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HTC Files Answer with Counterclaims to Apple's Patent Infringement Suit - Updated
Tuesday, August 24 2010 @ 05:49 PM EDT

This could get interesting. HTC has filed its answer to Apple's complaint [PDFs] against them for patent infringement, with affirmative defenses and counterclaims.

The case, Apple Inc. v. High Tech Computer Corp. et al, is now before Judge Gregory M. Sleet, docket number: 1:10-cv-00544-GMS, in the US District Court in Delaware. The et al means there are others as defendants, and the full caption is Apple Inc. and NeXt Software, Inc. v. High Tech Computer Corp., a/k/a HTC Corp., HTC (B.V.I.) Corp., HTC America, Inc., and Exedea, Inc. The defendants are asking to move the case from Delaware, where Apple filed, to Northern California. I don't know about you, but I'd rather be in any state *but* Delaware, after watching SCO's bankruptcy there.

HTC denies infringing the patents, of course, but they also say as a first affirmative defense that four of the patents are invalid for "failure to comply with one or more of the conditions for patentability set forth in Title 35 of the United States Code, including, but not limited to, utility, novelty, non-obviousness, enablement, written description and definiteness in accordance with 35 U.S.C. §§ 101, 102, 103, 112, and/or 116, or are invalid pursuant to the judicial doctrine barring double-patenting". HTC also claims prior art, marking, laches and marking defenses, and it says it has license agreements with third party suppliers to do what they do the things Apple is suing them over. It asks the court to declare the patents invalid. Here's a recent case highlighted on EFF's site where some of those types of defenses worked perfectly.

You know how in the movies when two guys get into a fight on the street, another guy will run into a bar and yell, Fight! and everyone runs outside to watch? I feel like that guy reading this filing, because I see HTC intends to fight back.

Apple, meanwhile, is asking that all four current cases involving these patents be consolidated [PDF], but in Delaware before Judge Sleet, at least for the pre-trial work. No one wants to spend for discovery duplicatively. That's a big-bucks item. The four are Nokia Corporation v. Apple Inc., C.A. No. 09-791 GMS, Nokia Corporation v. Apple Inc., C.A. 09-1002 GMS, Apple Inc. et al. v. High Tech Computer Corp. et al., C.A. No. 10-166 RK, and Apple Inc. v. High Tech Computer Corp. et al., C.A. No. 10-167 RK.

Apple's reasoning:


There currently are four patent infringement actions pending in this District asserting that Nokia Corporation (“Nokia”) and/or High Tech Computer Corp. and its subsidiaries (collectively, “HTC”) infringe a number of Apple patents. The first two cases filed were assigned to Chief Judge Sleet. The second two cases were assigned to Judge Robert Kelly, who is sitting in this District by designation. Pursuant to Federal Rule of Civil Procedure 42(a), Apple requests that the Court consolidate the second set of cases—at least for purposes of coordinating pre-trial activities—with the first two that are pending before Chief Judge Sleet.

Consolidation is appropriate in this instance because the four cases involve numerous common issues of law and fact, including eleven patents that Apple has asserted against both Nokia and HTC. Given the overlapping patents and technologies at issue in the cases, consolidation offers the benefit of conserving resources and promoting judicial economy by avoiding the need for duplicative discovery or any other redundant litigation activities, such as multiple Markman hearings concerning the same patents. Importantly, consolidation before a single judge will also ensure that there are no inconsistent pretrial rulings—most notably inconsistent constructions of claim terms in the eleven overlapping patents.

There is no danger of prejudice to any of the parties in these cases as a result of consolidation. All four litigations are still in the very early stages, with only one having reached discovery and two having been stayed pending the outcome of proceedings in the International Trade Commission. HTC has not yet answered, and there is no schedule in place yet in the non- stayed HTC case. Consolidating that case with the non-stayed Nokia case should present no complications, and the new case would benefit from the fact that Chief Judge Sleet has already considered relevant procedural issues and recently set a schedule in the related Nokia action. Indeed, Nokia and HTC themselves recently argued the merits of consolidation with respect to a set of parallel proceedings at the ITC involving many of the same Apple patents. Nokia and HTC successfully argued that two investigations regarding their infringement of five overlapping patents should be consolidated into a single investigation, contending that consolidation was necessary to “eliminate the waste of the parties’ and [the tribunal’s] time and [of the] expense that would otherwise result from redundant discovery, unnecessarily repetitive briefings and duplicative hearings featuring the same exhibits, witnesses, and evidence.”2 These arguments apply with equal force to the present district court actions, which involve the same defendants and multiple overlapping patents—including several of the same patents at issue in the consolidated ITC cases. The benefits of ensuring consistency and avoiding a waste of judicial resources strongly favor consolidation. Having argued for full consolidation of Apple’s cases in the ITC, HTC and Nokia cannot credibly contend that the cases pending before two judges in this District should not be consolidated for efficient case management and to eliminate duplicative activity and potential inconsistencies. Apple therefore respectfully requests that the Court consolidate the HTC case with the Nokia case.

I hope consolidation happens somewhere. It's hard to keep up with so many cases at once, and now that Oracle is suing Google over Android, I'm a lot more interested in the HTC case than I was. The common goal is to attack Google's Android. Here's a ZDNET article with some background on the Apple v. HTC case. Gizmodo has a long description and analysis of all the patents here, here and here, so don't visit unless you are free to learn all about the patents.

Update: We have now the redacted version of the Declaration of Karen L. Pascale in support of HTC's Motion to Transfer Venue, and there is an exhibit attached that is very long, actually 8 different exhibits crammed into one long PDF, so we are making it available as Pacer does that way, but below the docket item, we've broken the exhibits into its 8 pieces:

08/27/2010 - 19 - REDACTED VERSION of 17 Declaration, of Karen L. Pascale in Support of Reply Brief in Support of Motion to Transfer Venue Pursuant to 28 U.S.C Section 1404 by Exedea Inc., HTC (BVI) Corp., HTC America Inc., High Tech Computer Corp.. (Attachments: # 1 Exhibit 1-8)(Pascale, Karen) (Entered: 08/27/2010)

Here's the exhibit file, 156 pages, so it is broken up into separate exhibits as follows (descriptions are from the redacted Declaration):
  • Exhibit 1 - Complainants Apple Inc and NeXT Software Inc.’s Combined Opposition to the Staff’s Nokia’s and HTC’s Motions for Consolidation filed in ITC Inv. Nos 337-TA-704 and 337-TA-710 on April 21, 2010

  • Exhibit 2 - Apple Inc’s Answer, Defenses and Counterclaims from Nokia Corporation v. Apple Inc., C.A. No.10-CV-249 (W.D. Wisc.), filed on June 28, 2010

  • Exhibit 3 - Apple Inc.’s Memorandum In Support of Motion to Transfer Venue to the District of Delaware Pursuant to 28 U.S.C. § 1404(a) from Nokia Corporation v. Apple Inc., C.A. No.10-CV-249 (W.D. Wisc.), filed on June 29, 2010

  • Exhibits 4 and 5 - Redacted

  • Exhibit 6 - Apple Inc.’s Reply Memorandum In Support of Motion to Transfer Venue to the District of Delaware Pursuant to 28 U.S.C. § 1404(a) from Nokia Corporation v. Apple Inc., C.A. No.10-CV-249 (W.D. Wisc.), filed on July 30, 2010

  • Exhibit 7 - Defendants HTC Corp. and Exedea, Inc.’s Reply Brief In Support of Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404 from Apple Inc. and NeXT Software Inc. v. HTC Corp. and Exedea, Inc., C.A. No. 10-166- RK and 10-167-RK (D. Del.), filed on June 9, 2010

  • Exhibit 8 - Order No. 5: Granting the Commission Investigative Staff’s Motion for Partial Consolidation of Investigation Nos. 337- TA-704 and 337-TA-710 and Denying Nokia’s Motion for Full Consolidation, filed in ITC Inv. No. 337-TA-704 on April 26, 2010

Now we can look deeper into what's going on in this picture.


HTC Files Answer with Counterclaims to Apple's Patent Infringement Suit - Updated | 182 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Authored by: Kilz on Tuesday, August 24 2010 @ 06:30 PM EDT
For mistakes, so PJ can fix them.

[ Reply to This | # ]

Off Topic
Authored by: Kilz on Tuesday, August 24 2010 @ 06:31 PM EDT
Please make links the clicky kind.

[ Reply to This | # ]

Authored by: Kilz on Tuesday, August 24 2010 @ 06:32 PM EDT
Please indicate which article you are commenting on.

[ Reply to This | # ]

COMES goes here
Authored by: Cypher3c on Tuesday, August 24 2010 @ 06:38 PM EDT
Place COMES material here.

[ Reply to This | # ]

Bringing FLOSS to the people.
Authored by: kozmcrae on Tuesday, August 24 2010 @ 07:26 PM EDT
I think I know how FLOSS will finally be spread to the general public. They
will be introduced to it one jury at a time in the multitude of cases springing
up in the battle over software patents.

At the rate of twelve men and women for each case the majority of the population
should experience a serious introduction to FLOSS within the next ten years.

It all started with Lynda Carter playing Wonder Woman in the '70s. Now I'm a
Heroine addict.

[ Reply to This | # ]
Authored by: ciaran on Tuesday, August 24 2010 @ 08:31 PM EDT

On, this is being documented here:

Help welcome (such as links to related Groklaw articles, or adding Groklaw links as references for sentences).

[ Reply to This | # ]

Pleasing to the user?
Authored by: jvillain on Tuesday, August 24 2010 @ 09:46 PM EDT
I was reading the descriptions to the patents Apple is claiming. Thank you for
inventing the pipe (fifo) BTW.

In patent 7,362,331 the description starts with the following sentence.

"The present invention relates to a method for moving objects within the
graphical user interface (GUI) of an operating system in a manner that provides
a transitional effect between window states, which is pleasing to the

Pleasing to the user? I know it is just the description and not the actual
implementation. But isn't it odd to say it is pleasing to the user? What if as a
user I don't find it all that pleasing? Aren't patents supposed to be about
facts and not moods? It just seems odd.

[ Reply to This | # ]

Apple's U.S. PATENT NO. 5,455,599 - "Object-oriented graphic system"
Authored by: IMANAL_TOO on Wednesday, August 25 2010 @ 12:53 AM EDT
From the first of the three Gizmodo links provided by PJ: "U.S. PATENT NO.
5,455,599 Object-oriented graphic system"

Hmmmm. That sounds like a candidate for prior art, before I have read the
details (where there tend to be devils).

Generally, one could possibly expect the older companies like Ericsson, Nokia
and Motorola have more patents in a field like cell phones, and companies like
Apple have more in GUI based apps. I have no idea where HTC, built by Canadian
company RIM, founded in 1996, may end up. But, after reading these it seems that
most of Apple's patents are related to touch-screens and that would make the
field more even.

However, IIRC, there was some guys who suggested prior art on most of these here
at Groklaw quite long ago.




[ Reply to This | # ]

HTC Files Answer with Counterclaims to Apple's Patent Infringement Suit
Authored by: soronlin on Wednesday, August 25 2010 @ 05:20 AM EDT
Well judging from the abstracts posted, I see absolutely no problem with any of
these patents. Most of them have obvious prior art, (Apple seems to have
invented COM in the same year Microsoft invented DCOM.) and the rest are as
obvious as the nose on your face. (How do you unlock a touch-screen phone when
you don't have any buttons? I think everyone reading this, programmer or not,
would come up with at least a selection of the methods Apple patented.)

Usually in cases like this I might think it likely there was prior art, or
wonder if the patent does or doesn't pre-date other art. In this case I was
thinking of prior art as fast as I could read the abstracts, and I am fairly
certain that 19 out of 20 are invalid, and the 20th probably is. This is the
weakest set of patents I have seen on Groklaw.

HTC is right to fight; this should be easy. Of course it might be easy over a
very long court-case that destroys their business, but they will win in the end.

[ Reply to This | # ]

HTC Request for Change of Venue
Authored by: maroberts on Wednesday, August 25 2010 @ 05:56 AM EDT
I'm surprised to see the current venue is Delaware. I don't think either Apple
or the US arm of HTC are incorporated there, are they?

I'm sure there's lots of prior rulings, including some posted recently on
Groklaw, about the fact that at least one of the company should be directed from
the state where the case is to take place.....

[ Reply to This | # ]

Third parties?
Authored by: jvillain on Wednesday, August 25 2010 @ 10:56 AM EDT
HTC says they have "license agreements with third party suppliers to do
what they do". Does any one know who any of those third parties are? How
likely is it that the third parties will get dragged in beyond just saying they
own patent # XXXXXXXXXX?

[ Reply to This | # ]

Review of patents issued to Apple
Authored by: iraskygazer on Wednesday, August 25 2010 @ 01:12 PM EDT
How is it possible that Apple was issued patents for things such as manipulation
of graphic based objects? This particular area of software should have never had
patents issued after Microsoft won their look and feel desktop battle with
Everything under the Apple patents except for the GFSK patent has lots of
previous art that should have nullified the application at the USPTO. This makes
me wonder what is being done in the PTO before issuance of a patent for

[ Reply to This | # ]

HTC Files Answer with Counterclaims to Apple's Patent Infringement Suit
Authored by: tknarr on Wednesday, August 25 2010 @ 03:45 PM EDT

Interesting paper and video about what looks like a touch interface. By Pierre Wellner, University of Cambridge, back in 1991.

Citation for the paper (ACM library, login required to view, I can't find it anywhere else)
YouTube video of a presentation by him about it

[ Reply to This | # ]

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