Smartphone Patent War: En Banc Federal Circuit Rebukes Earlier Panel Decision and Reinstates Jury Verdicts for Apple against Samsung
The US Court of Appeals for the Federal Circuit, sitting en banc, issued an unusual opinion overturning a panel decision for the purpose of reiterating the court’s limited appellate role and the need to give appropriate deference to district court and jury fact findings. Apple Inc. v. Samsung Elecs. Co., Ltd. et al., Case Nos. 15-1171; -1195; -1994 (Fed. Cir. Oct. 7, 2016) (Moore, J.) (Prost, C.J., dissenting) (Dyk, J., dissenting) (Reyna, J., dissenting). Each of the three panel judges from the earlier panel decision separately dissented and one judge did not participate. The eight remaining judges joined in or concurred with the majority opinion.
This appeal arose from the second of two US district court cases in the worldwide patent battle waged between Apple and Samsung in the smartphone, tablet and laptop market. Five Apple patents and two Samsung patents made it to trial in 2014. Three of Apple’s patents were found valid and infringed, while one Samsung patent was found valid and infringed. Both parties appealed.
The Panel Opinion
In a panel opinion earlier this year, the Federal Circuit reversed the validity findings of two of Apple’s patents and reversed the infringement finding as to the remaining Apple patent. The panel affirmed the district court opinion finding infringement of Samsung’s patent. Apple petitioned for en banc review, objecting to the panel’s reliance on extra-record evidence and its reversal of nearly a dozen jury factual findings.
The En Banc Opinion
Without seeking the benefit of additional briefing, the Federal Circuit granted Apple’s en banc petition for the stated purpose of “affirming our understanding of the appellate function” as being limited to only deciding issues raised by the parties, only relying on record evidence and providing the appropriate deference to district court fact findings. The court then issued its en banc decision, written by Judge Kimberly Moore, reinstating the district court judgment on every issue where it had been overturned by the original panel while maintaining the panel’s judgment on those issues where it had affirmed the district court.
The three dissenters, members of the original panel, strongly disagreed to the decision to grant en banc review, as well as the decision to not take en banc briefing. Judge Reyna’s dissent argued that en banc review is limited to maintaining uniformity among panel decisions or addressing important legal issues, and characterized the majority as instead merely objecting to the panel’s judgement calls.
Apple’s Data Linking Patent
Regarding Apple’s patent directed to systems and methods for linking data, e.g., an email address in a document, with “linking actions” performed when the data is selected by a user, e.g., opening an email app, the court considered whether Samsung’s products met the “analyzer server” claim requirement. This claim element had been construed by the Federal Circuit in another case to be “separate from” a client program that receives the data. The earlier panel opinion, relying on dictionary definitions not in the record, agreed with Samsung that the analyzer server must “run” separately from the client program and reversed the infringement judgment.
The en banc majority opinion, however, disagreed; instead construing the claim element as only requiring the server and client to be stored in separate locations in memory. The majority also disagreed with the panel’s finding that Apple conceded this point during oral argument, pointing to four other statements during oral argument that denied any such requirement.
The majority found substantial evidence based on Apple’s expert testimony that Samsung’s analyzer server program was both stored and used in a separate memory location. The majority conceded that Samsung provided contrary expert testimony, but framed this as a battle of the experts and therefore best left to the jury.
The dissents took the position that it was the majority, not their panel decision, that departed from the original claim construction. Chief Judge Prost’s dissent went further to argue that merely requiring separate storage locations to satisfy the claim element effectively eviscerated the limitation, since two programs cannot physically be stored in the exact same location.
In terms of the “linking actions” claim requirement, which the original panel had not considered since it found for Samsung on the first issue, the majority found that Samsung misinterpreted the claim to require linking the data to the actions rather than linking the data to the program that carries out the actions, e.g., linking the email to the email app. As to that interpretation, the majority found substantial evidence in the record to support the jury verdict.
Apple’s Slide to Unlock Patent
The en banc majority opinion next considered the validity of Apple’s patent for unlocking a mobile touchscreen device using a sliding touch motion to move a graphical unlock image.
Samsung’s obviousness case relied on the combination of two prior art references: a mobile touchscreen device that was unlocked by pressing the power button then swiping on the screen; and an article that tested six different potential unlock methods on a wall-mounted touchscreen for a home appliance, where slide to unlock was one of the methods considered but was ranked second to last and judged to be “not preferred.” Apple conceded that both references were analogous art and did not argue any teaching away, but instead packaged the fact that the second reference was not a mobile device and the fact that it did not rank the slide to unlock feature favorably as evidence against any motivation to combine the references. The en banc majority agreed that these arguments were relevant to the motivation to combine issue and amounted to substantial evidence in support of the jury’s validity verdict. The majority took the panel to task for its contrary analysis, which it portrayed as separately investigating Samsung’s rejected argument for substantial evidence and then weighing the relative strengths of the evidence for both arguments.
The dissents strongly disagreed with this characterization, called Apple’s evidence flimsy and warned that the majority view effectively accepts “any” evidence as substantial. In addition, Judge Dyk’s dissent treated Apple’s arguments under the analogous art and teaching away rubrics and found them wanting under those more exacting standards.
The en banc majority also considered Apple’s secondary indicia evidence, which it noted could potentially be the “most probative and cogent” evidence on obviousness. The majority found substantial evidence of industry praise by Samsung’s internal documents praising the iPhone’s slide to unlock feature and indicating that Samsung should incorporate it into its devices, and also from a video of the iPhone unveiling where Steve Jobs caused the audience to burst into cheers by using the slide to unlock feature. These same documents were also found to be evidence of copying by Samsung. As for commercial success, the majority found substantial evidence in Apple’s survey evidence and marketing focus on the slide to unlock feature, and again pointed to the Steve Jobs video, this time treating the audience reaction as consumer praise. Finally, the majority found substantial evidence for a long felt need to overcome the problem of “pocket dialing,” and that that the original panel’s contrary view amounted to a categorical bar when the difference from the prior art is “small.”
Apple’s Autocorrection Patent
Apple’s autocorrection patent is directed to an autocorrection interface, which called a “first area” with a word being typed (e.g., the text entry location) as well as a “second area” with the same word accompanied with suggested corrected spellings. Samsung’s expert primarily relied on a prior art reference that lacked the first area limitation, and for that relied on a secondary reference which Apple’s expert attacked for being directed not to spelling corrections, but to potential completed words based on typing the first few letters. The majority chalked all this up to another battle of the experts for the jury.
The district court had granted summary judgment of infringement to Apple, which the original panel did not address due to its invalidity decision. The en banc majority rejected Samsung’s argument that the claim construction of “keyboard” should not have included both physical and “virtual” keyboards, and pointed to various specification disclosures that used “keyboard” in that manner.
The prime takeaways from the en banc review is the majority's pronouncement that the Federal Circuit's role, as a reviewing court, is "limited to deciding issues raised in the appeal by the parties, deciding these issues only on the basis of the record below, and as requiring appropriate deference be applied to review of fact finding." The en banc majority was particularly concerned about the original panel's use of dictionary definitions not of record which it explained amounted to improper "extra-record extrinsic evidence [used] to construe a patent term."
Going forward, future panels will be very unlikely to reverse fact findings not put in issue by a party and more likely to strictly apply the "substantial evidence" test when reviewing fact finding by a jury.
It is expected that this case is likely to be the subject of a petition for cert to the Supreme Court. Indeed, in his dissent, Judge Dyk wondered aloud why the court even took on important issues of obviousness en banc without further briefing and argued that the majority had made "significant changes to the law [of obviousness] as articulated by the Supreme Court."