updated 11:17 am EDT, Wed June 4, 2014
Ruling may set precedent for legal relationship between Apple, developers
The Patent Trial and Appeal Board has sided with Apple and mostly invalidated two software activation patents being used in a lawsuit by Achates Reference Publishing, says The Recorder. Achates filed suit against an iOS app developer, QuickOffice, over a year ago; recently it argued that Apple had a "substantive legal relationship" with QuickOffice, and that the two businesses were trying to circumvent rules and time limits for inter partes review defined in the America Invents Act. The PTAB ruling states that Apple didn't wait too long to file for inter partes review, and that QuickOffice's apparent contract to indemnify Apple for third-party patent infringement claims didn't represent legal privity between the two entities.
"The agreement does not give the developer the right to intervene or control Apple's defense to any charge of patent infringement," writes Judge Justin Arbes. In invalidating most of the patents' claims, Arbes says that they were generally obvious or anticipated by prior art. Achates had charged that QuickOffice was using its partnership at Apple to attack the patents without the risks of a negative decision. The ruling still leaves room for one party in multi-defendant lawsuits to challenge a patent in front of the PTAB even when connected parties were sued earlier.
The PTAB has also tossed an accusation against Apple's expert witness, Bruce Schneier, who Achates criticized as hostile to patents, and biased in his board membership with the Electronic Frontier Foundation. The EFF has taken an open stance against patent trolls. "We find Mr. Schneier's testimony persuasive and give it substantial weight," says Arbes, adding that one of Achates' own experts described Schneier as a top cryptologist. "We do not give it less weight based on a purported bias against patents in general."
Another blow to Achates is the rejection of sealing email exchanges between Achates experts in which they discussed their opinions on the case and directions to take it. Arbes contends that because no attorneys were involved in the exchanges, privilege doesn't apply, and that there's a "strong public policy in favor of making information filed in an inter partes review open to the public." Such a review determines the patentability of claims in an issued patent, he notes.
QuickOffice was acquired by Google in June 2012.