En banc decision regarding Docket Nos. 2015-1171, 2015-1195, 2015-1994
PROST, DYK, REYNA
October 7, 2016
Brief Summary: DC’s judgments regarding the ‘647, ‘721, and ‘172 patents were affirmed and reinstated and the original opinion vacated regarding the same (but not as to US 6,847,959; 7,761,414; 5,579,239; and 6,226,449). DC decision of no willful infringement of the ‘721 patent was remanded for consideration under the new Halo standard (US 2016).
Summary: In its Feb. 26, 2016 decision, Samsung’s appeal of the DC’s denial of JMOL of non-infringement of Apple’s 5,946,647 patent ($98+ million in damages; relating to linking actions or commands relating to phone numbers, addresses, and dates) was reversed; the DC’s denial of Samsung’s JMOL that claim 8 of Apple’s 8,046,721 patent (almost $18 million in damages; relating to touch-sensitive displays) would have been obvious was reversed (the FC panel finding the prior art did not teach away); and DC’s denial of Samsung’s motion for JMOL of invalidity for obviousness regarding Apple’s 8,074,172 patent (almost $18 million in damages; relating to “‘autocorrect’ recommendations”) was reversed. This opinion follows Apple’s petition for rehearing en banc. The end result is that the DC’s judgments regarding the ‘647, ‘721, and ‘172 patents were affirmed and reinstated and the original opinion vacated regarding the same (but not as to US 6,847,959; 7,761,414; 5,579,239; and 6,226,449).
Apple argued that in reversing the jury finding of infringement of the ‘647 patent the FC panel relied on “extra-record evidence ‘none of which was of record and that the panel appears to have located only through independent research’…to modify the agreed to an unappealed claim construction” and to consider “the factual question whether Samsung’s phones met the ‘analyzer server’ limitation” and the en banc FC agreed. The opinion explained that “[t]he dissents take Apple’s statement [by counsel] out of context” and “[c]laim construction was not appealed and we do not agree that Apple agreed to the panel’s change to the construction of the analyzer server.” It also concluded there was “substantial evidence to support the jury’s finding that [Samsung’s] accused devices meet the ‘analyzer server’ limitation” (“the jury was in the best position to determine whether it found Dr. Mowry or Dr. Jeffay more persuasive” (MobileMedia, FC 2015)). It similarly found the DC properly denied Samsung’s request for “JMOL of non-infringement based upon the ‘linking actions’ limitation” (“In the Ninth Circuit, JMOL ‘is proper when the evidence permits only one reasonable conclusion and the conclusion is contrary to that of the jury.”)
Regarding infringed claim 8 of the ‘721 patent, “the parties dispute[d] whether a person of ordinary skill in the at would have been motivated” to combine the prior art. “Samsung argue[d] ‘there was no evidence of any kind suggesting [the prior art] would lead inventors not to combine” it (“a person of ordinary skill would be highly interested in both references…just a very routine thing to think about in terms of interaction design.”) Apple argued “that a skilled artisan designing a mobile phone would not have been motivated to turn to a wall-mounted air conditioning controller to solve the pocket dialing problem” and “would not have been naturally motivated to combine” the references. The en banc court concluded that “the jury’s implicit fact findings” supported a finding of no motivation to combine and that “substantial evidence supports this implied fact finding” (“[t]he question for our review”; also finding substantial evidence of record supporting industry praise, copying, commercial success, and long-felt need). And its “review de novo [of] the ultimate legal determination” resulted in its conclusion of nonobviousness (“[c]ommon sense and real world indicators indicate that to conclude otherwise would be to give in to hindsight”). The DC decision of no willful infringement of the ‘’721 patent was remanded for consideration under the new Halo standard (US 2016).
The DC decisions regarding the ‘172 patent (infringement, denial of Samsung’s request for JMOL that claim 18 would have been obvious) were also affirmed. The en banc FC saw “no error in the [DC’s] weighing of the Graham factors” and found Apple presented sufficient “evidence of objective indicia or non-obviousness”, noting that “[e]ven in cases in which a court concludes that a reasonable jury could have found some facts differently, the verdict must be sustained if it is supported by substantial evidence of record that was before the jury” and it is “beyond the [appellate court’s] role to reweigh the evidence or consider what the record might have supported, or investigate potential arguments that were not meaningfully raised.” The DC’s denial of Samsung’s motion for JMOL and its finding of infringement were therefore affirmed.
Judge Prost (e.g., additional briefing should have been allowed, KSR “significantly reduced the evidentiary burden necessary to establish a motivation to combine” to include “any need or problem…not just the problem faced by the inventor”, “the majority’s elevation of secondary considerations above their historic role…less importance when there is little doubt as to obviousness”), Judge Dyk (e.g., additional briefing should have been allowed since “significant changes to the law of obviousness” were made and agreeing with Chief Judge Prost’s dissent), and Judge Reyna (e.g., en banc review should not have been granted) dissented.