OSS Google Smartphone Patent War The Patent Process Dr. Tal Lavian UC Berkeley Engineering, CET

Licensing – Open Source Software (OSS) Open source means the source code is available for modification by the public  Contrast with commercial software development (companies retain proprietary rights over software) To ensure OSS remains freely modifiable, it is often distributed under special licenses which place restrictions on its use  “Copyleft”, seen as a “design around” for copyright

Licensing – OSS (cont.) OSS licenses can be separated into two categories:  Restrictive  Limitations placed on redistribution  Not allowed to sell software/profit from derivatives  e.g., the General Public License (GPL)  Permissive  Free to commercialize software/redistribute proprietary derivatives  e.g., Berkeley Software Distribution (BSD) License

Licensing – Android Android is distributed by the Open Handset Alliance under the Apache Software License (ASL) ASL is a permissive license, so companies are allowed to build on top of it and own derivative versions  For this reason, OEM can build on top of Android and own the rights to whatever changes they make  e.g., Samsung, HTC, and Motorola all install proprietary versions of Android on their devices, but each version differs from the other

Licensing – Android (cont.) This does not mean that Android is free for companies to use, per se  Software behind Google’s apps is proprietary  Google charges licensing fees for companies to use its apps, including the Android App Store Some believe Google should close development of Android and license it  What effects might that have on the smartphone OS market?

Licensing – Android via Microsoft As we have seen, Microsoft taking an alternative approach to smartphone patent war Instead of litigation, Microsoft licenses out technology in Android that is assumed to infringe on Microsoft patents to OEM Demonstrates profitability of licensing strategies

Licensing – Android via Oracle Oracle bought Sun Microsystems for $7.4B in 2009  With that, got patents on Java programming language Oracle contends Android OS contains elements of Java, has threatened to sue Google for infringement How is this unlike Apple’s suits against Android-endorsing OEM?

Licensing – Android via Oracle (cont.) Google could avoid suit by removing Java elements from Android  Similar to HTC design around of Apple patent after ITC ruling Most Android OEM are licensees of Java, so wouldn’t effect them  Except for HTC, which is the second biggest producer of Android phones

Smartphone Patent War – Google Since its inception, Google not very interested in building a patent portfolio However, after release of Android raised possibility of getting sued for infringement, patents seen as a shield Quickly began campaign to purchase patents in order to defend the Android OS

Google – Patent Purchases First attempted to buy Nortel’s patent portfolio in early 2011  Outbid by consortium of competitors including Microsoft, RIM, and Apple Purchased 1,000+ patents from IBM in late 2011 Then purchased Motorola Mobility ostensibly for its patent portfolio for $12.5B in late 2011 What other purposes could Google have in mind?

Google – Patent Purchases (cont.) Originally, Google invested little in Android, could offer to OEM for free and still make money Now, Google has invested heavily with patent purchases Needs to find a way to recoup losses and make more money from Android Also consider: Motorola Mobility is a handset manufacturer…

Smartphone Market Apple currently makes more money from iPhone than Google makes from all other services combined  Part of the reason is that Apple is both software (iOS) and hardware (iPhone) manufacturer Given these considerations, how might Google pursue greater profitability from the smartphone industry?  What implications could this have for the smartphone landscape?

The Patent Process 13 Application preparation Application filing Patent office rejections Patent granting Patent challenges

Application Preparation 14 Loop until perfect (order may vary):  Clarify the invention  Draft claims  Prior art search & review  Describe preferred embodiment  Rough drawings Prepare final drawings Prepare application forms & fees “package”

Prior Art Searches 15 Look at similar patents to help prepare your application  Ask yourself: has the invention already been patented?  Help identify the novel features of your invention  Get valuable technical information from similar patents

Prior Art – Look Everywhere 16 Search everywhere in the public domain for prior art  Patents  Technical papers, conference proceedings  Standards  Text books  Product literature, manuals  Internationally  Combined sources (obviousness) Problems  No well defined end of search, time consuming  May include expensive resources (e.g., IEEE Xplore)  May be limited public domain: standards body work groups

Application Submission Submit “package” by certified mail Get return receipt & acknowledgement from PTO The long wait, at least a year, maybe two Depends on “art unit” work load and other factors Protected from date of filing—maybe. Easier for an application to be challenged than after patent that has been granted Application can be contested by evil-doer

Application Rejections 18 The patent examiner will review the patent according to PTO rules, often consults with other examiners and supervisor Patents are almost always rejected at first Need to respond by “overcoming” the rejection with:  An explanation of why rejection is valid  Prior art cited does not apply  Why it would not be obvious to one skilled in the art (PHOSITA)  Modify, add or delete claims Possible to talk with examiner, best done with attorney or patent agent. Keep record of what was agreed to and copy examiner. May loop through this process until patent granted or limit on up to 3 number of “office actions”

Patent Granted – Hooray!! 19 Once notified that the patent is granted  Legal protection begins  Presumed to be a valid invention  Patent and “file history” becomes publicly available Individual inventors deluged with sales offers:  Buy engraved plaques, mugs, etc.  Sign up with companies to market your invention (for a fee) ‏

The Patent Challenge 20 When the patent is “asserted” against a product, the accused company will usually challenge the patent. Review the patent and file history  Look for prior art that would invalidate the patent  Challenge PTO finding on obviousness or other errors  Question whether patent be implemented by one skilled in the art  If they can find something, they may  Use this to repel assertion  Ask PTO to “re-examine” the patent May occur during negotiations or after a lawsuit is filed A patent that survives a “legal” challenge becomes more valuable because it has been “tested”. But very expensive and risky.