The U.S. Court of Appeals for the Federal Circuit handed a victory to Apple Inc. on Wednesday., reviving two smartphone patents the company asserted against rival Motorola Mobility Inc. at the International Trade Commission. The ruling is a win for appellate heavyweight E. Joshua Rosenkranz of Orrick, Herrington & Sutcliffe, but it could also be a boon for Apple's lawyers at other firms doing battle with Samsung Electronics Co.

In a 37-page ruling, the Federal Circuit ruled that the ITC erred in dismissing claims that Motorola infringes two Apple patents relating to touch-screen technology. The case will now be remanded to the ITC, which has the power to ban Motorola (now owned by Google Inc.) from importing its infringing mobile devices into the U.S.

The case dates back to October 2010, when Apple and Motorola both fired off infringement complaints at the ITC and in federal court. Apple's ITC complaint was relatively thin, with just three touch screen patents at issue. Apple asserted the same patents against Motorola in U.S. district court in Wisconsin. A judge tossed the Wisconsin case last November, after Apple indicated that it didn't think it would be bound by whatever reasonable royalty rate the judge set for Motorola's standards-essential patents.

Motorola's lawyers at Quinn Emanuel Urquhart & Sullivan scored an early win in the ITC case in January 2012, when a single ITC administrative law judge ruled that all three Apple patents are either invalid or not infringed. A panel of all six ITC ALJs affirmed in March 2012.

The Federal Circuit has now revived two of the patents, #7,663,607 and #7,812,828. The ITC had found the '607 patent invalid on obviousness grounds, and ruled that Motorola didn't infringe the '828 patent. Both those rulings were reversed in Wednesday's precedential decision. Judge Kimberly Moore wrote for the three-judge panel.

Patent blogger Florian Mueller has written that "the '607 patent is the broadest touchscreen-related hardware patent Apple has, and if the courts interpreted it as broadly as Apple would like them to, it would be extremely hard to work around." In a partially concurring opinion Wednesday, Federal Circuit Judge Jimmie Reyna called the '607 patent "an invention that has propelled not just technology, but has dramatically altered how humans across the global interact and communicate."

Apple asserted—and then later withdrew—the '607 patent in litigation with Samsung. Mueller surmised on his Foss Patents blog that Apple may now reassert the patent.

Rosenkranz argued at the Federal Circuit in March, squaring off against Quinn Emanuel partner David Nelson. Neither was immediately available to comment.


Jan Wolfe is a senior reporter with The Litigation Daily, a Recorder affiliate.