Apple Inc. v. Samsung Electronics Co., Ltd.
839 F.3d 1034, 120 U.S.P.Q. 2d (BNA) 1400, 2016 U.S. App. LEXIS 18225 (2016)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
An appellate court must review a jury's factual findings for substantial evidence, giving deference to the jury's resolution of conflicting testimony and credibility determinations. It is impermissible for an appellate court to engage in its own fact-finding, rely on extra-record evidence to interpret claim terms, or fail to consider all four Graham factors, including objective indicia, when reviewing an obviousness determination.
Facts:
- Apple developed a patented system ('647 patent) for computer-based devices that could detect structures in data, such as phone numbers, and use an 'analyzer server' to link actions, like making a call, to the detected structure.
- Apple also created and patented a 'slide-to-unlock' feature ('721 patent) for portable devices with touchscreens, designed to prevent unintentional activation (i.e., 'pocket dialing') by requiring a user to move an unlock image across a predefined path.
- Additionally, Apple patented a graphical user interface for auto-correction ('172 patent) that displays the user's current typed text in one area while simultaneously showing both the typed text and a suggested replacement in a second, separate area.
- Samsung manufactured and sold various smartphones and portable electronic devices that included features for linking actions to recognized text, unlocking the screen with a sliding gesture, and providing auto-correct suggestions.
- Apple alleged that these features in Samsung's devices utilized its patented technology without a license, which formed the basis of the legal dispute.
Procedural Posture:
- Apple Inc. sued Samsung Electronics Co., Ltd. and its affiliates in the U.S. District Court for the Northern District of California for patent infringement.
- The district court granted Apple's motion for summary judgment that Samsung's accused devices infringed claim 18 of the '172 patent.
- Following a trial, the jury returned a verdict finding that Samsung infringed the '647 patent and the '721 patent.
- The jury also found that the asserted claims of the '721 and '172 patents were not invalid as obvious.
- Samsung filed post-trial motions for Judgment as a Matter of Law (JMOL), arguing for non-infringement of the '647 patent and invalidity of the '721 and '172 patents due to obviousness.
- The district court denied Samsung's JMOL motions and entered judgment in favor of Apple.
- Samsung, as appellant, appealed the district court's judgment to the U.S. Court of Appeals for the Federal Circuit.
- A three-judge panel of the Federal Circuit reversed the district court's denial of JMOL on the '647, '721, and '172 patents.
- Apple, as petitioner, filed a petition for rehearing en banc, which the full Federal Circuit granted.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Did the district court err in denying Samsung's motions for Judgment as a Matter of Law (JMOL) by finding that the jury's verdicts—that Samsung infringed the '647 patent and that the '721 and '172 patents were not obvious—were supported by substantial evidence?
Opinions:
Majority - Moore, J.
No. The district court did not err because the jury's verdicts were supported by substantial evidence, and an appellate court must defer to the jury's role as fact-finder. The court's primary role is to review the record presented at trial for substantial evidence, not to re-weigh evidence or make independent factual findings based on extra-record research. With respect to the '647 patent, the jury was presented with conflicting expert testimony regarding whether Samsung's code was 'separate' (the 'analyzer server' limitation) and created a 'specified connection' ('linking actions' limitation). The jury was entitled to credit Apple's expert, and his testimony constituted substantial evidence of infringement. Regarding the '721 patent, there was substantial evidence for the jury's implicit finding that a person of ordinary skill would not have been motivated to combine the prior art references, particularly given that one reference (Plaisant) concerned a wall-mounted controller and taught away from using sliders. Furthermore, powerful objective indicia of non-obviousness, including copying, industry praise, and commercial success, strongly supported the verdict of non-obviousness. Similarly, for the '172 patent, the jury's finding of non-obviousness was supported by substantial evidence based on its choice to credit Apple's expert testimony over Samsung's regarding what the prior art disclosed.
Dissenting - Prost, C.J.
Yes. The district court erred because the majority misapplies the substantial evidence standard of review, finding evidence in the record where there is none to support the jury's findings. The majority abdicates its appellate duty by upholding a verdict not supported by the record. For the '721 patent, Apple presented no actual evidence explaining why a skilled artisan would not be motivated to combine the prior art references; its expert merely stated the fact that one reference was for a wall-mounted device. For the '647 patent, the majority's analysis implicitly modifies the binding claim construction from a prior case, which requires a 'server' routine, not merely any code that is stored in a separate location.
Dissenting - Dyk, J.
Yes. The district court erred because the majority makes significant and improper changes to the law of obviousness that are inconsistent with Supreme Court precedent, particularly KSR v. Teleflex. The majority wrongly turns the legal question of obviousness into a purely factual one for the jury, lowers the bar for non-obviousness by protecting trivial advances, and incorrectly requires a specific motivation to combine prior art elements when solving a known problem is sufficient. It also elevates the role of secondary considerations beyond their intended, limited scope, especially where there is a strong prima facie case of obviousness. For the '647 patent, the majority improperly substitutes its own claim construction for the parties' agreed-upon interpretation that the 'analyzer server' must 'run' separately, not just be stored separately.
Dissenting - Reyna, J.
Yes. The court should not have granted en banc review because this case does not present a question of exceptional importance or a need to secure uniformity in the court's decisions. The en banc court is improperly using its authority merely to disagree with the original panel's application of established law to the specific facts. This action reduces the en banc process to a 'do over' based on disagreement with the result, which damages the judicial system. Furthermore, the majority misapplies the substantial evidence standard by failing to actually review whether the evidence presented is truly 'substantial,' instead treating any piece of supporting evidence as sufficient to uphold the verdict.
Analysis:
This en banc decision serves as a powerful reaffirmation of the highly deferential 'substantial evidence' standard for appellate review of jury verdicts in patent cases. It curtails the ability of Federal Circuit panels to reverse jury findings on factual questions, such as motivation to combine or the teachings of prior art, by re-weighing evidence. The ruling also solidifies the post-Teva prohibition against appellate courts using extra-record evidence for de novo fact-finding related to claim construction or infringement. This decision strengthens the role of the jury as the primary fact-finder and will likely make it more difficult to overturn infringement and validity verdicts on appeal, thereby increasing the finality of district court judgments.
Unlock the full brief for Apple Inc. v. Samsung Electronics Co., Ltd.