Patents blog FOSS Patents explains:

The judge explained that the court does not hold Apple to infringe claim 9 of EP1053613 on a ‘method and system for generating a complex pseudonoise sequence for processing a code division multiple access [CDMA] signal’. In the court’s opinion, MMI failed to present conclusive evidence for its infringement contention.

Motorola had argued that the patent named above was “essential,” meaning that someone — in this case, Apple — would have to use technology covered by the patent if they’re using an industry-standard practice. The problem is, the judge didn’t see it that way and says Motorola didn’t present a convincing case that the patent was essential.

Just a week ago, Motorola claimed victory on two separate rulings related to its ongoing intellectual property battle with Apple. In the first, an injunction was granted against older iPhone and iPad models that infringed on a GPRS-related patent. And in the second, Motorola won an injunction against Apple devices that receive push email notifications from its iCloud system in Germany. Apple said it would appeal both.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• 12 tech leaders’ resolutions for 2012
• CES 2012: a recap and analysis
• LTE changes everything; LTE changes nothing

In delivering the ruling, judge Andreas Mueller suggested that the court didn’t like Apple’s chances for maintaining the validity of the patent claim, saying that “Samsung has shown that it is more likely than not that the patent will be revoked because of a technology that was already on the market before the intellectual property had been filed for protection.”

It’s a win for Samsung, and one that will no doubt take the sting out of a ruling Tuesday that saw a Düsseldorf court uphold an injunction against the original Galaxy Tab 10.1. This injunction also would have applied to a technical patent, not design IP, which would’ve been much harder for Samsung to work around with simple software or hardware modifications.

Samsung’s bigger concern will still be the pending European Commission’s investigation related to its legal use of patents requiring fair, reasonable and non-discriminatory (FRAND) licensing terms, which the EU regulatory body formally announced on Tuesday.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• 2012: Data, spectrum and the race to LTE
• When video gets democratized, who wins and who loses?
• Connected world: the consumer technology revolution

Samsung has already sidestepped the initial injunction against the Tab 10.1 by releasing the Tab 10.1N in the German market, which features a redesigned case that avoids infringing on Apple’s community design patent. The ruling on Tuesday was based on a violation of German unfair competition law, Florian Mueller of FOSS Patents notes, and not on the original community design the injunction was issued for.

Mueller thinks that the win in the Düsseldorf appeals court is a bit of a mixed bag. On one hand, the ruling is obviously in Apple’s favor. On the other, it doesn’t necessarily apply to the redesigned Samsung 10-inch tablet, so there is no guarantee it will have any commercial impact for Apple. Also, the full-blown proceeding still has to happen, and that’s where the more important matter of Apple’s design patent will take place. Finally, Mueller says that in general, design-related lawsuits will probably have much less of an impact on the final outcome of the intellectual property value between the two companies than technical patent infringement claims, because they are relatively easy to work around.

In what may end up being a much more significant problem for Samsung, Tuesday also saw the announcement of a full-blown investigation of Samsung’s use of its patents, which fall under fair, reasonable and nondiscriminatory (FRAND) licensing requirements. The European Commission had this to say in its formal press release on the issue:

The European Commission has opened a formal investigation to assess whether Samsung Electronics has abusively, and in contravention of a commitment it gave to the European Telecommunications Standards Institute (ETSI), used certain of its standard essential patent rights to distort competition in European mobile device markets, in breach of EU antitrust rules.

Samsung will now face a formal inquiry regarding its claims of infringement on patents deemed to be essential in the EU. The action was likely prompted by Samsung’s infringement claims against Apple, which it went after in multiple EU courts regarding patents carrying FRAND licensing requirements.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• LTE changes everything; LTE changes nothing
• 2012: Data, spectrum and the race to LTE
• Why Samsung and Tizen could take on Apple and Google

The ITC’s initial ruling, which was handed downDec. 19, found HTC devices running Android  infringed on an Apple patent related to how data in notes and other documents, including emails and phone numbers, are automatically linked to other relevant external apps. HTC quickly responded to the decision, saying it had a software tweak in place that would allow it to avoid the ban entirely.

The specifics of Apple’s appeal, which FOSS Patents’ Florian Mueller discovered after Apple referenced it in a filing related to its ongoing case against Motorola, seems to involve U.S. patent No. 6,343,262, which details “a real-time signal processing system for serially transmitted data.” Mueller has described it as one that’s likely “extremely hard to work around.” The ITC initially denied that patent’s inclusion in its import ban, but in Apple’s filing in the Motorola case Tuesday, it seems likely Apple is trying to get it included in the scope of the decision via the appeal. Mueller suggests the appeal may also address other issues, including additional patents and the terms of the ban.

Mueller says ITC decisions appealed to the CAFC take some time to resolve, so it might be a while before we see any ruling. One thing is certain however; Apple’s nearly $100 billion cash pile means it’s likely in no real rush to settle its ongoing legal disputes.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• Will cloud computing push the BRIC market to the front?
• A clouded view of Google Music
• NewNet Q4: Platform mania and social commerce shakeout

In the original ruling, Apple actually came out somewhat ahead; it won a preliminary injunction against Galaxy smartphones related to an image gallery scroll patent, which Samsung later modified its software to avoid. The original ruling denied Apple’s claims related to Samsung’s tablets at the same time, however.

The Dutch appeals court found Apple’s asserted design-related right is valid, but also narrow in scope, and Samsung does not infringe upon that narrow scope with its device designs. The court considered size pieces of prior art in the form of devices from other companies, as well as U.S., Canadian and Japanese patents to determine the scope of Apple’s design claim.

A German court in Düsseldorf, ruling on the same issue earlier, found Samsung had infringed Apple’s designs and ordered a preliminary injunction. That prompted Samsung to introduce the Galaxy Tab 10.1N, a redesigned version of its 10-inch tablet specific to the German market. That injunction is up for appeal, too, and should come down next week.

On the one hand, Apple at least retains its community design right, but on the other, this decision is definitely a blow to its plans to attempt to hurt Samsung’s sales.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• Connected world: the consumer technology revolution
• Mobile Q2: Smartphone growth surges; iPad’s rule continues
• Updated: Forecast: global mobile subscribers, 2010–2015

The Samsung tablet will hit store shelves in Australia starting this week, after the Australian Federal Court overturned the preliminary injunction Apple had previously managed to secure. Apple was denied the chance to appeal the Federal Court’s ruling to the High Court on Friday. Preorders for the tablet at some Australian carriers have already begun.

Samsung had originally intended to launch the Galaxy Tab 10.1 in late summer 2011, but at first it voluntarily delayed its launch in compliance with recommendations from the Australian court and then was formally prohibited from selling the device.

The subsequent delay in its launch must have cost Samsung sales, but the company’s Australian VP of Telecommunications, Tyler McGee, was all about the upside in a recent interview with the Sydney Morning Herald. He said, ”At the end of the day the media awareness certainly made the Galaxy Tab 10.1 a household name compared to probably what it would’ve been based on the investment that we would’ve put into it from a marketing perspective.”

McGee anticipates, in fact, that Samsung won’t even be able to bring in enough supply to satisfy demand for the Galaxy Tab 10.1 in the near term. Telecom analyst Foad Fadaghi isn’t quite so sure Samsung’s rosy estimates will necessarily bear fruit, however, saying that while the case definitely has given Samsung significant mind share, that won’t necessarily translate to actual device sales.

Still, Fadaghi predicts that Samsung will move into second behind Apple in the tablet market in Australia. It is already first in mobile phones and smartphones in the country, having moved into the top spot in August.

Apple’s goal in picking patent fights seems to have been to shut down the competition completely, at least according to Apple’s own lawyers and statements made by former CEO Steve Jobs. But if it is actually raising the profile of Apple’s next-closest competitor, one has to question whether the occasional gains are worth the ongoing expenditure.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• Mobile Q2: Smartphone growth surges; iPad’s rule continues
• Why iPad 2 Will Lead Consumers Into the Post-PC Era
• What Google’s Honeycomb Means for Apple and Microsoft

Australian retailer dMavo’s Managing Director, Wojtek Czarnocki, told the Sydney Morning Herald that whether “Apple [is] just bluffing” or if the company “really want[s] to play the cat and mouse game,” dMavo is “up for it.” He’s already taken the precaution of setting up an Asian-based server and affiliate arm that handles shipping and sales of Galaxy Tab devices, which he believes puts dMavo’s Galaxy Tab sales to Australian customers outside of the ruling’s jurisdiction.

The injunction only applies to Samsung for now, but Australian lawyer Mark Summerfield told the Sydney Morning Herald that Apple could easily apply to get the injunction extended to Australian retailers. Judging by Apple’s sending of warning missives to parties like dMavo, the iPhone maker has been hoping that just the threat of legal action will be enough to convince those retailers to comply.

Offshoring some of its business may make it more difficult for Apple to shut down those operations, Summerfield says, since it may have to seek out injunctions in the countries where the offending retailers are moving their operations. He says that the Australian parts of the business could “still be held liable for infringement, costs and damages associated with the sales,” and notes that Australian judges “are almost obliged to find some way to punish [dMavo] to ensure that the courts retain their authority.”

Another retailer doing business in Australia, Mobicity.com.au, says it is Hong Kong–owned, so not tied by the Australian ruling. Again, even with this loophole an Australian court might find a way to assign punitive measures to its Australian-based components.

At this point, it looks like Apple will have to directly target errant online operations in order to stop them from selling the Galaxy Tab 10.1 or make it financially unwise for them to do so. With similar attempts to block the sale of Samsung and other Android devices ongoing around the world, you have to wonder if similar situations won’t arise in those markets, too. In other words, if Apple is indeed digging in for an all-out war with Android, victories in big battles could lead to smaller ones that draw this conflict out for a long, long time.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• Mobile Q2: Smartphone growth surges; iPad’s rule continues
• Why iPad 2 Will Lead Consumers Into the Post-PC Era
• What Google’s Honeycomb Means for Apple and Microsoft

The Federal Court of Australia granted Apple’s request for a temporary injunction against the Galaxy Tab 10.1 in Australia on Oct. 13, pending a full trial, which likely won’t take place until 2012. Samsung argued that the injunction would essentially mean that its larger Android tablet was essentially dead in the water in Australia, since it would miss the lucrative holiday buying season.

Samsung immediately signaled its intention to appeal the decision, and on Thursday, the Federal Court in Sydney granted Samsung the right to fast-track its appeal (via the Sydney Morning Herald). While an exact date hasn’t yet been set, the hope on Samsung’s side is that it can get the issue decided quickly, in an effort to overturn the ban ahead of the holiday shopping season.

Samsung initially opposed the fast-tracking of its full Australian hearing in the tablet dispute, owing to the fact that it needed more time to prepare its case, according to its lawyers.

Meanwhile, Apple is wasting no time in making sure its recent victory actually does stop the sale of Samsung’s devices down under. Local retailers have apparently been complying with the injunction order, but online stores haven’t been as eager to take the ruling seriously. Apple is issuing legal threats by letter to some of the offending sites, but the reach of the ruling only goes so far. Companies based in Hong Kong, for example, who wish to sell to Australia might not have to abide by the ruling, depending on how you interpret the letter of the law.

Recent comments made by Steve Jobs in his biography suggest that Apple’s goal (at least under Jobs) was not a cross-licensing agreement or settlement but the ultimate destruction of Android. If that remains the company’s strategy, it’s unlikely that Apple will ignore the issue of online retailers who continue to sell Samsung’s products thanks to legal loopholes.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• Mobile Q2: Smartphone growth surges; iPad’s rule continues
• Why iPad 2 Will Lead Consumers Into the Post-PC Era
• CES 2012: a recap and analysis

Apple told the court its “main reason” for seeking the hearings in the first place was to “prevent the launch of the Galaxy tablet and maintain the status quo,” according to lawyer Steven Burley (as quoted by Reuters). Basically, it sounds like no other outcome would have pleased Apple or its counsel, so I doubt any Samsung offer had much chance of being accepted.

The judge in the case had suggested last week that both sides push for an expedited trial in order to potentially avoid more delays for Samsung in Australia, but Samsung’s lawyers told the hearing on Tuesday that if a ruling doesn’t arrive “by mid-October, there is no urgency.” It would rather wait until later to prepare its defence, the Korean company’s lawyers said. Should the Galaxy Tab 10.1 miss the crucial Christmas shopping season window, Samsung argued that the tablet would be “commercially dead” in the Australian market anyway.

If an injunction is instituted, or a decision significantly delayed, then it appears that the Samsung 10-inch tablet may be dead in the water in Australia. That would be a major victory for Apple, but also one that could significantly escalate the legal fight between the two. Reuters’ report includes well-placed sources stating Samsung plans to attempt to block the sale of the iPhone 5, which will likely be revealed and dated by Apple later Tuesday.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• Mobile Q2: Smartphone growth surges; iPad’s rule continues
• What Google’s Honeycomb Means for Apple and Microsoft
• Mobile Q3: the fight for OS domination continues

The Northern District of California court granted Apple’s request for an expedited trial on Thursday, FOSS Patents reports, although it didn’t quite give the company everything it was looking for. Apple had asked that the trial, which will issue a decision based on Apple’s original complaints of infringement related to mobile patents it holds as well as counterclaims made by Samsung, take place in February 2012.

Samsung objected to any sort of expedited timeline, arguing that there are 43 distinct claims to be addressed at the trial and that such complexity required more time. The median time for a similar case to come to trial in the district is 23 months, which would make for a March 2013 start date.

While the court didn’t agree to the proposed February date, it did set one much earlier than what Samsung called for. The trial will take place on July 30, 2012, just 15 and a half months after Apple’s original filing. FOSS Patents’ Florian Mueller believes this will work out in Apple’s favor, since the schedule is ambitious and Samsung is on the defensive and will therefore have less time to organize its case.

Samsung also won a smaller victory in that some of Apple’s legal team withdrew in the face of a motion from Samsung to disqualify them, because they had previously worked for the South Korean company on cases in the same general ballpark, which might give them an unfair advantage. Mueller thinks this victory is relatively minor, considering the wealth of talent available to Apple in terms of high-quality intellectual property lawyers.

Apple isn’t running away with the game when it comes to its legal struggle with Samsung, but it is chalking up small victories that could lead to larger ones down the road. When the trial proper gets under way next summer, I expect we’ll start to see some real sparks fly, since the stakes should be even higher by then.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• Mobile Q2: Smartphone growth surges; iPad’s rule continues
• A Media Tablet Forecast, 2011 – 2015
• Connected Consumer Q2: Digital music meets the cloud; e-book growth explodes

As part of the deal, Samsung agreed to stop advertising for the release of the Android-based Galaxy Tab 10.1 in Australia and not to sell the device until the lawsuit is resolved or until it is granted approval by the court to do so. Apple appears to have won Samsung’s cooperation by promising to pay unspecified Samsung damages, should Apple lose the larger patent-infringement suit.

Apple sought an injunction in the Australian court because it claims the Galaxy Tab 10.1 infringes 10 Apple patents, according to Apple lawyer Steven Burley’s statements to the court. The judge in the case set a hearing for Aug. 29 to determine a trial date, if one is deemed necessary. The Australian legal action brings the total number of Apple/Samsung ligation instances to 11 courts, in nine countries on four continents.

Patent blogger Florian Mueller told me in an email that he thinks the message should now be clear:

All observers of Apple’s disputes with Android device makers must increasingly realize that Apple’s strategy is clearly that of a company optimizing for product differentiation, not licensing revenues. Apple’s objective is to stop iPhone and iPad lookalikes altogether, and companies like HTC will be required to degrade the user experience of their differences in order to ensure the iOS user experience stays unique.

In other words, we aren’t likely to see the end of this kind of action anytime soon, especially now that the growth of smartphone hardware makers like Samsung and HTC threatens to bump Apple from its lofty new perch as the No. 1 global smartphone maker.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• A Media Tablet Forecast, 2011 – 2015
• The rise of tablets in the enterprise

Defense, not hunting license

Don’t think of this as a hunting license for Apple, or permission to launch a broad offensive against its competitors in the smartphone space. While FOSS Patents’ Florian Mueller told me the patent is “excessively broad” in his own personal opinion, “it’s nowhere near the scope of a patent on anything multitouch.” UBS analyst Maynard Um said in an email to his clients that the patents held by Apple seem intended mostly “for defensive purposes,” since “collecting royalty is not Apple’s business model.”

In other words, competitors will still have to cross specific boundaries to incur a legal response from Apple, but where those lines are drawn reveal the key to why the patent is so valuable. This patent covers the ability to navigate in apps and web pages with a one-finger flick, and two-finger scrolling for embedded elements within a frame, which are all part of what makes the iOS user experience so good.

Um believes “Google and Microsoft may find work-around solutions in their mobile operating systems to avoid any infringement,” but Mueller points out that “staying outside that claimed territory will always come with some degradation of the user experience.” It’s that UX advantage that Apple wants to maintain with this patent.

More buttons for competitors

Apple’s touch interface on iOS devices has broad appeal because it works intuitively, and it has familiarity because of the broad reach of iOS (over 187 million iOS devices had been sold at last count). If you want to see more content on an iOS device, you push the screen down or pull it up, and the on-screen software responds as one would expect. According to Mueller, staying clear of Apple’s new multitouch patents would likely involve using additional icons or buttons for things like zoom and scrolling, which add a level of complexity to touch interaction. Basically, it would degrade UX on competing platforms. People new to touchscreen computing, and users used to iOS, would have trouble adjusting to these added elements, and they would also make for a cluttered interface. Apple, in other words, is better positioned to achieve a kind of user experience lock-in that would be hard for the competition to overcome.

That’s not to say Apple will be the only handset manufacturer to implement things like two-finger scrolling. Mueller notes that since Apple is already involved in patent litigation with Motorola, Samsung and HTC, it could reach cross-licensing agreements that allow other hardware to use its multi-touch patents as part of a settlement in some of those cases.

Ultimately, this patent is undeniably a win for Apple, and a loss for the competition, but it doesn’t mean we’ll see Apple turn into a litigating monster. It, does, however add some more legal backing to Apple’s existing UX advantage in the smartphone game, which will have long-reaching effects for the future of the market.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• A Media Tablet Forecast, 2011 – 2015
• A Global Mobile Handset Platform Forecast, 2011 – 2015
• The rise of tablets in the enterprise

The original deadline for Lodsys to respond to Apple’s motion was June 27, or this upcoming Monday. Lodsys has asked for two more months, which FOSS Patents’ Florian Mueller says is an unusually long extension to seek. Still, Apple is apparently fine with the request according to a statement made to the court by Lodsys counsel.

But two months is a long time for developers caught up in this mess to be waiting with bated breath. The developers named in the suit still have to formally respond to Lodsys’ complaint, and while it’s possible that the extension, if granted, will apply to them as well, that is by no means a certainty. Yet obviously, whether or not Apple is included in the proceedings will have a huge influence on how developers proceed in dealing with the allegations of infringement by Lodsys. It’s still not clear what exactly Apple is advising affected developers to do, but based on comments made by some of those involved, Apple does appear to be providing behind-the-scenes guidance. Google, on the other hand, has yet to intervene, and Android developers are starting to become increasingly apprehensive, as more and more are receiving legal threats from Lodsys.

Mueller suggests that this request for a delay by Lodsys, and Apple’s lack of opposition to it, could indicate that the companies are engaged in behind-the-scenes negotiation to resolve this matter without further involving developers or the legal system. Whatever the outcome of this latest move by Lodsys, I think this tweet from Android developer Cory Trese best sums up one of the most important lasting effects this case could have on mobile development:

Samsung doesn’t get a sneak peek

In Apple’s other major ongoing legal kerfuffle, the judge in the pitched intellectual property battle between Samsung and the Mac maker has denied Samsung’s request for early access to the iPhone 5 and iPad 3, hardware that hasn’t even been announced, much less released to the public.

While the judge admitted that Samsung has a right to parity, and had previously granted Apple access to unreleased devices like the Galaxy S II and the Galaxy Tab 10.1, she thought Samsung’s request in this instance went too far. The products Apple sought to see were already circulating to reviewers and developers, after all, not just assumed to be in development like the iPhone and iPad successors.

Still, it isn’t all good news for Apple. Since Cupertino amended its original complaint to place stricter definitions on what products it thinks Samsung infringed upon in order to block the iPad 3 and iPhone 5 requests, the judge hinted that any request from Apple for an injunction of sales in the U.S. on new Samsung devices might not apply. That’s because a big part of a successful injunction request involves proving that consumers will be genuinely confused by the similarities between devices, and the judge suggested that “there is little likelihood” of confusion with new Samsung devices, since the iPad 2 and iPhone 4 may “soon be outmoded and reduced in price,” and “are not being sold (or very soon will not be sold) to the same class of purchasers who are likely to buy new Samsung products.”

Florian Mueller thinks seeking an injunction would be a risky move on Apple’s part, given what the judge has expressed. It stands a fair chance of being turned down, which might be a black eye for Apple for outside observers, Mueller says. Of course, even if an injunction is rejected, it shouldn’t affect Apple’s larger case against Samsung, which is really what Apple is more concerned with here.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• The rise of tablets in the enterprise
• Mobile Q1: All Eyes on Tablets, T-Mobile and AT&T
• A Media Tablet Forecast, 2011 – 2015

Mueller says that while the original complaint — filed by Apple on April 15 in U.S. District Court in Northern California — was “the most impressive multi-intellectual property rights complaint [he'd] ever seen,” it’s now “even bigger — the main document has 63 pages (previously 38) — and better.” The changes aim to paint Samsung’s infringement as blatant copycat behavior, asserting that Samsung, more than any other competitor, has been blatantly ripping off Apple designs since the very earliest days of the iPhone, circa 2007.

In addition to adding claims of specific infringement, Apple also strengthened language throughout its filing. For example, it replaced the word “misappropriated” with “copied” in at least one instance, and also cites many articles by prominent tech news publications that make specific reference to Samsung’s clear attempts at copying Apple product designs in articles about Samsung devices like the Galaxy Tab 10.1 and the Vibrant. Apple also added 14 specific Samsung product designations to the complaint by name, including the Galaxy Tab 10.1 and the Galaxy S II.

Part of the amendment is also intended to deflect Samsung’s requests to have advance access to unreleased iPhone and iPad products. Apple originally talked about its trade dresses (a legal term referring to the visual appearance of a product or its packaging) for the iPhone and iPad lines in general, but the altered complaint now makes specific distinctions about iPhone as a brand versus the iPhone 3G or iPhone 4, for example, which will help it deny the requests made by Samsung.

I asked Mueller about how this case compares to others, like the Nokia-Apple legal battle that recently resulted in a big settlement for the Finnish smartphone maker. He said that this case is unusual in that it seems to have escalated faster than most, thanks in part to Samsung’s rapid countersuit, which it filed not only in California but also in South Korea, Japan and Germany. It’s also unusual that Apple seems to be seeking “a preliminary injunction against the Galaxy product line,” which Mueller says could “force a settlement very early in the process.”

Mueller thinks that the case isn’t actually all that similar to the Nokia-Apple battle in particular, because he believes “Nokia has a much stronger smartphone-related patent portfolio than Samsung.” He does believe Apple is prepared to go far with this claim, however, since he thinks the company “has made the determination that fighting Android in general and Samsung’s alleged copying in particular is even more critical to its success than the supplier relationship [that the companies share].” Still, he thinks that existing business relationship “should facilitate a settlement” at some point before this case comes to a decision.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• A Media Tablet Forecast, 2011 – 2015
• Report: A Mobile Video Market Overview
• In Q3, the Tablet and 4G Were the Big Stories

But ForeSee’s clients aren’t small app developers with limited means to defend against patent infringement claims and little choice but to agree to demands for licensing fees; they’re major companies with lots of capital and legal expertise at their disposal, including Adidas, Best Buy and WE Energies, and with this declaratory judgment filing, ForeSee has gone on the offensive against Lodsys on their behalf.

FOSSpatents’ Florian Mueller explains that a declaratory judgment, which doesn’t incur any penalties but is crucial to setting precedent, is a smart way to begin the process of potentially invalidating all of Lodsys’ patents. ForeSee filed suit in Illinois before Lodsys actually filed against any of its clients, too, which means that Lodsys doesn’t get to set the stage in the Eastern District of Texas, where the company has filed against iOS developers, and where the law favors the patent holder. Mueller also notes that McDermott Will & Emery, a “top-notch law firm that does a lot of work for major technologies” will be representing ForeSee. The law firm previously engineered a successful patent settlement for its client Creative Technology against Apple, in fact, resulting in a $100 million payday for Creative.

I asked Chicago tech and intellectual property attorney Evan Brown of Internet Cases what he thought about his filing, and he suggested that it could be a litmus test to see just how far Lodsys is willing to take this thing:

A declaratory judgment action like this gives Lodsys the chance to test its own resolve, whether it wanted to or not. We have to think that it considered the possibility of a declaratory judgment action (any reasonable party that sends a threatening letter should be ready for that risk). But given that Lodsys was generally targeting the smaller fish rather than Apple itself, one is left to think it may not have thought it through as much as it should have. Needless to say, Lodsys probably wishes things were going more smoothly for it, what with Apple’s swift and firm letter talking about patent exhaustion, and now this lawsuit. Maybe Lodsys might realize it’s better to actually use a technology rather than just sue others over it.

Apple’s response to Lodsys’ initial threats only prompted Lodsys to step up its timeframe and sue seven independent app developers ahead of schedule, and we’ve heard nothing from Cupertino on the subject since. But Craig Hockenberry, one of the developers behind Twitterific, tweeted just prior to WWDC that affected devs can’t talk about what’s going on, so presumably Apple is acting behind the scenes.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• Mobile Q1: All Eyes on Tablets, T-Mobile and AT&T
• How to Ride the Freemium App Wave to Success
• How to Market Your iPhone App: A Developer’s Guide

The full text of the letter, which has been obtained by Macworld, is addressed to Lodsys CEO Mark Small, and is signed Bruce Sewell, Apple’s Senior Vice President & General Counsel. In the letter, Sewell acknowledges Small’s recent patent infringement claims against App Store developers, and states right up front that “Apple is undisputedly licensed to these patent and the Apple App Makers are protected by that license.” Apple states that Lodsys’ allegations have “no basis,” and articulates its intent to “defend Apple’s license rights.”

The letter from Apple goes on to assert that Small’s threats are likely the basis of “misapprehension regarding Apple’s license and the way Apple’s products work,” and assumes that the outstanding threats will be revoked as a result of the clarification Apple is making today. Apple acknowledges that it does indeed hold licenses for all four of the patents in Lodsys’ portfolio, and that the licenses it holds entitle Apple to “offer these licensed products and services to its customers and business partners, who, in turn, have the right to use them.”

The letter then goes into more detail about the specifics of U.S. patent law, and articulates exactly why the claims made by Lodsys are in error, according to the way in which the App Store and Apple Developer Agreement works.

Apple was clearly taking its time to make sure it had a comprehensive grasp of Lodsys’ position before firing a return shot, but the Mac-maker’s response could hardly be more assertive. The message is clear: Stand down or gear up for a full-scale legal battle with Apple, which is clearly not what Lodsys was bargaining for as it chose to pursue small developers with very limited resources. Unlike devs, Apple doesn’t have to consider backing down as the only way to keep the business afloat.

This is a welcome development in this in-app purchases licensing debacle, but it isn’t necessarily the end of the story. We’ve contacted Small for a response, but don’t expect him to issue a reaction before considering how best to formulate an answer from a legal perspective.

Related research and analysis from GigaOM Pro:
Subscriber content. Sign up for a free trial.

• How to Market Your iPhone App: A Developer’s Guide