En Banc Federal Circuit finds substantial evidence to support jury verdict in Apple v. Samsung

Apple Inc. v. Samsung Electronics Co., Ltd., No. 2015-1171, 2015-1195, 2015-1994, 2016 U.S. App. LEXIS 18225 (Fed. Cir. Oct. 7, 2016) (Before Prost, C.J., Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Chen, and Hughes, J.) (Opinion for the court, Moore, J., joined by Newman, Lourie, O’Malley, Wallach, Chen, and Stoll, J.) (Concurring in the result without opinion, Hughes, J.) (Dissenting opinion, Prost, C.J.) (Dissenting opinion, Dyk, J.) (Dissenting opinion, Reyna, J.).

Apple sued Samsung and was granted summary judgment of infringement on U.S. Patent No. 8,074,172. At trial, the jury found that Samsung infringed U.S. Patent Nos. 5,946,647 and 8,046,721. Samsung appealed the grant of summary judgment as to the ’172 patent, and appealed the court’s denial of its motions for judgment of non-infringement as to the ’647 patent, and for obviousness of the ’721 and ’172 patents. In February, a panel of the Federal Circuit sided with Samsung, and reversed the denial of those motions, finding there was no infringement of the ’647 patent, and the ’721 and ’172 patents were obvious. In an en banc review of that decision, the Court reinstated the findings of the district court. The Court held, without additional briefing or argument, that substantial evidence supported the jury’s findings.

The ’647 patent discloses a system and method for linking actions to detected structures, such as phone numbers or addresses. The critical claim term at issue was an “analyzer server” to link actions to a structure. The en banc Court construed the term to require the server routine to be separate from the client it serves, using the claim construction from previous litigation. Apple, Inc. v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014)(“Motorola”). The Motorola construction was agreed to by the parties, was not appealed, and was the construction given to the jury. Thus, the Court rejected the panel’s decision to modify the definition of “analyzer server” using extrinsic evidence (e.g., a computing dictionary). The Court also rejected the dissent’s contention that Apple agreed to a new construction during oral argument before the February panel, finding that Apple’s statements had been taken out of context.

The Court found substantial evidence to support the jury’s finding of infringement. Testimony from Apple’s expert showed that Samsung’s shared library code (the “analyzer server”) remains at the library, and is separate, as the proper claim construction requires. While Samsung’s expert offered conflicting testimony, a reasonable jury could have credited Apple’s expert. Thus, there was no error in the district court’s conclusion that substantial evidence supported the jury verdict of infringement.

Samsung also appealed the construction of “linking actions.” The en banc again agreed with the district court that a “specified connection” to detected structures was required. Apple presented expert testimony to the effect that Samsung used a specified connection between detected structures and the computer subroutine that causes the CPU to perform the designated operations. This constituted substantial evidence to support the jury’s findings.

Next, the jury found that the ‘721 patent was infringed and nonobvious. The panel reversed. The en banc Court began its analysis by noting the presumption that the jury resolved underlying factual disputes in favor of the verdict winner (in a black box jury verdict). The Court also noted the need to examine all of the Graham factors during an obvious analysis.

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The Court focused on the problem the ‘721 patent intended to solve: unintentional activation or deactivation of the touch screen. The Court did not dispute that the two pieces of prior art cited against the patent disclosed all of the claimed elements, but it found there was no motivation to combine them. The Court again noted its limited role in appellate review, especially for questions of fact in light of KSR. It found that a reasonable jury could have inferred from Apple’s expert testimony that there was no motivation to combine all of the elements as claimed in the patent, i.e., that there was substantial evidence to support the jury’s findings.

The Court also discussed the fourth Graham factor, objective indicia of non-obviousness. It found copious evidence in favor of Apple for each of industry praise, copying, commercial success, and long-felt need. This supporting a finding of patent validity. The Court disagreed with Samsung’s contention, adopted in the dissenting opinions, that there was no nexus between the objective indicia of nonobviousness and the asserted patent claims. For all of these reasons, the en banc Court found that the ’721 patent was not obvious, and warned against hindsight reasoning.

The Court remanded the district court’s finding of no willful-infringement, based on the recent Supreme Court decision in Halo. Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016). Halo warranted a remand because it changed the standard for willfulness, lowering the bar. (A good faith defense at trial is no longer an absolute defense, depending on evidence of earlier or actual bad faith.)

The ‘172 patent, in turn, is directed to a method, system, and interface for providing “autocorrect” recommendations to users. The only feature in dispute was the requirement of a “keyboard,” and the district court granted summary judgment of infringement. The jury found the patent not invalid. The panel reversed, finding the patent obvious.

The en banc Court reversed the panel again, finding that Apple presented substantial evidence of patentability, again in the form of expert testimony. Apple’s expert testified that the scope of the prior art was such that it would not have been obvious for a person of skill in the art to make the patented invention. Again, the jury was reasonable in crediting Apple’s expert over the conflicting testimony of Samsung’s expert. Further, the jury could also have reasonably credited Apple’s expert testimony regarding objective indicia of non-obviousness, which favored validity. The Court reiterated its limited role as an appellate court – stating that it is beyond the role of the court to reweigh the evidence.

Judge’s Prost, Dyk, and Reyna comprised the February panel, and all three dissented. They object to a perceived procedural irregularity, in granting en banc review based on or mere disagreement with the findings of the panel. That is, there was purportedly no legitimate reason to hear this case en banc, e.g., overruling precedent or reconciling a conflict in the law as applied by the district courts.

Chief Judge Prost’s dissent focused on a perceived misapplication of the substantial evidence review. For the ’721 patent, the Chief Judge would find that there was no evidence to support a lack of motivation to combine because a mere statement from an expert that the prior art came from different fields was insufficient. He found that Samsung presented compelling evidence that there was a motivation to combine. Thus, the evidence presented by Apple was insufficient to satisfy the substantial evidence review. The evidence should not be deemed sufficient merely by deferring to the jury or characterizing appellate review as “limited.”

The Chief Judge also expressed that the majority has altered the law of obviousness by incorrectly heightening the important of secondary considerations (the objective indicia of nonobviousness). The Court has held only once that secondary considerations outweighed strong evidence of obviousness. Again referring to the ’721 patent, the Chief Judge would have found that Apple’s objective indicia were insufficient, especially in light of the purported nexus to the asserted claims, or lack thereof.

Judge Dyk echoed the concern that the law of obviousness had been changed. He made six observations. First, obviousness analysis is a question of law, not a factual issue for the jury. According to Judge Dyk, the majority’s opinion turned that legal question into a factual issue for the jury, based on its substantial evidence analysis. Second, the en banc decision failed to account for the trivial nature of the two claimed inventions. This is contrary to KSR because it would allow patent protection for “ordinary innovation.” Third, the Judge believes that the majority’s opinion now requires an explicitly disclosed motivation to combine the prior art in order to find obviousness. This would be contrary to KSR because the motivation to combine can be found in the solution to a known problem. Fourth, the majority erred in limiting the relevant technology to the field of the prior art. This directs future fact finders to ignore prior art if it is a different type of device, even if it is designed to solve the same problem. Fifth, Judge Dyk echoed the sentiment that the majority erred in unduly elevating the fourth Graham factor, objective indicia of nonobviousness. (The majority disagreed that it did so.) Sixth, Judge Dyk believes the majority erred by not comparing the closest prior art to the innovation.

Judge Reyna’s argued that the majority was trying to change the law of obviousness, especially regarding secondary considerations, in a “backdoor” manner, which the majority explicitly refuted.

The Federal Circuit has emphasized its deference to district court and jury findings, and its limited appellate function to decide whether substantial evidence supports the holdings below. It may be difficult to obtain “de novo” review of legal questions that intersect with factual underpinnings.

Note that the underlying dispute in this case does not concern design patents that were also asserted against Samsung, and which are currently being reviewed by the Supreme Court.

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