Summit 6, LLC v. Samsung Electronics Co., Ltd.
802 F.3d 1283
| Fed. Cir. | 2015Background
- Summit owned U.S. Patent No. 7,765,482 covering a web-based media submission tool that performs "intelligent pre-processing" (e.g., resizing/compression/format changes) of digital content at a client device before upload.
- Summit sued Samsung (and others) alleging Samsung phones infringe claim 38 (and dependent claims) by pre-processing images for MMS; key contested claim language included “being provided to” (pre-processing parameters) and “publication.”
- District court construed “publication” as “making publicly available” and declined to construe “being provided to”; a jury found the asserted claims not invalid and infringed and awarded Summit $15 million (marked on the verdict form as a lump sum).
- Samsung moved for JMOL on infringement and invalidity and sought exclusion of Summit’s damages expert (Mr. Benoit); district court denied those motions; Summit sought an ongoing royalty but the court treated the verdict as a lump-sum through the patent life.
- On appeal, the Federal Circuit considered claim construction (temporal scope of “being provided to”), sufficiency of evidence for infringement and non‑invalidity, admissibility of the damages expert under Daubert/Rule 702, and whether the jury award could be interpreted as a life‑of‑patent lump sum.
Issues
| Issue | Summit's Argument | Samsung's Argument | Held |
|---|---|---|---|
| Claim construction: temporal scope of “being provided to” in claim 38 | Phrase describes a characteristic of the pre‑processing parameters and need not be provided during the claimed method | Requires active receipt during the operation of the claimed method (ongoing activity) | Affirmed district court: “being provided to” is descriptive (not a verb step) and need not occur during method operation; no waiver by Samsung |
| Infringement (pre‑processing "in preparation for publication") | Evidence showed phones modify images (carrier‑dictated sizing) preparing images for publication; expert testimony supported this | Modifications are only for transmission (carrier size limits), not preparation for publication; insufficient evidence | Jury verdict of infringement upheld — testimony provided legally sufficient evidence for jury |
| Invalidity (anticipation by Mattes) | Mattes does not disclose client‑side pre‑processing controlled by parameters as claimed | Mattes anticipates the claimed steps | Verdict of non‑invalidity upheld — substantial evidence supports jury finding that Mattes lacked at least one claim element |
| Expert admissibility & damages (Mr. Benoit’s apportionment, use of surveys, lump‑sum award) | Benoit used Georgia‑Pacific framework, apportionment tied to Samsung data and surveys; lump‑sum was contemplated and the jury marked award "lump sum" | Methodology was novel, untested, relied on third‑party surveys, and improperly assumed usage ↔ value proportionality; RIM/Facebook licenses not comparable | District court did not abuse discretion: Benoit’s methodology was sufficiently reliable and tied to facts; RIM license + Benoit’s testimony provided substantial evidence for $15M; verdict could be a life‑of‑patent lump sum; Summit not entitled to additional ongoing royalty |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim construction principles; read claims in view of specification)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (U.S. 2015) (claim construction review: legal issue with possible underlying factual findings)
- O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008) (district court must resolve actual claim scope disputes)
- Daubert v. Merrell Dow Pharm., 509 U.S. 579 (U.S. 1993) (gatekeeping standard for expert admissibility)
- Kumho Tire Co. v. Carmichael, 526 U.S. 137 (U.S. 1999) (Daubert applies to all expert testimony; gatekeeping flexible)
- Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (reasonable‑royalty methodologies and apportionment principles)
- i4i Ltd. v. Microsoft Corp., 131 S. Ct. 2238 (U.S. 2011) (standard that invalidity must be proved by clear and convincing evidence)