Apple Claims Its Former Engineer Helped Invent Tech in Qualcomm Patent

[JetTester]

I sue you, you sue me, drama queens as far as the eye can see...

 

[solarmon]

Now there is an interesting twist..

Let me get this straight: the two companies, worth together more than $1 trillion, pay an inventor $1,500 for filing a patent?

What’s wrong with this picture? Why would anyone invent anything, when your reward is to be hauled into court to face cross examination by attorneys making $500/hour, while you’re wondering how to pay for your hotel room?

This is the death of the inventor. We are back to Medival Times, when the lords owned everything. Right at a point in history where we need innovation more than ever. We are doomed.

 

[Teslapple]

How so?

As already stated by others, "woulda coulda shoulda"

 

[scrapesleon]

this gonna back fire somehow

 

[BuffaloTF]

I know that. But that has nothing to do with the conversation between me and bornagainapple. My quote is a refutation of this: "Oh, I bet Apple has had this tucked away for some time now, just waiting for the right momeant to use it." ← That is just fantasy.

Yeah, the literal interpretation of that is kind of a fantasy... but it's also exactly why emails are retained by businesses -- just for the right moment when it's needed, legally or for audits.

 

[laptech]

An agreement could require that patent rights be assigned to one party or the other. But it wouldn't change U.S. patent law regarding inventorship. If someone is an inventor (or joint inventor), they are an inventor and are required to be listed as such on the patent application. It's about conception. Did they conceive the invention?

Steve Jobs could, through employment contracts, require that his employees assign to him the patent rights for anything they invent while working for him. But he couldn't (enforceably) require that they list him, rather than themselves, as the inventor on patent applications if he wasn't and they were.

I believe this is the angle Apple are taking. They are trying to get their former employee listed on the patent and will then claim Qualcomm's patent case is voided because as part of an Apple employee's contract, anything they design whilst in the employ of Apple, said design becomes the ownership of Apple, thus the patent, or part of the patent belongs to Apple and as such have a right to use the patent.

 

[ani4ani]

An agreement could require that patent rights be assigned to one party or the other. But it wouldn't change U.S. patent law regarding inventorship. If someone is an inventor (or joint inventor), they are an inventor and are required to be listed as such on the patent application. It's about conception. Did they conceive the invention?

Steve Jobs could, through employment contracts, require that his employees assign to him the patent rights for anything they invent while working for him. But he couldn't (enforceably) require that they list him, rather than themselves, as the inventor on patent applications if he wasn't and they were.

You’re absolutely right. One way or another Apple would have had the inventor name on the filing if their employee was one of the inventors. The fact he wasn’t suggest he wasn’t the inventor or his contribution was not inventive...or Apple cocked up?

 

[cmaier]

As already stated by others, "woulda coulda shoulda"

Except that the law doesn’t require him to file a patent. If he is an inventor he needs to be listed as such on the patent. It’s Qualcomm’s responsibility not his.
[doublepost=1551888809][/doublepost]

You’re absolutely right. One way or another Apple would have had the inventor name on the filing if their employee was one of the inventors. The fact he wasn’t suggest he wasn’t the inventor or his contribution was not inventive...or Apple cocked up?

How would apple know about Qualcomm filing the patent? applications aren’t even published for at least 18 months and may not be published until the patent issues.

 

[EdT]

Oh, I bet Apple has had this tucked away for some time now, just waiting for the right moment to use it.

Edited for spelling.

Anytime you go to trial you risk losing even if the facts agree with you. Trials can end up being personality competitions, especially when you are talking about technology. People don’t understand why or how technology works, so they may end up being decided by which lawyers the jury liked more. If Apple knew about this they should have been using it as part of their defense from day 1, in the hope that if not during the first trial they eventually get a competent judge or jury.

 

[techwhiz]

Now there is an interesting twist..

No it isn't.
Even if he thought of it, we have a doctrine of patents.
Just because you have an idea means nothing.
Can they actually show that they had it in a product before the patent was filed?
If they could, they would have done so already.

I understand that the person was possibly in the employment of Apple, but he would have had to do substantial, not just incidental work to be listed on the patent. Also if it was a Qualcomm/Apple development, then they should have had in place an IP agreement.

I haven't heard anyone say an agreement exists. If nothing else a NDA would be in place with clauses about inventions and ideas. My company doesn't go into any detail about products without an NDA and IP agreement.

 

[cmaier]

No it isn't.
Even if he thought of it, we have a doctrine of patents.
Just because you have an idea means nothing.
Can they actually show that they had it in a product before the patent was filed?
If they could, they would have done so already.

I understand that the person was possibly in the employment of Apple, but he would have had to do substantial, not just incidental work to be listed on the patent. Also if it was a Qualcomm/Apple development, then they should have had in place an IP agreement.

I haven't heard anyone say an agreement exists. If nothing else a NDA would be in place with clauses about inventions and ideas. My company doesn't go into any detail about products without an NDA and IP agreement.

Not a single thing you have said is correct.

1) a patent is required to list as inventors every person who contributed to the conception or reduction to practice of the invention.
2) apple says they have an email from him to Qualcomm, predating the patent application, that shows he is an inventor
3) if he is an inventor, he needs to be added to the patent. At that point, he can license the patent to apple or assign his rights to the patent to apple.
4) an IP agreement does not solve this for Qualcomm.

 

[apolloa]

This is a very weak argument from Apple, and they are on dodgy ground with it as they NEVER accredit anyone who’s tech they steal. Ever.

It’s also a sign I then that this case from then is weak with no proof, and is yet just another classic Apple case to force component suppliers to charge them rock bottom prices. Which is what most if not all of these cases are for Apple, means more profit for them.

 

[Khedron]

If Apple could set the narrative that both corporations involved in innovation in the mentioned tech area with collaboration, resource sharing, even resource exchange on goodwill that mutually beneficial for both while contributing to the overall tech community then Qualcomm case mentioning Apple is stealing it's idea may be weakened in one angle at least. If the said engineer corroborates with some meaningful evidences in favour of Apples argument then it can strengthen the case in favour of Apple, though this alone may or may not clinch the case one way or the other...

It's like when you tell the judge you thought you were friends with someone that lets you unilaterally pull out of legally binding contracts.

Oh wait, that doesn't work either.
[doublepost=1551900409][/doublepost]

2) apple says they have an email from him to Qualcomm, predating the patent application, that shows he is an inventor

No they don't, Apple claim they have a single email in which their employee discusses the general topic that the patent relates to

 

[ike1707]

We are doomed.

https://goo.gl/images/GvVobK

 

[Carnegie]

It may be worth noting that the patent in question (the '949 patent) is one of the patents which Qualcomm originally asserted in its complaint to the USITC, but which it voluntarily dropped during the course of the USITC's investigation and before a determination (of validity or infringement) was made regarding it. Was the decision to drop that patent, and not have an administrative law judge rule on the validity of it, based in whole or in part on this issue? Maybe, maybe not.

Qualcomm originally asserted the same 6 patents in the present case (in the SD of CA) and before the USITC. Two of those patents were dropped in both cases. One more was dropped in this district court case but not before the USITC, and one more was dropped before the USITC but not in this district court case. The latter is this '949 patent. It's the only one still at issue in this case which wasn't ruled on (both as to validity and infringement) by an administrative law judge in the USITC case.

Also, for what it's worth, this is what Apple said about the issue in its trial brief for this district court case:

C. The ’949 Patent Is Invalid Under the Derivation and Non-Joinder Doctrines

The ’949 patent is invalid pursuant to the derivation and non-joinder doctrines. The claimed invention of the ’949 patent was derived from a person who is not a named inventor. Specifically, Apple will show that Arjuna Sivasithambaresan (“Siva”), a former Apple employee, conceived of the inventive concepts of the ’949 patent—separate receipt of the image header and data segments, and direct scatter loading. Apple will also show that Mr. Siva communicated his inventive ideas regarding separate receipt and direct scatter loading to Qualcomm.

The ’949 patent is invalid under the doctrine of non-joinder because Qualcomm failed to name Mr. Siva as a co-inventor on the ’949 patent, despite the fact that: (1) Mr. Siva significantly contributed to the conception of the ’949 patent by conceiving of separate receipt and direct scatter loading; (2) the quality of Mr. Siva’s contribution is significant when measured against the ’949 patent; and (3) Mr. Siva did more than merely explain well-known concepts or the current state of the art to Qualcomm’s engineers.

D. The ’949 Patent Is Unenforceable Due to Inequitable Conduct

The ’949 patent is unenforceable due to inequitable conduct. Three of the named inventors—Messrs. Haehnichen, Malamant, and Kim—received communications describing Mr. Siva’s idea before any alleged conception date. By swearing to the Patent Office that they were the “original and first inventor(s) of the subject matter which is claimed and for which the patent is sought” without naming Mr. Siva (or anyone from Apple), Messrs. Haehnichen, Malamant and Kim knowingly and intentionally misled the Patent Office regarding the proper identity of the named inventors. Because omission of Mr. Siva as inventor was a material misrepresentation, the '949 patent is unenforceable.

[doublepost=1551902933][/doublepost]And this is what Qualcomm says about the issue in its trial brief (citations omitted):

(d) The Asserted Claims Are Not Invalid Due to Derivation or Non-Joinder

Apple further contends the ’949 Patent is invalid for derivation or failure to name a co-inventor on the patent because Apple contends an Apple engineer named Arjuna Siva had first come up with the idea for the ’949 Patent and communicated it to Qualcomm. In order to show derivation, a party must show both “(1) prior conception of the invention by another and (2) communication of that conception to the patentee that is sufficient to enable him to construct and successfully operation the invention. Prior conception must be proven with clear and convincing evidence. Similarly, “the burden of showing misjoinder or nonjoinder of inventors is a heavy one and must be proved by clear and convincing evidence.”

Apple cannot and will not prove derivation or non-joinder by clear and convincing evidence because the invention of the ’949 Patent was not conceived of or invented by Mr. Siva or anyone else at Apple. *REDACTION* (“One who merely suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not a joint inventor.”). The evidence will further show that *REDACTION* , and fail to disclose the limitations of the invention of the ’949 Patent including that “the image header and each data segment be[] received separately” and “scatter load each received data segment based at least in part on the loaded image header, directly from the hardware buffer to system memory.”2

For the same reasons, Mr. Siva should not be named as an inventor, and there is no invalidity for failure to name an inventor. *REDACTION* , and therefore did not contribute significantly (or at all) to the conception of the claimed invention.

...


2 Apple also bases an inequitable conduct defense on its contention that Mr. Siva should have been named as an inventor, but the parties have agreed this will be tried to the Court at a later date if necessary.

 

[cmaier]

It may be worth noting that the patent in question (the '949 patent) is one of the patents which Qualcomm originally asserted in its complaint to the USITC, but which it voluntarily dropped during the course of the USITC's investigation and before a determination (of validity or infringement) was made regarding it. Was the decision to drop that patent, and not have an administrative law judge rule on the validity of it, based in whole or in part on this issue? Maybe, maybe not.

Qualcomm originally asserted the same 6 patents in the present case (in the SD of CA) and before the USITC. Two of those patents were dropped in both cases. One more was dropped in this district court case but not before the USITC, and one more was dropped before the USITC but not in this district court case. The latter is this '949 patent. It's the only one still at issue in this case which wasn't ruled on (both as to validity and infringement) by an administrative law judge in the USITC case.

Also, for what it's worth, this is what Apple said about the issue in its trial brief for this district court case:


[doublepost=1551902933][/doublepost]And this is what Qualcomm says about the issue in its trial brief (citations omitted):

I feel like i know you...

 

[Carnegie]

It's like when you tell the judge you thought you were friends with someone that lets you unilaterally pull out of legally binding contracts.

Oh wait, that doesn't work either.
[doublepost=1551900409][/doublepost]

No they don't, Apple claim they have a single email in which their employee discusses the general topic that the patent relates to

As for the first part, is that a reference to the situation between Apple and Qualcomm? I'm not sure whether you're suggesting that Apple unilaterally pulled out of legally binding contracts with Qualcomm.

As for the second part, Apple claims more than that. It claims that Mr. Siva conceived of (and communicated to Qualcomm) specific elements which are included in each of the claims (one independent, two dependent) of the '949 patent which Qualcomm is asserting against Apple. If Apple can demonstrate that, it's kinda important (in so far as this case goes).
[doublepost=1551903485][/doublepost]

I feel like i know you...

LOL.

For the record, I'm not a patent attorney.

 

[cmaier]

As for the first part, is that a reference to the situation between Apple and Qualcomm? I'm not sure whether you're suggesting that Apple unilaterally pulled out of legally binding contracts with Qualcomm.

As for the second part, Apple claims more than that. It claims that Mr. Siva conceived of (and communicated to Qualcomm) specific elements which are included in each of the claims (one independent, two dependent) of the '949 patent which Qualcomm is asserting against Apple. If Apple can demonstrate that, it's kinda important (in so far as this case goes).
[doublepost=1551903485][/doublepost]

LOL.

For the record, I'm not a patent attorney.

You should be.

 

[falainber]

To me this looks like Apple trying to affect the jury. As I understand, this particular court can't do anything about this patent. If Apple has problem with the patent they should file a complaint to the proper court/institution. As far as this court is concerned, the patent is valid and belongs to Qualcomm.

 

[cmaier]

To me this looks like Apple trying to affect the jury. As I understand, this particular court can't do anything about this patent. If Apple has problem with the patent they should file a complaint to the proper court/institution. As far as this court is concerned, the patent is valid and belongs to Qualcomm.

“As you understand it” is wrong. The court certainly can declare the patent invalid due to improper inventorship, or unenforceable due to inequitable conduct, just as apple pleaded. The patent is PRESUMED valid, but Apple is entitled to challenge that presumption. And Qualcomm needs to prove it owns the patent.

 

[Carnegie]

To me this looks like Apple trying to affect the jury. As I understand, this particular court can't do anything about this patent. If Apple has problem with the patent they should file a complaint to the proper court/institution. As far as this court is concerned, the patent is valid and belongs to Qualcomm.

This issue goes to patent validity, which is definitely something this jury will be asked to decide.

It may also go to enforceability, which this court may decide if infringement and validity are found.

In other words, this court certainly can do something about it if Apple is able to demonstrate what it claims.
[doublepost=1551905008][/doublepost]

You should be.

Thanks, but I've long thought...

(1) Law school tuition should be paid one check at a time, as needed, to competent attorneys with the right specific expertise.

(2) The law, as a personal interest or investigated as needed based arising needs, is likely less stressful than the law as a profession.

Maybe when I tire of everything else I might want to do, I'll go to law school. For now I'm happy writing checks to you guys as needed.

 

[cmaier]

This issue goes to patent validity, which is definitely something this jury will be asked to decide.

It may also go to enforceability, which this court may decide if infringement and validity are found.

In other words, this court certainly can do something about it if Apple is able to demonstrate what it claims.
[doublepost=1551905008][/doublepost]

Thanks, but I've long thought...

(1) Law school tuition should be paid one check at a time, as needed, to competent attorneys with the right specific expertise.

(2) The law, as a personal interest or investigated as needed based arising needs, is likely less stressful than the law as a profession.

Maybe when I tire of everything else I might want to do, I'll go to law school. For now I'm happy writing checks to you guys as needed.

Who me? Nah. I’m just a poor back-woods engineer or something.

 

[ani4ani]

Except that the law doesn’t require him to file a patent. If he is an inventor he needs to be listed as such on the patent. It’s Qualcomm’s responsibility not his.
[doublepost=1551888809][/doublepost]
How would apple know about Qualcomm filing the patent? applications aren’t even published for at least 18 months and may not be published until the patent issues.

Not the case...before a patent is granted it can be scrutinised by anyone if they wish, any company worth its salt is constantly reviewing the filings of its peers and competitors.

 

[cmaier]

Not the case...before a patent is granted it can be scrutinised by anyone if they wish, any company worth its salt is constantly reviewing the filings of its peers and competitors.

That’s not true. It’s not published until it’s publsihed and if you aren’t filing foreign counterparts it may not be published until it issues. Why are you making things up?

122 - Confidential status of applications; publication of patent applications
(a) CONFIDENTIALITY.— Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.
(b) PUBLICATION.—



(1) IN GENERAL.—


(A) Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.


(B) No information concerning published patent applications shall be made available to the public except as the Director determines.


(C) Notwithstanding any other provision of law, a determination by the Director to release or not to release information concerning a published patent application shall be final and nonreviewable.


(2) EXCEPTIONS.—


(A) An application shall not be published if that application is—


(i) no longer pending;


(ii) subject to a secrecy order under section 181 ;


(iii) a provisional application filed under section 111(b) ; or


(iv) an application for a design patent filed under chapter 16 .


(B)


(i) If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, the application shall not be published as provided in paragraph (1).

 

[bokdol]

You need to read up on your history cough cough.

what did i qoute. and who had the gui first?