Patents in Apple-HTC settlement must remain unsealed, judge says
In a late Monday ruling, Apple v. Samsung Judge Lucy Koh said that the patents Apple and HTC are cross-licensing as part of a ten-year deal will not remain sealed, indicating that the public will be privy to the sensitive information.
As noted by CNet, Judge Koh will allow the financial details of the arrangement to remain under wraps, however the patents being licensed by Apple and HTC will not be sealed as the information does not present "a sufficient risk of competitive harm to justify keeping it from the public."
Included in the particulars that may be documented for public review are patents from both Apple and HTC, with some of the properties possibly being closely-guarded "user experience" assets the Cupertino, Calif., company rarely shares.
From the order:
As regards the motion to file under seal, this Court has repeatedly explained that only the pricing and royalty terms of license agreements may be sealed. Only these terms, and not the rest of the agreement, meet the âcompelling reasonsâ standard articulated by the Ninth Circuit for sealing filings related to dispositive motions and trial. There are compelling reasons to seal pricing and royalty terms, as they may place the parties to the agreement at a disadvantage in future negotiations, but there is nothing in the remainder of the agreement that presents a sufficient risk of competitive harm to justify keeping it from the public. Accordingly, Samsungâs motion to seal is GRANTED with regard to the pricing and royalty terms of the agreement only, and DENIED with regard to the rest of the agreement.
Monday's order comes two weeks after Apple v. Samsung Magistrate Judge Paul S. Grewal handed down a ruling ordering Apple to disclose the details of the company's settlement with HTC. Samsung had filed a motion to compel the then undisclosed agreement in hopes of hindering Apple's post-trial proceedings. As of this writing, only Samsung's lawyers have been allowed access to the documents, however Judge Koh's ruling could reveal that Apple has licensed certain utility patents to HTC, most importantly the '381 "rubber-banding" and '915 "pinch-to-zoom" patents. The two properties were hotly contested during the Apple v. Samsung jury trial which ended with a $1.05 billion decision in favor of Apple.
In November, Apple and HTC ended a series of lawsuits, including two ITC cases, with a ten-year agreement that called for the dismissal of all current and pending litigation.
Post-trial proceedings will continue on Thursday when both companies are scheduled to discuss their respective motions, including an Apple-sought ban of eight Samsung products and Samsung's request to have the whole trial thrown out due to alleged jury misconduct.
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I see an interlocutory appeal coming from Apple. This clearly violates typical NDAs which every company requires of its employees and contractees. Koh has just made all NDA details discoverable by any litigant.
@waldobusman: I'm an Apple user by night (and a student by day). NDA details are discoverable with a simple subpoena and do not have the same protections such as attorney-client or doctor-patient privilege during legal discovery. Secondly, AppleInsider's article is wrong. Protection of an invention in a patent comes at the cost of making all of it the information public through a filing at the USPTO. That is why we can Google the patents and read them. The only time this doesn't occur is if: 1) the inventor forgoes patent protection or 2) if it falls under the Invention Secrecy Act. Judge Koh was correct in making the list of patents public since patents are meant to be public. Will this ultimately hurt Apple? Probably. If Apple licensed patents to HTC that they claimed they couldn't license to Samsung then it will undermine their initial argument. Disclaimer: None of this is legal advice.
[quote name="waldobushman" url="/t/154759/patents-in-apple-htc-settlement-must-remain-unsealed-judge-says#post_2240868"]I see an interlocutory appeal coming from Apple. This clearly violates typical NDAs which every company requires of its employees and contractees. Koh has just made all NDA details discoverable by any litigant. [/quote] Yep. It will be appealed. It is not, however, as overreaching as you imply, nor is Apple guaranteed to win an appeal. See below.
[quote name="tziman" url="/t/154759/patents-in-apple-htc-settlement-must-remain-unsealed-judge-says#post_2240879"]@waldobusman: I'm an Apple user by night (and a student by day). NDA details are discoverable with a simple subpoena and do not have the same protections such as attorney-client or doctor-patient privilege during legal discovery. Secondly, AppleInsider's article is wrong. Protection of an invention in a patent comes at the cost of making all of it the information public through a filing at the USPTO. That is why we can Google the patents and read them. The only time this doesn't occur is if: 1) the inventor forgoes patent protection or 2) if it falls under the Invention Secrecy Act. Judge Koh was correct in making the list of patents public since patents are meant to be public. Will this ultimately hurt Apple? Probably. If Apple licensed patents to HTC that they claimed they couldn't license to Samsung then it will undermine their initial argument. Disclaimer: None of this is legal advice.[/quote] You clearly don't understand what Koh did. As you said, patents are public knowledge. Samsung is free to search the US patent office to see what patents Apple has applied for and received. But Koh went much further. She stated that the agreement between the companies as to[B] which patents are being licensed[/B] must be made public. As I stated previously, it's a tough call. On the one hand, Apple and HTC have the right to reach any agreement they wish and have an expectation that the agreement would be private. On the other side, though, Samsung is arguing that Apple's willingness to license the patents shows that an injunction is not proper. Technically, an injunction should be granted only when a monetary payment would not correct the injustice. Apple argues that a monetary payment from Samsung would not be sufficient and therefore an injunction is needed. Samsung argues that a fine would be sufficient to rectify any wrong - and believes that the HTC agreement demonstrates that fact. Of course, HTC is a smaller player and has not made the blatant ripoffs that Samsung has, so they might not win the argument, anyway, but it is a reasonable argument to present. It could go either way on appeal. It would not surprise me for the appeals court to rule that the agreement doesn't need to be made public but that Samsung's attorneys can see it.