Motorola asks court to invalidate iPhone patents

The Android phone-maker has launched a pre-emptive strike against Apple, arguing that the patents it is using to sue HTC are invalid and unusable against Motorola
Written by David Meyer, Contributor

Motorola has launched a pre-emptive strike against Apple in the ongoing battle between the iPhone-maker and manufacturers of Android handsets.

In an application for declaratory relief [PDF] filed earlier in October, Motorola said 12 patents should be invalidated because of prior art, meaning that the patents should not have been granted because they described methods and apparatus that were already in use by others when they were granted. Eleven of the patents are held by Apple alone and one by Apple and the Steve Jobs-founded NeXT, which the Mac maker bought in 1996.

The patents are central to Apple's suit against Android-maker HTC, launched in March, and Motorola said in its 8 October filing in Delaware district court that it expected Apple to use the same patents against it.

"Like HTC, Motorola Mobility manufactures and sells mobile phones that also use the Android operating system, and Motorola Mobility has engaged in confidential negotiations with [Apple] regarding the licensing of [Apple's] intellectual property," the company said. "As a result of these negotiations and [Apple's] litigation history, including [Apple's] recent assertion of the patents-in-suit against the Android operating system, Motorola Mobility has a reasonable apprehension that it faces an infringement suit related to the patents-in-suit."

The patents in question cover technologies such as an "object-oriented graphic system" (patent number 5,455,599), "method and apparatus for distributing events in an operating system" (5,566,337) and even an "object-oriented operating system" (6,275,983) and "real-time signal processing system for serially transmitted data" (6,343,263).

Motorola said in its filing that the ideas in the patents "would have been obvious" to anyone in the industry, given the existence of prior art, and said they included "vague and indefinite and incorporate limitations that are neither disclosed, described, explained, nor enabled by the specification".

The telecoms company said it wanted a jury to decide that the patents were invalid and unenforceable against Motorola, adding that it wants its lawyers' fees paid by Apple.

The application for declaratory relief is separate to Motorola's patent-infringement suit against Apple, which was launched earlier this month and which covers the iPad, iPod Touch, iPhone and some Mac computers.

While Apple has not launched a suit over Motorola's implementation of Android, Microsoft did just that at the start of October. That suit covered technologies such as email, calendar and contact synchronisation, as well as signal and battery-strength notifications for applications.

Neither Microsoft nor Apple has gone directly after Google, the company behind the Linux-based Android operating system. However, Oracle, the company that took over control of Java when it bought Sun Microsystems this year, launched a major Java-based suit against Google in August. Java, which is integral to Android, remains under Oracle's control due to its closed certification process, despite being open source.

In response, Google has denied infringing any of the Java patents. It has accused Oracle of acting in bad faith because, before it acquired Sun, the database specialist was a vocal critic of the same closed certification process that it has gone on to perpetuate.

Android is also threatened by another, closely related issue. The Google-backed OS is distributed under the Apache Software Foundation's (ASF) open-source licence and its virtual machine, Dalvik, is built on a subset of Apache Harmony, the ASF's open-source implementation of Java.

However, Oracle's refusal to certify Apache Harmony caused IBM, a key Harmony backer, to abandon the technology in favour of Oracle-backed alternative OpenJDK last Monday. At the time, former JBoss chief technical officer Sacha Labourey suggested that Google would have to sue Oracle over its refusal to certify Harmony, if Harmony was to survive.

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