Docket No. 2015-1171, 2015-1195, 2015-1994
PROST, DYK, REYNA
February 26, 2016
Update: See Oct. 7, 2016 en banc opinion reversing this opinion.
Brief Summary: DC decisions were affirmed-in-part and reversed-in-part. Notably, Samsung’s appeal of DC denial of JMOL of non-infringement of Apple’s ‘647 patent ($98+ million in damages) was reversed, and Apple’s ‘721 patent (almost $18 million in damages) was found to be obvious.
Summary: Samsung appealed jury finding of infringement and award of over $119 million in damages (damages and ongoing royalties) regarding US 5,946,647; 8,046,721; and 8,047,172. Apple appealed finding that Samsung did not infringe US 6,847,959 and 7,761,414. Apple also appealed jury finding that it infringed Samsung’s US 6,226,449 but not US 5,579,239 (which Samsung appealed). The opinion explains this is the third appeal in this case (Apple, FC 2012 (granting a preliminary injunction); Apple, FC 2015 (vacating DC denial of Apple’s request for a permanent injunction)). Regarding the ‘647 patent ($98+ million damages), the term “analyzer server” of claim 9 was construed by the DC after, on the last day of trial, the FC construed the term in Apple v. Motorola (FC 2014), and denied Samsung’s request for JMOL of non-infringement. But the FC panel disagreed with this denial based on that construction. Samsung’s motions for JMOL of invalidity and non-infringement of the ‘721 patent were denied (almost $18 million in damages were awarded, including for willful infringement). The FC panel concluded the DC should have granted JMOL to Samsung because the prior art did not teach away (“‘mere disclosure of more than one alternative’ does not amount to teaching away from one of the alternatives where the reference does not ‘criticize, discredit, or otherwise discourage the’ solution presented in the disclosure” (SightSound Techs., FC 2015; In re Gurley, FC 1994)), is “analogous” (In re Clay, FC 1992 (“from same field of endeavor, regardless of the problem addressed…if the reference is not within the field of the inventor’s endeavor,…the reference still is reasonable pertinent to the particular problem with which the inventor is involved” (Wyers, FC 2010)), and evidence of secondary considerations (long-felt but unsolved need, industry praise, copying, commercial success) was weak (W. Union, FC 2010). The ‘172 patent, “cover[ing] the ‘autocorrect’ feature, was found by the jury not to be invalid and to be infringed (almost $3 million in damages), but the FC panel found Samsung’s motion for JMOL of invalidity should have been granted because, e.g., “[c]onsidering the ‘reality of the circumstances-in other words, common sense,’ a skilled artisan would have considered Xrgomics to be within the scope of the art searched” (In re Oetiker, FC 1992), “[t]here is a strong prima facie case of obviousness”, and the evidence of secondary considerations (e.g., no nexus between claims and commercial success) was weak. The judgment of non-infringement of the ‘959 and ‘414 patents were affirmed; the validity of these patents was not addressed. Samsung argued the DC erred in construing “means for transmission” in claim 15 (“[t]he specification of the ‘239 patent does not require any software for transmission”) but the FC panel agreed with the DC (Cardiac Pacemakers, FC 2002), and its conclusion of non-infringement. The FC panel also affirmed the DC denial of JMOL of non-infringement, and judgment of infringement, of Samsung’s ‘449 patent, was also affirmed.