenses to Android and Android manufacturers.

Drummond turned out to be right about what the Nortel patents would be used for. Two weeks ago, Rockstar filed eight lawsuits in the plaintiff-friendly Eastern District of Texas; one against Google, and seven against the major Android OEMs — Samsung, HTC, Huawei, LG, Asus, Pantech, and ZTE — for infringing patents from Nortel.

Although there are eight lawsuits in total, there are effectively only two different legal battlegrounds here. Google faces claims of infringing seven patents that cover an "associative search engine" invention. Six of those are "continuing patents": that is, they are patents that follow on one or more earlier patents in the "series", as improvements to the original invention. The original patent was 6,098,065 (filed in 1997), and the six continuing patents (filed from 1999 to 2007) are: 7,236,969, 7,469,245, 7,672,970, 7,895,178, 7,895,183, and 7,933,883.

These patents are largely very similar, and all claim "an advertisement machine which provides advertisements to a user searching for desired information within a data network". The "base invention" claimed describes an online search engine that provides results by correlating the search string with relevant entries in a database of results, using profile information from the searcher to help provide better results for that user. The continuing patents extend upon this "base", until we get to the last patent, number 7,933,883, which adds: a secondary database of advertisements, which the search string is matched against to provide targeted advertisements; multiple systems for profiling users of the search engine; and using the searcher's profile in combination with their search string to provide targeted advertisements to the searcher along with their search results.

So Rockstar is claiming that Google's AdWords, one of Google's main sources of income, is infringing seven of Rockstar's patents. That's a bold attack: Rockstar has fired missiles at the heart of Google's revenue stream. Given the gravity of the claims, a countersuit from Google against the consortium organizers as a reprisal seems likely.

The lawsuits against the Android OEMs all claim that a different set of patents are infringed by at least some of their respective Android devices. The specific patents claimed are:

• Patent 5,838,551: Filed in 1996, the invention simplifies circuit board design by eliminating the need to connect electromagnetic interference (EMI) shields to boards via solder traces by using instead an electrical connection to a "rigid planar dielectric substrate", such as "a printed circuit board or a ceramic substrate". [Not asserted against Pantech or ZTE.]

• Patent 6,037,937: Filed in 1997, covers an overlay of a "control tool" over content shown on a screen to provide for improved user navigation through a graphical user interface; this is an improvement over the use of hardware buttons or additional devices to conduct the navigation.

• Patent 6,128,298: Filed in 1997: a device that provides internet access to "nodes of private networks"; the device "presents a single IP address to the internet and uses a plurality of IP ports to solve the problem of IP address conservation". This invention could read on network address translation (NAT), like that used in mobile wireless Internet hotspots.

• Patent 6,333,973: Filed in 1997: the invention details an "Integrated message center" which "consolidate[s] [notification] messages of different types for viewing and manipulation by a user". Could be read against Android's notification shade, which centralizes the display of different notifications. [Not asserted against Pantech]

• Patent 6,463,131: Filed in 2000: "a system and method" which allows users to distinguish between different notifications by customizing how they are received. For example, different ring tones could be used to signal different callers, or to distinguish a text from a call. This patent could read on Android notifications.

• Patent 6,765,591: Filed in 1999: a graphical user interface for "managing a virtual private network" (VPN).

• Patent 6,937,572: Filed in 2000: tracing Voice over IP calls, providing one or more different types of trace information, including: IP address, the type of device making the call, and a call-back number.

All of these lawsuits claim willful infringement by the defendants. If proven, that leads to treble damages — a tripling of the final damage award after damages for all other patent infringement claims are calculated. In Rockstar's written claim against Google, it refers to Google's failed efforts to buy the Nortel patents as evidence that Google knew it was infringing these patents and was trying to buy itself a license. This argument is analogous to claiming that people who buy house insurance know that their house is going to burn down.

As Rockstar is a non-practicing patent-holding entity (i.e. a patent troll) — it does not actually make any products — Rockstar is probably more interested in extracting money out of Google and the Android OEMs than in getting an injunction, although claims for injunctions as remedies are included in the lawsuits. The lawsuits against the OEMs are only the latest in a series of efforts over the last few years to use patents against Android device manufacturers for a variety of reasons, from raising the costs of offering products based on open source software to simply extracting money from a booming industry.

We have yet to hear a public statement from the defendants about the Rockstar lawsuit. But we can expect Google and at least some of the OEMs to defend themselves. It is possible that some of the OEMs will settle with Rockstar. However, long and drawn out court battles fighting back against Rockstar, including demands that the patents be reexamined as potentially invalid due to obviousness and/or a lack of novelty in light of prior art, are to be expected. There is also a strong possibility of a countersuit from Google against the most powerful of Rockstar's organizers: Microsoft and Apple.

Patent litigation in the smartphone and mobile device space have been heating up for years, with some dramatic results, like that seen in Apple v. Samsung. But these lawsuits — simultaneously attacking every major Android OEM while also firing directly at Google's main profit stream — are the most audacious seen so far.