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25 May 2023PatentsLiz Hockley

Biden admin weighs in on Google and Apple tech disputes

US solicitor general urges Supreme Court to reject Apple and Broadcom appeal over patent suit | SG Prelogar also backs Google in breach-of-contract song lyrics case.

This week the Biden administration weighed in on two high-profile technology lawsuits, urging the Supreme Court to reject an appeal by Apple and Broadcom over a billion-dollar damages payout and deny a writ of certiorari in a case between Google and song lyric website Genius.

In a brief for the US as amicus curiae on Tuesday (May 23), Solicitor General Elizabeth Prelogar said that Apple and Broadcom’s bid to overturn a ruling that they had infringed patents belonging to California Institute of Technology (Caltech) was futile and should be denied.

Prelogar upheld the view of the US Court of Appeals for the Federal Circuit, that Apple could not challenge the validity of Caltech’s patents in court using arguments it had failed to raise during petitions for inter partes review at the US Patent and Trademark Office (USPTO).

During the case, which arose from a dispute over three Wi-Fi patents issued to Caltech, Caltech claimed that estoppel under Section 315(e)(2) of the America Invents Act, barred Apple and Broadcom from pursuing arguments that Apple had known about but had not included in its petitions for inter partes review, which the district court agreed with.

In a ruling handed down in 2020 by a California district jury, Apple was ordered to pay Caltech $837.8 million and Broadcom to pay the firm $270.2 million after they were found to have infringed patents related to Wi-Fi encoders found in Apple products including iPhones, Macbooks and iPads.

However, Apple and Broadcom convinced the Court of Appeals to order a new trial to review the damages amount, proving that the calculation was “legally unsupportable”.

Apple and Broadcom also asked the Supreme Court to review the case, saying that justices had misread the law and contending that estoppel under Section 315(e)(2) did not extend to the asserted grounds of invalidity that Apple had withheld from its petitions for inter partes review.

That assertion “lacks merit and does not warrant this court’s review”, argued Prelogar, who said that the firms “do not identify any division among the lower courts suggesting a need for this court’s guidance”.

Genius: An ‘atypical’ case

The Biden administration also made its position clear on Tuesday that the Supreme Court should not review a decision that handed a victory to Google after it was sued by song lyric website Genius for alleged copying and breach of contract.

The US Court of Appeals for the Second Circuit concluded that Genius’s breach-of-contract claims were a matter of copyright and could only be pursued in a copyright lawsuit.

Genius, which publishes lyric transcriptions of various songs compiled either by music fans or the artists themselves, had accused Google of stealing its work by displaying lyrics at the top of its search results.

Genius sued Google in a New York state court for breach of contract, telling the court that by visiting its website, Google accepted its terms of service and entered into a binding contract not to display, distribute, or copy its lyric transcriptions for commercial use.

Preloger however agreed with the court’s finding that the claims were pre-empted by Section 301(a) of the Copyright Act and dismissed the case. She argued it was unclear whether there was a valid contract between the firms, and that the breach-of-contract claims were atypical because access to Genius’s website is not conditioned on any express promise to abide by the terms of service. The case was therefore “a poor vehicle for clarifying Section 301(a)’s application to breach-of-contract claims generally”.

While she said the appeals court’s analysis of Genius’s contract claims “attached inadequate weight to the difference between a party’s voluntary promise and a prescriptive state-law command”, her conclusion was that there was little indication any other court would reach a different outcome.

Josh Rosenkranz, Genius attorney, told Reuters that “there is an entrenched circuit split on whether and when breach-of-contract claims are pre-empted” and that “review isn’t just warranted, but urgent”.

A Google spokesperson said the company does not “crawl or scrape websites to source lyrics”.

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