Federal Circuit Reverses Infringement Judgment as to Three Apple Patents, and Affirms Infringement Judgment as to one Samsung Patent

Authored by Mark Chapman, Ryan Sheehan, and James Reed

Digest of Apple Inc. v. Samsung Electronics Co., LTD., Nos. 2015-1171, 2015-1195, 2015-1994 (Fed. Cir. Feb. 26, 2016) (precedential). On appeal from N.D. Cal. Before Prost, Dyk, and Reyna.

Procedural Posture: Apple alleged infringement of five patents by Samsung: U.S. Patent Nos. 5,946,647; 6,847,959; 7,761,414; 8,046,721; and 8,074,172. After a jury trial, the district court entered judgment of infringement of the ’647, ’721, and ’172 patent, and non-infringement of the ’959 and ’414 patents. Samsung countersued alleging infringement of two patents by Apple: U.S. Patent Nos. 5,579,239 and 6,226,449. Based on the jury’s verdict, the district court entered judgment of infringement of the ’449 patent and non-infringement of the ’239 patent. Both Apple and Samsung appealed. CAFC affirmed-in-part and reversed-in-part

The Apple ’647 Patent:

  • Infringement: The Apple ’647 patent describes and claims software to detect “structures,” such as a phone number, in text and to turn those structures into links that allow the user to take an action (such as making a phone call). CAFC reversed the judgment of infringement of the ’647 patent, finding that no reasonable jury could have concluded that the accused Samsung Browser and Messenger applications included an “analyzer server,” as required by the asserted patent claim. On the last day of trial, the Federal Circuit construed this term in another case as “a server routine separate from a client that receives data having structures from the client.” Although the parties were permitted to recall their expert witnesses to provide testimony under this construction, CAFC concluded that Apple failed to present testimony that the accused software library programs in the Samsung phones ran separately from the programs they served (i.e., the Browser and Messenger applications), as required by the court’s construction.

The Apple ’721 Patent:

  • Validity – Obviousness: The Apple ’721 patent is directed to the iPhone “slide to unlock” feature, where a user can slide a moving image across the screen of the phone with a finger in order to unlock the phone. CAFC reversed the judgment of no invalidity, finding the asserted claim obvious over the prior-art NeoNode and Plaisant references. The parties did not dispute that the combination of the references discloses all of the claimed features; rather, Apple argued that the jury could have reasonably found that 1) the NeoNode reference teaches away from the “slider toggle” feature of the Plaisant reference, and 2) a skilled artisan would not have been motivated to combine the references, since the Plaisant reference describes wall-mounted devices rather than portable mobile phones. With respect to Apple’s first argument, CAFC reasoned that a motivation to use the teachings of a particular prior art reference need not be supported by a finding that that feature is the “preferred, or the most desirable” option. Therefore, CAFC held that the Plaisant reference did not teach away from using from the “slider toggle” feature merely by stating that the current design of the feature was not preferred by users. With respect to Apple’s second argument, CAFC held that no reasonable jury could find that the Plaisant reference is not analogous art in the same field of endeavor as the ’721 patent, because it concerned user interfaces for touchscreen devices, and Apple provided no expert testimony to the contrary.
  • Validity – Secondary Considerations: Apple argued that even if Samsung established a prima facie case of obviousness, the evidence of secondary considerations demonstrated nonobviousness. In particular, Apple asserted that there was evidence showing 1) a long-felt but unresolved need, 2) industry praise, 3) copying, and 4) commercial success. With respect to the long-felt but unresolved need, CAFC stated that Apple provided no evidence showing that the asserted need was recognized in the industry. With respect to industry praise, Apple’s evidence that attendees at an Apple manifested approval of the “slide to unlock” feature was not sufficient because the attendees may or may not have been persons of skill in the art. With respect to copying, Apple’s evidence was not sufficient because Samsung copied only one aspect of the invention entitled to little weight on the question of obviousness. Finally, with respect to commercial success, CAFC reasoned that Apple’s evidence was not sufficient to show a “nexus” between the patented feature and the commercial success of the iPhone. Accordingly, the evidence of secondary considerations was insufficient as a matter of law to overcome the prima facie obviousness case, and CAFC reversed the lower court’s judgment of no invalidity.

The Apple ’172 Patent:

  • Validity – Obviousness: The Apple ’172 patent describes and claims “auto-correct” software on a phone that automatically corrects typing errors. CAFC reversed the judgment of no invalidity, finding the asserted claim obvious over the prior-art Robinson and Xrgomics references. The parties did not dispute that the combination of the Robinson and Xrgomics prior-art references described every limitation of the asserted claim. CAFC rejected Apple’s argument that the jury could have found that a skill artisan would not have been motivated to combine the references because the Xrgomics reference relates to text completion rather than text correction, finding that both references relate generally to text input on portable electronic devices.
  • Secondary Considerations: Apple argued that evidence of secondary considerations was sufficient to show nonobviousness based on evidence showing 1) copying and 2) commercial success. With respect to copying, the evidence was insufficient because the feature alleged to have been copied by Samsung was disclosed in the prior art, and therefore not relevant to prove non-obviousness. With respect to commercial success, the survey evidence relied on by Apple showing that users were more likely to purchase smartphones with automatic text correction features was not linked to the specific implementation of such features recited in the asserted patent claim, and there was no nexus between the evidence and the merits of the claimed invention. Accordingly, the evidence of secondary considerations was insufficient to overcome the strong prima facie obviousness case, and CAFC reversed.

The Apple ’959 Patent:

  • Infringement: The Apple ’959 patent describes and claims “universal search” functionality permitting a user to search for results from both the phone and from the Internet based on a single search term. CAFC affirmed the judgment of non-infringement, finding that substantial evidence supported the jury’s verdict because it showed that the accused Samsung products did not search a plurality of locations including the Internet, rather than just information previously downloaded from the Internet.

The Apple ’414 Patent:

  • Infringement: The Apple ’414 patent describes and claims “background sync” software that synchronizes information on the phone with other devices while the user is using the phone. CAFC affirmed the judgment of non-infringement, finding that substantial evidence supported the jury’s verdict because it showed that the accused Samsung products did not include a synchronization software component “configured to synchronize” for email, but merely included a software component that indirectly causes synchronization by calling other software components.

The Samsung ’239 Patent:

  • Claim Construction: The Samsung ’239 patent describes and claims systems for capturing, compressing, and transmitting videos. Apple argued that the district court erred by construing the means-plus-function term “means for transmission” as requiring software (in addition to hardware) for transmission as a corresponding structure identified in the specification. CAFC disagreed, finding that software is necessary because hardware alone does nothing without software instructions telling it what to do, and affirmed the district court’s construction of the term and the judgment of noninfringement.

The Samsung ’449 Patent:

  • Infringement: The Samsung ’449 patent describes and claims camera systems for compressing, decompressing, and organizing digital files such as photos and videos. Apple first argued that the accused products did not meet the limitations of the asserted claim describing “compressor” and “decompressor” components that compress/decompress both still images and videos, since the products use separate and distinct components for images and videos. CAFC rejected this argument, finding that Samsung presented testimony that identified a single Apple design chip with circuitry that performs compressing/decompressing methods for both images and videos. Apple also argued that the accused products did not include the “search mode” limitation required by the asserted claim because the products do not display a list. CAFC rejected this argument because the “Camera Roll” feature of the accused product displaying an array of thumbnail images was a “list” under the plain and ordinary meaning of that term. Finally, Apple argued that its products do not have a recording circuit that “records each one of said plurality of image signals with classification data,” but CAFC found that Samsung presented testimony that the Apple “Camera Roll” feature contained “Albums” both created automatically and created by the user, which could include “classification data.” CAFC held that a jury could have relied on this testimony in reaching its verdict, and affirmed the judgment of infringement entered by the district court.

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