Apple Inc. v. Samsung Electronics Co., Ltd.

shown to the most producer put. input Direct was that no used record shows reasonable, by objective, and fair method of adopted accounting Commerce method court), whereby consump- the re- cost (and by accounting for the retort now factory or as Pidgeon process. as overhead tion in torts are treated There Nor is evidence contrary respectful- evidence. I indirect materials. substantial colleagues propose. “equivocal,” my ly dissent. Malaysian producer, CMV Minerals

Ltd., a “major the retorts as raw described See

material,” process. consumed agree My colleagues that the

“Malaysian producer[ classified retorts ] undisputed all input, which direct Maj. Op. at 1030.

parties this case.” that was company The Indian consulted INC., Corporation, APPLE a California Commerce, Magnesium Southern & Plaintiff-Cross-Appellant Ltd., magnesium ceased Chemicals had company’s accounting production. This rec- specifically ords call out retorts as a direct LTD., CO., SAMSUNG ELECTRONICS only expense year, report one Corporation, Samsung Elec- a Korean categories of “other” mate- direct broader America, Inc., New York tronics overhead, general rials and without itemi- Corporation, Telecommuni- zation, for years. the other available At America, LLC, cations a Delaware most, the incon- non-itemized treatment Liability Company, Defen- Limited clusive as retorts classi- whether were dants-Appellants fied as direct materials or over- factory 2015-1171, 2015-1195, 2015-1994 not, however, explain head. Commerce did categorization how “inconclusive” broad Court of Appeals, United States years specific some rendered treat- Federal Circuit. ment of as a direct irrele- retorts material Decided: October vant. Commerce also consulted Chi- another producer, Magnesium Corpora- China

nese (CMC). Although

tion majority states that it “Commerce found was unclear [CMC]

whether classified retorts as di- input,” Maj. Op.

rect CMC de- largest

scribes the as its retorts fourth

reoccurring, cost specifically variable

separates retorts from overhead “fixed

costs.” J.A. 100575. not disputed

It is the retorts are not only they

consumed use and that cost, major production but a significant cost. conclusive

unit

industry showing treatment is as a in-

classification of the retorts direct Samsung Elec- (“Apple”) Picker- Inc. F. Cutler Wilmer Lee, William LLP, MA, Co., Ltd., ar- Samsung Dorr Boston Hale and Electronics ing tronics Also plaintiff-cross-appellant. America, Inc., gued for Telecommuni- AN- Burwell, represented America, (collectively, “Sam- cations LLC DaNA Olcott Christopher Danford, decision, J. MarK banc sung”). Relevant DREW this en Fletcher, Fleming, Lauren B. Sarah R. granted summary judg- court the district Mark D. O’Neill; Frazier, Riohard Wells in- accused devices ment Gregory Alto, CA; Thomas Palo Selwyn, Patent fringe the asserted claim of U.S. DC; Washington, Sprankling, Raohel (“the 8,074,172 patent”). After a No. '172 LLP, San Morrison Foerster & Krevans, trial, found the as- day thirteen Jeffrey CA; Francisco, Palo Olson, Erik 5,946,647 No. claim of Patent serted U.S. Alto, CA. (“the infringed, and the dis- patent”) '647 Sullivan, Quinn Emanuel Kathleen M. Samsung’s requested trict court denied Sullivan, LLP, York, Urquhart & New (“JMOL”). as a judgment matter law NY, Also argued defendant-appellants. jury also claim of found the asserted Adams, represented Mi- David William (“the 8,046,721 pat- No. '721 U.S. Patent Cooper; Cannon, Kevin chael Cosmo Brian ent”) infringed and the invalid Johnson, Maroulis, Fishman P.B. Victoria not inval- claim of the asserted Shores, CA; Redwood Quinn, B. John The district court denied Sam- id. later Watson, Zeller, Thomas L. Michael Scott requested judg- sung’s JMOL and entered Angeles, Los CA. Samsung appealed accordingly.1 ment grant summary judg- court’s of district PROST, Judge, Before Chief infringement patent, ment of as to the '172 MOORE, LOURIE, DYK, NEWMAN, as to non-infringement of JMOL of denial WALLACH, O’MALLEY, REYNA, patent, of JMOL of the '647 and denial HUGHES, STOLL, CHEN, Circuit patents. as to obviousness and '172 '721 Judges.* Concurring opinion in without the result Progress II. Procedural Judge Circuit HUGHES. Dissenting Opinion by Judge Chief filed A. The to Grant Decision PROST. En Banc Review Dissenting Opinion by filed Circuit 26, 2016, February of this panel On Judge DYK. of with court reversed JMOL denial Dissenting Opinion filed Circuit jury infringement regard to the verdict Judge REYNA. patent to the and non-obviousness '647 Apple to the '721 and filed patents. '172

MOORE, Judge. Circuit banc. petition rehearing en I. Introduction argued that petition panel reversed finding infringement appeal from a '647 The current results infringement relying on patent by suit countersuit between extra-record evidence * Judge Samsung’s participate, but Circuit not claim '449 had not did Taranto infringed asserted claim of Separately, jury Samsung found that $158,400 patent and awarded infringed Ap claims of had the asserted damages. patents. Additionally, panel We decision as ple’s jury '414 or '959 reinstate Apple infringed appeals relating found that the asserted to these issues. had that the the appellate “none which was record and conclude court cannot panel appears only through rely to have located on extra-record extrinsic evidence independent Apple Apple the first instance or findings research.” Pet. make factual argued sug- this extra-record extrinsic evi- about such extrinsic what modify gests to agreed plain meaning dence was used about the of a claim See, unappealed term in the art at the relevant time or construction. how e.g., id. (“The panel such may [this looked to extra record inform our understanding its own of how evidence] extra-record create the accused device plain meaning requiring operates. ‘server’ as We likewise did need addi- program.”). Apple briefing, argument ‘stand alone’ ar- tional also determine gued appellate that this permitted extra-record evidence was court is not “considering used in question findings the factual appeal- reverse fact were not Samsung’s phones appellate whether met the ‘ana- ed or required court is lyzer See id. jury limitation.” server’ 8 to fact findings they review when (“The panel dictionary relied on appealed also substantial evidence. The encyclopedia panel entries inform its under- nearly jury reversed fact dozen standing library findings including infringement, how'the shared code motivation Samsung’s phones combine, (emphasis work.” the teachings art ref- original)). erences, success, also argued that the industry case commercial praise, copying, should en banc “in long-felt be taken because need across decision,” unprecedented re- panel patents. despite three different It did so nearly every finding findings versed fact the fact that some of these were Id. at 1. Apple. which favored not appealed mentioning and without ever the applicable substantial evidence stan- granted Apple’s petition We en banc regard objec- dard of review. And affirm understanding our appellate indicia, it ways departed tive did so function to deciding as limited issues existing law. appeal by parties, deciding raised on the dissents, only these on the basis of Judge Dyk’s issues the record and in dissent below, made as requiring particular, big questions and raise appropriate about how to of applied aspects deference be the review fact the ought of obviousness doctrine findings. operate. to But no or party—at panel There was need solicit addi the argument tional briefing question petition rehearing or the the stage— en banc of appellate panel changing whether an look to this court to can consider the invited existing extra-record extrinsic evidence to construe law obviousness. We did patent claim “The take case en Supreme important a term. Court this banc to decide made the components legal clear that factual about questions workings [of the inner claim applied include ‘the back the have construction] law obviousness. We ground the in meaning existing science or of a term facts of obviousness law to the this during the art the time took relevant relevant ease. banc to affirm We case en Pharms., Sandoz, Teva Inc. v. period.’” appellate our func- understanding of'our Inc., (Fed. 1335, 2015) law, tion, apply governing 789 1342 Cir. F.3d the and Pharths., Sandoz, (quoting Teva Inc. v. our fidelity Supreme maintain — — Inc., U.S.-, 831, 841, Teva 135 S.Ct. Court’s decision. Teva, L.Ed.2d-(2015)). After fact such En B. The Banc Decision findings indisputably province to We affirm and reinstate the district district court. We did need '647, '721, briefing judgment solicit or as to and argument additional court’s 1040 jury- N.L.R.B., patents. conclude Edison Co. 305 U.S. 172 We N.Y. 197, 229, 206, (1938). 126 supported on each issue is sub-

verdict S.Ct. L.Ed. that the stantial evidence record and Infringement question a denying -not err court did when district Inc., Techs., Gateway, fact. Lucent Inc. v. According- JMOLs. respective 2009). Our F.3d Cir. opinion affirm panel ly, we vacate and on appeal review is limited to whether judgment respect court’s district in rec there was substantial evidence panel patents. to these We reinstate Id. support ord verdict. We 6,847,- regarding opinion U.S. Patent Nos. underlying presume the resolved all 959, 7,761,414, 5,579,239, 6,226,449. In in favor of verdict. disputes factual panel respects, all other decision Servs., Inc., Sys., SSL LLC v. Citrix jurisdiction vacated. We under have 1073, 1082(Fed. 2014). Cir. 1295(a)(1). § U.S.C. The '647 discloses system detecting method for structures such III. Discussion addresses, numbers, phone, dates documents, or linking then actions or review district court’s We commands those structures. When denying granting der or under the JMOL document, system detects a structure regional circuit. In applied standard “analyzer an links to that actions Circuit, server” proper the Ninth JMOL “is when things Actions detected include structure. permits one reasonable placing phone adding such as call or an contrary conclusion the conclusion is address an electronic address book. See City to that See Monroe v. jury.” 2:21-41. claim 2001). asserted Phoenix, (9th 248 F.3d depends from 1: which explains The Ninth Circuit evi “[t]he system A light computer-based must most dence be viewed detect- nonmoving ing performing party, favorable and all structures data and structures, comprise actions reasonable inferences must be drawn detected ing: that party.” Id. Circuit favor The Ninth grant

reviews district court’s decision to data; input an for receiving device deny Id. JMOL de novo. output for presenting device

data; memory storing information includ- A. '647 Patent ing program including routines Apple asserted infringement an analyzer detecting sener for patent. claim of '647 The jury the found data, structures link- for Ap Samsung infringed and awarded ing actions to the detected struc- $98,690,625. ple district J.A. The 40869-79. tures-, denied JMOL court non-infringement. enabling a user selec- interface the Samsung argues the district 40-48.. tion of a a detected structure and granting erred in for court its motion action; linked non-infringement. JMOL Because processor performing an action for the support was substantial evidence to the selected action linked to the se- verdict, evi we affirm. “Substantial ,.. structure; lected and . dence means such as relevant evidence might ade accept processing coupled input a reasonable mind a unit the to device, quate device, to support output Consol. the and the conclusion.” controlling the memory execution per- broutine CPU to that causes program routines. sequence operations form a on that system The detected structure.” recited wherein the user interface enables selec- Instrs., Final Jury Annotated Ap No. tion by causing of an the output action ple Samsung Co., Inc. v. Elecs. 5:12- No. display pop-up device menu of the cv-00630-LHK, (N.D. 2015 WL 4967769 linked actions. 28, 2014), Apr. Cal. ECF No. 1848. Neither added). (emphasis 7:9-55 side objected jury instruction and Samsung jury contends no reasonable side appealed neither has the constructions infringement have could found based given to the jury. Samsung’s We address our “analyzer constructions of server” and arguments for each term separately. “linking actions the detected struc tures.” previously We addressed the con Analyzer Server structions of both in Apple, terms Inc. v. on appeal relating issue

Motorola, Inc,, 757 F.3d 1286 “analyzer server” limitation is whether 2014) (“Motorola”), separate litigation there was substantial evidence to support involving patent. the '647 Our Motorola the jury’s fact finding ac opinion day issued on final parties’ satisfy cused devices this limitation under presenting at trial in this case. our Motorola Motorola, construction. During J.A. 42. hearing, the Markman we “analyzer construed server” as “a ser neither nor sought had ver routine from separate a client that of “analyzer construction or “link server” having receives data from structures actions,” ing sought rely and instead Motorola, client.” at 1304. In plain ordinary meanings of those Motorola, explained: the court issued, terms. parties After Motorola agreed give the Motorola constructions agree We with the district court’s con- jury reopen give evidence to “analyzer struction of server.” As the opportunity present both sides ex recognized, district plain court pert testimony impact of about the meaning “server,” when from viewed Motorola infringe constructions on '647 perspective person of ordinary ment. J.A. 43. The was instructed as art, skill in the entails a client-server follows: relationship. per- Consistent with this “analyzer

The term server” means “a spective, specification discloses an server separate routine from a client analyzer separate from server having receives data structures application analyzer serves. The client.” part 165 of “program server present at col. “linking term actions to the detect- invention.” '647 “creating speci- 11.38-39. Fig. program ed structures” means shows fied separate connection between each parts detected and the application 167 (RAM): memory and at computer structure least one of a su- random-access program Further, “shows the 165 and Id. specification Fig. a ran- separate parts of application 167 as 165 of the program that “the states (RAM)” they memory dom-access is stored RAM 170 present invention Id. Under the “separate thus structures.” identify 120 to struc- causes CPU construction, program Motorola presented by applica- in data tures Thus, separate re- Id. at col. application satisfied 37-41. tion 167.” they structurally because were analyzer quirement specification describes the i.e., parts separate, located different which it application, and the server case, parties agreed serves, RAM. In separate structures. Motorola construction be given to that the (red fig- Id. at 1304-05 box annotation appealed that jury, party and neither added).2 explained This court that the ure construction. separate requirement for the patent’s however, used extra-record panel, analyzer “program server is met when the agreed modify extrinsic evidence “application 165” 167” are stored unappealed construction of “ana- upon and of random access memo- “separate parts It Op. at 10 n.5. lyzer Panel Id. As we Figure 1 of the server.”3 ry.” explained, Dictionary library (software library), Program opinion court in Motorola— 2. The district (4th Computing 1996) ("Usually deter which we affirmed—likewise based its ed. "separate” that the library mination of on the fact only necessary to reference analyzer in dif client and server are located automatically program to be in- to cause it citing Figure memory, parts of the also ferent (emphasis corporated program.”) in a user’s patent: "Had the intended ("A added).”); at 10-11 n.5 id. client/server appli analyzer integrated into the server to separation of relationship a 'clean assumes cation, separate, program box rather than the client and the server are functions'—both logically appear application inside operating programs, independently per- each Inc., Figure Apple box in 1." Inc. v. Motorola See, Stephen forming separate e.g., functions. 1:11-cv-08540, 12537293, at *6 No. 2012 WL Object-Oriented Montgomery, Information L. 19, 2012). (N.D. Ill. Mar. Imple- Engineering: Analysis, Design, and (1994).”). argues mentation panel opinion extra-rec- 3. The also used the portions of same extra-record evidence operation of ord evidence to understand the panel support Apple's posi- See, not cited e.g., Op. products. Panel the accused findings regarding the ("In words, tion. We make library pro- the software other teachings evidence. of the extra-record gram part program. See runs as of the client Samsung’s systems that separately analyzer held accused did at the part server as a infringe Samsung because “the soft- of a separate routine.” at Apple’s Id. 44:55. library programs ware are not counsel repeatedly clearly rejected ‘standalone’ separately.” that run programs Op. panel’s suggestion Panel that “separate” means a party changed at for this program 13. Neither asked standalone separately. which runs construction.4 And there is no requirement foundation “There is no claim in for it. terpretation Motorola that it run as a standalone program.” Arg. Apple Oral at 34:55.6 ar agreed The claim that Apple dissents gued panel’s proposed that the interpreta during argument.5 a new construction oral “separate” tion of was “a new claim con Apple’s The dissents take out statement actually specific struction that’s more Apple’s context. When that counsel stated charge. different than No one has analyzer separately, server runs he urged you to do that. is no sugges There explaining analyzer was server interpretation tion that is memory; runs its own location in wrong.” Id. at 45:45.7 Apple reiterated its library copied shared code is not into and objection to panel’s modified construc part application. run as the client See tion in Rehearing.8 its Petition for Arg. big fight Oral at 29:15-30:25. “The this, big fight, this was the does the Claim construction was appealed analyzer get copied from the Apple code server we agree agreed do not part analyzer and become panel’s change server the construction ana- run, where it is or is one copy lyzer Even server. counsel code, it is run at analyzer agreed, “[Apple] server is correct that we are not it, argue require did not Motorola tion doesn’t and the claim doesn’t it, expanded require construction should be require separate or modified but it does rou- tine.”); ("There require "analyzer requirement server” "run at no id. 44:00 separately” or legally program.”). "stand alone” from the client be it a standalone application. The where instances Motoro- “separate” la uses the word are when de- Apple’s explained require counsel that to locations, scribing "separate parts such as analyzer pro- server to be a standalone (RAM)” memory a random-access or describ- gram taking interpreta- be the claim “would ing analyzer application server and client given in tion that was the Motorola case and Motorola, "separate structures.” 757 F.3d reinterpreting require something it more parties at 1304-05. Both tried the case and 44:00; specific.” see id. at Id. 46:05-46:25 presented appellate arguments based on this (“Court: question is what does the claim The understanding. honor, your interpretation Apple: No mean? they haven’t raised that issue. There is no argue agreed Apple interpretation, 5. Two of the dissents there is no issue issue of claim incorrect, panel’s analyzer construction that the ser- of whether it was there is no issue is, given. only question ver must "run on its own.” Prost Dissent at of whether it was 1073-74; Dyk charge, Dissent at 1085. We note that on that was there substantial evidence decision.”). Judge Reyna’s support dissent not address this does issue. ("[T]he panel 8. See Pet. 6 relied on non- ("There Arg. finding 6. See Oral at 28:45 also record sources to make its own alone.”); requirement meaning. Specifically, plain that it be [server's] stand id. at ("There nothing panel 33:15 in the claim inter- ruled that 'servers’ must be “standalone ”); says pretation programs’ separately.’ has to stand alone. It that run id. at 7 n.4 routine.”); ("But says separate it has to be a was clear that '[t]here id. counsel ("The question requirement analyzer [the 40:15 is ... does the claim is no server] standalone, require completely separate requirement is that it be a be standalone. routine, ”) (alterations separate original). interpreta- and this court’s routine.’ Motorola performs Oral devices all the claimed the claim accused disputing construction.” our functionality—the per- return to Arg, dispute 1:12:40. We thus is where'it at agreed was Samsung construction which Motorola forms those functions. contends case, given parties upon by the in this library in its devices is shared code the “analyzer ser- jury, appealed: and the ap- copied incorporated and into the client separate from a is “a routine ver” server run, the is it runs plication, so when code having that receives data structures client Therefore, application. of the client part evaluate whether from the client.” We library not “separate” is its code shared jury’s for the is substantial evidence application. client from the infringement con- finding of under library contends the shared code struction.9 Samsung’s cop- in accused devices never Samsung argues no appeal, reason- On library. It rather at the ied but remains its accused able could have found that, application when contends a client the limita- “analyzer meet server” devices Samsung’s library wishes use shared devices do not the accused tion because code, application goes the to the shared from “separate” routine contain server Therefore, library uses the there. and code 16-25. Samsung application. the client Br. Samsung’s library “sepa- shared code argues “the It uncontested from the client. rate” Mes- at the Browser and trial showed their senger applications each contain own limit our review to appellate We analyz- application routines within the evidence the district record before (ie., performing detecting ing the data record, court. On we hold that sub functions) rely on do not linking supports find stantial (emphasis in separate at 18 server.” Id. Samsung’s con ing that accused devices original). argues that in its It accused de- “a separate tain server routine from vices, application when client needs having client that receives data structures code, copy it from library “it will shared Motorola, from See at the client.”' 757 F.3d it library part and will run as 1304. It Id. cites the testimo- application.” “[y]ou go ny expert, Jeffay, of its Dr. Apple’s expert, Mowry, Dr. testified that library, you out of the take code “analyzer server” in the accused de- library, you integrate your applica- it in code,.and library client vices shared tion, point library at that code is Messag- applications are Browser and than in any no different other code ing applications. J.A. 13030:4-22. He testi- application.” Id. at 21. library shared code fied applications “separate” is no and client are be- dispute regarding

There real library they separate parts are whether shared cause located code allege library fringe library Two of the dissents that the because where the shared (whether programs satisfy analyzer copied cannot server was into code used use), despite they sepa- application limitation not wheth- the fact that the client before See, detecting programs perform application. rate which er it was used the client 19, 21-22, 17, 18, linking request in response e.g., actions to a client Br. 24. The required concept analyzer Prost server claims. Dissent must 1073-74; Dyk or Dissent at 1085. The lan- "standalone” "run its own” or run guage applica- apart plainly request client has no indicates that the isolation a client analyzer perform patent, uses the tion server to foundation '647 our functions, decision, linking pat- detecting parties briefs on See Motorola Samsung argued appeal ent claim 1. in- court. it did not to this memory: “the are in position shared libraries devel- the best to determine whether application” oped independently of the and it Mowry Jeffay found Dr. or Dr. more See, “designed different persuasive. e.g., be reused across MobileMedia Ideas 13035:12-18, applications.” Inc., J.A. 13036:13- LLC v. Apple F.3d 2015) explained only (“[W]hen 20. He “there’s one that there is conflict- code,” copy library ing trial, the shared testimony and when at and the evidence applications Samsung’s in only client accused finding overall does make one on code, library point reasonable, use the devices wish the “those jury permitted the is applications go to it code and use to make credibility that determinations and be- to, they where it is want time access lieve the it each witness considers more trust worthy.”).10 that code.” He J.A. 13035:22-25. testified no error in We see district the that, devices, in the one copy accused court’s conclusion substantial that supported shared “20 library may jury be respect code shared verdict with 100” this applications, different J.A. limitation. that, 13036:13-20, in ap- and order an Linking Actions code, plication to library use the the appli- cation “go library must the shared code appealed also dis in in place comput- the one that exists the- trict court’s denial of JMOL non-in Id.; memory er to use it.” see fringement upon hardware “linking based ac (“It also J.A. 13037:1-6 has access tions” limitation. We hold that there was goes and it to the it code where is and to support jury’s code substantial evidence there, finding uses it and it time does each that the accused meet devices code.”). Mowry “linking Dr. accesses the actions” con limitation under our applications also testified the client Motorola. struction library and shared code the accused Motorola, “linking we construed ac- devices are “in part stored a different tions to the detected structures” “creat- n the address He con- base.” J.A. 13036:1-2. ing specified connection each between library, cluded that the shared code and detected structure and com- at least one programs client devices are accused puter subroutine that causes the CPU -to “definitely separate.” 13036:20. perform operations -of sequence on that record, Motorola, On this substantial evi- detected structure.” support finding dence to appeal, Samsung argues 1307. On “analyzer meet server” “specified accused devices connection” the accused Jeffay provided contrary limitation. Dr. request per- devices between a user’s testimony Mowry, jury application to Dr. form some but action 3073:13-17; credibility jury. misleading.”); leave We We issues id. at id. at repeatedly (“He note that the district court map, men- 3076:7-9 was all he over the Dr, Jeffay,gave expert tioned that give opinion plain ordinary didn't testimony particular inconsistent lim- about server, meaning analyzer very he’s incon- See, e.g., itation. Tr. at 3058:6-10 4/28/14 throughout.”). sistent The district court also ("[Dr. Jeffay map over has] been all Jeffay in Dr. its JMOL order for scolded plain ordinary meaning about what the attempting argue “misleadingly” he had of this term is been .... all over He's used the Motorola constructions "since the (“He's map.”); all id. at 3059:2-3 over very day I worked on this J.A. 43. first case.” plain meaning map ordinary of ana- A could have concluded that reasonable ("I server.”); lyzer id. at 3063:17 think that is negatively impacted such inconsistencies testified.”); contrary just to how id. he persuasiveness Jeffay’s opinions. of Dr. (“What’s 3072:17-18 been testified to thus far however, requested requires action. detected performs the

ultimately Samsung argues ‘computer structure subrout- specifically, More linked “startActivity()” perform’ subroutine—the accused that causes the CPU to ine Samsung’s prod- subroutine” “computer (emphasis original). function.” J.A. 45 satisfy con- specified ucts—does quoted rejected Samsung’s The court Samsung Br. 27. It requirement. nection argument specified that “no connection ex- startActivity() merely determines argues ‘you requires ists claim 9 link because perform request- will application which performs program the actual than performing ed rather the task action function,’ dialing phone such as a number.” Thus, “specified at 29. a connec- itself. Id. Jeffay). Dr. (quoting Id. startActivity() to the subroutine tion” agree We the district court infringe there is no would not- because Apple presented substantial evidence application that ultimate- connection specified that the accused contain a devices ly task. performs the Id. connection between a detected structure argument can be illustrated This computer and a subroutine causes the (the example. operat- through an Android perform operations. to sequence CPU a ing system phones) run on the accused devices, the detected accused struc phones typically multiple applica- contain data, an object ture is such as a capable sending emails. When a tions phone number or address. email J.A. email, inputs a to send an user command 10854:11-25,10858:3-12. computer And the phone prompts the user to select an ais method called “startActivi subroutine application to send the email. available ty().” Mowry Dr. J.A. 13040:25-13041:4. or may appli- be two three available There phone that the numbers testified and email cations; application the user selects which object. form of an Intent part addresses contends is not use. this a J.A. 10858:3-12. a user wishes When “specified connection” because the user’s perform some action in the accused devices particular appli- is not tied command to a (such place phone call send performs cation that the command. See email), setlntent() passes a method called 28; (tri- Samsung Br. J.A. 11586:1-11587:6 object startActivity() the Intent su Haekbom, Google al testimony Dianne Dr. broutine. J.A. 13040:6-23.11 Mowry ex argues- engineer). It is “no evidence that if a wants plained “program open specified of any connection between detect- program, Intent object.” it uses an another actions,” Samsung ed structures and Br. 10861:4-6. J.A. He described startActivi added). 26 (emphasis ty() that launches “launcher” other construction, however, claim does Our perform requested programs action. specified not require a connection between example, For if J.A. 10858:13-20. a user applications detected structures and the call, phone to make wishes startAc- It perform operations oh them. re- tivity() launches the user’s subroutine se quires specified connection between de- dialing application. lected J.A. See 10861:4- computer structures su- tected 10. causes perform broutine that the CPU to According Mowry, startActivity() to Dr. operations. court made district computer its “the observation JMOL order: “The subroutine causes actions,’ perform construction ‘linking sequence opera- Motorola the CPU Mowry product. [of Dr. testified that “the names on the version of accused J.A. depending are a different” subroutines] little 10862:16-20. structure,” B. as our The '721 Patent tions on that detected requires. J.A. construction 13040:25- infringement asserted of claim 8 Mowry testified that startAc- 13041:4. Dr. patent. entered a tivity() “necessarily” called when user infringed that claim' 8' verdict 13040:6-23, action. J.A. particular selects a would not have been J.A. obvious. explained 13041:7-16. He that “if the user Samsung challenges the district option, picks particular that information court’s denial JMOL that 8 would passed procedure another shown agree will'be have obvious. been We with the bottom, district court that on the is called Activi- there was substantial which Start support jury’s underlying ty, and that is the launcher.” findings fact .findings and that these fact “you get 10858:13-20. He testified that supported the that Samsung conclusion Activity different behaviors Start convincing to establish clear and failed you based on fill how fields that claim evidence 8 would have been object. Intent that causes the different So obvious. A actions to occur.” 13042:25-13043:2. on jury have

reasonable could relied this question of Obviousness is law testimony Samsung’s find accused underlying based on facts. Kinetic Con linking devices actions limitation. meet the Inc., v. cepts, Nephew, Inc. Smith & 688 J.A; (“[T]he jury See 45 could have deter- 1342, (Fed. 2012). F.3d 1356-57 Cir. When startActivity() this mined satisfies reviewing a of of denial JMOL obvious it admittedly limitation is linked because ness, jury there is a box where black ver of performance subroutine that causes dict, here, presume is the case as we the action.”).12 jury underlying disputes resolved factual of the verdict winner and leave favor Circuit, proper In the “is Ninth: JMOL presumed findings those if undisturbed when rea- permits only the one evidence supported substantial evidence. Id. We is sonable conclusion and the conclusion legal then de examine conclusion novo Monroe, contrary jury.” of the 248 to that light of those facts. at 1357. Id. Mowry’s testimony pro- F.3d at 861. Dr. Co., In v. John 383 Graham Deere U.S. of infringement. vided substantial evidence 1, 17-18, 684, 86 15 545 S.Ct. L.Ed.2d light Mowry’s testimony, can- of Dr. we Inc., (1966), and KSR Int’l Co. v. Teleflex permits conclude evidence 398, 406, 1727, 550 U.S. 127 S.Ct. is one reasonable which conclusion (2007), Court Supreme L.Ed.2d set contrary jury verdict. see no We in- out framework for the obviousness error in the district court’s denial of JMOL § quiry under U.S.C. 103: of non-infringement. § scope and content of Under validity pat- judgment the '647 determined; art are to prior dif- ent was not affirm the dis- appealed. We art ferences between the and the ascertained; trict of JMOL to this court’s denial at issue are to be claims patent. ordinary skill in the level Samsung argues “specified specified Because also con- connection limitation. place nection” the user we conclude that there is substantial record must be before begin timing argu- operations finding, on a for this selects a command to necessarily Regardless, we see no detected This ment fails. structure. Br. 31-32. claim, timing argument premised timing is limitation in the and construc- on startActivity() satisfy appealed. claim was not contention does not tion this course, present.”). requirement is Against art This

pertinent resolved. recognition of fact that each of or nonobvi- background, obviousness subject helps deter- factors inform ultimate matter is Graham ousness Kinetic secondary determination. Con considerations obviousness mined. Such success, Nike, 1360; un- 688 F.3d at Inc. v. Adi long cepts, felt but commercial (Fed. others, etc., AG, needs, Cir. failure of das solved 2016) give (holding secondary light utilized might be surrounding origin of be examined to considerations must deter circumstances patent- impact to be three subject sought matter mine its on first Graham factors). ed. patent portable de- The '721 discloses

A whether determination display with a that can vice touch-sensitive under claim invalid as obvious performed via gestures” be “unlocked § requires consideration all four patent at Abstract. the screen. factors, Graham error reach “problem teaches associated of obviousness until those conclusion all portable using touch with screens de- Cyclobenzapr are considered. In re factors activation or vices the unintentional Hydrochloride ine Extended-Release deactivation functions due uninten- Litig., Capsule Patent 676 F.3d tional screen.” contact the touch Id. 2012) (citing Richard 1075-76 1:38-40. “Unintentional activation deac- Co,, Upjohn son-Vicks Inc. 122 F.3d tivation functions due unintentional 1997)),13 (Fed. 1476, Objective 1483 Cir. contact with the screen” is common- touch must be indicia nonobviousness consid See, ly dialing.” to as “pocket e.g., referred See, every case present. e.g., in where ered Cockburn) (Andrew (de- J.A. 10638:9-13 Deepwater Drilling, Transocean Offshore scribing “pocket problem”); dial USA, Inc., Drilling Maersk Inc. v. (“Apple’s Br. '721 discloses 1340, (Fed. 2012) (“[Evi F.3d Cir. user-friendly problem to the solution oí rising ‘secondary out dence so-called accidental activation mobile touchscreen always present considerations’ must when (e.g., ‘pocket dialing’).”). Greg devices en route to considered a determination Christie, patent, an inventor '721 (quoting Stratoflex, Inc. v. obviousness.” problem and he his col- described (Fed. 1530, Aeroquip Corp., 713 leagues set out solve: 1983))); Corp. Simmons Cir. Fastener Works, Inc., 1573, use, Illinois Tool 739 F.2d were about accidental [W]e worried 1984) (“The [sic], dialling section 103 pocket phone getting accidentally, test of forth Gra or nonobviousness shut down since we set were part comprising, four inquiry going ham is a have all these features on the (scope phone, messaging, the three familiar like elements e-mail and we art, that, know, mail you and content of differences were worried could prior art or accidentally between the and the claims be sent deleted acciden- issue, of ordinary skill in the or tally phone level would answer and itself art), pertinent simply surface—you but also evidence second because the touch is, know, like, ary like, when if it the touch considerations such evidence sur- courts, though secondary appropriate, invited Even and where considerations look secondary argued Supreme any were in KSR Court considerations would obviousness, KSR, regard prove the Court ex- 550 U.S. at instructive." plains: inquiry sets S.Ct. “Graham forth broad know, leg pocket, against your your face or day, we tens hundreds of times a like, know, you that just, be, were so we worried want didn’t the instruction around, moving jostling you know, around would insulting or talk down to the ,to trigger things customer, the screen. want it be cum- We didn’t bersome, something they J.A. 10601:4-13. grow tired of after while. impor- also describes phone Apple’s expert, tance of Dr. making “user- 10602:6-20. Cock- activation burn, friendly” possible. explained “efficient” It that there was a tension preventing pocket dialing teaches: between ease of use: has to It [I]t “... work. has to for Accordingly, there a need more in preventing succeed efficient, accidental activation user-friendly procedures for by yet mistake. be some- devices, screens, But needs .to unlocking touch such thing do,, easy easy that’s so but not applications. generally, -More and/or accident, that it can efficient, occur and it suc- there is a need more user- ceeds that.” JA.. 10639:19-23. friendly transitioning procedures devices, screens, such touch ap- and/or Apple asserted claim depends which plications between user interface states from claim against several de- (e.g.; a user state for interface vices. These claims recite: first to a application user interface state device, portable A7. electronic com- for a application, second between user prising: application, interface states the same display; touch-sensitive states). locked between unlocked memory; addition, for sensory a need processors; one or more progress feedback to regarding the user one or modules more stored input towards satisfaction a user con- memory configured for execution dition required for the transition or more processors, the one to occur. including one or in- more modules '721 Mr. Christie at 1:56-67. testi- structions: fied that the ease the user interface was to a contact detect vrith the touch- a central design consideration devel- when display prede- a first sensitive oping to unlock the slide feature: corresponding location to fined thought to [W]e some sort of introduce image; unlock gesture. definite We we to knew wanted continuously to move unlock im- the have some instruction. knew we We age display on the touch-sensitive in wanted to be the the interface obvious movement of accordance with the It possibly customer. would be first contact while continu- detected experience even a retail environment. with ous the touch-sensitive contact They’re they deciding want to whether maintained, display wherein the iPhone, buy up you it. They pick this graphical, is a image unlock interac- know, they if very would be bad object with which tive user-interface phone they looked at the had heard to unlock interacts order a user so at it they much and look about and device; and figure “I use I

(cid:127)say can’t out how to this. how to electronic don’t know unlock it. It’s locked.” hand-held unlock time, At image the unlock people we knew if moved same device you predefined location on unlocking phone, would be their from first “entertainment, controllers for predefined touch to a mounted screen systems.” Id. region security, and climate control unlock the touch-sensitive in- were to be display. These controllers intended or the into the stalled “flushmounted wall com- further The device claim cabinetry.” presented Id. The authors six display visual prising instructions unlocking alternative mechanisms to communicate a cues direction students, undergraduate group fifteen image required of the unlock movement including toggle” a “slider a user where to unlock device. by “grab[bing] activate controller could Samsung’s found that accused jury The it to other pointer sliding] patent. infringed claim 8 devices preferred side.” J.A. 20743. The students Samsung appeal J.A. 40872. does “toggles pushed” “toggles that are over also found aspect of the verdict. The slide,” generally ranked the slider was willful Samsung’s infringement paper fifth of the six alternatives. Id. prove clear failed pre- also notes sliders “were not convincing claim 8 invalid. ferred,” “sliding is complex task more verdict, Samsung Following J.A. 40874. simply touching,” than “sliders alia, that, for JMOL inter moved implement are more difficult to than but- Samsung did have been obvious and would tons.” Id. willfully infringe claim. district court motion as obvi- denied appeal, not contest On does granted the motion as to will- ousness but that, together, Neonode and Plaisant dis fulness. Rather, all the of claim 8.14 close elements Samsung argues would have claim 8 parties dispute person whether light combination of been obvious ordinary skill the art would have been and Plaisant. “Neonode” refers Neonode unlocking motivated combine one N1 Quickstart to the Neonode Guide. J.A. mechanisms disclosed Plaisant with a mobile device 20713. Neonode discloses Samsung argues was no Neonode. “there explains a touch-sensitive screen. It with any suggesting kind that Plais- may that a user unlock the device application ant’s a wall-mounted device user pressing power button. After the lead inventors not to combine Plais- button, presses power appears text Br. Samsung Resp. ant Neonode.” sweep to instructing “Right the user to expert, Greenberg, 19-20. Its Dr. testified Sweeping unlocks the right unlock.” then person of ordinary that a skill “would be unit. J.A. 20725. be highly interested” in both references sys refers corre- “they “Plaisant” to a cause both deal with touch base video tems, they in 1992 both interfaces.” sponding two-page paper published deal with user Toggle Design” Greenberg “Touchscreen 11982:13-17. Dr. testified titled J.A. person just looking Catherine Plaisant and Daniel Wallace. that “a would two, to con- think it natural these paper J.A. 20742. authors combine Plaisant, slider, taking experiment an to which well the ideas in ducted determine is, (“toggles”) prefer putting controls on wall- them on the Neonode users appear dispute prior not art to be 14. There does to be a considered for obviousness inquiry. parties two makes clear between over whether the does not end Graham prior inquiry requires analo- obviousness references are art and within the that the a deter- course, gous concluding the ref- whether the claimed invention arts. Of mination scope within have been skilled artisan. erences are and content of would obvious to a Pharms., Inc., just very thing a routine to think about F.3d TWI (Fed. design.” 2014); interaction J.A. terms Cir. 1196-97 Transocean Off- Samsung points to the 11982:23-11983:2. Deepwater shore Inc. v. Drilling, Maersk which sliding Plaisant reference states that USA, Inc., Contractors 617 F.3d likely movement “is less to be inad- done (Fed. 2010). KSR, “Before we Samsung Br. vertently.” (quoting 35-36 consistently the question had also treated 20743). J.A. to prior motivation combine art refer- question a ences as fact... KSR did not Apple that a artisan de- counters skilled ” change .... Wyers this rule v. Master signing phone a mobile not would' have Co., to to a Lock been motivated turn wall-mounted 1238-39 2010); (“[W]hether air conditioning controller solve the Cir. id. at 1237 there pocket dialing problem. Apple Br. 26-27. was motivation sufficient to combine the (cid:127) Cockburn, expert, Its Dr. testified a ].”). references” is a “factual issue[ person ordinary skill would not have district court determined that a reasonable naturally been motivated to combine Neo- jury person could have found that a node and Plaisant. J.A. 12877:17-21. Dr. ordinary skill not would have been moti- way Cockburn testified that the the Plais- vated to combine Plaisant and Neonode: ant controllers “were intended to be used jury A infer from reasonable could [Dr. was the touch screen would be mounted testimony ordinary Cockburn’s] into cabinetry a wall or into and would not artisan would have motivated been control, control, for used remote to combine elements from a wall-motmt- appliances, office or home like air condi- appliances ed touchscreen home tioning units or heaters.” J.A. 12876:20-23. smartphone, view of particularly explained He also that Plaisant dialing” specific “pocket problem to mo- sliding toggles itself discloses that were devices that invention bile less preferred than the other dis- switches sought address. Apple points closed. J.A. 12877:7-16. Additionally, explained Dr. Cockburn teachings Plaisant’s “sliders were away Plaisant “teach[es] preferred,” “sliding complex is more sliding,” you use of it “tells because task,” and “sliders are more difficult sliding [toggle] use mechanism.” implement.” Br. ar- Apple 27-28. gues substantial there was (citations omitted).15 noting J.A. 55 After jury to conclude not have would is question that what reference teaches been a Plaisant and motivation combine fact, the district court discussed the Neonode arrive the claimed inven- about various statements Plaisant slid- tion. ing toggles and concluded that substantial supports findings fact art teach

What reference a motiva- es failed to establish skilled whether artisan agree tion to We have motivated to combine. 55-56. been combine references Pharm,, record, are questions of fact. See Par Inc. court that on this the district prefer- away, regarding 15. The court denied on two users district JMOL its statements discrete bases. J.A. 54-56. Because we 'find ring are forms of switches relevant to a other support substantial for fact evidence the regarding finding whether a- skilled artisan combine, finding regarding motivation to we to the slider would be motivated combine not reach issue of Plaisant need the whether toggle phone in Plaisant with the mobile in note, away teaches however, that, from the combination. We Neonode. if. not teach even Plaisant does by findings supported tion evi- jury’s implicit fact Plaisant was also substantial weigh strength or the relative provided not have skilled artisan dence would Samsung’s against Apple’s combine evi- a motivation to its evidence with slider supported determining is limited to toggle with dence. are switch Neonode We for there was substantial evidence evidence. addition to the whether substantial Plaisant, jury’s findings, entirety on the in court ex- statements . the Ninth Circuit stan- plained: record. And under dard, we cannot conclude that evidence testified, contrary to Dr. Dr. Cockburn affords one reasonable conclusion and Greenberg, person ordinary contraxy jury. it to that of See in not skill art would have been Monroe, agree F.3d at We with 801. motivated combine Neonode “A jury the district could court: reasonable way in Plaisant such a invent testimony ordinary infer this an from First, provided He reasons. Plais- two artisan not have motivated to would been designs” “toggle ant described intended elements from combine a wall-mounted “touch used screen [that] be appliances for home touchscreen into wall mounted or into would be smartphone, particularly in view of the controlling cabinetry” “office or for specific ‘pocket dialing’ problem to mobile like appliances, conditioning home air Apple’s sought devices that invention jury A units or reasonable heaters.” address.” J.A. testimony could infer from this ordinary not been artisan would have Objective 1. The Indicia

motivated to combine elements of Non-Obviousness ap- touchscreen home wall-mounted particularly pliances smartphone, and a Supreme explained The Court dialing” “pocket in view of problem “may various factors also serve devices that specific mobile ‘guard slipping against into use of hind sought invention to address. sight,’ temptation to"resist the to read omitted). (citations teachings J.A. 54-55 into art prior Graham, invention in issue.” 383 U.S. agree analy- district We with the court’s (citation omitted). These S.Ct. sis. found issue of Because the commonly secondary factors known as validity presume we Apple, favor of it objective of non- considerations indicia conflicting expert testimony resolved obviousness. These include: commercial artisan and found that a skilled enjoyed practicing success devices been to combine have the slider motivated invention, patented industry praise for the phone cell toggle Plaisant with the dis- invention, others, patented copying by question closed Neonode. for our long-felt of a but unsatisfied existence review whether substantial evidence As need for this court the invention. held supports finding. fact implied con-We Stratoflex: clude does. discloses a Neonode Indeed, phone. mobile Plaisant of secondary discloses a wall- consider- air conditioning may mounted controller. often be the probative ations most jury had it- Al- It cogent both before references record. though arguments Samsung presents may establish often that an invention references, combining light ax-gu- appearing to have two these been obvious in jury. ments Our art It job were before is to not. evidence, losing posi- part review whether all the considered just findings the re- derlying when of “industry decisionmaker favor reviewing praise mains in the art. specifically doubt after slide to un- lock invention.”. J.A. 56. It cited numerous F.2d at evi- 71S 15B8-39. introduced Samsung that internal both documents industry praise, copying, of dence commer- praised Apple’s slide to. unlock feature and success, long-felt pre- cial and We need. that Samsung modify indicated should its the the sume found that evidence was phones to .incorporate Apple’s own slide to preponder- sufficient establish each unlock feature: of ance We evidence. find substantial evidence, in support record each (cid:127) PTX 119 at presentation 11: pre- findings. those pared by Samsung’s European de- sign team a pic- June with Industry

a. Praise stating ture the iPhone that industry that Evidence Apple’s slide to unlock invention is praised product claimed or a invention way[] splving “[creative UI weighs that embodies claims complexity” “swiping and un- against an that the same claimed assertion on lock pre- screen allows to invention would Indus have been obvious. unlock,” 50950; vent erroneous J.A. try participants, especially competitors, (cid:127) Samsung PTX 121 at 100: software not likely praise an obvious advance group verification document with a Thus, over known art. if is evi picture noting iPhone un- of industry praise dence of the claimed “Victory” Samsung’s phone, like record, weighs invention in it favor “unlocking pre- iPhone’s standard is in of the non-obviousness claimed through cise as it is sliding, handled See, e.g., vention. Univ Institut & Pasteur any prevention allows Focarino, ersite Pierre Et Curie v. Marie motion,” wrong recommending (Fed. 2013) 1337, 1347 (¶ n - Cir. improvement” máke “direction' dustry praise probative ... provides iPhone, it the clarify “same as [and] cogent ordinary evidence that one of skill unlocking by sliding,” standard in the art ex would not have reasonably 51289; J.A. invention].”); pected [the claimed Power- (cid:127) Samsung PTX One, 19-20: docu- Techs., Inc., Artesyn Inc. v. 599 F.3d 2010) picture ment with a the iPhone (noting recommending improving the Sam- industry praise, specifically praise sung phone by making it “easy to from a competitor, tends to indicate unlock, [given lock screen that] al- obvi the invention not have been ous). guide ways shows text arrow like iPhone” to make the lock regarding appeal entire icon’s movement “be smooth and jury’s praise fact finding industry iPhone, continuous” like the J.A. 57 weighed in favor of is con- nonobviousness (JMOL 157); citing PTX Order “Indeed, in one half of one sentence: tained (cid:127) solely generic Samsung relied 219 at 14: district court PTX document (cid:127) ¿ praise not subject-mat- picture noting linked to actual iPhone ” “intuitively ter .... Br. 37. The indi- iPhone argu- rejected Samsung’s length district court cate[s] the direction and issue, determining unlocking ment on this sub- move when the lock screen,” 51603; un- supports stantial invention, linking that in- thereby' (cid:127) claimed Samsung docu- 120 at 84: PTX patented invention. praise with dustry that of an iPhone picture with a ment Improve- the “Direction describes Copying b. un- bar to using a defined as

ment” is on the done phone, lock the briefing in its Samsung dispute not does de- document iPhone. The same evidence jury heard substantial Improve- “Direction scribes the fea- iPhone’s claimed copied it in- displaying the unlock ment” words, Samsung In other does tures. screen, on as is done on the struction substantial challenge appeal evi- J.A. the iPhone. Samsung in the record dence exists (JMOL citing several feature, Order See J.Ai 56-57 nor to unlock copied Apple’s slide documents). internal docu- Such Samsung appeal that this evi- challenge it does competitor patentee’s top ments from a conclusion copying supports dence admissions, acknowl- represent important not have been obvious. that claim 8 would patented of the advance edging the merits Samsung internal Apple cites the same art can be then state over the industry praise and for both documents n industry praise. Dr. used establish they show evidence of both. copying, as Cockburn, expert, testified “these multiple internal Sam- contains The record recognized Samsung documents various given by Sam- sung presentations different (citing of claim 8.” J.A. 57 advantages stating times sung groups at different 10640-52). J.A. is bet- to unlock feature the iPhone’s slide Samsung alternatives. ter than the various explained Apple pre- The court also (PTX 119); J.A. supra J.A. See showing trial Steve Jobs a video at sented (PTX (PTX 120); J.A. feature at an unveiling to unlock the slide (JMOL 121); citing PTX Order J.A. 57 swiped to Mr. Jobs Apple event. When (PTX 219). 157); many J.A. 51603 And into phone, “the audience burst unlock the conclude that the presentations same (Andrew these . Cock- 12879-80 cheers.” J.A. Samsung is for improvement direction bum). jury, was shown The video unlocking mechanism to be modify its inventor, Ap- Apple’s expert, id. This substantial like the iPhone. See all Marketing refer- ple’s President Vice by Samsung, and it copying testimony. See their enced video jury’s verdict supports (JMOL citing Tr. at J.A. 57 Order 4/4/14 not have been ob- claimed invention Christie)); 12879:17- (Greg 603:6-11 vious. Cockburn); (Andrew Tr. at 12880:2 4/1/14 Schiller) (“There (Phillip were

428:12-17 c. Commercial Success event, press in attendance many enormous.”). the reaction was brief, appellate opening In its glosses over commercial suc also any not discuss Samsung does cess, “Apple sentence: made giving one light of this evi- appeal. evidence on a nexus between no effort to establish dence, argument that the dis- we find its subject and the matter commercial success only generic trict court cited praise Samsung Br. 37. Commercial iPhone, of claim 8.” praise tied the claimed to the claimed feature, a nexus requires without success merit. slide unlock Transocean, 699 F.3d at 1350. invention. presented substantial to ascertain whether look to the record industry that We praise evidence of for the substantial to features specifically related It finding Apple portance. fact that a nexus established reasonable to con- likewise the in- advertising between clude that highlights commercial success and that vention in claim 8. a focuses on feature of invention could purchasing influence customer decisions. trial, Cock- Apple’s expert, At Dr. patent—an And an inventor of the '721 bum, that the practiced testified iPhone Apple Vice President—confirmed that patent, asserted claim '721 important slide to unlock was because it “clearly commercial there’s been success possibly be [a customer’s] “would first ex- this J.A. iPhones that use invention.” perience even in a retail environment” 12879:20-22; also J.A. see 11984:24-25 “deciding when the customer was whether (“[Tjhere’s question that they to buy it.” want J.A. 10601:25- success.”) (Saul iPhone was a commercial Christie).17 (Greg 10602:22 Mr. Schiller ex- Samsung’s Greenberg, expert). Critically, plained importance to the slide un- survey Apple presented cus evidence that great lock feature detail: likely purchase tomers would be less to a portable ran, people device without the slide to unlock this ad When hadn’t had pay feature products opportunity yet and would less for to actually use an it, permitting themselves, jury without to for they’ve thus iPhone and so conclude this feature driver key point that was a never used this in time a device anything challenge the ultimate commercial like it. success is how do 21066, products.16 you people, Apple’s Sen show a simple, 30-second ad, ior Marketing something gives Vice President Worldwide them a feel very to generation testified that slide unlock was the what it’s like to use this new original first shown in Apple’s Apple’s smartphone. feature And we started commercial, Tr. something iPhone the with you’re going TV ad to be 4/1/14 Schiller) (Phillip PTX (citing doing every day, many many, 433:16-434:18 times a 180), screen, jury day, and the saw which is to unlock that commercial that, during you Id. A to simple gesture, the trial. reasonable use a do unlock. gesture, could have found evidence that slide to And that one first, marketing experts emphasize having you get elected to seen that one thing the claimed feature as evidence of its im- an instant idea of how works multitouch Samsung argues 16. In reply.brief, previously recognized its 17. We have a find- Apple’s survey evidence "did not test the even ing of nexus between the success commercial smartphones.” Samsung Resp. product patented a and the merits however, patent, Br. The claims of the '721 product invention embodied in that can be smartphone, are not to a directed but rather patent- factors to the undermined external to a “hand-held electronic device.” J.A. 685. invention, marketing such ed advertis- Apple’s survey evidence with 7" tested tablets See, ing. e.g., Brown & Williamson Tobacco ' argued screens. No one that a 7" tablet Inc., Corp. Philip Morris 229 F.3d device,” not a "hand-held electronic does nor (Fed. 2000); Paulsen, 30 1129-30 Cir. In re anything this distinction have do with the (Fed. 1994). Cir. Unlike the suggest slide to unlock feature. The dissents facts, however, present cases did not those rejected survey should be advertising campaign specifi- involve an survey only because the establishes that cus- cally highlighted patented stressed and purchase device prefer tomers. would new, way complex feature as introduce with a slide-to-unlock feature such and that product public. does not demonstrate a nexus Apple's particular slide-to-urilock mechanism. argument We decline to because it reach appeal. was never in this made invention, on the its you’re doing gesture claimed slide unlock so feature, screen, something simple problem. solved does finding long-felt you, easy appeal of the fact that it’s and useful sentence, single figure it limited to a You don’t manual to need was need a use. point quote starting simply one itself And that was. which was out. Sys. beginning understanding All. Mach. great your George M. Martin Co. v. LLC, iPhone kind 618 F.3d is and what this Int’l what 2010): between can the differences “[w]here of do. device art and the invention are prior the claimed video of Finally, at 433:1-18. the Tr. 4/1/14 here, they ... it cannot as minimal are into cheers” “bursting] the crowd when any long be that felt need was un- said to un- demonstrated slide Steve Jobs the (alteration in Samsung solved.” Br. 37 that supports lock feature a conclusion brief, applica- In its original). there was particular feature. consumers valued this case, no of analysis tion to this of the issue Cockburn). (Andrew 12879:20-12880:2 need, any long-felt no citation to rec- and job fact the is the assess It finders’ ord evidence. of presented. value probative the evidence Plas- & Tool Co. v. Pro-Mold Great Lakes Samsung’s quote To the that extent tics, Inc., interpreted jury precluding should be (“If 1996) the is of province within fact- the finding long-felt favoring need non-obvi- re- disputes resolve these factual finder to ousness when the between the difference exists between garding whether nexus the art and invention is prior claimed product commercial of the and success small, reject categorical such a rule. we features, patented its and determine the This is type hard fast rule not and value Pro-Mold’s evidence probative appropriate for the that are factual issues —”). secondary considerations jury. to the province left There long-felt might be a for could need what overall This record contains substantial relatively improvement considered a small the slide nexus between upon prior depends over the art—it all feature the iPhone’s commer- unlock evidence, it is toup the fact finder to give success, required to and we are cial assess evidence. jury finding fact deference. It not this reweigh our consid- role Moreover, we do not understand the might supported. er what the record have quote George from M. Martin be a supports This commercial success evidence simply proclamation law but instead verdict that the inven- claimed application particular to the of that facts not tion have been obvious. clear quoted case. The makes language evaluating the facts in that the court was Long-Felt

d. Need particular regarding case the claimed art, prior long-felt Evidence of advances “as minimal as but unre over Martin, weigh -the non- they George can in favor of solved need here.” M. George it is importantly, of an F.3d at 1304. And obviousness invention because explains to infer M. Martin court that the “need” reasonable the need would prior persisted already have had been obvi had been met art the solution already problem for the ous. There substantial evidence devices solved Thus, long- George Id. jury to found issue. at 1305. M. have that there was Martin, be- unresolved for was the difference felt but need a solution dialing problem Apple’s prior art the claimed inven- pocket until tween minimal, unlock, already Ripple unlock, tion but art had glass and the problem patentee for unlock, solved the which the circle explained how each of long-felt there was a need. Id. claimed these failed solve accidental activa- argument long-felt sole need problem. jury tion Id. The could have rea- based, misreading George on a thus M. sonably this testimony found that estab- Martin. long-felt lished unresolved need. case, In this evi- there is substantial addition, could have found jury’s finding long-felt dence internal docu- same supported need nonobviousness upon industry ments relied Denying claimed invention. JMOL praise copying demonstrate Sam- issue, the district court testimony cited sung its compared rejected four of own expert: “Dr. Coekburn’s testi- (Kepler, mechanisms alternative unlock mony phone designers been try- had Behold, Victory, Amythest) & ing to problem solve the acti- accidental mechanism, iPhone unlock slide to ‘pocket problem’

vation and the dial before Samsung the concluded iPhone slide existed, up the but had come only iPhone See, e.g., to unlock was better. J.A. 51028 ‘frustrat[ing]’ with solutions.” J.A. 57 (PTX (“Behold3: 120 at 28 Unintentional 10638-39). (quoting expert J.A. the While ,.. unlock occurs Lock iPhone undone first particular examples discusses sliding applied when action person: “I very have with frustrated been button”)); (PTX specific J.A. 51289 121 at options],” jury art could still [the the Lock un- (“Victory: gets The Screen reasonably testimony find was with slight locked flick motion”; “iPhone probative long-felt See need. . Unlocking as it is han- precise standard 10638:17-19. through sliding, dled preven- allows The district court also the testimo- cited motion”)). any wrong jury tion The inventors, ny of one the where he dis- Samsung could found that these doc- have pocket dialing.18 cussed concerns over Samsung, Apple’s uments show that fierc- portion addition to the of Dr. Cockburn’s competitor, est unsuccessfully trying court, by testimony cited the district problem. All solve same of this the portions upon testimony other his presented during to the jury evidence was jury finding predi- which the fact be could trial in this case. This consti- the The cated. record á document contained (PTX jury tutes evidence for the fact 55) substantial which all listed the finding long-felt was a but unre- that there alternatives iPhone slide to unlock. (Andrew need, patented which See Tr. at solved 680:10-687:15 4/4/14 Cockburn). Apple’s expert through This weighs went invention solved. alternatives, including several favor of non-obviousness. that, know, mail, you This how the inventor sent described could be worried problem to be solved: accidentally accidentally or deleted or Q: you problem guys phone simply What was would answer itself because working know, you like, were at the on time that came surface—you if touch it was up the '721 like, invention?. leg against your the touch surface ,. We were worried A: about accidental like, pocket, just, your we were worried that use, [sic], pocket dialling phone getting around, know, you jostling moving around accidentally, we shut down or since were things trigger would on screen. going to have all these features J.A, Christie). (Greg 10600:17-10601:13 phone, messaging, like we were e-mail.and be both intuitive to mechanism would Conclusion Obviousness pocket dialing problem

of the '721 Patent use and solve the phones, for to look to a cell wall-mounted important Acknowledging “it can for an two- controller air conditioner. The that would identify a reason have page Plaisant in 1992 re- paper published ordinary person skill in the prompted a ported user-preference of a the results relevant combine the elements field survey undergraduates of fifteen on six does,” way claimed invention new computer-based That different switches. Supreme “[h]elp- Court cautioned artisan look to skilled the Plaisant however, rig- insights, ful need become paper to a directed wall-mounted interface KSR, mandatory id and formulas.” appliances for choose the screen and then 418-19, U.S. S.Ct. 1727. The Su- toggle, study which found slider rated explained: preme Court options usability, fifth out of six to fulfill analysis cannot be obviousness intuitive unlock mechanism need by conception confined formalistic pocket dialing problem that solves suggestion, teaching, the words cell phones seems far obvious. motivation, overemphasis on the importance published articles and implicit have the jury’s We considered explicit patents. content of issued findings teachings fact about the of Plais- diversity pursuits inventive ant have and Neonode. We also considered technology against of modern counsels objective found indicia analysis way. limiting in this particularly strong which are in this case powerfully weigh validity. and favor of 419, 127 preventa “Rigid Id. at S.Ct. 1727. industry praise, They copying, include deny tive rules that factfinders recourse to success, long-felt commercial and need. sense, however, neither common neces real These indicators of whether world sary our law nor under case consistent combination would have been obvious to 421, it.” Id. at 127 S.Ct. 1727. with With “tip in this skilled artisan case mind, these we review de principles Graham, patentability,” of scales 383 U.S. legal novo the ultimate determination 684, 36, at “dislodge 86 S.Ct. or the deter- conclude that it would not have been obvi that mination have [8 been] would to a to ous artisan combine the skilled KSR, obvious,” U.S. 127 S.Ct. prior art to arrive the claimed invention. factors, Weighing all of the Graham Common sense and real world indicators agree we court on the district indicate that conclude otherwise would legal ultimate determination that Samsung give hindsight, in to allow the convincing clear failed establish post reasoning against ex exact which the of claim 8 the '721 Supreme Court cautioned Graham and have obvious. affirm would been We KSR. Plaisant The record includes court’s district denial JMOL. Neonode all these references teach, including to in- Plaisant’s reference 3. Willfulness activation, advertent difficult complexity, implementability, Apple appealed grant and that users court’s do district prefer Though willfully did not sliders. art refer- JMOL touchscreens, to- infringe patent. ences each relate claim 8 The '721 tality solely court’s was supports the evidence conclu- district decision based on that Samsung’s sion been its de- have obvious determination artisan, objectively a seeking an unlock reasonable under skilled fenses were Tech., Seagate string” standard In re in the second area. Claim 18 is 2007). LLC, recited below. Supreme Given -the Court’s

J.A. 63-66. graphical 18. A user a interface Elecs., Halo willfulness decision in recent portable key- electronic device with a — Elecs., Inc., U.S.-, Pulse Inc. v. a display, board and touch screen com- (2016), prising: we S.Ct. L.Ed.2d 278 remand willfulness issue for dis display a first area touch screen trict court new stan consider under the displays a current character in the dard first instance. being input by a string user with the

keyboard; and area of C. The n '172Patent second the touch screen separate display from the area first summary moved for judgment displays the current character patent, infringement claim 18 of the '172 portion string sug- thereof and a granted. which the district court gested replacement string character entered verdict that claim 18 the '172 current string; character patent would not have been obvious..Sam- wherein; challenges sung judg- the district court’s string the current character in the infringement ment which based is replaced suggest- first area with the “key- the court’s construction of term if replacement string ed character It also challenges board.” the district key keyboard user activates on the court’s denial JMOL that claim would delimiter; associated with a have been obvious. We affirm both the the current character string relating to judgment infringement and replaced first suggest- area with the relating invalidity. if replacement string ed character gesture performs sug- user on the method, directed replacement gested string character system, providing interface for “auto- area; in the second and input- correct” recommendations users string the current character into ting portable text a electronic device. kept if performs first area the user patent '172 Abstract. Claim in gesture on the a the second area claim, graphical asserted recites a user string por- character or current comprising “a and “a interface first area” displayed tion thereof in the second area” of a The “first second touchscreen. area. text, displays area” or charac- “current trial, input string,” by Apple summary ter The for the user. “second Before moved displays both judgment Samsung’s area” the “current character that accused devices suggested a of In string” replacement. infringe patent. and claim 18 the '172 provides option Samsung disputed only a to response, Claim user with the whether suggested or accept replacement keep satisfy its devices claim re- accused 18’s inputted. accept quirement “keyboard.” can a the text The user of district The motion, Apple’s suggested replacement by activating granted determining court (such keyboard spacebar) key Apple infringement on as a that had shown and suggest- jury that performing gesture on the that no reasonable could find in area. replacement Samsung’s ed The accused devices fell outside the second “keyboard.” of keep inputted by perform- user can its court’s J.A. text construction on the ing gesture “current character (J.A. 21000). The Xrgomics issues of at Abstract jury proceeded

The trial tes- presented jury expert damages. parties validity jury found timony objective both references patent of not invalid and on claim the '172 of $17,943,750 for in- non-obviousness. indicia and awarded Samsung’s accused devices. fringement by Samsung’s Wigdor, expert, Dr. testified JMOL, Samsung moved J.A. 40874-76. of every limitation that Robinson discloses that could find arguing no reasonable limi- patent except the '172 claim claim '172 that requiring a “current tation character motion, Samsung argued invalid. its in the first area.” 12024:5- string J.A. claim have been obvious that 18 would 12025:9, Dr. that Wigdor further testified No. over the Patent combination U.S. computer since “anyone who’s used (“Robinson”) 7,880,730 and International be familiar with this that would idea 1970s (“Xrgom- Publication No. WO 2005/008899 your you type, up ... as the text shows ics”). Samsung’s court denied district He cursor.” J.A. 12025:1-9. testified that motion, evi- determining substantial art that example prior one discloses findings supported the fact dence Robinson, missing limitation “cur- concluding related obviousness area,” is string in the rent first character findings supported fact the conclu- these Xrgomics. Wigdor J.A. 12025:1-11. Dr. prove by had sion failed Figure Xrgomics, like stated convincing evidence that the '172 clear 18, displays inputted claim text “deva” patent was invalid. J.A. 67-69. is typing where user and in the both bar. 12026:3-19. He álso suggestions argues the appeal, Samsung district On ordinary that a skill person testified denying its motion court erred the art have Robinson would combined have the '172 JMOL Xrgomics to render claim 18 obvious. Xrgomics. with Robinson been obvious over J.A. 12027:1-21. argues the court Samsung also district construing “a keyboard and erred Cockburn, expert, disagreed Dr. display” encompass both touchscreen scope on the content art. keyboards, resulting in physical and virtual He testified Robinson fails disclose grant court’s erroneous sum- the district lack- “a series elements” addition to in- mary judgment devices ing string the “current character fringe patent. We first area” limitation. J.A. 12915:24- argument turn. consider each Cockburn, Dr. According 12916:15. be- text display cause Robinson does Obviousness

1. types the user characters in the when Robinson, sys area, of “Keyboard any first fails titled Robinson disclose correction,” options replacing keeping is 18’s for or tem automatic directed claim string.” particu- that character entry system to “an enhanced text the “current lar, not disambiguation to auto he testified that Robinson uses word-level does keys string matically in user that the character correct inaccuracies disclose “current (J.A. replaced,” by first troke Robinson at 3:24-26 area entries.” either is 20910). Xrgomics, by and word on the or activating keyboard titled “Letter a key keyboards gesture suggested input choice text method performing Robinson, keyboard systems,” replacement, is “there direct because reduced no entering replaced.” ed to a text efficient text there J.A. “method Likewise, Dr. ly by providing choices.” 12916:6-13. Cockburn testi- letter word character fled that “because the current ments and comments carriers were Robinson], string is not industry can’t be evidence of praise. [in there J.A. 12918:10- kept performs gesture.” if the user J.A. 13. Dr. Cockburn testified that such one document, 12916:14-15. Samsung internal J.A. reflected request Samsung T-Mobile’s that Xrgomics Dr. Cockburn that testified modify technology adopt its autocorrect not missing does disclose these elements. functionality (citing claim 18. J.A. 68 He Xrgomics testified that is not directed 698-700). Tr. jury A reasonable 4/4/14 correction, to spelling but is com- a “word could have evidence that Sam construed pletion “type patent,” a user can where sung’s carrier requested customer Sam Xrgomics series characters and. offers sung adopt technology claimed complete alternative words that that feature, praise of the claimed Using, word.” J.A. 12916:22-25. the same example Samsung’s expert, Dr. Cock- jury The Samsung that determined did Xrgomics burn testified does not prove that not convincing clear and evidence J.A, “deva,” correcting spelling teach that but claim 18 was The invalid. suggests devalue, “devastating, the words district that court determined substantial devastate, all of which are completions of supported jury’s evidence fact implicit - already what the user Graham factor typed.” findings has J.A. each Xrgomics, 12917:11-15. He light testified jury’s findings, “[i]n factual Robinson, like therefore does not disclose this Court cannot conclude that “the current string convincing character in the first clear and evidence that it would replaced obvious, suggested law, area with the have re- been matter as a placement string,” Xrgomics, bridge because gaps “[i]n between art presses if the user the space D-E- claim 18.” J.A. district court rea- bar.... kept. replacement.” V-A is There’s impliedly soned found Dr. jury testimony 12917:18-12918:2. Cockburn’s that Robinson and Xrgomics all did disclose the elements non-obviousness, objective On indicia of claim Wig- more than Dr. credible testified, Samsung’s clear to expert “its dor’s opinion, impliedly and the ac- me secondary that none of those consider cepted objective Apple’s evidence indicia ations were met.” J.A. 12032:14-15. Dr. Wigdor’s non-obviousness Dr. testi- over that, Wigdor iPhone while the testified mony no such evidence existed. J.A. commercially successful, it does have 67-68. district court held these specifically the user recited in interface findings fact presumed supported were expert, 18. J.A. Apple’s 12032:17-24. substantial evidence and denied Cockburn, disagreed, stating Dr. there was ' Id. motion for JMOL. see no error We success, “clearly” testifying commercial Gra- weighing district court’s “Samsung has sold over 7 and half ham factors. technique.” million devices that use survey appeal J.A. 12918:6-9. introduced does not willingness comparing finding of objective buy containing patent users to' indicia supports devices Sam- nonobviousness. sung’s objective ed feature those without. J.A. mention of the indi- only versus heightened This cia in survey patent with '172 its regard indicated willingness buy opening appears the '172 a footnote devices with brief in which patented patent’s entirety Dr. Cockburn in its rea- feature. reads: “For the same Samsung’s respect also docu sons '.721 testified that internal with discussed leMedia, evidence, 684), (see at 1168. This 780 F.3d supra at 86 S.Ct. objective are of together Apple’s of with evidence secondary non-obviousness indicia non-obviousness, patent.” weigh in inapplicable the '172 favor likewise indicia Samsung Samsung’s passing Samsung n.5. legal Br. 45 conclusion that did of the entirely an arguments its for convincing reference by not clear and evidence prove claiming entirely dif- patent, an different have obvious to a claim would been that invention, concerning and different ferent skilled artisan. evidence, enough to constitute a hardly Even in which a court concludes cases weight meaningful regarding the dispute jury a reasonable could have found objective Apple’s indicia evidence differently, facts the verdict must be some findings or the fact nonobviousness supported by if it substantial sustained Apple evi- presented in favor Apple. on the record that was before industry of commercial success dence and court, it is appellate But be- jury. invention, patented praise reweigh our the evidence or yond role supports Samsung which non-obviousness. might sup- consider what the record have dispute jury evidence or the not did arguments investigate potential or ported, findings appeal. related them on fact meaningfully raised. Our that were not presented also substantial evi findings fact review to whether limited jury a reasonable could dence which challenged appeal sup- and made Robinson find combination and by in the ported substantial evidence rec- every claimed Xrgomics failed disclose ord, so, findings if fact whether those Cockburn, expert, Apple’s element. Dr. support legal conclusion obvious- Xrgom- Robinson testified neither nor agree court that ness. We with district “the character ics disclose that current is substantial evidence for reason- string replaced area is with the first jury to have found that there was a able string,” suggested replacement character gap in the art that not filled was that Robinson does not re disclose Xrgom- the combination Robinson placing text at all. See J.A. 12915:24- ics, entirety of the that the not (testifying 12916:15 Robinson does weighs in favor of nonobviousness. We can- string character in the disclose “current that the evidence affords conclude area,” area, replacing text in the first first contrary to one reasonable conclusion area); keeping text first Monroe, jury. F.3d at 861. See (testifying Xrgom- 12916:19-12917:17 factors, agree Weighing we the Graham text replacement does disclose ics with the court that district failed all, completion). but teaches text While convincing to establish clear and evi- Samsung’s provided contrary testi expert the '172 dence claim observed, mony, as the court district have obvious. thus affirm been We it, conflicting testimony “the expert before court’s denial of district credibility to ‘make determi free motion JMOL. nations and the witness it considers believe ” trustworthy.’ Ki (quoting more J.A. 68 Infringement 2. Claim Construction & (citation Concepts, F.3d at netic brief,

omitted)). single page opening In a its By finding Apple, favor of Samsung argues that the district court jury impliedly testi expert’s found “a mony persuasive key- more than erred when it construed the term credible by Samsung. display” Ki board and a touchscreen testimony proffered 1362; physical Concepts, encompass netic Mobi- 18 to both and virtual 688 F.3d '414, disagree. keyboards. patents, We The district court and '449 '239 which the plain panel ordinary the decision determined affirmed the district court’s meaning “keyboard” rulings as on all issues patents. the term used of those We throughout thus specification claim 18 and the reinstate the district court’s award panel costs physical key- both and virtual which the had included vacated. We specification J.A. 162-63. The remand the boards. willfulness issue dis- the trict patent the court to graphical Supreme discloses user in- consider under the '172 both Court’s Halo containing physi- terfaces virtual the standard in first instance. 7:13-15, keyboards. patent '172 at cal See AFFIRMED (describing 7:33-35 contain- embodiments ing keyboard” “physi- virtual or or “a soft Costs specification cal expressly keyboard”). No appeal. costs on this contemplates keyboards part that are See, e.g., the at touchscreen. id. 4:11-12 PROST, Judge, Chief dissenting. (“The may user interfaces include one outset, At Judge Dyk’s I share keyboard displayed more embodiments on Judge Reyna’s concerns as to proce- (“The screen.”); a touch id. at 5:38-39 dural irregularities surrounding this case may touch to imple- screen 112 be used stage. at the en banc There was no need ment virtual or buttons soft one or and/or However, take having this case en banc. (describ- keyboards.”); id. at more 7:10-15 so, certainly done en banc court would ing a touch containing screen a virtual or practice have benefited from normal our keyboard). recognized by soft As the dis- allowing briefing further and argument court, figure trict every patent '172 parties hearing and from device, depicts portable electronic as amici, government. views such 18, recited in the in- preamble merits, On I agree Judge Dyk with cludes virtual J.A. 162 keyboard. (citing that KSR International Co. v. Teleflex 2, 4A-4I, 5A-5B). figs. '172 And significantly Inc. evidentiary reduced 2, specification Figure describes which necessary burden establish motivation has a keyboard, portable 'virtual as “a elec- to combine art and held references tronic having device touch and a screen motivation combine can found (em- keyboard.” soft '172 3:15-17 problem “any need or known in field added). phasis see error We endeavor,” just problem faced district court’s construction. 398, 420, inventor. 550 U.S. Because ac- concedes that its 1727, (2007). S.Ct. 167 L.Ed.2d 705 I also keyboard cused devices contain virtual agree ma regarding his concerns infringe- dispute and does otherwise jority’s secondary elevation of consider 18, ment of claim we affirm the court’s role, beyond ations their historic which grant of summary judgment Sam- secondary less considerations take on sung’s infringe accused devices claim 18 of when, importance as to there is little doubt patent. the '172 See Dow v. Halli obviousness. Chem. Co. Co., Cementing burton Oil Well 324 U.S. IV. Conclusion (1945) 65 S.Ct. L.Ed. (“But affirm reinstate the district considerations are relevant We these '647, '721, judgment proof court in a close case where all other question of patents. portions of leaves invention We reinstate the '959, doubt.”); panel pertain Goodyear Tire & Rubber decision Co. 1064 Co., 275, 279, -straightforward: 64 of the is U.S. '721

Ray-O-Vac (1944) (“These S.Ct. 88 L.Ed. 721 to substantial there is evidence whether weight in were to deter factors entitled jury’s implicit finding that support improvement amount mining whether no motivation to combine Neo- there was case, should, in toed close invention and a majority en banc node Plaisant. The patentability.”). tip scales in favor testimony Apple’s on expert, relies princi- legal from these broader Aside Cockburn, say to a skilled artisan Dr. express I to though, write ples, separately to motivated combine Neo- be majority misapplies concern that the In the en support, node and Plaisant. banc review evidence standard of substantial (that majority is cites one fact self- invalidity analysis, to find- respect with from the face of the references evident ing when there record evidence themselves): portable concerns a Neonode support implicit none to factual telephone Plaisant concerns wall- to the findings. respect patent, With mounted devices. That' lone 'touchscreen goes by implicitly too far majority to the does not rise level statement our claim construction modifying evidence. substantial agreed by the binding upon on and parties. portable phone describes a Neonode view, majority’s may by “[s]weep[ing] existence be activated sup- any theoretically that could evidence right” on the screen. J.A. Plaisant our jury verdict to end port would seem a on for use a touch toggle discloses a device on But appeal. substantial review “[sjlider screen, toggle,” to as referred a Co. v. Nat’l see Consol. Edison N.Y. requires pointer to which user slide Bd., 197, 229, U.S. Relations Labor toggle from one of the to the other side (“Substan- (1938) 83 L.Ed. 126 S.Ct. it. J.A. 20743. order activate Plaisant tial more than mere scintilla. an “advantage teaches also It such relevant evidence as a rea- means sliding is that is less likely movement might accept as adequate sonable mind inadvertently making be done therefore conclusion.”). Indeed, Judge support (the finger toggle very secure has forcefully articulates in his Reyna dissent locations).” right lift off the Id. land on and today, majority role has abdicated its undisputed Neonode and Plaisant It is in substantial For evidence review. analogous together art references that below, re- additional I reasons discussed disclose all of the of claim 8. limitations spectfully dissent. question relevant is whether skilled be artisan would motivated combine Discussion problem references solve addressed I namely patent, the '721 “the uninten A tional func activation deactivation contact tions due unintentional with the analysis, majority’s ques- Under respect col. validity tion of claim screen.”1 '721 11.38-40. with touch states, however, argued majority also district bine. that "even at the court away away, appeal if not teach its Plaisant teaches Plaisant does statements they using regarding preferring other pre- because were “not forms of users sliders devices, finding toggle Apple Br. regarding ferred” over other switches are to a relevant teaching majority 27. The declined to address whether skilled would motivated artisan focusing toggle in to com- slider away, instead combine tire Plaisant motivation See KSR, 550 use sliding.... U.S. tells us that [Plaisant] S.Ct. 1727 (noting that a to combine may motivation that pushed pre- are seem be toggles problem slide; in “any be found need or known ferred over that toggles and the sliding in the field of at the time of complex endeavor than simply more by patent”). touching; invention and addressed that and also sliders hard- implement. er to The is no that there moti- majority holds figure top And the shows those vation to with combine Neonode Plaisant preference indicating results user ordinary a person of skill because would both designs of the two they not turn to Plaisant’s wall-mounted touch- considered, sliders, and levers was the screen solve the “unintentional activa- preferred, high- least that’s the slider phone. tion” of a problem portable The lighted in red the lever. problem with that is that Apple conclusion present not any support did it. Q. [Samsung’s expert] told this Indeed, entirety of of review Dr. person ordinary that a skill of in the art testimony Coekburn’s on motivation to naturally have been motivated to striking combine reveals the absence of combine the Neonode with the guide any a skilled artisan would Plaisant article. look to it simply not Plaisant because dis- you agree opinion? Did closes wall-mounted touchscreens: No, A. I do not. us, Q. you please, can using And show Q. why you say And that? do graphics, some us remind what office, A. exam- application Plaisant is. iner, had of guide all the Neonode avail- got Quickly A. Sure. I’ve a few slides able to them. Plaisant, paper, on this is the two- They Plaisant, page it also paper, touch its complete describes screen had form, them, toggle designs, so they these are available com- on/off extensively switches. mented Plaisant. There Plaisant, anwas extensive discussion the way they And intended to be were discussion, and at of that they the end used was the screen touch would be not, conclude that Plaisant or does none cabinetry mounted into wall or .into discloses art continuous control, it would be used image movement unlock order control, or home appli- remote office to unlock the device. ances, conditioning like air or units heaters. J.A, added to (emphases 12876-78 denote publication itself and the video testimony relied portions away it accompanies majority).2 both teach teaching phone Majority away Op.

the mobile not Neonode.” from one amount reference not where the does crit- n.15. This is new. It alternatives rationale icize, discredit, discourage, 12876-78, otherwise juiy, never before see J.A. Sight- presented the disclosure. solution” Apple even does assert rationale. Inc., Techs., Sound. F.3d LhC event, any teaching away (Fed. 2015) (internal quota- Cir. Though may here. that sliders Plaisant notes omitted) (citation omitted); tion see marks preferred, advantages it also describes Inc., Allergan, Apotex also Inc. v. toggle 2014) sliders have over other methods. (stating that "mere law, preferences” J.A. 20743. As a matter “the mere disclosure does alternative away). not teach more one alternative does disclosure .than how specifically describe They both concerning statement Dr. Cockbum’s prevent is used to acciden- sliding action concern did not touchscreens wall-mounted tal activation. ordinaiy skill would person whether know, looking is—you person So problem to solve the look to Plaisant just think natural at this would activation”; merely a it was “unintentional two, taking the these as well combine express disclo- of Plaisant’s restatement Plaisant, slider, putting ideas (“Users see the screen J.A. 20742 sure. See is, very just a on the Neonode them cabine- wall or the into the flushmounted think in terms of thing to about routine Indeed, aside his reference leaving try.”).3 design. interaction teaching issue of entirely to discrete trial, jury the end of By J.A. 11982-83. ra- only purported away, Dr. Cockburn’s expert, Samsung’s had thus heard of motivation to combine for a lack tionale specific a motivation who articulated explicit combine based on the disclosure Plaisant that Neonode and were was both itself, expert, and from Plaisant during prosecu- Patent Office before the a explanation why as to gave who no rely not Apple fact that does tion—a would not be so motivated. skilled artisan respect to motivation us with before Nonetheless, majority finds that combine. of a lack substantial evidence reviewing contrast, to combine. But a jury heard com- motivation In stark must “review the court our situation artisan that a skilled pelling evidence whole,” crediting a evi- record as to combine the refer- be motivated would but also favoring the nonmovant dence problem unintentional to solve the ences moving party supporting the “evidence Plaisant itself importantly, Most activation. unimpeached, at that is uncontradicted and “advantage an that expressly teaches that evidence least the extent is that it is less sliding movement comes from disinterested witnesses.” inadvertently.” J.A. likely to be done Prods., Plumbing Reeves v. Sanderson Indeed, does this disclosure alone 20743. 2097, 133, 161, Inc., 120 147 S.Ct. 530 U.S. the combination of than motivate more (2000) (internal quotation L.Ed.2d actually omitted). Here, teaches a Plaisant with Neonode—it marks record as artisan, makes clear a skilled whole it. suggests starting portable Neo- phone with expert, Greenberg, Dr. ex- node, adding a have seen benefit wheth- jury when asked plained to solve the accidental Plaisant’s sliders would be motivated er a skilled artisan problem described the '721 activation KSR, 424, patent.4 U.S. See combine the references: any See Cellular argued jury context as evidence. Telemac Apple even never 1316, Telecom, Inc., Corp. Topp 247 F.3d being v. a wall-mounted Plaisant's disclosure (Fed. 2001) (holding that concluso- bearing Cir. any on motivation to com device had Co., ry by experts not evi- statements offered bine. See Inc. Elecs. 29, dence). 5:12-cv-630, Apr. Trial Tr. of 2014 at No. 3212-14, ECFNo. 1929. undisputed it is that Plaisant 4.Because art, analogous hypothetical person of ordi- a majority only cites Dr. Cockburn’s 3. The Mast, nary would be aware of it. See skill statement that he did not believe there Co., Foos, Mfg. & Co. v. Stover U.S. to combine Neonode with Plaisant motivation (1900) (”[I]n 708, 44 L.Ed. 856 subsequent explanation. A court 20 S.Ct. but not his invention, determining question of we may conclusory without not treat a answer straightforward ing opti A that a concentration of 0.1% was evaluation S.Ct. weigh against teaching mal compels only one reason- the entire record did possible); DePuy conclusion—there is a motivation 0.3% concentration was able Danek, Inc. amor Spine, combine Neonode Plaisant. v. Medtronic S of Inc., 2009) 567 F.3d sum, support there is the record (a “general teaching expressing prefer conclusion majority’s for the that substan- alternative”, weigh did not ence implicit tial supports against teaching). so Doing part person ordinary finding factual obviousness, legal question ultimate the art would not be motivated skill now, majority new approach does and Plaisant. combine Neonode Substan- Supreme we nor the neither Court standard, tial be a may lenient has sanctioned. but it is a standard nonetheless can- not be met stark of evi- with the absence (with majority’s Given conclusion Therefore, no dence. could rational disagree) which I was no there moti find that a to the ref- motivation combine case, vation to combine references this erences to at the invention arrive claimed majority go there is reason for the to lacking. was on question on to of opine secondary at considerations all—that discussion is ar B See, guably e.g., Allergan, dicta.5 Inc. v. Despite majority’s statement 1293, (Fed. Inc., Sandoz 796 F.3d 1304-07 combine, is no to motivation 2015) (affirming Cir. a nonobvious determi majority appear to conclu- does not rest its only on of teaching nation based issues Majority Op. on that basis. See at sion results); unexpected away Stryker Instead, majority goes 1052. to Zimmer, 2013-1668, Inc., Corp. v. No. 837 teachings, that it Plaisant’s state considers 1268, 1277-78, 4729504, F.3d 2016 WL at including to ac- the reference “inadvertent (Fed. 2016) 12, Sept. (declining Cir. *7 to tivation,” against the evidence of second- secondary in reaching reach considerations ary Id. at It considerations. 1058-59. nonobviousness), of determination vacat analytical unclear what framework the ma- grounds ed and remanded on sub other analysis its jority adopted has Elecs., Elecs., v. nom. Halo Inc. Pulse question of moti- goes whether this —Inc., -, 1923, U.S. 136 S.Ct. 195 weighed only vation to combine. We have (2016); Fine, In L.Ed.2d re 837 F.2d teachings of a art relat- reference (Fed. 1988) (same). 1071, 1076 Cir. to against ed to motivation each combine however, See, analysis, I teaching away my conclude that other in the context. Tolmar, Labs., Inc., a lack of e.g., jury L.P. v. no reasonable find Galderma could (Fed. 2013) (a combine, 731, obligated am Cir. teach- motivation so I 737 F.3d appeal opposition presume patentee fully to us on must was informed court or evidence, him, everything preceded of obviousness and relies which whether not.”); Kimberly- Apple’s appear such were the actual fact or on theories that nowhere Johnson, Corp. Compare Majority Op. & F.2d at 1052-59 Clark v. Johnson briefs. -with 1437, 1984) (Fed. (collecting Opp’n Samsung's Mot. J. Apple’s 1449-54 Cir. as a cases). Fed. of Law R. Civ. P. Matter Pursuant 50(b) Inc. & Mot. Am. J. 5:12-cv-630, Co., secondary ECF majority's con- No. 5. The assessment of Elecs. Opposition”); Ap ("Apple JMOL evidence No. 1908-03 siderations also relies additional ple presented Apple district Br. 29. was not proffered question of sec of such a nexus is a of consider evidence existence Nike, fact, Adi ondary Inc. v. which for substantial considerations. we review evi (Fed. AG, dence, objective the consideration of 812 F.3d Cir. indi- das 2016). part cia is ultimate determination we novo. See obviousness which review de court, history In the have our we Corp., 520 Agrizap, v. Woodstream Inc. secondary con once held evidence (Fed. 2008) (“Even 1337, 1344 Cir. F.3d outweighs strong siderations evidence presume when we found obviousness. See Transocean Offshore fa objective evidence of nonobviousness Drilling, Deepwater Inc. v. Drill Maersk evidence is insuf patentee], [the vored USA, Inc., (Fed. ing Cir. overwhelming to overcome the ficient 2012). case, In that jury, view strength alleged infringer’s] prima of [the evidence, “compelling” express made find obviousness.”); Leapfrog facie case of En types ings secondary that seven consid Fisher-Price, ters., Inc., Inc. v. 485 F.3d supported Id. erations nonobviousness. 2007) 1157, 1162 (agreeing However, acknowledged we the district court’s conclusion that even present cases such extensive “[f]ew secondary substantial evidence of various nonobviousness, objective evidence of “inadequate considerations over rarely objective we thus have held law). come” obviousness a matter prima is sufficient to overcome a secondary mere existence evidence of case of Id. at This facie obviousness.” considerations does not control the obvi secondary case where is not a ousness determination. Richardson-Vicks KSR, is so considerations “extensive.” See Co., 1476, Upjohn 122 Inc. F.3d 1483 426, (“Like at 550 U.S. S.Ct. 1727 127 (Fed. 1997). Cir. Court, finally, District Tele- we conclude case, secondary Apple flex has shown factors to presented In this evidence 4 dislodge the determination that claim is it contends shows there was commer- obvious.”). success, long-felt need, industry cial However, copying. Apple’s evi- praise, examining of secondary When evidence of commercial not es- success does dence considerations, “courts must exercise care feature, a nexus with patented tablish assessing proffered objec of evidence remaining evidence, if a and the even nex- considerations, giving tive such evidence assumed, us is is not sufficient “tip only weight objective where indicia are scales of v. John patentability.” Graham to the characteristics inventive attributable Co., 1, 684, 36, 383 U.S. 15 Deere 86 S.Ct. discovery patent.” of the as" in the claimed (1966). 545 L.Ed.2d Cyclobenzaprine Hydrochloride Ex In re Capsule Litig., Patent tended-Release 676 1 (inter 1063, 2012) (Fed. F.3d 1079 n.6 Cir. omitted) (citations quotation argue

nal appeal, marks To commercial success on omitted). proponent survey of such Apple portion evidence relies considerations, secondary in this case of the introduced establish value Apple, showing “patent-related” “bears the burden slide-to-unlock feature inches, larger nexus exists the claimed features than between tablets screens 21066, 21108, objective coupled of the invention and the J.A. with Dr. evidence Green- berg’s question offered to show non-obviousness.” WMS statement “there’s no Tech., Gaming, Apple Inc. v. Int’l Game 184 F.3d that the a commercial iPhone was j.A. (Fed. 1999). 11984; Though see Br. 29. Apple Cir. success.” This ; does not establish a nexus evidence

commercial success.6 Apple’s The remainder of secondary arguments consideration consists of long- respect survey, With it did need, industry felt praise, copying. To ask about the feature on slide-to-unlock need, long-felt Apple relies on show smartphones, survey had which Cockburn, testimony provided Dr. who (smaller screens no than 5.5 larger inches single example portable of a phone that he screens). than the tablet J.A. surveyed “entirely characterized unintuitive.” J.A. Apple point any does not For industry 10638-39. Apple relies praise, separate regarding evidence the sales of upon the audience reaction at first As for those the success tablets. public unveiling the iPhone. J.A. 12879- device, tying iPhone there is no evidence 80. Finally, relies on internal Sam- specifically success features sung argues documents that show both See, To es- embodied invention. copying industry praise. e.g., the claimed J.A. 51289.8 nexus, tablish requisite there needs to

be some evidence to tie the com- record assuming Even jury implicitly that the. of product mercial slide- success found a nexus between evidence embody- to-unlock product invention, feature claimed evidence Here, ing strong invention. insufficient evi claimed face of testimony dence of obviousness. The of an none. testifying expert single example as to a addition, although Greenberg tes- Dr. best, unsatisfactory prior is, art at weak. commercially tified that the iPhone was (tes Cyclobenzaprine, 676 F.3d Cf. successful, I’ve seen “[b]ut he continued: timony regarding an expert’s experience says no evidence that that that commercial years). Similarly, Apple’s over ten success the lock due screen.” applause press its own event is also juror No conclude reasonable could weak See In nonobviousness. Greenberg’s that Dr. that he 2016) statement Cree, re had seen no of some- company’s press unper evidence a nexus was (finding a release nonobviousness). how of Final- evidence of nexus.7 suasive evidence commercial-success, 6. To find a nexus for 18. But Cockburn testified Dr. that successful, majority Apple's testimony by commercially on also relies iPhone was not that commercially Senior Vice President of Market- the iPhone was successful be- Worldwide ing, a television shown to the cause the slide-to-unlock See J.A. commercial of feature. ("Well, jury, testimony clearly been additional 12879 there’s commer- - witness, Majority Op. 1054- Mr. Christie. at cial of the iPhones use this success both invention, rely any cop- Apple 56. on evidence and for that have did not the devices opposi- technique.”). testimony before the court in its JMOL ied the This is also district appeal support tion or before us on nexus. insufficient establish Apple showing of commercial See success. 18; Opposition Apple JMOL Br. These 29. by Apple 8.In cited addition evidence is no to reach rationales are new. There need court, majority relies the district also ' arguments they these because were never testimony additional documentation appeal. made in this regarding iPhone alternatives to the slide-to- support unlock feature to its conclusion court, Apple argued long-felt Majority Op. 7. 1057-58. There also before district at need. argument because appeal, but not on that Dr. Cockburn’s testi- is no need.to reach this mony Apple before of commercial cited evidence evidence success never patent. Opposition appeal. '721 See JMOL district court or before us on 1070 keyboard on the typing is rors as the user Samsung’s internal documents

ly, though essence, In asserted portable of a device. (and industry of copying probative are requires patent that a 18 of the '172 claim in this they not move the needle do praise), text, or be dis- string,” “character current Enters., Corp. v. Easton case. Tokai See text, area;” that the in “first played 2011) Inc., F.3d “replacement” text suggested typed, unpersuasive copying (finding evidence area; and that the in a second displayed nonobviousness). automatically entered replacement text be evidence, totality of Considering the key, if certain such as in the first area secondary con relating to Apple’s evidence bar, if the user space pressed pat- “tip the scales does siderations suggested replacement. Addi- touches the Graham, entability.” U.S. at choose to use the tionally, the user can Enters., 684; Leapfrog see also S.Ct. (as typed) if he touches current text (finding at 1162 substantial F.3d option in the second area. success, industry praise, and of commercial trial Samsung presented evidence insufficient overcome long-felt need expert, Wigdor, Dr. through its obviousness); Richard strong evidence light patent of the '172 is obvious (“Evidence son-Vicks, at 1483 Xrgomics prior art ref- the Robinson and but a secondary ... considerations a touchscreen Robinson describes erences. ‘totality of the evidence’ that part automatically correct keyboard that can the ultimate conclusion of used to reach Wigdor opined Dr. incorrectly typed text. obviousness.”). claim of the The asserted every aspect of the that Robinson discloses obvious as a matter patent is therefore '721 incorrectly except displaying invention of law.9 For that miss- typed text a “first area.” limitation, explained “anyone ing he II computer since the late 1970s who’s used patent, ,.. ma- to the '172 respect With familiar this idea that would be finding also substantial evi- jority errs up your you type, the text shows cur- support of the determination dence addition, pointed he sor.” Specifi- is nonobvious. that the '172 text-entry Xrgomics, describes which cally, majority’s regarding conclusion the current character system which art scope and content string displayed in a first area. J.A. entirely on out-of-context statements relies

by Dr. Cockburn. any evi- point majority does fails to dis- Xrgomics is directed methods disclose dence area, first nor playing current text a automatically correcting typographical er- 2010) affirmance, (reversing jury’s implicit factual find- majority As a basis for prior ings scope of the of the and content implies inappropriate be it would combine, art, and evidence of motivation to findings.” nearly a dozen fact See "reverse Ecolab, considerations); secondary Inc. v. Majority Op. number of un- at 1039-40. The (re- Corp., FMC 1348-50 findings legal derlying a conclusion is ir- versing of nonobvious- a determination legal analysis. in a Reversal of a relevant and, underlying implicitly, ness factual nonobviousness, jury finding which we Therapeutics, findings); Inc. v. PhannaStem usually infrequently, requires have done not (Fed. ViaCell, Inc., 491 F.3d 1360-67 implicit by very explicit or its nature 2007) implicit (reversing a factu- Cir. See, multiple findings. e.g., reversal of fact scope findings regarding and teach- al success, art, MoneyGram Payment Sys., ing expectation W. Union Co. v. considerations). Inc., secondary 1368-1374 626 F.3d you saw, Xrgomics plainly could it because discloses As there no text there {in Rather, that limitation. See J.A. 12025-26. replaced to be area] when first concludes, majority on Dr. Cock- pressed. based delimiter was testimony, that there is substantial burn’s Similarly, the character—current char- neither Robinson nor string area, acter is not in the it so first Xrgomics replacement discloses the text replaced can’t be when the user selects claim, recited as distin- asserted suggested replacement string. guished completion. That is text de- And, again, because the current charac- incorrect, monstrably respect at least with area], is not string ter [in first to Robinson. it can’t if kept performs user gesture. primarily

Dr. Cockburn testified displaying Robinson fails to disclose cur- added). clear, (emphases J.A. 12916 To be rent text in a “first area.”'He then'used testify he did that Robinson fails that statement to conclude that Robinson se, replacing keeping disclose or per text also “a lacks series elements” [other] but that it fails to replacing disclose claim, recited namely asserted re- or keeping text in a area. first placing keeping or current text a first Indeed, genuine there can be no dispute context, area. J.A. 12915-16. In Dr. Cock- replacing keep- Robinson discloses testimony missing bum’s about Robinson’s ing, of a display, different area text entirely premised elements was on the ab- input. has the user Robinson is titled element—i.e., of a single sence no text “Keyboard System with Automatic Correc- being displayed in first area: added). And, tion.” J.A. (emphasis string explained by Wigdor, [B]ecause the current character Dr. Figure IB of area, not in the not replaced shows that a in- pop-up menu first suggested replacement with the text as typed suggested charac- cludes the presses replacement ter the user when text: delimiter.

1072 patent the known Robinson states 18 of were “[t]he J.A. art, key accept prior combining the default the features space acts to word those yielded in to more problem the word ... no [default] ... and enters solve known (col. KSR, than a output region.” predictable J.A. result. See the text 12-14). addition, (“[W]hen possible 416, it is to U.S. at 127 S.Ct. 1727 typed] already the as output.” patent ] [text a structure known “[s]elect[ claims 1.10). (col. is Id. art that altered the mere of substitution one element another Again, Xrgomics supplies Robin- plainly field, known in the the combination must missing displaying cur- son’s limitation of result.”). yield predictable do more than In light text in a first area. of the rent evidence, respect secondary a reasonable consider- jury record would With to ations, argues only taking Apple be able to conclude that Robin- success devices, Samsung coupled supplying limitation with son accused in- Xrgomics survey would result are more claimed evidence that consumers Contrary majority’s likely buy smartphones vention. conclu- with “automatic sion, correction,” 21108, there is no alone sub- is evidence—let word J.A. evidence support stantial evidence—to also asserts Apple commercial success. finding Xrgomics, that Robinson when Samsung an internal de- document combined, every not limita- scribing “jar- would approach disclose an alternative 51488, ring,” industry tion of the asserted claim. evidence However, praise. patent, with '721 Although majority does address expert testimony or Apple no cites other respect motivation combine with connecting survey obvi- results to the I patent, also no evi '172 find substantial Furthermore, inquiry. survey ousness upon which reasonable dence could speak a con- does not whether lacking. decide motivation was Sam likely buy sumer be more less would sung’s expert gave testimony unrebutted specific combination of device with “the person ordinary skill in the in claim of the '172 features recited art, seeing all of the behaviors Robinson is, That this patent. evidence does work, understanding they how pat- show required nexus between the works, seeing Xrgomics then how ented feature and commercial recognize certainly missing one ele As re- patent, any success. '721 they type ment that shows up what where secondary maining evidence consider- they is. I their believe cursor would com “tip ations is not here sufficient to Co., Apple it.” bine Inc. Elecs. Graham, patentability.” scales of 383 U.S. 5:12-cv-630, Apr. 15, No. Trial Tr. of at 86 S.Ct. 684. ECF No. 1717. offered Accordingly, the of the asserted claim expert contrary. testimony See id. as matter of law. obvious 2902-06, Apr. Trial 2014 at Tr. ECF question is no No. 1927. There Robin Ill Xrgomics prob son and the same address typing relatively patent, that arise from on a As lems for the '647 the crux of the keyboard. nothing parties’ small there is proper application And dispute “analyzer indicate that our construction of the asserted combination server” yield more than predictable limitation. We had construed this limita- does results. Therefore, tion in same concerning record another case mean “a server separate demonstrates that all limitations routine Motorola, having tionship. from a that receives data See at 1304- client Apple structures from Inc. v. the client.”

Motorola, Inc., 757 F.3d case, As applied the facts of this no 2014). previous Our construction of juror could reasonable conclude that “analyzer appeal, is at on server” not issue embody “analyzer the devices the-parties agree applies and that it in this Apple server” asserted limitation. case. not the dispute does con pieces of code software stored “shared struction, and, if disagreed even had Apple “analyzer libraries” are server” the construction, by with it is it. our bound See performs “detecting” and “linking” Labs., Blonder-Tongue v. Univ. Inc. Ill. Notably, functions.10 even Apple does not that, Found., 318, 328-29, 91 402 U.S. S.Ct. advocate majority’s for the view our (1971). question The merely L.Ed.2d 788 requires construction the shared is supports whether library separate.” substantial evidence “structurally be code to the jury’s finding that, Apple our under construc accused code contends is tion, “separate” only in its location accused instrumentalities not meet but development design also in sep for a routine its be requirement “server across See applications. arate reused different from a client.” 16; Apple Response Br. Opening & Oral Judge Dyk’s analysis addition to 29:21-30:25, Argument 33:35-34:59, at respect to the in section VIII http://www.cafc.uscourts.gov/ available at parts dissent, I A of his and B would add oral-argument-recordings?title=Apple & the following. field_case_number_value=20151171 & ' field_date_value2% that, light majority asserts 5Bvalue% 5D% specification, program “structural- that is 5Bdate% 5D. more, ly separate,” without satisfies the lacks Crucially, the record substantial “ ‘separate’ Op. requirement.” Majority at library shared code of evidence that “sepa- so 1042. We did not the word cabin our accused instrumentalities meets

rate” in Motorola construction. Be- our requiring separate Motorola construction cause may physi- program two routines “separate” Regarding the server routine. cally at occupy memory same the same nothing is in our Moto- requirement, (i.e., time any separate program two rou- to indicate rola inde- construction definition, are, tines by separate stor- program of a routine pendent development age), interpretation majority’s effec- applications, reuse different re- across tively erroneously “separate” reads by only is lied relevant. Apple, Relatedly, out of our construction. ma- arguably re- relevant evidence jority give also fails the re- effect lies on applications is that accused use quirement our under construction library a separate shared code loca- routine, any piece tion, which, above, server not routine noted significant code. requirement That we relied because of our construction. Because plain meaning Motorola “ser- Apple has offered sufficient ver,” construction, which entailed a client-server our reía- meet alone According parties' experts, library a shared the difference between client ask (the server) ing library per that can librarian is a collection code reference library applications. going J.A. 13054 form a a client accessed other task (Samsung's (Apple's performing following expert); ex instruc J.A. 11792 a-task (the pert). argument, Samsung analogized library At oral tions a book in the shared seryer library). Argument a shared between a Oral 9:24-10:15. difference DYK, Judge, dissenting. noninfringement as Circuit to find

is sufficient of matter law. I sure, affirmatively- also Samsung

To be is argued why library code not shared years, For first time in 26 this court Contrary majority’s as- “separate.” an banc. See has taken obviousness case en sertion, Samsung proffered 1990) evidence Dillon, 919 In re F.2d 688 (en banc). Remarkably, not run on its own.”11 has majority the code “does argu- Indeed, briefing so without and expert done further Samsung Apple’s Br. amici, parties, gov- from the or the ment library code shared admitted ernment, as has our almost uniform been of client incapable running of “outside in this en decisions.1 practice court’s banc And, Samsung application.” government’s to ask views Failure out, why Apple explain not points did significant the ramifi- particularly given library a “server” routine. shared code is of this Patent cations issue for the U.S. 18-19, Br. is sim- Samsung 24. There See (“PTO”). has Trademark This Office no accused instru- ply evidence that the parties op- of deprived the and amici rely archi- on a client-server mentalities express portunity views on these them tecture. issues, important deprived has shows, sum, only opportunity court of the these in consider light issues those views. part, library that the shared code relevant separate part in a piece is a of code located is the most common invalid- Obviousness memory applica- that is used other ity post- issue in both district court and pre- our tions. That is sufficient under grant proceedings PTO.2 The before the “analyzer vious construction of server” our importance jurispru- obviousness infringement '647 prove commu- property the intellectual dence jury matter of law. No reasonable could nity by, example, is evidenced the 38 conclude otherwise. amicus briefs filed in KSR International Inc., S.Ct. Co. U.S. Teleflex (2007), including 167 L.Ed.2d 705 Conclusion government, amicus and the brief reasons, jury For the no could foregoing multiple amicus briefs filed our last rationally conclude that the '721 and '172 en en present obviousness banc case. The obvious, patents were or that significant decision will have a banc Therefore, I infringed the re- patent. impact immediate on the future resolution spectfully purporting dissent. obviousness issues. While previous "analyzer majority argues that the could under our 11. The construction Samsung’s expert testimony re- server” insufficient. have found garding meaning “analyzer in- server” years, 1. Over the last the court extended consistent, citing court’s criticism the district supplemental briefing argument par- expert. Majority Op. 1045 n.10. cases; in 36 en banc three cases ties remarks, however, were not made court’s did we not so. do argue jury, front of the did not appeal briefing testimony expert’s (2015) its that the § 2-5 Chisum 2. See 5.06 on Patents Therefore, ("The was inconsistent. there is need requirement of Section nonobviousness point. Regardless important litigated to address this of the credi- 103 is the most most bility expert, Apple’s patentability.”). of the conditions law, I apply majority agree dissent, established circuit Judge-Prost’s with Chief making significant changes is in ably points fact the which out that even under the by Supreme majority’s law as articulated the Court. view that the issues are factual Indeed, Reyna Judge convincingly legal, as rather than not there is substantial out, to points support it is difficult understand how majority the result the satisfy requirements this case would the on reaches the issue of obviousness. The majority’s pur- flimsy for banc if the en review nature of the evidence found the pose clarify majority not to support jury were the law. the verdict em- phasizes dangers the of inviting factfinding majority The states takes this to dominate the obviousness determina- en original panel’s case banc correct the Quite apart tion. question the wheth- Maj. reliance on Op. extra-record evidence. er factfinding supported by the was at 1038-40.This hardly could be the reason evidence, substantial is the fact that these review, majority granted the has banc en factfindings largely asserted irrelevant the panel continuingly expressed since has legal question to the of obviousness. desire, willingness, and indeed to eliminate I separately write to point pro- out the to any references extra-record evidence changes found law obviousness because concerns in Apple’s peti- raised majority that the point creates and to out rehearing tion for they and because were majority’s in approach the errors its unnecessary panel opinion. claim patent. construction of the '647 for most part majority While the the express in does its shifts obviousness II principles explicitly,' an examination of the majority’s opinion makes its clear substan- First, majority legal ques- turns the tial impact the law of obviousness. And tion of into obviousness a factual issue for one, impact positive will not be resolve, sufficiency both as to the principles majority that the announces motivation to sig- combine and the Supreme are inconsistent with the Court’s given secondary nificance to consid- KSR, decisions Graham v. John Deere erations. Co., 1, 684, 383 U.S. 15 86 S.Ct. L.Ed.2d explicitly rejected KSR the contention (1966),

545 as Supreme well earlier always that obviousness is a matter of fact cases, proof Court and will make obvi- KSR, requiring jury pat- resolution. ousness far more difficult. argued question of entee that the motiva- majority complains tion to parties jury. combine was for the See Brief big themselves did not questions “raise KSR Int’l Co. v. Respondents, Teleflex Inc., (2007) (No. aspects 04-1350, about how of the obviousness doc- 550 U.S. 398 2989549, ought operate.” Maj. Op. Supreme trine at 1039. 2006 WL at *45. The contention, is exactly point. majority rejected holding But that Court significant changes question properly makes the law of that this resolved on though important summary judgment obviousness even these because ulti- “[t]he sponte judgment legal issues are raised the court sua mate obviousness is Where, here, opportunity by parties without the determination. content them, art, majority prior scope amici to or the of the of the address claim, adopts previous panel ordinary level of skill decisions obvi- and the dispute, parties ousness could art are not material and the address apparent at en banc of the claim is level. obviousness factors, [secondary] not, factors do light summary judgment “these of these KSR, case, tip of this appropriate.” the circumstances U.S. omitted). (internal citations patentability.” S.Ct. 172 383 U.S. at scales Thus, art, “the KSR Court Similarly, content “con- while S.Ct. 684. claim, scope and the level Teleflex has shown no sec- clude[d] [that] in the art” ordinary potentially ondary dislodge skill factors to determina- issues, the KSR present fact Court deter 4 is tion obvious.” U.S. sufficiency of mined that the Again, the majority’s S.Ct. motiva .issue, tion to combine was a factual significance approach—turning the of sec- particular in “it was and that the case ondary ques- into a considerations factual ordinary a of person obvious skill to to to Graham and KSR. contrary tion—is Id. at 424, prior combine” the art. 127 S.Ct. 1727. HI too, art, of prior Here “the content the Second, for majority the lowers the bar claim, scope patent the of the and the level by refusing to ac nonobviousness take ordinary of skill art not in are of of nature count the trivial the two 427, id. at dispute,” material 127 S.Ct. respect to claimed inventions. With 721 the 1727, no indication that and there is the slide to unlock patent, was feature prior combination of the relevant art does (Neonode) in prior known art yield predictable more than result. Yet only image innovation is an associated question majority holds that the of the sliding gesture from to starting fixed sufficiency of the here was motivation Maj. points.3 See ending Op. 1049-50.With

jury question. This is inconsistent with respect patent, to the 172 autocorrect KSR. (Robin prior known in the art was feature considerations, Graham secondary For son), and innovation is displaying KSR explained signifi- that both the the text be contemporaneously autocor- cance weighing secondary of con- and the Maj. Op. 1059-61. See rected. Such text Secondary siderations are the court. long in displays prior have been known “focus attention considerations on econom- art in (though specifically not connection ic and motivational rather than technical display). with autocorrect are, therefore, susceptible issues and more judicial of than highly Treating treatment are the such minimal advances over patent prior liti- technical facts often art as nonobvious is present contrary Graham, KSR, 35-36, gation.” Supreme 383 U.S. at 86 where the Court confirmed 684, Graham specific holdings designed S.Ct. The doctrine obviousness and KSR themselves demonstrate that of ordinary to ensure that “the results subject both significance innovation are weighing exclusive KSR, rights secondary legal patent considerations laws.” issues under 427, appellate court, On the court. Even as U.S. 127 S.Ct. 1727. face Court Graham trivial, patents, only ordinary, these Supreme determined indeed Eur. Co. found the '721 ment 18:48-19:05 obviousness Courts world ... have invalidated it in other from these who patent Inc., ("All countries have ^[2013] invalid. See Oral the other considered the references."); EWCA have ... jurisdictions uniformly (Civ,) 451 based on Argu HTC (Ger,). 2011, (Eng.); 396957/KG Court 11-731; Bundesgerichtshof Apple The Justice] ZA 11-730 and Hague v. Aug. Samsung, District 25, 2015, [BGH] [Federal Court, 396959/KG Docket Nos. X ZR110/13 Aug. ZA 2005) majority’s Fed.Appx. innovation .is involved. hold- ing (requiring noting that these trivial features can.render a addition to “the solved, significant problem will have a nonobvious ... the district court impact required- cases. specific [also] future make find

ings as to suggestion whether there awas or motivation to combine the teachings IV prior prob [the art addressed the same Third, the concludes that com- majority claimed”), particular lem] in’the manner binations of used to art solve a rev’d, 550 U.S. S.Ct. problem are known insufficient render (2007). L.Ed.2d 705 an invention obvious as matter law. held, contrary KSR majority, also According to majority, there must be specific motivation specific motivation to com- required. combine reject Court Maj. Op. aspects bine. See 1051-53.Both court’s, our approach ed requiring contrary these conclusions are to KSR. “specific understanding or principle” that KSR, pat Under of each existence creates a specific to motivation combine. prior feature art ented is alone not 414, 550 See U.S. 127 S.Ct. 1727. sufficient obviousness. establish See itself, KSR the combination was held obvi KSR, 418, 550 127 U.S. S.Ct. 1727. despite ous “precise teachings” com no must a There reason make a combi previous bine the id. at See references. nation. But KSR holds that the reason 418, 127 S.Ct. 1727. may be found as a of law in the matter Earlier Supreme decisions of the Court solution to a KSR problem. known was by ap- relied KSR reflect the same quite clear that existence of a known First, proach. explained KSR that United problem suffices: “[o]ne ways taught States v. that pat- Adams “when a patent’s subject a which matter can be ent already claims a structure' known proved noting that obvious is prior art that is altered the mere at the time of existed invention known substitution of one element for another problem which there was obvious field, known in the must combination ” KSR, .... 419-20, solution U.S. at yield do predictable more than result.” patent simply 127 S.Ct. 1727. “[W]hen 416, (citing Id. at 127 S.Ct. U.S. arranges perform old elements each with 39, 40, 708, 15 86 S.Ct. L.Ed.2d 572 ing it the sanie function had been known to (1966)). Second, explained that KSR perform yields and no more than one Rock v. Pavement Sal- Anderson’s-Black expect arrangement, would such an vage taught [prior Co. that “two art when 417, 127 the combination is obvious.” Id. at no more references] d[o] combination (internal omitted). quotations S.Ct. 1727 they than sequential in separate, would simple known “[T]he substitution one operation ..., combination of while the old element another” makes the' claimed function, perform[s] a it elements useful invention obvious. Id. nothing quality to the nature and add[s]

In holding of known already patented, the existence ... and that the. 417, problem § sufficient reason combine under 103.” Id. at 127 S.Ct. fail[s] (internal omitted) references, prior specifically art quotation the Court marks rejected 57, 60-62, holding (citing KSR 396 U.S. our court’s S.Ct. (1969)). problem Finally, the existence of a known L.Ed.2d 258 KSR ex- was Co., Pro, plained Ag insufficient. KSR Int’l Inc. Teleflex, Inc. v. Sakraida invites the majority ar- art. factfinder taught simply “when a performing with each ranges elements old prior theory dismiss art it had been known to the- same function it device concerns a different than the perform yields more than one invention, if patented even the references an arrangement, from such expect solving the same problem are directed (internal is obvious.” Id. combination pertain to a related device. For exam- omitted) (citing quotation marks 425 U.S. patent, ple, respect to the '721 282, 96 S.Ct. 47 L.Ed.2d 784 majority holds that the could dismiss (1976)). The Court held that KSR the Plaisant because di- reference underlying these in- “principles eases porta- rather rected than walk-mounted question structive when whether Maj. ble at 1051-52. Op. devices. With re- patent claiming the combination ele- spect majority patent, the '172 art is obvious..:. prior ments of Sakmida makes of the distinction between much Rock are illustra- Anderson’s-Black completion, word word correction versus must ask im- tive—a court whether the than the provement predictable rejecting prior is more relevant art on Xrgomics as prior according use of elements to their art basis, ignoring prior extensive Thus, Id. functions.” established under display art showing routine fea- text KSR, of a problem the existence known Maj. Op. ture. at 1060-61. by the combination can render solved rejected Supreme Court KSR as a combination obvious matter law theory addressing of a specific without further evidence moti- art the same vation to combine. problem be dismissed it con can because a technique cerns a different device. “[I]f

Here, inventions the combine features device, improve has been to one and a prior respect known in the art. With used '721 does not patent, dispute, and person ordinary skill in the art would majority the that the agrees, combination improve recognize it would similar that of the prior art Neonode and Plaisant ref- using way, in the same the devices tech produces erences the claimed invention. is nique obvious unless its actual applica below, Maj. Op. at 1050-51. As discussed KSR, beyond tion is or her skill.” his respect the same true the is 417, 127 words, at U.S. In S.Ct. other 1727. Robinson, patent (combining the Xrgomics, question the is not in the art whether references). art prior and other There is volves the same The precisely device. no yielded either combination claim that question is addresses the same whether unpredictable patents results. Both the problem general same within the field. problem. also address a known re- With analysis, any “Under the correct need or spect patent, the problems the '721 are ... problem in the known field and ad ease-of-use avoidance inadvertent by patent provide the can a reason dressed respect activation. patent, With the '172 for in combining the elements the manner problem the to see is the need text entries. KSR, KSR, claimed.” 550 U.S. at Contrary majority,now the S.Ct. holds that a is not problem known sufficient and 1727. specific there must be evidence of a Graham, For in example, patentee motivation. argued prior disclosing art container V for other in a liquid sprayers was different

n patented field art than the Fourth, in insecticide majority errs cabining technology sprayer. held that a prior relevant field of The Court “restricted (cid:127) prior patent unlocking art is The '721 concerns applicable ... view of the Here, prior touchscreen devices. art confronting [the justified. problems The is, by majority major- dismissed industry the insecticide were patentee] and admission, ity’s own art concerns the problems; they riot me insecticide were general field touchscreen devices. See problems. chanical closure devices Closure Thus, at Maj. Op. ques- there is no such a closely pouring in related art as prior tion that the two art references ad- liquid very containers at the spouts are problem in dress same related areas. pertinent least references.” 383 U.S. Nonetheless, majority urges that “an fact, principle S.Ct. In dates'as artisan ordinary would not have moti- been Greenwood, back as far Hotchkiss vated to combine elements from a wall- (11 How.) 248, 13 (1851).In L.Ed. U.S. appliances mounted touchscreen for home case, porcelain differ use smartphone, particularly view of sufficiently to be related ent field was held ‘pocket-dialing1problem specific mo- us,e Id. at porcelain doorknobs. sought bile invention devices . 254 Maj. Op. 1052 (quoting address.” analysis). majority District Court’s short, inquiry proper whether First, respects. patent errs in two the '721 prior art references address the same phones limited cell to the cell patent in a area. problem related The '172 phone problem, pocket-dialing and indeed display involves text word correction. a pocket-dialing makes reference to question prior There is no that the art also problem. The '721 is directed to problem displaying addresses portable generally, devices and to ease typed text it can be so that viewed with respect use and inadvertent activation user; Xrgomics concerns the art of related Second, to all such devices. the Plaisant completion. majority concludes text prior art concerned with the same present is not missing element problems the '721 the field of Xrgomics art device because the touch screen devices. Plaisant indicated technology, specifically art is in a different study’s on providing that the ... “focus completion opposed to text correc- text systems easy for the home owner Maj. However, Op. tion. at 1060-61. Sam- J.A. 20742. also indicated use.” Plaisant evidence, sung presented uncontroverted “advantage sliding of the that an move- “anyone apart Xrgomics, from quite likely is that it is less to be ment done computer used a since the late 1970s inadvertently.” who’s Plaisant was 20743. solving problem be familiar with this idea” of dis- thus the same would directed patented area as the inven- is same playing the full text what a user tion.4 typing. patent J.A. 12024-25. The '172 itself relatively

recognizes this broad field majority’s approach sig- will create art, prior specification as its states that the opportunities nificant to dismiss relevant generally disclosed invention “relate[s] any patent prior art and find almost non- input portable electronic by narrowly defining text devices.” the obvious relevant '172Patent, technology. In this the en respect, col. 111.15-16. banc Here, moreover, 420, the 127 1727. Even if the '721 had identified U.S. at S.Ct. pocket-dialing Supreme problem, Court in dialing problem provide the pocket would prior KSR not made art combine, clear need a additional reason to not reason specific problems even solve all address the not to combine. problems patentee. 550 that motivated significant change on beyond a their role as work articulated

decision will Secondary in the district courts the Supreme future cases Court. considerations PTO. patent- will not invention[ ] “without make 278, ability.” Sakraida, 425 U.S. at comparing is change This evident from (internal quotation marks S.Ct. omit- past majority’s holding here our ted). Thus, when, here, a is have held jurisprudence. previously We inventive, is, plainly when pertinent is reasonably reference “[a] prima strong, facie of obviousness is if, case though may even be a different endeavor, secondary carry little inventor’s considerations field .the weight. logically ... would have commended [it] to an attention in consider- itself inventor’s secondary con- majority holds that problem.” In re ing Clay, his 966 F.2d “always” must be considered siderations (Fed. 1992). have Cir. “We therefore strong even and that a case obviousness concluded, example, that an inventor involving prior small art advances considering hinge mechanism and latch secondary can be consider- outweighed by naturally portable computers Here, Maj. majori- ations. Op. at 1048. employing hous- look other references ty quite explicit. It concludes that “[t]o latches, etc., ings, hinges, springs, which Samsung’s [arguments] extent from areas desk- that case came as a such interpreted precluding should be lid, top telephone directory, piano finding long-felt favoring need non-obvi- cabinet, washing cabi- kitchen machine ousness when the difference between net, cabinet, or a two- a wooden furniture prior art claimed and the invention storing part housing for audio cassettes.” small, reject categorical we rule. such Fitness, Inc., 496

In re ICON Health & type This fast hard and rule is (Fed. 2007) (internal 1374, 1380 Cir. F.3d appropriate for the factual issues that are omitted). if cited quotation marks Even province jury.” Maj. Op. left to the prior “are art references not within respect, majority effec- ..., refer- same field endeavor such tively our earlier overrules decision may analogous they ences if still George M. Martin Co. Alliance Machine reasonably pertinent particular LLC, Systems International which held in- problem with which inventor correctly district court conclud- “[t]he Paulsen, volved.” In re ed that the (Fed. 1994) (internal as a matter law differences quotation Cir. marks omitted). claimed prior between art minimal,” improvement were 618 F.3d our majority Not does the alter 2010), and that jurisprudence respect court distinct differences between “[w]here approach pat- proceedings, its would affect art the mini- claimed invention are as ent currently examiners who are instruct- here, it they are ... mal cannot be said prior analogous ed that art re- “does not unsolved,” long-felt any that need id. quire that the reference be from the same approach majority’s 1304. The to other at field of as the invention.” endeavor claimed secondary considerations mirrors its dis- Manual Patent Examination Procedure of long-felt need. But cussion under Su- 2141.01(a). § authority, preme secondary Court consid- VI to outweigh are erations insufficient a Fifth, majority strong errs in elevating involving the sec- case obviousness small ondary considerations nonobviousness art. over advances the

1081 a assigned KSR limited ... and Graham considerable commercial does success secondary role to considerations. KSR re not render It is true the valid. that quired into secondary inquiry question consider in patentable cases where 550 only appropriate.” ations “where U.S. one, invention is such success a close has 415, 127 added). at 1727 (emphasis S.Ct. weight tipping judgment the scales of Graham, secondary are re considerations Where, here, patentability. toward how ferred “might to as factors utilized that ever, plainly lacking, invention commer give light to the circumstances.” 383 cial fill 335 the void.” success cannot U.S. added). 17, U.S. (emphasis at 86 S.Ct. 684 560, 567, 269, (1949) 93 L.Ed. 235 S.Ct. For example, weighed Graham Court (citations omitted). Similarly, in Dow (in evaluating the Seoggin insecticide Chemical Co. v. Halliburton Oil Ce Well sprayer patent) presence despite that Co., menting Court explained “pe that “long-felt industry” need that titioner claims Grebe-Sanford patentee, “wide commercial success” process long-felt has want has filled not, “these in' do the circumstances factors been But these con- commercial success. case, of this tip patentability.” the scales of siderations relevant close 35-36, 383 at 86 U.S. S.Ct. 684. This was case proof ques- where all other leaves so because in case invention tion of the lack doubt. Here invention upon exceedingly quite “rest[ed] small and beyond invention is doubt and cannot be non-technieal mechanical in a differences outweighed 320, by such factors.” 324 U.S. 36, old in Id. at device which was the art.” 330, 647, (1945) 65 973 S.Ct. 89 L.Ed. 86 Similarly, though S.Ct. 684. even omitted). (citations Goodyear Tire & Rub- patentee in KSR evidence of introduced Ray-O-Vac ber Co. v. Co. cautioned success, 413, commercial U.S. “[tjhese weight factors [are] entitled it S.Ct. Court dismissed because determining improvement whether Teleflex has shown sec “conclude[d] should, in amounted to invention and ondary dislodge factors the determina case, tip patent- close in favor the scales 426, 127 tion that 4 is obvious.” Id. 275, 279, ability.” 321 U.S. S.Ct. S.Ct. 1727. (1944).5 pre-KSR L.Ed. 721 “deci- These Graham, Supreme Before Court re binding precedent sions remain until [the peatedly give held that courts should sec Supreme fit to Court] reconsider see[s] ondary weight in considerations limited ” States, them .... v. United Hohn legal ultimate determination of obvious 236, 252-53, U.S. S.Ct. ness courts need consider (1998). L.Ed.2d 242 repre them the claimed where invention one. sents This case also close strong a small advance is a and there references, example, case for combination of the known obviousness. For Jun results, gersen Ostby taught problem, predictable & Barton Co. process enjoyed exceedingly fact has pri- differences from the

“[t]he small although taught Appeals respondent Rock Court of and the Anderson''s-Black both fervently argued heavily lean device "[i]t ... combina- evidence that this filled long long-felt enjoyed enjoyed tion filled a felt want and has and has want commercial successf,] ... commercial those matters with- But commercial without success. success in out will patentability.” patentability.” invention not make vention will not make 340 U.S. 61, 147, 127, (internal 153, (1950). quota- 396 U.S. at 90 S.Ct. 305 71 162 S.Ct. 95 L.Ed. omitted) (citations omitted). approval tion marks These with in KSR Great cases are cited or 416-17, Supermarket Atlantic & Tea Co. v. Graham. See 550 U.S. at 127 S.Ct. Pacific 1727; 6, Equipment Corp. similarly taught, that 86 383 S.Ct. 684. "[t]he atU.S. 1082 to ... sufficient rebut the erations were

or the combination evident art make case, ... the district court prima as a facie secondary considerations insufficient prior to closest 441 failed use the art.” matter of law. (Fed. 2006) 963, (emphasis F.3d Cir. added). Thus, ascertaining signifi- VII leap cance the innovative over secondary Finally, if considerations even using secondary art prior considerations relevant, ma legally were this case requires comparison pri- to closest to jority compare prior the closest fails to longer gov- or art. framework no This art to assess the innovation over properly majority’s approach. erns under the Secondary prior art. considerations secondary majority’s to what to be considerations must be directed claimed compares inventive, analysis secondary repeatedly because consider '721 patents pri- '172 to or non-existent invention[ will not make inferior ] ations “without art, Sakraida, relevant, than to the closest at rather patentability.” U.S. (internal quotation prior marks art. evidence relied Specifically, S.Ct. omitted). comparison majority respect with requires prior upon It secondary art makes no com- that reflects known advances. In other considerations words, parison, respect to the '721 patent, must be demonstrated nex with claimed invention—a nexus to Neonode the claimed innovation of the us image art. with the slide to unlock comparison prior what is new in associated feature, Furthermore, respect proponent patent, of such evi and with considerations, secondary claimed dence of this Robinson and the innovation currently showing displaying typed string case the burden Apple, “bears between a nexus exists the claimed text. objective invention and features of the success, example, For commercial evidence offered to show nonobviousness.” rely survey majority and the Tech., Gaming, Inc. v. Int’l WMS Game developed Apple’s damages evidence (Fed. 1339, 1359 1999). Cir. F.3d likely case that consumers are more for) (and phone more previously purchase pay Our court has adopted prior art as compari- closest the relevant a slide to unlock feature and an autocor- secondary phone son for rect function than a considerations. without these 1054-55, Bristol-Myers Squibb Maj. Op. Co. v. Teva Phar- features. How- USA, Inc., ever, comparison we an irrelevant be- maceuticals noted “the found provides district court cause Neonode slide-to-unlock secondary provides some of nonob- feature Robinson considerations autocor- .... To be particularly proba- showing viousness rect function. There was tive, (over [secondary steps consider- nexus between the inventive art) prior must establish there is a the closest disclosed the '721 ations] surveyed patents and '172 and the difference between results obtained consum- long-felt the closest ....” er demand. For but those of art unresolved need, 2014) (em- compares to an majority older added) (internal phasis quotation very marks Nokia device with different non- omitted). touchscreen, unlocking In another in Kao button-based example, fea- States, ture, Inc., Corp. Maj. Op. United as well Unilever we Sam- unlocking sung court mechanisms observed while “district touchscreen ... secondary ... that do not have the slide-to-unlock feature concluded consid-

108S Neonode, Maj. Op. separately at 1057-58. The ma- “run” is improper both and un- jority unveiling also cites Steve Job’s of wise. Apple

the slide unlock feature at an USA, In Teva Pharmaceuticals Inc. v. event and the audience’s cheers as evi- Sandoz, Inc., the Court Supreme made industry praise patent. dence of for the '721 principle clear the “that a judge, con however, Maj. Op. Again, at 1054. claim, struing engaged is in much no provides praise that this the same task as judge the be specifically patent’s for the '721 innovative construing instruments, other written such step beyond Neonode or even that the — U.S. -, ... contracts.” 135 S.Ct. comprised audience was of industry ex- — 831, 833, L.Ed.2d - (2015). In the perts. The majority thus errs in elevating area, contract it is established that comparisons such irrelevant providing parties’ interpretation of the contract’s “particularly strong” “powerful[ ]” evi- terms generally significant entitled if Maj. Op. dence nonobviousness. 1058- not dispositive weight.6 The same should parties be true agree where the as to the meaning of In technical terms summary, majority infringement decision here litigation, where materially the outcome raises the bar for affects obviousness particular parties by dispute. disregarding Supreme precedent. Court majority inappropriately here declines to give parties’ agreed claim construction VIII any weight, significant much less or dis- A positive weight. Finally, I address the '647 which B

presents infringement issues of rather than “analyzer obviousness. The original server” Motorola claim construc- tion, requires analyzer limitation that the “analyzer server server” must be a “ser- separately, “run” routine,” and there “plain substan- ver consistent tial meaning devices em- ‘server.’” is, body “analyzer analyzer server” limitation That sep- be- server must run library cause the shared code does not run arately application from the client it separately. majority That parties agreed substitutes serves. Id. Both at oral its own claim (requiring only argument construction to this construction. separate storage) for parties’ agreed agree actually counsel stated that “we analyzer construction that the analyzer sepa- server must has to run [the server] n ..., parties meaning 6. "Where the have attached same same to a contract term meaning promise agreement to a or terma contract is enforceable in accordance with thereof, interpreted accordance with meaning.”). principle ap This has been (Second) meaning.” Restatement of Con- plied by Appeals. as well See Courts 20l(l) (1981). § interpreta- tracts In contract (10th Furlong, Ahmad 435 F.3d tion, primary "it [is] clear that search is 2006) (recognizing impropriety Cir. of "a meaning parties, for a common not a resolving ambiguity court's a contractual con meaning imposed on them the law.” Id. trary contracting par of both intent "[AJuthority giving supports cmt. c. ... effect ties.”); Ill., James Ins. v. Zurich-Am. Co. of meaning parties to a common both shared (3d 2000) ("p]he 203 F.3d preference meaning imposed by to” a given practical construction consistent to that (3d) § 2 Farnsworth courts. (2004). 7.9 Contracts (Rev.) provision by parties to the contract con See also 5 Corbin on Contracts (When (1998) terms.”). § parties 24.5 "the attach the trols its Motorola, required im- Argument Oral at in the client-server from the client.”

rately plementation, the client sends information counsel likewise 29:29-35. analyzer “must then agreed independent per- that server to an server which from the client. Id. at separately using run” forms that information and a task agreed-upon construction This 7:25-26. to the client appli- sends infoi’mation back parties peti- on their was reiterated at That See 1304-05. is cation. rehearing. Apple that argued tions program what a does. library library is an ana- Samsung’s shared code rejects the majority explicitly par- The it lyzer separately “runs server because agreed ties’ construction and affirms applications it client serves.”7 from the on the infringement basis of its verdict Apple that Samsung responded had failed “analyzer that an own construction infringement analyzer “an ser- show separate requires storage. server” only from separately program ver that ran 1041-42, Maj. Op. Something 1044-45. it serves.”8 separately is which is “run” “stored” Running separately is indeed the majority’s approach in- separately. The is which consistent an construction with appellate consistent function. our with program that “analyzer server” “receives client,” from having data structures majority the dissent claims data, processes then it to and returns Apple’s concession that the analyzer takes Motorola, the client. 757 F.3d 1304-05.9 separately must run “out con- server “library program” present in The so-called Maj. Op. text.” at 1043. statement Samsung device cannot be an accused scope slip tongue. to claim was “analyzer satisfy and thus cannot server” It four times at the repeated oral parties’ experts limitation. The the claim explicitly in the argument,11 and reiterated agreed library program that a is a collec- petition rehearing. Apple can tion of code that be accessed other majority also makes much of applications Ap- accused de- is no ple’s claim con- implies, insistence that there appli- vice.10As the name a client requirement analyzer struction go library cation can the software and use) (i.e., program, be library code from server- a “standalone” “borrow” panel specific equating running that the perform a needed task rather erred having program functionality separately program. standalone than Running being application. separately into the client As we held standalone , (Apple expert testifying 10. See Apple 7. Inc.'s Corrected Petition J.A. Combined library software is "written as Rehearing Rehearing code software Banc for Panel En any program go can and access No. ECF J.A, execute”); (Samsung expert testify- 1.1792 ing that libraries are software "bits code Response Combined Petition for Panel programmers that exist all so that can use Rehearing En Rehearing ECF Banc them”). (internal omitted), quotation No. marks ("We Arg. agree 11. Oral at 29:30-35 that it with the 9. This is consistent district court’s client.”); separately has to run analyzer finding server is “a server (Q: say expert] 30:28-39 "Did it [the separate from a client that receives routine program?” separately was run from the client client,” "Yes.”); ("it's having from the and is data structures analyzer run at the A: 45:09-11 (Q: separate applica- "definitely from the separately”); ques- [client] "[T]he server 45:27-33 (internal quotation separately.” tions.” 46-47 omit- tion whether it runs A: "And Dr, was.”). ted). expert] Mowry it [Apple said (because may concepts knowledge lay judges. different indeed.be judi “[T]he- implies ciary standalone ... discharge no assistance ill-fitted to .is most software), provided by technological by patent other hardware cast upon duties Graham, legislation.” 36, no this but makes difference case. 383 U.S. at 86 if Even the claim does not construction of “[Consciousness S.Ct. their limita require analyz- the tions program, standalone [the courts] should vigilant make against separately er server still “must run importing own of notions the their ” program it Panel Op., serves.” 816 process nature the creative .... Mar 788, F.3d States, coni Co. Wireless Tel. v. United 320 1, 61-62, 1393, U.S. 63 S.Ct. 87 L.Ed. 1731 separate Separate storage not run is (1943) (Frankfurter, J., dissenting). Substi ning. Crucially, is tuting lay judges the views of for the library sepa record that runs shared code agreement parties, of the who are inti rately, separately. or is capable running mately technology, with the familiar risks only expert that the ac testified getting quite wrong. the construction This code, code; library cused uses shared exactly happened major is what here. The library he admitted that the code shared ity got wrong, the claim construction as a incapable running separately. See reinterpretation result its freelance (testifying J.A. 13054 li shared “analyzer departs which - server” from the brary code not run “outside of the could parties’ agreed-upon construction. It is dif application”); client Inc. ficult enough for the court to arrive at- a Co., 5:12-cv-630, Elecs. Trial Tr. of No. parties claim construction when the dis 28, Apr. 3052, 2014 at No. EOF 1928 agree. very wary Courts to over should (agreeing that the “can’t run accused code ride parties’ agreement as to claim own”); (testifying on its 13035 J.A. thaj; parties construction are when the ex Samsung applications “go to that code and perts in technical matters. they it use it is each want to where time added)); reasons, For all- I (emphasis respectfully access that J.A. these dis- code” (“And sent. go all those applications place library shared code in one the' REYNA, Judge, dissenting. Circuit computer memory hardware exists added)); use (emphasis it.” granted The court not en should have (testifying Samsung application soft banc in this case. En review banc review it goes “has granted ware access the code disfavored when neces code it is where and uses there” sary uniformity secure maintain added)). words, (emphasis In other it is the proceed the court’s or when thp decisions client, server, analyzer runs ing question of exceptional involves a im library library program program. 35(a); App. R. portance. Fed. Proc. Mis analyzer Jenkins, n.14, not run separately 33, ser souri v. 495 U.S. (1990). required by 1651, ver the claim. 109 L.Ed.2d 31 This S.Ct. requirement. case meets neither The en C disagree decision neither resolves a banc among ment nor an court’s decisions important why There are reasons any exceptionally -important ques swers appellate reject the par- should court tion. agreed ties’ In this claim construction. case cases, Applying has found a dealing other Rule court we beyond variety support an en banc complex technology grounds Neither reason take cases en banc facts case. review. One reason we See, review. e.g., justifies In re en banc precedent. is to overrule 1321, 1330, Tam, n.1 Cir. 808 F.3d merely Granting review because en banc (Feb. 11, 2016); 2015), as corrected Wil incorrect panel allegedly reached the Online, LLC, v. Citrix 792 F.3d liamson ‘exceptional impor- result “reduces (Fed.-Cir. 2015). An 1347-49 & n.3 tance’ test” to one based on “result-orient- is to consider whether deci other Neuman v. ed Bartlett ex rel. criteri[a].” light remain later Su sions sound (D.C. Bowen, See, e.g., Lexmark preme Court decisions. 1987) (Edwards, J., Wald, joined by C.J. Prod., Int’l, Inc., Impression Inc. v. 816 Mikva, Ginsburg, Judges and Circuit R.B. Cir.-2016); 721, (Fed. Hy SCA F.3d 726 Robinson, concurring in of re- and denials Aktiebolag Quality v. giene Prod. First banc). 6 of 11 hearing en “The fact that Prod., LLC, 1311, Baby F.3d 1315 807 judges agree particular a result does with (Fed. 2015). take Cir. also en We cases any greater that result invest panel a properly banc review whether legal validity than otherwise statute, such as of interpreted a case have.” Id. at 1243. See, impression. e.g., Suprema, Inc. v. first Comm’n, 1338, Int’l Trade 796 F.3d 1344- Judges explained on this court have 2015). (Fed. Cir. have taken 45 We also should for en banc review reserved be en banc forth the on cases to “set law” exceptional of importance matters Supreme has issue Court invited us uniformity precedent. maintain our See, Techs., Akamai Inc. v. e.g., revisit. panel opinion “is not viewed When Inc., Networks, 1020, Limelight 797 F.3d law,” having disagreement changed (Fed. 2015). 1022 majority opinion Cir. The panel’s with the decision “is not sufficient any today purport does not to do of these.1 reason Dow for en banc review.” Chem. (Canada), v. 809 Corp. Co. Nova Chems. Instead, majority opinion reverses (Fed. 2015) 1223, F.3d 1227-28 Cir. disagreement on panel on its based (Moore, J., Newman, joined by O’Malley, extremely questions—the claim narrow JJ., Taranto, and of concurring denial patent, single construction of a whether banc). En rehearing en banc intervention cer- support substantial exists should for be- be reserved actual conflicts findings, tain and factual the ultimate tween cases for cases of precedential and pat- two determination obviousness exceptional importance. Corp. DSU Med. majority opinion ents. The based on a (Fed. Co., 1293, wrong v. JMS F.3d 1311 Cir. panel’s belief decision 471 2006) J., (Michel, C.J., Mayer, application existing to the its law concur- case, ring).2 understanding in its facts Geren, agree Judge Judge plied 1. I Prost’s to the facts.” Watson v. with Chief 156, 2009) Dyk's majority’s (2d curiam). applica- (per dissents in that Cir. “If that tion of law of this course, to the facts case seems appropriate were then our dockets Supreme precedent inconsistent with Court polls con- would be with en banc overloaded and substantial evidence. obviousness testing panel’s particular examination of allegedly panel sets Id. Even of facts.” if a survey judges A shows this issue errs, banc review is when en not warranted every agreed that en circuit banc review have “the would at most amount to one error such should reserved for circumstances. precedent misapplication of facts correct, example, legal For "if the standard is Nixon, United States 827 F.2d hand.” occupy full then the court should itself 1987) (5th curiam). (per Cir. correctly ap- has been whether law .with My

The role of an en banc court is “not concern is that here we have made simply second-guess panel on the exceptional something unexception- that is Dillon, particular facts case.” In re I lurking al. in this potential see matter (Fed. 1990) 919 F.2d Cir. n.3 damage system to our of justice. I agree (Newman, J., joined by May Cowen and with Justice Cardozo that law should be er, JJ., dissenting). every Not error “[tjhere and impartial,” “uniform and that “enbancable,” panel is panel “[a] nothing must be in its action savors entitled to full err without the court de prejudice or even arbitrary or.favor whim scending upon Amgen Inc. v. it.” Hoechst Benjamin Cardozo, or fitfulness.” N. Roussel, Inc., Marion 469 F.3d (1921). Nature the Judicial Process 2006) (Lourie, J., concurring in En banc reviews undertaken on bases that banc). rehearing denial of en are not exceptional importance or to principles judicial Under economy, uniformity maintain the court’s decisions of Appellate Federal Rules Procedure jurisprudence will create based on arbi- instruct tous limit our en banc review to trary, whim fitfulness. presenting cases important meriting issues majority opinion is not a response the court’s full careful atten- resources and specific legal questions, typically as is tion. App. R. P. 35. Fed. for an Indeed, the case en banc review. en grant The decision to en banc consider- questions banc not presented were to the ation unquestionably among is the most public, supplemental new or briefing was serious non-merits an determinations ordered, not argument additional oral make, appellate court can it because not may majority held. The vacating panel have effect of based its “sub- opinion product that is the of a stantial original substan- evidence” review on the expenditure tial effort briefs and record before .time and. the court. judges three and numerous counsel. Yet, I legal discern certain issues that I Such a determination should be made court believe the could or have should compelling in the most circum- I addressed. address two explicitly such stances. issues below: substantial evidence and ob- Bartlett, 824 F.2d at 1242. jective indicia nonobviousness. The issues the majority opinion address- issues, es are not such apply claims to 1. SubstaNtial Evidenob existing law to facts of the case. The The en banc court panel’s reverses the majority opinion not explore ap- does disagrees pan- decision because it with the law, plicability of existing or the first inter- sup- el about substantial whether evidence pretation opinion of a statute. The not does ports jury’s implicit findings factual change great- claim to the law or lead to a underlying infringe- its obviousness and understanding er of the law as its result. sum, ment As Judge In verdicts. Chief Prost’s en banc dis- majority’s review simply explains, majority opinion misap- a do over. sent Disagreement panel considering rehearing requests, inquiry with decision is anot be, ground rehearing. differently sufficient an en for banc should not 'would I have voted Indus., Inc., 695, rather, panel majority,’

Mitchell v. ICG 753 F.3d than the but ‘is the (7th 2014) (Posner, J., concurring presents particularly important 699 Cir. issue this case ” banc). rehearing precedent.’ denial of en are or in “[T]here tension United States Foster, banc, 391, (4th 2012) granting rehearing standards en v. 674 F.3d 409 Cir. J.,f they (Wynn, dissenting rehearing for obvious reasons do not include: ‘I from denial ” banc). disagree panel majority.' with the Id. "In en devices, prior art such as Neo- But plies substantial evidence standard node, similar slide-to-unlock fea- included review. tures,. so of commercial success type of apparent It what substan presence to the mere such a fea- tied any—the review tial evidence standard—if aspects of novel it—is not the ture—and reciting applies. Merely majority opinion commercial suc- substantial evidence tangen arguably all of the evidence that secondary the offered consid- cess. “Where issue findings tially relates factual actually something eration results- Supreme with the Court’s not consistent what is both claimed and other than novel See, e.g., on substantial evidence. case law claim, no nexus to the in the there is Relations v. Labor Edison Co. Nat’l Con. re of the invention.” In merits claimed 197, (1938). Bd., 229-30 305 U.S. Kao, F.3d Huai-Hung jury’s ver reviewing obviousness 2011) (Fed., (emphasis original); Cir. see explicit dict, all of review “we Enters., also, e,g,, Corp. Tokai v. Easton findings factual substantial implicit (Fed. 2011) Inc., Cir. 632 F.3d Concepts, v. Kinetic Inc. Smith evidence.” (“If commercial is due an ele- success (Fed. Inc., F.3d Nephew, & art, exists.”).3 no nexus ment 2012). legal then Cir. “We examine the survey support cannot Such novo detei*- conclusion obviousness de jury finding any implicit commercial light it is mine correct whether success. findings adequately factual find we I court or believe district McKasy, (citing Jurgens Id. supported.” court, reviewing findings of when whether 1552, 1557 1991)). evidence, supported substantial fact any majority opinion implies actually -It must review evidence. evidence, is and that evidence substantial it should is substantial determine if evi- actually therefore cannot examine we dence, opposed merely As as evidence. presented evidence determine whether majority opinion today, not so does do al- actually supports it it findings is opinion en this perhaps explaining an banc leged For example, opinion support. in court’s role evidence review substantial survey consumers cites evidence that is warranted. The court en banc could purchase a rather devices with slide- provide guidance on what substantial preventing to-unlock feature accidental un- how it is evidence standard means and purchase a locking than devices without applied the factual find- when we review unlocking. preventing feature accidental ings verdicts.4 underlie 1054-55; Maj. Op. J.A. 21066. This evidence Analysis 2. Obviousness of commer- is cited as substantial evidence patent, cial of the '721 implicit dispute success which claims I see an additional un- particular en derlying a feature. banc reversal of the slide-to-unlock court’s Samsung argued briefing appeal ings, they in interpret patent 3. on same its can a be- had established and decide a claim construction. nexus different results, Judges disagree this evidence and the slide-to-unlock do tween feature, can often 37; Samsung frequent Br. also see as number of demonstrated Response split Br. Reply panels. & Here, majority example, opinion demonstrates, supports case us differ- evidence As the before finds that substantial an finding appellate judges implicit jury same of ent can review the evi- factual commercial disagree patent. Maj. Op. it dence and whether is substantial success for 1056. As evidence, support jury's example of Apple’s in factual find- it cites an such determinations, panel’s obviousness one burden-shifting such a framework proper grounds pros- “ma[d]e have sense” context of might served ecuting patents before the U.S. Patent for en review in case. banc this Trademark Id. at 1080 Office. n.7. argu- panel original opinion could It disagrees seems to the court me that ably interpreted applying a burden- over objective play the role indicia analysis determining shifting whether analysis court’s ultimate determina- patent example, For it obvious. “the said so, tion If we can- obviousness. should prima strong. facie case obviousness was didly en address this issue banc. secondary consider- legal questions I see here include ations was weak support and did (1) analysis whether obviousness involv- conclusion that nonob- the '721 (or ing objective secondary considerations addition, Apple, vious.” 804. In F.3d at non-obviousness) indicia of is a one- dissent, Judge in his Dyk Supreme cites (2) two-step process weight how much precedent argu- Court making forceful to accord secondary considerations ment secondary considerations of non- analysis. obviousness carry weight obviousness little where These issues that important should strong evidence obviousness exists. front be addressed room courthouse, majority opinion . The states that “[a] all stakeholders litigation determination whether table. we to do so Because failed case, I respectfully § obvious dissent. requires invalid as under factors, of all four Graham consideration error reach conclusion until all con-

obviousness those factors are Maj. Op.

sidered.” 1048. It notes that “Mbjective of non-obviousness indicia IP, LLC, FAIRWARNING every must be considered in where case Plaintiff-Appellant present.” Id. in In Cyclo

We addressed re this issue SYSTEMS, INC., IATRIC benzaprine Hydrochloride Extended-Re Defendant-Appellee Litig., lease Capsule Patent 1063 2015-1985 (Fed. 2012). explained Cir. that apply We of Appeals, Court United States ing burden-shifting framework district Circuit. Federal proceedings court was inconsistent with 11, Decided: October this Stratoflex, decision in Inc. v. court’s 1530, (Fed. Corp., Aeroquip 713 F.2d 1983).

Cir. 676 F.3d at 1076-80. noted We expert testimony conclusory "clearly testimony does been there’s stated evidence, see, e.g., iPhones use commercial success of the suffice Whit substantial contrast, serve, Inc., Packages, Comput. Id. at 694 F.3d invention.” LLC v. 2012), (Fed, panel even worth and that testimony did not find this Cir. evidence of is, mentioning analysis in its exist evi nexus substantial commercial success ed commercial evi unless nexus success dence between between see, invention, Apple's e.g., patent. dence the merits of merits of claimed Co., S.P.A., 816 F.3d & Cie 808 F.3d Inc. Eleecs. v. Gnosis Merck 2016). (Fed. 2015). repeatedly We have Cir.

Case Details

Case Name: Apple Inc. v. Samsung Electronics Co., Ltd.

Court Name: Court of Appeals for the Federal Circuit

Date Published: Oct 7, 2016

Citation: 839 F.3d 1034

Docket Number: 2015-1171, 2015-1195, 2015-1994

Court Abbreviation: Fed. Cir.