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Apple, Ericsson Squabble Over Cellphone Patents

SAN FRANCISCO (CN) - Apple told a federal judge on Wednesday that it shouldn't have to pay licensing fees for using Ericsson's patented wireless technology because the patents are invalid.

Attorneys for Apple and Ericsson sparred in Federal Court on Wednesday, arguing the merits of Apple's motion for summary judgment in a lawsuit challenging seven standard-essential wireless patents.

The motion directly challenged the patentability of two of Ericsson's patents - the '917 and '990 patents.

Apple attorney William Lee with Wilmer Hale argued both patents fail the two-step test the Supreme Court established to analyze patent eligibility in its 2014 ruling in Alice Corp. Pty. Ltd. v. CLS Bank Int'l.

The Alice test requires deciding whether a patent is based on an abstract idea or other patent-ineligible concept, and secondly determining whether the patent amounts to "significantly more" than the abstract idea.

Apple says the '917 patent, titled "Mobile Station Measurements With Event-Based Reporting," is based on the abstract concept of event-based reporting, "a basic building block of communication that has likely existed since the earliest human communication."

Ericsson attorney Benjamin Horwich with Munger, Tolles and Olson explained the '917 patent establishes a framework that allows cellphones to determine which base stations they should connect to in order to avoid overloading the system's resources.

"It's a very succinct representation that tells the phone what it needs to know about which cellphone towers to favor," Horwich said.

Lee argued the hardware required for the patent is "generic hardware" and nothing about the technology makes the "abstract idea" of event-based reporting patentable.

"All you're saying here is, 'Here's an idea of how we make them work together,' but there's no special hardware or algorithm," said U.S. District Judge James Donato.

Horwich replied the framework to distribute decision-making in an "extraordinarily efficient and flexible way" between base stations and cellphones is patentable under Alice.

"You can take these off-the-shelf components but configure them in a way that makes them efficient," Horwich said, addressing Apple's "generic hardware" claims.

Regarding the '990 patent, titled "Uplink Scheduling in a Cellular System," Lee argued that technology also fails the Alice test because it relies on the age-old concept of deciding to ignore a group command and instead follow an individual command.

The '990 patent allows cellphones to consider individual differences among devices when receiving group commands that tell them how much power to use to send messages, according to Ericsson's opposition to summary judgment.

When asked what fundamental concept this patent relies on, Lee pointed to the example of a student being asked to stay after class when all other students are dismissed at the end of class.

"The concept of ignoring the instruction to a group and following the individual instruction is an abstract idea," Lee said.

Horowich said the '990 patent is the kind of technology in which identifying the problem becomes the solution. The technology allows cellphones to determine what types of power control commands should be ignored, he said.

"What's inventive about this?" Donato asked. "This seems less innovative and creative than the '917."

Horowich responded that conventional thinking in the computer world demands that devices follow all commands, but the inventive part of this patent is "recognizing that certain commands that would normally be followed should not be followed."

After ending the hearing on summary judgment, Ericsson attorneys asked the judge to make Apple turn over information on nonmonetary benefits it receives through its contracts with cellphone carriers.

Apple argued the information is highly proprietary, but Ericsson countered it is essential for assessing damages because Apple has reaped unknown rewards from its ongoing alleged infringement of the patents.

Donato ordered Apple to look over its contracts with cellphone carriers, make certain sections of the agreements available to Ericsson and to estimate the value of nonmonetary benefits it receives through the contracts.

Apple must turn over the discovery to Ericsson within two weeks, Donato said.

Apple first sued Ericsson over the patents in January 2015, and Ericsson filed its own patent infringement lawsuit against Apple in the Eastern District of Texas in March 2015.

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