Apple stung for $308m in battle over patent used in FairPlay DRM software
- Reference: 1616424572
- News link: https://www.theregister.co.uk/2021/03/22/apple_loses_308m_patent_case/
- Source link:
The patent in question pertains to [2]US patent No. 8,191,091 , named "Signal processing apparatus and methods". First filed in 1981 and eventually granted in 2012, the patent describes how an integrated system can broadcast content (such as audio, video, software, or text) to multiple receivers through an encrypted channel. These transmissions can be customised to each individual recipient, showing things like personalised advertising or relevant content.
[3]
In 2015, Personalized Media Communications (PMC) filed suit against Apple, arguing its FairPlay DRM software infringed upon the approach described in this patent, and was thus owed royalties and damages.
In its unsuccessful defence, Apple argued PMC's patent was inherently invalid, claiming it merely described in abstract terms how an encrypted signal is transmitted and decoded, rather than detailing specific approaches and technologies. Apple also argued against a "prior art" defence, noting that the technologies required to encrypt and decrypt data had existed before the initial 1981 filing.
[4]
These arguments were rejected by the court, which noted the patent describes a series of steps in which this decryption process can take place.
Separately, in 2020 Apple successfully challenged the patent at the Patent Trials and Appeals court, which ruled several of its claims were unpatentable. This was [5]overturned on appeal [PDF], with a federal court ruling that prior art merely described analog-to-digital signals, whereas this described a purely digital environment.
Founded in 1995, PMC's patent portfolio encompasses a handful of creations from the company's founder, John Christopher Harvey. PMC has monetised these through a mixture of licensing and aggressive litigation, with its webpage claiming Samsung, Cisco, and LG as licensees, and legal battles with Netflix, Google, and Amazon ongoing.
Per the verdict, Apple has been ordered to pay damages as a running royalty. As much of the documentation surrounding the case has been sealed, it's unclear how this will be structured.
The Register has asked Apple to comment. In a statement provided to legal newswire Law360, the company said it was "disappointed" with the verdict and intends to appeal. "Cases like this, brought by companies that don't make or sell any products, stifle innovation and ultimately harm consumers."
PMC has also been asked to comment.
The Eastern District of Texas has long been a preferred jurisdiction for intellectual property disputes over the perception that it is a "friendly" jurisdiction for plaintiffs, delivering positive rulings and hefty judgements.
This reputation developed in the 1990s, [6]according to a 2011 article in the Science and Technology Law Review , when an ailing Texas Instruments began monetising its patent portfolio, choosing to file cases in the town of Marshall. With few criminal cases being held (largely due to the fact that Marshall, population 23,000, lacks an FBI office or US attorney), Marshall's federal court allowed for a level of expediency unavailable elsewhere.
[7]
Although the influx of patent suits has been beneficial for the local community, as [8]described by a Texas Monthly feature , it's proven less popular elsewhere, with the late Supreme Court jurist Antonin Scalia describing Marshall as a "renegade jurisdiction". A 2017 Bloomberg feature was similarly [9]scathing . ®
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[1] https://regmedia.co.uk/2021/03/22/verdict_apple_pmc.pdf
[2] https://patents.google.com/patent/US8191091B1/en
[3] https://pubads.g.doubleclick.net/gampad/jump?co=1&iu=/6978/reg_offbeat/legal&sz=300x50%7C300x100%7C300x250%7C300x251%7C300x252%7C300x600%7C300x601&tile=2&c=2YFjNLVjWlZOLccp7I4F1WAAAAQY&t=ct%3Dns%26unitnum%3D2%26raptor%3Dcondor%26pos%3Dtop%26test%3D0
[4] https://pubads.g.doubleclick.net/gampad/jump?co=1&iu=/6978/reg_offbeat/legal&sz=300x50%7C300x100%7C300x250%7C300x251%7C300x252%7C300x600%7C300x601&tile=3&c=33YFjNLVjWlZOLccp7I4F1WAAAAQY&t=ct%3Dns%26unitnum%3D3%26raptor%3Deagle%26pos%3Dmid%26test%3D0
[5] https://regmedia.co.uk/2021/03/22/opinions_order_appeal_apple_pmc.pdf
[6] https://scholar.smu.edu/cgi/viewcontent.cgi?article=1146&context=scitech
[7] https://pubads.g.doubleclick.net/gampad/jump?co=1&iu=/6978/reg_offbeat/legal&sz=300x50%7C300x100%7C300x250%7C300x251%7C300x252%7C300x600%7C300x601&tile=4&c=44YFjNLVjWlZOLccp7I4F1WAAAAQY&t=ct%3Dns%26unitnum%3D4%26raptor%3Dfalcon%26pos%3Dmid%26test%3D0
[8] https://www.texasmonthly.com/news-politics/patently-unfair/
[9] https://www.bloomberg.com/opinion/articles/2017-05-25/the-texas-town-that-patent-trolls-built-j34rlmjc
[10] https://whitepapers.theregister.com/
Re: Case tort
Normally you would have a point. In this case however it's a patent troll who went court shopping to find one friendly (and stupid) enough to give them their way.
Eastern District of Texas
I'm not going to claim any special knowledge about the merits of this case, but anytime I see that a federal lawsuit was filed in the Eastern District of Texas, I just assume the plaintiff has a weak case and is court shopping. There have truly been some amazing jury decisions in that district which defy all logic.If I was a business owner, I would make a concerted effort to have no presence in that district so no one would be able to sue me there.
Re: Eastern District of Texas
It's only necessary to show an infringement there - the 'victim' just has to show somebody in East Texas could have used your product. It's like how if somebody in London can see an article on the internet you can sue in London with it's 'advantagous' libel laws
Anything created 40 years ago should be free for humanity to build on and innovate with. It doesn't matter what it is, music, idea, software, or whatever, you've had your time, move on. And if you didn't make enough money from it in all that time, then tough.
I don't get the why there was so long between the application and it being granted, but I don't think that is an excuse either. The timer should start from the application and you should get no more than 15-20 years to make hay with it. Anything more than that is just greedy.
It can happen legitimately - but in this case I suspect it was 'strategic', it's called a submarine patent.
The idea is to keep a patent submitted but not granted, and so not public, by filing all sorts of corrections and amendments and continuations. Wait until a company with $$$ infringes, then you get it granted and sue them - hoping that they have invested so much in manufacturing they will pay out.
The USPTO have changed the rules now to make this much harder.
A useful guide in such situations: "code or it didn't happen".
Case tort
"Cases like this, brought by companies (other than us) that hold patents that were created long before we decided to make a product that used the tech, stifle our desire to 'innovate' by harming our ability to increase our profit margins by using other people's creativity".
There, FIFY.
After all, for example, a flat handheld electronic display device with curved corners was never shown on Star Trek . No, not at all.