Now that some of the dust has settled, in the continuing cell phone battle between Apple Inc. and Samsung Electronics Co, the Court of Appeals for the Federal Circuit reversed the lower court ruling denying Samsung’s noninfringement judgment as a matter of law of motion (JMOL) on one Apple patent, reversed the trial court’s denial of Samsung’s JMOL of invalidity on two Apple patents, affirmed noninfringement of one of the Apple patents, affirmed infringement against Apple regarding a Samsung patent and affirmed judgment of noninfringement on a second Samsung patent. Apple Inc v Samsung Electronics Co Ltd., Case No. 2015-1171 (Fed. Cir. Feb. 26, 2016). The Court decision is worth reading to show how complicated patent matters can be simplified.
This is the Federal Circuit’s third appeal in this cell phone litigation. One of the Apple patents detects structures such as a phone number, in a text, and turns those structures into links allowing the user to click-on the structure to take an action (647 Apple patent) like calling a phone number shown in the text. The second Apple patent (the 721 patent) is directed to a slide to unlock feature. The third Apple patent (172 patent) covers auto-correction of text. A fourth Apple patent (959 patent) covers a universal search where user can, from a single search term, find results from both applications on the cell phone and from the Internet. Another Apple patent covers background synchronization of information on the cell phone with other devices while the user is using the phone. The Samsung patent (449 patent) covers camera systems for compressing, decompressing and organizing photos. The Samsung 239 patent covers systems for compressing and transmitting videos.
Samsung did not infringe the 647 patent because it did not use an analyzer server. Earlier the Federal Circuit had ruled that the analyzer server was a “server routine separate from the client that receives data having structures from the client.” Since the Samsung cell phone machine did not use a server apart from the phone itself, there was no infringement. “Regardless of whether the code is copied, the expert testimony from both sides shows that the Samsung software library programs are not standalone programs that run separately”.
Regarding the 721 patent and the 172 patent, the jury found that Samsung had willfully infringed. The District Court denied motions for invalidity and noninfringement motions by Samsung. The 721 patent related to a slide to unlock feature. Samsung had identified prior art systems involving movement of a finger continuously touching the screen in the prior art which stated “right sweep to unlock.” The Court then analyzed the claim language “predetermined location.” The Court then applied another prior art reference showing a slide or toggle on a screen.
The Court said that the mere disclosure that one alternative in the prior art does not amount to a “teaching away” of another alternative embodiment in the prior art. “Moreover, a motivation to use the teachings of a particular prior art reference need not be supported by finding that the feature be the preferred or the most desirable.” The Court cited In re Fulton, 391 F. 3d 1195, 1201 (Fed. Cir. 2004); and SightSound Techs, LLC v. Apotex Inc., 754 F.3d 952, 963 (Fed. Cir. 2014).
Regarding the argument that the reference was non-analogous, the Court indicated that a determination regarding “analogous” is a fact question. A reference qualifies as analogous prior art if it is from the same field of endeavor regardless of the problem addressed or, if the reference is not within the field of the inventor’s endeavor, the reference still is reasonably pertinent to the particular problem with which the inventors involved. Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010).
The Court then discusses in detail the secondary considerations such as copying, commercial success, praise regarding the invention, and long felt need. The court stated that evidence of copying is not sufficient to demonstrate nonobviousness of the claimed invention where, as in the present case, there is a substantial question of validity raised by the prior art references cited by the accused infringer.
With respect to the auto-correct 172 patent, the patent claim required an associated delimiter such as a space, comma or period. There was a prior art reference showing an automatic correction with a pop-up window. In the prior art reference stated that a space key actuation was required to accept the displayed default word. There was another prior art reference showing a letter and word choice text which displayed the current characters in the first area and potential completion or replacement in a second area.
Apple argued that the person of ordinary skill in the art (a skilled artisan) would not be motivated to combine prior art references. The Court said that the text correction and text completion are closely related problems and therefor arise in the same field of endeavor and are analogous arts.
With respect to the 959 Apple patent on universal search, the Samsung device did not search the Internet. Apple argued that the claim language covers search information previously downloaded into the phone from the Internet. The court did not address this topic because it upheld the jury verdict of noninfringement. Regarding the 414 Apple patent on synchronization, the claim language required three distinct synchronization software.
The Samsung expert testimony, according to Apple, did not suffice as substantial evidence because it imports additional limitations into the claims by suggesting that the sync adapter be configured to perform all synchronization or to perform synchronization special way. The District Court rejected this argument because Apple sought, in a posttrial instruction, for a claim construction despite never requesting that claim construction earlier. The Appeals Court agreed and affirmed the judgment of noninfringement.
