This is the one you have been waiting for: Kirtsaeng v. John Wiley & Sons, Inc. [PDF]. Mr. Kirtsaeng has prevailed. Hugely. I'll work on a text version for you next, but I didn't want you to have to wait one second longer to hear the news.

Mr. Kirtsaeng, for any here who are new, is from Thailand, and he came here to study at Cornell. To fund his education, he had his family buy books in Thailand published abroad, send them to him, and he then resold them in the US. He made about $100,000 that way, and the publisher took note. John Wiley & Sons sued him for copyright infringement, and at the district court level and at the appeals court, they prevailed. The Supreme Court, however, overturned, saying that once the publisher sold its books, that was the end of their control over them, thanks to the first sale doctrine. The court noted that there is no geographical language limiting it just to the US: Putting section numbers to the side, we ask whether the "first sale" doctrine applies to protect a buyer or other lawful owner of a copy (of a copyrighted work) lawfully manufactured abroad. Can that buyer bring that copy into the United States (and sell it or give it away) without obtaining permission to do so from the copyright owner? Can, for example, someone who purchases, say at a used bookstore, a book printed abroad subsequently resell it without the copyright owner's permission?

In our view, the answers to these questions are, yes. We hold that the "first sale" doctrine applies to copies of a copyrighted work lawfully made abroad. This was a case where amici briefs seem to have influenced the court.

Motorola has now filed its response to Apple's appeal of Judge Richard Posner's decision to toss out Apple's claims against Motorola (and vice versa), and it adds its own cross appeal [PDF] on the vice versa part -- especially challenging the implication of Judge Posner's ruling that there can be no injunctive relief for FRAND patent owners ever, as a categorical rule.

A blanket denial of the right to seek injunctive relief, Motorola argues, violates patent law, contradicts eBay v. MercExchange [PDF], where the US Supreme Court held that it was error to come up with a categorical rule that "injunctive relief could not issue in a broad swath of cases", and violates the original expectations of donors of technology to standards bodies. In fact, it says any such rule would violate the US Constitution, which provides that Congress shall have power to secure exclusive rights for inventors, and in the Patent Act Congress came up with, it says every grant to a patentee includes the right to exclude others. Motorola asserts that it has never waived its rights to injunctive relief and states that there is no language in its ETSI agreements requiring it to do so. Motorola argues that there should continue to be a case-by-case analysis under eBay, with judges having discretion to make such decisions based on the particular facts of each case.

Fair warning, though: the PDF is 737 pages. The actual brief is one-tenth that, 73 pages, so I've done that part of it for you as text. The rest is a collection of patents at issue, judge's orders in this case, and one from a related Apple v. Motorola litigation in Wisconsin, which is where this case began, before being transferred to Illinois and Judge Posner.

Thursday was the hearing on abusive patent litigation by the House Judiciary Committee's Subcommittee on Courts, Intellectual Property and the Internet. By abusive patent litagation, they mean trolls -- or as one calls them when one holds one's pinky genteelly in the air, NPEs, nonpracticing entities. I put out a call for one of Groklaw's own to attend and let us know what happened. Webster was able to attend, and he has provided an eyewitness account for us in his own inimitable style.

The chairman of the hearing, US Representative Bob Goodlatte, opened with a statement, as did several members of the subcommittee with a little speechifying of their own, and then the invited witnesses of the day each told about their company's experiences with abusive litigation, except for one, a lawyer whose firm represents trolls and who opined that the patent system is working well overall. If you click each of the following names of the witnesses, you can download as a PDF the written testimony each provided in advance:

• Mr. Mark Chandler, Senior VP, General Counsel and Secretary, Cisco Systems, Inc.
• Ms. Janet L. Dhillon, Exec. VP, General Counsel and Secretary, J.C. Penney Company, Inc.
• Mr. John G. Boswell, Sr. VP, Chief Legal Officer and Corporate Secretary, SAS Institute, Inc.
• Mr. C. Graham Gerst, Partner, Global IP Law Group, LLC
• Mr. Philip S. Johnson, Sr. VP and Chief IP Counsel, Johnson & Johnson
• Mr. Dana Rao, VP and Assoc. General Counsel for Intellectual Property Litigation, Adobe Systems, Inc.

Imagine how it is out there in the patent universe, when a company needs to have a specializing General Cousel for Intellectual Property Litigation. That's all he does, day in and day out. Assistant Professor Colleen Chien of Santa Clara University Law School has a recent study of patent trolls, with some sufficiently horrifying numbers, which should disabuse anyone of the notion that the patent system is working well overall, and she has an article, Patent Trolls by the Numbers on Patently O, which will provide the same effect on its readers. One of the witnesses, the lawyer from Cisco, tells about a recent attempt by Cisco, Motorola and NetGear to push back against a PAE, Innovatio, which was going against end users. You need to read the judge's dismissal [PDF] of the RICO claims they tried to bring, if you want to understand how PAEs operate and how the courts protect them.

There is now a video on this page for those with the stomach for to watch the entire hearing and who have the ability to view something in .wvx format, which doesn't include me.

I think Congress is stuck in the 80s, when Microsoft ruled the world. They don't realize most of us moved on a long time ago, and if they want a lot of citizens to watch these hearings, they need to provide it in the formats that most of us now use. And that very much isn't .wvx. I haven't used Windows Media for almost a decade, and I'm not starting again now. There really is no excuse for any government to force its citizens to use a proprietary format from a private company in order to participate in civic life, and that's especially true when you consider that you have to pay for Windows Media.

And with that sad detail aside, here's Webster's account of the day.

Here's Groklaw's response to the USPTO's request for suggested topics for discussion in the future by the Software Partnership. We just sent it it with the USPTO today.

We are also publishing here on Groklaw a more detailed supplement on those four topics, explaining in depth why we propose them, with references, on the theme, "Using Semiotics to Identify Patent-Eligible Software". The supplement is referenced in the document sent, if they wish to read more in-depth arguments, based on interest level.

I totally didn't expect this: The ITC has just posted a notice [PDF] that it wants input on the public interest in the case Samsung brought against Apple regarding alleged violations of Samsung's standards-essential patents. That's in Inv. No. 337-TA-794, In the Matter of Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers.

It has once again extended the deadline to announce its decision until May 31 as a result. It is asking for written submissions "from the parties and from the public" on the issues.

This is rather stunning. The Essential Patent Blog says this may "imply that the Commission could be leaning toward a finding that Apple infringes U.S. Patent No. 7,706,348 - a patent that Samsung has alleged is essential to the UMTS 3G cellular standard - and is now trying to decide what if any remedy it should order."

Today, the House Judiciary Committee's Subcommittee on Crime, Terrorism, Homeland Security and Investigations held a hearing to discuss "Investigating and Prosecuting 21st Century Cyber Threats". Of course, the Computer Fraud and Abuse Act took center stage.

I know this interests many of you because of the Aaron Swartz case. So here's the video of the entire hearing, including the testimony of Orin Kerr, which begins at around the 52:11 mark. His written testimony is here [PDF]. He's been trying to get reforms of the CFAA for many years. And EFF has materials on what you can do, should you choose to, here.

Microsoft has filed a motion asking that the contract issues, the FRAND ones, it has raised against Motorola in Seattle be handled without a jury. Why take a chance on a jury, I suppose, when the judge has seemed to lean your way for some time? Of course, they can't say that. Here's the argument:Neither party has demanded a jury in this case, so all remaining issues, including Motorola's breach of contract, should be tried to the bench. The Federal Rules require that any party seeking a jury make a timely demand, in writing and filed with the Court-and the failure to do so constitutes waiver. Motorola had two weeks from the filing of its Answer in June 2011 to make a jury demand, and it has never done so. Motorola noted in multiple status reports prior to its Answer that it was still considering a jury demand in this case, but decided not to make one. Motorola made a jury demand-explicitly limited to its H.264 patent infringement claims-in the consolidated patent case, in a pleading filed on the same day as its Answer in this case. Motorola was well aware of its jury right in the contract case, and deliberately waived it. The fact that Microsoft's breach of contract action, in which neither party demanded a trial by jury, has been consolidated with Motorola's patent case, in which Motorola demanded a jury trial only as to patent issues, does not cure Motorola's jury trial waiver in the contract action. Motorola apparently would now prefer that this case be tried to a jury rather than the bench, but the Rules do not provide that option. Because Motorola has waived any jury right in this case, the liability phase of Microsoft's breach of contract case, like the RAND determination phase, should be a bench trial. Of course, this is Microsoft, so that's only part of the story. Motorola, it turns out, has asked for a jury trial, and this motion is asking the judge to rule that it's too late because of various federal rules whereby one must dot one's I's and cross one's T's by a certain deadline.

Here's Groklaw's proposed response to the USPTO's request for suggested topics for discussion in the future by the Software Partnership, as it calls it. Thank you for your input, everyone. But please take a look at the result. We tried to incorporate everything that would strengthen the draft. This was a group project by the membership at Groklaw, and now we'd appreciate feedback from the world, before we send it off on Friday.

We came up with four topics for future discussion. You may think of others. Because we have to file this on Friday, and that means if you want to contribute a thought, please do it by Wednesday.

We are also publishing a more detailed supplement on those four topics, explaining in depth why we propose those four topics, providing some foundation and providing resources. This we will not sent to the USPTO, but it is referenced in the document we will send, if they wish to read more. If you think my decision on that is flawed, let me know. But all they asked for is topics. If we overwhelm them with a lot of what they didn't ask for, I worry that it would be counterproductive. The USPTO will be publishing the comments they receive, and so both documents will be available to the world, and people can read it or not based on their interest level, which is part of the purpose. I would particularly appreciate your help with the supplement.

Apple and Samsung, at the judge's request, have filed their joint status report [PDF] on the theme of whether the judge should stay Apple v. Samsung II until after the appeals court rules on Apple's appeal of Apple v. Samsung I. It's a joint report, filed together, but they agree on nothing. Samsung says they should wait; Apple says they shouldn't. Apple says that the two cases are distinct, with Apple II involving none of the same patents and "virtually none" of the same Samsung products.

Virtually none isn't none, so Apple adds that the only reason there is any real overlap is because Samsung "chose to accuse some the the same products in both cases." Like that doesn't count. Samsung is the counterclaim-plaintiff here. Apple says Apple shouldn't have to wait on Apple's claims just because Samsung has its own claims. "The Apple patents at issue in this case are from completely different families, cover different technologies, and solve different problems than those in the 1846 Case. None of the 1846 Case appeals, therefore, will resolve any issue affecting claim construction, infringement, or validity of the patents asserted in this case."

Not the world's best argument, unless you think the judge is willing to split the cases up. And if we can safely say that there is a judge who has had enough of the demands of both Apple and Samsung, I think we may say it is Judge Lucy Koh. But Apple wants to stop Samsung's new products from infringing Apple's patents, as it sees it, not the old ones in Apple v. Samsung I (where it wants an injunction -- hence the pending appeal), because it wants to avoid "irreparable harm" to Apple. That's a magic phrase that might work. Samsung keeps launching new products -- Apple calls it a "relentless launch" of infringing devices causing harm to Apple. That's the same as saying Apple can't compete as things now stand.

Samsung counters that there is too an overlap, not only in products but in legal facts and theories. Why risk having a do-over, if the appeals court rules that the judge is making errors that implicate how discovery and the trials are being administered or everyone is following legal theories the appeals court knocks down?

Gregg Keizer at ComputerWorld has some legal experts' reactions to the EU Commission's fine on Microsoft for failure to live up to its promises regarding making competing browsers available to users. The consensus is that it's incomprehensible that the Commission left oversight of the matter to Microsoft, who, of course, told them that all was going fine even when it was not: "The reports we were receiving had not signaled us of this breach," said Joaquin Almunia, the head of the antitrust agency, when asked how the oversight went undetected for over a year.

Those reports, it turned out, were coming from Microsoft. "We trusted in the reports on the compliance [from Microsoft]," said Almunia. "We were not trying to explore Windows Service Pack 1. But maybe we should have tried to complement their reports."

He admitted the Commission may have made a mistake letting Microsoft police itself, rather than appointing an external overseer. "In 2009, we were even more naive than today," Almunia added. Could be. But that's not the only problem.

What about the fact that in effect Microsoft has been able to "buy" noncompliance? By that I mean, the browser screen was supposed to be made available for 5 years. It wasn't made available for 14 months. Is the browser screen going to be kept in effect 14 months longer than the original cutoff date, to make up for that breach? According to this New York Times article, the date is still 2014. If so, Microsoft makes out like a bandit, once again. I've written to the EU Commission asking them about this issue, and I'll post any reply I receive.

There are more comments filed with the FTC in response to its request for input on the proposed agreement in In the Matter of Motorola Mobility LLC, a limited liability company, and Google Inc., a corporation; FTC File No. 121 0120. As I mentioned earlier, not everyone is jumping on the currently fashionable bandwagon holding that if you donate a patent to a standards body, you give up all rights to injunctions. In fact, it's easier to find opposition than support.

I showed you RIM's and CCIA's last time, two of the entities that don't think it's right to take away property rights from patent owners. And here are two more, the Washington Legal Foundation [PDF] and Qualcomm [PDF]. WLF argues that what the FTC proposes is in excess of its authority and its expertise, that it's a violation of the Noerr-Pennington doctrine and the First Amendment. Qualcomm says if the FTC makes this a template applicable to everyone else, it will result in more litigation, not less. I've done them both as text for you, and I have snippets from several more, who raise serious questions about the legality, including the Constitutionality, of what the FTC is proposing.

A date for oral argument in the WordPerfect antitrust battle, Novell v Microsoft, has been set. It's May 6, at 9 AM in Courtroom II at the Byron White US Courthouse in Denver, Colorado. So for those who were wanting to attend, synchronize our watches.

In the Seattle litigation between Microsoft and Motorola over how much Microsoft should pay for Motorola's FRAND patents, the presiding judge, Hon. James L. Robart, asked the parties to file short letter briefs by March 1st on how to interpret one section of the Google-MPEG LA license agreement, and they have now done so. As you will see, things have changed since Motorola revealed the terms of the Google-MPEG LA license. The judge now has questions about the language, after the January 28th hearing.

Does it cover Motorola as an affiliate of Google? Are all affiliates covered? Or only those specified by a licensee? And is the royalty cap provision in one section a stand-alone provision? Is there, in other words, a cap on how much Microsoft has to pay?

His request is related to his decision to reopen the trial that ended in November, now that Motorola has presented new evidence that didn't present at that trial. It didn't have to, by the way. The trial was to be held in parts, and November was part one. Now that the new arguments are on the table in connection with the next phase about exactly what the rate should be, however, the judge sees a need to go back and take another look, and I think you'll agree with him that what Motorola has presented changes the picture, and not in a way that favors Microsoft as much as before, which was trying for a low-ball figure. And that is now in question.

I told you that the jury's damages award in Apple v. Samsung would not stand. And this isn't even the end, but Judge Lucy Koh has just ruled on both Apple and Samsung's motions on damages. The jury's award, she says, was excessive, being based on wrong theories. In some cases, she can't even figure out what they did, and so she has ordered a new trial on damages for certain products and has reduced the award on those she could figure out herself to $598,908,892: Apple's motion for an increase in the jury's damages award is DENIED. The Court declines to determine the amount of prejudgment interest or supplemental damages until after the appeals in this case are resolved.

Because the Court has identified an impermissible legal theory on which the jury based its award, and cannot reasonably calculate the amount of excess while effectuating the intent of the jury, the Court hereby ORDERS a new trial on damages for the following products: Galaxy Prevail, Gem, Indulge, Infuse 4G, Galaxy SII AT&T, Captivate, Continuum, Droid Charge, Epic 4G, Exhibit 4G, Galaxy Tab, Nexus S 4G, Replenish, and Transform. This amounts to $450,514,650 being stricken from the jury's award. The parties are encouraged to seek appellate review of this Order before any new trial.

The jury's award stands for the Galaxy Ace, Galaxy S (i9000), Galaxy S II i9100, Galaxy Tab 10.1 WiFi, Galaxy Tab 10.1 4G LTE, Intercept, Fascinate, Galaxy S 4G, Galaxy S II Showcase, Mesmerize, Vibrant, Galaxy S II Skyrocket, Galaxy S II Epic 4G Touch, and Galaxy S II T-Mobile. The total award for these 14 products is $598,908,892. This jury goofed big time, more than Judge Koh has so far acknowledged, in my view, but this order absolutely states as clearly as words can achieve that their award was based on mistakes. I'll be curious to see what happens on appeal. And all the words spilled by Apple's lawyers and Apple supporters in the media on what a great job the jury did and how mean Groklaw was being to criticize the jury's verdict are now proven to be mistaken. And that's putting it nicely.

This jury goofed. The End. That's how it goes down in history. Because they did. And when you see something that you know is a mistake in a courtroom, you have a journalistic duty to call it like you see it, even if the whole world stands against you. That is what journalism is. And that is what Groklaw did. And now time has, once again, proven that Groklaw called it right.

I promised last week that I'd do Microsoft's amicus brief [PDF] filed in support of Oracle's appeal, sort of, in Oracle v. Google as text for you, and I've done it, finally.

I say sort of, because three times the brief, filed by Microsoft with EMC and NetApp, they say they take no position on whether or not Google infringed: Although amici do not take a position on the ultimate question of whether the software packages at issue in this case are copyrightable and whether any copyright has been infringed, amici urge this Court (1) to hold that the district court's copyright analysis was fundamentally flawed and (2) to decide this case in light of the settled copyright principles discussed below. The brief opens like this:This case tests the copyrightability of computer programs, specifically packages of source code that are part of the Java software platform used by third-party software developers to write applications for computers, tablets, smartphones, and other devices running Java. Wait just a minute. That's somewhat misleading. This is about 37 APIs, or more precisely their structure, sequence and order, not about software "programs" as most people understand that word. To understand that sentence, you need to know what APIs are. Because what Microsoft is asking for is a ruling that copyright protects nonliteral copying: Congress has determined that computer software is eligible for copyright protection. 17 U.S.C. § 101. Copyright protects computer software in several important respects. It covers the literal lines of code that comprise software, generally preventing their reproduction or distribution without permission from the rightsholder. But copyright also covers certain non-literal elements of the software as well. For example, the "structure, sequence, and organization" of a software product -- above and beyond the 1s and 0s that make up the program at its literal level or the exact words of the human-readable source code -- can, in some instances, be protected by the copyright in the work. As a result, copyright infringement in a software case can occur even when the defendant did not copy the underlying developers' code, where the defendant has copied some other, non-literal element of the software subject to copyright protection. That is, of course, exactly what SCO was asking for, before it flamed out and fell into oblivion. SCO used the same law firm as Oracle, Boies Schiller, so perhaps it's not astounding that they raised that same theory of copyright for SCO, an adventure Microsoft and Sun (now part of Oracle) funded, and here it is again, this time in Microsoft's mouth. I'd like to correct several misleading elements in this amicus brief. And we now have all the amicus briefs as PDFs.

Novell has now filed its reply brief [PDF] with the US Court of Appeals for the 10th District. Here's Microsoft's brief and Novell's opening brief in its appeal in the WordPerfect antitrust case against Microsoft.

Novell's arguments are clear and powerful. "A reasonable jury could find that Microsoft's conduct was anticompetitive because it harmed Novell, was not competition on the merits, and was reasonably capable of contributing significantly to maintaining Microsoft's monopoly power in the operating systems market," Novell writes. Nowhere, it says, does Microsoft defend Microsoft's conduct as competition on the merits. And Microsoft's brief neglected to mention to the appeals court, or respond to, the District Court's conclusion that a jury could have found Microsoft's justifications for its conduct "to be pretextual." Worse, Microsoft is asking the appeals court to confer immunity on it "for deception of competitors regardless of the effect on competition."

By withdrawing its support for namespace extension APIs, Microsoft destroyed Novell's economic viability, and it did it on purpose to harm a competitor. The Bill Gates email [PDF] proves it, they believe. The whole point of documenting APIs and releasing betas is to induce reliance, so Microsoft can't credibly argue that it didn't know this change on its part would impact Novell negatively.

And again, as in Novell's opening brief (p. 38, footnote 5), Novell references Microsoft using a "deceptive script" which it says is mentioned in the email thread in which a Microsoft employee reported to his company that WordPerfect appeared to be "OK" with the change. Novell says was used to justify the change and persuade companies like Novell that Microsoft had to make the change. (Cf. this Groklaw article and this email thread [PDF] for context.) I'm sure we'll hear more about this at oral argument. So if you attend the event, and I know some of you are trying to make arrangements to attend, please watch for this in particular.

And then Novell says Microsoft ignored a great deal of the evidence that favors Novell, and so did the District Court, but the applicable standard for summary judgment under Rule 50 is that the court was required to view the evidence in the light most favorable to Novell, which it failed to do. Microsoft also ignored evidence that its conduct harmed competition in the operating systems market, including evidence from binding Findings of Fact from the US v. Microsoft case, and the testimony and statements of Microsoft executives (cf. Groklaw). And finally, Microsoft disregarded applicable substantive law, Novell argues.