By Mark Engstrom, J.D.
Samsung largely prevailed in its appeal of a district court’s final judgment of infringement of three Apple patents on multiple aspects of smartphone operations, the U.S. Court of Appeals for the Federal Circuit has ruled (Apple Inc. v. Samsung Electronics Company, Ltd., February 26, 2016, Dyk, T.). A jury found that Samsung had infringed three of Apple’s asserted patents, but the circuit court found that two of those patents were invalid and the third was not infringed. The jury further found that two additional Apple patents were not infringed, and the circuit court agreed with that finding. Finally, the circuit court ruled that Apple had infringed a Samsung patent on systems for compressing, decompressing, and organizing digital photos and videos, but also ruled that Apple had not infringed a Samsung patent on systems for compressing and transmitting videos. Both of the latter two rulings confirmed the judgment of the district court. Ultimately, the final judgment of the district court was affirmed in part and denied in part.
Apple’s ’647 patent. Apple alleged that Samsung had infringed claim 9 of the ’647 patent. A jury found that Samsung had indeed infringed that patent and awarded Apple $98.7 million in damages. The district court denied Samsung’s post-trial motion for judgment as a matter of law (JMOL). On appeal, Samsung argued that the district court had erred when it refused to grant JMOL of non-infringement.
The circuit court noted that the ’647 patent disclosed a computer-based system for recognizing certain structures—such as a telephone number—on a touchscreen, and for linking certain actions—such as calling the telephone number—to the structure.
Claim 9 of the ’647 patent depended on claim 1, which read in relevant part: “A computer-based system for detecting structures in data and performing actions on detected structures, comprising … an analyzer server for detecting structures in the data, and for linking actions to the detected structures …” (emphasis in original).
Samsung argued that Apple failed to produce any evidence from which a reasonable jury could conclude that Samsung’s allegedly infringing phones practiced the “analyzer server” limitation. However, on the last scheduled day of trial, the Federal Circuit issued a decision in Apple Inc. v. Motorola, Inc., 757 F.3d 1286 (2014), which construed the same term (“analyzer server”) in the same claim (claim 9 of the ’647 patent) that was under review in this case. Moreover, the district court adopted the Federal Circuit’s construction of that term.
In Motorola, the Federal Circuit construed “analyzer server” to mean “a server routine separate from a client that receives data having structures from the client.” According to the court, the patent specification disclosed an “analyzer server” that was separate from the application it served, and the construction of “analyzer server” required that server to be a piece of software that: (1) ran separately; (2) received data from a client application; (3) performed the “detecting” and “linking” steps; and (4) returned that data to the client application.
Apple, however, provided no evidence that the accused software library programs in the accused Samsung phones ran separately from the Browser and Messenger applications. In the court’s view, no reasonable jury could have concluded that the accused devices had an “analyzer server for detecting structures in the data, and for linking actions to the detected structures.” The court thus reversed the district court’s denial of JMOL of non-infringement of claim 9 of the ’647 patent.
Apple’s ’172 and ’721 patents. Apple asserted claim 8 of the ’721 patent and claim 18 of the ’172 patent. Before trial, the district court granted summary judgment of infringement of the ’172 patent to Apple.
The jury found that both patents were not invalid and further found that the asserted claim of the ’721 patent was infringed. The jury awarded nearly $3 million for the infringement of the ’721 patent and $17.9 million for the infringement of the ’172 patent. In addition, the jury found that Samsung had willfully infringed the ’721 patent, a finding that allegedly supported enhanced damages.
The district court denied Samsung’s motions for JMOL of invalidity and non-infringement, but granted its motion for JMOL of no willful infringement of the ’721 patent. On appeal, Samsung challenged the validity determination and Apple challenged the willfulness finding of the final judgment.
Apple’s ’172 patent. Samsung argued that the district court had erred in denying its motion for JMOL that claim 18 of the ’172 patent, which covered the iPhone’s “autocorrect” feature, was obvious. The court agreed.
Claim 18 required that current text be displayed in one area, that the current word and suggested corrections be displayed in a second area, and that the suggested corrections be automatically entered if a certain key—such as the space bar—was pressed, or if the user touched the suggested replacement. Finally, the user could use the current word, as it was typed, if he touched an option in the second area.
Samsung presented two pieces of prior art that allegedly taught every limitation of the claimed invention: (1) U.S. Patent No. 7,880,730 (“Robinson”), which was directed to a “keyboard system with automatic correction,” and (2) International Patent Application WO 2005/008899 A1 (“Xrgomics”), which disclosed a “letter and word choice text input method” and described the “quick selection of choices to be implemented seamlessly for reduced keyboard systems,” like those in mobile devices.
Both parties agreed that Robinson disclosed every aspect of the ’172 invention except the display and replacement of an incorrectly typed word in a “first area” (in context), and the court concluded that the combination of Robinson and Xrgomics resulted in Apple’s ’172 invention.
Apple argued that the jury could have found that a skilled artisan would not have been motivated to combine Xrgomics with Robinson because: (1) Xrgomics primarily disclosed a text completion system, not a text correction system, and (2) text completion was a different field of invention than an autocorrect system. The court disagreed.
According to the court, the patent specification did not draw boundaries around the field of the invention so narrowly. The specification stated that the disclosed invention related generally to “text input on portable electronic devices,” the court explained, and both the ’172 patent and the Xrgomics application disclosed “text input systems” on a mobile device, and did so with “remarkably similar structures” (i.e., displaying typed text in context and corrections or completions in a space below). Considering 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, the court concluded.
In short, the court found that Samsung had showed that every element of claim 18 was present in the prior art, and thus presented a strong case of obviousness. The court also found that Apple’s evidence of secondary considerations was “very weak.” Because claim 18 of the ’172 patent would have been obvious to a person of skill in the art (as a matter of law), the court reversed the judgment of infringement and no invalidity, with respect to the ’172 patent.
Apple’s ’721 patent. The court noted that the ’721 patent was directed to the “slide to unlock” feature of Apple’s iPhone, Samsung argued that the district court should have granted its motion for JMOL that the ’721 patent was invalid for obviousness. The circuit court agreed.
One problem with a portable touchscreen device, the court observed, was that its features could be activated accidentally. In this case, the ’721 patent claimed a particular method of unlocking a touchscreen to prevent accidental activation. Under that method, a user could touch a particular spot on the screen, where an image would appear. While continuously touching the screen, the user could move his finger to another part of the screen to activate the relevant feature.
The court noted that claim 8 of the ’721 patent depended on claim 7, which read in relevant part: “A portable electronic device, comprising: a touch-sensitive display … and one or more modules [that were] stored in the memory and configured for execution by the one or more processors … including instructions … to detect a contact with the touch sensitive display … to continuously move the unlock image on the touch-sensitive display… and to unlock the hand-held electronic device if the unlock image is [properly] moved …”
According to Samsung, claim 8 was obvious because it simply combined familiar elements according to known methods. At trial, Samsung presented two prior art references: the 2004 NeoNode N1 Quickstart Guide and a video and paper by Plaisant, which was presented at a 1992 conference on computer-human interactivity.
Samsung argued, and Apple did not dispute, that Neonode had disclosed all of the limitations of claim 8 except for the limitations that concerned an “unlock image” or the visual depiction of its movement. In other words, Neonode disclosed the use of a touch gesture on a touch screen to unlock a smart phone, but it did not have a moving image that was associated with that gesture.
The Plaisant paper, Samsung argued, supplied the missing element. The paper compared six different touchscreen-based toggle switches that could be used, by a novice or an occasional user, to control the two-state features (i.e., on/off features) in a touchscreen environment. In one of those toggles (the “slider toggle”) a sliding or dragging movement was required to change the position of the pointer from one side of the toggle to the other. Users could grab the pointer and slide it to the other side. A second toggle (the “lever toggle”) had the same functionality, but with a different appearance.
Apple did not dispute that Plaisant, when combined with Neonode, disclosed all of the claimed features of the ’721 patent. Instead, Apple argued that the jury could have reasonably found that: (1) Plaisant taught away from the use of a “slider toggle” and (2) a skilled artisan would not have been motivated to combine Neonode and Plaisant because Plaisant described wall-mounted devices, not portable mobile phones, and thus was not “relevant” prior art.
The court rejected Apple’s arguments. First, under Federal Circuit precedent, a reasonable jury could not have found that Plaisant taught away from the use of sliding toggles. Second, no reasonable jury could find that the Plaisant reference was not analogous art in the same field of endeavor as the ’721 patent.
Ultimately, Apple’s evidence was insufficient, as a matter of law, to overcome the circuit court’s conclusion that the evidence supported only one legal conclusion: that the asserted claim would have been obvious to a skilled artisan. Because claim 8 of the ’721 patent was obvious over Neonode and Plaisant, the circuit court reversed the district court’s judgment of infringement and no invalidity.
Apple’s ’959 patent. The jury found that claim 25 of Apple’s ’959 patent was not invalid and not infringed. Both sides filed motions for JMOL. Samsung argued that the claim was invalid for anticipation and indefiniteness and Apple argued that the claim was infringed. The district court denied both motions and both sides appealed.
The court noted that the ’959 patent covered the “universal search” feature of Apple’s iPhone. The only disputed issue on appeal was whether the search feature of Samsung’s phones provided an “information identifier to a plurality of heuristics to locate information in the plurality of locations which include the Internet and local storage media.” In short, the parties disputed whether the search function on the Samsung phones “located” information on the Internet.
Samsung argued that its search function did not “search the Internet,” as required by the claim language; instead, its function “blended” data that was previously retrieved from a Google server and a local database. Samsung’s experts testified that the accused search function did not search the Internet because it only searched information that was previously pulled from the Internet.
The district court found that Samsung had provided substantial evidence to support the jury’s verdict of non-infringement, and the circuit court agreed. The circuit court affirmed the district court’s denial of Apple’s motion for JMOL of infringement of claim 25 of the ’959 patent. It also affirmed the district court’s judgment of non-infringement. Because the circuit court affirmed the judgment of non-infringement, it declined to address issues of invalidity.
Apple’s ’414 patent. The jury found that claim 20 of Apple’s ’414 patent was not invalid and not infringed. After trial, Samsung sought a judgment of invalidity as a matter of law, and Apple sought a judgment of infringement as a matter of law. The district court denied both requests and both parties appealed.
The court noted that the ’414 patent covered “background synchronizations” and described systems, methods, and computer-readable media for simultaneously synchronizing data between multiple devices, such that synchronization tasks and non-synchronization tasks were executed concurrently. The only issue on appeal was whether the accused devices contained synchronization software components that were “configured to synchronize” for email.
The district court concluded that substantial trial evidence allowed a reasonable jury to render a verdict of non-infringement because Samsung’s expert had testified that email software was not “configured to synchronize,” since email software did not synchronize data by itself; instead, it indirectly caused the synchronization of data by calling other software components.
The circuit court agreed that Samsung had proffered substantial evidence to support the judgment of non-infringement. Because the court concluded that substantial evidence supported the jury’s finding of non-infringement of claim 20 of the ’414 patent, the court declined to address the issue of validity.
Samsung’s ’239 patent. Samsung argued that the district court’s final judgment regarding Apple’s non-infringement of its ‘239 patent should be reversed because the district court had erred in its construction of the term “means for transmission” in claim 15.
The district court construed the “means for transmission” term—which was a means-plus-function limitation—to require software that performed a “software sequence of initializing one or more communications ports on said apparatus, obtaining a cellular connection, obtaining said captured video, and transmitting said captured video” as disclosed in the specification, in addition to hardware.
Samsung argued that: (1) the specification of the ’239 patent did not require any software for transmission and (2) the inclusion of software, in addition to hardware, as a necessary structure was improper. The circuit court disagreed.
The term “transmission” implied communication from one unit to another, the court explained, and the specification stated that software was necessary to enable that communication. Under the preferred embodiment, the court explained, the ’239 patent required software for transmission. Hardware alone did nothing without software instructions that told it what to do, and the patent recognized that. More specifically, the patent stated that the transfer software “enabled” the transmission.
Because a “corresponding structure” had to include “all structure that actually perform[ed] the recited function,” the district court correctly included software as part of the corresponding structure for the “means for transmission.” The circuit court thus affirmed the district court’s construction of “means for transmission” in claim 15 of the ’239 patent, and further affirmed the district court’s judgment of non-infringement.
Samsung’s ’449 patent. Samsung’s ’449 patent was directed to camera systems for compressing, decompressing, and organizing digital files for photos and videos. The jury found that Apple had infringed claim 27 of the ’449 patent. In addition, the jury awarded $158,400 in damages. The district court denied Apple’s post-trial motion for JMOL of non-infringement. Apple appealed.
First, Apple argued that no reasonable jury could have found that Apple’s accused products had met the “compressor” and “decompressor” limitations because: (1) those limitations required components that compressed or decompressed still images and videos and (2) the accused products used separate and distinct components to compress and decompress still images and videos.
Samsung, however, presented expert testimony that identified a single Apple design chip with the circuitry to perform both compression methods. Even though the chip could contain separate components, a jury could have reasonably concluded that the chip itself (not the individual components of the chip) performed the compression and decompression steps, and thus met the “compressing” and “decompressing” limitations.
Second, Apple argued that no reasonable jury could have found that the accused products had met the “search mode” limitation because the accused products did not display a “list,” as required by the claims. However, the accused products contained a “Camera Roll” that displayed an array of thumbnails, and Samsung had proffered expert testimony to show that the camera roll was a “list”—under the plain and ordinary meaning of that term—in the context of the ’449 patent. Ultimately, the jury could have believed the expert’s testimony and concluded that the “search mode” limitation was met.
Finally, Apple argued that its products did not have a recording circuit that recorded “each one of said plurality of image signals with classification data.” Apple further argued that the camera roll on its products included all of the photos and videos that were taken with the accused device “so that there is no classification of the images.”
Nevertheless, Samsung presented expert testimony to show that the accused products recorded images with classification data. Its expert, for example, testified that the camera roll contained “Albums” that were created automatically and albums that are created by the user. In the court’s view, a jury could have reasonably believed the expert, and therefore could have found that Apple’s products contained “classification data.”
For those reasons, the circuit court affirmed the district court’s denial of JMOL of non-infringement of claim 27 of the ’449 patent. In addition, the circuit court affirmed the district court’s judgment of infringement.
The case is Nos. 2015-1171, 2015-1195, and 2015-1994.
Attorneys: William F. Lee (Wilmer, Cutler, Pickering, Hale and Dorr, LLP) for Apple Inc. Kathleen M. Sullivan (Quinn, Emanuel, Urquhart & Sullivan, LLP) for Samsung Electronics Company, Ltd.; Samsung Electronics America, Inc.; and Samsung Telecommunications America, LLC.
Companies: Apple Inc.; Samsung Electronics Company, Ltd.; Samsung Electronics America, Inc.; Samsung Telecommunications America, LLC
MainStory: TopStory Patent FedCirNews
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