Docket No. 2013-1648, -1651
MOORE, MAYER, LINN
September 21, 2015
Brief Summary: Jury findings / DC decisions affirmed regarding $15 million damages infringement award to Summit 6 affirmed.
Summary: Jury found Summit’s US 7,765,482 five asserted claims relating to processing of digital content (e.g., photos) not invalid and infringed, and awarded Summit a “lump sum” $15 million in damages. The DC claim construction determinations were first considered in this opinion. The limitation “pre-processing…digital content…in accordance with one or more pre-processing parameters…being provided to said client device from a device separate from said client device…into a specified form in preparation for publication” was reviewed. The opinion first explained that Samsung had not waived its argument regarding the meaning of “being provided to” because it’s “argument on this issue has been sufficiently consistent” at the DC and before the FC (Finnigan, FC 1999). The FC panel found “being provided to” is not “used as a verb in claim 38” or “a step in the claimed method” but is “a phrase that characterizes the claimed pre-processing parameters” (it does not “require current or ongoing activity”; “use of the term ‘said’ indicates that this portion of the claim limitation is a reference back to the previously claimed ‘pre-processing parameters’” (Baldwin Graphics, FC 2008)). The DC rejection of Samsung’s argument that ongoing activity is required was found not to be error “[b]ecause the plain and ordinary meaning of the disputed claim language is clear” (“the plain meaning of this term does not clearly delineate the temporal limitation Samsung suggests”). The prosecution history was not found to limit the meaning of the term. The FC also disagreed with Samsung that the preamble is limiting because it was not shown to be “necessary to provide antecedent basis or that the applicant placed clear reliance on the preamble during prosecution” (Symantec, FC 2008; Pacing Techs., FC 2015). Thus, it found Samsung’s request for a new trial was properly denied. Samsung also appealed DC denial of it’s pre-verdict JMOL of no direct infringement but the FC panel found no error with this decision because “there exists legally sufficient evidentiary basis for a reasonable jury to find for Summit on this issue.” Samsung also argued the ‘482 claims are invalid in view of a prior art patent (Mattes) and that it presented clear and convincing evidence on this issue (Microsoft, US 2011). But the FC panel found no error with the DC’s denial of Samsung’s request because “[t]he jury heard expert testimony from both sides” and its “verdict is supported by substantial evidence” (e.g., Summit’s expert testified “that at least one element from each asserted claim was missing from” the cited reference.) Samsung also appealed DC denial of its JMOL motion to exclude one expert’s damages testimony as failing the Daubert standards (US 1993) but the FC panel found no error with that since the “damages methodology was based on reliable principles and was sufficiently tied to the facts of the case” (“That Mr. Benoit’s methodology was not peer-reviewed or published does not necessitate its exclusion.”) Samsung also unsuccessfully argued the damages verdict was incorrect since the expert’s “analysis was flawed and it should not have been admitted”. Summit argued that the “lump sum” award cannot compensate it for both past and future infringement but the FC panel disagreed, explaining that while it “has not directly addressed whether a jury can award lump-sum damages through the life of the patent”, it has “permitted such relief” (Telcordia, FC 2010; Whiteserve, FC 2012).