Samsung barred from proactive use of Apple-HTC deal in litigation

Apple versus Samsung (Joy of Tech 001)

In spite of the massive coverage concerning the high-profile Apple vs. Samsung trial, it’s easily overlooked that Apple first went thermonuclear on Android by suing HTC. Following the rise of Samsung and subsequent decline of the Taiwanese handset maker, Apple and HTC in November 2012 announced a global settlement on patent litigation.

Terms of the deal have never been made public, but we do know the two sides agreed to a ten-year cross-licensing for all current and future patents and I guesstimated the deal’s value to at least $3 billion.

Yesterday, Judge Lucy Koh issued an order granting Apple’s motion to exclude last year’s Apple-HTC settlement and license agreement at the pending Apple vs. Samsung retrial. The ruling conditionally bars Samsung from pointing the jury to the Apple-HTC settlement deal…

Patent blogger Florian Müeller explains:

I find Koh’s order conditionally granting Apple’s motion to exclude the HTC settlement agreement from the retrial very well-reasoned. It’s also very balanced: while Samsung won’t be able to use the Apple-HTC deal proactively, it will be allowed to bring it up to rebut any claim by Apple that it doesn’t license the utility (technical) patents with respect to which the jury will have to redetermine damages for 13 of the 28 found-infringing products.

The Apple-HTC deal contains an anti-cloning provision which allows Apple to still sue HTC if it builds iPhone and iPad lookalike products.

The truth is simply that Apple is not willing to license its patents broadly, and especially not to major competitors — and if it grants licenses, they come with important restrictions. This is different from patent licensing firms who optimize for licensing income, not for overarching competitiveness considerations.

Müeller opines that Apple can now choose not to claim that it “never ever in any way licenses” its patents or make that claim risking having to explain to the jury “why the HTC deal is not a departure from that principle”.

Here’s the order.

Samsung last year sought to take a peek inside the Apple-HTC settlement in order to invalidate Apple’s argument that it does not license its prized iPhone technology and patents it had successfully asserted against the Galaxy maker.

Samsung’s thinking is that if these patents are part of Apple’s deal with HTC, Apple’s efforts to seek ban on the sale of Samsung products on the grounds of those same patents could be undermined.

Apple responded by allowing Samsung a look into the heavily redacted agreement.

But even though a court had ruled key terms of the 140-page document must remain unsealed, Samsung soon after submitted a redacted copy of the pact into public record, provoking an outrage from the Apple camp.

The Apple vs. Samsung limited damages retrial will commence on Tuesday, November 12,  in San Jose in the Northern District of California.