Apple Inc. v. Samsung Electronics Co., Ltd.
839 F.3d 1034
| Fed. Cir. | 2016Background
- This en banc Federal Circuit decision arises from multiple patent claims and counterclaims between Apple and Samsung; the court reinstated the district court’s judgments upholding infringement/validity for Apple’s '647, '721, and '172 patents and remanded a willfulness finding for reconsideration under Halo.
- The panel had earlier reversed some jury findings using extra-record extrinsic evidence; Apple petitioned for rehearing en banc arguing the panel improperly relied on evidence outside the trial record and altered unappealed claim constructions.
- The court limited review to the trial record, applied the Ninth Circuit JMOL standard (viewing evidence favorably to nonmovant), and emphasized Teva’s allocation of factual determinations.
- Key factual disputes tried to the jury included whether Samsung’s shared library code satisfied the '647 patent’s “analyzer server” and “linking actions” limitations, whether the '721 slide-to-unlock claim was obvious over Neonode and Plaisant, and whether the '172 autocorrect GUI claim was obvious over Robinson and Xrgomics.
- The jury found infringement and validity in Apple’s favor on the asserted claims; the en banc court held substantial record evidence supported those jury findings and therefore affirmed denial of Samsung’s JMOLs (and granted Apple summary judgment of infringement for the '172 claim under the court’s construction).
Issues
| Issue | Plaintiff's Argument (Apple) | Defendant's Argument (Samsung) | Held |
|---|---|---|---|
| Whether Samsung’s accused devices satisfy the '647 patent’s “analyzer server” limitation | Apple: shared library code in Samsung phones is a separate server routine (stored separately in memory, reused by clients) and thus meets the Motorola construction | Samsung: library code is copied into and runs as part of the client app (not a separate running server routine) so it does not satisfy the limitation | Held: Affirmed — substantial evidence supported the jury’s finding that shared library code is “a server routine separate from a client,” relying on trial testimony that library code is separately stored/used and runs as a distinct routine. |
| Whether accused devices satisfy the '647 patent’s “linking actions” limitation (startActivity()) | Apple: Android’s Intent/startActivity() mechanism creates a specified connection between detected structure and a subroutine that launches the CPU sequence to perform the action | Samsung: startActivity() merely picks an application; no specified connection to the subroutine that performs the action | Held: Affirmed — substantial evidence (expert testimony) supported that startActivity() is the subroutine causing the CPU sequence and thus met the Motorola construction. |
| Whether claim 8 of the '721 patent (slide-to-unlock) is obvious over Neonode + Plaisant | Apple: a skilled artisan would not have been motivated to combine Neonode (mobile) with Plaisant (wall-mounted controllers); strong objective indicia (industry praise, copying, commercial success, long-felt need) support non-obviousness | Samsung: Plaisant teaches use of sliding to avoid inadvertent activation; combination is natural and routine—motivation exists; objective indicia do not overcome prima facie obviousness | Held: Affirmed — jury had substantial evidence to find lack of motivation to combine and to credit objective indicia; weighing Graham factors, claim 8 not proven obvious by clear and convincing evidence. |
| Whether claim 18 of the '172 patent (autocorrect GUI) is obvious and whether “keyboard” includes virtual keyboards | Apple: Robinson + Xrgomics do not disclose all claim elements (particularly replacement/keep behavior in a first area); specification contemplates virtual keyboards so accused devices infringe | Samsung: Robinson + Xrgomics render claim obvious; “keyboard” should be limited to physical keyboards | Held: Affirmed — substantial evidence supported the jury’s verdict that claim 18 was not proven obvious; the court agreed the specification covers virtual (soft) keyboards and affirmed summary judgment of infringement. |
Key Cases Cited
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (factual findings in claim construction are for the district court and appellate review of those factual findings is deferential)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness framework; known problems can supply motivation to combine; caution against hindsight)
- Graham v. John Deere Co., 383 U.S. 1 (1966) (sets out the four Graham factors for obviousness analysis)
- In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012) (secondary considerations must be considered and weighed in context)
- Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (infringement is a question of fact; appellate review asks whether substantial evidence supports the verdict)
- Consol. Edison Co. v. N.L.R.B., 305 U.S. 197 (1938) (definition of substantial evidence)
- Monroe v. City of Phoenix, 248 F.3d 851 (9th Cir. 2001) (standard for JMOL under Ninth Circuit law)