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Appeal Nos. 15-1171, -1195

United States Court of Appeals
for the

Federal Circuit
APPLE INC., a California corporation,
Plaintiff-Cross-Appellant,
v.
SAMSUNG ELECTRONICS CO., LTD., a Korean corporation,
SAMSUNG ELECTRONICS AMERICA, INC., a New York corporation,
SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
a Delaware limited liability company,
Defendants-Appellants.
APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE
NORTHERN DISTRICT OF CALIFORNIA IN CASE NO. 5:12-CV-00630-LHK,
LUCY H. KOH, UNITED STATES DISTRICT JUDGE

CORRECTED NON-CONFIDENTIAL BRIEF
FOR DEFENDANTS-APPELLANTS

JOHN B. QUINN
SCOTT L. WATSON
MICHAEL T. ZELLER
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
865 South Figueroa Street, 10th Floor
Los Angeles, California 90017
(213) 443-3000

KATHLEEN M. SULLIVAN
WILLIAM B. ADAMS
DAVID M. COOPER
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010
(212) 849-7000
BRIAN C. CANNON
KEVIN P.B. JOHNSON
VICTORIA F. MAROULIS
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, California 94065
(650) 801-5000

March 4, 2015

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CERTIFICATE OF INTEREST
Counsel for Defendants-Appellants certifies the following:
1.

The full name of every party or amicus represented by me is:

Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
Effective January 1, 2015, Samsung Telecommunications America, LLC (“STA”)
merged with and into Samsung Electronics America, Inc., and therefore STA no
longer exists as a separate corporate entity.
2.

The name of the real party in interest (if the party named in the caption

is not the real party in interest) represented by me is:
N/A
3.

All parent corporations and any publicly held companies that own 10

percent or more of the stock of the party or amicus curiae represented by me
are:
Samsung Electronics America, Inc. (“SEA”) is a wholly-owned subsidiary of
Samsung Electronics Co., Ltd. (“SEC”), a publicly held corporation organized
under the laws of the Republic of Korea. SEC is not owned by any parent
corporation and no other publicly held corporation owns 10% or more of its stock.
No other publicly held corporation owns 10% or more of SEA’s stock.

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4.

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The names of all law firms and the partners or associates that appeared

for the party or amicus now represented by me in the trial court or are
expected to appear in this court are:
Quinn Emanuel Urquhart & Sullivan, LLP: Deepa Acharya; William B. Adams;
Anthony P. Alden; Carl G. Anderson; Alexander D. Baxter; Katherine B.
Bearman; Robert J. Becher; Rebecca A. Bers; Kara M. Borden; Todd M. Briggs;
Amy H. Candido; Brian C. Cannon; Kenneth R. Chiate; David M. Cooper; Lindsay
Cooper; Clark Craddock; Patrick D. Curran; Jacob K. Danzinger; Edward J.
DeFranco; Samuel M. Drezdzon; Marissa R. Ducca; David Elsberg; Eric J.
Emanuel; Richard W. Erwine; Susan R. Estrich; Michael L. Fazio; Anastasia M.
Fernands; Scott A. Florance; Ryan S. Goldstein; John S. Gordon; Ron Hagiz;
Nathan A. Hamstra; Jordan R. Jaffe; Joshua P. Jaffe; Kevin P.B. Johnson; James
D. Judah; Robert N. Kang; Rachel M. Kassabian; Scott B. Kidman; Peter A.
Klivans; Valerie A. Lozano; Kristin J. Madigan; Victoria F. Maroulis; John T.
McKee; Joseph Milowic; David A. Nelson; Jared W. Newton; Sean S. Pak; Daniel
C. Posner; Christopher E. Price; Maxim Price; William C. Price; B. Dylan Proctor;
John B. Quinn; Carlos A. Rodriguez; Shahin Rezvani; Patrick M. Shields; Elliot J.
Siegel; Kevin A. Smith; Robert W. Stone; Kathleen M. Sullivan; Stephen A.
Swedlow; Derek J. Tang; Amardeep L. Thakur; Bill Trac; Charles K. Verhoeven;

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Matthew S. Warren; Scott L. Watson; Cleland B. Welton II; Alan L. Whitehurst;
Lance L. Yang; Michael T. Zeller
Crone Hawxhurst LLP: Daryl M. Crone
Sheppard Mullin Richter & Hampton LLP: Gary L. Halling; David R. Garcia;
Michael R. Heimbold; Mona Solouki
Squire Patton Boggs (US) LLP: Mark C. Dosker
Steptoe & Johnson LLP: John M. Caracappa; Michael R. Heimbold; Huan-Yi Lin;
Dylan Ruga
Williams & Connolly, LLP: Stanley E. Fisher; Dov P. Grossman; David M.
Horniak; David M. Krinsky; Aaron P. Maurer

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TABLE OF CONTENTS
STATEMENT OF RELATED CASES ................................................................. XII
PRELIMINARY STATEMENT ............................................................................... 1
JURISDICTIONAL STATEMENT .......................................................................... 2
STATEMENT OF THE ISSUES............................................................................... 2
STATEMENT OF THE CASE .................................................................................. 3
A.

The Patents At Issue .............................................................................. 3
1.

Apple’s ’647 Patent (“Quick Links”) ......................................... 3

2.

Apple’s ’721 Patent (“Slide To Unlock”) ................................... 6

3.

Apple’s ’172 Patent (“Text Correction”) .................................... 7

4.

Apple’s ’959 Patent (“Unified Search”) ..................................... 7

5.

Apple’s ’414 Patent (“Sync”) ..................................................... 7

6.

Samsung’s ’239 Patent ................................................................ 8

B.

The Jury Verdict ....................................................................................8

C.

The District Court’s Orders On Post-Trial Motions ............................. 9

SUMMARY OF ARGUMENT ...............................................................................10
STANDARDS OF REVIEW ...................................................................................14
ARGUMENT ...........................................................................................................16
I.

THE DISTRICT COURT ERRED IN DENYING SAMSUNG’S
MOTION FOR JMOL AS TO APPLE’S ’647 PATENT .............................16
A.

Under This Court’s Claim Construction, No Reasonable Jury
Could Find That The Accused Products Include An “Analyzer
Server” .................................................................................................16

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B.

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Under This Court’s Claim Construction, No Reasonable Jury
Could Find That The Accused Products “Link[] Actions” With
A “Specified Connection” ...................................................................25

A.

Samsung Is Entitled To JMOL As To The ’721 Patent Because
Claim 8 Is Invalid As Obvious ............................................................33

B.

Samsung Is Entitled To JMOL As To The ’172 Patent ......................38

D.

IV.

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THE DISTRICT COURT ERRED IN DENYING SAMSUNG’S
MOTION FOR JMOL AS TO APPLE’S ’721, ’172, ’959 AND ’414
PATENTS ......................................................................................................33

C.

III.

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1.

The District Court Erred In Its Construction Of The
Phrase “Keyboard And A Touchscreen Display” .....................38

2.

Claim 18 Is Invalid As Obvious ...............................................39

Samsung Is Entitled To JMOL As To The ’959 Patent Because
Claim 25 Is Invalid As Indefinite And Anticipated ............................45
1.

The Term “Heuristic” Renders Claim 25 Invalid As
Indefinite Under Nautilus .........................................................45

2.

Claim 25 Is Invalid As Anticipated By WAIS Prior Art .......... 47

Samsung Is Entitled To JMOL As To The ’414 Patent Because
Claim 20 Is Invalid As Anticipated .....................................................49

THE DISTRICT COURT ERRED IN GRANTING APPLE
ONGOING ROYALTIES .............................................................................51
A.

The District Court Lacked Jurisdiction To Order Ongoing
Royalties ..............................................................................................51

B.

Apple Waived Any Claim To Ongoing Royalties ..............................52

C.

The District Court Erred By Failing To Consider The HTC
License In Determining Ongoing Royalty Rates ................................55

THE DISTRICT COURT’S ERRONEOUS CLAIM
CONSTRUCTION OF SAMSUNG’S ’239 PATENT WARRANTS A
NEW TRIAL .................................................................................................56
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A.

B.
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The District Court Incorrectly Construed The Term “Means For
Transmission Of Said Captured Video Over A Cellular
Frequency” ..........................................................................................56
1.

The District Court Erred By Including Software
Limitations In The Structure .....................................................57

2.

The District Court Erred By Failing To Include “Cellular
Radio Transmitters” As Part Of The Structure .........................59

Samsung Is Entitled To A New Trial To Remedy The District
Court’s Erroneous And Prejudicial Claim Construction.....................60

IF THE COURT ORDERS A NEW TRIAL ON APPLE’S
DAMAGES, IT SHOULD CORRECT THE DISTRICT COURT’S
ERRONEOUS EVIDENTIARY RULINGS.................................................61
A.

Apple’s Conjoint Survey Evidence And Damages Calculations
Based On That Evidence Should Be Excluded ...................................61

B.

Evidence Of Apple’s Real-World Licenses And Valuations Of
The Patents-In-Suit Should Be Admitted............................................64

C.

Apple’s Evidence Of Lost Profits For An Incorrect “Blackout”
Period For The ’647 Patent Should Be Excluded ...............................65

CONCLUSION ........................................................................................................67
ADDENDUM

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CONFIDENTIAL MATERIAL OMITTED
The materials omitted from pages 56, 62, 63, and 64 of this brief describe
Apple’s confidential licensing information. The materials omitted from pages
A27-29, A33-34, and A38 of the Addendum describe confidential information
regarding Samsung’s sales and profits. The materials omitted from page A113 of
the Addendum contain confidential information regarding the parties’ reasonableroyalty calculations.

The materials omitted from pages A136.3-36.5 of the

Addendum contain confidential information relating to Apple’s calculation of
alleged lost profits. The materials omitted from pages A168-70 and A173-75 of
the Addendum describe confidential technical information.

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TABLE OF AUTHORITIES
Page
Cases
Allergan, Inc. v. Apotex Inc.,
754 F.3d 952 (Fed. Cir. 2014) ............................................................................36
Apple Inc. v. Motorola, Inc.,
757 F.3d 1286 (Fed. Cir. 2014) ...................................................................passim
Apple Inc. v. Motorola, Inc.,
No. 11-cv-08540 (N.D. Ill. Mar. 19, 2012) .................................................passim
Aqua Shield v. Inter Pool Cover Team,
774 F.3d 766 (Fed. Cir. 2014) ............................................................................15
ArcelorMittal France v. AK Steel Corp.,
700 F.3d 1314 (Fed. Cir. 2012) ..........................................................................60
Aro Mfg. Co. v. Convertible Top Replacement Co.,
377 U.S. 476 (1964) ............................................................................................66
Arthur A. Collins, Inc. v. N. Telecom Ltd.,
216 F.3d 1042 (Fed. Cir. 2000) ..........................................................................23
Atmel Corp. v. Info. Storage Devices, Inc.,
198 F.3d 1374 (Fed. Cir. 1999) ..........................................................................59
B. Braun Med., Inc. v. Abbott Labs.,
124 F.3d 1419 (Fed. Cir. 1997) ..........................................................................57
Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
616 F.3d 1249 (Fed. Cir. 2010) ..........................................................................38
Brilliant Instruments, Inc. v. GuideTech, LLC,
707 F.3d 1342 (Fed. Cir. 2013) ..........................................................................14
Broadcom Corp. v. Emulex Corp.,
732 F.3d 1325 (Fed. Cir. 2013) ..........................................................................14
Cheese Sys. Inc. v. Tetra Pak Cheese & Powder Sys. Inc.,
725 F.3d 1341 (Fed. Cir. 2013) ..........................................................................36
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Cybor Corp. v. FAS Techs., Inc.,
138 F.3d 1448 (Fed. Cir. 1998) ..........................................................................14
DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014) ..........................................................................15
Eaton Corp. v. Rockwell Int’l Corp.,
323 F.3d 1332 (Fed. Cir. 2003) ..........................................................................14
Elvis Presley Enters., Inc. v. Capece,
141 F.3d 188 (5th Cir. 1998) ..............................................................................53
Ericsson, Inc. v. D-Link Sys, Inc.,
773 F.3d 1201 (Fed. Cir. 2014) ..........................................................................65
Galderma Labs., LP v. Tolmar, Inc.,
737 F.3d 731 (Fed. Cir. 2013) ......................................................................35, 36
Gaus v. Conair Corp.,
363 F.3d 1284 (Fed. Cir. 2004) ..........................................................................38
Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l LLC,
618 F.3d 1294 (Fed. Cir. 2010) ..........................................................................37
Georgia-Pacific Corp. v. U.S. Plywood Corp.,
318 F. Supp. 1116 (S.D.N.Y. 1970) ...................................................................55
Grain Processing Corp. v. American Maize Prods. Co.,
185 F.3d 1341 (Fed. Cir. 1999) ....................................................................14, 66
Griggs v. Provident Consumer Discount Co.,
459 U.S. 56 (1982) ..............................................................................................51
Interval Licensing LLC v. AOL, Inc.,
766 F.3d 1364 (Fed. Cir. 2014) ..........................................................................46
KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398 (2007) ......................................................................................33, 42
In re Kubin,
561 F.3d 1351 (Fed. Cir. 2009) ..........................................................................36

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LaserDynamics, Inc. v. Quanta Computer, Inc.,
694 F.3d 51 (Fed. Cir. 2012) ........................................................................55, 65
Mformation Techs., Inc. v. Research in Motion Ltd.,
2012 WL 3222237 (N.D. Cal. Aug. 8, 2012),
aff’d, 764 F.3d 1392 (Fed. Cir. 2014) .................................................................23
Micro Chem., Inc. v. Great Plains Chem. Co.,
194 F.3d 1250 (Fed. Cir. 1999) ....................................................................58, 59
Nautilus, Inc. v. Biosig Instruments, Inc.,
___ U.S. ___, 134 S. Ct. 2120 (2014).....................................................12, 45, 46
Oracle Am., Inc. v. Google Inc.,
2012 WL 850705 (N.D. Cal. Mar. 13, 2012),
rev’d on other grounds, 750 F.3d 1339 (Fed. Cir. 2014) ...................................63
Paice LLC v. Toyota Motor Corp.,
504 F.3d 1293 (Fed. Cir. 2007) ....................................................................52, 54
Paige v. State of Cal.,
102 F.3d 1035 (9th Cir. 1996) ............................................................................51
Phillips Petroleum Co. v. Huntsman Polymers Corp.,
157 F.3d 866 (Fed. Cir. 1998) ............................................................................23
PlaSmart, Inc. v. Kappos,
482 F. App’x 568 (Fed. Cir. 2012) .....................................................................45
Ramos v. Davis & Geck, Inc.,
968 F. Supp. 765 (D.P.R. 1997),
aff’d, 167 F.3d 727 (1st Cir. 1999) ....................................................................53
Rick’s Mushroom Serv., Inc. v. United States,
521 F.3d 1338 (Fed. Cir. 2008) ..........................................................................15
S. Cal. Retail Clerks Union v. Bjorklund,
728 F.2d 1262 (9th Cir. 1984) ............................................................................53
Southwall Techs., Inc. v. Cardinal IG Co.,
54 F.3d 1570 (Fed. Cir. 1995) ............................................................................15

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Teva Pharm. U.S.A., Inc. v. Sandoz, Inc.,
___ U.S. ___, 135 S. Ct. 831 (2015)...................................................................15
Virnetx, Inc. v. Cisco Sys., Inc.,
767 F.3d 1308 (Fed. Cir. 2014) ..........................................................................15
W. Union Co. v. Moneygram Payment Sys., Inc.,
626 F.3d 1361 (Fed. Cir. 2010) ..........................................................................37
Wenger Mfg., Inc. v. Coating Mach. Sys., Inc.,
239 F.3d 1225 (Fed. Cir. 2001) ....................................................................57, 58
Whitserve, LLC v. Computer Packages, Inc.,
694 F.3d 10 (Fed. Cir. 2012) ..............................................................................15
Wyers v. Master Lock Co.,
616 F.3d 1231 (Fed. Cir. 2010) ..........................................................................37
Statutes and Rules
28 U.S.C. § 1295(a)(1) ...............................................................................................2
28 U.S.C. § 1331 ........................................................................................................2
28 U.S.C. § 1338 ........................................................................................................2
35 U.S.C. § 112 ..................................................................................................46, 56
35 U.S.C. § 283 ........................................................................................................52
Fed. R. Civ. P. 50 .....................................................................................................53
Fed. R. Civ. P. 59 .....................................................................................................53
Fed. R. Evid. 702 .....................................................................................................62

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STATEMENT OF RELATED CASES
Defendants-Appellants identify the following appeals as related:
Apple Inc. v. Samsung Elecs. Co., No. 2014-1802 (pending).
Apple Inc. v. Samsung Elecs. Co., No. 2012-1507, 695 F.3d 1370 (Fed. Cir.
2012) (Prost, J., joined by Moore & Reyna, JJ.).

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PRELIMINARY STATEMENT
This is an appeal from a judgment after jury trial in the District Court for the
District of Northern California (Koh, J.) awarding Apple $119,625,000 in
damages, plus supplemental damages and ongoing royalties, for infringement of
three patents. That judgment should be reversed, for Apple failed to prove
infringement of any valid patent.
As to the ’647 patent, which covers “quick links” and which accounts for the
overwhelming majority of damages ($98,690,625), Apple presented its case based
on claim constructions for two limitations that this Court expressly rejected in
another case, Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1304-07 (Fed. Cir.
2014). Under this Court’s authoritative claim construction, no reasonable jury
could find infringement, and the district court erred in denying judgment as a
matter of law (“JMOL”) on this ground.
The district court likewise erred in denying JMOL that the asserted claims of
Apple’s ’721 and ’172 patents are invalid as obvious, and thus in leaving intact the
$2,990,625 in damages awarded for infringement of the ’721 patent and the
$17,943,750 in damages awarded for infringement of the ’172 patent. The “slide
to unlock” software feature of the ’721 patent was well known in the prior art of
touchscreen devices. Likewise, the “autocorrect” feature of the ’172 patent was in
use and obvious well before Apple filed its patent.

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The jury found no infringement of Apple’s ’959 or ’414 patents, but the
district court erred nonetheless in denying JMOL that claim 25 of the ’959 patent is
invalid as indefinite and anticipated and that claim 20 of the ’414 patent is invalid
as anticipated.
With respect to the ’239 patent asserted by Samsung, the district court made
claim construction errors prejudicial to Samsung at trial. A new trial should be
ordered on this patent.
JURISDICTIONAL STATEMENT
The district court had jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338.
For the reasons stated infra Part III.A, the district court did not have jurisdiction to
address ongoing royalties. This Court has jurisdiction over Samsung’s appeal of
the district court’s November 25, 2014 final judgment pursuant to 28 U.S.C. §
1295(a)(1). Samsung filed a timely notice of appeal on November 25, 2014.
A41151-52.
STATEMENT OF THE ISSUES
1.

Whether the district court erred in denying JMOL that Apple’s ’647

patent was not infringed under the proper construction of (a) the “analyzer server”
limitation and (b) the “linking actions” limitation.
2.

Whether the district court erred in denying JMOL that (a) claim 8 of

Apple’s ’721 patent is invalid as obvious; (b) claim 18 of Apple’s ’172 patent is

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not infringed and invalid as obvious; (c) claim 25 of Apple’s ’959 patent is invalid
as indefinite and anticipated; and (d) claim 20 of Apple’s ’414 patent is invalid as
anticipated.
3.

Whether the district court erred in granting Apple’s motion for

ongoing royalties where (a) Apple’s interlocutory appeal of the denial of
permanent injunction divested the court of jurisdiction; (b) Apple waived any
request for ongoing royalties; and (c) the royalty rate was set without consideration
of a comparable Apple license.
4.

Whether the district court erred in its claim construction of Samsung’s

’239 patent.
5.

Whether, if this Court orders a new trial on Apple’s patents, it should

correct the district court’s erroneous evidentiary rulings (a) admitting evidence
regarding Apple’s conjoint survey; (b) excluding evidence regarding Apple’s
comparable license and valuation of the patents-in-suit; and (c) admitting evidence
of lost profits for a “blackout” period for the ’647 patent.
STATEMENT OF THE CASE
A.

The Patents At Issue
1.

Apple’s ’647 Patent (“Quick Links”)

Asserted claim 9 of U.S. Patent No. 5,946,647 (“’647 patent”) is directed to
a software program that receives data from separate “client” applications, detects
“structures” in that data (like phone numbers and street addresses in an email
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message), links “actions” to those structures, provides a pop-up menu allowing a
user to select a linked action (like dial or add-to-contacts), and then executes the
selected action on the detected structure. Because detecting structures and linking
actions were known in the art, the claimed program is limited to a specific software
architecture with three distinct software routines: (1) an “analyzer server,” for
detecting and linking structures; (2) a “user interface” to handle user selections;
and (3) an “action processor” that performs the selected action on the detected
structure. A597.
At trial, Apple asserted claim 9, which is dependent upon claim 1. Claim 1
provides:
1. A computer-based system for detecting structures in data and
performing actions on detected structures, comprising:
an input device for receiving data;
an output device for presenting the data;
a memory storing information including program routines including
an analyzer server for detecting structures in the data, and for linking
actions to the detected structures;
a user interface enabling the selection of a detected structure and a
linked action; and
an action processor for performing the selected action linked to the
selected structure; and
a processing unit coupled to the input device, the output device, and
the memory for controlling the execution of the program routines.
A597 (construed terms emphasized). Claim 9 states:
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9. The system recited in claim 1, wherein the user interface enables
selection of an action by causing the output device to display a pop-up
menu of the linked actions.
Id.
In a prior case in which Apple asserted the ’647 patent against Motorola, the
District Court for the Northern District of Illinois construed “analyzer server” as “a
server routine separate from a client that receives data having structures from the
client”; and construed “linking actions to the detected structures” as “creating a
specified connection between each detected structure and at least one computer
subroutine that causes the CPU to perform a sequence of operations on that
detected structure.” Apple Inc. v. Motorola, Inc., No. 11-cv-08540, slip op. at 8-11
(N.D. Ill. Mar. 19, 2012) (Posner, J., sitting by designation) (emphases added).
Samsung notified the district court below of those claim constructions and urged
the district court to apply them. 1 But the district court commenced trial on March
31, 2014, without providing any construction of “analyzer server” or “linking
actions.” On April 25, 2014, this Court affirmed in Motorola, expressly adopting
the Northern District of Illinois’ constructions of the terms “analyzer server” and
“linking actions” in the ’647 patent. Motorola, 757 F.3d at 1304-07. The district
court allowed the parties to present additional testimony on the last day of trial to
1

A3015-16 (April 23, 2012 preliminary injunction briefing); A40059:25A40060:4 (February 14, 2013 technology tutorial); A40542-47 (December 12,
2013 hearing); A40853-54 (March 13, 2014 Joint Pre-Trial Statement); A40867
(March 28, 2014 denial of request for inclusion in jury notebook).
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address the infringement and invalidity allegations under this Court’s
constructions. A13027:16-24.
2.

Apple’s ’721 Patent (“Slide To Unlock”)

U.S. Patent No. 8,046,721 (“’721 patent”) is directed to a device with a
touch-sensitive display that may be unlocked using pre-defined gestures and
instructions. Asserted claim 8 is dependent on claim 7, which provides:
7. A portable electronic device, comprising:
a touch-sensitive display;
memory;
one or more processors; and
one or more modules … including instructions:
to detect a contact with the touch-sensitive display at a first predefined
location corresponding to an unlock image; to continuously move
the unlock image on the touch-sensitive display … ; and
to unlock the hand-held electronic device if the unlock image is
moved from the first predefined location on the touch screen to a
predefined unlock region on the touch-sensitive display.
A685 (emphases added). Claim 8 is directed to:
8. The device of claim 7, further comprising instructions to display
visual cues to communicate a direction of movement of the unlock
image required to unlock the device.
Id. (emphasis added).

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Apple’s ’172 Patent (“Text Correction”)

U.S. Patent No. 8,074,172 (“’172 patent”) is directed to a particular form of
providing word recommendations for text correction. Asserted claim 18 requires
“[a] graphical user interface on a portable electronic device with a keyboard and a
touch screen display.” A707-08 (emphasis added). The district court construed
the preamble limitation “a keyboard and a touchscreen display” to encompass both
physical and virtual keyboards. A161-64. Based on that construction, the court
granted summary judgment of infringement of the ’172 patent. A164.
4.

Apple’s ’959 Patent (“Unified Search”)

U.S. Patent No. 6,847,959 (“’959 patent”) is directed to a computer system
for locating information both on the Internet and locally with a single search, by
using a “plurality of heuristics.” Asserted claim 25 requires instructions to provide
an “information identifier to a plurality of heuristics to locate information in the
plurality of locations which include the Internet and local storage media.” A607.
5.

Apple’s ’414 Patent (“Sync”)

U.S. Patent No. 7,761,414 (“’414 patent”) is directed to particular methods
and systems for synchronizing data between multiple devices. Asserted claim 20
requires at least three distinct “synchronization software components” that are
“configured to synchronize.” A655.

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Samsung’s ’239 Patent

U.S. Patent No. 5,579,239 (“’239 patent”) is directed to a system for video
compression and transmission. Asserted claim 15 provides:
15. An apparatus for transmission of data, comprising:
a computer including a video capture module to capture and compress
video in real time;
means for transmission of said captured video over a cellular
frequency.
A720. The district court rejected Samsung’s proposed construction of the “means
for transmission” as “one or more modems connected to one or more cellular
telephones or cellular radio transmitters,” and instead construed it as “one or more
modems connected to one or more cellular telephones, and software performing a
software sequence of initializing one or more communications ports on said
apparatus, obtaining a cellular connection, obtaining said captured video, and
transmitting said captured video.” A150 (emphasis added).
B.

The Jury Verdict

On May 5, 2014, the jury returned a verdict finding infringement of Apple’s
’647 and ’721 patents. A40869; A40872. The jury found no infringement of
Apple’s ’959 and ’414 patents. A40870-71. The jury also found that Samsung’s
infringement of the ’721 patent was willful. A40874. The jury found all of
Apple’s patents valid. Id. The jury awarded Apple $119.6 million (A40875); on a
per-patent basis, that award reflected $98,690,625 for infringement of the ’647
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patent by nine Samsung products, $2,990,625 for infringement of the ’721 patent
by three Samsung products, and $17,943,750 for infringement of the ’172 patent
by seven Samsung products (A27-28; A40876).
As to the Samsung patents, the jury found that Apple infringed U.S. Patent
No. 6,226,449 (“’449 patent”) but did not infringe the ’239 patent and awarded
Samsung $158,400. A40878-79.
C.

The District Court’s Orders On Post-Trial Motions

On August 27, 2014, the district court denied Apple’s motion for permanent
injunction. A41023-64. Apple filed an interlocutory appeal from that ruling,
which is pending before this Court. Apple Inc. v. Samsung Elecs. Co., No. 20141802.
On September 9, 2014, the district court denied Samsung’s renewed motion
for JMOL (A39-91) except insofar as it granted Samsung’s motion for judgment
that it did not willfully infringe the ’721 patent, holding that there was no objective
willfulness because “Samsung’s invalidity defense was not objectively baseless”
(A66). In addition, the court granted Apple supplemental damages for infringing
sales through the date of judgment. A113.
On November 25, 2014, the district court awarded ongoing royalties to
Apple for any ongoing infringement. A3-38. On the same day, the district court
entered final judgment. A1-2.

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SUMMARY OF ARGUMENT
The judgment should be reversed or vacated on several independent
grounds.
1. The judgment of infringement of Apple’s ’647 patent should be reversed
because Apple failed to produce evidence showing infringement of the ’647 patent
under this Court’s authoritative constructions in Motorola of the “analyzer server”
and “linking actions” limitations in that patent.
First, as to “analyzer server,” there is no evidence that the accused code
functions as a “server routine” that is “separate from a client” or “receives data
having structures from a client.” Rather, the undisputed evidence established that
the accused code is part of the application when the claimed “detecting” and
“linking” functions are performed.

The district court erred in finding the

separateness requirement satisfied by the fact that the code came from “shared
libraries,” for the uncontested evidence shows that the accused library code is just
like any other code within the application itself, and thus is no more a “separate
server” than is any other software in the application. By treating such an ordinary
program routine as a server separate from a client, the district court rendered the
“separate server” requirement meaningless, in disregard of Motorola.
Second, Apple produced no evidence to show a “specified connection”
between a detected structure and a selected action. The district court found the

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specified-connection requirement satisfied because the system “necessarily” calls a
method called “startActivity()” when the user makes a selection of an action to be
performed, but that was error. As Apple’s own expert conceded, startActivity() is
merely a generic first step that begins the process of identifying possible
applications to perform the action. If the activation of any code—whether or not it
is linked to a particular application—were sufficient to constitute a “specified
connection,” then that requirement would be rendered meaningless.
2. Samsung is entitled to JMOL as to Apple’s ’721, ’172, ’959, and ’414
patents.
First, Samsung is entitled to judgment that claim 8 of the ’721 patent is
invalid as obvious because the prior art disclosed all of the limitations in claim 8.
The district court held that, because the prior art was ambivalent about the use of
“sliders” (rather than other toggles) to unlock, the jury could have found that the
prior art teaches away from sliders. But the prior art expressly “encourag[ed]” the
use of sliders, and this Court has rejected the idea that ambivalence suffices to
constitute teaching away.
Second, Samsung is entitled to judgment of non-infringement of the ’172
patent because the district court erroneously construed the limitation “a keyboard
and a touchscreen display” to encompass both physical and virtual keyboards.
Since the “keyboard” and “display” are recited as separate elements, the plain

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language requires a separate keyboard and display, not a keyboard that is part of
the display. In any event, claim 18 of the ’172 patent is invalid as obvious because
the prior art in combination disclosed every limitation of claim 18.
Third, Samsung is entitled to judgment that claim 25 of the ’959 patent is
invalid. Claim 25 is invalid as indefinite because the claim relies upon “heuristics”
to conduct searches for information without any specification of what those
“heuristics” are.

The district court’s use of a “rule of thumb” in construing

heuristics and Apple’s expert’s definition of heuristics as “good ideas” are both far
too vague and subjective to satisfy the requirements of Nautilus, Inc. v. Biosig
Instruments, Inc., ___ U.S. ___, 134 S. Ct. 2120 (2014). Claim 25 is also invalid
as anticipated by prior art, which met every claim limitation.
Fourth, Samsung is entitled to judgment that claim 20 of the ’414 patent is
invalid as anticipated. The undisputed evidence established that Windows Mobile
5 (“WM5”) anticipated claim 20. The district court’s ruling to the contrary relied
solely on one sentence of testimony from Apple’s expert that was irrelevant to the
component of WM5 that Samsung relied upon to show anticipation.
3. This Court should vacate the district court’s ruling awarding ongoing
royalties. The district court lacked jurisdiction over ongoing royalties because it
addressed the issue after Apple appealed the denial of a permanent injunction,
passing jurisdiction over equitable relief to this Court. In any event, Apple waived

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ongoing royalties by failing to request that relief at trial or at any other point prior
to its injunction appeal. Even if an ongoing royalty were proper, the district court
erred in setting the rate because it failed to consider Apple’s comparable license to
HTC.
4. Samsung is entitled to a new trial on its ’239 patent because asserted
claim 15 is a means-plus-function claim, and the district court erroneously
construed the claim to require software structure not included in the specification
and not necessary to perform the stated function. The district court also erred in
excluding “cellular radio transmitters” for performing the transmission function.
The specification discloses radio transmitters and transmission over cellular
frequencies, which necessarily include cellular radio transmitters.
5. Samsung does not seek any new trial on Apple’s patents, but should any
such new trial be ordered, this Court should correct three evidentiary rulings.
First, the conjoint survey evidence presented by Apple’s expert witness Dr. John
Hauser should be excluded as unreliable, as should testimony by Apple’s damages
expert Dr. Christopher Vellturo insofar as it relies on that survey. The survey fails
to consider significant factors that affect real-world market share and consumer
decisions, such as brand, battery life, operating system, and promotion and is
inconsistent with real-world evidence of consumers’ buying decisions. Second,
Samsung should be able to introduce Apple’s comparable licenses and previous

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valuation of their patents, which showed that Apple’s proposed royalty rates below
were grossly inflated. Third, the district court erred in admitting evidence of lost
profits for a “blackout” period for the ’647 patent, in conflict with Grain
Processing Corp. v. American Maize Prods. Co., 185 F.3d 1341, 1348 (Fed. Cir.
1999).
STANDARDS OF REVIEW
The district court’s ruling on Samsung’s motion for JMOL is reviewed de
novo, and should be reversed “if the jury’s factual findings are not supported by
substantial evidence or if the legal conclusions implied from the jury’s verdict
cannot in law be supported by those findings.” Eaton Corp. v. Rockwell Int’l
Corp., 323 F.3d 1332, 1336 (Fed. Cir. 2003) (quoting Cybor Corp. v. FAS Techs.,
Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc)).
The district court’s grant of summary judgment is reviewed de novo, and
should be upheld only if, crediting all of the nonmovant’s evidence and drawing all
justifiable inferences in its favor, “there is no genuine dispute as to any material
fact and the movant is entitled to judgment as a matter of law.” Brilliant
Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1344 (Fed. Cir. 2013)
(citation omitted).

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Obviousness is a question of law reviewed de novo with the jury’s
underlying fact determinations reviewed for substantial evidence. Broadcom Corp.
v. Emulex Corp., 732 F.3d 1325, 1334 (Fed. Cir. 2013).
The jury’s determination of anticipation is reviewed for substantial evidence.
Virnetx, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1323 (Fed. Cir. 2014).
Whether a patent is invalid for indefiniteness is reviewed de novo. DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014).
The district court’s claim constructions relied only on intrinsic evidence (see
A201-264; A137-150), and are therefore reviewed de novo. See Teva Pharm.
U.S.A., Inc. v. Sandoz, Inc., ___ U.S. ___, 135 S. Ct. 831, 840-42 (2015).
The district court’s award of ongoing royalties is reviewed for abuse of
discretion. Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10, 35 (Fed. Cir.
2012). “A district court abuses its discretion when it makes a clear error of
judgment in weighing relevant factors or exercises its discretion based upon an
error of law or clearly erroneous factual findings.” Aqua Shield v. Inter Pool
Cover Team, 774 F.3d 766, 770 (Fed. Cir. 2014) (brackets and internal quotation
marks omitted). A district court’s assertion of jurisdiction is a legal matter, which
is reviewed de novo. See, e.g., Rick’s Mushroom Serv., Inc. v. United States, 521
F.3d 1338, 1342 (Fed. Cir. 2008).

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ARGUMENT
I.

THE DISTRICT COURT ERRED IN DENYING SAMSUNG’S
MOTION FOR JMOL AS TO APPLE’S ’647 PATENT
Infringement requires proof that each and every claim limitation is found in

the accused device. Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575
(Fed. Cir. 1995) (“[E]very limitation set forth in a claim must be found in an
accused product, exactly.”). Under this Court’s authoritative constructions of the
terms “analyzer server” and “linking actions” in claim 9, no reasonable jury could
find that the accused products infringe Apple’s ’647 patent. Samsung is thus
entitled to reversal of the $98,690,625 in damages awarded on that patent and entry
of judgment in its favor.
A.

Under This Court’s Claim Construction, No Reasonable Jury
Could Find That The Accused Products Include An “Analyzer
Server”

This Court’s Claim Construction in Motorola.

In Motorola, this Court

affirmed the district court’s construction of “analyzer server” as “a server routine
separate from a client that receives data having structures from the client.” 757
F.3d at 1304. Apple had argued in that case (as here) that “the analyzer server
need not be ‘separate from a client’” and instead “should be construed as ‘a
program routine(s) that receives data, uses patterns to detect structures in the data,
and links actions to the detected structures.’” Id. This Court expressly rejected
Apple’s proposed construction, finding that it “contradicts the claim language
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because it reads ‘analyzer server’ out of the claim.” Id. at 1305. Rather, “the plain
meaning of ‘server,’ when viewed from the perspective of a person of ordinary
skill in the art, entails a client-server relationship,” and “[c]onsistent with this
perspective, the specification discloses an analyzer server that is separate from the
application it serves.” Id. at 1304. In particular, the patent specification depicts
“program 165” as separate from “application 167”:

Id. Thus, the “specification describes the analyzer server and the application,
which it serves, as separate structures,” in which the application sends data to the
analyzer server to be “analyzed.” Id.
The Unrebutted Evidence At Trial. Apple accused two applications on the
Samsung devices of infringing claim 9: the Browser application (web browser)
and the Messenger application (text messaging).

Those applications perform

certain functions described in the patent (and well known in the art), such as
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detecting structures and allowing users to select actions to be performed on them.
But they do not use the software architecture of claim 9, as construed by this Court
in Motorola.
Instead, the uncontested evidence at trial showed that the Browser and
Messenger applications each contain their own routines within the application for
analyzing the data (i.e., performing the detecting and linking functions) and do not
rely on a separate server, as claimed by the ’647 patent. For Browser, this code is
referred to as Cachebuilder or, in later versions, ContentDetectors; for Messenger,
this code is referred to as Linkify.

A11591:14-18 (Hackborn); A13092:17-

13093:22 (Jeffay).
The accused code—Cachebuilder, ContentDetectors, and Linkify—all
originate in “shared libraries” in the Android operating system.

A10897:25-

10898:5 (Mowry). As Google’s engineer explained, the code is stored in a library
so that multiple applications have access to it and can copy it into the application
when the relevant functionality is needed. A11591:2-11592:10 (Hackborn). This
is more efficient than each application always maintaining such code, even when
not needed, which would create unnecessary overhead.

A11591:17-11592:2

(Hackborn). Unlike a server, a shared library never receives data from client
applications for analysis (e.g., “detecting” and “linking”).
(Jeffay).

A13095:1-13096:5

Rather, applications merely copy code from a library for later use.

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A11792:4-18 (Jeffay). Thus, Android’s shared libraries are a programming tool
that has no bearing on whether a client-server architecture exists.
When an application such as Browser or Messenger needs the code, it will
copy it from the library and it will run as part of the application. A13092:1713093:7 (Jeffay) (accused code is not separate from the clients because it
“becomes part of the application”). In fact, Dianne Hackborn, the Google engineer
who helped to design and implement Linkify, testified that “Linkify does not run
on its own. It runs as part of the application that’s using it.” A11591:14-18. Ms.
Hackborn explained specifically that Linkify “is not a server” because there is “no
sharing it does of data between applications” and “it would be a waste to have the
overhead of putting it as a separate server.” A11591:19-11592:2.
Based on this evidence, no reasonable jury could conclude that
Cachebuilder, ContentDetectors, and Linkify function as server routines that are
“separate from” the Browser and Messenger applications, as required by the
claim, for each is simply part of the client application itself. And Apple offered no
evidence showing that the code in question is separate from the accused
applications when the detecting and linking functions are performed, or that it ever
receives data from the accused client applications.
Apple’s Reliance On An Incorrect Claim Construction At Trial. Because the
district court did not provide the jury with the proper construction of “analyzer

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server” until after all of the ’647 witnesses had testified, Apple tried its entire case
based on the incorrect premise that “analyzer server” should be construed broadly
as “program routine(s) that receives data, uses patterns to detect structures in the
data, and links actions to the detected structures”—the very claim construction
rejected by this Court in Motorola, 757 F.3d at 1304. Accordingly, Apple sought
to prove that the “analyzer server” element was met simply because the functions
of “detecting” and “linking” were present—a position irreconcilable with this
Court’s claim construction of “analyzer server” requiring a separate server.
Apple’s expert Todd Mowry testified that Linkify could be an “analyzer server”
simply because “it’s software, and the software detects structures in the data and
links actions to the detected structures.” A12800:22-24; see also A10896:14-16
(“[T]he definition of analyzer server is … [i]t’s a piece of software that performs
these functions.”); A10853:11-10855:3; A41153.

On cross-examination, Dr.

Mowry insisted that any device that has the functions of detecting and linking is
necessarily an “analyzer server.” A10920:10-19.
Apple’s Evidence On The Last Day Of Trial. In the additional testimony
allowed by the district court after issuance of this Court’s Motorola ruling (see
A13029:4-13045:5), Apple submitted no new factual testimony or additional
evidence, and Apple’s expert stated that his analysis had not changed, despite
having provided his opinion under the construction rejected by this Court

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(A13029:12-20 (Mowry)). Rather, Apple’s expert simply asserted that the fact that
Linkify and Cachebuilder/ContentDetectors are written as “shared libraries”
qualifies them as a “server” that operates “separate” from a client application.
A13030:1-13038:25 (Mowry).
Apple, however, did not provide any evidence of a library operating as a
server separate from a set of client applications that can access it. Nor could it, for
a shared library and a server are distinct concepts in computer science.

As

Samsung’s expert Dr. Jeffay explained, “libraries are bits of code that exist so that
all programmers can use them. … [T]he idea is so that you don’t have to reinvent
the wheel every time. You go to the library, you take code out of the library, you
integrate it in your application, and at that point the library code is no different
than any other code in the application.” A11792:4-18; see also A11794:8-16;
A13092:17-13093:1; A13099:4-23.

Simply put, library code is “in the

application” and is “just like every other piece of code [that] is in there.”
A11792:19-11793:2. “When an application, like Messenger, uses Linkify, it gets
[its] own copy of Linkify. … It’s the same for both Content Detectors and Cache
Builder.” A13094:9-25. Thus, the shared libraries Apple accused never receive
data from a client application, as expressly required by the proper “analyzer
server” claim construction. Instead, each client application simply copies the code
it needs from the library, integrating that code into the application itself to later

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provide the needed functionality; nothing is sent to the library for analysis.
A11591:14-11592:2

(Hackborn);

A11791:23-11794:7;

A13091:19-13095:15;

A13096:6-13097:5. The claimed “analyzer server,” on the other hand, is separate
from client applications and must receive data from each client application in order
to separately analyze it.
Apple’s

infringement

allegations

themselves

recognize

that

Cachebuilder/ContentDetectors and Linkify are part of the applications, for they do
not accuse a single, separate set of routines of detecting and linking for both
Messenger and Browser, but rather accuse two different sets of routines (i.e.,
Cachebuilder/ContentDetectors for Browser and Linkify for Messenger), both of
which run as part of one application, but not the other. In fact, Apple’s expert Dr.
Mowry expressly acknowledged that the code he relies upon is “code in the
client”/“code from the client.”

A13033:8-11; A13033:19-21; A13034:16-19.

Because the code is part of the client applications, it is not “separate” from them,
as required by this Court’s construction. Indeed, the idea that there is a “clientserver relationship,” Motorola, 757 F.3d at 1304, makes no sense where the code
in question is all part of the same application.
The District Court’s JMOL Decision. In its decision denying JMOL of noninfringement of the ’647 patent, the district court relied solely upon Apple’s
evidence from the last day of trial. A44-47. With respect to the “analyzer server”

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limitation, the district court held that the jury could have credited Dr. Mowry’s
assertion that the shared libraries “receive data from the Messenger and Browser
applications and detect structures in that data.” A47. But the district court cited
only conclusory statements by Dr. Mowry to support this position (A46-47), which
is not surprising considering such shared libraries do not work this way. Apple
was required to offer more than an expert’s conclusory statement—a statement that
conflicts with basic principles of computer science—to support infringement. 2
Indeed, the cited testimony from Dr. Mowry does not say that “shared
libraries receive data,” but rather that “the routines” receive data. A13032:1-21;
see also A13034:11-13035:11. Apple should not be permitted to treat the accused
code as a shared library for purposes of satisfying the separate-server requirement,
while treating the accused code as code in the application itself for purposes of
satisfying the receiving-data requirement. Such inconsistent characterizations of
“analyzer server” conflict with this Court’s construction.
Similarly, the district court’s suggestion that the jury could reasonably have
found that shared libraries are separate from the applications that use them (A47) is
2

See, e.g., Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1046
(Fed. Cir. 2000) (“[I]t is well settled that an expert’s unsupported conclusion on the
ultimate issue of infringement is insufficient to raise a genuine issue of material
fact.”); see also Phillips Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d
866, 876 (Fed. Cir. 1998); Mformation Techs., Inc. v. Research in Motion Ltd.,
2012 WL 3222237, at *2 (N.D. Cal. Aug. 8, 2012), aff’d, 764 F.3d 1392 (Fed. Cir.
2014).
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irrelevant because that separation exists only before the code is copied into the
application, and thus before the code supposedly becomes the “analyzer server”
that receives data from the client and performs the relevant functions of detecting
and linking. Simply put, the fact that the accused code came from a shared library
does not change the undisputed fact that it is part of the application when it
performs the relevant functions of an “analyzer server."
The accused code is therefore no more “separate” and no more a “server”
than is any other program routine. The district court did not cite any testimony for
the proposition that, separate or not, the code from a shared library is a “server.”
As the unrebutted evidence from Google’s engineer made clear, using shared
libraries (a programming tool) is fundamentally different from using a separate
server (a form of software architecture). See supra at 18-19. And by treating such
an ordinary program routine as a server separate from a client, the district court
disregarded this Court’s holding in Motorola, which expressly rejected defining
“analyzer server” simply as a program routine that receives data. See Motorola,
757 F.3d at 1304-05. Accordingly, the district court’s analysis would “read[]
‘analyzer server’ out of the claim,” precisely the improper result that this Court
rejected in Motorola. Id. at 1305.
Finally, the district court also erred in relying (A47) on Dr. Mowry’s
testimony, on the last day of trial, that the code he previously identified as

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performing “linking” was actually so-called “glue code” that “connects together
different modules or different pieces of software” (A13033:22-13034:10), and thus
does not violate the requirement that the code be “separate from a
client.” A13033:8-11; A13033:19-21; A13034:16-19; A13060:9-13. Dr. Mowry’s
belated characterization of the code cannot change the fact that it is not separate
from the application as required by the claim. Whether called “glue code” or not,
Dr. Mowry admitted that the “linking” code for the analyzer server was part of the
client itself (A13033:8-11; A13033:19-21; A13034:16-19) (stating that this is
“code in the client” / “code from the client”), and it therefore cannot function as a
separate server.
Because the record contains no substantial evidence of a separate “analyzer
server” as required by this Court’s construction in Motorola, Samsung is entitled to
JMOL on the ’647 patent.
B.

Under This Court’s Claim Construction, No Reasonable Jury
Could Find That The Accused Products “Link[] Actions” With A
“Specified Connection”

The district court also erred by not granting JMOL of non-infringement of
the ’647 patent based on the phrase “linking actions to the detected structures.” As
with the term “analyzer server,” Apple relied largely upon a claim construction that
this Court rejected in Motorola, and failed to produce any evidence on the last day
of trial to demonstrate that the correct claim construction was satisfied.

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This Court’s Claim Construction. In Motorola, the district court construed
the claim phrase “linking actions to the detected structures” to mean “creating a
specified connection between each detected structure and at least one computer
subroutine that causes the CPU to perform a sequence of operations on that
detected structure.” Motorola, 757 F.3d at 1304 (emphasis added). This Court
affirmed that construction, expressly rejecting Apple’s contention that “linking”
means merely “associating detected structures to computer subroutines that cause
the CPU to perform a sequence of operations on the particular structure to which
they are associated.” Id. at 1306 (emphasis added). As this Court explained, the
“plain meaning of associating relates to a mere commonality, while linking infers a
joining.” Id. This Court further held that “linking is more than just associating,”
noting that “[t]he patent consistently differentiates between associating and linking
and implies that linking is a more specific connection than merely associating.”
Id. (emphasis added).
The Unrebutted Evidence At Trial. The record here contains no evidence of
any specified connection between detected structures and actions. In the accused
applications, Android creates a pop-up menu that is displayed when the user selects
a detected structure via a touchscreen.
A10869:21-10870:6 (Mowry).

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A41155, A41156, A41157. If a user selects an option from the pop-up menu,
Android creates what is known as an “Intent.” A10857:16-A10859:10 (Mowry).
According to Apple, Intents are part of the “specified connection” between the
structure and the action. A13039:25-13040:23; A13041:5-16 (Mowry).
Unrebutted evidence, however, established that Intents do not create a
specified connection but, at most, an association, and in fact, Intents were
purposefully designed to avoid creating any specified connection. Google engineer
Ms. Hackborn, the creator of the Intent system, testified that Android was intended
to “have an open platform, and we wanted to allow third party applications to work
the same as built-in applications on Android, so Intents allowed us to work with
both third party and built-in applications the same way.” A11586:20-11587:6.
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Intents do this by initiating a process that prompts Android to search for whatever
applications (third-party or system-provided) are available to perform that action—
thus allowing programmers to avoid specifying in advance that a particular system
application will handle the task. A11586:7-11587:6; A11588:11-23 (Hackborn);
A11802:2-23 (Jeffay). Moreover, Android provided this flexibility so that users
can choose the application to perform the action if multiple applications are
available.
Thus, in the accused applications, instead of specifying the application that
will act on a structure after a user’s pop-up menu selection, the accused application
creates an Intent with a generic request (e.g., “dial”) that causes the system to
identify one or more applications that can perform the request, and if multiple such
applications exist, provide that choice to the user. As Ms. Hackborn explained,
once the Intent is created, it is “give[n] … to Android and then Android will find
an application that will actually do [what is requested].” A11586:7-13. Simply
put, there is no “specified connection” because the connection can be made to any
application that the system identifies and the user chooses, rather than to a specific
application. Apple offered no evidence rebutting these accounts of the operation of
Intents.
Apple’s Reliance On An Incorrect Claim Construction At Trial. Prior to the
last day of trial, Apple pressed its case that Intents were “links” based on the

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erroneous premise that mere “association” was enough for infringement—the very
premise this Court expressly rejected in Motorola. For example, Apple’s expert
Dr. Mowry presented the ’647 patent to the jury as “a new invention where if you
had a system that could automatically find these things, like phone numbers, e-mail
addresses and so on, and also automatically associate different choices and things
you could do with them, which they call actions.”

A10831:16-20 (emphasis

added). He also concluded that his analysis meant that the software “associates”
the recognized text with the appropriate choices. A10865:16-19. Nowhere did
Apple’s expert testify that there is a “specified connection” between a detected
structure and the code for performing a selected action.
Apple’s Evidence On The Last Day Of Trial. After this Court issued its
Motorola opinion, in the extra testimony allowed by the district court on the final
trial day, Apple again offered no new factual evidence, but merely had its expert
Dr. Mowry testify that, regardless of what he had said earlier about “associating,”
there was in fact a “specified connection.”

He pointed to a method called

setIntent() that, when a structure is detected, “necessarily” calls another method
called startActivity(), which will eventually determine the application to handle the
action after the user has made a selection. A13040:6-23. But that is the same
Intents system and startActivity() method that Dr. Mowry earlier stated merely
“associated” an action with a structure, given that it was designed to allow a user to

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select applications to handle tasks without interfering with hard, “specified” code
paths to an application.
The District Court’s JMOL Decision.

In denying JMOL of non-

infringement of the ’647 patent based on the “linking actions” term, the district
court again relied solely on Apple’s post-Motorola testimony on the last day of
trial.

A44-46.

The district court held that the jury might have credited Dr.

Mowry’s testimony that the creation of “an intent object for a particular choice in
the pop-up menu” forms the “specified connection” because it “necessarily calls
the startActivity() method and passes an Intent object.” A45. But whether an
action routine is “necessarily” called is irrelevant to the “linking actions” phrase as
construed by this Court: the linked action must be part of a “specified connection.”
As this Court held, “linking infers a joining.” Motorola, 757 F.3d at 1306.
Unrebutted evidence at trial showed that calling startActivity() is not a
“joining,” even if it “necessarily” occurs, and thus does not form a “specified
connection” between a structure and the routines that will operate on them. As Dr.
Jeffay explained:
The user doesn’t select Start Activity. The user selects [for
example] dial, and at the time that the structures are detected and
linked, there is no specified connection between that structure and the
code that’s ultimately going to dial. … It’s to allow users to specify
their own, for example, their favorite e-mail client so that when you
detect an e-mail address, it’s not bound to any particular e-mail client
because it doesn’t yet know which e-mail client the user wants to use.

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And this Intent mechanism figures this out on the fly. So at the
time something is detected, what’s linked is Start Activity, and Start
Activity is ultimately not the action that the user wants to perform.
A13100:16-13101:4.

Apple did not produce any evidence to dispute that

startActivity() simply starts the process of choosing an application, and that the
Intent mechanism does not have a connection to any particular application or set of
applications because it was designed to avoid such specificity.
To the contrary, Apple’s own admissions support the conclusion that the
district court erred in finding a “specified connection” based on calling
startActivity(). Dr. Mowry conceded that Intents express “what you want to have
happen when you launch another program” (A10858:3-7), and that startActivity()
is just “the launcher that knows how to launch another program” (A10858:13-20).
Thus, because the undisputed evidence shows that startActivity() is simply
the code that begins the process of searching for an unknown application, there is
no “specified connection.” Indeed, any time that a user chooses an action on a
smartphone, some computer code will be activated. If that suffices to constitute a
specified connection, then the term “specified connection” as construed by this
Court in Motorola would be rendered meaningless.
The error in the district court’s analysis is further demonstrated by the fact
that no connection exists at the time the user selects an action. The plain language
of claim 9 demonstrates that the “specified connection” must be in place before

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selection of an action by the user because it requires “a user interface enabling the
selection of a detected structure and a linked action.” A597. This makes sense
because a connection cannot be “specified” if it does not exist when the action is
chosen. The undisputed evidence shows, however, that Android uses Intents to
find an application after the user’s selection of an action. A11802:3-11804:11;
A11826:2-24 (Jeffay). Indeed, the Intent does not even exist until after the user
selects the structure and the action the user wishes to perform.

A12806:13-

12807:16; A13033:1-21; A13034:12-19 (Mowry). In describing the subroutines in
the Android code that he accused of being the linked actions to detected structures
(A10857:9-10867:23), Apple’s own expert Dr. Mowry conceded that Android
“builds” Intents only after the user selects an option, without any such connection
existing beforehand (A10857:9-10864:23; A12806:13-12807:16; A13033:113034:23).
The district court erred in disregarding the important timing sequence the
claim requires for the supposed connection. The court held that, because the
analyzer server is tasked with “creating” links, those links need not always exist:
“under the Motorola construction, the analyzer server is for ‘creating a specified
connection,’ such that the claimed action need not always be ‘linked’ to a structure
prior to detection of that structure.” A45. But the point of the claim requirement is
not that the link must always exist or exist “prior to detection” of a structure, but

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that it must exist before the user selects the action. Otherwise, there is no “linked
action” or “specified connection,” and indeed, no such connection was
demonstrated here.
Because the record contains no substantial evidence of a “specified
connection” as required by this Court’s claim construction in Motorola, Samsung
is entitled to JMOL of non-infringement on the ’647 patent.
II.

THE DISTRICT COURT ERRED IN DENYING SAMSUNG’S
MOTION FOR JMOL AS TO APPLE’S ’721, ’172, ’959 AND ’414
PATENTS
A.

Samsung Is Entitled To JMOL As To The ’721 Patent Because
Claim 8 Is Invalid As Obvious

The district court erred in failing to grant JMOL that claim 8 of the ’721
patent is invalid as obvious. “[T]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield predictable
results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416-17 (2007). Claim 8 is a
classic example of an obvious combination under KSR.
Claim 8 (dependent upon claim 7) covers “[a] portable electronic device”
with module instructions “to unlock the hand-held electronic device if the unlock
image is moved from the first predefined location on the touch screen to a
predefined unlock region on the touch-sensitive display.”

A685.

Samsung

presented two pieces of prior art, the Neonode N1 Quickstart Guide (A20713-740)
and a video and paper by Plaisant that were presented at the ACM CHI conference

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in 1992 (A20741, A20742-43). A11973:23-11984:1 (Greenberg). Together, the
prior art disclosed all of the limitations in claim 8 of the ’721 patent.
The Neonode guide disclosed unlocking a portable, touch-screen phone with
a left-to-right sweep gesture.

A11976:8-21 (Greenberg); A20741.

In fact,

Neonode even has “Right sweep to unlock” appear on the screen of the device.

A20725. Thus, the only element of claim 8 missing from Neonode is the moving
image accompanying the sweep. A11976:22-11977:2 (Greenberg).
The Plaisant reference plainly disclosed this sliding image that could be
moved from one predefined location to another to change the state of the device.
A11978:15-11979:20 (Greenberg).

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A20741. At trial, Apple did not show that claim 8 combines the elements of
Neonode and Plaisant in any unexpected or unpredictable way.

A12875:2-

12877:16 (Cockburn). And Apple did not identify any element missing from both
Neonode

and

Plaisant.

Instead,

Apple’s

sole

argument

against

the

Neonode/Plaisant combination was that Plaisant “teaches away” from using the
sliding mechanism. A12874:21-12877:16 (Cockburn).
As a matter of law, there was no “teaching away” here. “A reference does
not teach away if it does not criticize, discredit, or otherwise discourage
investigation into the invention claimed.” Galderma Labs., LP v. Tolmar, Inc., 737
F.3d 731, 739 (Fed. Cir. 2013) (internal quotation marks and alterations omitted).
The record is clear that Plaisant did not “discourage,” and in fact encouraged, the
use of sliders. Specifically, Plaisant taught that an “advantage of the sliding
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movement is that it is less likely to be done inadvertently therefore making the
toggle very secure.” A20743 (emphasis added); A11980:12-11981:9 (Greenberg).
Plaisant does state that “[t]he toggles that are pushed seemed to be preferred over
the toggles that slide,” but it made clear “[e]ven if sliders were not preferred, the
fact that users used them correctly is encouraging.” A20743 (emphasis added).
The district court erred in holding that Plaisant’s ambivalence towards
sliders created a “question of fact for the jury.” A55-56. This Court has repeatedly
held that such ambivalence does not constitute teaching away as a matter of law.
For instance, Allergan, Inc. v. Apotex Inc., 754 F.3d 952 (Fed. Cir. 2014), held that
“[t]he district court … err[ed] by taking an overly cramped view of what the prior
art teaches” because the prior art’s “mere disclosure of alternative preferences does
not teach a person of ordinary skill away.” Id. at 963-64.3 Indeed, the case for
teaching away here is even weaker than in Allergan because, despite some
ambivalence, Plaisant pointed out the important “advantage” of sliders directly
relevant to the combination at issue. A20743 (emphasis added). 4 In short, there is

3

See also, e.g., Galderma Labs., 737 F.3d at 739; In re Kubin, 561 F.3d
1351, 1357 (Fed. Cir. 2009).
4

The district court relied upon Cheese Systems Inc. v. Tetra Pak Cheese &
Powder Systems Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013), but there “[n]othing
in” the prior art noted that the improvement stated in the patent at issue should be
employed. Id. at 1352.
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no plausible reading of Plaisant—which highlights the benefits of sliders—that
renders the use of sliders nonobvious.
Finally, the district court erred in holding that the jury could have found
secondary indicia of non-obviousness. Where, as here, “the inventions represented
no more than the predictable use of prior art elements according to their established
functions,” weak secondary considerations are inadequate to establish nonobviousness. W. Union Co. v. Moneygram Payment Sys., Inc., 626 F.3d 1361,
1373 (Fed. Cir. 2010) (internal quotation marks omitted). Indeed, the district court
relied solely on generic praise not linked to the actual subject matter of the claim
and a supposed “long-felt need” (A56-57), but “[w]here the differences between
the prior art and the claimed invention are as minimal as they are here, … it cannot
be said that any long-felt need was unsolved.” Geo. M. Martin Co. v. Alliance
Mach. Sys. Int’l LLC, 618 F.3d 1294, 1304 (Fed. Cir. 2010). Moreover, to rely on
secondary indicia, “the patentee must establish a nexus between the evidence of
commercial success and the patented invention.” Wyers v. Master Lock Co., 616
F.3d 1231, 1246 (Fed. Cir. 2010). Apple made no effort to establish a nexus
between commercial success and the subject matter of claim 8.
(Cockburn).

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Samsung Is Entitled To JMOL As To The ’172 Patent
1.

The District Court Erred In Its Construction Of The Phrase
“Keyboard And A Touchscreen Display”

The district court erred in granting summary judgment of infringement of
claim 18 of Apple’s ’172 patent, directed to text correction, because the court
erroneously construed the preamble limitation “a keyboard and a touchscreen
display” to encompass both physical and virtual keyboards. A161-164. The
proper construction requires a physical keyboard in addition to a touchscreen.
Claim 18 requires two elements: a “keyboard and a touch screen display.”
A707-08 (emphasis added). “Where a claim lists elements separately, the clear
implication of the claim language is that those elements are distinct component[s]
of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal citations omitted); see also Gaus v.
Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004) (similar). Thus, the plain
language of claim 18 excludes keyboards that are part of the touchscreen display
(i.e., virtual keyboards), rather than separate from it (i.e., physical keyboards). In
concluding that a “keyboard” could be touchscreen or physical, the district court
erroneously isolated the word “keyboard” out of context from the actual claim
language. A162-63. Moreover, the ’172 patent’s specification confirms that a
“physical keyboard,” unlike a virtual keyboard, “is not part of the touch screen
display.” A705. Thus, summary judgment of infringement was improper, and
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because the accused devices have no physical keyboard, judgment of noninfringement should be entered for Samsung.
2.

Claim 18 Is Invalid As Obvious

The district court also erred in denying JMOL that claim 18 is invalid as
obvious over the combination of U.S. Patent No. 7,880,730 (“Robinson”)
(A20885-929) and International Publication No. WO 2005/008899 (“Xrgomics”)
(A21000-058). Together, these references disclose every limitation of claim 18.
Claim 18 describes a form of text correction in which a “current character
string” is displayed in a “first area” and a “second area” of a touchscreen display.
A707-08.

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first area
second
area

A694. Under claim 18, the user has three options: (1) the user can replace the
current character string with a suggested replacement string by selecting a
delimiter (such as the spacebar); (2) the user can replace the current character
string by selecting a replacement character string in the second area; or (3) the user
can keep the current character string by selecting it in the second area. A707-08;
A12028:15-12031:14 (Wigdor).

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Robinson (“Keyboard system with automatic correction”) discloses virtually
every aspect of claim 18. A20885-929. Robinson, like the ’172 patent, discloses a
user interface for text entry.

first area

A20889. Robinson also discloses a separate area of a touchscreen display with
both a current character string and suggested replacement character strings
displayed in the separate area:

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second
area

A20890; A12027:22-12028:14 (Wigdor).

Furthermore, Robinson discloses all

three of the user options recited by claim 18. A12028:15-12031:14 (Wigdor). As
a matter of law, and applying a modicum of common sense as allowed by KSR,
550 U.S. at 421, the automatic text correction of claim 18 was obvious in 2007.
This was confirmed by Samsung’s expert at trial. A12032:5-6 (Wigdor).
The only thing Robinson arguably does not disclose is the current character
string in the first area.

A12031:15-12032:3 (Wigdor).

But it would be an

insignificant leap for a person of ordinary skill in the art to contemplate Robinson
with the current character string displayed in the first area:

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rwzt

Robinson Fig. 1B, modified by Samsung to display “rwzt” in the text
Indeed, displaying what a user is typing (i.e., the current character string) in the
text entry area was a well-known behavior in computers since the 1970s, and
numerous examples of that behavior existed. A12025:1-9 (Wigdor). One such
example is Xrgomics, which discloses another text correction system in which the
touchscreen display includes a first and second area.

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A21051; A12025:25-12026:19 (Wigdor).

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The first area includes the current

character string (here, “deva”) and the second area includes suggestions that a user
can select to replace the current character string, as well as the current character
string itself. A12025:25-12026:19 (Wigdor). Xrgomics thus discloses a current
character string in the first area, the only element missing from Robinson’s figures.
A12026:11-19; A12031:15-12032:6 (Wigdor).
In its decision on Samsung’s motion for JMOL (A39-91), the district court
erroneously considered each of Robinson and Xrgomics in isolation (A66-69).
The district court should have considered the prior art together because Samsung’s
expert testified that a person of ordinary skill in the art would have been motivated
to combine Robinson and Xrgomics (see A12027:1-21; A12031:15-12032:6
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(Wigdor)), and there was no evidence to the contrary. The district court also relied
on the testimony of Apple’s expert that claim 18 placed the character string in a
different location than did the prior art. A67 (citing A12915-A12916 (Cockburn)).
Looked at in combination, however, the prior art showed that text strings could be
located anywhere on the screen. See A12031:21-12032:6. Moreover, even if it
were not disclosed by the prior art, this minor difference in the location of a
character string is insufficient to defeat obviousness because it does not represent
any technical advance over the prior art. See, e.g., PlaSmart, Inc. v. Kappos, 482
F. App’x 568, 573-74 (Fed. Cir. 2012). Accordingly, JMOL of invalidity for
obviousness should have been granted. 5
C.

Samsung Is Entitled To JMOL As To The ’959 Patent Because
Claim 25 Is Invalid As Indefinite And Anticipated

Although the jury found Apple’s ’959 patent not infringed by Samsung’s
products, the district court erred in not granting JMOL that claim 25 was invalid as
indefinite or anticipated.
1.

The Term “Heuristic” Renders Claim 25 Invalid As
Indefinite Under Nautilus

Apple’s ’959 patent purports to be an invention for searching for information
on a local device as well as on the Internet—so-called unified search. The claim
5

For the same reasons discussed with respect to the ’721 patent (see supra
at 37), secondary indicia of non-obviousness are likewise inapplicable to the ’172
patent.
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relies upon “heuristics” to conduct such searches for information without any
specification of what those “heuristics” are. The district court labored to define the
term, and settled on “rule of thumb that does not consist solely of constraint
satisfaction parameters,” and Apple’s expert at trial said “rule[s] of thumb” were
simply “good ideas.” Such imprecise concepts are indefinite under 35 U.S.C. §
112, ¶ 2.6
The claim, when read in light of the specification and the prosecution
history, “fail[s] to inform, with reasonable certainty, those skilled in the art about
the scope of the invention.” Nautilus, 134 S. Ct. at 2124. The district court failed
to address Nautilus and simply repeated its reasoning from its summary judgment
order, which used the now-disapproved “insolubly ambiguous” indefiniteness
standard. A73-74. Because the court’s finding of definiteness was based solely on
intrinsic evidence, its decision is reviewed de novo. Interval Licensing LLC v.
AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014).
For claim 25, the intrinsic record provides no objective boundaries. “The
claims, when read in light of the specification and the prosecution history, must
provide objective boundaries for those of skill in the art.” Id. at 1371. At trial,
Apple’s own expert described “heuristics” as simply “good idea[s]”—an inherently

6

The ’959 patent was filed in 1999 and therefore the pre-AIA version of 35
U.S.C. § 112 applies.
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subjective standard. A10941:10-20 (Snoeren) (emphasis added). Moreover, the
two inventors of the ’959 patent contradicted one another on whether the
exemplary search techniques mentioned in their own patent specification were
“heuristics” or not.

A40503:2-5, A40503:11-13, A40504:4-9 (Mortensen);

A40509:25-409510:3, A40512:4-8, A40512:10-16 (Arrouye).

The first named

inventor of the ’959 patent went so far to answer “Who knows” when pressed on
whether one example in the ’959 patent specification was a “heuristic.” A40515:922 (Arrouye). Even taking into account the district court’s definition, another
person of ordinary skill could not determine what constitutes a “rule of thumb”
other than saying “I know it when I see it.” A40427:15-22, A40423:21-40424:18,
A40431:8-A40432:17 (Oren).

Thus, the term “heuristic” renders claim 25

indefinite.
2.

Claim 25 Is Invalid As Anticipated By WAIS Prior Art

To the extent the claim is definite, claim 25 is anticipated by the WAIS prior
art. Apple did not invent searching the Internet and local devices for information,
as it asserts. WAIS, an acronym for the “Wide Area Information Server,” was an
open-source software system developed in the 1990s for being able to search
anywhere data was located—whether the data was stored “locally or on the
Internet.”

A20401.

Brewster Kahle, the “father” of WAIS, testified at trial

concerning WAIS’s ability to search locally and on the internet using heuristics—

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the heart of the alleged novelty of claim 25. A11860:5-11, A11862:1-8; A20001 at
2.0.65\x\qcommands.c, 2.0.65\docs\SF\fwsf.ps; A20533-34; A20584; A20689.
The uncontroverted evidence admitted at trial shows that WAIS searched local and
Internet sources with a single search using a plurality of “heuristics” long before
the priority date of the ’959 patent. A20584; see also A11854:4-16, A11856:1622, A11861:21-25 (Kahle); A11882:7-9 (Pfeifer); A20001; A20401; A20537-564;
A20568-71; A20690-91 (contemporaneous documents expressly describing WAIS
as using “heuristics” and touting its ability to search anywhere information is
located, including both on the user’s local hard drive or the Internet).
Samsung’s expert Martin Rinard explained at trial how the WAIS prior art
met every limitation of claim 25. That art provided software on a “computer
readable medium for locating information from a plurality of locations containing
program instructions” because it (A20001) includes instructions that locate
information locally and on the Internet. A11919:14-21, A11920:9-21, A11922:616, A11934:5-21.

And it satisfied all the remaining elements of claim 25,

including “provided said information identifier to a plurality of heuristics to locate
information in the plurality of locations which include the Internet and local
storage media.” A11923:8-11926:14; A12928:20-A12929:19 (explaining source
code and documentation); A11933:14-11936:20 (demonstrating capabilities of

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WAIS compiled software). Accordingly, this Court should find on de novo review
that WAIS anticipated claim 25.
D.

Samsung Is Entitled To JMOL As To The ’414 Patent Because
Claim 20 Is Invalid As Anticipated

Although the jury found claim 20 of the ’414 patent not to be infringed, the
district court erred in not granting JMOL of invalidity. The ’414 patent purports to
be directed to synchronization between a mobile device and desktop computer.
Samsung presented clear and convincing, unrebutted evidence that Windows
Mobile 5 (“WM5”) anticipates claim 20.
Samsung’s

evidence—which

included

WM5

source

code

and

documentation, fact testimony from a WM5 developer, and expert testimony—
proved anticipation. Samsung’s expert, Dr. Chase, pointed the jury to source code
for the IMAP Mail Component and explained that the component was configured
to synchronize structured data between a local database and a database residing on
an IMAP server. A12203:8-16; A12205:10-13. Dr. Chase further explained that
the IMAP Mail component provided a synchronization processing thread
(A12263:10-13), and demonstrated using WM5 source code that the IMAP Mail
component was configured to synchronize the email data class, while the Contacts
Provider and Calendar Provider components were configured to synchronize
structured data for email, contacts, and calendar data classes, respectively, between

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the local database and a Microsoft Exchange server.

A12202:25-12203:16;

A20693; A20997 at 40:22-41:11 (Hall).
By contrast, Apple presented no evidence concerning the IMAP Mail
component. Apple’s expert, Dr. Snoeren, did not even mention the IMAP Mail
component, much less refute the source code and testimony presented by Dr.
Chase.

Additionally, Dr. Snoeren admitted that the Contacts Provider and

Calendar Provider components were configured to synchronize structured data for
their respective data classes, as required by claim 20. A12859:10-18.
Rather than offer evidence concerning the IMAP Mail component, Apple
advanced a legal argument based on claim construction. Dr. Snoeren told the jury
that the plain language of claim 20 required all three synchronization software
components each to provide a synchronization processing thread, not simply one
of three as the plain language of claim 20 requires. A12860:2-A12861:1.
Ruling on JMOL, the district court rejected Apple’s argument, finding it
“meritless because it contradicts the plain language of claim 20.”

A79.

Nevertheless, the court pointed to a single line of Apple’s expert testimony to
conclude that a reasonable jury could have determined no single WM5 component
provided a synchronization processing thread. A78-79 (quoting A12860:13-17).
But that testimony was irrelevant to Samsung’s anticipation read. It concerned Dr.
Snoeren’s opinions that the WM5 Provider components did not provide threads (as

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required by claim 11) and that a fourth component called the “Sync Client” was
not class-specific (as required by claim 20). These opinions had nothing to do with
Samsung’s evidence that the IMAP Mail component was both class-specific and
provided a thread, and that the Contacts and Calendar Provider components were
class-specific. A reasonable jury would have deemed irrelevant the single line of
Dr. Snoeren’s testimony the district court relied on, leaving no basis on which to
deny JMOL of invalidity.
III.

THE DISTRICT COURT ERRED IN GRANTING APPLE ONGOING
ROYALTIES
A.

The District Court Lacked Jurisdiction To Order Ongoing
Royalties

“The filing of a notice of appeal is an event of jurisdictional significance—it
confers jurisdiction on the court of appeals and divests the district court of its
control over those aspects of the case involved in the appeal.” Griggs v. Provident
Consumer Discount Co., 459 U.S. 56, 58 (1982); see also Paige v. State of Cal.,
102 F.3d 1035, 1039 (9th Cir. 1996) (appellate court takes jurisdiction as to
“matters inextricably bound up with the injunctive order from which the appeal is
taken”). Thus, on August 29, 2014, when Apple filed notice of its interlocutory
appeal of the district court’s order denying a permanent injunction (A41065),
jurisdiction passed to this Court regarding the matters inextricably involved in that
appeal. Nonetheless, Apple moved for the equitable remedy of ongoing royalties

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on September 3, 2014 (A41068-74), and the district court decided the ongoing
royalties issue on November 25, 2014. A3-38.
That was error because, as prospective equitable relief under § 283, any
grant of ongoing royalties is inextricably bound up with the appeal of the denial of
the permanent injunction.

Ongoing royalties are not damages but a form of

injunctive relief. See Paice LLC v. Toyota Motor Corp., 504 F.3d 1293, 1315-16
(Fed. Cir. 2007). Thus, Apple’s motion for an ongoing royalty amounted to asking
the district court for alternative relief under § 283 while appealing the denial of its
prior request for a permanent injunction. There is no precedent to support the
district court’s conclusion that, after jurisdiction over the denial of a permanent
injunction had passed to this Court, it nevertheless could consider a separately filed
motion for the further equitable relief of an ongoing royalty. While the district
court relied (A12-14) on case law holding that a district court may proceed with
the merits when an injunction is on appeal, those cases are inapposite because they
all dealt with a preliminary (not permanent) injunction and because none addressed
whether a second form of equitable relief could be considered while an injunction
was on appeal.
B.

Apple Waived Any Claim To Ongoing Royalties

The district court in any event abused its discretion in holding that Apple
had not waived ongoing royalties despite Apple’s failure to request that relief until

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after the trial and after the denial and appeal of its motion for permanent
injunction. Apple did not mention ongoing royalties in its Amended Complaint
(A3044-58); the Joint Amended Pretrial Statement (A40840-42); or at trial. Apple
likewise failed to mention an ongoing royalty in its Rule 50(a) motion for
judgment as a matter of law (A3089-3100), its Rule 50(b) and 59(e) motions after
the verdict (A3140-3193), or its motion for a permanent injunction (A3114-3139).
Apple’s failure to mention the relief of an ongoing royalty in the Joint
Amended Pretrial Statement (A40840-42) by itself gives rise to waiver as a matter
of law. The Ninth Circuit has held that the pretrial order “controls the course of
the action unless the court modifies it,” and “issues not preserved in the pretrial
order have been eliminated from the action.’” S. Cal. Retail Clerks Union v.
Bjorklund, 728 F.2d 1262, 1264 (9th Cir. 1984). In the Joint Amended Pretrial
Statement, Apple provided a lengthy and detailed list of specific relief, but did not
mention an ongoing royalty. A40840-42. That omission is dispositive. See, e.g.,
Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 206 (5th Cir. 1998) (“EPE’s
listing of injunctive relief, damages, and attorneys’ fees under the Lanham Act in
the Joint Pre-Trial Order does not act to preserve its claim for an accounting of
profits, and the issue therefore was waived.”); Ramos v. Davis & Geck, Inc., 968 F.
Supp. 765, 771 (D.P.R. 1997) (“The failure to state the damages that the plaintiff is
specifically seeking in the pretrial order waives that claim for relief.”), aff’d, 167

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F.3d 727 (1st Cir. 1999). The district court purports to rely on three awards of
ongoing royalties in similar circumstances (A7 n.1), but they are in fact
inapposite.7
The district court also held that ongoing royalties were “implicitly included”
in the pretrial order because Apple requested a “reasonable royalty” (A8 (quoting
A40841)), but that request was included only as part of a request for “damages”
(A40841 (emphasis added)). And ongoing royalties are not “damages.” Paice,
504 F.3d at 1316. Indeed, the fact that neither Apple nor Samsung ever mentioned
ongoing royalties until several months after trial belies the idea that the parties
believed ongoing royalties were at issue.
Finally, Apple’s last-minute request for an ongoing royalty created
significant prejudice to Samsung. If Samsung had known that Apple was seeking
an ongoing royalty, then Samsung could have advocated for a verdict form that
made clear whether the jury was awarding a lump sum or a royalty rate. Because
that was unclear in the verdict form, the district court assumed that the jury had

7

In the first case, the plaintiff expressly requested an ongoing royalty in the
pretrial order. A41087. In the second case, the pretrial order itself made clear that
the contentions could be supplemented and would not provide grounds for waiver.
A41124. And in the third case, the plaintiff’s one-paragraph contentions were
plainly not meant to be comprehensive, and there is nothing in the record to
indicate that the proposed pretrial order was actually approved by the judge.
A41142, A41150.
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awarded a per-unit reasonable royalty.

Page: 68

A24.

Filed: 03/06/2015

Thus, Apple gained an unfair

strategic advantage in waiting until after trial to request an ongoing royalty.
C.

The District Court Erred By Failing To Consider The HTC
License In Determining Ongoing Royalty Rates

Even if an ongoing royalty were proper here, this Court should vacate the
district court’s ruling because the court failed to consider Apple’s license to HTC
in setting a rate for ongoing royalties.
In deciding ongoing royalty rates, courts generally consider the GeorgiaPacific factors, and the district court followed that approach here. A26. The very
first factor concerns “[t]he royalties received by the patentee for the licensing of
the patent in suit, proving or tending to prove an established royalty.” GeorgiaPacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970);
accord LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 79 (Fed. Cir.
2012). Nonetheless, the court failed to consider Apple’s license to HTC (which
Samsung raised in its briefing on ongoing royalties (A3219)), presumably because
the court had previously excluded the license in its Daubert decision. A40705-10.
That approach is erroneous for two reasons. First, in deciding the Daubert
motion, the court considered the standard for admission of expert testimony and
the concern about potentially confusing the jury (A40709-10), but neither of these
considerations applies to the court’s determination of an ongoing royalty rate.
Second, even if the Daubert ruling were dispositive, for the reasons discussed infra
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Confidential Material Redacted

at 64-65, the district court’s analysis was erroneous. Consideration of the HTC
license would have shown that the ongoing royalties set by the district court

, A38) for the three patents on minor features are grossly
inflated. Based on the district court’s rates,
. A40881-41022;
A40266; A40276-80. This makes no sense, and this Court should vacate the award
of ongoing royalties for the district court to consider the HTC license in deciding
an appropriate royalty rate.
IV.

THE DISTRICT COURT’S ERRONEOUS CLAIM CONSTRUCTION
OF SAMSUNG’S ’239 PATENT WARRANTS A NEW TRIAL
A.

The District Court Incorrectly Construed The Term “Means For
Transmission Of Said Captured Video Over A Cellular
Frequency”

Samsung’s ’239 patent is directed to a mobile phone with an innovative
apparatus for capturing, compressing and transmitting videos. A710-21. Asserted
claim 15 is written in means-plus-function format pursuant to 35 U.S.C. § 112 ¶ 6.
A720. The district court’s denial of JMOL to Samsung on this patent was error
because the district court incorrectly construed the term “means for transmission of
said captured video over a cellular frequency” by requiring a host of software
structure not necessary to perform the stated function. A150.

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The district court construed this term as follows: “one or more modems
connected to one or more cellular telephones, and software performing a software
sequence of initializing one or more communications ports on said apparatus,
obtaining a cellular connection, obtaining said captured video, and transmitting
said captured video.” Id. Properly construed, the structure should be “one or more
modems connected to one or more cellular telephones or cellular radio
transmitters.”
1.

The District Court Erred
Limitations In The Structure

By

Including

Software

With no dispute as to the function at issue (“transmission of said captured
video over a cellular frequency” (A140)), the claim construction task was to
identify the structures necessary to perform this transmission function. Although
the structures must be “clearly link[ed] or associate[d]” to the recited function, B.
Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997), “a court
may not import … structural limitations from the written description that are
unnecessary to perform the claimed function.” Wenger Mfg., Inc. v. Coating
Mach. Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001).
The specification of the ’239 patent does not require any software for
transmission, and including such software as necessary structure was error.
Instead, the specification discloses hardware as the “means for transmission.” See
A718 at 9:25-45 (cellular and radio transmitters as structure for transmission over a
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Indeed, dependent claim 16 requires the means for

transmission to include two hardware components—“at least two interfaces” and
“a cellular telephone.” A720. The district court included a series of software steps
based on the “preferred embodiment” in the specification. A262. Those software
structures, however, do not correspond to the “means for transmission,” and even if
they did, incorporating them into the structure would be in direct conflict with this
Court’s holding that a district court may not restrict the structure to what “was
disclosed in the preferred embodiment, but was not necessary to perform the
recited function.”

Wenger Mfg., 239 F.3d at 1233.

Because the proper

construction does not require any explicit software, the district court’s construction
should be reversed.
Even assuming the structure requires any software, the district court’s
construction was not properly restricted to software necessary to perform the
claimed function. See, e.g., Micro Chem., Inc. v. Great Plains Chem. Co., 194
F.3d 1250, 1258 (Fed. Cir. 1999) (“the district court erred … by incorporating
structure beyond that necessary to perform the claimed functions”). The district
court’s construction included “a software sequence of initializing one or more
communications ports on said apparatus, obtaining a cellular connection, obtaining
said captured video,” A150, which is directed not only at “transmission” but also at
unclaimed steps of “initializing” and “obtaining.” But transmission—the function

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at issue—is only one aspect of communication. A717 at 8:23-30. It was error to
include all the other aspects of communication as the structural definition of
transmission.
2.

The District Court Erred By Failing To Include “Cellular
Radio Transmitters” As Part Of The Structure

Not only did the district court include unnecessary software steps, it
excluded the required hardware of “cellular radio transmitters” for performing the
transmission function. See Micro Chem., 194 F.3d at 1258-59.
The district court concluded that, because the words “cellular radio
transmitter” appear nowhere in the specification, the intrinsic evidence does not
support their inclusion. A142. But the specification discloses radio transmitters
and transmission over cellular frequencies, which necessarily include cellular
radio transmitters. A718 at 9:25-26, 9:40-42. And this Court has recognized that
such a corresponding structure may be implicit in the specification. See Atmel
Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999).8 It was
error for the district court to exclude hardware required for transmission in the
relevant structure for “means for transmission.”
8

The district court’s assertion that Samsung did not include cellular radio
transmitters in its construction for claim 1’s “means for transmitting” structure is
incorrect. A142. Samsung did include “radio frequency transmitters” in its
proposed construction of claim 1, but properly restricted the structure to cellular
radio transmitters for claim 15. A255-56. In any event, the district court should
have provided the correct construction for the trial.
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B.

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Samsung Is Entitled To A New Trial To Remedy The District
Court’s Erroneous And Prejudicial Claim Construction

A district court’s incorrect claim construction requires a new trial where a
party “shows that they were prejudiced by the error.” ArcelorMittal France v. AK
Steel Corp., 700 F.3d 1314, 1325 (Fed. Cir. 2012). The district court’s errors
clearly prejudiced Samsung because in order to prove infringement, it had to
identify a host of unnecessary software steps to meet the relevant claim limitation,
all of which Apple contested.

A12756-57; A12762-66 (Storer).

In addition,

because the district court improperly excluded the required hardware for
transmission in its definition of relevant structure, Samsung could not point to a
cellular radio transmitter in the iPhone to prove infringement of the “means for
transmission” claim limitation.
Moreover, there was substantial evidence that Samsung likely would have
prevailed under the correct claim construction. A20744-92; A20793-818.

In

particular, most of Apple’s non-infringement arguments involved portions of the
claim

construction

that

were

incorrect,

e.g.,

lack

of

port

and

connection. A12762:9-12764:19; A12756:15-12757:18. Therefore, the verdict
should be vacated and the case remanded.

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IF THE COURT ORDERS A NEW TRIAL ON APPLE’S DAMAGES,
IT SHOULD CORRECT THE DISTRICT COURT’S ERRONEOUS
EVIDENTIARY RULINGS
Although the damages awarded to Apple were grossly inflated and

disproportionate to the value of the three minor patents at issue here, in order to
streamline issues for appeal, Samsung is not challenging the amount of damages
awarded to Apple in the event its other challenges to the judgment are rejected.
But if this Court were to order any new trial on Apple’s claims, Samsung
conditionally appeals three evidentiary rulings that improperly prejudiced
Samsung’s damages defense at trial.
A.

Apple’s Conjoint Survey Evidence And Damages Calculations
Based On That Evidence Should Be Excluded

More than three-quarters of the total of $2.1 billion in damages that Apple
sought in this case depends upon expert analyses of conjoint surveys of
smartphone and tablet buyers that purported to measure the value of Apple’s
patented features. That evidence is inadmissible and should be excluded from any
new trial.
Over Samsung’s objection (A40720), the district court allowed (A40720-32)
Apple’s expert Dr. John Hauser to testify about conjoint surveys in which he
showed respondents videos illustrating Apple’s allegedly patented features, and
then asked them to make a series of choices among hypothetical products
containing different combinations of features.
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A40192 ¶ 45, A40207-09 ¶¶ 79-84. Dr. Hauser used the responses to calculate
dollar values for how much consumers were willing to pay for each patented
function (“willingness to pay”) and the percentage shift in consumer demand for
Samsung’s products that allegedly resulted from its use of Apple’s claimed
features in its devices (“willingness to buy”). A11120-28; A21059-108.
The district court also allowed (A40733, A40737), again over Samsung’s
objection (A40733), Apple’s damages expert Dr. Christopher Vellturo to testify
based on Dr. Hauser’s “willingness to buy” figures that Samsung’s infringement
cost Apple $559.6 million in “diminished demand” lost profits.

A11301-05.

Similarly, he was permitted to testify, based on Dr. Hauser’s “willingness to buy”
numbers, that Apple had suffered $1.12 billion in claimed reasonable-royalty
damages. A11319-23; A11330; A11371-76. The royalty rates resulting from
those calculations were sky-high: $40.10 per smartphone for five minor feature
patents (A21146) and

for just two patents on each Samsung tablet

(A21149).
Both Dr. Hauser’s and Dr. Vellturo’s testimony should have been excluded
as unreliable under Fed. R. Evid. 702.
First, Dr. Vellturo’s damages analysis is unreliable because it depends on
the erroneous assumption that the “willingness to buy” results of a conjoint survey
can be used to accurately calculate changes in market share. Samsung is aware of

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no case where a patent plaintiff calculated damages based on the “willingness to
buy” results of a conjoint survey. Indeed, the one court that considered a similar
methodology excluded it. Oracle Am., Inc. v. Google Inc., 2012 WL 850705, at
*10 (N.D. Cal. Mar. 13, 2012), rev’d on other grounds, 750 F.3d 1339 (Fed. Cir.
2014). As explained by the president of the firm on whose software Dr. Hauser
relied (A40193 at n.27), a conjoint survey “do[es] not predict market share”
because such a study cannot account for numerous variables that affect real-world
market share, such as “differences in awareness developed through advertising and
promotion.” A40246.
Second, Dr. Hauser’s survey design improperly excluded major product
features such as brand, battery life, operating system, and a device’s overall speed.
See, e.g., A11139-40 (Hauser); A12083 (Reibstein). The weight of the evidence
(including

) confirms both that major features

omitted from the conjoint survey were ones on which consumers base their
purchasing decisions (see e.g., A12369-70 (Erdem); A20836-84), and that
untestable factors like marketing and point-of-sale experience also play a crucial
role in sales. A11408; A11413-14; A11418-19 (Velturo); A11682-87 (Pendleton);
A12389-90 (Chevalier); A20933; A20819; A20821-26; A20834-35.
The unreliability of Dr. Hauser’s study is confirmed by the absurdity of its
results. The survey purports to show that consumers would be willing to pay up to

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$102 each, and more than $270 in total, for four minor features of a smartphone
whose total cost was merely $149. A11181 (Hauser). The “willingness to buy”
numbers are likewise facially implausible, predicting declines in sales of up to 26%
from the omission of a single patented feature (A21062), and of up to 61% if
several were omitted simultaneously (A21069).
B.

Evidence Of Apple’s Real-World Licenses And Valuations Of The
Patents-In-Suit Should Be Admitted

The district court also abused its discretion in excluding evidence of Apple’s
own past licenses and valuations of the patents-in-suit. In November 2012, Apple
licensed to HTC
. A408811022; A40266; A40268; A40276-80; A40288; A40302; A40305-07; A40310;
A40313-14. And in a patent infringement lawsuit against Motorola based on
Motorola’s use of the Android operating system, Apple took the position that a
reasonable royalty for the ’647 patent was $0.60 per unit—less than one twentieth
the $12.49 per unit Apple claimed in this case. A11098-103 (Hauser); A40805-07.
This evidence demonstrate that Apple’s claimed $40.10 per unit royalty rate
for just five patents was absurd. Yet the district court ruled that Samsung’s expert,
Dr. Judith Chevalier, could not rely on this evidence in her testimony. A40700717. The result was to leave the jury to decide damages without any real-world
reference point.
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In the event of any new trial, Dr. Chevalier should be permitted to rely on
the Apple-HTC license as a basis for her opinion because evidence of comparable
past licenses is “highly probative as to what constitutes a reasonable royalty for
those patent rights.” LaserDynamics, 694 F.3d at 79. The purported distinctions
on which the district court relied do not provide a ground for exclusion because
“[p]rior licenses … are almost never perfectly analogous to the infringement
action,” and thus “the fact that a license is not perfectly analogous generally goes
to the weight of the evidence, not its admissibility.” Ericsson, Inc. v. D-Link Sys,
Inc., 773 F.3d 1201, 1227-28 (Fed. Cir. 2014).
Apple’s previous royalty rate calculation for the ’647 patent similarly should
be admitted as probative evidence of that patent’s value. The main difference
between Samsung’s and Motorola’s circumstances—that Motorola involved the
’647 patent’s claim 1 (a broad, independent claim), while this case concerns claim
9 (a narrower claim that depends on claim 1)—confirms the relevance of Apple’s
past position: Apple’s assertion here that the dependent claim is worth $12.49 per
unit cannot be reconciled with its past assertion that the independent claim is
worth 60 cents per unit.
C.

Apple’s Evidence Of Lost Profits For An Incorrect “Blackout”
Period For The ’647 Patent Should Be Excluded

Apple’s damages expert Dr. Vellturo was erroneously allowed to submit a
report and then testify at trial that Apple should receive lost profits for a “blackout”
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period for the ’647 patent that contradicts this Court’s holding in Grain Processing
Corp. v. American Maize-Products Co., 185 F.3d 1341 (Fed. Cir. 1999). Samsung
moved to strike this evidence but the district court erroneously admitted it.
A136.1-A136.8; A11270-71; A11291-99.
Grain Processing requires an inquiry, for damages purposes, that asks “‘had
the Infringer not infringed, what would the Patent Holder-Licensee have made?’”
185 F.3d at 1350 (quoting Aro Mfg. Co. v. Convertible Top Replacement Co., 377
U.S. 476, 507 (1964)). To determine lost profits “requires a reconstruction of the
market” in order to “project economic results that did not occur.” Id. But “a fair
and accurate reconstruction of the ‘but for’ market must also take into account,
where relevant, alternative actions the infringer foreseeably would have undertaken
had he not infringed.” Id. at 1350-51.
Apple’s expert testified as to a “but for” world in which Samsung, knowing
that its products infringed, supposedly would have pulled its smartphones and
tablets off the market, designed around the patents, and reintroduced them—during
which time Samsung’s market share would have been reallocated to other
manufacturers, including Apple. See A11291-99. But this testimony was
improper as to the ’647 patent because, under Grain Processing, it is implausible
to suppose that Samsung would have released a product it knew infringed, and then
lost time in the marketplace replacing it with a non-infringing alternative. See 185

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F.3d at 1351 (“The competitor in the ‘but for’ marketplace is hardly likely to
surrender its complete market share when faced with a patent, if it can compete in
some other lawful manner.”). Because, for the ’647 patent, Apple provided notice
to Samsung a year before Samsung sold its accused product (see A11267), it is
implausible to suppose that Samsung would deliberately release an infringing
product and then suffer a blackout period when it took the infringing product off
the market to replace it with a non-infringing alternative. This Court’s precedent
forecloses such an implausible hypothetical world, and permitting that testimony
improperly allowed the jury to confer a windfall on Apple.
Accordingly, any lost-profits testimony by Dr. Vellturo on retrial should be
limited to Samsung’s rational action in the hypothetical world, which, after notice,
would be to develop a design-around before the release of infringing products.
Although Samsung is not requesting a retrial on damages, if there is to be any
retrial, the district court’s error in allowing Apple’s expert to testify about a
hypothetical blackout period for the ’647 patent (A136.1-136.8) should be
corrected.
CONCLUSION
The judgment should be reversed or vacated as to Apple’s patents, and the
judgment should be vacated and remanded for a new trial as to Samsung’s ’239
patent.

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Dated: March 4, 2015

Respectfully submitted,

Kevin P.B. Johnson
Victoria F. Maroulis
Brian C. Cannon
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
Telephone: (650) 801-5000
Facsimile: (650) 801-5100

By: /s/ Kathleen M. Sullivan
Kathleen M. Sullivan
William B. Adams
David M. Cooper
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
Telephone: (212) 849-7000
Facsimile: (212) 849-7100
kathleensullivan@quinnemanuel.com
John B. Quinn
Michael T. Zeller
Scott L. Watson
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
865 S. Figueroa St., 10th Floor
Los Angeles, CA 90017
Telephone: (213) 443-3000
Facsimile: (213) 443-3100

Attorneys for Defendants-Appellants

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ADDENDUM
Final Judgment
(A1-2)

Final Judgment of November 25, 2014

Order
(A3-38)

Order Granting In Part Apple’s Motion for
Ongoing Royalties [Under Seal]

Opinion (Willfulness)
(A39-91)

Order Granting In Part And Denying In Part
Samsung’s Motion for Judgment As A
Matter Of Law

Opinion (Infringement)
(A92-136)

Order Granting In Part And Denying In Part
Apple’s Motion For Judgment As A Matter
Of Law [8QGHU6HDO]

Opinion (Motion to Strike)
(A136.1-136.8)

Order Denying Samsung’s Motion to Strike
Portions of Dr. Vellturo’s Supplemental
Report [Under Seal]

Opinion (Claim Construction)
(A137-150)

Order Construing 239 Patent Claim 15

Opinion (Infringement)
(A151-200)

Order Granting In Part and Denying In Part
Apple’s Motion For Summary Judgment
And Denying Samsung’s Motion For Partial
Summary Judgment

Opinion (Claim Construction)
(A201-264)

Order Construing Disputed Claim Terms Of
U.S. Patents Nos. 5,579,239; 5,666,502;
5,946,647; 7,577,757; 7,756,087; 7,761,414;
8,014,760

647 Patent
(A583-598)

U.S. Patent No. 9,946,647

959 Patent
(A599-608)

U.S. Patent No. 6,847,959

414 Patent
(A609-657)

U.S. Patent No. 7,761,414

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721 Patent
(A658-685)

U.S. Patent No. 8,046,721

172 Patent
(A686-709)

U.S. Patent No. 8,074,172

239 Patent
(A710-721)

U.S. Patent No. 5,579,239

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Case5:12-cv-00630-LHK
Document2076
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1
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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

United States District Court
For the Northern District of California

10

SAN JOSE DIVISION

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)
)
Plaintiff and Counterdefendant,
)
)
v.
)
)
SAMSUNG ELECTRONICS CO., LTD., a
)
)
Korean corporation; SAMSUNG
ELECTRONICS AMERICA, INC., a New York )
corporation; and SAMSUNG
)
TELECOMMUNICATIONS AMERICA, LLC, )
a Delaware limited liability company,
)
)
Defendants and Counterclaimants. )
)
APPLE, INC., a California corporation,

Case No.: 12-CV-00630-LHK
JUDGMENT

Judgment is entered against Samsung Electronics Co., Ltd., Samsung Electronics America,

22

Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”) and in favor of

23

Apple, Inc. (“Apple”) in the amount of $119,625,000.00. Judgment is entered against Apple and in

24

favor of Samsung in the amount of $158,400.00.

25

For the reasons stated in the November 25, 2014 Order Granting Apple’s Motion for

26

Ongoing Royalties (ECF No. 2074), Samsung is ordered to pay ongoing royalties for any

27

continuing infringement at the per-unit rates set forth in that Order. Those royalties shall apply to

28

products adjudicated to infringe U.S. Patent Nos. 5,946,647; 8,046,721; and 8,074,172, and to
1
Case No.: 5:12-CV-00630-LHK
JUDGMENT

A1

Case5:12-cv-00630-LHK
Case: 15-1171
Document:
Document2076
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Page2 of 2

1

products “not more than colorably different therefrom.” The starting date for any ongoing royalties

2

shall be after the date of this Judgment.

3

The Clerk shall close the case file.

4

IT IS SO ORDERED.

5

Dated: November 25, 2014

_________________________________
LUCY H. KOH
United States District Judge

6
7
8
9

United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20
21
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25
26
27
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JUDGMENT

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Case: 15-1171

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2

3

4

5
6

7
88

UNITED STATES DISTRICT COURT

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DIVISI ON
SAN JOSE D1VlSL

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CALIFORNIA
NORTHERN DISTRICT
IA
DISTRICT OF CALIFORN

10

16
17

18
19

)
)
)
)

APPLE,
APPL E, INC., a California
Cali forn ia corporation,
corporat ion,

l

Plaintiff,
v.
v.

C!l.Se
Case No.: 12-CV-00630-LHK
12-CV-006JO-LHK

IN PART APPLE'S
ORDER GRANTING lN
MOTION FOR ONGOING ROY
ROV ALTTES
AL TIES

)

SAMSUNG ELECTRONICS
)
ELECrRONICS CO., LTD.,
LTD., a
Korean corporation; SAMSUNG
)
ELECTRON ICS AMERICA, INC., a New York)
ELECTRONICS
corporation; and SAMSUNG
)
TELECOMMVNJCA
TfONS AMERICA,
TELECOM MUNICATIONS
AMER ICA, LLC,
LLC. ))
a Delaware limited liability
)
liabi lity company,

[UNDER
IUNDER SEAL]

)
)

l

Defendants.
Derendants.

_________________________________________)

------------------------)

After aj
a jury
ury trial and resolution of post-trial motions, on September 3, 2014,
2014 , Apple, Inc.

20

("Apple")
(,'Apple") moved for ongoing royalties for any continuing infrin.
infringement
gement by Samsung
Sam sung Electronics
Electronics

21

Co.,
Co .. Ltd.,
Ltd" Samsung Electronics
Electron ics America, lnc.,
Inc., and Samsung
Samsllng Telecommunications America, LLC

22

(co llectively,
llectively. "Samsung").
" Samsung") . See ECFNo.
ECF No . 1959. The Court
Cou rt ordered the parties to brief the issues of

23

whether Apple is entitled to ongoing
ongo ing royalties at all,
a ll. and the proper amount of any such royalties.
royalti es.

24

ECF No. 1978.
1978. The Court finds Apple'
Apple'ss motion
mot ion suitable for
fo r decision without oral
oral argument
argumclll

25

Civill Local Rule 7-l(b),
7·I(b), and therefore VACATES the hearing set for December 18,
18,
pursuant to Civi

26

arguments, the Cout1
2014. Having considered the law, the record, and the parties' arguments.
Cou rt GRANTS

27

Apple's
rel ie fas
as discltssed
discussed be.Jow.
be low.
Apple' s motion, but modifies
mod ifi es the scope of Apple's requested relief

28
Case No.;
No.: 5:12-CV-00630-LHI<
5: 12-CY-00630-LHK
ORDER GRANTING IN PART
ROYALTI ES
I'ART APPLE'S MOTION FOR ONGOING ROYALTIES

A3

Case: 15-1171

Document: 40

Page: 88

ase5:12-cv-00630-LHK Document2075 *SEALED*
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'SEALED'

l.
I.

Filed: 03/06/2015
Filedll/25/14 Page2 of 36

BACKGROUND
BACKGROUND

2

On May 5, 2014, a jury reached a verdict in this case, findin
findingg in part that Samsung
Sam sung

3J

infringed Apple's U.S
U.S.. Patent Nos. 5,946,647 (the "'647
'"647 patent")
patent''),, 8,046,721
8,046,72 1 (the "'721
·<1 721 patent''),
patent"),

4

and 8,074,
'" 172 pateht").
patent"). ECF No. 1884. On May 23,2014,
23, 2014, both parties filed motions
moti ons
8.074, 172 (the "'172

5

for judgment as a matter of law, and Apple filed a motion for a permanent injunction. See ECF

6

Nos. 1895-3, 1896-3, 1897-3
1897-3.. On August 27, 2014. the Court
Cou rt denied Apple's request tor
for a

7

permanent injunction.
injunction. ECF No. 1954. On August 29, 2014,
2014. Apple
App le filed a notice of appeal to the

8

Federal
Pcdcral Circuit regarding denial of
ofthe
the permanent injunction.
inj unction. The CoUJtsubsequently
Court subsequent ly resolved
reso lved tthe
he

9

parties
o f law.
Jaw. ECF Nos
Nos.. 1963, 1965.
parties'' motions for judgment as a matter of

10

On September 3, 2014, Apple filed the instant motion, seek
seeking
ing ongoing royalties for any

.s

11
II

future infringement by Samsung. ECF No. 1958. Apple demands toyalties
royalties from Samsung
Sam sung for any

t::
<-8
t::=·<2
:l:'=

12

continuing sales of
fo r which the jut·y
j ury found infringement,
infri ngemcnt, and for any Samsung
o f the products for

~ ~
(j

13

products "not more than colorably
co lorab ly different" from the adjudicated
adjud icated products. ECF No. 1959

·-.•" ....."

14

(Apple's Proposecj
Propm;ed Order). Apple claims that the jury awarded peHtnit
peHlOit royalty
roya lty rates of$2.75
of$2 .75 fot•
fol'

15

the
lhe '647
' 647 Patent,
Paten t. $2.30 for
for the ' 172 Patent,
Patent. and $1.41
$1.41 for the '721
'72 I Patent, and requests the same

.,,"0

16

aoy future infringement. See id.
rates for any

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On September 9, 2014,
2014. the Court set
sct schedules for briefing both Apple
Apple'1 s entitlement to

18

ongoing royalties and the proper amount of any such royalties, and asked the parties to address the

19

effect
Apple's
this
effeet of Apple
's motion
mot ion on entry of final judgment in th
is case. ECF No. 1966. On September 13,

20

2014,
20 J 4, Samsung
Sams ung sought an extension
ex(en ~ i o n of time
li me 10
to respond to Apple's motion. ECF Nos. 1969, 1970.

211
2

On Septembet·
15,1014, Apple opposed Samsung's request for an extension. ECF
ECF No. 1975.
September 15,2014,

22

After
subm issions.
HCF No.
Aller considering the parties
parties'' submiss
ions, the Court adjusted the briefing
brieji ng schedules. ECF

23

1978.
1978.

24

Regarding Apple's entitlement to ongoing
ongo ing royalties, Samsung filed
filcd an OpposiHon
Opposition on

25

September 22, 20
2014.
filed its Reply.
ECF No.
14. ECF No. 1986-3. On September 29, 2014, Apple
Apple-filed
Reply . Ecr

26

2001. On October 6, 2014,
20[4, Satnsung
Samsllng filed an administrative
adm inistrative motion seeking
seek ing leave to file
fil e a Sur-

27

Reply (ECP
(ECF No. 2032).
2032). The
The Court
(ECF No.
No. 2013), which Apple
App le opposed on October
Octo ber 9, 2014
20 14 (ECFNo.

28
2
Case No.:
No.: 5:12-CV-00630-Li
5: 12-CY·00630-U"lK
IK
ORDER GRANTING IN PART APPLE'S
FOR ONGOING ROYAL
TIES
APPLE' S MOTION f'OR
ROYALTIES

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Document: 40

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granted Samsung's request (ECF No. 2049), and Samsung
Sam sung fJied
!]led its Sur-Reply
Su r-Reply on
on October 15,
15,20
20 '14
14
2

(ECF No. 2050).
2050).
ongo ing royalties,
roya lties, on September 22, 2014, Apple filed
fil ed its
ilo;
As to the proper quantity of ongoing

3
44

open
opening
ing brie
brieff and supporting
supporti ng materials.
materials. ECP
ECF No
No.. 1985-3·
1985-3.. On October 6, 2014, Sam
Samsung
sung filed
fi led its

s5

Response with supporting decLarations.
20 14, Apple filed its
ils
declarations. ECF No. 2015-2. On October 14, 2014,

6

Reply. ECF No. 2046-3.
Reply.

7

II.
II .

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LEGAL STANDARDS

In their briefs, the parties make many conflicting
conflictin g (and sometimes
someti mes inconsistent) statements

about the nature or
of the
tile ongoing royalties
roya lties remedy. As a result,
resul t, the Court briefly reviews the
relevant legal standards .
An ongoing
continue
inve11tion for
inue using
us in g a patented invention
ongoi ng royalty permits an adjudged infringer to cont

12

a price
price.. See Paice
Paiue LLC v. Toyota Motor
Molol' Corp., 504 F.3d
Jd 1293, 1313 n. I[J3 (Fed.
(Fed . Cir.
Ci r. 2007)

13
13

(defining an ongoing
ongoi ng royalty and distingu ishing a compulsory license).
license). The Federal
Federa l Circuit
C ircuit has

14

identified 35 U.S.C.
U.S.c. § 283,
283 . which
wh ich authorizes "injunctions
"injunction s in accordance with the principles of

IS
15

equity," as statutory authority for awarding
award ing ongoing royalties. See id. at 1314
13 14 (citing
(c iting § 283); see

16
16

also Mark
Ma rk A.
11.. Lemley,
Lemley , The Ongoing Confusion Over Ongoing Royalties, 76 Mo. L. Rev. 695,
695 , 695695·

17

99 (200 l)
I) (analyzing authority for ongoing
ongoi ng royalties under§
under §§§ 283 and 284). Accordingly,
According ly. wh
while
ile

18
IS

lhis remedy involves monetary relief, there is no Seventh Amendment right to jury trial
this
trial for ongoing

19

royalties.
1315·16
15-16 ("[T]he
("LTJhe fact
facllhat
that monetary relief
rel ief is at issue in tthis
hi s case
royal ties. See Paice, 504 F.3d at 13

20

does not,
1!l)L, standing
stamli!!g alone, warrant
wurt'11111 a jury trial.").
triaL") .

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The Federal Circuit
Ci rcuit has held that ongo
ongoing
ing royalties are a discretionary remedy.
remedy . "There are
arc

22

o f relief for ongoing infringement
several types of
in fringement that a court
cou rt can consider: (1)
( I) it can grant an
un

23

injunction;
injuncti on; (2) it can order
ordcr the parties to attempt to negotiate
negotiutc terms for future use
lise of the invention
in vention ;

24
24

royal ty ; or (4) it can exercise Its
its discr
discretion
·etion to conclude
concl ude that no forwardforward·
(3) it can grant an ongoing royalty;

25

looking relief is appropriate in the circumstances."
circumstances," Whitserve.
Whilserve , LLC
LLe v.
v. Computer
ComputeI' Packages, Inc.
[lIc.,,

26

694 f.3d
F .3d 10,
10. 35 (Fed.
(Fed . Cir.
e ir. 2012). "Under some circumstances, awarding an ongoing royalty
royally for

27

infril1gement
patent in
fringement in lieu of an injunction
inj unction may be appropriate.
appropriate ."" Paice,
Paice, 504 F.3d
r.3d at 13
1314
I4.,

28

nol automatic:
automatic : "awarding an ongoing
ongo ing royally
royalty where ' necessary' to
Ho wever, the
thl' remedy is not
However,

3
Case No.:
No. : 5: 12-CV-00630-LHK
ORDER GRANTING IN PART APPLE
APPLE'S
'S MOTION FOR
FORONGOINGROYALTI
ONGOING ROYA LTI ES

AS
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effectuate
infringement,
e ffectuate a remedy, be it fo
forr antitrust
anti trust violations or patent infringeme
nt, does not justify
ju st ify the
22

prov is ion of such
provision
s uch rel
relief
ief as a matter
matte r of
o f course
co urse whenever a permanent
perma nent injunction
injunctio n is not imposed."
imposed, " !d.
Id.

3

at 1314-15.
1 3 14~1 5.

4

The Federal Circuit
Circui t has not
not addressed the burden
burden of proof
proo f for ongoing royalties. However,
However.

5

other
ol her cowts
courts have placed
pl aced the burden on the
Ihe patent'ee.
patentee. Creative Internet
Internel Adver.
Ad\'er. C01p.
Corp. v. Yahoo! Inc.,
f llC.,

6

674 F. Supp. 2d 847, 855 (E.
(E DD.. Tex. 2009) ("When
(" Whe n injunctive
inj unctive relief
re lie f is denied under
unde r the traditional
trad it ional

77

four factor
faclor test and the Court instead
in stead considers whether
w hether an infringer should
s houl d pay an ongoing royalty,

8

the Court finds
fin ds that the burden of
o f proving
provi ng damages remains with the patentee.").
Determination
o f ongoing
ongo ing royalties
roya lties differs from
rrom evaluation
eva luati on ofa
o r a reasonable royalty during
duri ng
D etermination of

9

10

tri<d because the
ict and
trial
thc jury
j ury has reached a liability
li ability verd
verdict
a nd other
othe r economic factors
faclors may have changed
changed..

...E

11
II

"Prior to judgment,
judgme nt. liabi lity
li ty for infringement, as well as the validity
validi ty of
of the patent,
pate nt, is uncertain,
uncertain , and

=;.::
o ·
c;l

12
12

a rc determined in the context of that
damages are
th at w1certainty.
uncert ainty . Once a judgment of valid
validity
ity and

" o
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.... ......
.

-~

13

infri ngem e nt has been
infringement
bcen entered,
cntered, however, the calculus
Ct:llculus is markedly di
different
ffe rent because different

;;
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.~

14

Amada v. Microsoft Corp.,
C()rp., 517
5 17 F.3d 1353,
1353 1 1362 (Fed.
(Fed. C
Cir.
ir. 2008).
economic factors aare
rc involved.''
involved." Amado

~
lJ

0c

IS
15

A district
d istrict court may also consider "additional
"add itional evidence of changes in the parties'
part ies' bargaining
bargaini ng

"
"'€
'O t:
"' 0
;;~: : z:z

16

positions
pos iti ons and otber
other economic ciccu.mstances
circumstances that may be of
o f value in determining an appropriate

"
C!J

17

12, 1343
ongoi ng royalty." Active Video Networks,
Nerwol'ks. lnc.
Inc. v. Verizon
Verizo n Commc 'ns,
'ns, Inc. , 694
694 F.3d
F. 3d 13
1312,
1343

.....
0"
r.z...

18

(Fed. Cir.
C ir. 201
20 12);
2); but see
sec Lemley,
Le mley, supra, at 704-05 ("Juries are already required to assume that the

19

patent is va
valid
lid and
a nd infringed
in fringed when setting
setti ng past damages. There is no reason to think that asking
aski ng the

20

same
sa Ulc question twice
t w ice should
sho uld pi'oduce
produce different
differe nt answers
alun,vcrs iJl
in most case·
cases.")
s ,") (footllotes
(foot11otcs omitted).

211
2

Ill.
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DI
SCUSSION
IJISCUSS
ION
Apple and Samsung
SamslIng have three sets of
of disputes. First, Samsung
Samsun g argues that Apple is

23

procedurally barred from
fro m seeking the remedy of ongoing roya
royalties.
lties. Second, Samsung
Sam sung contends in

24
24

the alternative
alte rnati ve that Apple is not entitled
e ntitled to any ongoing
ongoi ng royalties
roya lti es for
fo r any
a ny Samsung
Sam Sling products.
produ cts. Third,
Th ird,

25

assum ing that
that Apple is entitled
en titled to
to a remedy, the parties ddispute
assuming
ispute the
I.he proper ongoing
ongo in g royalty
royal ty rates.

26

The Court add
addresses
order,.
resses these qdisputes
isputcs in order

27

28
4
Case No.: 5: 12-CV-00630-LHK
12-CV-OOG30-LHK
ORDER
ORDE R GRANTfNG
GRANTING IN
tN PARi
PA RT APPLE'
APPLE 'S
S MOTION FOR ONGOING ROYALTIES
ROYALTIES

A6

Case: 15-1171

Document: 40

Page: 91

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Samsung's
Snmsung's Procedural Arguments

Samsung presents a host of procedural arguments as to why Apple
Appk is now precluded from

3

seeking ongoing royalt
ies, and why the Court should postpone resolution
royalties,
reso lution of Apple's motion.
mot ion.

4

Apple disputes each of these arguments and contends
contend s that it has not forfeited any rights. The Court

5

determines that Apple
App le ;s
is not barred from requesting
requesti ng ongoing
ongo ing roya
royalties,
lties, for th
thee t•easons
reasons below.
1.
t.

6

7

Waiver

Samsung fit~t
fir st argues that Apple
App le waived ongoing royalties by failing
failin g to identify
identi fy this remedy

8

in various pretrial
pretrial fifilings.
lings. Samsung observes
o bserves that Apple did not offer any expert testimony
testim ony on

9

ongoing royalties or raise the issue
iss ue in motions for prepre· and post-verdict
pO~1 ·verdi cI judgment
judgmen t as a matter
maHer of

10

law, new tri
trial,
al, or a permanent injunction. See ECF No. 1986·3
1986-3 at 2-3.
2·3. In
[n particular, Samsung
SamsLLng

11
II

claims that Apple
App le fa iled to
10 request ongoing royalties in the parties' Joint Amended Pretrial
Pretria l

12

Statement,
Starcment. and that Apple's "boilerplate"
" boilerplate" reference to "[a]ny other
oth er remedy lo
to whi~h
which Apple may be

13

entitled, incl
including
uding all remedies provided fot
for in 35 U.SC.
U.Sc. §§ 284, and 285 and under any other law"

14

was insufficient
insuffi cient to preserve the issue.
issue. Jd. at 4; ECF No. 1455-1
1455·[ at 3. Relatedly,
Rc lated ly, Samsung argues

15
IS

that Apple
App le al
also
~o failed
fa il ed to include ongoing royalties
roya lties in the scope of injunctive
inju nctive relief
reliefrcquested,
requested, which

.,, "

16

was limited to an injunction preventing ''futther
act s of infringement." ECF No. 1455-1
1455·[ at 3.
" furthe r acts

Cl "II)
C

l7
17

u..0

18

Statement by requesting "all
"a ll damages adeq uatc
uate to compensate for Samsung's
SUl11sung's infringement of

19

Ap~le>
App, le' s

20

infringement." 6Cf
the Federal
characterized
EC f No. 2001 at 2. Apple notes that lhe
Federa l Circuit
Circu it in Palce
Palce character
ized

21

ongoing royalties as a "reasonable royalty" in light of ongoing infringement, such that App
le's
Apple's

22

request for
fo r a "reasonable royalty" encompassed that
thaI remedy. Id. (quoting 504 FJd
F.3d at 1315).

23

Additionally,
Additiona lly, Apple submits examples of
of pretrial
pretria l statements in other casescases-including
including Paice-

24

where the parties did not expressly request an "ohgoing
"ongoing royalty," but no waiver
waivc,r occurred.
occurred . See,
See, e.g.,
e.g. ,

25

EC[
ECF No. 2002A
2002~4 at 3 (pretrial
(prelrial statement in Paice, seeking "monetary damages
dam ages in the
lhe form of
oraa

26

reasonable royalty").)
royalty") .1

27

See also ECF
Ecr Nos. 2002 ·~ 1[ at 6 (Joint Final Pre-Trial
Pre·Trial Order, Mondis Tech.
Tech. Ltd.
Ltd v. Hon
[[on Hai
Precision Indus.
[nd/H'. Co.,
co . ~ No,
No. 2:07-CV -565
·565 (E.
(E.n.
D. Tex.»),
Tex.)), 2002-2
2002·2 a1
at. 18 (Order on f"inal
rinal Pretrial
Conference, liP
Engine, Inc.
(E. D. Va.)},
li P Engine.
[nCo v.
v. AOL.
AOL, Inc.,
Me., No. 2: 11-cv-512
11-cv· 512 (E.n.
Va.)), 2002-3
2002-3 at 3 (Joint
(Jo int Pre-Trial
Pre·Trial

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Apple responds that it adequately preserved ongoi
ongoing
ng toyaltics
royaJrics in the Joint Amended Pretrial
Pretrial

asserted
asscrted patents1J and in no event less than a reasonable royalty
roya lty for Samsung's
Samsung 's acts of

5
Case No.!
No.: 5;12-CV-00630-LHK
5!12-CV-00630-LHK
ORDER GRANTING JN
IN PART APPLE'S
I\PPLE'S MOTION FOR ONGOING ROYALTIES
ROYA],'I'IES

A7

Case: 15-1171

Document: 40

Page: 92

ase5:12-cv-00630-LHK Document2075 *SEALED*
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Additionally, Samsung points
poi nts to this Court'
Court'ss August 21
21,, 20
201l44 Order denying Samsung's
Sam sung ' s

.ss
.~

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2

fo r judgment of invalid
inva lidity
ity under 35 U.S.C. § 101.
10 1. ECF No. 1952. There, the Court
motion for

3

Samsu ng's attempt
attemptto
to raise § 10
101I defenses against two Apple patents for the 'first
first time after
rejected Samsung's

4

011 defenses because Samsung did
trial. The CoUJ1
Cou rt determined that Samsung failed
fa iled to preserve § I10

55

lega l theory in expert reports, dispositive motions, or the Joint
Jo int Amended Pretrial
Pretrial
not identify that legal

6

III 4-5.
4~ 5. The Court noted that the Ninth Circuit has "consistently
aconsistcntly held that issues
iss ues
Statement. See id. at

7

pretr ial order have been
bee n eliminated from the action,''
action,'" S. Cal.
Cal. Rewil
Retail Clerks
not preserved in the pretrial

8

Union v. Bjorklund, 728 F.2d 1262, 1264
l 264 (9th Cir,
Cir. 1984), and that !'a
"a theory wi
willll be barred if
if not
na l at

q
9

Co.,, 769 F.2d
least
Am. Tel. & Tel.
Tel. Co.
r .2d 541 , 548 (9th Cir.
C iT .
leasi implicitly included in the order," Eagle v. Am.

10

princ iples
les should preclude Apple from seeking
1985). Now, Samsung
Sam sung argues that these same princip

11
II

No. 1986-3 at 3.
ongoing
o ngoing royalties.
roya lt ies, See ECF
ECFNo.

12

Under these circumstances,
c ircumslunces, the Court concludes 1hat
that Apple did
d id not
nol waive ongoing royalties.

13
1J

royalties" in the Joint Amended
A mended Pretrial
Apple
A pp le concedes that it did not use the words "ongoing royalties''

Ci
~ .~
.'@

14

Statement
is litigation, Apple
Stateme nt or its pre- and post-trial motions. However,
However. throughout th
this
App le has

~=

15

roya lties to compen
compensate
sate for
fo r all
ii ll Samsung
Sam sung infringement. See, e.g"
e.g., Compl.
CampI.
consistently requested royalties

16

(ECP
No. 1) at 13-14;
Am.. Com
pl. (ECF No. 261) at 12-13.
(Eel-' No.1)
13 - 14; Am
CampI.
12- 13. As noted above, in the Joint
Jo int Amended

17

Pretrial
Pret rial Statement, Apple requested
req uested "all damages adequate to compensate for Samsung's

18

infringement of
o f Apple'
Apple'ss asserted patents,
patents. and in no event less than a reasonable royalty."
royalty ." ECF No.

19

1455-1 at 3. Thus,
forr ongoing
Thu s, Apple's request fo
ongoi ng royalties
roya lties was at least ""iimplicitly
m plicit ly included" in this

20

Eagle, 769 F.2d
f.2d at 548.
54 8. By contrast,
corHrast, Sam
Samsung
sung did
d id not idenlify
identify § 101 in lhe Joinl
Joint Amt:mlt:d
Amt:ndt:d
filing . Eagle.
filing.

21

Pretrial Statement at all, despite iden
identifying
tifying other statutory defe
defenses
nses (such
(suc h as§§
as §§ 102, 103,
103, and

22

112). See ECF No. 1952 at 3. Moreover,
Moroover. Samsung had raised § 101 much earlier in this case, but

23

repo rts and pretrial filings.
filings. Apple, on the other hand, has
then abandoned that defense in its expert reports

24

cons isten tly sought compensatory
com pensatory roya.lties
royalties for all
a ll infrin
infringing
ging act
activity.
ivity.
consistently

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25
26

27
28

In
rn its Sur-Reply, Samsung
Samsu ng contends
contcnds thar
that App!e's
App!e 's reference t9 "royalties"
''royalties" or "damages" in
Jo int Amended
Amcnded Pretrial Statement could
the Joint
cou ld not encompass ongoing
ongo ing royalties
royal ti es because that is a
Orde r, Creali
Order,
Creafive
lle Internet
Infernef Adver.
Adver. Corp. v. Yahoo!
Yahoo! inc"
Inc,, No. 6:07cv354
6 :07cv35 4 (E.D.
(E.D. Tex.)). However, the
COlirl
fo r any
Cou
rt notes that the patentee in Mondis requested "a running royalty to compensate it for
continuing
2002-1 at 12.
·
co ntinuing infringement.''
in fringemen t. " ECF No. 2002-1
6
Case No.: 5: 12-CV-00630-LHK
IZ-CV·OO630-LHK
ORDER GRANTING fN
POR ONGOING ROYALTIES
ROYAL"TIES
IN PART APPLE'S MOTION FOR

AS

Case: 15-1171

Document: 40

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ase5:12-cv-00630-LHK
aseS:12-cv-00630- LHK Document2075
Documellt2075 *SEALED*
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remedy tmder
.C. § 283, not "damages" under § 284. ECF
tinder 35 U.S
U.S.C.
Eel" No. 2050 at 2. Samsung is

.,EE
C<3

t:
t.::::::~:..:
<-2
0.8

2

correct that the Federal Circuit has characterized ongoing
ongo ing royalties as an eqnitable
equitab le remedy

3J

authorized
I314-166 (analyzing ongoing royalties under§
auth or ized under§
under § 283. See Paice,
Paice, 504 F.3d at 1314-1
under § 283

4

Orthopedic, Inc.
Inc. v.
v. Nu
NIIVasive,
Vasive, Inc.,
and finding
findin g no Seventh Amendment
Amenument right to jjury
ury trial); Warsaw Orthopedic.

5

515
5 15 F. App'
App'x
x 882, 882 (Fed. Cir.
eir. 2012) ("An
("An ongo ing royalty
rOYIlII)' is not the same as an accounting
accounti ng for
ror

6

damages.
dam ages.").
"). However, this
thi s does not mean that Apple's request
request fo
forr "roya
"royalties"
lties" Hnd
and "damages''
"damages" is

7

insufficient
insufTIcicnt to invoke a request for
fo r ongoing royalties. The Federal Circuit has also referred to an
all

8

ongoing royalty as a "reasonable
F .3d at 1315
" reasonable royalty.,
roya lty." Paice,
Paice, 504 F.3d
13 15 (describing the requested
req uested relief
relie f

9

orthe ongoing infringement").
infringement") . As Apple notes,
nores, other courts have
as "a reasonable royalty in light ofthe

10

awarded ongo
ongoing
ties even
ing royal
royaliies
ev en though the patentee generally
generall y sought a "reasonable
"reasonabl e royalty"
roya lty" or

IIII

compensatory damages. See.
See. e.g. , ECF No.
No . 2002
2002-4
-4 at 3 (pretria
(pretriall statement in Paice)?
Paice).2
Sam ~sung
ung

o "'

12

·-,_';: ...,ti

13

event less than a reasonable royalty" but did
d id not employ the
patentee sought damages and "in no everlt

14

words
"ongo ing royalty.''
roya lty," Rather;
Rather, Samsung
Sanlsu ng cites two cases relat
relating
ing to waiver, neither controll
controlling
ing
word s "ongoing

!!E
~ E

15

and both distinguishable.
distinguis hable. See ECF No. 1986-3 at 3.
J. In
[n Elvis Presley Enterprises,
Ellterprises, Inc.
Inc . v. Capece,

..,"'-=
'll B

16

the Fifth Circuit affirmed

= <I")

17

profits.
pro fit s. 141 F.3d
F.Jd 188,
188,206
206 (5th Cir. 1998). The pplaintiff
laintifflistcd
listed " injunctive relief, damages,
damages, and

18

attorneys
feess under the
uttomcys'' fce
the Lanham Act" in the pretrial order, but not an accotmting
accountin g of profits.
profi ts. !d.
Id. In

19

finding
tinding waiver,
wa iver, the court relied on the fact
ract that
thal the Lanham
Lan ham Act has a specific provision for
fo r an

20

accounting
acco unting ofpruiils
u rprufits lhal
Ihat ""llists
ists il
it st:paralely
scparatt:ly Crum
rrum damages."
dillllagcs. " ftl.
111. That
T hat is not
l1ul lbe
the situatiou
silllalioll here,
ben:,

21

however,
becau se there is no express statutory provision in the Patent Act that separately lists
howeve r, because

22

ongoing royalties. Next, in Ramos v. Davis &
& Geck, Inc., the District
Di st rict of Puerto Rico found that the

23

plaintiff waived a claim for "front pay" as to one cause of
o f action, but based this
th is result on the fact

24

express ly requested "front pay" for
fo r a separate cause of
of action.
acti on. 968 F. Supp. 765,
that the plaintiff
plainti ff expressly

25

771
771 (D.P.R.
CD.P.R. l997).
1997). Again, that is not what occurred
occu rred here. Apple has consistently sought

26

Smnsllllg
Srunsung argues that ir
if§§ 283 does
docs not govern ongo
on~oing
ing royalties (as a fo
form
rm of
of inj
injuunctive
nctive
then Samsu11g
Samsung is entitled to ajury
t•relict).
elief), then
a jury trial under the Seventh Amendment. See ECF No. l1986-3
986-3
at 4 n. l.
l . This argument is 111isplaced.
misplaced. Paice explained that§
that § 283 governs
gove rns ongoing royalt ies, and
and
that there is no tight
right to a jury trial. 504 FJd
F.3d at 13
1315-16.
I 5-16. Indeed, in a later brief,
brier, Samsung
Sam sung cites
Paice and argues that no jury tria
triall is required. See
Sf?e ECF No. 20
2015-2
15-2 at 3.
7

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does not
nOl cite
ci te any case law
IllW where ongoing royalties were deemed waived where a

a ruling that
that the plaintiff
pla intiff in a trademark case waived an accounting of
of

~

"-

(..!..,

27
28

2

1

Case N
No.:
o.: 5:
5;J2-CY-006JQ·LHK
12-CY -00630-LHK
ORDER GRANTING IN PART APPLE'S MOTION FOR
FOR ONGOINO
ONGOfNO ROYALTIES

A9

Case: 15-1171

Document: 40

Page: 94

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ase5:12-cv-00630- LHK Document2075 *SEALED*
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Filedl1/25/14 Page8
PageS of 36

compensatory royalties
royal ties for
fo r all infringing activity. Overall, Samsung has not demonstrated that

2
3
4

Apple waived
waived the issue of ongoing royalties.
2.

Timeliness

Aside
As ide from waiver, Samsung
Samsung calls App
Apple's
le's request for ongoing royalties an
an "untimely
"u ntimely

5

second post-trial motion."
mot io n." ECF
ECF No. 1986-3 at 5. Samsung points
po ints to the Court'
Court'ss March 5, 2014

6

scheduling order fo
forr post-trial
post-tria! motions, which stated that "each side may file one motion for

7

fo r new trial (!post-trial
(, post-trial motion')''
Illolion')" and "[e)ach
"[e]ach
j udgment as a matter of
o f Jaw
law and/or motion for
judgment

8

prevailing
fi le one motion for a permanent injunction."
injunction," ECF No. 1398 at
'at 4.
4, Samsung
preva ilin g side may file

9

claims that Apple'
Apple'ss motion is an additional "motion
" motion to alter or amend aajudgmenl"
judgment" under Fed. R,
R.

to
10

Civ.
C iv. P. 59(
59(e),
e), and therefore an untimely post-trial
post·trial motion
motion not authorized by the Court's
Court' s scheduling

11
11

le needed to raise ongoing royalties "as alternative relief in its
order.
Apple
order. According to Samsung, App

-=
·-·
oo"@

12

lor permilllcnl
permanent injunction.!'
injunctio n." ECF No.
No, 1986-3
1986·3 at 5,
5.
motion for

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.-

Apple characterizes the situation
s ituation differently.
differcntly, "Apple
"A pple agrees that its
ils request for an
all ongoing

I.. <.)

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.

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,_

14

59(e)
e) motion to 'alter or amend aajudgmcnt'"
judgment"' under Rule
royalty may be characterized as a Rule 59(

15
15

59(
e), but claims that this motion
"post-trial motion " as defi
defined
ned in the
Ihc Court's
Cou rl 's schedu
scheduliling
ng
59(e),
molion is not a "post-trialtnotion"

16

order because it is not a "motion fo r judgment as a matter of law and/or motjon
mot ion for new trial."
trial,"

17

App le also claims
cla im s its motion
moti on is ''early''
'iearly" because the Court
Cou rt has not yet entered
ECF No.
No, 2001 at 6-7. Apple

18

fifinal
nal judgment.
judgmcnt. I!d.
d. at 7.
7, Apple
App le claims that at
alleast
least one other district court has allowed a patentee
pa1entee

19

to seek ongoing royalties after losing a permanent injunction
requ est. Sr:.e
See Warsaw Orthopedic,
injunctio n request.

20

Inc:.
Inc. v.
v, Nu
NuVo,'iive
Vasive,, Inc., No.
No, 08-CY·
08-CV- 1512,
JSI2. slip op.
up. al
aL 1I (S .D.
,D. CaL
Cal. JUlie
June 10,
10,20
2013)
13) (''[T)he
(" [T]hc CoUii
Court

21
21

denied
motion
ion for a permanent injunction and ordered the parties to brief the matter of
den ied Warsaw's mot

22

ongoing royalties.").
royalties."),

~

0

J.J-.
"-

23

The Court finds
110t untimely. The Court's
Cou rt 's March 5, 2014
20 14
tinds that Apple's
App le's motion is not

24

schedu
scheduling
ling order (ECF
(EeF No.
No. 1398) addressed only motions requesting
requ esting a new trial,
Tria l,judgment
judgment as a

25

law, and permanent
matter of
injunctions, Apple's
Apple 's motion does not
nOl fall within
with in any of
o f those
o flaw,
permant::nl injunctions.

26

A lso, Apple
Applc fi led its motion
mot ion
categories, and is therefore not foreclosed by that scheduling order. Also,

27

roya ltics only
on ly one week after the Court denied a permanent injunction,
injunction. 'vvhich
wh ich negates
for ongo ing royalties

28

Samsung's
Sam sling ' s claims of
of untimeliness.
8
C<lseNo,:
Case
No,; 5:
5 : 12~CV-00630-LHK
12-C V-00630-LHK
ORDER GRANTING IN PART APPLE'S
APPLE ' S MOTION FOR ONGOING ROYAL
ROYAL-TIES
TII~S

A10

Case: 15-1171

Document: 40

Page: 95

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*SEALED*

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Filedll/2S/14 Page9 of 36

Sam sung asserts that Apple forfeited
lo rfeited ongoing
ongo in g royalties by not req
requesting
uesting that relief
rel ie f at the
2

same time it moved for a permanent injunction.
inj unction. Apple argues that briefing both issues

3

simu ltaneously wou
ld force patentees "to take L
the.conflict
he conflicting
ing position that money damages are
would

4

inadequate, while
wh ile simultaneously proposing money damages to remedy the infringement." ECF

5

No. 200 1l at
6. However, Samsung
a16.
SamslIng claims that "parties
" parties routinely
roulinely request an ongoing
ongo ing royalty
royal ty in the
thc

6

alternative to-and at the same time as-a request for a permanent irijunction
injunction barring ll1e
the sale
sa le of

7

the infringing produ~t,"
product," citing
ci ting Ba/·d
Bard rPeripheral
eripheral Vascular
Vascular v,
v. W.L.
WL. Gore & Associates,
Associales, 670 Fr.3d
.3d

8

117
11 711,. 1178 (Fed. Cir.
Cit. 20 12) (vacated in part,
pari, 476 F. App'x 747 (Ped.
(Fed. Cir.
Cir, 20
2012»),
12)), and Cordance

9

Corp,
Cmp, v. Amazon.com,
Amazon.cum, Inc.,
[m:" 730 F.
F. Supp. 2d 333,336
333, 336 (D.
(D . Del. 2010).
20 I 0). ECFNo.
ECF No. 1986-3
J 986-3 at 6.

10

However, both of those cases are merely examples
ex.amp les of
of patentees sitnultaneously
simu ltaneously seeking both an
atl

'2
...

IIII

injunction
injun ction and ongoing royalties.
roya lti es. E.g., Cordance,
Corda/Ice, 730
73 0 F. Supp. 2d at 336 ("Cordance filed
filed a

=:.=
~

12

mOlion for
motion
fo r permanent injunction
injuncti on or, in the alternative, imposition of an ongoing royalty.'').
roya lty."). Neither

'to

13
13

th at this
th is is a procedural
procedural requirement.
requireme nt?3 Accordingly,
Accordingly. th
thee Court determines that Apple'
App le' s
ho lds that
case holds

"' ....
·--

14

motion is not untimely.
untimely .

~

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15

3.

Jurisdiction
Jurisdicti on

-o'Qo

16

Next, Samsung
Samsllng challenges this
thi s Cout
Court's
t's jurisd
jurisdiction
icti on to decide Apple 's motion.
motion . Apple

=

17

Cou rt 's denial of
appealed this Court's
o f Apple'
App le'ss request for a permanent injunction,
injunction. before
oofore resolution of the

18
18

parties' motions
moti ons for judgment as a matter of
of law or entry of fin
final
al judgment in this case. See ECF
Ecr

19

No. 1955. App
Apple
le appealed under 28 U.S.C.
U.S.c. § 1292(c)(l),
I 292(c)( 1), which
wh ich permits appeals
appea ls to the Federal

20

Circuit from interlocutory orders refus
refusing
ing ifliunctions.
injunctions . See also§
(llso § 1292(a)(l);
I 292(a)( I); Or. of Pl.-Appellant
Pl. -A ppellant

21

Apple Inc
Inc.. at I, Case
Casc No. 14·1802
14- 1802 (Fed. Cir. Oct. 3, 2014) ("Th
("Thiiss Court has jurisdiction
jurisd iction over
overthc
the

22

permanent
denial of
o faa pl!rmanc
nt injunction
inj unction under 28 U.S.C.
U,S .C. § l292(c)(
I 292(c)( lI).").
),"), According to Samsung,
Samsung. Apple's

23

interlocutory
interlocu tory apreal
appeal ''divested
"divested the Court ofjurisdiction"
ju risdict ion" for any "overlapping matters"
muttcrs'l between

24

Apple's
injunction
Apple 's requests for a permanent inju
nct ion and for
tor ongoing royalties. ECF No. 1986-3
1986-3 at 8.

'25
25

Samsung
Sam sun g posits that ongoing royalties
roya lties involve several issues common to a permanent injunction,
injunction~

26

such
s uch as the adequacy of
o f monetary relief and consumer demand for the infringed
inFringed patented features.
feat ures.

27

3

;':: z.

I!)

~.s

.0..

1-1-.-

28

The Court notes
nares that delaying
delay in g a motion
moti on for ongoing royalties until after resolution of
of a
injuunction
nction motion (as Apple has done here) may delay entry of
permanent inj
o f' final
fin al judgment, as
discussed
di
scussed below.
be low.
9
3

Case No,: 5: 12-CV-OOG30·LHK
12-CV·00G30-LHK
ORDER GRANTING
GRAN"nNG IN PART APPLE'S MOTION FOR ONGOING ROYALTIES
ROY ALTIES

A11

Case: 15-1171

Document: 40

Page: 96

se5:12-cv-00630-LHK Document2075 *SEALED*
'SEALED'

Filed: 03/06/2015
Filedll/25/14
Filedl1125/14 PagelO
Page10 of 36

See id. at 8-9.
8-9 . App
Apple
le disagrees,
di sagrees, claiming
c laiming that its request for ongoing
ongo ing royalties ""is
is distinct from the

2
33

injunction issue raised on appeal. ")' ECF No.
No. 200 1 at 8.
8,
The Court finds
find s Samsung
Samsung's
's jur
jurisdictional
isdictional arguments uti
unpersuasiye.
persuas ive. Samsung's theory
the01y that
thai

4

unction appeal is not supported by the
ongoing
o ngo ing royalties are inextricably bound to the permanent inj
injunction

5

law that the purties
parties have cited. "The fil ing of af1 notice of appeal is an event
eVent of jurisdictional
jurisd ictional

6

significanc~it
th e court
courl of appeals and divests the distJict
distri ct court
significance':""'it confers jurisdiction on the

7

control
appea l." Griggs v. Pro
Provident
vident Consumer
contro l over those aspects ofthe
of tile case involved
invo lved in the appeal."

8

Discount Co., 459 U.S. 56
j ur isdicti on under
56,1 58 ( 1982). The Ninth Circuit has held that its jurisdiction

9

§ 1292(a)(
I 292(a)(J)
I) (for interlocutory injunction
injunction orders) extends
extend s "only to the ' matters inextricably bound

lO
10

up with the inju
nctive order from which
Cal.,, 102 F.3d 1035,
1035 , 1039
injunctive
which tbe
the appeal is taken,'"
taken ,' " Paige v. Cal.

11
11

(9th Cir.
Cir. 1996)
l996) (quoting
(9th Cir.
(quoti ng Self-Realization
Se/fRealization .Fellowship
Fellowship Church v. Ananda,
Anone/a. 59 F.3d 902, 905 (9th
C ir.

~:.:

12

4
1995)).
1995)).4
However, "it
" it is firmly established that
thut un
an appeal
uppeal ftom
from an interlocutory
interlocutory order does not

.

13

divest
th e trial
trial court of
o f jurisdiction
j uri sdiction to continue w
with
ith other phases of the case."
case.'' Plotkin v.v. Pac.
Pac. Tel.
d ivest the

14

& Tel.
Tei. Co.,
Co. , 688 F.2d 129
1291,
1, 1293 (9th Ci
Cir.r. 1982); see also Fairchild Semiconductor Corp.
Corp. v. Third

~c
E E

15

ltIC., No.
No . 2009-1168,
2009-1 168, 2009 WL 790 I 05, at*
at * lI (Fed.
(Fed . Cir. Mar. 25,
Dimension (3D)
(3 D) Semiconductor,
Sem;conduclor, Inc.,

en-s
oo"€....

16

2009) ("Although
("A Ithough a district
di strict conrt
court may not proceed with
with matters
matte rs involved
invo lved with the injunction itself.
itse lf.

.<;::Z
.~ Z
C:
c al
~
;;:>£

17

., . or make findings
findi ngs to support its injunction
injunct ion whlle
while the injunction is on
on appeal, .,
.. . the district court
coun

18
18

may proceed with the litigation and permit discovery,
di scovery, enter rulings
rul ings on summary judgment, or hold
hold

l9
19

a trial
tr ial on the merits.") (internal
(in ternal citations
citatio ns omitted).
o mitted) .

ro
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20

Si:tm:;ung
SaJJL!lllllg cites
I; itcs Puige
Paige to !lupport
support its argument that the
tire CoUJi
COlu1 Jacks
lacks jurisdiction over any

21
21

overlapping
App le's appeal. See ECF
ECF No. 1986-3 at 8. However, the Ninth
N inth Circuit's
overl apping issues in Apple's

22

Sarnsung 's
' s arguments are
arc misplaced.
mi splaced. Paige involved
guidance in that case is instructive as to why Samsung

23

an
ordcr granting a preliminary
prel iminary injtmction
injunciion in a discrimination class
an interlocutory appeal of an order

24

02 F.3d
FJd at 1037.
1037. The district
di strict court entered the injunction based on its decisions
dec isions
action suit. I102

25
2S

regarding class certification
the defendahts
defendants sought interlocutory
certificati on and summary judgment,
j udgment, and the:

26
27

28

~
re ly on Ninth
Ninth Circuit
Circu it Jaw
law regard
regarding
ing jjurisdiction,
urisdiction, but do not add
address
ress whether
Both sides rely
regional
wou ld apply to this
thi s Court's
Court 's ju
jurisdiction.
risd iction. Cf lnt
Im'/'l Elec. Tech. Corp.
regional or Federal Circuit law would
v. Hughes Aircraft Co.,
Co .. 476 F.3d 1329, 1330 (Fed. Cir. 2007) ("We
(" We apply our own law, rather Illan
than
regional circuit
regional
ci rcuit law, to questions relating to ottr
our own
own appellate jurisdiction.").
j urisdiction.").

10
Case No.:
No. : 5:12-CV-00630-LHK
5: 12-CV-OOG30-LHK
ORDER GRANTING
GRANTJNG IN PART APPLE'S
APPLE' S MOTION FOR ONGOING ROYALTIES
RO YALTIES

A12

Case: 15-1171

Document: 40

Page: 97

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Filedll/25114
l/25/14 Pagell
Pagell of 36

review of those underlying
under lying decisions.
decis ions. The Ninth Circu
Circuit
it held that "the class certification
certifi cation order in

.;
.~

c:
c
....
"
t:
1: £<.9
::t:.=
=:..=

2

this
grant of the
m injunction,"
injtmction/ ' and that
th is case is inextricably bound up with the gram
tile interi
interim
lhat the injunction
injunction

3

could not be upheld "wilhoui
"witJ10ut also upholding
upho ld ing the certification orlhe
of the class." Id.
ld. at 1039. The court

4

also exercised
relief
ef provided in the
exerc ised jurisdiction
jurisd iction over the summary
sum mary judgment order "because
" because the feli

5

injunction
th at the
lite merits orlhe
of the disparate irnpact
i1npact isstL
issuee had been resolved."
resolved.,
injuncti on was based on the fact that

6

Id
ld. at 1040.
I040. Thus, Paige indicates that predicate issues that are necessary to resolution
resolu tion of an

7

injunction
injunct ion are
arc "inextricably
" inextricably bound
bou nd up with" an interlocutory appeal
appea l and thus removed ·ffrom
rom the

8

district court's
cou rt 's jurisdiction during
dllfing the appeal.
appeaL See also Bates
BaleS v. United Parcel Serv.,
Serv .. Inc., 465 F.3d

9

Cir. 2006) ("Because
authority to grant the injunction
I1069,
069, 1076 (9th Cir.
C'Because the district court' s legal authorily

10

stemmed from
from its holding
ho lding that UPS violated
vio laled the ADA and the California
Ca liforn ia laws, those holdings are

II
II

' inextricably
inextr icably bound
bou nd up' with its injunction.").
injuncti on:)
llere,
uinextricablyy bound up with''
Here, Apple's
Apple 's request for
for ongoing
ongo ing royalties is not "inextricabl
with" the


.........
- ~
0

12
12

13

permanent inj
injunction
unclion appeal.
appeaL Unlike
Unlike the class certification
cerlification and summary judgment rulings in

"
.....
s.-"' :6

14

Paige, determining Apple' s entitlement
ent itlement to ongoing
ongo ing royalties
roya lties was not necessary for resolving

-

15

Apple's
motion . Indeed, Apple did not move for ongoing royalties unti
permanen t injunction mOlion
untill after
aftcr
App
le's permanent

16

the Court denied
sung contends that "the amount of money adequate
inju nction. Sam
Samsung
adeq uate
den ied a permanent injunction.

17

to compensate Apple"
App le" is "involved in the appeal" because
beca use Apple must argue that monetary

18
18

Spec ifical ly, Samsung
Samsu ng claims that
damages are
arc inadequate compensation. ECF No. 1986-3 at 9. Specifically,

19

. the petmanent
he Georgia-Pacific factors (for purposes of
or tthe
permanent injunction
injunction appeal
appea l affects application
app li cation of

c «~

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20

determining
dctemlining ongoing
ongo ing royalties)
royalt ies) because issues such
sllch as the probative
probativc value
valuc of Apple's
Apple ' s p~tenl
patent

2211

licenses and demand
de mand for
fo r the patented
patcnted features must
mu st be "re-open[
" re-opcn[cd]."
ed]." !d.
Jd. at 9. This argument fa
faililss

22

because mere factual
between issues does
docs not
nOI demonstrate that those issues are
factua l overlap
ove rlap belwecn

23

""iinextricably
Court' s permanent injunction
injunc.tion order did not address the
nextricably bound" to each other. This Court's

24

Georgia-Pacific factors
fac tors or reasonable
reasonab le royalties,
royalties. See ECP
ECF No. 1954. As Apple points
poi nts out, many

25

discrete issues regarding liability
appli cation of
o f Georgia-Pacific) were
liabi lity and damages (including
(includ ing application

26

also disputed
parties ' motlons
motions tor
Jor judgment as a matter of law, but Samsung
Sam sung did not argue
d isputed in the parties'

27

that Apple's appeal divested
divcsted th is Court
Cou rt of jjurisdiction
uri sd ictio/1 to resolve
reso lve those mot
motions.
ion s. See ECF No. 2001
200 I

28

at 8. Indeed, rulings
rul ings on preliminary
prel imina'ry and permanent injunctions require some analysis of liability
liabi lity
ll
II
5 : 112-CV-D0630-LHK
2-CV-00630~LHK
Case No.;
No.: 5:
ORDER GRANTING JN
IN PART APPI
APPJ,E'S
.E'S MOTION
~OT I ON FOR ONGOING ROYALTIES

A13

Case: 15-1171

Document: 40

Page: 98

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and remedies, wh
which
ich overlap factually with other issues,
issu es, but
but§§ 1292 allows
a llows for interlocutory

2

appeals
injuunction
ncl ion orders while a case proceeds before the district
distric t court. Because determination
appeal s of inj

3

of ongoing
ongoi ng royalties
royalt'ies is not inextTicably
inextricably bound L
up
ip with Apple's permanent injunction motion,

4

Apple 's appeal has not
divested this Court ofjurisdiction.
nOldivcsted
jurisdicti on.

S
5
66

•. ~•E

;: S
.2
t:

4.

Request
Request for
f'or Stay

As a further procedural alternative, Samsung asks that ""fi]fthe
[i]fthe Court finds that the

7

jurisdictional
losc, tl1e
the Court should avoid potentially
pOlcntially wasteful
wastefu l proceedings by
j urisd icti onal question is even cclose,

8

staying thi
thiss case pending resolution of Apple's interlocutory
interlocUTory appeal/'
appeal." ECF
ECF No. 1986-3
1986·3 at 10.

9

Samstmg
SamslIng claims that
thai deciding Apple's
Apple 's ongoing royalties motion
moti on now would waste resources

[0
10

because the pending appeal may affect or obviate ongoing
unpersuuded and
ongoi ng royalties. The Court is unpersuaded

[ [
Il

DENIES Samsung's request
Apple's
requcst to stay resolution
resol ution of Apple
's ongoing royalties motion.
motion,

o ro
Q
"

==

[2
12

IJ 0

[3
13

therc may be some over
overlapping
lapping issues that are relevant to both a permanent injunction
The fact that there

=~

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Fi rst, as explained
exp lained above, the Court does not find Samsung'
Samsung 'ss jurisdictiona
jurisdictionall question close.
First,

[4
14

ongo ing royalties does not divest this Court of
o f ju
jurisdiction.
risdiction. Samsung has not persuaded the
and ongoing

..,Q
~;:::
~
c

[S
15

Court that there is a substantial risk of ''having
" having the same issues before two courts
couris simultaneously?'
simultaneously"

..,en-s
"''''

[6
16

1986· 3) because
bccause the pending appeal involves
invo lves the propriety of an injunction
injun ction under eBay
(ECF No. 1986-3)

=

[7
17

v. MercExchallge.
MercExchange. LLC,
lLC, 547 U.S. 388 (2006), not the merits or calculation
calculati on of ongoing
Inc. v.

[8
18

royalties.

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[9
19

C ircu it has indicated that ongoing
ongoi ng royalties must be resolved prior to
10
Second, the Federal Circuit

20

entry of final judgment.
enlry
judgmellt. Last year, in Robert
Roberl Bosch, LLC v.
y. Pylon
Py lon Manufacturing
Mallltjacturillg Corp.
Corp.,, the

21

Federal
judgment before adjudicating
Fedcral Circuit held tthat
hat a district court can enter
entcr a final appealable
appealablcjudgment

22

ra il within the scope
seope or
o r an «accounting"
" accountin g" under§
under § l292(c)(2).
1292(c)(2), 719 F.3d
F ,3d
damages because damages fall

23

1305, 1308 (Fed. Cir. 20 13) (en bane). However, in a prior nonprecedential
nonprecedcntiu! opinion,
op in ion, the Federal
Federal

24

Circuit stated
ongo ing royalty is not the same
samc as an accounting
accou nting for damages'.' and must
Slated that "[a]n
" [aJn ongoing

25
2S

therefore
resolved
lved before entry
entry-of
of final judgment: "We
" We agree with Warsaw that even assuming
there rare be reso

26

wou ld give this court jurisdiction over a claim that is ' final except fo r an
art accounting'
account ing'
Rule 54(b) would

27

wi thin the
(he meaning
mcaning of28 U.S.C. § 1292(c)(2),
I 292(c)(2), file
the case is not
nOf 'final' because the dislriel
district court has
within

28

not
rlol yet determined ongoing royalties.''
royallies." Warsaw, 5!5
515 F. App'x
App'x: at 882 (emphasis
(emphas is added); see
J'ee also
12
Case No.: 5:
5:12·CV
12-CV·00630.LHK
·oo630-LHK
ORDER GRANTING IN PA
PART
RT APPLE'S
APPLE' S MOTION fOR
FOR ONGOING ROYAL
IWYALTI
TIES
ES

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Case: 15-1171

Document: 40

Page: 99

se5:12-cv-00630-LHK
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Hynix Semiconductor Inc. v. Rambus
Ramblls Inc., 609 F. Supp.
Sllpp. 2d 951, 987 (N.D. Cal. 2009) (noting
(not ing that a

2

request for ongoing
ongo ing royalty may preclude fina
tinall jUdgment).
judgment), Apple and Samsung
Sam sung concur that

3

Warsaw,
Warsaw , and not Bosch, applies here. See ECF No. 200 l1 at 9 (Apple:
(Apple: ''a
"a stay will leave any appeal

4

in limbo");
l i mbo")~ ECf
ECF No.
No . 2015-2 at 3 (Samsung:
(SamslIng: "'' Warsaw
If'arsaw ... found that
thai ongoing
ongoin g royalties
roya lti es under§
under § 283

5

do not fall
fal l within the
t he fin
finality
ality exception under§
under § 1292(c)(2)"). Therefore, stayingthis
staying this issue as

6

Samsung
Sams ung proposes would preclude
preclude. entry
ent ry of fifina/judgment
na l judgment and
a nd prevent the parties from appealing

7

any remaining
Apple .s5
rem ai nin g issues other than denial of
o f a permanent
pe rmanent injunction for Apple.

8

9

Samsung
Sams un g argues that the Court should postpone resolution
resol ution of
o f ongoing
ongoi ng royalties
roya lties for the same
reasons that
th at it postponed calculation of supplemental damages and prejudgment interest. See ECF

,.

10

No. 1986-3 at lII.
l . In its post-verdict
post-verd ict motion for juc!gment
judgment as a matter
matte r of law,
luw, Apple sought

E

II

supplemental
for post-verdict in fringement, as wel
welll as prejudgment interest on the jury'
jury'ss
supplemental damages tor

=:.=.
Q
=:.=
t<:l

12

da1
nages award. The Court
d] that an award of
damages
Courl "agree[
"agree[d]
o f supplemental
supplement al damages is necessary here,"

..._

13

idence of actual postverdict
but found
fou nd it "appropriate to delay the consideration
cons ideration of ev
evidence
postvcrdi ct sales and

14

calculation of su
supplemental
ppl emental damages un
untitill after
afte1· the comp
complet
letion
ion of the appea
appeall in
in this cao:;e."
case." ECF
Ecr

15

No. 1963 at 18-19. Likewise,
Likew ise. the Court "declinef
" declinerd]
dl Apple's
i\pp le's request that the
t he Court calculate
ca lculate and

"'~
", tt:
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~ 0
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0
,<;:
,,=
;Z

16

award prejudgment interest
in te rest at tl1is
thi s time
t ime before
befo re any appeal
appeal is resolved."
resolved." Id.
ld. at 24. The Court was

= £"
;:J
;:>£

17

able to postpone those calculations because they do not preclude
abJe
precl_ude final judgment. However,
However. as

"

18

explained above, ongoing royalties must be addressed before entry of
o ffinaljudgment
final judgment and appea
appeall of
of

[9
19

any
flny remaining
rema ining issues.
issues_

.~

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<8

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20

Samsung
itigations--//P Engine,
A OL 11U':-',
lrtc..". , Case No.
2; 11 Salll sung also identifies
iden t ifies two other
olher Ilitigations-liP
Ertg ill!!, Inc;.
1t,C. v.
v. AOL
No.2:
6:07-cv-00354~JDL
6:07
-cv -00354 ~JDL

21
21

cv-5
12 (E.D. Va.
Va.),
nternet Advertising Corp.
cv-5l2
), and Creative IInternet
CUI'l}. v. Yahoo!
Yahoo! Inc., No.

22

(E.D.
CE.O. Tex.)- where
w here the parties litigated ongoing royalties,
royal ties, but subsequent
subsequ ent Federal
Federa l Circuit
C ircuit decisions

23

on the underlying
merits
of those cases rendered
I 986-3 at
underl ying me
rits of
rcnde red ongoing
ongo ing royalties moot. See ECf
EC r No. 1986-3

24

II 1-13.
I - 13 . However, Samsung's
Sams ung' s argument
a rgument that resolution
resolUl ion of Apple's ongoing royalties motion can be

25

26
27

28

5

The
permanent injunction
T he Court observes that Apple has tried to expedite the pending permanent
Sec Apple's Opp'n to Samsung's
Sarns ung's Mot. for a 30-0ay
30-Day Extension
Extens ion (ECF No. 58), Apple, Inc.
Inc.
appeal. See
v. Samsung Elecs
Elecs Co., No. 14-1802
14- 1802 (Fed.
(Fed . Cir. Oct.
O ct. 24, 2014). Fl!J'ther
Further deJaying
delaying entry
e ntry of ·ffin
inal
aJ
judgment here could
coul d prompt two separate appeals regarding
regard in g denial of a permanent injunction and
Apple' s ongoing
all other issues,
iss ues, which could be inefficient and favors
favo rs prompt resolution
reso lution of Apple's
royalties motion.
13
Case
Cllse No.:
No.: 5:12-CV-00630-LHK
5: 12-CV-00630-LHK
ORDER GRANTING IN
fN PART APPLE' S MOTION FOR ONGOING ROY
ROYALTIES
ALTIES

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Case: 15-1171

Document: 40

Page: 100

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1

stayed ignores Warsaw's instruction that ongoing royalties must be adjudicated prior to a full

2

appeal.

)3

4

For the foregoing reasons, the Court disagrees with Samsung's
Samsung ls procedural and jurisdictional
jurisdi ctional
objections to Apple's motion
r)lot ion and denies
dC'nics Samsung's
Sam sung' s request to slay
stay resolt.Jtion
rt:.so lutioll of tJ1is
lh is motion.

5

B.

Apflle's
Apllle's Entitlement
E ntitlem ent to Ongoing Royalties

6

The Court turns to
\0 the parties' second set of disputes-whether
dispu tes-whether Apple is entitled to ongoing

7

royalties for
ana lysis of the proper amount
fo r any continuing infringement. This issue precedes any analysis

i8

of ongoing
ongo ing royalties, which the Court addt·esses
addresses in a separate section below.
below.

9

Apple
App
le and Samsung
Samsu ng disagree about the legal standards for
fo r determining entitlement to

10

ongoing
p CI' se to ongoing
ongoin g royalties:
roya lties: "ln
" In the absence of
o f an
ongo ing royalties. Apple insists that it is entitled per

IIIJ

injunction,
. .''" ECF
inj uncti on, a patentee
pat entee is entitled
entit led to receive ongoing
ongo ing royalties . . ..
Ee)': No. 1958 at 1.
I . Apple

12

fu
rther states Ihat
that permanent injl.mctions
further
injunctions and ongoing royalties share the same statutory basis

I)
13

(§ 283), but claims that " [d]ifferent
relief:
Iype of
ofre
li cf: Georgia~Pac!fic
Georgia~Pac ific for

ldJi fTerent legal standards apply to each type

Vi
....
~ ~
Q
.~
Q.~

14

an ongoing
ECf No. 2001 at 4-5.
4· 5. On the other
on goi ng royalty and eBay for a permanent injunction." ECF

~E
~
E

IIS
5

tirst time in its Sur-Reply that
thaI "Georgia-Pac[flc
~ 'Geo rgia-Pac if;c is a test for
Sam sung argues for the first
hand, Samsung

.

16

determining the amount of a royalty as legal damages, Jtot
"ot whether a plaintiff
pla intifT is entitled to the

17

No . 2050
205 0 at 3. According to Sam sung, the fourfourequitable remedy of
o[ an ongoing royalty." ECF No.

18
18

factor eDay
eBay test
tcst for injunctive relief
relie f is also
a lso the standard for determining entitlement to ongoing
ongo ing

19

royalties,
court's equitable discretion." ld.
ld.
roya lties, and "the test for entitlement is based on the CQurt's

."E

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20
20

The pparties'
f1l1ies' arguments conflate the.
the standards
s tt'1l1dt'1rd ~ for determining entitlement
~lItille",efll to ongoing

21
2
1

royalties as opposed to the amount of
of any such royalties.
royaJties. Apple
App le claims
c lai ms that Georgia-Pacific is the

22

"legal standard ..
ongo ing royalty.''
royalty. " However, Georgia-Pacific addresses detet'mination
determ ination of
. , . for an ongoing

23

the amount of a reasonable royalty through a hypothetical negotiation, not whether a patentee is

24

entitled to an ongoing
ongo ing royalty
royallY under
under§§ 283. On the other hand
hand,, Samsung characterizes e/3ay
eBay as

25
2S

holding
well-established' and
hold ing that the four-facl!)r
four-factpr test for permanent injunctions "is the ' well~cstablished'

26

' traditional'
any equitable
d. at 3 (emphasis
eBay,
equitabLe relief"
relief " lJd
(emphasi s added). This overextends eBay,
traditiona l' test for any

27

which addressed permanent injunctions, not ongoing
ongo ing royalties.
royalties. See,
See, e.g.,
e.g. , 547 U.S . at 393 (referring

28

to "traditiona
'ltraditionall equitable pr
principles
for a permanent irrjunction"
i'?illnction"
inci pleS in deciding respondent's motion /or
14
Case No.:
No.; 5: 12-CV-00630-LHK
12·CV-00630-LHK
ORD8R
ORD~R GRANTING JN
IN PART APPLE'S
APPLE'S MOTION
MOTtON FOR
POR ONGOING ROYALTIES

A16

Case: 15-1171

Document: 40

Page: 101

se5:12-cv-00630-LHK
se5: 12-cv-00630- LHK Document2075 'SEAL
*SEALED*
ED'

Filed: 03/06/2015

Filedll/25/14
Filedlll25114 Page15 of 36

(emphasis added).
added)). Samsung
to
SamslIng cites
ci tes no cases that apply the four-factor
fOUT factor permanent injunction test lO
8

2

ongoing
ongoin g roya
royalties.
lties. Indeed, it is unclear how the Court
Cou rt could apply the second eBay factorfaclor~·''that
'that

3

remedi
es available
remedies
ava ilable at law, such as monetary damages, are inadequate
inadequ ate to compensate for that

4

injury''-to
inj ury"-la an
8n award of ongoing royalties.
royal ties . !d.
Id. at 391.
39 1.

5



E
(lj

1:
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"

u

Ul ...
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of

Federal Circuit
Ci rcuit has instructed that entitlement to ongoing royalties is a matter of
The Federal

6

discretion for the district court, focusing
focusin g on whether the patentee has received
rece ived compensation
compensation for
for

7

continuing
infringement.
fringement. Contra,ry
Contrary to Apple's argument
argurnenllhat
that it is entitled per se
5e to ongoing
cont inui ng: in

8

di strict court "can
" can exercise its discretion to
roya lties, the Federal
Federal Circuit has plainly
pla inly stated that a district
royalties,

9

conclude lila!
that no forward-looking
fo rward-looking relief is appropriate in the
[he circumstances."
circumstances.') Whitserve,
Whilserve, 694 FJd
F.3d

10

at 335;
5; see also Presidio Components,
Components. Inc. v.
v. Am.
Am. Tech. Ceramics Corp. , 702 Fr .3d 13
1355 I.
1, 1363 (Fed.
(Fed.

1I II

Cir. 20 12) ("This
("Thi s coul't
court reviews the
tile district court's
cou rt' s decision to impose an ongoing royalty, in light

12

of its denial of
discretion."). In Paice,
Paice, the Federal
or
oraa permanent injunction, for abuse of
oIdiscretion.").
Pcderal Circuit
CifCLLit

I13J

explained that "{u}nder
"[u}nder some circumstances, awarding
award ing an ongoing royalty for
fo r patent infringement

14
14

in lieu of an injunction nwy
may be appropriate,''
app ropriate," and that
th at such a remedy should not be
he provided "as a

-.!l v
oo.c
"'~
"Ct:
410
v 0

IS

d at 1314-15
matter of course whenever a permanent injunction is not imposed."
imposed. " 504 FJ
P.3d
13 14-1 5

16
16

(emphases added); see
.fee also Bard, 670 F.3d at 1178
11 78 (cit
(citing
ing ;cf.).
idol.

"1:: Q)
v

17

....
00"
(.!..,
"-

18

Pederal Circuit has indicated
ind icated that a prevailing
prevai ling patentee should receive compensation
injuncti on, the Federal
injunction,

19
19

tbr
fo r any continuing infringement. See Telcordia
Telcord ia Techs .. Inc.
inc. v.
v. Cisco Sys.,
Sys .. Inc.
IlIc.,, 612 F.3d
r.3d 1365,

20

1379 (Feel.
an ongoing
(" An awanl
awarLl of
ofan
ungu in g royally
ruyalLy i~
i~ apprupriatt:
Hppruprialc be~ausc
be"au!S1,; the recoro
rt:l,;urLl supports
!!upports
(Fed . Cir. 2010) ("An

21

district court's finding
the distl'ict
fin ding that Telcord
Telcordia
ia has not been compensated for
fo r Cisco's
Cisco ' s continuing

22

infringement."). Because Apple could file piecemeal
agai nst Samsung for fbtllrc
future
p iecemea l complaints
comp laints against

23

infringemem,
endless
less succession of
infringement, awarding ongoing royalties
roya lties at this stage may avoid "an end

24

lawsuits presenting the same issue." Lemley,
Leml ey, supra, at 697.
697 . Accordingly,
Accord ingly, the Federal Circuit has

25
25

repeatedly approved the practice of granting
gr anting ongoing royalties
royal ties to compensate a patentee for

26

continuing
Amado. 517
5 17 F.3d
F.3 d at 1362; Active
ACliveVideo,
Video, 694
cont inui ng infringement.
in fr ingement. See Paice, 504 F.3d at 1316; Amado,

27

P.Jd
F.3d at 1343; Bard, 1170
670 F.3d
r .3d at 1193. Multiple district
di strict courts have followed Paice and awarded

28
28

ongoing royalties in lieu
licu of
of an injunction.
inj unction. See, e.g., Telcordia
Tclcordia Techs. v.
v. Cisco Sys.,
Sys.) No. 04-876,

,,;-=.-::: ZZ"

~i:
::>-5

While a patentee does not automatically receive
rece ive ongoi.ng
ongoin g royalties
royaltics in lieu of a permanent

15
Case No.: 5:12-CV-00630-LHK
5: 12·CY-00630-LH K
ORDER GRANTING
GRANTJNG fN
IN PART APPLE'S
APPLE' S MOTION FOR ONGOING ROYAL
ROY ALTIES
TIES
ORDER

A17

Case: 15-1171

Document: 40

Page: 102

se5:12-cv-00630-LHK
*SEALED*
se5l2-cv-00630·LHK Document2075
Documenl2075 ·SEALED'

2014 U.S. Dist. LEXIS 5l076,at
20 14) (awarding ongoi ng roya
royalties);
lties);
5 1076, at *18 (D. Del. Apr. 14,
14,20

2

Carnegie Mellon
Mel/on Univ,
Univ. v.
v. Marvell Tech.
Tech. Grp.,
Grp .. Ltd,
Ltd. , No.
No . 09-290,2014
09-290, 20 14 U.S. Dist. LEXIS 43042, at

3

*124
... 124 (W.O.
(W.o. Pa.
ra. Mar. 31,
31 , 2014) (same); Depuy SYl'llhcs
Synthes Prods.,
Prods .. LLC v.
\I, Globus Med:,
Med, Inc.,
inc., No. 11-

4

652,
2014): Mondis, 2012
2012U.S.
U.S. Dist.
Di s!.
65 2, 2014
20 14 U.S.
U.S . Dist. LEXIS
LEX IS 61450, at *24 (D. Del. Mar. 28, 2014);

5

LEXIS
LEX IS 60004, at *22-24.
*22-24 .

royalties,
part ies' additional
additi onal arguments regarding Apple's
Apple ' s entitlement
en titlement to
roya lties, the Court
Cou rt turns to the parties'

8

ongoing royalties under the present circumstances.
ci rcumstances.

10

t: ,s
t:tE
:=:.::
:;1:"=

o ·
ot3
to
-c 'o
•t:
.-. . ..1)'0_

<.it)
u..._

patentee's
's entitlement to
10 ongoing
ongo ing
Havi ng addressed the standard for determining a patentee
Having

7

9

E

Filedll/25/14
Filedl l/25/14 Page16 of 36

l

6

.~
.S

Filed: 03/06/2015

I.
I.

Double Recovery

Samsung's first
firs,t argument is that Apple improperly seeks double
do uble recovery for certain

ll
II

infringing sales because Apple
App le is already entitled to supplemental damages for
fo r post-verdict

12

infringement. See RCF
ECF No. 1986-3 at 13; Ec
ECFr No. 2050 at I,
I. "Generally,
"Genera lly, the double recovery of

13
13

damages is impermissible.''
impermiss ib le. " Aero Prods.lnt'l,
Prods. Int 'I, Inc. v. lntex
II/tex Recreation Corp"
Cmp., 466 F.3d
r .3d 1000, 1017
10 17
(Fed. Cic.
Cir. 2006).

.~

..~
~

J::
.b

14

(1:3

....

15

....

Q.)

~,o
6
~
II s::E
E.
r:n.S:::.
~ .~

fn
post-verdict
le sought "rs]upplementaJ
ct' motion for judgment as a matter of law, App
Apple
"rs]upplt::mcntal
10 its posi-verdi

"'~
-ct:
'"Ot

16

damages through judgment."
Ecr No. 1897-3 at ii. Noting that Apple wanted supplemental
jud gment." ECF

:::::
::: z;z:
= "Q.)
::J..S
::>£
,

17
17

damages "through
dale of
o f judgment for
fo r infringing sales not considered by the jury," this
th is Court
Coun
';through the date

"-

18

agreed that "an award of
o f supplemental
su pplemental damages is necessary here, as there are
arc sales for which the

19

ju ry did
d id not make an
an award, because they occurred aafter
fter the jury
j ury reached Its
its verdict." ECF No.
jury

Q.)
~

0o

=

'0""

(.J.,

20

J1963
963 at 17-18.
17- 18. Thus, App
Apple
le has sought
w ughl and
ami ubtaim:d
ublaim:u entitlement
t:olillemt:nl lu s upplemental
upplt:roe!llal uamages
rJamages

21

beginning the day after the jury's
j ury 's verdict through the date of final judgment, i.n
in an amount to be

22

determined after
resolution
lu tion of any appeals.
appea ls.
aller reso

23

In seeking ongoing royalties,
royalties. Apple initially sought compensation tor
Jor infringing prod ucts

24

"that are
on or after the date of this
thi s [Proposed]
[ProposcdJ Order."
Order." ECF
Eer' No. I1959.
959. However, after
After
arc sold
so ld on

25

Samsung rai sed the poss
possibility
ibility of double
doub le recovery,
recovery. Applcchanged
Apple changed positions
positi ons and now "requests
" requests that

26

royalties
lties start from the date of the
lhe denial of
oflne
the permanent injunction,
inju nction, and Apple will
such ongoing roya

27

accept this
0. Apple claims
thi s remedy in lieu of supplemental damages."
damages." ECF
ECF No. 200 IJ at I10.
claim s that

28

un
under
der this amended request, ''there
"there will
wi ll be no double-counting."
doub le-counting." !d.
Id.

16
Case No.: 5:12-CV-00630-LHK
5: 12-CV -00630-LJ-IK
ORDER GRANTING JN
IN PART
PART APPLE'S
APPLE'S MOTION FOR
FO R ONGOING ROYAL
ROY ALTIES

A18

Case: 15-1171

Document: 40

Page: 103

se5:12-cv-00630-LHK
se5:l2-cv-00630-LHK Document2075 *SEALED*
'SEALED'

Filed: 03/06/2015
Filedll/25/14
Filedl1!25/l4 Page17 of 36

In light of Apple's shifting positions,
posi tions, the Court concludes that
thai Apple may recover any
2

appropriate ongoihg
ongoing royalties only
on ly after entry of
o f final judgment, and supplemental damages for any

3

post-verdict, prejudgment infringement.
in fr ingement. In its Reply in support of
o f ongoing royalties, Apple

4

changed course and now seeks ongoing royalties starting on
o n August 27,2014
27. 2014 (the date the Court

5

denied a permanent injunction), waiving supplemental
supp lemental damages after that date. However, at
al

6

Apple 's
' s request,
request , the Court has al ready awarded supplemental
supplementa l damages through the anticipated

7

entry of fina
fi nall judgment. Having invited the Court
Courl to
lo grant
gram this remedy over Samsung's
Sam sung's objection,

8

Apple
may not arbitrari ly choose new dates for its remedies. See Pegram 1'.
Applemay
v. Herdrieh,
Herdrich, 530 U.S.

9

211 , 227 n.8
n.g (2000) ("Judicial
("J udicial estoppel generally prevents a party
parly from prevailing
prevailin g in one phase of a

10

case on an argument
argu ment and then relying on a contradictory argument to prevail in another phase.n).
phase.'').

c

IIII

Accordingly, Apple may recover supplemental
ofthe
the verdict
supplementa l damages for the period between entry of

Q
~
Q"

::;:.=
;;1:'=

1
122

and entry of lin
judgment, and any ongoing royalties on
ly for infringement after entry of fin
al
fin a Il judgment.
only
final

1:j'o
tJ 0

13
J3

j ud
udgment.
gment. This obviates
obv iates any concern over double recovery.

."02E"
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15
16

ECF
sung' s primary argument is lack of notice. Samsung
BeE No. 1986-3 at 14. Sam
Sa111sung'
Sam sung claims that

17

"Apple
si lent about its intention
intent ion lo
to file an alternative motion
moti on for injunctive relief,"
relief," which
" Apple remained silent

a
u.,
&

18

prevented adequate discovery
post"judgment ci
rcumstances" necessary to assess
di scovery into "the likely post-judgment
circumstances"

19

ongoing royalties. ld.
Id. Samsung also insinuates
in sinuates that Apple's goal "'' is not recompense
recompen se for genuine

20

injury, but
her to prejudice Samsung."
bUL rat
rather
Samsung. " !d.
Id.
iujury,

.0
~0

--ell ....
c:
E

.;:

2.

Notice

Samsung
Sam sung next asserts that "equity weighs heavily against
against a grant of an ongoing
ongo ing royalty."

-I).)

~ofj
;;;>-5

"

21

Sarnsung's
Samsung's arguments merely repeat its waiver arguments under
underthc
the rubric of
of"equity."
"equity. " For
For

22

the reasons
of
I'easons explained above, the Court rejects Samsung'
Samsung'ss arguments regarding waiver and lack or

23

notice. Samsung's speculative
speCUlative allegations regarding .t\pple)s
Apple's motives do not affect Apple' s

24

entitlement to remedies.
remed ies.

25
26

3.

,Judicial
Judicial Resources

The parties argue abol.lt
about whether imposing ongoing royalties
royallies woulc.l
woul~ waste or conserve

27

judicial resources. These arguments boil down to two issues: (I) whether there is any continuing
conli nuing

28

infringement of
'721,
1, and '647 Patents, and (2) whether Apple can seek ongoing roya
royalties
lties
o f the'
the ' 172, '72

17
Case No.:
No.; 5: 12-CV-00630-LHK
12-CV-00630-LI IK
ORDER
QRDERGRANTING
GRANTING IN PART APPLE'S MOTION FOR ONGOrNG
ONGOING ROYALTIES
RO YA LTIES

A19

Case: 15-1171

Document: 40

Page: 104

se5:12-cv-00630-LHK
se5:12-cv-00630LHK Document2075 *SEALED*
' SEALED'

Filed: 03/06/2015
Filedll/25/14
Filedll/25/l4 PagelS
Page18 of 36

for
devices
fo r Samsung
Sams ung products "not
" not more than
than colorably
co lorab ly ddifferene•
ifferen t" from the dev
ices that
thai the
lhe jjury
ury found to
2

infringe.
infri nge.
a.

3

Samsungg claims
SamslIn
clainl s that
that there is no need for continuing
continu ing remedies because it no longer infringes
infri nges

44

5

ECFP No.
any of the ' 172, '72
' 7211,, and '647 Patents.
Patents. See
Se~ EC
No. 1986-3
\ 986-3 at 15.
15 . According to Sam sung, 11" [n]o
[n,1 o

6

Samsung
si nce 2012
201 2 has even been accused of
o f infringing
infri ng ing the '172
' 172 or '72
' 72 1
Sam su ng product released since

7

patents,"
" Sa msung long ago designed around these patents." ECF
Ecr No,
No. 1986-3
\986-3 at 15. As to
paten ts," and "Samstmg

8

the ' 647 Patent,
"post-verd ict sales of the accused products in this
thi s case
Patent. Samsung represents that "post-verdict

9

have already
a lready ended,"
cnded," and thallhe
thaLthe only version
vt:rsion ofthe
o r the Galaxy S lli
111 product on sale "incorporate[s]
" incorporate[sJ

10
~


t:
~
.: <2

Continuing
Continuin g Infringement
Infringement

different
diffe
rent cocle"
code" than the relevant infringing source code.
code . ld
ld.
In
In support of
o f these asserrjons,
assert ions, Samsung
Sarn su ng submits
submi ts multiple
mUltip le declarations.
declarati ons. Corey Kerstetter,

]IIJ

0"
=c.;
UU
u...._.

=:.=
=·;;;

12

Vice President of Business Planning at Satnsung
Telecommunications
unications America ("STA"),
(" STA"), avers that
th at
Samsung Telecomm

~
ti
o
" 0
'5
.2
E.~

I)
13

STA has stopped importing
im porting into the United
Uni ted States the Admire, Galaxy Nexus, Galaxy Note, Galaxy
Ga laxy

.c

14

S II,
11, Galaxy S II Epic
Epi c 4G Touch, Galaxy SIJ
SII Skyrocket, and Stratosphere accused products. ECF

r.n~
~O
~E
- E

15
15

No. 2015-8
docs not represent that
thnt STA
ST A has stopped selling
se ll ing
20 15-8 ("Kerstetter
(" Kerstetter Decl.")
DecL") 1 3. Kerstetter does

16

thes-e
these products. However, Kerstetter does represent that STA bas
has stopped selling
se ll ing the
th e Galaxy
Ga laxy Note

17

I[
ll

18
18

Samsung
Sam su ng also
a lso submits declarations from Juhu
Juhuii Lee and Sungwoo Cho,
C ho, both Samsung engineers,

19

Sam sung has changed
chahged the
t he source code for tthe
he accused Browser and Messenger
who slate that Samsung

20
20

applications, respecti
applicatjons,
respectively,
ve ly, in any remaining Galaxy
Ga laxy S liT
III products. ECF
I3cr Nos.
Nos . 20
2015I 5~ 11
11 ("
(HLee
Lee

21
21

Dec!."),
20155-1I2 ("Cho
(''Cho Dec!.").
DecJ.") . Finally,
Finall y_, Sam
Sa rnsung
sung relies
re lies on a new declaration
declaration from its expert
ex pert for
Decl."), 201

22
22

' 647 Patent, Dr.
Dr. Kevin Jeffay,
JefTay, who opines
o pines based on the Lee and Cho
C hu Declarations
Dcclarai ion:s that the
the '647

23

current versions of the
Ihe Browser and Messenger applications
appli cations in the Ga laxy
la.xy S JII
ill products do not

24

infringe asserted claim
cla im 9 oftne
o f the '647
' 647 Patent. ECF
EC F No. 2015
201 5--10
10 (''Jeffay
("Je ffay Dec!.")
Decl .") 11,]39,
~~ 39, 45, 52.
52 .

.~.;:,
.~
Q .~
Q.
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oo::
Y:l-5

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1:
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0

~

25

and certain
certai n Galaxy
Ga laxy S Ilf
II I models,
mode ls, though those pproducts
rodu ct~ may have
ha ve "''retail
retai l availability.''
availab ility." ld.
ld. ~[,14-5
~, 4-5..

ln
In response, Apple
App le contends that Samsung's
Samsung' s representations are insufficient
insuffi cicnt to demonstrate

26

noninfriogemcnt,
particul arly regarding the '647
' 647 Patent. See ECF
EC F No.
No . 2001
2 00 I at 12-13.
12-13 . For
noninfri llgement. particularly

27

ex
ample, Apple faults Samsung
Sams ung for not guaranteeing that the accused
example,
acc-used source code is no longer

28
28

Samsung products currently
current ly on the market
market. ECF No.
No, 22046-3
046~3 at 2.
2 . Apple also
present in any Samsung

'

18
Case No,:
No.: S:
5:12-CV-00630-LHK
12·CV-OOG30-LHK
ORDER GRANTTNG
ROYALTIES
GRANTING rN
IN PART APPLE'S MOTION
MO'nON FOR ONGOING ROYA
LTIES

A20

Case: 15-1171

Document: 40

Page: 105

se5:12-cv-00630-LHK
'SEALED'
se5:12-cV-00630-LHK Document2075 *SEALED*

Filed: 03/06/2015
Filed11/25/14 Page19 of 36
Filedllf25f14

submits a declaration
declaratioll from its damages expett,
expcl1 , Dr. Christopher Vellturo,
Veiliuro, who claims
cla ims (based on
2

th
ird-party investigations) that retai lers are
third-party
arc still offering the.
the Galaxy S HI
III and Galaxy
Ga laxy Note
Note II. ECF

3

No. 1985-4 (''Vellturo
Ded") ,,
,~ 9-10.
9-10 . Generally, Apple
App le asserts that "''Samsung
Sam sung has not
nol removed
(" Vellturo Decl.")

4

the patented features
infrin gement.
reatures entirely," but
bllt offers no
nO specific
spec ific evidence to prove continuing infringement.

5

ECF
Ecr No. 2046-3 at 2.
2.

6

Apple does not
nol ask the Court to determine at Ihis
this point
po int whethet·
whether Samsung
Samsun g continues to

77

infr inge. See BCF
infringe.
ECF No. 2046-3 at 2. Moreover, given the limited record regarding
regard ing any post-verdict

8

infringement
the Court declines to do so for purposes of this
thi s motion. Regardless, if
infi'ingement by Samsung, lhe

9

Samsung is correct that
thaI it no longer infringes
in fr inges with
wi th respect
res pect to the adjudicated products, that fact

10

does not foreclose
Ib reclose ongoing
ongo ing royalties.
royalties. If Samsung
Samslln g no longer imports or sells
se lls any
any of the adjudicated
adjud icated


E

IIII

products,
Irom thai
that
prod ucts, then it does not need to pay any ongoi ng royalties and suffers no hardship from

1:
t: ¢2
S
=;.::

= :..=
0 «$
o
·

12

uu
UU
..... ......

Morcovcr, as Ihis
remedy. Moreover,
this Court previously
prev iolls ly noted in connection with evaluating a permanent
perm anent

·-'i:--.. .-·-~.....tl.
...........
.-"'

l3
13

injunction, the
lhe absence of current infringement
infringemem does not fo
foreclose
reclose future infringement:
in fringement : ''The
"The fact

....

14

that Samsung
Sam sung may have stopped sell
selling
ing infringing products for now says nothing about what

,~D
Q
~~
!!ti
.5II t"

15

Samsung may choose to do in the future.''
Samsu11g Elecs. Co., 909 F. Supp. 2d
future!' Apple, Inc.
II/C. v. Samsllng

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0

16

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., : Z
Z
~
"
u
;:J.:;
'='-5

l11147,
47, lI 161 (N.D.
(N. D. Cal. 20
2012),
12). aff'd in part, 735 F.3d
F.3 d 1352 (Fed.
(Fed. Cir,
Cir. 2013)
20 13) (footnote om
omitted).
itted).

=

17

Whi
While
le Apple could resort to filing new lawsuits
lawsu its lo
to address any continuing
co ntinuing infringement, see
~'e e Aspex

Lll..

18

Eyewear,
Inc. v. Marchon
Ma/"chon Eyewear,lnc.,
Eyewear, inc., 672 F.3d
F.3 d 1335,
133 5, 1344 (Fed. Cir. 20 12), ongoing royalties
roya lties
Eyewear. Inc,

19

may reduce
tme litigation.
red uce unnecessary fu
future
litigation . Thus, Samsung's assertions that it no longer infringes
in fringes do

20

not
110\ prevent imposi
imposition
tio n of ongoi
ongoing
ng royalties.

. td
~

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"

0
0

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50•

""

2
211

b.

P
Products
r oducts ""not
not more
morc than colorably different"

22

In its proposed order, Apple seeks ongoing
ongo in g royalties
royalt ies "as lo
La products adjudicated
adjudi cated to infringe

23

the ' 647,
64 7, ''1I 72, and ''721
lorably different
721 patents,
plllents, respectively,
res pecti vely, and as to products not more than co
colorably

24

therefrom."
Samsu ng protests that thi
thiss proposed language is overly broad and will
wi ll
therefrom ." ECF No. 1959. Samsung

25

'(perpetuate
"perpetuate satellite litigation" about whether unaccused Samsung
Samsullg products are "colorably

26

6-17. Samsung
different"
Sams ung claims
cl aims
di(ferent" from the accused infringing products. See ECF No. 1986-3 at I16-17.

27

that Apple has initiated
Commi ssion
initiared costly enforcement pr0cced
proceed ings at the International Trade Commission

28
28

against other
obtaining exclusion
c:'<clusion orders against certain produ
products.
cts. !d.
{d.
Other competitors
co mpeti tors after
afte r obLaining
19
Case No.: 5: 12-CV-00630-LHK
12-CV-OOG30-LHK
ORDER GRANTING IN PART APPLE'S MOTION 1I0H
POR ONGOING ROYALTieS

A21

Case: 15-1171

Document: 40

Page: 106

se5:12-cv-00630-LHK
seS :12-cv-00630-LHK Document2075 *SEALED*
"'SEALED*

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Samsung's
Samsun g' s concerns are
arc premature. In the injunction context, this Cotut
Court has already
2

<In ot more than colorably
co lorab ly different" provision
provi sion is standard in injunctions.
inj unctions. ECF No.
observed that the "not

3

38 , The Federal Circuit
C ircuit has explained and applied
appli ed this
thi s standard for
fo r contempt proceedings
1954 at 38.

44

Corp., 646 F.3d 869, 882 (Fed.
regarding injunctJons.
TiVu Inc.
Inc , v.
v. EchoStar Corp"
( Fed . Cir.
C ir. 20 11)
1 I) (en
injunctions . See TiVo

5

(" Instead of focusing
bane) C'lnstead
focu sing solely
so lel y on infringement, the contempt analysis must focus ini
initially
tially on

6

the differences between the features relied upon to establish
establi sh infringement and the modified features

7

oflhe
of
the newly accused products."). Several distri
district
ct courts have used this
th is language when imposing
imposi ng

8

ongoing royalties
royalties.. For example,
examp le, in Bianco v.
v. Globus
Globw,' Medical, Inc.,
Inc., Federal Circuit
Circuit' Judge
Judge William

9

(si ttin g by designation)
des ignatio n) ordered ongoing
Bryson (sitting
ongo ing royalties for trade secret
sec ret misappropriation,
mi sappropriati on, noting

10

payme nts on future sales of those three products implicitly
that "[a]h
" [a]n order basing
bas ing ongoing royalty payments

II
II

t1\at are not co
colora
lorably
bly different
d ifferent fro
from
m those products." No.2: 12-CV-00147extends to any products that

=:..::;
=:..::

12

WCD,
wen, 20 14 U.S. Dist.
Disl. LEXJS
LEXIS 89777,
897 77, at *36-37 (E.D.
(E D. Tex. July l,
1,2014);
20 14); see also VirnetX
VimelX Inc.
Inc, v.

1:i
~6
0
"A:
'1: U
0_

13

Apple Inc., No.6:
No. 6: 13-CY-211,
13-CV-2 Il, 20
2014
14 U.S. Dist.
Di sl. LEXTS
LEXIS 1590
159013,
13, at *16
* 16 (ED.
(E.D. Tex.
Tex . Mar. 6, 2014)

.....
~
Q
.~
Q .-

·-.-"' "

.-

14

( includ in g "products
(including
"product s not colorably
colorab ly different from
fro m those adjud
adjudicated
icated at trial") (rev
(rev'd
'd in part, 767

~c;
.!! 0

15

F.3d
FJ d 1308
1308 (Fed.
(Red . Cir.
C ir. 2014));
2014); Mondis,
Monelis, 2012 U.S. Dist.
Ois1. LEXJS
LEX IS 60004, at *7-8 (same); Creative,
CreaLive, 674

16

F. Supp
Supp.. 2d at 854.

=

00

17

&

18

refused to employ
empl oy the "not
" not colorably
co lorably different"
d ifferent" language
lan guage and lim ited ongoing
ongoi ng royalties to

19

20 13 WL 1136964, at *3 (E.D.
(ED. Tex.
Te.'I:. Mar.
Mar. 15,
J 5, 2013).
''adjudicated
"adjudicated models."
model s." No.
No. 6:09-CY-203,
6:09-CV-203, 2013

20

There,
least 25 unadjudicated
Therc , the plaintiff
plail1tiff argued that "at
"al Icast
unadj udicatcd but not 'colorably different'
diffcrcllt' phones

211
2

s hould be considered in the ongoing
should
ongo ing royalty rate analysis,"
ana lysis," and that "this number
num ber could increase"

22

after discovery.
ld. at *2. The
"elusive
di scov ery. fd
T hc district court decided not to include this
th is "elusi
ve target" in the

23

filingg a separate action involving these
ongoing royal
royalty
"w ithout prejudice to Fractus filin
ly analysis, but "without

24

prod
ucts." Jd. While the Fractus court exercised its discretion to decline
products."
declin e to adjudicate products

25
25

th at were "not
" not colorably
colorab ly different," as noted above, most other courts have adjudicated
adj udicated "not
that

26

ff could
colorably
Moreov er, the
thc Fractus
Praclus court recognized that the plainti
plaint iff
colorab ly different"
d ifferent" products. Moreover,

27

simply fifile
le !lew
new lawsu
lawsuits
its to target new lnfi·inglng
infringi ng products. Similarly,
Simil arly. Apple
App leeould
cou ld fifillee new

28

Samsung for future infringement.
infd ngement. Samsung
Samsun g does not address the likelihood
likelih ood that
that
lawsuits against Samstmg

.••..,
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Samsung cites Fractus,
Fractus. SA.
S.A . v. Samsung Electronics
Electrunics Co.
Co, as
a ~ an example
example· where a court

20
Case No.:
No.: 5:
5! 12-CV-00630-LHK
12-CV-00630-LHK
ORDER
PART
ONGOING
OR DER GRANTING IN PA
RT APPLE'S
APPLE ' S MOTION FOR ONGOI
NG ROYALTIES
RO YALTIES

A22

Case: 15-1171

Document: 40

Page: 107

se5:12-cv-00630-LHK Document2075 '*SEAlED*
SEALED'

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Filedll/25/14
Filedl l /25/14 Page21 of 36

new enforcement lawsuits by Apple wou ld require
requ ire the "further
"filrther motion
mOl ion practiceJ
practi ce, discovery and

22
3

. ctl
~

Q

t: <.E?
$"
=;.::;
=;.=

expert disputes" that Samsung decries here,
here. ECF No. 1986-3
1986·3 at 17-18.
17·1 8.

Samsung also argues
argt1es lhal
that Apple's
Apple 's proposed language for
fo r ongoing royalties is "far
" far broader

4

even than what it proposed for its
jts permanent
permanen t injunction"
inj unction" because Apple tried to enjoin
enjo in only
on ly

5

"features," not "products."
{7. In its proposed permanent injunction, Apple targeted
"prod ucts. " /d.
Id. at 17.

6

"software
"softwa re or code capable of implementing any Infringing
In fr inging Feature, and/or any feature not more

7

than colorably
co lorably different
diITerent therefrom."
therefrom, " ECF No. 1895-4.
1895-4 . This Court
Cou rt noted
nOled that
thal Apple's proposed

8

injunction
inj unction was relatively
re latively narrow because it "targets
;'targets only
on ly specific
spec ific features,
fea tures, not entire products."

9

No. 1954
[954 at 38. Such narrowing was appropriate because Apple sought to
t'O enjoin a variety of
of
ECF No.

10

activities such as ''develop
ing, designing,
imp lement ing any
"developing,
desi gning. [or)
[or] testing" source code "capable of implementing

IIII

lnfr
lnfri.nging
inging Feature." ECF No. 1895-4.
1895-4 .

12

Here, Apple seeks ongoing royalties
roya lt ies for "''products
prouucts not more than colorably
co lorably different

13

therefrom." ECF No. 1959. Apple does
docs not t'espond
respond to Samsung's
Samsung' s objection, but Apple indicates
ind icates

·-"' ...l=

14

that it wants royalties for "products with the software found to infringe or software that is not more

,S;::
eo
_
u
~ ....
"

15

than colorab
colorably
ly different
d ifferent therc
therefrom."
ti·oJ11." ECF No. 200 lI at 14.
14. The
T he Court is not convinced by

16

Samsung
SaJ11sung' s assertion that Apple's request is "far
" far broader" th,m
than the proposed permanent injunction.

17

The Federal Circu it explained that the "not colorably different''
diflerent" inquiry focuses on "the features
featu res

18
18

relied
future
re lied upon to establish
estab lish infringement.''
in fri ngemen t. " TiVo,
TWo , 646 F.3d
P.3 d at 882.
882 . Thus, any analysis
anal ysis of
offuhlre

19

Samsung
Samsllllg product
productss would
wou ld necessarily focus
foclis on the relevant infringing features. The
T he jury heard

20

wnsiutmtbl~;:
~ull~jr.k:nibk

2l
21

jury's
ju ry's apport
apportionment
ionment of the value of those
lhose features to the adjudicated products. Applying ongoing
ongoi ng

22

royalties
roya lties by product instead of feature is reasonable under these circumstances.

o
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23
24

1

eviut:n(;t: rt:gan.ling
evir.lell\;e
rt:gtirr.l ing tht:
lILt: valut:
value ufthe
uflhe infringing
in rringing feature:;,
fCi:l lun::s, su Ll1c
tile vcn.lict
vcrr.lil;l reflects
reilccts lhe
tht:

5,
5.

The Jury Verdict

Finally,
jury·'ss damages verdi
verdict
Finall y, Samsung
Sam sung argues
argllt~s that the
thejury
ct reflects
re flects a lump
lum p sum, which
whkh means

25

that Apple
"pple has received a one-time
one-t ime compensation for
lor all
a[) past and fllture
future infringement. See ECF

26

No. 1986-3 at 18. Fu
Furthermore,
rt hermore, Samsung contends that if
if the jury
j ury verdict is ambiguous,
ambiguou s, it is

27

imposs ible to award ongoing royalties. See id. at 18-19;
impossible
18- 19; ECF
EC F No. 20 15-2 at 1.

28
2
211
Case No.: 5:
5~ 12-CV-00630-LHK
12-CV..Q0630-LHK

ORDER GRANTING
TIES
GRflNTING TN
IN PART APPLE'S MOTJON
MOTION POR ONGOING ROYAL
ROYALTIES

A23

Case: 15-1171

Document: 40

Page: 108

Filed: 03/06/2015

se5: 12-cv-00630-LHK
12-cv-00630 -LHK Document2075
Oocllme nt2075 *SEALEDX
*5 EALED* Filedll/25/14
Filed11/25/14 Page22
Page2 2 of 36

Samsung
Sall1 sung has already raised
rai sed and lost this
th is argument. Jn
In opposing Apple's earlier
earl ier request for
fo r

2

s upp lementa l damages, Samsung argued that tthe
supplemental
he ju
jury
ry must have awarded a lump
lu mp sum instead of a

3J

per-unit royalty. The
T he Court rejected this theory because the
th e verdict contains no express statement
per-uhit

4

about whether the damages award encompasses future infringement, the
ict form
t he verd
verdict
fo rm chart
chan with

5

respect to the Galaxy
Ga laxy S II
" products referred
refe rred to sales
sal es up to the "Present,"
" Present." and Dr.
Dr. Chevalier
Cheva lier also

6

EC F No. 1963 at 19-22 (citing
presented a per-unit
per-unit reasonable royalty theory at trial. See ECF

77

Tefcordia,
Te/cordia, 6 12
' 2 F.Jd
F .3d at 1378, and Whitserve,
Wl/ifserve, 694 F.3d
F.Jd at 35
35-38).
-38), For these reasons, the Court
Coun

8

previously
prev iously concluded
conc luded that: "Because
" Because the record suggests it is pplausible
lau sible that the jury intended to

9

award Apple
App le damages on
only
ly for past
pas! infringing sales, the Court cannot conclude that the
thejury
jury

10

necessarily awarded a lump-sum
lum p-slim award intended to cover past and
Dnd future infringernene'
infringement." Jd.
Jd. at 22.

·a
••.....E

II

Accordingly,
ly. the Court awarded sttpplemental
supplem ental damages.
damages. Par
For the same reasons, the Court
According

=:..=•til

1
12
2

d isagrees with
disagrees
w ith Samsung'
Samsung ' s interpretation of the jury verdict.
verd ict.

1:) 0

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13

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14

til

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·-·c.....'t '......-.....pUo-"
~0
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6

6.

Summary ofEntitletnent
ofEntiUcmcnt to Ongoing Uoyalties
Royalties

Apple has not received
rece ived compensation for any continuing infr
in fr ingement by Samsung. See

- o
B
~E
E

1
15
5

Telcordia,
.3d at 1379 (stating
(statin g that "an ongoing
ongo ing royalty
roya lty is appropriate" because the patentee
Tel
cordia, 612 FFJd

U')
'€
"'~

-glio
..~. ;z
."'
z
= 0
0
);;l
,S
"' -5,_

16

~'has
"has

=

17

an increased chance of duplicative
duplica!ive litigation and successive lawsuits.
lawsuits . Exercising
Exerc ising its equitable

18

di scretion~
scretion,

19

of final
However, the Court restricts any ongoing royalties to the period after entry affi
na l judgment

20

because Apple has already obtained entitlement to supplemental damages for post-verdict, pre-

21
21

judgment infringement.

"

0

IJ..
"-

not been compensated for ....
. . continuing
co ntinu ing infringement").
infringement" ). Without ongoing royalties, there is

the Court tinds
fi nds that Apple
App le should receive ongoing
ongo in g royalties
roya lti es under these circumstances.

22

C.

23

Court now addresses
add resses the proper calculation
calculat ion of ongoing
ongoi ng royalties. The Federal Circuit
Circu it
The Cout1

Amount of Ongoing Royalties
R oyaltics

24
2"

has recommended that "the district
d istrict court may wish to allow the parties to negotiate
nego[iate a license
li cense

25

6

26
27
28
28

Samsung claims
cla ims that when the jury recalculated
reca lculated damages for the Galaxy S II products under
the
EC F No. L
1884
884 at 9), the jury only
on ly reallocated damages
dmnuges without
wit hout changing
chang ing the
the'' 172 Patent (see ECF
totall award, wh ich indicates
2015-2
15-2 at I. The
T he Court
Cou rt already rejected
tota
ind icates a lump sum. See ECF No. 20
this speculative
(see "feF
ECr No. 1963
1963 at 21
2 1 n.
n.7).
7). The jury
ju ry might have made a mistake in its
specu lative argument
argume nt(see
first
fi rst calcu lation, and then appl
applied
ied a per-uni
per-un itt rate
ratc when recalculating
recalc ulat ing damages. Indeed, as shown in
thejmy's updated verdict re
reflects
llccts a nearly unifonn
uniform per-unit royalty lor
tor aallll
the charts below, thejllry's
adjudicated
adjud icated products
prod ucts under the ' 172 Patent.
22
Case No.: 5:
5; 12-CV-00630-LHK

ORDER GRANTING IN Pr\R'J'
PART APPLE'
APP1.,E' S MOTION FOR
FOIt ONGOING .ROYALTIES
ROYALTIES

A24

Case: 15-1171

Document: 40

Page: 109

se5:12-cv-00630-LHK Document2075
Documenl2075 *SEALED*
'SEALED'

Filed: 03/06/2015
Filedll/25/14 Page23 of 36

amongst themselves regarding future use
lise of a patented invention before imposing an ongoing
ongo ing
2

6; see also
16-17
1316;
a/so id. at 13
13\617 (Rader, J., concurring)
conclirrin g) (suggesting that
royalty." Paice,
I'aice, 504 F.3d
F.3d at 131

3

negotiation be aa requiretnent).
requirement). District courts have followed this recommendation by ordering

4

private negotiations. E.g., Hynix,
Slipp. 2d at 987.
Jiynix, 609 F. Supp.

5

Here, these parties have been negotiating
20 I 0, or well over four
negot iating on and off since August 2010,

6

years. See Tr.
T r. at
al 1046: 16-21. The Court ha
hass presided over three jjury
ury trials between these parties

77

(in the above-captioned case ancl
and in Case No. 11
11-CY
-CV-01846)
-01846) and ordered private negotiations
negotiation s

8

After
!lcr the May 5, 201
2014
4 jury verdict, the parties conducted further
fu rther negotiations,
negOliations, but
mu lti ple times. A
multiple

9

to no avail.
10
ava il. See ECF
ECF No.
No, 1894. In August 2014,
20 14, Apple and Samsung
SamsLLllg settled all of
o f their
thei r worldwide
worldw ide

10

patent disputes, except their U.S. litigations.
litigations . See Vellturo
Vetlturo Dec
Decl.
I. 1
~ 46. Furthermore, the briefs here

11
II

demonstrate that tl1e
the parties still vigorously dispute ongoing royalties
roya lties and disagree on almost all

:;:..:::
=
:.:::
0"'

12

issues. Therefore, the
Ihe parties'
parties ' behavior indicates that any order to negotiate
negoti ate ongoing royalties is

CJ ~
0

-.-·-

l3
13

likely to be futile and only
offinaljudgment.
ol1 ly delay the entry of
final judgment. The Court
Comt therefore determines

.~ ~
b
.~
Q .~
~
.~

14

ongoing royalty rates from the briefing.

"'a

15
IS

.~

E
t::.£
1: <2


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UU
uu•
" 0
•t:
' i:; u
ti

."

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Cl)"€""

"'~
.
"t

16

between a reasonable
reasonab le royalty for pre-verdict
prc.:verdict infringement and damages for post~verdict
post-verdict

'"
c Z•

17

infringement," and that "the calculus is markedly different because different economic factors are
arc

18

1
involved." Amado, 517
517 F.3d
f..3d at
al 1361-62. A district
d istrict court may consider '"additional
additional evidence of

19
19

changes in
in the
the parties' bargaining
bargain ing positions
posi tions and other economic circumstances that may be of value
va lue

20

in determining
delcnn in ing an appropriate ongoing royalty." Active
ActiveVideo,
Video, 694 P.Jd
r .3d nt
at 1343.
1J 4J. " [l')he
[T]hc Federal
Fcdcra!

211
2

Circuit has not delineated specific
fo r comts
cOLirts to assess in an ongoing royalty
specifIC economic factors for

22

context." Telcordict,
IS 51076,
51 076, at **5.
5. However,
U.S . Dist. LEX
LEXIS
However, in Bard,
Bard. the Federal Circuit
Telcordia, 2014 U.S.

23

approved
fic facto
factors:
<Ipprovcd certain case-speci
case-specific
rs: "The court also
al so considered other economic factors,

24

includ
ing that Bard and Gore compete
surg ical grafts, Gore profits highly
high ly
incl uding
compeLe directly with respect to surgical

25

from its infringing products,
prod ucts, Gore potentially faces stiffer losses that include a permanent

26

inj unction
uhction if Bard prevails in a second lawsuit,
lawsu it, and Bard seeks adequate compensation and Jacks
lacks

27
27

incentive to accept a below-market deal.
r.3d at 1193.
dea l,"" 670 F.3d

~Q
~
0

As noted above,
Federall Circuit has held that " [t]here is a fundamental difference ..••
..
above. the Federa

-!I)

'i• zc0
.~

:;,,s
~.s
....
0"
u.

28
23
Case No.;
No.: 5: 12-CV
12-CV·-0063
00630-LHK
O"LHK
· ORDER
ORDER GRANTtNG
GRANT!NG IN PART APPLE.'
A I)PLE'S
S MOTION FOR ONGO
ONGOING
ING ROYALTIES
1

A25

Case: 15-1171

Document: 40

Page: 110

se5:12-cv-00630-LHK
se5 :12-cv-00630-LHK Document2075
Oocumenl207 5 *SEALED*
'SEALEO'

Filed: 03/06/2015

Filedll/25/14 Page24 of 36

Courts have useJ
used the Georgla-l'acific
GeorgilJ-l'acific factors
fac tors (0
to evaluate a post-verdict hypothetical
22

negotiation for ongoing royalties. As Judge Bryson stated, "the
''the courts have often used the
~he 50so-

3

called Georgia-Pacific factors in assessing how the changed circumstances
c ircumstances would produce a

4

royalty
post-verd ict licensin
licensingg negotiation that was drffcrent
different from the royalty
royalt)'
royally rate in a hypothetical post-verdict

5

hypothet ical licens
rate the j ury selected based on a hypothetical
licensing
ing negotiation
negoti ation at the outset of
o f infringement."

6

Bianco.
Bianco, 2014 U.S. Dlst.
Di st. LEX}S
LEXIS 89777, at *8
"'8 (Bryson.
(Bryson, J.). Accordingly, to assess ongoing

7

royalties,
roya lties, the Court
Court' considers the Jaw
law regardi
regarding
ng reasonable royalties under Ge()rgia~PC/c{fic,
Georgia~Pac!fic. See

88

Georgia-Poe,
Corp .•
., 31
8 F. Supp. lll6,
Georgia~P{/c , Corp. v,
v. U.S.
u.s. Plywood Corp
318
I I 16, 1120 (S.O.N.Y.
(S.O,N .Y. 1970).

9
10
10
c<i

••E

1::
t: ~
<8

l.
t.

Rates
Rates in the Jury Verdict

Generally, the jury's
evaluating
ongo ing royalties.
j ury's damages award is a starting point for
for evaluat
ing ongoing

11
II

See Bard,
Bard. 670 F.3d al
at 1193 (affirming
(affi rming ongoing
ongo ing royalty that "'should
'"should be higher than the I10%
0%

12
12

reasonable
reasonab le royalty rate
rate'' set by thejury");
the jury"); Blanco~
Blanco, 2014
20 14 U.S
U.S.. Dist.
Di st. LEXIS 89777, at *7 (noting that

13
I3

the Eastern
of'l'exas
''consistently looked to the jury's verdict "5
as the'
starting point' for
Eu!>tern District of
Texas has "consiste,nlly
the 'starting

.~
. ~ !;:;
b
Q .~
~

14
14

determining
damages''); Telcordia,
Telcordia, 2014 U.S. Dist.
Disl. LEXIS 51076, at *13
*13 C'[C]ourts
("(C]OUTts
deterrnining postjudgment
postjudgment damages");

ec:
.!! ,_
c

15

frequently
frequent ly impose a post-verdict
post-verdict ongoi
ongo ing
ng royalty
royally rate that is higher than the reasonable royalty

16

foun
infi·ingement.''). Here, tthe
he parties argue about
abOll( what royalty rates the
thejjury
ury
foundd at trial for past infringement.").

17

might have jntended
i{Jund
intended to award Apple. The jury awarded aggregate damages for each product found

18

to infringe each
eac h patent, but did not specify any per~un
per-unit
i t rate. ECF No. 1884 at 9.
9. In interpreting an
an

19

ambiguous
ambigu ous verdict tbrm,
fo rm, this
(his Court has ''broad
" broad discretion"
discret ion" to determ
determine
ine if"the
if" the verdict figure

20

represented past infringement as
IlS wel l us
as ongoing infringement.''
infringcmcnt. lI Telcordia, 6612
12 F.3d at
lit 1378;
1378 ; see

21

also Whitserve,
Wllilserve, 694 F.3d at 35-38.
)5 ~3 8.

::s
:;1:'=
:.:::

••

0

c<i

UU
uu

~
t;
, 'o
0
·;:
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ij
.....
- .-_

-.

,o
.0
~

'

oo...s"
"'oS
"C''C.,_ d)

~
0 0

.-<;:: Z
:::

=•

::

ll)

:>oS
::J.S
,
60

~
~

22

Apple
App
le seeks per-unit
peHlllit royalty rates of$2.75 for the
th e '647
' 647 Patent, $1.41 for the '721 Patent,
Palent,

23

and $2.30 for the ' 172 Patent, for both adjudicated
not more than colorably
"not
co lorably
adj udicated products and all H

24

different" products. ECF No.
No . 1959. To arrive at
al these rates, Dr.
Dr. Yellturo
Ve llturo reverse engineers the

25

jury's verdict.
verd ict. Vellturo
Vcl lturo Dec!. 'ii~1 13-22.
1 3~22. Dr. Yellturo
Vcllturo attempts to
10 expla
explain
in the verdict
verd ict by dividing the

26

jury's
jury 's award for each product by his own proposed reasonable
reasonab le royalties
roya lties to determine what

27

percentage of
hiss pl'Oposal
proposal the jjury
ury applied
applit:d . Ild.,
d. ~[ 16.
16. Dr. Vellturo concludes: "(
"(I)
I) the jury reached
Dfhi

28

per-uni t royalties for each patent, (2) the jury calculated
agreement on per-unit
calcu l ~tted the ratio between its rates

24
Case No.: 5: 12-CV-00630-LH
12· CV·OQ630.LHK
K

ORDER GRANTING
GRANTlI'\G IN PART APPLE'S MOTION FOR ONGOING ROYALTIES
ROY AL TIES

A26

Confidential
Redacted
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File dll/25/14 Page25 of 36

and my royalty
ratios
roya lly rates;
rales; (3) the jury applied
appl ied those rati
os to the reasonable royalty damages for each
2

product provided at PX222A 1.24, which was discussed during closing arguments; and (4) the jury
j ury

3

modified
modi fled the
the amount in the last line ('Stratosphere')
e Stratospherc') to obtain a round tolal
total damages figure
fi gure to be

4

included in the answer to question 9 on the Amended Final Verdict."
Verd ict." !d.
Id.

5S

Vellturo determines that the
thc jury awarded 22% of
o f his
hi s proposed royalties for the '647
' 647 Patent. /d.
Id.

6

,116.
~ 16. Based on this
th is ratio, Dr. Vellturo
Ve llturo mul1iplies
multi plies his original proposed per-unit royalty for the '647

7

Patent ($12.49)
($12,49) by 22% to reach a per-unit
pcr-unitrateoF$2.75.
rate of$2.75 . !d.,[
lei. I17.
7.

8
9

1 18. As
A s an example, Dr.
Dr,

Samsung interprets the verd ict differently. Dr.
Dr. Chevalier renews Samsung's argument that
the jury must have awarded a lump-sum
lu mp-sum royalty,
roya lty, not a per-unit
per-unit royalty-an
roya lty- an argument that this

10

Court has rejected. ECP
Ecr No. 2015-9
20 15-9 ("Chevalier
(''Chevalier Dec!.") 'mf
Ii 13-14.
13-1 4. Next, Dr.
Dr. Chevalier disagrees

E

11
II

with Dr. Vellturo's
Velltu ro's calculations from
fro m the jury
j ury verdict because they do not explain
explai n the actual
actuul

::s:.=

12

damages award. See rd.
id.

·-......"' ........._
·-,o....

13

Vcll turo ''ss fo rmula does not produce the
thejjttry's
(lry's award for Samsung's
Sam sung's Admire product:
Vellturo

.::!

t;t.8

0 Cd
uu
...........

(j o

~

10. For the '647 Paten4
Patent. for example, Dr,
Dr . Chevalier claims that Dr.

.... 0

~- ~

~t:

Cd ....

14
==
~

15

-0)

rJ':lJ::.

"'
t
Qlo

16
16

=4)
~-:5
...
0

17
17

J/[Dr ",U""o', P"']]l*[[ rI,um,,,

[[

%

from
!rom PX222A1
PX122AI

[(

=
= S7.:;07,1
S7. 507.l56,3l
:;6.31

18

!d.
/d.

19

Vellturo's
0;; see also
VelltllTo' s estimate
est im ate by $92,02l.69
$92 ,021.69 (or about 1.2%).
[.2%) . !d.~
[d. ~ 1IO
a/so id.
id. Ex. 2.

20
21

22
23
23

l

for' ]

chuuages tlgure
Ii,,,l" for
Admire
Adlllir~ 011
on '647
'6-'7 JMent
pu t~nt

= [ ( S2.7
51,7:'.'i luuit
ltLni! )/($
J/( $1!2.49/nuit
~ A9/\lnit J]*($34.096.1.39]
1]· [S34,096.139 J

~ z

LJ,..

i"'Y,,,,,«I

jmy agreed per
p,l' ]/ [ Dr. \'ellmro's J)er
unit
lI11it lOyalty
wyalry rnre
nue
unit royalty
rOYillty rate
nlle
[(
for '64
'6477 patent
pm ~nt
for
for '64
'64i7 patent
p;J t ~ll t

~j
~ 9.
9.

Dr. Chevalier
Cheval ier notes that the ju
jury
ry actually awarded $7,599,178,
£7,599,178 , which exceeds Dr.
Dr.

Although
jury verdict,
Al though Apple
App le''ss estimated per-unit
per-un it rates are
arc roughly
rough ly consistent with the
thcjury
verd ict, the
Court find
findss no basis for
fo r estimating the per-unit
per-1Jnit royalties as Apple suggests. The jury verdict and
Vellturu' s Exhibit
Exhib i13)
3) reflect
rc necl the following
foll owing
undisputed numbers of infringing units (shown in Dr. Vellturo's

per-unit rates for
fo r the adjudicated products:

24
25
2S
26
27
28
25
25
Case No.: 5: 12-CV-00630-LHK
12-CV·00630-LHK
ORDER GRANT
GRANTING
ING IN
fN PART APPLE'S MOTIO\l
MOTI0'-1 FOR
POR ONGOING ROYAL TIES

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2

3
4
5

6
7

8
9

10

11
II

:::.::::
=:.=

12
12

(So
...........
';:" u0

-~

....-."" .u_

13

See Vellturo
Vcllturo Decl. Ex. 3 (ECF No. 1985-7),
1985-7) , Instead of
of simply
simp ly dividing the damages award for
fo r

.~ .b
1::
~ .~
.!!!

14

.0
a
~E
:: E

each product by the number of
o f units as shown above, Dr. Vel
Vcllturo
lturo uses a more compli
complicated
cated

15
IS

th en multiplying the resulting ratio
divid ing the jury's award by his proposed award, and then
approach: dividing

"''
~
• t00

16

against
~ 17,, Dr.
aga in st his proposed per-unit rate. See Vellturo
Velltura Decl. ~117
Dr. Vellturo
VeUluro claims that it is

c .
=

17

inappropriate to divide
"resu lts in
div ide the damages for each product by the number of units because it ''results

18
18

per-unit rates that vary fo
forr each product."
product.." ld.
ld. 1,1 21.
21. He claims that this approach does not explain

19

the jury's
jury 's actions because "there is no reason
reasen to believe
be lieve tthat
hat the jury wouJd
would adopt a differel\t
different

20

royalty rate for each different
nation
d ifferent combi
comb inati
on of a patent and a product," and no witness or lawyer

2
211

told the jjury
d. ,122.
22. Dr.
Dr. Vellturo furth
further
er defends his
hi s approach
ury to calculate
cal cu late damages this way. Ild.

.~

E
1: <2
£
t:
O"'

uu
UU
4-o

<I)

!!
S d)o

CJ).J:

"'~
.,,"
;-: Z
z
.:-:::
Q.)

:;:J-G
"'-5
......
0"
0

[..1..,

"-

22

23
24

round" figures
fig ures for two of thc
the patents, which a lay jury
j ury would
wou ld more
because itil purportedly reflects ""round"
likely
apply.
likely,pp
ly. Id.
/d. ~ 17.
The Court fifinds
nds no basis for adopting Dr. Vel!
tum's more
Veltturo's
morc complicated
compl icated approach. As Dr.

25

Chevalier observesi
observes, Dr. Vellturo's
VeUturo's method does
docs not
nol produce the numbers that the jury actually
actua lly

26

awarded. Dr. Vellturo
Vellturo 's calculations rely on
on unsupported
unsu pported speculation as to
to how the
the jury computed

27

7211 Patent is
damages. For example, Dr. Vellt11ro
Velltura admits
admits that
thal his
hi s reverse-engineered rate for the ''72

28

26
Case No,;
No.: 5;
5; 12-CY-00630-LIIK
12-CV-00630·LHK
ORDER GRANTING IN PA
PART
RT APPLE'S
A PPL E' S MOTION
MOT ION FOR ONGOING ROYAL
ROYALTI
TIES
ES

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not a ""round"
round" figure, but speculates that this rate "may reflect a decision to approximate a rtumber
number

.,E

.~
s::::

.....

t:
t £o?
:;:..:::

;::~ ;.::'

Od
0 «l

uu
UU
-~
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~ 0

.- '"

.-'E- .-.~

" u
~ ~
"
.~
~
.~ ·-

rnC
~Cl

ee
l! E
.So
l! u

r;n..c:

2

that is seven-eighths
oftheroyalty
royalty rate I proposed."
proposed," !d.
ttl,
sevcn-cighths afthe

~

3J

7
grounds
mot ion for judgment as a matter of law, Apple
ground s for this guesswork.
gucsswork. Indeed, in briefing its motion

4

claimed that it was not
nol possible
possi ble to deconstruct the verdict becat1se
becau se ('[t]hejury
'Tt]hejury may have awarded a

5

lump sum, a running royalty,
Apple'ss lost profits, or a combination ofthese
orthese and/or other
royalty. some
so me of Apple'

6

theories," ECF No. 1918
theories."
191 S at 6 n.4. Furthermore, Dr. Vellturo
Vellturo''ss approach would apply the same

77

of any adjudicated
adj ud icated product for a giveh
given patent.
palent. In other words,
words. Dr. Yellhlro
Vellturo
fulure sale or
rate to each future

s8

would use a $2.7
LB, even though the
$2.755 rate under the '647
' 647 Patent for a future sale
sa le of the Galaxy S lll,

99

verdict reflects a lower actual rate of_
of-

17 & n.26. However, he provides
prov ides no

This approximation is unnecessary because the verdict

10

all average rate per patent across all
allows the Court to determine rates for each product, not just an

11
II

products.
slraight10 rward and reliable
re liab le way to determine perper"
prod uct s. Thus, the Court finds that the most straightforward

12

fo r the adjudicated products is to divide damages fo r each product by the number of
unit rates for

13

Par the adjudicated products, the Court
Courl uses these per-unit
pef"unit royalty rates as the starting point
po int
units. For

14

for ongoing
roya lties.
ongoi ng royalties.
adjudicated
For any products that are "''not
not more titan
than colorably
colorab ly different" from the adj
udicated products,

15

"'~
.,,
"''t:
'05

16

ined by dividing
the Court concludes that
Ihat the most appropriate rates are determ
determined
d ividing the total
tota l damages

o u
=

Q)

17
17

for each patent by the tota
totall number of
of infringing products for that patent. This calculation shows

0"
tJ....
W-

18

rale that the jury awarded fo
forr a given patent, across all adjudicated
adj udi cated products
the average per-unit
per-un it rate

19

fo
of each
forr that patent.
patent Thus,
T hus, these rates show what the jury awarded on average for infringement of

20

patent, which is a reasonable starting point
royalties fb
tbrr umldjudicaled
unadjudicated products that
po int for
fo r royahies
that are "not

21
21

than co lorably different." As shown in the tables
more than
tabl es above, these
these calculations
calcu lations produce rates of

22

-_

~
;:;:
.~ ;z;
;Z

;:J£
::::>-s
"-

the '172
IIIII for the'
172 Patent. -_

' 647 Patent,
_
for the '647
Patent. ~
for the '72
'7211 Patent, and "

23
24
25

Cou rt rejects Dr. VeUturo
Ve llturo's
's approach for
fo r the
However, the Court

reasons above.
above_

26
26
27

28

,
7

Dr. Vellturo assumes that the jury applied a11 percentage to the reasonable royalties he
proposed at trial. However, the jury's numbers are
arc also consistent with
wi th applying a multiple
mUltiple of Dr.
Chevalier's
royalties.
ties. See DX 453A.
45JA.
Cheva
lier's proposed reasonable royal
27
Case
elise No.: 5;12-CV-00630-GIIK
5:12-CV-00630"LH K
ORDER GRANTING IN PART APPLE'S MOTION FOR ONG01NG
ONGOING ROYAL TIES

A29

Case: 15-1171

Document: 40

Page: 114

se5:12-cv-00630-LHK
se5:12 -cv-00630-LHK Document2075 "*SEALED*
SEALED*

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Filedll/25/14
Filedll/2Sf14 Page28 of 36

Circumstances
Changed Circ
umstances

2

Having
ined starting points
ict, the Court next
I-laving determ
determined
poi nts for ongoing royalties
roya lties based on the verd
verdict,

3

considers any ''changes
"changes in the parties'
part ies' bargaining positions and other economic circumstances"
ci rcumstances" that

4

may warrant departure from
Video, 694 f.3d at 1343. The
from those rates.
rates . Active
ActiveVideo,
Th e original
o ri ginal hypothetical
hypothetica l

5

negotiations for the infringed patents would
wou ld have occurred in late
latc 20
2011.
l L See Vellturo
Vclltu ro Decl.
Dec!. ~ 29.

6

ln
es, courts have used a second hypothetical
In setting ongoing
ongo ing royalti
royalties,
hypothetica l negotiation following
follow ing the

7

verdict.
E.g. , Carneg;e
Carnegh1. Met/on,
AId/Oil, 20 14 U.S. Oi51.
Dist. LEXlS
LEXIS 43042, at*
at * 119 (evaluating
(evaluat ing "hypothetical
"hypothetical
verd
ict.'8 E,g.

8

negotiation" after verdict);
verdict) ; Depuy, 2014 U.S. Dist.
Di st. LEXIS 6614
1450,
50, at *24 n.8 (analyzing
(analyzin g "post" post'negoliutiotl"

9

verdi
ct hypothetical negotiation"),
verdict
negotiation"). Here, both parties' experts analyze various Georgia-Pacific

10

factors
f<letars th<~.t
that cmdd
cou ld affect the verdlcl
verdict rates. However,
However, Apple
App le does not seek
seck higher
hi ghe r rates: "to
Uta be

11
II

conservative, Apple only
onl y seeks ongoing royalties consistent
consisten t with the amounts awarded by the

12

jury."
jury." ECF No. 1985-3 at 2. Sam
Samssung
ung claims that the verdict rates
rales "should
"shou ld be adjusted downward

I13J

by 57 to 75 percent
pt!rcent to account for changes from 2011 to 2014."
20 14." ECF No. 2015-2 at2.
at 2.

.....
Q
Q ,~
.~

14

".,,"t"
'"

I15
5

substantial shift
shi ft. in the bargaining position of
oflhe
the parties"
parties" because
becau se it places the patentee in a

'Q ~
t

16

stronger negotiating position. Active
Ac!iveVideo,
Video, 694 F.3d
P.)d at 1342. ''Once
"Once a judgment of
of validity
valid ity and

:'c:c:: zu

17

infringement has been entered,
entered. however, the calculus
calculu s is markedly dlfferent
dilTcrent because different

18
18

economic factors are involved."
involved," Amado, 517 F.Jd
F.3d at 1362; see also Bard, 670 F
F.3d
.3d at 11 93

19

(quoting
(q uoting id,
id. and affirming ongoing
ongo ing royalty
roya lty rate
rale higher than jury's). Therefore,
T herefore, Apple
App le would
wou ld have a

20

strougc:r positiou
strouger
posi tiull iu
ill a post-verdict
post- verdict hypothetical
hypothet i,"al negotiation than
thall it djd
did before, which fav
favors
ors

21
21

relatively higher ongoing royalty rates.
mind,, the Court
ihe
rates. With this background in mind
Cou rt turns to the

22

disputed Georgia-Pacific
GeorgiCl-Pacific factors.
factors .

.,Q
~O
~c
!l
II ~
tl'.l .s::

~
u 0
;0:: Z

Q.)

.

;::J£
;J-E

......
0

r...,
~

As an initial mAtter,
matter, the Federal
Federal Circuit has counscleu
counseled that a liability verdict causes "a

23
24
25
26

27

28

Vcl lturo refers to a hypothetical
hypothetica l negotiation "''as
as of
o f summer
su mmer or fall2014."
fu1120 14, " VeHturo
Vellturo
Dr. Vcllturo
Decl.
Dec!. ~, 25. Dr.
Dr. Chevalier
Cheva lier assumes "late
" late 20
2014,"
14," but states that her analysis "is not sensitive to when
(n
in 20 14, after trial, the hypothetical
hypotheti ca l negotiation occurs.'•
occurs." Chevalier
C heva lier Decl.
oecl. ~ 16
16 &
& n.2 1. Neither
party's expert has identified
ideruHi ed any changed circumstances between "summer or fall
fa ll 2014"
20 14" and "lare
" late
20 14," or between !he
2014) and this Order, that would aflcct
affect
2014,"
the completion
co mpletion of briefing (October 15,
15.2014)
the
the result here.
28
Case No.: 5:12·CY-00630-LHK
5: 12-CV-00630-L HK

ORDER GRANTING IN PART APPLE'S MOTION fOR
ROYALTIES
FOR ONGOING RO
YA LTIES

A30

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Document: 40

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se S:12-cv-00630-LHK Document2075 'SEALED'
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Filedll/25/14 Page29
Page 2g of 36

Factor 5

Geotgia-Pac~fic
Georgia-Pacific

The experts first address factor 5: "The
"Th e commercial
commercial relationsh
relationship
ip between
between the licensor and

3

licensee, such as,
as: whether they are competitors in
in the same territory in the same line
li ne of business; or

4

whether
whet her they are
arc inventor and promoter."
promOler. " Georgia-Pacific,
Georgia-PaCljic, 318
3 18 F.
F. Supp.
Su pp. at
al 1120. Dr. Vellturo
Vel lturo

5

opines that changes in the smartphone market between
bel ween 201 1 and 2014
20 14 tend to support
su pport a higher

6

royalty. See Vellturo
Vcll turo Dec!.
De.c! .~,
~1 26-34. He cites data showing
show ing that total
total smartphones sold in the U.S.
U.S.

7

increased from 105 million in 201 1lto
to 137 million
mill ion in 2013.
20 13. ld.
Id. ,27.
27. He also claims that App
Apple
le and

8

S:::tmsung's
hipments
fro m 40% in 20 I111 to 70% in 20
2013
I 3,,
Samsung' s combined share of U.S.
U.S. smartphone
smartph one ~shi
pments rose from

9

and that Samsung's
Snmsung's share also rose from 20% to 30% over that time.
rime. Jd.

~ 29.

Dr. Vellturo further
furthe r

10

notes that Samsung
" grown more dominant"
dom inant" and pushed out other smartphone competitors,
Sarnsung has ''grown

11
11

intensifying competition with Apple. T
Id.
d.

12

particularly
successful. both as to units sold and profit
profits,
s, and therefore particularly harmed Apple.
particu
larly successful,

13
13

See id.
icJ. ~ 30. Overa
Overall,
ll , Dr.
Dr . Vellturo
Ve ll turo claims that the expand
expanding
ing market and increased competition
competit ion

14
14

would
high royalty.
wou ld favor a relatively high

~, 33-34.
~
33~34.

He also states that the Galaxy
Ga laxy S lll
II I was

u

rn ,_
~

Filed: 03/06/2015

.

~ .~
~Cl

;l
c
~c:
_ u
"

.s ~

.. "

(/)...C:.
V>~

15
1S

ln
presellted thi
thiss evidence
ev idence to the jury, so
In response,
response. Dr.
Dr. Chevalier argues that Apple al ready presented

"CCt!
~ 0

16

''there
meaningful change in the relative
relat ive competitiveness
com pet itiveness between Apple and Samsung."
Samsung,"
"there is no meaningful

1:1 <I)
:;:;J..C:.

17

Chevalier
Deel,!.~~ 2l.
2 1. Dr.
Dr, Chevalier
Che valier is correct
corrcct that
that Dr. Velltu
VeHturo
ro already ptesented
presented some of his
hi s cited
Cheva lier Dec

18

evidence.
At trial , Dr.
Dr, Vcll
Vcllturo
tt1ro relied on evidence arising after 2011
20 I I regarding
regard ing the parties'
ev idence. Attdal,

19

competitiveness.
T r. at 12
1213
13:20:20. 12 14:22 (referring to compet
competition
ition during
du ri ng period of
competiti veness. See Tr.

20
20

AugUS1201 l1 through the end of20 13"). In his
hi s current
cu rren t dcclurat
declaration,
ion, fur
rur data
infringement, "''Augllsl20l

21
21

regarding
total smartphone
smarlphone sales and the market share of all smattphone
smartphonc mant1
manu facturers,
racturers, Dr.
regord ing total

22

Vellturo simply refers to his pretrial
Ve llturo Dec!.,
Dec!. 27 & n.33,
pretrial supplemental expert report. See Vellturo

23

,~ 33 &
& nn. 42-43.
42·4 3. However, Dr.
Dr. Vellturo
Vcl ltu ro does
docs provide
prov ide the market share
shure data of all smartphone

24

manufacturers through the
information that was not before the jjury.
ury. Dr.
Dr.
lhe second quarter of2
01' 200 14, information

25

Vellturo gets this
ait ic les and blog posts dated a.
after
fter the trial. See id.
Ihis data fi·om
from online articles

26

nn
nn .35-3
.35 ~3 7 (citing
(c iLing http://www
http://www.patcn
.patentlyapple.com/patcntly-apple/20
tlynpple.com/patcntly-applc/20 14/08/samsung-temporarily14/08/sarnsung·tcmpornri ly.

27

beats-app
beats
~applle-in
e · in -us-smartphone-shi
~ lI s ~ sml.lrt ph one · ship
pments.httnl
m ents. h tm l

28

market research reports but do not prov ide the methodology or underly
fo r such reports,
underlyiing
ng data for

0
;:;:,""c :z
Z•

"' '5
'+-'

0"

w..

[.!..

~ 31 &
&

(A
(Aug.
ug. 6, 2014)).
2014)) . These new articles reference

29
Case No.:
No. : 5:
5: 12-CY
12-CV-00630-LHK
-0063D-LHK
ORDER GRANTING
i\L'T'JES
GRANTfNG IN
LN PART APPLE'S
APPLE' S MOTION FOR ONGOING
ONGO ING ROY I\L
'TIES

A31

Case: 15-1171

Document: 40

Page: 116

se5:12-cv-00630-LHK
*SEALED*
se5: 12-cv-00630-LHK Document2075 'SEALED'

Filed: 03/06/2015

Filedll/25/14 Page30 of 36

Accordingly, this
thi s factor weighs only
on ly slightly in favor of
or Apple.
22

Georgia-Pacific Factors 9, 10,
l O,lIud
and 11
11

b.

,.)
"'
>

Next, Apple's expert discusses factors
factors 9-1
9- 11I;; "9.
"9 . The uti
utility
lity and
Ilnd advantages of the patent

4

that had been used for working out similar results.
results .
property over the old modes or devices, if any, thaI'

5

10. The nature of the patented invention; the character of the commerc
commercial
ia l embodiment of it as

6

owned and produced by the licensor; and the benefits to those who have used the invention.

7

t11.
J. The extent to which the infringer has made use of
ofthc
the invention; and any evidence probative of

8

the value of that
thaI use."
usc." Georgia-Pacific, 318
3 18 F. Supp.
Supp. at 1120. Dr. Vcllturo
Vcllillro groups these factors

9

together and analyzes them with the assumption that Samsung continues to infringe the '647
' 64 7

10

Patent.
See Vellturo Dec.!.~
Decl. 39 ("Samsu11g
("Samsung has continued to sell the Galaxy S3 without
Paten\. See

cE
....

11
II

the '647
' 647 patent's technology.~').
tecllnology."). He claims that
th at under the "theory
" theory
implementi ng any alternative to tile
implementing

=:..::·
0 «$
o

12

of revealed preference" (which he previously invoked at trial,
trial , see Tr.
n . at 1250: l100-1251:
I 251: IIII),
),

--~
4-tJ 0

13

Samsung's
infringemelll demonstrates
demon strates that it values
va lues the patented features. See if/.
id.
Samsung' s continued
contin ued infringement

14

He also notes separate proceedings involving the '647
' 647 Patent: that asserted claim 9 was
wa s confirmed

15
15

during reexamination, and that
amrmed certain
certa in claim constructions in Apple,
that the Federal Circuit affirmed

-o'~0
. 0

16

Inc. v. MOlorola,
Motorola, Inc., 757 F.3d
F3d 1286 (Fed. Cir.
Cir . 2014).
20 14). See id.,
id. , 37. Dr. Vellturo also notes

c Q)

17

Samsung's
Sam sung ' s statements at trial that
thai Samsung could
cou ld easily design around the asserted patents. See id.

18

~~

.,
<13

t <2
~<.8

;;:..=

uu
UU

·-' uC ....t)

-.-·-

~

36.

1- (.)

,,!: !:::
..........
.,a
~Cl
<I)

...

~
Q .:::!
.~

"''''~c

" ""
r/}-E

ell ...

,,"
.,,;2:
:z

Q)
(J).:::C

,<;:::
Q

:;:J..C:

...
0"

~

"-

19

40-42.
Dr. Chevalier responds
respo nds with a single
sing le argument: to the
Ihe extent Samsung continues
contin ues to infringe,

20

Samsung
fo r reasons other than the value of
oflhe
the patented inventions.
invemions. See
Sam sung might choose to clo
do so for

21
21

Chevalier Dec!.~,
Decl .~' 22-26. As examples, she notes that Samsung might not want Apple to
10 dictate

22

the
of a competitor," citing
"raJcqll icscing to the
lhe demands ofa
ciling her
Ihe features
fealure s in their products and avoid "[ajcquicscing

23

own tr
trial
d.
ial testimony. Ild.

24

of the three disputed patents.
patenls.
infringes any ofthe

'125 & n.43.
n.4 3. As noted above, Samsung
Samsu ng also represents that it no longer

~ 25

25

The Court finds
find s Apple's
Ap ple's position more persuasive.
persuasive. As Dr.
Dr. Vellturo notes, ongoing royalties

26

would apply only ifSamsung
i rSnmsung continues
cont inues to infi·inge.
infringe, See Vcllturo
Vcliluro Decl. ~ 44. This Court previously

27

tll at ''Samsung's
"Samsung's witnesses repeatedly told
to ld the
th e jury
j ury that
tllal design-arounds
design~arounds wou
would
ld be simple or
noted that

2288

already exist." ECF No. 1954 at 36. Thus, thete
there is little
lin le reason for Samsung to continue any
30
Case No.: 5:12-CV-00630-LHK
5: 12-CY-006JO-LHK
ORDBR
ORDER GRANTING IN PART APPLE'S MOTION
MO'nON FOR ONGOING ROYAL TIES

A32

Confidential
Information Redacted
Document: 40 Page: 117 Filed: 03/06/2015

Case: 15-1171

se5:12-cv-00630-LHK Document2075
DocUment2075 *SEALED*
'SEALED'

Filedl1125/14
Filedll/25/14 Page31 of 36

in1'fjngement.
iniringement. Dr.
Dr. Chevalier'
Che va lier' s arguments about alternative motivations for
for continuing
co ntinuing infringement
infHngement
2
..,

3

.:l

are
a rc speculative and contrary to Samsung's
Sam sung 's repeated trial statements about the ease of designdes ignarounds.
a rounds. For these reasons, the Court finds
finds that these factors favor Apple
Apple..

4

ttl

5:::
E
....

t: tS
S

c.

Georgia-Pacific Factors 8 and l2
12

5

To reduce ongoing royalty
roya lty ra~es,
rates, Dr.
Dr. Chevalier appl
applies
ies factors 8 (''The
("The established

6

profitability
pro fitabi lity of
of the product
produ ct made under the patenf;
patent; its commercial success; and its
ils current
curren!

7

popu larity. 1")') and 12 (''The
pot·tion
profitt ot
ing price that may be customary in the
(" The porti
on of
o f the profi
or of the sell
selling

8

particu
particular
lar business or in comparable
com parable businesses to allow for the use
usc of the inventio
inventionn or a11alogous
analogous

9

inventions.") . Georgia-Pacific, 318
inventions.").
3 18 F. Supp.
Supp . at 1120.
1 120. Overall, Dr. Chevalier's opin
opinion
ion regard ing

10

these factors is that

II
11

wammt
warrant lower royalties.
royalti es.

• and thus

=
= :..::;
:..::.

12
12

..... '-'-

13

"critical"
"crit ical" for Samsung's
Samsung 's competition with Apple. See Chevalier Decl. ,,128-29.
1 28-29. Dr. Vellturo
Vcllturo told
to ld

.~~ !::
·.t:
Q .!!!
~

14

the jury that many U.S. consumers were expected to buy their
thei r first smartphone
smarlphone in 2012, and that

~c
~ 0

J5

Is the lime
time period where the competition between Samsung
Sam sung and Apple's about to intensify
"'"this
this is

16

because
units now are being launched
laun ched into the marketplace" because "the
"thc competition
becau se the accused uni1s

17

for tirsHime
fir st-time buyers is particularly important." Tr.
Tr. at 1234:9-1235:
1234:9-1 235 : l.
I. He also testified
testifi ed that "the

18

Fall of20
o rlO 11
II is an extremely impotiant
important time in this
thi s marketplace
mark.etplace because the
the market is growing very

19

fast for smartphohes
smartphone. " Id.
ld. at 1306:24-1307:
1306 : 24~1307: 14.
smnrtphones and a lot of people are buying their first smartphone."

20

Di·.
Dr. Vellturo
Vet lturo argued that ··ecosystem
"ecosystem effecrs
effects".. would drive up
lip damages for Apple
App lc because customers

21
21

tend
1308: 7-18.
18. According to Or.
Dr. Chevalier,
Cheva lier, Dr. Vellturo
Vetltu ro failed to
tcnd to show product loyalty.
loyalty. Id. at 1308:7·

22

account for the fact that this
thi s critica
cri ticall time
lime "has already passed by the time of
o faa hypothetical
hypotheticlll

23

negotiation in late
latc 20 14.''
14:' Chevalier
Chevali er Dec!.
Dec !. 1
~! 34. She claims
clai ms that the proportion of fi[irst-time
rst-time
negbliation

24

smartphone
s in ~e 2011
20 11 . See id.
id, ~ 32. She further claims that both
sman pho ne buyers has likely decreased since

25

parties'
part ies' smartphones

uU0Q uU.
ttl

~

0(,1 .0. .
....
'i::
'- u
(.)
~ .-

.-o-0"t
<l'l0
~Cl
~

...."

"

~ I!)
rJ:J.r.
Vl~
-

" ;z:
.~
:::
Z0

="
",oS
~-=
Cl

(!)

...
0

Dr.
Cheva lier claims
cla ims that Dr. Vellturo
VeJlturo previously opined
opin ed that
th nt the 2011-12
20 \ 1-1 2 time
timc frame
framc was
Or. Chevalier

~

I.L.
"-

26

. See
Sc-e id. ,, 36.

Samsung's arguments do not carry much weight. Dr.
Dr. Velltuto
Vellturo did not analyze
ana lyze these factors
Samstmg's

27

for
royallies, and his trial testimony did indicate
ind icate that
(hat capturing fifirst-lime
rst-time
tor pw·poses
purposes of ongoing royalties,

28

buyers in 201 1-1
2 was particularly
1- 12
particularl y important, which would have increased Apple's expected
31
Case No,; .5,
5:12-CV-00630-LHK
!2-CV ·00630-L HK
ORDER GRANTING IN
rN PART APPLE'S
APPLE'S MOTION
MOTIO\J FOR
FOR ONGOING ROYALTIES

A33

Confidential
Redacted
Case: 15-1171
Document: 40Information
Page: 118 Filed:
03/06/2015
se5:12-cv-00630-LHK Document2075
Documenl2075 *SEALED*
'SEALED'

Filedll/25/14
Fjledl1l25/14 Page32 of 36

royalties for
ll. However, Dr,
hat later
fo r the hypothetical
hypoth etical negotiation in 20
2011.
Dr , Velltmo
Velltu ro did not testify tthat
latcr

~

E

t:<E
t::::s:.;::;
<2
= :.=
o ·
8~
UU
..........
~~

·-·c.....
'0
s... ....
(.)
_
.-·-C .:':!....."
0~ 0

~ .-

<n ....

2

periods (including
competition.
post-verdiot time frame) would not also be critical to competit
ion . Rather,
(i ncluding tthe
ht: post-verdict

3

13'' was
he explained that "''August
August 2011
20 11 through the end of 20
2013"
wus a "particularly
" particu larly significant
sign ificant period''
period"

4

because
growth ." Tr.
Tr . at 12 13:20-1 214:10.
2 14: 1O. In
beca use the market was ''in
" in a profound state of change and growth."

5

turn, Dr. Chevalier identifies no evidence that competition has become less "critical"
"critical" followi
foll owi ng the

6

has already passed." Even if the proportion
verdict, or that the ''critical
"critical phase''
phase" 11"has
proporti on of first-time
fi rst-time

7

buyers has decreased, the absolute number of
o f such buyers may stilt
still be high
hi gh.. She claims that

8

However, she cites data
dala that she previously
prev ious ly presented
prcsented in

9

her pretrial
pretr ial expert reports. See Chevalier Decl.
Decl . ~, 36 & nn. 63, 64, 66; see also Tr. at 2424: J100-18
18

10
lO

(discussing
(d iscussing profitability
profita bility of Sam sung products). Thus, her argument is subject to the same criticism
cri ticism

11
II

Vellturo'ss market share evidence
ev idence aboveabove-that
that this data was already available
avai lable to
10
she leveled at Dr. Velltmo'

12
12

the jury and does not reflect any changed circumstances.
ci rcumstances.

13

~
~ .~

14

~
~
c
_~ c:
u
...

15

~

...,"
enD
~O

"
v}.:::
.....

Accordingly,
According ly, Dr. Chevalier's
Chevalier' s analysis offactors
o f fecto rs 8 and 12 provides little support for
reducing ongoing royalty rates. The Court
Courl finds
tinds that these
thcse factors arc roughly
tOL1ghly neutraL
ncutral.

d.

Georgia-Pacific
Geurgiu-.Pucijic Factor
Factor 6

II)

en.:.

]u ~0

16

=

17
17

products of the licensee;
licensee ; that
thaI. existing value
va lue of the invention to the licensor as a generator of sales

18

o rhi
, of
hiss non-patented items; and the extent of such derivative
dcrivati ve or
Or convoyed sales.''
sa les." Georgia-Pac{fic,
Georgia-Pacific,

19

318 F. Supp. at 1120.
1120, Dr. Chevalier applies the same arguments
argume~nts she raises
ra ises for factors 8 and 12,

20

targeting Dr. Vellturo·s
Vellturo's use of ecosystem effects. See Chevalier Decl.
Dec!. ~~'I! 37-38. She faults Dr.
Dr,

21

Vellturo for failing to account for a predicted decline in the proportion offirst-time
of first-time smartphone
smartphonc

22

ill 2014-15,
20 14-15 , which may reduce any ecosystem effects. See id.
buyers in

23

above regarding
regard ing factors 8 and 12, this
th is analysis
allalysis has limited persuasive
persuas ive value. While Dr. Vellturo
Vcllturo

24

thi s factor
did not address this
fac tor for
fo r purposes of ongoing
ongoi ng royalties, Dr. Chevalier
Cheva lier does not cite any new

25

evidence that
thai customer
cllstomer loyalty or other factors influencing
infl uencing ecosystem effects
effect s have changed in the
the

26

post-verdict time period. Due to
La th
thiiss lack
tack of
orcv
evidence
idcncc regarding changed circumstances,
circumslances,lhe
the Court
Cuurt

27

finds
fa ctor is roughly
rou ghty neutral.
nelltral.
find s that this factor

:t:: Z
:=Z
c II)
u
:;'oS
;:;:J -:5
...
0"
Ll..
w..

Factor 6 addresses: "The effect of selling
se ll ing the patented specialty in promoting sales of
of other

~

38. For the reasons
reasOnS stated

28

32
elise No.; 5:12-CV-00630-LHK
Case
5: 12-CV-00630-LHK
ORDER
ORDER GRANTI
GRANTING
NG tN
IN PART APPLE'S MOTION FOR ONGOING ROYALTIES
ROYAL TIES

A34

Case: 15-1171

Document: 40

Page: 119

se5:12-cv-00630-LHK Document2075 'SEALED'
*SEALED*

e.
c.

Filed: 03/06/2015
Fi
ledll/25/14 Page33 of 36
Filedll/25/14

Georgia-Pacific
Georgitl.PQci/ic Factors 1I a nd 4

2

Both experts discuss
d iscuss Apple 1'ss patent license agreements that have been executed post-

33

verdict. Dr.
Dr. Vellturo
Vc ll turo analyzes this under the rubric of factor 1:
I : "The royalties received by fhe
the

4

patentee for
rOf the licensing of
oflhe
the patent in suit,
su it. proving
prov ing or tending to prove an established royalty.''
roya lty."

5

Georgia-Pacific, 318
31 8 F.
F. Supp. at 1120.
1120. Dr.
Dr. Chevalier addresses this more generally under factor 4:

66

"The licensor's established policy and marketing program to
to maintain his patent monopoly by not

7

use the invention
licensing others to lise
invent ion or by granting licenses under special
specia l conditions designed to

8

preserve that monopoly." !d.
Jd. Both sides
sid es refer to two patent agreements: (I)
(1) Apple and Samsung's
Samsung 's

9

August 2014
20 14 "worldwide
" \-vorldwide stand-down," in which
wh ich the parties
panies settled all patent disputes
di sputes outside
outside the

10

United States, and (2) Apple's May 2014
20J4 agreement with Google and Motorola
Motoro la Mobility
Mobi lity to settle

.....~

E

II

all U.S. smartphone patent litigation. See Vellturo Dec!.,~
Decl . ' i 46-47; Chevalier Decl
Dec!.~~
. ~' 40-41 .

1:
t: <2
::; '-=

===

8UU
0
-~
't
o
·-'C......
....ti_
-.-

12

Dr. Vellturo
Vel lturo briefly states that "neither
" nei ther agreement is relevant" because they involve
invo lve

13

different circumstances, and "no values
.''
va lues were placed on any
an y specific intellectual property
property."

-.

14

Vellturo
Vel ltu ro Decl. ,1~,45
45 , 48.
48 . On the other hand, Dr. Chevalier claims
c laims that
that these two settlements

VJQ
.0
~ $:::
:::

15

"represent a distinct shift in App le's patent policy"
policy'' and "reflect
tensions between
"refl ect a lessening of
oflcnsions

"'1i"

16

competitors
'smartphone
martphone wars' as compared to the period from 2011 through trial and
competito rs in the 's

c u

17

suggest an increased willingness to reach agreements with
wi th competitors.''
competitors." Chevalier Dec!.
Dec!. ,1
'J42.

~

<;-.

"

0

}.c

(.)

·-." t:
Vl

,_

......
A
-~
0·-

.5 43'
I'Jl.I::.

't:l t::
1l<1.1 o0
~ z
.-::
Z

):;;)
;:;
"'-5
,
....
0
u..

"'

18

The Court finds
find s that these factors
facto rs are roughly neutral. The parties provide no information

19

about the terms of
the two agreements that
of thiss
ofthe
th at would enable comparisons to
fO the circumstances
ci rcum stances oflhi

20

case. For
Fur t:xample,
e-xampJe, if
i r thust:
thmic two
twu agrt:crnents
agreements addressed
lllhJn;:s.'S cJ litigations
Iitigaliolls that
thai had not
1101yet reached
rcached verdicts,

21

they may not reflect
reneet comparable situations.
situations. Both experts provide only conclusory
concl usory statements

22

set1 lement agreements. Or.
Dr. Chevalier
Chevalicr does not explain
ex plain how these agreements
regarding Apple's senlement

23

represent a "shift"
"sh ift" in comparison to Apple'
Apple'ss prior stances and does not compare these agreements

24

to Apple's
App le's earlier settlement
sett lement agreements with other companies.
companics. This lack of
of information
in fo rmati on renders

25

these factors rough
roughly
Iy neutral.
ncutral.

26
27
28

f.

Georgia-Pacific Factor
Fador 13

The last factor addressed is:
is : "The pmt
portion
ion aoffth
thee realizable profit that should be credited lO
10
the invention as distinguished fi·om
from non-patented elements, the manufacturing process, business
33
33
Case No.: 5:12-CV-00630-LHK
5: 12-CV-00630-LI-IK
ORDER GRANTING IN
fN PART APPLE'S MOTION
MOTION FOR
FOR ONGOING ROYALTIES
ROYALTIES

A35

Case: 15-1171

Document: 40

Page: 120

se5:12-cv-00630-LHK
se5;
12-cv-00630-L HK Document2075 'SEALED'
*SEALED*

Filed: 03/06/2015
Filedl1/25/14
Filedll/25/14 Page34 of 36

risks, or significant
signi ficant features or improvements added by the infringer."
in fringe r. " Georgia-Pac(fic,
Georgia-Pacific, 318
3 18 F.

.,E
C<j

tt: ..S
<2
::s
:=
O<>l
o=;..::;

uu
UU
Q

-

(.1 ~
0

.... 4...

u 0
·.t). . .,
.;:
s... U
...."' .....
....". .

."Jo.--.-

-.

~ .!::?
.~

_~ C
0

2

Supp. at 1120.
J 110 . Dr. Chevalier
Cheval ier stales
slaLes that the Ga laxy S 1II
111 has received upgrades to the And
Android
ro id

3

operating system,
system , with "dozens
"dozen s of new features" not covered by the asserted patents. Chevalier

4

Dec!.~~
Dec!.

5

grow with each software
so ftware update, the portion
po rtion of
o f the overall software
so fl ware functionality
fu nctionality covered by the

66

patents-at-issue
onl y decrease.''
decrease." ld.
Id.
patents-nt-i ssue can only

7

does not address any changes to the adjudicated
adjud icated products, and Dr. Chevalier identifies new features

8

that may make
makc the patented features relatively
re latively less important than they were at the time of the
th e first
fi rst

9

hypothet ica l royalty
hypothetical
roya lty negotiation
negotiat ion.. However, Dr.
Dr. Chevalier is not a technical
technical expert and provides

43-45.
43 -45. "As the number offeatures
of features included
inc luded in the Android
And ro id operating system continues to

~1 45 ..

This factor
fac tor slightly favors
favo rs Samsung.
Samsu ng. Dr. Vellturo
Velltu ro

10

only a cursory assessment of
without
o f changes to the Galaxy S UJ,
U1 , w
ithout addressing
address ing the relative

IIIl

importance of the new features
featu res or the extent to which customers have upgraded their
th eir phones. For

12

Sam sung only
on ly slightly.
sli ght ly.
these reasons,
reason s, this factor favors Samsung

13

14

3.

Overall Royalty
Roya lty Rates
Ha les

see ks rates consistent
conSislcnl with the verd ict, conceding that most or
Apple seeks
of the evidence that the

~ E

15
IS

experts cited
"al ready presented at tria!
trial or in prior expert reports," which "confirms
"confi rms the
eitet! was "already

"'~
"'
,,~ t::130

16

wisdom and conserv
conservatism
ati sm inherent in using rates that preserve, rather than enhance, what that jury
j ury

c0 "o

17

awarded."
royalties
awarded ." ECF No. 2046-3 at 2. However,
However, Samsung believes
be lieves that any ongoing
o ngoing royalt
ies should be

.....
0"
t.L.
"-

18

discounted
discountcd by 57-75%.
57-75% , Dr. Chevalier computes
compu tes these discounts by using formu
fo rmulas
las that Dr.
Dr,

19

Vellturo presented to the jury to quantify his
8. Dr.
hi s reasonable royalty
roya lty analysis.
analysis, See Tr. at 1315-1
1315 -18.
Dr,

20

numerical inputs.,
inputs" for the formulas:
formulas: the profitability
profi tability of the iPhone, the
Chevalier changes "three numerical

2
1
21

decline in price of the Galaxy S lll,
ill , and "the diminishing share or
of first-time
fi rst-time buyers going
goi ng forward

22

from
fro m a 201
20 14
4 hypothetical
hypotheiical negotiation as compared to a 201
20 11
1 hypothetical
hypothetica l negotiation."
negot iat ion," ECF No.
No,

23
23

2015-2
Decl. ~ 47
47.. She uses two alternative calculations, one based on projected
20 15-2 at 2; Chevalier Dec!.

24

2014
201 4 iPhone profits
pro fi ts (Ex.
(Ex , 4), the other us
using
ing profits
profi ts of
ofthe
the lowest-pdced
lowest-priced iPhone that is "most likely

25

to compete
compere with the Galaxy S lli"
[II" (Ex. 5).
5) , Chevalier
Cheva lier Decl,
Decl. ,[
~ 47.
47 , With
Wi th her modified
modi fi ed inputs,
inpms, Dr.
Dr,

26

Chevalier concludes that the royalty rates should be reduced by either
ei th er 59% or 75% for the '647
' 647

27

Patent, and eeither
Id. Exs. 4, 5.
5. As one example, Dr.
ither 57% or 74% for the '72!
' 72 1 and ' 172 Patents. Jd.

28

modiified
fied inputs reduce Apple's
App le 's "willingness
"willi ngness to accept rate" for
fo r the '647 Patent from
Chevali er's mod
Chevalier's

"
t:!o
(J)..S:::

"

;:;
.~ z
:z
:::J-5
"' -5

34
Case No.;
No.: 5:12-CV-00630-Lill<
5: 12-CY-00630-LHK
ORDER GRANTING IN PART
PA RT APPLE'S MOTION FOR
FOR ONGOING ROYALTIES
ROYA LT IES

A36

Case: 15-1171

Document: 40

Page: 121

se5:12-cv-00630-LHK
se5 '12-cv-00630-LHK Document2075 *SEALED*
'SEALED'

Filed: 03/06/2015
Filed11/25/14
Filedll/25114 Page35 of
o( 36

$12.49 (the number that Dr. Vellturo
Ve lltllro originally proposed at
attriaJ)
trial) to $5
$5.09,
.09, for a discount of 59%.
2

Jd
ld. Ex. 4. Without explanation, she applies the same discount to the $2.75 rate that Dr. Vellturo
Vcllturo

3

claims
actually
ly awarded, to produce
prod uce a mte
rate of$1.12.
of$l, 12, Jd.
ld.
claim s the jury actual

4

Dr. Cheva lier's analysis is not persuasive. Fit·st,
First, her analys
analysis
is is
is limited lo
to modifying rhe
the

5

inputs for Dr. Vellturo's
Vcllturo's formul
formulas
as based·
based on her conclusion tthat
hat "Dr.
" Dr. Vellturo
Vcllturo ignored key changes

6

in the marketplace." ld. ,[ 46
46.. However,
Howeve r, the jury awarded significantly
sign ificantly Jess
less for each patent than

7

Dr.
thcju
jury
ry applied Dr. Vcllturo's
Vc lltu ro's formulas
Dr. Vellturo recommended, so there is no indication that the

8

(or applied the royalty rat'es that Dr. Chevalier proposed
pro posed at trial).
trial) . Accordingly, Dr. Chevalier

9

provides no basis for applying her discounts
VeJJturo's
diseollnts to the jury's
j ury 's rates, as opposed to Dr. Vellturo's

10

original rates. Second, in modifying iilputs,
iil puts, Dr. Chevalier reduces the price of
orthe
the Galaxy S Ul,
il l,

11
II

and ·uuses
ses on
ly the Galaxy S lil
JI[ and Galaxy S II Epic 4G Touch as representative products. See /d.
ld.
only

:::~:.=
~:.=
«~

12

Ex. 7. Even if
il"Dr.
Dr. Chevalier appropriately adjusts the price of the Galaxy S Ul,
III, she provides no

-~
-~
0""" 00

13
13

explanation
al l other adjudicated products, much
exp lanation for why this particular discount should apply to all

.~
.~
~ .~

14

less any newer products ''not
"not more than colorably different'~
different" that might infringe. Thitd,
Third, as

~c:
1:0

~O
"'0
ca
....
-II)

15
15

explained above, the Court finds
find s that certain
certa in Georgia-Pacific
Georgia-Pacffic factors tend to support a relatively

"::It
"''''
","
:::;::Z

16

higher
higber royalty rate, and Dr. Chevalier
Cheval ier assumes no such factors
fac tors in proposing her discounts.

.~

••E

t:c.2
1: <9:

o.
uu
UU
o

·-E.§
-'"'u·--.b
!:! i3
(/l..C:
(II
~

0

."
oCl ZQJ
~
:::::J-5
"'-5

17

t.l..
~

18

a post-verdict hypothetical
hypothetica l negotiatio11,
negot iation . the patentee generally has
ha~ a stronger position than before.
beFote.

19

Dr. Chevalier omits
om its th
thiiss factor entirely
enlirely from her ongoing royalties analysis.
ana lys is. Moreover, Samsung
Sam sung

20

cites no case where a court awarded ongojng
jury's.
ongoing royalties at rates
rates below the Jury'
s. Rather, courts

21

F.3d
have generally awarded the same or higher rates for continuing infringement. E.g.,
E.g. , Bard,
Bard, 670 FJd

22

at 1193
11 93 (affirming
(affirmin g rates higher than jury
jury's);
's); Depuy,
Depuy, 2014
20 14 U.S.
U. S. Dist. LEXlS
LEX IS 61450>
61450, at *24
"24 n.8

23

(awarding higher rate); Carnegie Mellon, 2014 U.S.
U. S. Dist. LEXlS
LEX IS 43042, at*
at *1119
19 (awarding same

24

rate). This further
counsels
further counse
ls against the discounts that Samsung
Sam sung proposes.

....
0"

Particularly, Dr. Chevalier
Chevali er and Samsung do not address the Federal Circuit's
Circuit' s holding
ho lding that in

25

After considering both parties'
pan ies' arguments, the supporting declarations and exhibits,
exhibits.

26

applicable
c·ase law, and the record, the Court determines that the proper ongoing royalty
royally rates are
appl icable case

27

reflected
ected in the jury verdict. As explained
exp lained above, Georgia-Pacific
Georgio-Podfic factors
facto rs 5 and 9-1
9 11I favo t·r
th ose refl
those

2R
28

Apple. Factors 8 and 12,
6, and 1 and 4 are roughly neutral. Pactor
sl ightly favors Samsung.
Sam sung.
12,6,
Factor 13 slightly

4

35
Case No.:
No .: 5: 12-CV
12-CY-00630-LHK
·00630-LHK
ORDER GRANTING lN
IN PART APPLE'S
APPLE'S MOTION FOR
FOR ONGOING ROYALTIES

A37

Confidential
Redacted
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On ba
balance,
lance, Samsung has
has not shown that any changed economic circumstances warrant reducing

2

the verdict
verd ict rates. Apple does
dces not seek any rates higher than the jury verdict.
verd ict. Accordingly, the rates

3

reflected
reOected in the verdict shall apply.

44

figure s obtained by dividing the jury's
jury' s
Por the adjud
adjudicated
For
icated products, the rates shou ld be the figures

5

award for each product by the corresponding number of units.
un its. For any tmadjudicated
unadjudicatcd products ~'not
" not

6

111ore
thann co
lorably different,"
diffet·ent," the rates should be .
more tha
colorably
" . for the '647 PatentPatent_

77

~ for
fo r the ' 172 Patent, for
fo r th~
th! reasons
reason s explained
exp la ined above.
above .
Patent, and IIIII

8

IV.

9

for
the '721
forthe
'72 1

CONCLUSION

For
For the foregoing
foregoi ng reasons, the Court
Cou rt DENiES
DENIES Samsung's
Sams ung's request to
10 stay resolution
resoluti on of

10

Apple's
Apple
's motion and GRANTS Apple 's motion
mo:ion for ongoing royalties. The Court determines that

lI

"

Apple
For any continuing
cont inuing inti·ingement,
in fr ingement, in lieu of
o f a permanent
App
le is entitled to ongoing royalties for

12

adjud icated to infringe the '647, ''172
172,, or '72 1
inj uncti on. Those royalties shall apply to products adjudicated
injunction.

Cj ~
0
" 0
.~
... 0

13

Patents, and to products "not
" not more than co
colorably
lorably different therefrom." The starting
st81t ing date for
fo r any

.~ !::l
C
~ .~
.!!!

.-

14

final jjudgment
Ln this case. The ongoing
ongoing
ongoi
ng royalties shall
sha ll be after entry of
affinal
udgment in
ongo ing royalty rates for

e~cc
oo.r.
- "
"'~
'"Ot

15

sha ll be:
any adj udicated products shall

.~

E
t:
t:..2
..S
;:::.=
=
;.:::

_

0 «j
o
·
......

u uU
U

v
·--. ·-.-"

-

.. 0

~a

co:! "
....
0
;...
0.)

-0 "
~
• 00

;";: Z
;Z
;;:
I::
g 0.)
"

"'-5....

..."
0

w..

16
17
17
18
18

19
20

21
22

For any unadjudicated
unadjud icated products
prod ucts "not
" nOi more than colorably
co lorably di
different,"
fferent," the rates shall be
be ~ for the

23

'6477 Pate
Patem,
nt, ~ for the '721 Patent, and -_
'64

24

IT IS SO ORDERED.
ORD ERED.

25

Dated:
Dated : November 25, 2014

l1li

for
fo r the ''172
l 72 Patent.

L~~'~ '
[.~!·~·

26

United
Un ited States District Judge
Judge_
27

28

36
Case
Cnse No.:
No.; 5: 12-CV-00630-LHK
12-CV·OO630-LHK
ORDER GRANTING
GRANTrNG lN
IN PART APPLE'S MOTlON
MOTION FOR ONGOING ROYALTIES

A38

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Case5:12-cv-00630-LHK
Document1965
Page1 of 53

1
2
3
4
5
6
7
8
9
United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
)
)
Plaintiff and Counterdefendant,
)
)
v.
)
)
SAMSUNG ELECTRONICS CO., LTD., a
)
Korean corporation; SAMSUNG
)
ELECTRONICS AMERICA, INC., a New York )
corporation; and SAMSUNG
)
TELECOMMUNICATIONS AMERICA, LLC, )
a Delaware limited liability company,
)
)
Defendants and Counterclaimants. )
)
APPLE, INC., a California corporation,

Case No.: 12-CV-00630-LHK
ORDER GRANTING IN PART AND
DENYING IN PART SAMSUNG’S
MOTION FOR JUDGMENT AS A
MATTER OF LAW

On May 5, 2014, after a thirteen-day trial and approximately four days of deliberation, a
jury in this patent case reached a verdict. ECF No. 1884. On May 23, 2014, Samsung filed a
motion for judgment as a matter of law and motion to amend the judgment. ECF No. 1896-3
(“Mot.”). On June 6, 2014, Apple filed an opposition. ECF No. 1908-3 (“Opp’n”). On June 13,
2014, Samsung filed a reply. ECF No. 1917 (“Reply”). The Court held a hearing on July 10, 2014.
Having considered the law, the record, and the parties’ argument, the Court GRANTS Samsung’s
motion for judgment as a matter of law that Samsung did not willfully infringe the ’721 patent and
DENIES Samsung’s motion in all other respects.
1
Case No.: 12-CV-00630
ORDER GRANTING IN PART AND DENYING IN PART SAMSUNG’S MOTION FOR JUDGMENT AS A
MATTER OF LAW

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I.

United States District Court
For the Northern District of California

2

LEGAL STANDARD
Federal Rule of Civil Procedure 50 permits a district court to grant judgment as a matter of

3

law “when the evidence permits only one reasonable conclusion and the conclusion is contrary to

4

that reached by the jury.” Ostad v. Or. Health Scis. Univ., 327 F.3d 876, 881 (9th Cir. 2003). A

5

party seeking judgment as a matter of law after a jury verdict must show that the verdict is not

6

supported by “substantial evidence,” meaning “relevant evidence that a reasonable mind would

7

accept as adequate to support a conclusion.” Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361,

8

1366 (Fed. Cir. 2005) (citing Gillette v. Delmore, 979 F.2d 1342, 1346 (9th Cir. 1992)). The Court

9

must “view the evidence in the light most favorable to the nonmoving party . . . and draw all

10

reasonable inferences in that party’s favor.” See E.E.O.C. v. Go Daddy Software, Inc., 581 F.3d

11

951, 961 (9th Cir. 2009) (internal quotations and citations omitted).

12

A new trial is appropriate under Rule 59 “only if the jury verdict is contrary to the clear

13

weight of the evidence.” DSPT Int’l, Inc. v. Nahum, 624 F.3d 1213, 1218 (9th Cir. 2010). A court

14

should grant a new trial where necessary “to prevent a miscarriage of justice.” Molski v. M.J.

15

Cable, Inc., 481 F.3d 724, 729 (9th Cir. 2007).

16

II.

ANALYSIS

17

A.

18

The ’647 patent is directed to a “system and method for performing an action on a structure

Non-infringement of Claim 9 of the ’647 Patent

19

in computer-generated data.” The ’647 patent generally covers a computer-based system and

20

method for detecting structures, such as phone numbers, post-office addresses, or dates, and

21

performing actions on the detected structures. See ’647 Patent Abstract, col.1 ll.8-16. Apple

22

asserted claim 9 of the ’647 patent against Samsung. Claim 9 depends from claim 1 and recites:

23
24
25
26
27

1. A computer-based system for detecting structures in data and performing actions
on detected structures, comprising:
an input device for receiving data;
an output device for presenting the data;
a memory storing information including program routines including
an analyzer server for detecting structures in the data, and for linking actions
to the detected structures;
a user interface enabling the selection of a detected structure and a linked
action; and

28

2
Case No.: 12-CV-00630
ORDER GRANTING IN PART AND DENYING IN PART SAMSUNG’S MOTION FOR JUDGMENT AS A
MATTER OF LAW

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2
3
4

9. The system recited in claim 1, wherein the user interface enables selection of an
action by causing the output device to display a pop-up menu of the linked
actions.

5

’647 Patent cls. 1, 9. The jury found that all nine accused Samsung products infringe, and awarded

6

damages. See ECF No. 1884 at 9. Samsung now moves for judgment as a matter of law that claim

7

9 is not infringed and is invalid in light of prior art. The Court addresses non-infringement and

8

invalidity in turn.

9
United States District Court
For the Northern District of California

an action processor for performing the selected action linked to the selected
structure; and
a processing unit coupled to the input device, the output device, and the memory for
controlling the execution of the program routines.

As to non-infringement, Samsung contends that Apple presented its case under incorrect

10

claim constructions that the Federal Circuit rejected shortly before the close of trial, in Apple, Inc.

11

v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014) (“Motorola”), and that Apple failed to

12

demonstrate infringement of at least three limitations of claim 9, as properly construed. The Court

13

concludes that substantial evidence supports the jury’s finding of infringement, and accordingly

14

DENIES Samsung’s motion.

15

“To prove infringement, the plaintiff bears the burden of proof to show the presence of

16

every element or its equivalent in the accused device.” Uniloc USA, Inc. v. Microsoft Corp., 632

17

F.3d 1292, 1301 (Fed. Cir. 2011). “If any claim limitation is absent from the accused device, there

18

is no literal infringement as a matter of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d

19

1241, 1247 (Fed. Cir. 2000).

20
21

1.

Claim Construction

Samsung argues extensively that Apple presented an infringement case based on the wrong

22

claim constructions. Samsung contends that Apple “shot for the moon” by relying on broad

23

constructions of “analyzer server” and “linking actions,” and that the Federal Circuit’s opinion in

24

Motorola rendered most of Apple’s case ineffective. See Mot. at 1-8.

25

Samsung’s arguments at this stage are misdirected to the extent they do not address the

26

merits of Apple’s infringement case

namely, the evidence and claim language at issue. During

27

trial, the Court specifically addressed the effect of the Motorola decision with input from the

28

3
Case No.: 12-CV-00630
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parties, and allowed both Apple and Samsung to present supplemental expert testimony before

2

submitting the case to the jury. Accordingly, the verdict must be evaluated against the evidence

3

presented, not the parties’ procedural disputes regarding Motorola.

4
5

the terms “analyzer server” and “linking actions to the detected structures” in the ’647 patent. See

6

Apple, Inc. v. Motorola, Inc., No. 11-CV-08540, slip op. at 8-11 (N.D. Ill. Mar. 19, 2012). On July

7

20, 2012, the parties to the Motorola litigation appealed these constructions to the Federal Circuit.

8

Meanwhile, in the instant case, this Court held a claim construction hearing on February 21, 2013

9

and issued a claim construction order on April 10, 2013. See ECF No. 447. The parties requested

10
United States District Court
For the Northern District of California

On March 19, 2012, in the Motorola litigation, the Northern District of Illinois construed

11

and received construction of only one term in the ’647 patent, “action processor.” See id. at 64.
However, since claim construction proceedings concluded, both parties have attempted to

12

seek untimely constructions of the ’647 patent. In its summary judgment motion, Apple sought

13

belated constructions for “analyzer server” and “linking actions,” ECF No. 803-4 at 5 n.6, but the

14

Court found that “Apple’s attempt to argue for a new claim construction at this stage is doubly

15

improper, both because it did not raise its arguments at the claim construction stage and because

16

Apple is trying to sidestep the summary judgment page limitations by incorporating legal

17

arguments in a separate declaration,” ECF No. 1151 at 17. On March 27, 2014, only days before

18

the start of trial, Samsung filed a request to supplement the jury books with the Northern District of

19

Illinois’s constructions of “analyzer server” and “linking actions” that were then awaiting review

20

by the Federal Circuit in Motorola. ECF No. 1521. The Court denied Samsung’s request. ECF No.

21

1536. The case then proceeded to trial.

22

On April 25, 2014, which was the last scheduled day of evidence at trial, the Federal Circuit

23

issued its decision in Motorola. The Federal Circuit affirmed the Northern District of Illinois’s

24

following constructions of “analyzer server” and “linking actions” from the ’647 patent, and

25

rejected Apple’s arguments to alter those constructions:

26
27

“analyzer server”: “a server routine separate from a client that receives data having
structures from the client.”

28

4
Case No.: 12-CV-00630
ORDER GRANTING IN PART AND DENYING IN PART SAMSUNG’S MOTION FOR JUDGMENT AS A
MATTER OF LAW

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2

“linking actions to the detected structures”: “creating a specified connection
between each detected structure and at least one computer subroutine that causes the
CPU to perform a sequence of operations on that detected structure.”
Motorola, 757 F.3d at 1304-07. In response to this sudden development, the Court allowed the

3
parties to address the effect of Motorola on the trial, after which the parties agreed to extend the
4
trial and present additional testimony from their respective experts on ’647 patent infringement and
5
validity. See Tr. at 2988:4-3003:20; ECF Nos. 1828, 1845. The Court also provided the Motorola
6
constructions to the jury. See id. at 3014:16-24.
7
Before and during trial, the parties relied on expert opinions regarding infringement and
8
validity of the ’647 patent from Dr. Todd Mowry (Apple) and Dr. Kevin Jeffay (Samsung). Apple
9
now asserts that Samsung waived any challenges to Dr. Mowry’s testimony based on the Motorola
United States District Court
For the Northern District of California

10
constructions because Samsung did not raise these issues in its pre-verdict Rule 50(a) motion.
11
Opp’n at 3. Apple’s objection is misplaced. Apple does not identify which specific non12
infringement arguments Samsung allegedly waived. Samsung addressed the sufficiency of
13
Dr. Mowry’s testimony during oral arguments for Rule 50(a) motions at the close of the evidence.
14
E.g., Tr. at 3114:20-3115:4 (referring to Dr. Mowry’s opinions).
15
Samsung claims that Apple’s infringement case and Dr. Mowry’s testimony before the
16
issuance of Motorola relied on the claim constructions that the Federal Circuit rejected. However,
17
the time for these arguments has passed, as the parties decided to permit additional evidence to
18
address the Motorola constructions. Moreover, the Court notes that when trial resumed on April
19
28, 2014, Samsung attempted to have Dr. Jeffay testify misleadingly that he had used the Motorola
20
constructions “since the very first day I worked on this case.” Id. at 3055:2-6. In fact, in his expert
21
reports, Dr. Jeffay did not offer opinions on which claim constructions were correct. See, e.g., ECF
22
No. 882-11 (Jeffay Rebuttal Report) ¶¶ 120-28; Tr. at 3060:14-3064:21. Dr. Jeffay also testified at
23
deposition that he had not taken positions on the Motorola constructions. E.g., id. at 3067:8-14
24
(quoting Jeffay deposition: “So sitting here today, based on all the information you’ve seen, do you
25
have an opinion as to what the proper construction of analyzer server is as it appears in claim 1?
26
Answer: No.”); see also id. at 3056:8-3077:25.
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Rather, the relevant issue is whether a reasonable jury, properly instructed, could have determined

3

from the evidence presented that Samsung’s accused products infringe claim 9 of the ’647 patent.

4

Indeed, despite raising these issues, Samsung asserts in its Reply that “pretrial and recall procedure

5

are irrelevant here” and “the only relevant consideration is the record.” Reply at 3.

6
7

United States District Court
For the Northern District of California

At this stage, the parties’ prior attempts to argue claim construction are not germane.

2.

“Linking Actions” and “Specified Connection”

The Federal Circuit construed the claim phrase “linking actions to the detected structures”

8

to mean “creating a specified connection between each detected structure and at least one computer

9

subroutine that causes the CPU to perform a sequence of operations on that detected structure.”

10

Motorola, 757 F.3d at 1305-06 (emphasis added). Samsung argues that the claimed “analyzer

11

server” must create the “specified connection,” and that no accused device can possibly infringe

12

because the user selects an action to be linked. See Mot. at 9-11. However, a reasonable jury could

13

have found infringement of this limitation.

14

Samsung presented testimony from Google engineer Dianne Hackborn, who discussed

15

“Intents” in the Android operating system, explaining that Intents “do communications between

16

applications or interactions between applications.” Tr. at 1580:1-6. Hackborn testified that when an

17

application wants to have a user perform an action, such as composing an e-mail, it can make an

18

Intent “and give it to Android and then Android will find an application that can actually do that.”

19

Id. at 1580:7-13. Dr. Jeffay then testified that “there is no specified connection” in Android

20

because the Intent mechanism does not bind a specific application (such as a particular e-mail

21

client) to a structure. Id. at 3087:3-3089:1 (“What’s not linked is the code that’s ultimately going

22

to, for example, dial the phone.”).

23

However, Dr. Mowry expressed contrary opinions that the jury could have credited.

24

Dr. Mowry’s infringement theory was that the Messenger (also referred to as “Messaging” by the

25

parties) and Browser applications in Android include a method called setIntent() that calls another

26

method called startActivity(), which corresponds to the “at least one computer subroutine” in claim

27

9 as construed in Motorola. Dr. Mowry explained that the Motorola construction of “linking

28

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actions” did not change his infringement opinion, based on his review of source code for the

2

Messenger and Browser applications in the Gingerbread, Ice Cream Sandwich, and Jelly Bean

3

versions of Android, which he presented to the jury. Id. at 3026:16-3028:22. As an example, for the

4

Gingerbread Messenger application, Dr. Mowry testified that setIntent() “records an intent object

5

for a particular choice in the pop-up menu that shows you choices of linked action,” and that once

6

the user picks an option, it necessarily calls the startActivity() method and passes an Intent object.

7

Id. at 3027:6-23.

8

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For the Northern District of California

9

Samsung claims that there is no “specified connection” in the accused devices because
there is no pre-existing link between a detected structure (such as an e-mail address) and a

10

computer subroutine that directly performs an action (such as the Gmail application). Samsung

11

argues that startActivity() is not called until the user selects an action, so it cannot be a “specified”

12

connection. Samsung also contends that claim 9 requires “a linked action,” which further confirms

13

that there must be a pre-existing link between the structure and the subroutine. See Mot. at 10.

14

However, Dr. Mowry addressed this issue when he explained to the jury that startActivity() is

15

“necessarily” and automatically called when a structure is detected. See Tr. at 3027:14-17. Also, as

16

Apple notes, under the Motorola construction, the analyzer server is for “creating a specified

17

connection,” such that the claimed action need not always be “linked” to a structure prior to

18

detection of that structure. Furthermore, Dr. Jeffay admitted that startActivity() is a “computer

19

subroutine that’s actually linked into the detected structures,” but claimed that no specified

20

connection exists because claim 9 requires that “you link the actual program that performs that

21

function,” such as dialing a phone number. Id. at 3090:5-20. The Motorola construction of “linking

22

actions,” however, requires only that the detected structure be linked to a “computer subroutine that

23

causes the CPU to perform” that function. Thus, the jury could have determined that startActivity()

24

satisfies this limitation because it is admittedly a linked subroutine that causes performance of an

25

action. While “it is well settled that an expert’s unsupported conclusion on the ultimate issue of

26

infringement is insufficient to raise a genuine issue of material fact,” Arthur A. Collins, Inc. v. N.

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Telecom Ltd., 216 F.3d 1042, 1046 (Fed. Cir. 2000), that is not the situation here. The jury could

2

have evaluated the expert testimony and reasonably determined infringement of this limitation.

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For the Northern District of California

3

For completeness, the Court addresses two additional arguments from Apple that are

4

misplaced. First, Apple contends that Samsung waived its argument regarding the “linked action”

5

limitation by not raising it in its pre-verdict Rule 50(a) motion. See Opp’n at 8 n.2. Samsung does

6

not respond to this waiver argument in its Reply. However, the Court finds no waiver because

7

Samsung argued repeatedly that no “specified connection” exists in Android. See Tr. at 3115:12-

8

3117:10. Second, Apple notes that the Northern District of Illinois previously concluded in

9

Motorola that infringement of “linking actions” (and other limitations) was not amenable to

10

summary judgment. These arguments are meritless. Motorola involved different products and

11

parties. Moreover, Apple asked the Court to exclude references to Motorola from trial because “the

12

Motorola order, and any reference to rulings, findings, or other developments in cases not

13

involving both parties to this action should be excluded.” ECF No. 1281-3 at 4. Having argued that

14

prior orders in Motorola were irrelevant, Apple cannot now rely on them.

15

Even setting aside Apple’s misplaced arguments, the Court determines for the reasons

16

above that a reasonable jury could have found infringement of the “linking actions to the detected

17

structures” limitation.

18
19

3.

“Analyzer Server”

The claimed “analyzer server” means “a server routine separate from a client that receives

20

data having structures from the client.” The parties focus their dispute on whether Android includes

21

a server routine that is “separate from a client.”

22

Apple contended that the Messenger and Browser applications contain shared libraries that

23

correspond to the “analyzer server” limitation. See Tr. at 3017:17-3019:21. These shared libraries

24

include the Linkify, Cache Builder, and Content Detector classes. Id. Dr. Mowry stated that

25

Messenger and Browser are “clients” that pass data to these shared libraries to detect structures. Id.

26

at 3017:9-16. Samsung claims infringement is impossible under this theory because a shared

27

library is not “separate” from the client application. Samsung points to Ms. Hackborn’s testimony,

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where she stated that Linkify “is not a server” and “does not run on its own. It runs as part of the

2

application that’s using it.” Id. at 1585:9-18. Dr. Jeffay relied in part on Ms. Hackborn’s testimony

3

to opine that shared libraries are not separate from the clients because they “become[s] part of the

4

application.” Id. at 3079:17-3080:7, 3084:20-22 (“Q. So if you pull the Linkify code out of

5

Messenger, what happens? A. Well, Messenger certainly would not run.”).

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For the Northern District of California

6

The Court finds that substantial evidence supports the jury’s verdict for this limitation.

7

Dr. Mowry presented Android source code to the jury and explained that the shared libraries

8

receive data from the Messenger and Browser applications and detect structures in that data. See id.

9

at 3017:23-3018:8, 3018:24-3019:13. Dr. Mowry also directly rebutted Dr. Jeffay’s opinions

10

regarding shared libraries, explaining that the shared libraries are stored in “a particular part of

11

memory,” are accessible to multiple applications, and are “definitely separate from the

12

applications.” Id. at 3023:3-3024:19. Dr. Mowry also acknowledged Ms. Hackborn’s testimony but

13

stated that it did not alter his opinions on shared libraries. See id. at 3025:12-25, 3052:1-14 (stating

14

that a shared library is “not written as a standalone program, even though it is distinct and separate

15

from the application”). Apple also had Dr. Mowry testify that the shared libraries receive data from

16

the client applications. See id. at 3019:18-21, 3021:25-3022:3. The jury could have reasonably

17

credited Dr. Mowry’s explanations.

18

Dr. Mowry also testified that “glue code” supports his view that the shared libraries are

19

distinct from the client applications because the glue code “connects together different modules or

20

different pieces of software.” Id. at 3020:22-3021:10. Samsung asserts that “glue code” is not a

21

term of art. Mot. at 12. This objection is irrelevant. Regardless of whether “glue code” appears in

22

textbooks, Dr. Mowry stated that the presence of such code indicates that this claim limitation is

23

satisfied. The jury was entitled to assess the competing experts’ credibility on this point. See

24

Kinetic, 688 F.3d at 1362.

25
26
27

4.

“Action Processor”

This Court construed “action processor” as “program routine(s) that perform the selected
action on the detected structure.” ECF No. 447 at 64. Motorola did not affect this construction, and

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the parties did not offer additional testimony on this limitation. Dr. Mowry identified the

2

startActivity() and resolveActivity() methods in the Android source code as “action processors.”

3

See Tr. at 873:8-20. He also testified that startActivity() “allows one program to launch another

4

program and pass data to it,” such that it performs the selected action. Id. at 2794:8-2796:21.

5

According to Samsung, startActivity() cannot be an “action processor” because it does not directly

6

perform an action (such as dialing a phone number or initiating an e-mail). However, the Court’s

7

construction of “action processor” is not limited in this way, and during claim construction, the

8

parties disputed only whether an action processor must be “separate from a client.” See ECF No.

9

447 at 14-20. Samsung fails to show that a reasonable jury could not determine that startActivity()

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For the Northern District of California

10

performs selected actions by launching appropriate applications.

11

5.

12

Jelly Bean Galaxy Nexus

For the Jelly Bean version of the Galaxy Nexus, Apple did not accuse the Messenger

13

application, only Browser. Samsung contends that Browser lacks a “user interface enabling the

14

selection of a detected structure” because Browser detects a structure (such as an e-mail address)

15

only after a user selects it. The jury heard sufficient evidence to reject this argument. Dr. Mowry

16

explained that the Jelly Bean Galaxy Nexus infringes because it allows users to perform a “long

17

press”

18

selection of an action. Tr. at 866:3-870:8; see also id. at 869:10-17 (“The user eventually is holding

19

down long enough that it becomes a selection through a press and hold.”). At the summary

20

judgment stage, the Court noted that whether the “long press” infringes would be a question for the

21

jury. See ECF No. 1151 at 20-21. The jury could have reasonably accepted Dr. Mowry’s

22

explanation.

23
24

a “press and hold” instead of a tap

that results in detection of a structure prior to

For the foregoing reasons, Samsung’s motion for judgment as a matter of law of noninfringement of the ’647 patent is DENIED.

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B.

2

Samsung moves for judgment as a matter of law that no reasonable jury could find claim 9

Invalidity of Claim 9 of the ’647 Patent

3

of the ’647 patent valid, arguing that Sidekick renders the claim obvious. Mot. at 14. The Court

4

DENIES Samsung’s motion.

5

Under 35 U.S.C. § 103, a patent is invalid as obvious “if the differences between the

6

claimed invention and the prior art are such that the claimed invention as a whole would have been

7

obvious before the effective filing date of the claimed invention to a person having ordinary skill in

8

the art to which the claimed invention pertains.” 35 U.S.C. § 103. “A party seeking to invalidate a

9

patent on the basis of obviousness must demonstrate by clear and convincing evidence that a

10

skilled artisan would have been motivated to combine the teachings of the prior art references to

11

achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation

12

of success in doing so.” Kinetic, 688 F.3d at 1360. “Obviousness is a question of law based on

13

underlying findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). Though

14

obviousness is ultimately a question of law for the Court to decide de novo, in evaluating a jury

15

verdict of obviousness, the Court treats with deference the implied findings of fact made by the

16

jury. Kinetic, 688 F.3d at 1356 57. The Court must discern the jury’s implied factual findings by

17

interpreting the evidence consistently with the verdict and drawing all reasonable inferences in the

18

nonmoving party’s favor. DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,

19

464 F.3d 1356, 1361 (Fed. Cir. 2006). The Court “first presume[s] that the jury resolved the

20

underlying factual disputes in favor of the verdict [ ] and leave[s] those presumed findings

21

undisturbed if they are supported by substantial evidence.” Kinetic, 688 F.3d at 1356-57 (citation

22

omitted). The underlying factual inquiries are: (1) the scope and content of the prior art; (2) the

23

differences between the prior art and the claims at issue; (3) the level of ordinary skill in the art;

24

and (4) any relevant secondary considerations, such as commercial success, long felt but unsolved

25

needs, copying, praise, and the failure of others. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406

26

(2007) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)); Crocs, Inc. v. Int’l Trade

27

Comm’n, 598 F.3d 1294, 1311 (Fed. Cir. 2010). The Court then examines the ultimate legal

28

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conclusion of obviousness de novo to determine whether it is correct in light of the “presumed jury

2

fact findings.” Kinetic, 688 F.3d at 1357. Here, the jury found claim 9 of the ’647 patent valid.

3

Thus, below, the Court first examines whether substantial evidence supported the jury’s underlying

4

factual conclusions that there was a significant gap between the prior art and the patent, and that

5

there were secondary indicia of non-obviousness.

United States District Court
For the Northern District of California

6

First, there was conflicting expert testimony on the question whether Sidekick rendered

7

claim 9 obvious. Samsung’s expert, Dr. Jeffay, testified Sidekick rendered claim 9 obvious because

8

it disclosed all the limitations of claim 9 except for two, and that those two limitations

9

actions to the detected structures by using a “specified connection,” and a “pop-up” menu would

linking

10

have been obvious based on Sidekick. See ECF No. 1928 at 3092-94, 3098-99; ECF No. 1717 at

11

1810, 1841. Yet Apple’s expert, Dr. Mowry, testified that Sidekick did not render the ’647 obvious

12

because in addition to missing those two elements, see ECF No. 1928 at 3101, Sidekick did not

13

detect “multiple structures” nor link to multiple actions. See ECF No. 1926 at 2802-03, 2810; ECF

14

No. 1928 at 3101, 3104. Specifically, Dr. Mowry explained Sidekick could only detect one

15

structure

16

only one pattern to detect all phone numbers, including domestic and international. See ECF No.

17

1926 at 2802-06, 2809. Dr. Mowry also testified that Sidekick could link only one action

18

See ECF No. 1926 at 2803, 2809; ECF No. 1928 at 3104. In response, Dr. Jeffay claimed Sidekick

19

could detect multiple structures because it could detect multiple types of phone numbers (including

20

domestic and international) by using different patterns, ECF No. 1717 at 1807-08, 1834-35.

21

Dr. Jeffay also implicitly rejected Dr. Mowry’s testimony that claim 9 requires multiple actions,

22

given that Dr. Jeffay did not testify that “multiple actions” was one of the limitations of the claim.

23

Id. at 1807. Finally, Dr. Mowry testified Sidekick failed to satisfy claim 9’s requirement that the

24

user interface enable “selecting a structure.” ECF No. 1624 at 923-24; ECF No. 1926 at 2802.

25

Dr. Jeffay rebutted this point by stating a user “can pick any number that they want.” ECF No.

26

1717 at 1838-39. Based on this conflicting expert testimony, the jury was free to “make credibility

27

determinations and believe the witness it considers more trustworthy.” Kinetic, 688 F.3d at 1362

phone numbers

and showed the jury Sidekick code and explained how the code used

28

dialing.

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(citation omitted). The jury’s finding of validity indicates that the jury made an implied finding of

2

fact crediting Dr. Mowry’s testimony that the gap between Sidekick and the ’647 was significant

3

because Sidekick did not disclose various elements of claim 9. Id. at 1363 (“[W]hether the prior art

4

discloses the limitations of a particular claim is a question of fact to be determined by the jury[.]”);

5

Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1315 (Fed. Cir. 2009) (holding that jury was

6

entitled to conclude, as a factual matter, that the prior art did not disclose this limitation). The

7

Court must give that finding deference. Kinetic, 688 F.3d at 1356-57. Crediting Dr. Mowry’s

8

testimony over that of Dr. Jeffay, the Court cannot say that the jury’s implied finding that these

9

gaps were significant was not supported by substantial evidence in the record.

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For the Northern District of California

10

Further, the Court is unpersuaded by Samsung’s claim that Dr. Mowry’s testimony that

11

claim 9 requires “multiple actions” fails as a matter of law under the Federal Circuit’s construction

12

of “linking actions to the detected structures,” Mot. at 15, Reply at 9. The Federal Circuit held that

13

claim 9 requires only that at least one action be linked to each detected structure. Motorola, 757

14

F.3d at 1307 (“The plain language of the claims does not require multiple actions for each

15

structure[.]”). Apple acknowledges as much. Opp’n at 4. However, nothing in the Federal Circuit’s

16

order prohibited the jury from finding that the plain and ordinary meaning of claim 9 requires that

17

there be multiple actions that are linked to multiple structures.

18

Second, the jury’s finding of non-obviousness means the jury implicitly rejected Samsung’s

19

claim that there were no secondary indicia of non-obviousness. ECF No. 1717 at 1811-13

20

(Dr. Jeffay testifying there were no secondary considerations suggesting pop-up would not be

21

obvious and that there is no evidence Samsung copied claim 9). Again, the Court must defer to this

22

implicit factual finding. See Kinetic, 688 F.3d at 1356-57. Apple cites substantial evidence to

23

support the jury’s finding, including Google’s recognition of the need and usefulness of the

24

invention. See ECF No. 1624 at 881-83 (describing PX 116, email between Google engineers

25

discussing that for “text objects” such as email addresses and physical addresses, “one of our most

26

powerful features is the interaction of text objects [and] other applications on the phone. For

27

instance, users can select a phone number . . . and it will launch the dialer[.]”).

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1

In light of these factual findings, the Court now considers whether, as a matter of law, it

2

would have been obvious to a designer of ordinary skill in the art to bridge the gap the jury

3

implicitly found. While Dr. Jeffay testified it would have been obvious to use a pop-up menu or to

4

link actions using a “specified connection” based on Sidekick, Dr. Jeffay did not explain why it

5

would have been obvious for an engineer of ordinary skill to combine additional actions with

6

Sidekick’s dialing action such that there are multiple actions linked overall. Nor did he explain

7

why, assuming Apple is correct that detecting only phone numbers does not satisfy the claim’s

8

requirement to detect multiple structures, it would have been obvious to create an invention that

9

detects multiple structures such as postal addresses, email addresses, and telephone numbers. ECF

10

No. 1928 at 3103 (Dr. Mowry describing different kinds of structures). Because Samsung has

11

failed to identify the necessary evidence, the Court cannot conclude there is clear and convincing

12

evidence that it would have been obvious to bridge these gaps between Sidekick and claim 9.

13

In sum, in light of the gaps between Sidekick and claim 9, and lack of clear evidence by

14

Samsung as to why such a gap would have been obvious to bridge, the Court finds that as a matter

15

of law, Samsung has not produced clear and convincing evidence that the claimed invention was

16

obvious in light of the prior art. Accordingly, the Court DENIES Samsung’s motion for judgment

17

as a matter of law that claim 9 of the ’647 patent is invalid.

18

C.

19

The jury found claim 8 of the U.S. Patent No. 8,046,721 (“the ’721 patent”) not invalid.

Invalidity of Claim 8 of the ’721 Patent

20

Samsung moves for judgment as a matter of law that no reasonable jury could find claim 9 not

21

invalid. Samsung moves on two grounds: (1) obviousness, and (2) indefiniteness. The Court

22

addresses each in turn below, and DENIES Samsung’s motion.

23

1.

Obviousness

24

Claim 8 of the ’721 is dependent on claim 7. The claims recite as follows:

25

7. A portable electronic device, comprising:
a touch-sensitive display;
memory;
one or more processors; and
one or more modules stored in the memory and configured for execution by

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the one or more processors, the one or more modules including
instructions:
to detect a contact with the touch-sensitive display at a first
predefined location corresponding to an unlock image;
to continuously move the unlock image on the touch-sensitive
display in accordance with movement of the detected contact
while continuous contact with the touch-sensitive display is
maintained, wherein the unlock image is a graphical, interactive
user-interface object with which a user interacts in order to
unlock the device; and
to unlock the hand-held electronic device if the unlock image is
moved from the first predefined location on the touch screen to a
predefined unlock region on the touch-sensitive display.
8. The device of claim 7, further comprising instructions to display visual cues to
communicate a direction of movement of the unlock image required to unlock the device.
’721 Patent cls. 7, 8.
Samsung argues claim 8 is obvious as a matter of law because the Neonode N1 QuickStart
Guide and a video and paper by Plaisant together disclosed all the limitations in claim 8. Mot. at
16-17. Samsung cites Dr. Greenberg’s testimony that the Neonode Guide discloses a portable
electronic phone with a touch-sensitive display with a left-to-right unlocking gesture, and that the
only claim element missing from the Neonode is a moving image accompanying the sweep gesture.
ECF No. 1717 at 1967-69; 1975; see also DX 342.013 (Neonode Guide describing how to “right
sweep to unlock” the phone). Dr. Greenberg also testified about the Plaisant paper, titled
“Touchscreen Toggle Design,” which describes “touchscreens called toggles that switch state from
one state to another, things like on or off, and that could include things like lock to unlock.” ECF
No. 1717 at 1969-70. He testified Plaisant described toggles that operate “by sliding actions,”
called “sliders.” Id. at 1971. Dr. Greenberg concluded that Plaisant filled the missing claim element
in the Neonode because Plaisant disclosed a sliding image that could be moved from one
predefined location to another to change the state of the device. Id. at 1970-72; 1975. Thus,
Dr. Greenberg testified that the combination disclosed “all of the claim limitations.” Id. at 1975-76.
Dr. Greenberg further concluded that the person of ordinary skill in the art would be “highly
interested in both of them” and would “think it natural to combine these two” because “they both
deal with touch base systems, they both deal with user interfaces. They both talk about changing

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state . . . they both specifically describe how a sliding action is used to prevent accidental

2

activation.” Id. at 1974. He reasoned that a person would think to implement sliders on a

3

touchscreen phone because that “is just a very routine thing to think about in terms of interaction

4

design.” Id. at 1974-75. Dr. Greenberg’s testimony that the claim was invalid for obviousness

5

notwithstanding, the Court does not agree that Samsung presented clear and convincing evidence

6

of obviousness.

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7

First, there was conflicting expert testimony on the question of whether the combination

8

disclosed all the claim elements. Apple’s expert, Dr. Cockburn, testified that although the Neonode

9

describes unlocking a mobile phone using a “right sweep” gesture, it fails to disclose several key

10

claim elements relating to an “unlock image” and its movement, including that there was “no

11

predefined location corresponding to an unlock image,” “no continuous movement of an unlock

12

image,” “no unlocking the device if the image is moved from one location to another,” and “no

13

visual cues communicating the direction of movement” since “there’s no image to move.” ECF No.

14

1926 at 2864-65. He also testified that Plaisant, which describes a touchscreen user interface for

15

turning on and off home appliance systems, fails to supply these missing claim elements because

16

Plaisant does not disclose using an unlock image to unlock a portable electronic device. Id. at

17

2865-67; DX 344 (Plaisant paper noting that the research was conducted in collaboration with a

18

group whose focus is on “providing state-of-the-art systems that are easy for the homeowner to

19

use.”). Where, as here, the parties offered “conflicting expert testimony, the jury was free to ‘make

20

credibility determinations’[.]” Kinetic, 688 F.3d at 1362 (citation omitted). In light of the jury’s

21

validity finding, the Court “must infer that the jury found [Dr. Cockburn] to be credible and

22

persuasive” when testifying that the prior art, even when combined, did not disclose all claim

23

elements. Id.

24

Second, Dr. Cockburn testified, contrary to Dr. Greenberg, that a person of ordinary skill in

25

the art would not have been motivated to combine the Neonode and Plaisant in such a way as to

26

invent claim 8. ECF No. 1926 at 2866. He provided two reasons. First, Plaisant described “toggle

27

designs” intended to be used with a “touch screen [that] would be mounted into a wall or into

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cabinetry” for controlling “office or home appliances, like air conditioning units or heaters.” Id. at

2

2865. A reasonable jury could infer from this testimony that an ordinary artisan would not have

3

been motivated to combine elements from a wall-mounted touchscreen for home appliances and a

4

smartphone, particularly in view of the “pocket dialing” problem specific to mobile devices that

5

Apple’s invention sought to address. See ECF No. 1623 at 636.

6

Additionally, Dr. Cockburn explained that Plaisant “teach[es] away from the use of

7

sliding,” because it “tells you not to use the sliding [toggle] mechanism.” ECF No. 1926 at 2865-

8

66. What a piece of prior art teaches and motivation to combine prior art are both questions of fact.

9

Cheese Sys. Inc. v. Tetra Pak Cheese & Powder Sys. Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).

10

“A reference may be said to teach away when a person of ordinary skill, upon reading the

11

reference, would be discouraged from following the path set out in the reference, or would be led

12

in a direction divergent from the path that was taken by the applicant.” In re Kahn, 441 F.3d 977,

13

990 (Fed. Cir. 2006) (citation omitted). Here, Dr. Cockburn explained that Plaisant teaches that

14

sliders were “not preferred” among the toggle mechanisms, and “tells us that toggles that are

15

pushed seem to be preferred over toggles that slide; and the sliding is more complex than simply

16

touching; and also that sliders are harder to implement.” ECF No. 1926 at 2866. Dr. Greenberg

17

disputed this point, and testified that Plaisant “teaches that the sliding toggles worked” and noted

18

how Plaisant states that the fact that “user[s] use [sliders] correctly is encouraging.” ECF No. 1717

19

at 1972-73.

20

The Court notes that there is language in Plaisant to arguably support either expert’s

21

interpretation concerning whether Plaisant “teaches” away from the use of sliders. This is because

22

Plaisant evaluates the pros and cons of various types of “toggles” used to change the state of a

23

device and concludes generally that “the evaluation of the toggles showed some important

24

differences in personal preferences.” DX 344.002. More specifically, on the one hand, Plaisant

25

states that “toggles that are pushed seemed to be preferred over the toggles that slide,” “sliding is a

26

more complex task than simply touching,” and “sliders are more difficult to implement than

27

buttons[.]” DX 344.002. On the other hand, Plaisant seems to encourage the use of sliders by

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noting that users “used sliding motions successfully to manipulate the sliding toggles,” by noting

2

that the fact that “user[s] use [sliders] correctly is encouraging,” and by noting that “another

3

advantage of the sliding movement is that it is less likely to be done inadvertently therefore making

4

the toggle very secure[.] This advantage can be pushed further and controls can be designed to be

5

very secure by requiring more complex gestures[.]” DX 344.002.

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6

As noted above, what a piece of prior art teaches is a question of fact for the jury. The

7

Court concludes that in light of Dr. Cockburn’s testimony and the language in Plaisant suggesting

8

Plaisant taught away from sliders, the jury’s implied finding of fact that there would have been no

9

motivation to combine the Neonode and Plaisant was supported by substantial evidence in the

10

record. See Teleflex, Inc., v. Ficosa N. Am. Corp., 299 F.3d 1313, 1334 (Fed. Cir. 2002) (holding

11

that expert testimony of a “lack of motivation to combine . . . constitutes substantial evidence of

12

nonobviousness”); Grp. One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1304 (Fed. Cir. 2005)

13

(reversing judgment as a matter of law of obviousness in view of conflicting expert testimony on

14

motivation to combine); Harris Corp. v. Fed. Express Corp., 502 Fed. Appx. 957, 968 (Fed. Cir.

15

2013) (unpublished) (affirming denial of motion for judgment as a matter of law of obviousness

16

where there was conflicting evidence regarding whether prior art taught away from the invention

17

because the prior art “also included certain facts that might have discouraged an artisan from using

18

[the] spread spectrum.”).

19

Finally, the jury’s validity finding means the jury implicitly rejected Samsung’s claim that

20

there were no secondary indicia of non-obviousness. This finding is supported by substantial

21

evidence including industry praise specifically for Apple’s slide to unlock invention. See PX 118

22

(January 2007 MacWorld video featuring Steve Jobs’ live demonstration of slide to unlock on the

23

iPhone to an audience that began cheering). Apple also introduced various Samsung internal

24

documents noting how Apple’s slide to unlock feature is precise, easy to use, and intuitive. See PX

25

119 at 11 (presentation prepared by Samsung’s European design team in June 2009 calling Apple’s

26

slide to unlock invention a “[c]reative way[] of solving UI complexity.”); PX 121 at 100 (Samsung

27

software verification group document noting that unlike Samsung’s “victory” phone, iPhone’s

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“unlocking standard is precise as it is handled through sliding, and it allows prevention of any

2

wrong motion,” and recommending a “direction of improvement” to make it the “same as iPhone,

3

clarify the unlocking standard by sliding”); PX 157 at 19-20 (Samsung document recommending to

4

improve Samsung phone by making it like the iPhone which is “easy to unlock, [given that] lock

5

screen always shows guide text or arrow like the iPhone” and to make the lock icon’s movement

6

“be smooth and continuous” like the iPhone); PX 219 at 14 (Samsung document noting that the

7

iPhone “intuitively indicate[s] the direction and length to move when unlocking on the lock

8

screen”); ECF No. 1623 at 638-50 (Dr. Cockburn testimony that these various Samsung documents

9

recognized the advantages of claim 8); Power-One, Inc. v. Artesyn Techs, Inc., 599 F.3d 1343,

10

1352 (Fed. Cir. 2010) (noting that praise in the industry, and specifically praise from a competitor

11

tends to indicate that the invention was not obvious).

12

Furthermore, Apple introduced evidence of a long-felt need for its invention. See ECF No.

13

1623 at 636-37 (Dr. Cockburn’s testimony that phone designers had been trying to solve the

14

problem of accidental activation and the “pocket dial problem” before the iPhone existed, but had

15

only come up with “frustrat[ing]” solutions); ECF No. 1926 at 2869 (explaining that there had not

16

been a good mechanism for unlocking “for a long time.”); ECF No. 1623 at 599, 603, 611 (Greg

17

Christie, Apple’s Human Interface Vice President, testifying about concerns over pocket-dial

18

problem). In light of this evidence, the Court must defer to the jury’s implicit factual finding that

19

there were secondary indicia of non-obviousness. See Kinetic, 688 F.3d at 1356-57.

20

In light of the jury’s factual findings, the Court concludes it would be error to “fail[] to

21

defer to the jury’s factual findings and grant[] JMOL on obviousness.” Id. at 1371. Because there is

22

no clear and convincing evidence that it would have been obvious to bridge the gaps between the

23

prior art and claim 8, the Court DENIES Samsung’s motion for judgment as a matter of law that

24

claim 8 of the ’721 is invalid as obvious.

25

2.

Indefiniteness

26

Samsung argues that the ’721 patent is indefinite as a matter of law because the claim term

27

“unlock” is indefinite. Mot. at 19. To be valid, claims must “particularly point[] out and distinctly

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claim[] the subject matter which the applicant regards as the invention.” 35 U.S.C. § 112. The

2

purpose of this definiteness requirement is to “ensure that the claims delineate the scope of the

3

invention using language that adequately notifies the public of the patentee’s right to exclude.”

4

Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (abrogated on

5

other grounds by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014)). “[A]

6

patent is invalid for indefiniteness if its claims, read in light of the specification delineating the

7

patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art

8

about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124

9

(2014). The Supreme Court has noted that “some modicum of uncertainty” must be tolerated, given

10

the inherent limitations of language and because “absolute precision is unattainable.” Id. at 2128-

11

29. The Court DENIES Samsung’s motion.

12

While Samsung contends that the term “unlock” is indefinite because there is insufficient

13

clarity as to what it means for a device to be “locked” versus “unlocked,” the specification provides

14

a definition that establishes when a device is “locked” and when it is “unlocked:”

15
16
17
18
19
20
21
22
23
24
25
26
27

In the user-interface lock state (hereinafter the “lock state”), the device is powered
on and operational but ignores most, if not all, user input. That is, the device takes
no action in response to user input and/or the device is prevented from performing a
predefined set of operations in response to the user input. . . .
In the user-interface unlock state (hereinafter the “unlock state”), the device is in its
normal operating state, detecting and responding to user input corresponding to
interaction with the user interface. . . . An unlocked device detects and responds to
user input for navigating between user interfaces, entry of data and activation or
deactivation of functions.
’721 Patent col.7 l.64-col.8 l.45. The specification, therefore, provides guidance as to what it
means when the device is “locked.” According to the specification, when the device is locked it is
“powered on and operational but ignores most, if not all, user input.” Id. While Samsung claims it
is unclear what the phrase “most, if not all” means, the specification further describes what “most,
if not all, user input” means. According to the specification, “the locked device responds to user
input corresponding to attempts to transition the device to the user-interface unlock state or
powering the device off, but does not respond to user input corresponding to attempts to navigate

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between user interfaces.” Id. at 8:13-17. The specification later confirms that distinction between

2

“unlocked” state and a “locked” state when stating that an “unlocked device” “detects and responds

3

to user input for navigating between user interfaces[.]” Id. at 8:39-40. Accordingly, in light of these

4

explanations, the Court finds that the claim provides sufficient clarity as to the term “unlock,” and

5

that the term does not meet the standard of indefiniteness such that claim 8 as a whole “fail[s] to

6

inform, with reasonable certainty, those skilled in the art about the scope of the invention.”

7

Nautilus, 134 S. Ct. at 2124.

8

The trial record supports the Court’s conclusion that Samsung has failed to prove

9

indefiniteness by clear and convincing evidence. While the Court acknowledges that discerning

10

whether a given device is in a “locked” or “unlocked” state might be difficult in certain

11

circumstances for the general public, the Supreme Court has noted that “one must bear in mind []

12

that patents are ‘not addressed to lawyers, or even to the public generally,’ but rather to those

13

skilled in the relevant art.” Id. at 2128; see also Carnegie Steel Co. v. Cambria Iron Co., 185 U.S.

14

403, 437 (1902) (stating that “any description which is sufficient to apprise [those skilled in] the art

15

of the definite feature of the invention, and to serve as a warning to others of what the patent claims

16

as a monopoly, is sufficiently definite to sustain the patent”). Here, Dr. Cockburn, a person of at

17

least ordinary skill in the art, testified that he had “no difficulty at all in understanding the

18

difference between a locked state and an unlocked state” when he read claim 8. ECF No. 1623 at

19

634. He further testified that the “the plain and ordinary meaning” of the term is clear. Id. at 633.

20

Perhaps more convincingly, even Samsung’s own expert, Dr. Greenberg, was able to explain when

21

a “device will unlock” when explaining the ’721 patent and prior art to the jury. See ECF No. 1717

22

at 1968.

23

Accordingly, the Court finds that one of ordinary skill in the art could reasonably ascertain

24

the scope of claim 8. The Court accordingly DENIES Samsung’s motion for judgment as a matter

25

of law that claim 8 of the ’721 is invalid as indefinite.1

26
27
28

D.

Non-infringement of the ’721 Patent

1

The Court notes that this Court’s preliminary injunction order previously concluded that the term
“unlock” is not indefinite. ECF No. 221 at 52.
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The jury found that the Admire, Galaxy Nexus, and Stratosphere infringe claim 8 of the

2

’721 patent. ECF No. 1884 at 5. Samsung moves for judgment as a matter of law that no

3

reasonable jury could find that these devices infringe the ’721. Mot. at 19. The Court DENIES

4

Samsung’s motion.

5

First, Samsung argues that no reasonable jury could find that the Galaxy Nexus infringes.

6

Samsung cites how claim 8 requires detecting “a contact with the touch-sensitive display at a first

7

predefined location corresponding to an unlock image” and continuously moving “the unlock

8

image on the touch sensitive display in accordance with movement of the detected contact.” ’721

9

Patent cols.19-20. Samsung argues that “[t]he plain language thus requires that the image with

10

which the user makes contact be the same image that then moves with user contact.” Mot. at 19

11

(emphasis added). Accordingly, Samsung argues that because “the image with which the user

12

makes contact on the Galaxy Nexus devices a padlock in a circle disappears upon user contact

13

and is replaced by another, different image,” this limitation of the claim is not met. Id. (emphasis in

14

original) (citing testimony from Dr. Greenberg that the Galaxy Nexus does not infringe because the

15

image “has to be the same . . . it can’t be different,” ECF No. 1717 at 1980-81).2 Samsung

16

emphasizes that Apple’s own expert, Dr. Cockburn, admitted at trial that the image changes upon

17

user contact. Mot. at 20 (citing ECF No. 1623 at 740-42). Samsung is correct that Dr. Cockburn

18

testified that when the user contacts the unlock image in the Ice Cream Sandwich version of the

19

Galaxy Nexus, “the image will animate, it’ll change its representation slightly” and that in the

20

Jellybean version, “the image changes slightly” to a “circle that’s a spotlight onto [a series of]

21

dots.” ECF No. 1623 at 676-78, 742; see also ECF No. 1926 at 2861.

22

However, the Court disagrees that no reasonable jury could find that the Galaxy Nexus

23

infringes claim 8. Because the Court did not construe the term “unlock image,” the jury had to

24

apply its plain and ordinary meaning, and was not obligated to accept Samsung’s contention that an

25

“unlock image” must consist of the same, single image. The jury’s implicit rejection of Samsung’s

26
2

27
28

Dr. Greenberg testified that in the Ice Cream Sandwich version of the Galaxy Nexus, the new
image is a larger circle. ECF No. 1717 at 1981. In the Jelly Bean Version, the new image is a series
of dots. Id.
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argument is supported by substantial evidence. Dr. Cockburn testified that he did not agree with

2

Dr. Greenberg’s view that the accused phones do not infringe simply because the unlock image

3

changes. See ECF No. 1623 at 678-79, 742 (interpreting claim 8 to allow multiple images, given

4

that the specification teaches that “the visual representation of the unlock image can change” and

5

explicitly states the unlock image “may be animated”); see also ECF No. 1926 at 2861. The jury

6

was free to weigh the experts’ testimony and determine for itself whether the Galaxy Nexus

7

contains an “unlock image” under the plain meaning of that term. Indeed, the reasonableness of the

8

jury’s implicit finding that Dr. Cockburn’s interpretation of the claim was correct is demonstrated

9

by how this Court rejected precisely the same argument Samsung raises now in this Court’s

10

preliminary injunction order in this case. Then, as now, Samsung argued that “the term ‘unlock

11

image’ must refer to the same single ‘unlock image’” because the claims first refer to “an unlock

12

image” and later refer to “the unlock image.” Compare ECF No. 221 at 44, with Mot. at 19. The

13

Court rejected Samsung’s proffered construction, concluding that “Apple’s argument that ‘unlock

14

image’ may refer to more than one image is also supported by the specification[,] [which] . . .

15

demonstrate[s] ‘an unlock gesture corresponding to one of a plurality of unlock images, according

16

to some embodiments of the invention.’” ECF No. 221 at 45 (internal quotation marks and citations

17

omitted).

18

Nor is the Court convinced by Samsung’s more specific argument that the Jelly Bean

19

version of the Galaxy Nexus cannot infringe because Apple did not present any evidence that the

20

second unlock image—which Dr. Greenberg testified is a “series of dots,” ECF No. 1717 at 1980-

21

81—“moves” and thus the limitation that the unlock image continuously move in accordance with

22

the detected contact is not met. Mot. at 21; see ECF No. 1717 at 1981 (Dr. Greenberg’s testimony

23

that “the dots don’t actually move at all. The only thing that happens is that individual dots get

24

brighter or dimmer.”). The jury could have reasonably credited Dr. Cockburn’s testimony that the

25

second image was rather a “circle that’s a spotlight onto [a series of] dots.” ECF No. 1623 at 742;

26

see also id. at 677. Dr. Cockburn testified that the “continuously move” element is met because the

27

“spotlight effect on the dots” moves in accordance with the user’s contact. ECF No. 1623 at 677;

28

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ECF No. 1926 at 2861. In support, Dr. Cockburn showed the jury PDX 46, a demonstrative of the

2

Galaxy Nexus which indeed shows a circle that is a spotlight effect on a series of dots moving in

3

accordance with the user’s contact. See ECF No. 1623 at 677. The demonstrative shows that,

4

contrary to Dr. Greenberg’s opinion, the dots and the spotlight on them move in accordance with

5

the user’s contact. The jury could have confirmed Dr. Cockburn’s testimony and the movements

6

shown in PDX 46 by actually testing the slide to unlock feature in the Galaxy Nexus phones in

7

evidence. See JX 29 A-I.

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8

Further, while Samsung contends Dr. Cockburn did not offer any evidence in support of his

9

contention that the unlock image in the Galaxy Nexus is a “graphical interactive user interface

10

object” that may change form, Mot. at 20, Dr. Cockburn did demonstrate how the unlock image

11

changes appearance by showing the jury demonstratives of representative Galaxy Nexus devices.

12

See ECF No. 1623 at 676-77 (showing PDX 44, PDX 46). The jury was free to confirm

13

Dr. Cockburn’s conclusions and demonstratives by testing the Galaxy Nexus phones in evidence.

14

See JX 29A-I.

15

Finally, the Court rejects Samsung’s argument that judgment of non-infringement should be

16

granted as to the Admire, Galaxy Nexus, and Stratosphere because Apple offered no evidence of

17

any “instructions” required by claim 8. Mot. at 21 (citing ’721 Patent cols.19-20). To the contrary,

18

the jury heard Dr. Cockburn’s expert testimony that because the accused phones are computing

19

devices, they necessarily had “software, processors, [and] memory.” ECF No. 1623 at 659; see also

20

id. at 630 (“[S]oftware components are just a form of instructions); id. at 626 (“Source code is the

21

set of instructions that are on a computing device that enable it to become operative in some way.

22

So the instructions to determine the behavior of the device, and that’s software.”).

23

In sum, because there is substantial evidence to support the jury’s findings of infringement,

24

the Court DENIES Samsung’s motion for judgment as a matter of law that the Admire, Galaxy

25

Nexus, and Stratosphere do not infringe claim 8.

26

E.

Willful Infringement of Claim 8 of the ’721 Patent

27
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Samsung moves for judgment as a matter of law that Samsung did not willfully infringe

2

claim 8 of the ’721 patent. Mot. at 21. To establish willfulness, “a patentee must show by clear and

3

convincing evidence that the infringer acted despite an objectively high likelihood that its actions

4

constituted infringement of a valid patent. The state of mind of the accused infringer is not relevant

5

to this objective inquiry. If this threshold objective standard is satisfied, the patentee must also

6

demonstrate that this objectively-defined risk . . . was either known or so obvious that it should

7

have been known to the accused infringer.” In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed.

8

Cir. 2007) (internal citation omitted). Thus, the willfulness inquiry is a two-prong analysis,

9

requiring an objective inquiry and a subjective inquiry. The objective inquiry is a question for the

10

Court, and the subjective inquiry is a question for the jury. Bard Peripheral Vascular, Inc. v. W.L.

11

Gore & Assocs., Inc., 682 F.3d 1003, 1007 (Fed. Cir. 2012). The objective inquiry requires a

12

showing of “objective recklessness” by the infringer. In re Seagate Tech., 497 F.3d at 1371; Bard,

13

682 F.3d at 1006 (“Seagate also requires a threshold determination of objective recklessness.”).

14

Here, the jury found that, as a subjective matter, Samsung willfully infringed the ’721

15

patent. ECF No. 1884 at 7. Because both prongs must be established for the Court to make an

16

ultimate finding of willfulness, failure on the objective prong defeats a claim of willfulness.

17

Because the Court finds no objective willfulness for the reasons set forth below, the Court need not

18

consider whether the jury’s finding of subjective willfulness was supported by substantial

19

evidence. See Apple, Inc. v. Samsung Elecs. Co., Ltd., 920 F. Supp. 2d 1079, 1108 (N.D. Cal. 2013)

20

(declining to examine whether the jury’s finding on subjective willfulness was supported by

21

substantial evidence because the objective willfulness prong was not satisfied). The Court

22

GRANTS Samsung’s motion.

23

As noted above, to establish objective willfulness, Apple must prove by clear and

24

convincing evidence that there was an “objectively high likelihood that [Samsung’s] actions

25

constituted infringement of a valid patent.” Bard, 682 F.3d at 1005 (citing Seagate, 497 F.3d at

26

1371). If Samsung had an objectively reasonable defense to infringement, its infringement cannot

27

be said to be objectively willful, and objective willfulness fails as a matter of law. See Spine

28

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Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1319 (Fed. Cir. 2010) (“The

2

‘objective’ prong of Seagate tends not to be met where an accused infringer relies on a reasonable

3

defense to a charge of infringement.”); Bard, 682 F.3d at 1006 (objective willfulness determination

4

“entails an objective assessment of potential defenses based on the risk presented by the patent.

5

Those defenses may include questions of infringement but also can be expected in almost every

6

case to entail questions of validity[.]”). Samsung’s defense is not reasonable if it is “objectively

7

baseless.” Id. at 1007-08. An “objectively baseless” defense is one which “no reasonable litigant

8

could realistically expect [to] succe[ed] on the merits.” Id. at 1007 (citation omitted).

United States District Court
For the Northern District of California

9

The Court finds that Samsung’s defense to infringement of claim 8 was not objectively

10

baseless. As a preliminary matter, as noted above, Dr. Cockburn and Dr. Greenberg had differing

11

opinions concerning whether Plaisant “teaches” away from the use of sliders and thus whether the

12

person of ordinary skill in the art would have a motivation to combine Plaisant and the Neonode.

13

This is not surprising in light of the fact that there is language in Plaisant to support either expert’s

14

interpretation. This is because Plaisant evaluates the pros and cons of various types of “toggles”

15

used to change the state of a device and concludes generally that “the evaluation of the toggles

16

showed some important differences in personal preferences.” DX 344.002. On the one hand,

17

Plaisant states that “toggles that are pushed seemed to be preferred over the toggles that slide,”

18

“sliding is a more complex task than simply touching,” and “sliders are more difficult to implement

19

than buttons[.]” DX 344.002. On the other hand, Plaisant seems to encourage the use of sliders by

20

noting that users “used sliding motions successfully to manipulate the sliding toggles,” by noting

21

that the fact that “user[s] use [sliders] correctly is encouraging,” and by noting that “another

22

advantage of the sliding movement is that it is less likely to be done inadvertently therefore making

23

the toggle very secure[.] This advantage can be pushed further and controls can be designed to be

24

very secure by requiring more complex gestures[.]” DX 344.002.

25

While Dr. Cockburn testified that there was no motivation to combine the two references,

26

Dr. Greenberg testified to the contrary, noting how Plaisant “teaches that the sliding toggles

27

worked” and how Plaisant states that the fact that “user[s] use [sliders] correctly is encouraging.”

28

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ECF No. 1717 at 1972-73. Based on Dr. Greenberg’s testimony and the language in Plaisant

2

suggesting Plaisant encouraged use of sliders, the Court cannot find that Samsung’s reliance on an

3

invalidity defense was objectively baseless. Further, a motivation to combine may “come from the

4

nature of a problem to be solved, leading inventors to look to references relating to possible

5

solutions to that problem.” Ruiz v. Found. Anchoring Sys., Inc., 357 F.3d 1270, 1276-77 (Fed. Cir.

6

2004) (citation omitted) (“[B]ecause the prior art references address the narrow problem of

7

underpinning existing building foundations, a person seeking to solve that exact same problem

8

would consult the references and apply their teachings together.”). Here, in light of Dr.

9

Greenberg’s opinion and the language in the prior art references, the reasonable litigant could have

10

believed that the two references provided a motivation to combine by describing a similar solution

11

the use of sliding motions

to solve the problem of inadvertent activation in touchscreen devices.

12

See DX 344.002 (Plaisant suggesting sliding toggles are preferable for preventing inadvertent

13

activation in touchscreen devices: “[A]nother advantage of the sliding movement is that it is less

14

likely to be done inadvertently therefore making the toggle very secure[.]”); DX 342.013 (Neonode

15

citing a similar inadvertent activation problem in mobile phones and advocating a similar sliding

16

solution by stating, “[T]o make sure no unintentional calls are made[,] . . . [s]weep right to unlock

17

your unit”).

18

Apple argues Samsung had no reasonable invalidity defense because this Court previously

19

concluded at the preliminary injunction phase that Apple was likely to withstand Samsung’s

20

obviousness challenge to the validity of the ’721 patent. Opp’n at 22-23 (citing ECF No. 221 at

21

51). However, the Court finds that its prior conclusion at the preliminary injunction stage does not

22

render Samsung’s reliance on its invalidity defense objectively baseless. At the preliminary

23

injunction stage, Samsung failed to show that the Neonode qualified as a prior art reference, and

24

accordingly the Court disregarded the Neonode in its invalidity analysis. ECF No. 221 at 50.

25

Further, the Court noted that Samsung’s prior expert failed to identify any reason to combine

26

Plaisant with “a handheld device.” Id. at 50-51. Here, in contrast, there is no dispute that the

27

Neonode is a prior art reference, and Samsung’s expert Dr. Greenberg has provided a reason to

28

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combine Plaisant and the Neonode. See ECF No. 1717 at 1974. Thus, the Court finds that its prior

2

conclusion at the preliminary injunction stage does not render Samsung’s reliance on its invalidity

3

defense based on the Neonode and Plaisant objectively baseless.

United States District Court
For the Northern District of California

4

Further, while Apple argues that the U.S. Patent and Trademark Office (“PTO”) considered

5

the Neonode and Plaisant yet still issued claim 8, Opp’n at 22, the PTO’s determinations are not

6

dispositive because the Federal Circuit has found no objective willfulness even where a

7

defendant’s invalidity defense was based on a prior art reference that was before the PTO and the

8

PTO found the prior art reference did not invalidate the claim. See, e.g., Spine Solutions, 620 F.3d

9

at 1319-20 (reversing district court’s denial of defendant’s motion for judgment as a matter of law

10

of no willfulness because defendant had an objectively reasonable invalidity defense based on two

11

prior art references, irrespective of the fact that the PTO had the two prior art references before it

12

when issuing the patent); Univ. of Pittsburgh of Commonwealth Sys. of Higher Educ. v. Varian

13

Med. Sys., Inc., 561 Fed. Appx. 934, 943-45 (Fed. Cir. 2014) (unpublished) (reversing district

14

court’s finding that defendant’s invalidity defense was objectively unreasonable, despite

15

acknowledging that the PTO had found that the prior art the defendant relied upon did not

16

invalidate the asserted claims when reexamining the patent).

17

In sum, Samsung’s infringement of the ’721 patent was not objectively willful because

18

Samsung’s invalidity defense was not objectively baseless. Accordingly, Apple has not met its

19

burden to show clear and convincing evidence that Samsung acted despite an objectively high

20

likelihood that its actions would infringe a valid patent. Samsung’s motion for judgment as a matter

21

of law that its infringement of the ’721 patent was not willful is GRANTED.

22

F.

23

Samsung moves for judgment as a matter of law that no reasonable jury could find claim 18

Invalidity of the ’172 Patent

24

of the ’172 patent not invalid. Mot. at 25-26. Claim 18 of the ’172 patent covers a particular form

25

of text correction, in which a “current character string” is displayed in a first and second area of a

26

touch screen display. JX 13. The user can replace a mistyped word (i.e., the “current character

27

string”) by selecting a delimiter or selecting a replacement word in the second area. Id. The user

28

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can also keep the “current character string” by selecting it in the second area. Id. The jury found

2

claim 18 of the ’172 patent not invalid. Samsung claims that a combination of two prior art

3

references, U.S. Patent No. 7,880,730 (“Robinson”) and International Publication No. WO

4

2005/008899 A1 (“Xrgomics”), render claim 18 obvious. Below, the Court first examines whether

5

substantial evidence supported the jury’s underlying factual conclusions that there was a significant

6

gap between the prior art and the patent and that there were secondary indicia of non-obviousness.

7

The Court DENIES Samsung’s motion.

8

First, the Court notes that there was conflicting expert testimony on the question of

9

obviousness. Samsung’s expert, Dr. Wigdor, testified that Robinson disclosed every limitation of

10

claim 18 except for one—that the “current character string [appear] in the first area.” ECF No. 1717

11

at 2015-17; 2023-24. Wigdor testified that Xrgomics disclosed that limitation by including the

12

current character string in the first area, and that the person of ordinary skill in the art would

13

combine Robinson and Xrgomics to fill the missing element in Robinson. Id. at 2018-19; 2023-24.

14

However, Apple’s expert, Dr. Cockburn, testified that Robinson missed several limitations

15

of claim 18 in addition to the “current character string in the first area” limitation. ECF No. 1927 at

16

2903-05. For instance, Robinson missed the limitation that “the current character string in the first

17

area is replaced with the suggested replacement string when the user presses a delimiter.” Id. at

18

2905. Dr. Cockburn further testified that Xrgomics, though it discloses the “current character string

19

in the first area” limitation, id. at 2905, similarly does not disclose the limitation that “the current

20

character string in the first area is replaced with the suggested replacement string when the user

21

presses a delimiter” because Xrgomics offers alternative words that complete the current character

22

string in the first area rather than correct that current character string. Id. at 2904-05 (testifying that

23

Xrgomics is a “word completion” patent, not a “spelling correction” patent and that “there’s no

24

correction” going on in Xrgomics because Xrgomics just adds letters to the end of the current

25

character string i.e., it offers alternative words that complete that word). Finally, contrary to what

26

Dr. Wigdor testified, Dr. Cockburn opined that the combination of Robinson and Xrgomics did not

27

disclose the elements of claim 18 and did not render claim 18 obvious because Xrgomics did not

28

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“fill th[e] gaps” in Robinson. Id. Based on this conflicting expert testimony, the jury was free to

2

“make credibility determinations and believe the witness it considers more trustworthy.” Kinetic,

3

688 F.3d at 1362 (citation omitted). The jury’s finding of validity indicates that the jury made an

4

implied finding of fact affirming Dr. Cockburn’s testimony that Robinson and Xrgomics did not

5

disclose all the elements of claim 18 and rejecting Dr. Wigdor’s opinion of obviousness. Id. at

6

1363 (“[W]hether the prior art discloses the limitations of a particular claim is a question of fact to

7

be determined by the jury.”). In other words, the jury implicitly rejected Samsung’s argument that

8

it would be obvious to combine two things—the “current character string in the first area” feature in

9

Xrgomics and Robinson’s feature of having a suggested replacement string in the second area—in

10

order to come up with claim 18’s limitation that “the current character string in the first area is

11

replaced with the suggested replacement string when the user presses a delimiter.” Mot. at 27. The

12

Court must give that finding deference. Kinetic, 688 F.3d at 1356-57. Crediting Dr. Cockburn’s

13

testimony over Dr. Wigdor’s, the Court cannot say that the jury’s implied finding that the gap

14

between the prior art and claim 18 was significant was not supported by substantial evidence.

15

Second, the jury’s finding of non-obviousness means the jury implicitly rejected Samsung’s

16

claim, and Dr. Wigdor’s testimony, that there were no secondary indicia of non-obviousness. ECF

17

No. 1717 at 2024; Mot. at 28. The Court must defer to this implicit factual finding. See Kinetic,

18

688 F.3d at 1356-57. Apple cites substantial evidence to support the jury’s finding, including

19

Dr. Cockburn’s testimony that there was industry praise for claim 18 as illustrated in Samsung’s

20

internal documents and comments from carriers “that they want . . . the claim 18 mechanism.” ECF

21

No. 1927 at 2906; ECF No. 1623 at 698-700 (discussing PX 168, a Samsung internal document

22

reflecting T-Mobile’s request that Samsung modify its autocorrect technology to adopt the

23

functionality of claim 18).3

24

3

25
26
27
28

Samsung has directed the Court to the PTO’s recent non-final rejection of claim 18 in an ex parte
reexamination. See ECF No. 1951. However, this preliminary decision does not affect the outcome
here. The Federal Circuit has noted that initial rejections by the PTO are generally entitled to
minimal weight. Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1584 (Fed. Cir. 1996)
(noting that non-final office actions are so commonplace that they “hardly justif[y] a good faith
belief in the invalidity of the claims” for willfulness purposes) (citation omitted); see also id. at
1584 (stating that a grant of a request for reexamination “does not establish a likelihood of patent
invalidity”); Q.G. Prods. v. Shorty, Inc., 992 F.2d 1211, 1213 (Fed. Cir. 1993) (noting that initial
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2

convincing evidence that it would have been obvious, as a matter of law, to bridge the gaps

3

between the prior art and claim 18. Accordingly, the Court DENIES Samsung’s motion for

4

judgment as a matter of law that claim 18 of the ’172 patent is invalid.

5

G.

6

The jury determined that asserted claim 25 of Apple’s ’959 patent was not invalid. See ECF

7
8
9
10
United States District Court
For the Northern District of California

In light of the jury’s factual findings, this Court cannot conclude that there is clear and

11
12
13
14

Invalidity of Claim 25 of the ’959 Patent

No. 1884 at 7. Claim 25 depends from claim 24 and recites:
24. A computer readable medium for locating information from a plurality of
locations containing program instructions to:
receive an information identifier;
provide said information identifier to a plurality of heuristics to locate information
in the plurality of locations which include the Internet and local storage
media;
determine at least one candidate item of information based upon the plurality of
heuristics; and
display a representation of said candidate item of information.
25. The computer readable medium of claim 24, wherein the information identifier
is applied separately to each heuristic.
’959 Patent cls. 24, 25. Samsung moves for judgment as a matter of law that claim 25 is invalid,

15
based on three grounds: (1) anticipation, (2) obviousness, and (3) indefiniteness. The Court
16
addresses each basis in turn and DENIES Samsung’s motion.
17
18

1.

Anticipation

First, Samsung contends that the WAIS reference anticipates claim 25. A patent claim is
19
invalid for anticipation under 35 U.S.C. § 102 “if each and every limitation is found either
20
expressly or inherently in a single prior art reference.” Bristol-Myers Squibb Co. v. Ben Venue
21
Labs., Inc., 246 F.3d 1368, 1374 (Fed. Cir. 2001). Whether a patent is anticipated is a question of
22
23
24
25
26
27
28

patent “rejections often occur as a part of the normal application process”); Minemyer v. B Roc
Reps., Inc., 2012 WL 346621, at *4 (N.D. Ill. Feb. 2, 2012) (“The cases are virtually uniform in
holding that office actions at the PTO are not relevant on the question of patent invalidity or willful
infringement. . . . The cases recognize that interim acceptances, rejections and adjustments are the
norm at the PTO.”). Accordingly, the Court does not find that the PTO’s non-final office action is a
sufficient basis for overturning the jury verdict.
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fact. Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287, 1297 (Fed. Cir. 2010).

2

Anticipation must be shown by clear and convincing evidence. Id. at 1292.4

3

At trial, Samsung relied on software called freeWAIS-sf 2.0 (DX 301, the “WAIS”

4

reference) as alleged prior art, and presented testimony from three witnesses supposedly showing

5

that the software qualified as prior art and disclosed all limitations of claim 25. “WAIS” is an

6

acronym for “Wide Area Information Server.” Tr. at 1845:18-21. Samsung first called Brewster

7

Kahle, founder of the Internet Archive, to testify that he conceived of the WAIS project as a system

8

that could “basically search your own hard drive, your own personal computer of e-mail and

9

memos or, or presentations and the like.” Id. at 1845:3-5, 1846:4-16, 1853:21-25. Next, Samsung

10

called Ulrich Pfeifer to explain that he developed the freeWAIS-sf software in the mid-1990s, and

11

that WAIS was “a program to search documents and your local computer or by the web.” Id. at

12

1863:4-16; see also id. at 1863:18-23, 1865:17-21 (stating that freeWAIS-sf was available online).

13

Finally, Samsung relied on Dr. Martin Rinard for expert opinions that the WAIS reference

14

disclosed various limitations of claim 25, including the use of a “heuristic ranking algorithm.” Id.

15

at 1915:21-1916:16.

16

Despite Samsung’s presentation, the jury had multiple bases from which to conclude that

17

Samsung failed to demonstrate with clear and convincing evidence that claim 25 was invalid.

18

Dr. Rinard expressly relied on “the software distribution that contains the source code for WAIS.”

19

Tr. at 1914:6-9; see also id. at 2915:11-15. Through its expert Dr. Alex Snoeren, Apple introduced

20

testimony that freeWAIS-sf did not contain “program instructions” as required by claim 25 because

21

it contained only source code, not an executable program. Dr. Snoeren told the jury that “the way

22

source code works is that’s for humans to read and write. Computers don’t actually execute source

23

code. So in order to get program instructions, you have to compile that code. So the source code

24

itself wouldn’t actually even meet the preamble of the claim.” Id. at 2824:7-21. Samsung states

25

incorrectly that Dr. Snoeren contradicted himself by relying on source code for his infringement

26

opinions. Dr. Snoeren analyzed source code in the accused products, see id. at 950:12-21, but also

27

4

28

The Court previously denied Apple’s motion for summary judgment of no invalidity of claim 25.
See ECF No. 1151 at 27-29.
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explained that the accused devices had flash memory containing “program instructions,” id. at

2

949:12-18, and there was no dispute that the accused Samsung devices had compiled code.

3

Moreover, the parties did not request claim construction of “program instructions.” In Versata

4

Software, Inc. v. SAP America, Inc., the Federal Circuit addressed a similar situation, where the

5

parties did not request construction of “computer instructions,” and held that “[w]hether ‘computer

6

instructions’ can include source code thus becomes a pure factual issue.” 717 F.3d 1255, 1262

7

(Fed. Cir. 2013). While the Versata jury concluded that the disputed source code did constitute

8

“computer instructions,” the jury here was free to reach the opposite conclusion from the

9

conflicting expert testimony.

United States District Court
For the Northern District of California

10

Dr. Snoeren also opined that freeWAIS-sf did not teach the limitation of “plurality of

11

heuristics to locate information in the plurality of locations.” Regarding “plurality of heuristics,”

12

Dr. Snoeren critiqued Dr. Rinard’s demonstration because it repeated the same heuristic on

13

multiple computers, “so what we have here is two copies of the same heuristic,” such that “[w]e

14

don’t have a plurality of heuristics.” Tr. at 2823:7-2824:6. Regarding “plurality of locations,”

15

Dr. Snoeren also testified that the WAIS source code did not show searching on the Internet, only

16

on “a local server and a server on another machine.” Id. at 2825:7-19. On these points, the jury

17

could reasonably have credited Apple’s expert evidence over Samsung’s.

18

Additionally, Apple called into question whether WAIS qualified as prior art. Samsung

19

relied on the WAIS reference being known or used in the United States prior to the ’959 patent’s

20

priority date. See 35 U.S.C. § 102(a) (2006). Dr. Rinard admitted that he did not know of any

21

actual computers in the United States that ran freeWAIS-sf before the ’959 patent’s priority date of

22

January 5, 2000. See Tr. at 1953:8-25. On cross-examination, Mr. Pfeifer (the developer of

23

freeWAIS-sf) also equivocated as to whether freeWAIS-sf was available from servers in the United

24

States, or only in four countries abroad, before the ’959 patent’s priority date. See id. at 1870:9-21

25

(“I would not want to rule out that I put one copy of, or fetched one copy from the United States.”).

26

Mr. Pfeifer was also unable to confirm the configuration of any freeWAIS-sf systems that allegedly

27
28

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existed prior to January 5, 2000. See id. at 1871:3-1872:14. Accordingly, the jury could have

2

reasonably determined that Samsung failed to show that WAIS qualified as prior art.

3

United States District Court
For the Northern District of California

4

2.

Obviousness

Second, Samsung contends that claim 25 would have been obvious as a matter of law,

5

based on a combination of “Smith” (JX 55, U.S. Patent No. 7,653,614) and “Shoham” (JX 56, U.S.

6

Patent No. 5,855,015). As noted above, obviousness is a question of law, but requires the court to

7

“presume that the jury resolved the underlying factual disputes in favor of the verdict [] and leave

8

those presumed findings undisturbed if they are supported by substantial evidence.” Kinetic, 688

9

F.3d at 1356-57 (citation and quotation omitted). At trial, Dr. Rinard opined that Smith is “another

10

example of universal search” employing heuristics, Tr. at 1930:2-10, that Shoham used

11

“conventional heuristic search,” id. at 1931:19-23, and that those skilled in the art would have been

12

motivated to combine the two, id. at 1931:24-1932:5. Dr. Rinard also briefly touched on secondary

13

considerations of non-obviousness, claiming that there was no commercial success or copying. See

14

id. at 1932:16-1933:9.

15

However, Dr. Rinard’s obviousness analysis was cursory, without substantive analysis of

16

the disclosures of Smith or Shoham, or a limitation-by-limitation analysis of claim 25. See

17

generally id. at 1929:9-1933:9. Dr. Snoeren provided greater testimony about the contents of Smith

18

and Shoham, opining that there would have been no reason to combine Smith (“a patent for a fancy

19

set top box or table box”) with Shoham (“a very theoretical mathematical patent”), and that such a

20

combination would not have disclosed all elements of claim 25. Id. at 2827:4-25. In light of this

21

conflicting testimony, the jury was entitled to assess the experts’ credibility on these issues. See

22

Kinetic, 688 F.3d at 1362. Thus, the jury could have determined that Smith and Shoham failed to

23

teach the elements of claim 25, and that there would have been no reason to combine those

24

references. Based on those implied findings, the Court cannot conclude as a matter of law that

25

claim 25 would have been obvious.

26
27

Samsung asserts that Dr. Snoeren’s failure to give a “point-by-point response” to
Dr. Rinard or address secondary considerations renders Dr. Snoeren’s opinions “flawed as a matter

28

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of law” such that they “cannot be considered in evaluating obviousness.” Mot. at 32. These

2

arguments distort the ultimate burden of proof on obviousness. See Novo Nordisk A/S v. Caraco

3

Pharm. Labs., Ltd., 719 F.3d 1346, 1353 (Fed. Cir. 2013) (noting that “the burden of persuasion

4

remains with the challenger during litigation” for obviousness).

5

Indefiniteness

6

As noted above, the Supreme Court decided Nautilus on June 2, 2014 (after Samsung filed

7

its current motion) and held that indefiniteness turns on whether claims define the invention “with

8

reasonable certainty.” 134 S. Ct. at 2124. Samsung now argues that the term “heuristic” in the ’959

9

patent is indefinite as a matter of law under this new standard.

10
United States District Court
For the Northern District of California

3.

During summary judgment proceedings, the Court denied Samsung’s motion for judgment

11

that the term “heuristic” in the ’959 patent was indefinite under the now-overruled “insolubly

12

ambiguous” standard, but noted: “Samsung remains free to raise the issue of indefiniteness again

13

should the term ‘heuristic’ become central to Apple’s attempts to distinguish the ’959 Patent from

14

any prior art Samsung asserts at trial.” ECF No. 1151 at 33 n.11. The parties now dispute whether

15

Apple in fact tried to distinguish the prior art at trial on the basis of “heuristic.” Samsung contends

16

that Apple relied exclusively on this term to rebut invalidity, while Apple argues that it relied only

17

on “plurality of heuristics,” not the definition of “heuristic” itself. Without deciding this issue, and

18

for purposes of this motion, the Court addresses Samsung’s indefiniteness arguments under the

19

intervening Nautilus decision. The Court determines that Samsung has not shown by clear and

20

convincing evidence that “heuristic” is indefinite.

21

The Court previously addressed the meaning of “heuristic.” In resolving Apple’s motion for

22

a preliminary injunction, the Court construed the similar term “heuristic algorithm” in U.S. Patent

23

No. 8,086,604 (which is related to the ’959 patent and shares a common specification), based on

24

that patent’s specification, prosecution history, and extrinsic evidence from the parties. See ECF

25

No. 221 at 15-19. On appeal, when addressing the preliminary injunction in this case, the Federal

26

Circuit reversed other aspects of this Court’s claim construction, but did not disturb the

27

construction of “heuristic algorithm.” See Apple, Inc. v. Samsung Elecs. Co., Ltd., 695 F.3d 1370,

28

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1378-80 (Fed. Cir. 2012). Although indefiniteness was not an issue in the appeal and the Federal

2

Circuit’s analysis preceded Nautilus, the Federal Circuit’s analysis may be some indication that

3

“heuristic” is not indefinite and has a reasonably certain meaning.

4

Later, at the summary judgment stage, the Court further addressed the meaning of

5

“heuristic.” Without objection from the parties, the Court construed “heuristic” in the ’959 patent

6

consistently with its prior construction of “heuristic algorithm,” to mean: “some ‘rule of thumb’

7

that does not consist solely of constraint satisfaction parameters.” ECF No. 1151 at 31. As noted

8

above, the Court rejected Samsung’s indefiniteness arguments in Samsung’s summary judgment

9

motion. The Court distinguished “heuristic” from other terms held to be indefinite

such as

10

“fragile gel” in Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008)

11

because “neither the term ‘heuristic’ nor the Court’s construction of it involves a word of degree,

12

pure functional language, or other danger sign that typically triggers indefiniteness concerns.” ECF

13

No. 1151 at 32.

14

Furthermore, both Dr. Rinard and Dr. Snoeren applied the term “heuristic” under this

15

Court’s construction to the accused Samsung devices and the asserted prior art without difficulty.

16

See Tr. at 1915:21-1916:16 (Rinard discussing how WAIS “implement[s] a rule of thumb”), 954:1-

17

17 (Snoeren identifying accused “code that actually explains how the rule of thumb works”). Other

18

than conclusory allegations that the term is “ill-defined,” Samsung provides no clear and

19

convincing evidence for holding that “heuristic” is indefinite. See Reply at 17-18; cf. Bluestone

20

Innovations LLC v. Nichia Corp., No. 12-CV-00059-SI, 2014 U.S. Dist. LEXIS 87182, at *36

21

(N.D. Cal. June 24, 2014) (“Defendants have failed to provide the Court with any evidence

22

showing that someone skilled in the relevant art would be unable to ascertain the scope of claim 9

23

with reasonable certainty.”). Accordingly, the Court DENIES Samsung’s indefiniteness challenge

24

to the ’959 patent.

25

H.

26

The jury also determined that asserted claim 20 of Apple’s ’414 patent was not invalid. See

27

Invalidity of Claim 20 of the ’414 Patent

ECF No. 1884 at 7. Claim 20 depends from claim 11 and recites:

28

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2
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4
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11. A computer readable storage medium containing executable program
instructions which when executed cause a data processing system to perform
a method comprising:
executing at least one user-level non-synchronization processing thread, wherein the
at least one user-level non-synchronization processing thread is provided by
a user application which provides a user interface to allow a user to access
and edit structured data in a first store associated with a first database; and
executing at least one synchronization processing thread concurrently with the
executing of the at least one user-level non-synchronization processing
thread, wherein the at least one synchronization processing thread is
provided by a synchronization software component which is configured to
synchronize the structured data from the first database with the structured
data from a second database.
20. The storage medium as in claim 11 wherein the synchronization software
component is configured to synchronize structured data of a first data class
and other synchronization software components are configured to
synchronize structured data of other corresponding data classes.

10

’414 Patent cls. 11, 20. Samsung now seeks judgment as a matter of law that claim 20 is invalid for

11

anticipation. The Court determines that substantial evidence supports the verdict, and DENIES

12

Samsung’s motion.

13

Samsung asserts that Windows Mobile 5.0, “a system from Microsoft that runs on wireless

14

devices” (Tr. at 2184:16-21), disclosed all elements of claim 20. To explain how Windows Mobile

15

5.0 operated, Samsung’s expert for the ’414 patent, Dr. Jeffrey Chase, relied on the following

16

diagram from an exhibit entitled “Exchange ActiveSync and Exchange 2003”:

17
18
19
20
21
22
23
24
25
26
27
28

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DX 317 at 2; see also SDX 3648; SDX 3653. Dr. Chase testified that Windows Mobile 5.0 had

2

“components called Providers for e-mail, contacts, and calendar” that “provide the synchronization

3

processes threads I spoke about.” Tr. at 2193:9-20. The parties raise several disputes regarding the

4

limitation of “wherein the at least one synchronization processing thread is provided by a

5

synchronization software component.”

6

United States District Court
For the Northern District of California

7

1.

“provided by”

First, Samsung argues that Apple distorted the plain meaning of “provided by” when it

8

argued that a synchronization software component must “create” a thread. This argument is not

9

persuasive. Samsung relies on testimony from one of the ’414 patent’s named inventors, Gordon

10

Freeman, who said that a thread “would be provided by” a component if the component “would

11

have executing code and that executing code must execute in a thread.” Tr. at 2854:9-19. However,

12

the Federal Circuit has held that “inventor testimony as to the inventor’s subjective intent is

13

irrelevant to the issue of claim construction.” Howmedica Osteonics Corp. v. Wright Med. Tech.,

14

Inc., 540 F.3d 1337, 1347 (Fed. Cir. 2008). Samsung did not request claim construction of

15

“provided by” and agrees that the jury was entitled to rely on the plain and ordinary meaning of the

16

term. See Reply at 19.

17

The jury heard testimony from Dr. Snoeren that a software component does not “provide” a

18

thread unless it creates one: “Q. Are you saying that providing a thread is the same thing as

19

creating a thread, sir? Yes or no? A. Yes, sir. I’ve said that, and I’ll say it again.” Tr. at 2855:7-9.

20

Moreover, Samsung made this argument when seeking summary judgment of invalidity, and the

21

Court rejected it, concluding that “Samsung has not established that a reasonable jury would

22

necessarily find that a synchronization software component that ‘execute[s] on’ or ‘provid[es] the

23

instructions’ for a thread discloses the claim limitation that the component ‘provide[]’ the thread

24

itself.” ECF No. 1151 at 24-25. Thus, Samsung’s post-trial attempt to dispute the meaning of

25

“provided by” is misplaced. See Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1320-21

26

(Fed. Cir. 2003) (“[I]t is too late at the JMOL stage to argue for or adopt a new and more detailed

27
28

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interpretation of the claim language and test the jury verdict by that new and more detailed

2

interpretation.”).

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3

Moreover, in opposing Apple’s motion for judgment as a matter of law of infringement of

4

the ’414 patent, Samsung takes a contrary position about revisiting claim construction, in

5

connection with the limitation of “configured to synchronize structured data.” In opposing Apple’s

6

motion, Samsung argues that the jury was entitled to determine that “configured to synchronize”

7

requires that the software component perform the synchronization directly, not “cause” another

8

component to do so indirectly. See ECF No. 1906 at 6-7. Yet in Samsung’s motion, Samsung

9

contends that the jury was not entitled to determine that “provided by” requires direct causation.

10

See Mot. at 37. Samsung’s conflicting positions underscore the Federal Circuit’s prohibition

11

against arguing for a new claim construction at the post-trial stage. It is too late for Samsung to

12

propose a new construction of “provided by.”

13
14

2.

“at least one synchronization processing thread”

Second, Samsung argues that even under Apple’s view of “provided by,” Windows Mobile

15

5.0 clearly disclosed at least one synchronization processing thread created by a synchronization

16

software component. In addition to the “E-mail,” “Contacts,” and “Calendar” Providers shown in

17

DX 317, Samsung claims that Windows Mobile 5.0 also included an “IMAP Mail” component. Id.

18

at 36. Samsung asserts that this IMAP Mail component satisfies the requirements of claim 20

19

because this component was configured to synchronize structured data and created a

20

synchronization processing thread. Under Samsung’s theory, even if the E-mail, Contacts, and

21

Calendar components did not create threads, the IMAP Mail component did so, and claim 20

22

requires only one such thread. See id.

23

Apple contests Samsung’s theory about the IMAP Mail component. Apple claims that this

24

is “an entirely new invalidity argument that was not presented to the jury.” Opp’n at 35. Apple is

25

incorrect. During trial, Dr. Chase testified that in addition to the three Provider components (E-

26

mail, Contacts, and Calendar), “there’s a fourth component here . . . there is in particular a

27

component called IMAP Mail component that can synchronize data with IMAP Mail servers.” Tr.

28

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at 2193:21-2194:16, 2196:10-13; see also SDX 3650 (Samsung demonstrative identifying the

2

“IMAP Mail Component”). Under questioning by Apple’s counsel, Dr. Chase further testified that

3

“The IMAP Mail component does create a thread, yes. It’s a synchronization processing thread.”

4

Id. at 2254:10-13. Thus, Apple cannot credibly claim surprise at this argument.

5

Alternatively, Apple argues that a reasonable jury could have concluded that this evidence

6

was not clear and convincing proof of anticipation. The Court agrees. While Dr. Chase referred to

7

the IMAP Mail component, his analysis was cursory. Of his testimony that Samsung cites in its

8

motion, only the portions above mention “IMAP.” When asked to identify three synchronization

9

software components (which claim 20 requires), Dr. Chase pointed only to “three different classes,

10

E-mail, Contacts and Calendar,” not the IMAP Mail component. Id. at 2195:9-14. Even if Dr.

11

Chase had presented the IMAP Mail component in greater detail, “a jury may properly refuse to

12

credit even uncontradicted testimony.” Guy v. City of San Diego, 608 F.3d 582, 588 (9th Cir.

13

2010). Although Dr. Snoeren did not discuss the IMAP Mail component specifically, he opined to

14

the jury that he found no software components in Windows Mobile 5.0 that provide a

15

synchronization processing thread: “Q. So is there anywhere in Windows Mobile a software

16

component that is specific to a data class, such as E-mail, Contacts, or Calendar, and also provides

17

a thread to synchronize that data class? A. No, Ma’am, there’s not.” Id. at 2849:2-17. The

18

excerpted diagram from DX 317 also lacks any reference to IMAP. While this is a close question,

19

the Court must “view the evidence in the light most favorable to the nonmoving party . . . and draw

20

all reasonable inferences in that party’s favor,” Go Daddy, 581 F.3d at 961, and Samsung bears the

21

ultimate burden of proving invalidity by clear and convincing evidence.

22

Here, Apple presented sufficient evidence for a reasonable jury to conclude that Windows

23

Mobile 5.0 did not disclose “at least one synchronization processing thread is provided by a

24

synchronization software component” because the relevant software components “execute on pre-

25

existing threads provided by other components, and do not provide a thread themselves.” Opp’n at

26

33.5 Under cross-examination, Dr. Chase admitted that none of the “E-mail,” “Contacts,” and

27

5

28

The parties have previously stated that a “thread” is “a series of steps that a computer process
needs to complete.” ECF No. 1151 at 24 n.8.
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“Calendar” Providers that he identified in DX 317 “creates” a synchronization thread. See id. at

2

2254:4-21. Moreover, Apple’s expert Dr. Alex Snoeren disagreed with Dr. Chase’s infringement

3

opinion, based on independent review of the Windows Mobile 5.0 source code, and testified that no

4

software components in Windows Mobile 5.0 “provide a thread.” Id. at 2848:10-2849:17. Samsung

5

did not call Dr. Chase to rebut Dr. Snoeren’s validity opinions. Accordingly, the Court finds that a

6

reasonable jury could have found non-infringement on this basis.

United States District Court
For the Northern District of California

7

Apple offers another alternative basis for confirming the verdict: that claim 20 requires

8

three synchronization software components, and that all three must “provide” a synchronization

9

processing thread. This argument is meritless because it contradicts the plain language of claim 20.

10

Independent claim 11 (from which claim 20 depends) recites “at least one synchroniziation

11

processing thread” that is “provided by a synchronization software component.” Apple posits that

12

claim 11 “defines the characteristics of a synchronization software component.” Opp’n at 36. This

13

argument distorts the claim language. Claim 11 states that “a” component must provide “at least

14

one” thread, but does not say that any and all components must provide threads. Claim 20 further

15

requires at least two additional “software components,” but does not say that those additional

16

components must also provide threads. Therefore, this argument has no basis in the claim

17

language.

18
19

For the foregoing reasons, the Court concludes that the jury’s verdict of no invalidity was
reasonable, and DENIES Samsung’s motion.

20

I.

21

The Defendants in this case are three Samsung entities: the Samsung Korean parent

22

company, Samsung Electronics Corporation (“SEC”), and two United States subsidiaries, Samsung

23

Telecommunications America (“STA”) and Samsung Electronics America (“SEA”). ECF No. 1714

24

at 1047 (undisputed fact read to the jury that STA and SEA are subsidiaries of SEC). The jury

25

found SEC liable for direct infringement, inducing infringement, and contributory infringement

26

with respect to certain Samsung products and Apple patents.6 Samsung moves for judgment as a

27

6

28

SEC’s Liability for Indirect Infringement

This includes the following Samsung products for the ’647 patent: Admire, Galaxy Nexus,
Galaxy Note, Galaxy Note II, Galaxy S II, Galaxy S II Epic 4G Touch, Galaxy S II Skyrocket,
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matter of law that SEC is not liable for indirect infringement for these products and patents, either

2

in the form of inducing infringement under 35 U.S.C. § 271(b) or contributory infringement under

3

35 U.S.C. § 271(c).7 The Court DENIES Samsung’s motion.8

United States District Court
For the Northern District of California

4

Patent law provides that “whoever actively induces infringement of a patent shall be liable

5

as an infringer.” 35 U.S.C. § 271(b). A claim for actively inducing infringement requires scienter

6

and mens rea. Global Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011). Thus, to

7

prevail on an inducement claim, a patentee must show “first that there has been direct

8

infringement, and second that the alleged infringer knowingly induced infringement and possessed

9

specific intent to encourage another’s infringement.” Kyocera Wireless Corp. v. Int’l Trade

10

Comm’n, 545 F.3d 1340, 1353 54 (Fed. Cir. 2008) (internal quotation marks and citation omitted);

11

accord DSU Med. Corp. v. JMS Co. Ltd., 471 F.3d 1293, 1306 (Fed. Cir. 2006) (en banc). “[M]ere

12

knowledge of possible infringement by others does not amount to inducement; [rather,] specific

13

intent and action to induce infringement must be proven.” DSU, 471 F.3d at 1305 (citation

14

omitted). Specific intent requires a “showing that the alleged infringer’s actions induced infringing

15

acts and that he knew or should have known his actions would induce actual infringements.” Id. at

16

1304 (citation omitted). “While proof of intent is necessary, direct evidence is not required; rather,

17

circumstantial evidence may suffice.” Water Techs. Corp. v. Calco, Ltd., 850 F.2d 660, 668 (Fed.

18

Cir. 1988). “The requisite intent to induce infringement may be inferred from all of the

19

circumstances.” Id. at 669. There is no requirement that direct evidence be introduced, nor is a

20

jury’s preference for circumstantial evidence over direct evidence unreasonable per se.” Liquid

21
22
23
24
25
26
27
28

Galaxy S III, Stratosphere. ECF No. 1884 at 2, 6 (Amended Verdict Form). This also includes the
following products for the ’721 patent: Admire, Galaxy Nexus, Stratosphere. Id. at 5, 6.
7
Apple accused SEC of inducing only STA, not SEA, to infringe the ’647 and ’721. ECF No. 1884
at 2, 5.
8
Samsung also argues that there can be no finding of indirect infringement given that there is no
liability for direct infringement by STA. Mot. at 38 (citing Dynacore Holdings Corp. v. U.S.
Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004), for the proposition that there can be a valid
finding of inducement and contributory infringement only if there is a predicate offense of direct
infringement). Because the Court rejects Samsung’s motions for judgment as a matter of law of
non-infringement of the ’721 and the ’647, the Court rejects Samsung’s argument that there is no
liability for direct infringement and thus only considers here Samsung’s other argument that “even
if there were direct infringement, there is no evidence to support the claims for indirect
infringement.” Id.
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Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1219 (Fed. Cir. 2006). Moreover, “[t]he drawing

2

of inferences, particularly in respect of an intent-implicating question . . . is peculiarly within the

3

province of the fact finder that observed the witnesses.” Rolls Royce Ltd. v. GTE Valeron Corp.,

4

800 F.2d 1101, 1110 (Fed. Cir. 1986). A patentee bears the burden of proving inducement by a

5

preponderance of the evidence. See Fujitsu Ltd. v. Belkin Int’l, Inc., No. 10-CV-03972-LHK, 2012

6

U.S. Dist. LEXIS 142102, at *120 (N.D. Cal. Sept. 28, 2012).

United States District Court
For the Northern District of California

7

Here, there is sufficient evidence to support the jury’s verdict that SEC induced STA to

8

infringe. As a preliminary matter, the requirement that the alleged infringer “knew or should have

9

known his actions would induce actual infringement necessarily includes the requirement that he or

10

she knew of the patent.” DSU, 471 F.3d at 1304; Global Tech Appliances, 131 S. Ct. at 2068;

11

Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1379 (Fed. Cir. 2001). Apple

12

presented evidence that SEC knew about the ’647 patent and Apple’s allegation of infringement

13

since August 2010 when Apple made a presentation to Samsung that Samsung was infringing the

14

’647, and knew about all Apple’s other patents since February 8, 2012 when Apple filed its

15

complaint. ECF No. 1714 at 1043 (undisputed facts read to the jury); PX 132 at 15 (August 2010

16

Presentation to Samsung); PX 3003 at 33 (deposition of Jun Won Lee, Director of Licensing for

17

SEC) (describing how Apple told Samsung that Samsung was infringing Apple’s patents). See

18

EON Corp. IP Holdings, LLC v. Sensus USA, Inc., No. C 12 1011 EMC, 2012 WL 4514138, at *1

19

(N.D. Cal. Oct. 1, 2012) (complaint suffices to establish knowledge element of induced

20

infringement).

21

Further, other facts presented at trial provided sufficient circumstantial evidence for a

22

reasonable jury to conclude that SEC intended to encourage STA’s infringement. The jury learned

23

STA sold more than 37 million accused units in the United States, and that STA bought these units

24

from SEC, its parent company. ECF No. 1714 at 1208-09 (Vellturo) (SEC shipped devices to STA

25

for sale in the United States); ECF No. 1715 at 1285-86 (Vellturo) (SEC manufactured, designed,

26

and shipped accused units to the United States for resale to carriers and customers by STA); PX

27

3001 (Justin Denison, Chief Strategy Officer at STA) (noting SEC is parent of STA). The jury also

28

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learned that some design teams at STA in the United States worked with and “under [the]

2

direction” of SEC’s research and development team in South Korea in order to help design,

3

develop, test, and commercialize Samsung telecommunication devices which STA sold in the

4

United States. See PX 3004 at 87-88 (Tim Sheppard, Vice President of Finance and Operations at

5

STA); see also ECF No. 1716 at 1607 (testimony of Dale Sohn, CEO of STA, stating SEC made

6

the final decision to include the operating platform in its phones). SEC also exercised a high degree

7

of control over STA by directly setting the wholesale price at which STA was to sell phones to

8

carriers in the United States. PX 3004 at 188. Drawing all reasonable inferences in Apple’s favor, a

9

reasonable jury could find that SEC induced STA’s infringement, given that SEC controlled the

10

design and manufacture of the smartphones which STA sold, and controlled the price at which

11

STA sold the devices to carriers in the United States. See Water Techs., 850 F.2d at 668-69

12

(upholding district court’s finding of specific intent to induce based on defendant’s knowledge of

13

the patent and because defendant helped direct infringer make the infringing product and exercised

14

control over manufacture of the product); Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d

15

1325, 1343 (Fed. Cir. 2008) (reversing district court’s summary judgment finding of no

16

inducement because defendant’s role as the designer and manufacturer of the infringing products

17

“may evidence an intent sufficiently specific to support a finding of inducement.”).

18

Samsung’s arguments to the contrary fail. Samsung argues there is no evidence that SEC

19

had the specific intent required for inducement. Mot. at 38; Reply at 21. Samsung argues that even

20

assuming SEC had knowledge of the ’647 patent, Dr. Jeffay’s testimony established SEC’s belief

21

that it did not infringe the ’647 and that the ’647 is not valid, and thus Samsung did not know that

22

the acts it was inducing constituted infringement. Id. The Court is not persuaded because this issue

23

is not one in which the evidence permits “only one reasonable conclusion,” as required for this

24

Court to grant Samsung judgment as a matter of law under Rule 50. See Conceptus, Inc. v. Hologic,

25

Inc., Inc., No. C 09 02280 WHA, 2012 WL 44237, at *8-9 (N.D. Cal. Jan. 9, 2012) (finding

26

sufficient evidence to support jury’s finding of indirect infringement and rejecting argument that

27

because there was evidence that defendant believed plaintiff’s patent was invalid and not infringed,

28

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there was insufficient evidence to show intent for indirect infringement); Water Techs., 850 F.2d at

2

668-69 (finding defendant liable for inducement, despite an asserted “subjective belief that he had

3

a non-infringing [product]”). Ultimately, because “[i]ntent is a factual determination particularly

4

within the province of the trier of fact,” this Court sees no reason to disturb the jury’s finding that

5

SEC had intent to induce infringement. Fuji Photo Film Co. Ltd. v. Jazz Photo Corp., 394 F.3d

6

1368, 1378 (Fed. Cir. 2005) (declining to disturb jury’s verdict because intent to induce

7

infringement “is a factual determination.”).

United States District Court
For the Northern District of California

8

For the reasons above, sufficient evidence supports the jury’s finding that SEC is liable for

9

inducement. Accordingly, the Court need not reach the question of whether the jury’s finding of

10

contributory infringement for these same products and patents was also supported by substantial

11

evidence because an additional finding on an alternative theory of indirect infringement will not

12

change the outcome. See Apple, 920 F. Supp. 2d at 1111 (declining to reach whether jury’s finding

13

of induced infringement was supported by substantial evidence in light of Court’s conclusion that

14

jury’s finding of direct infringement by SEC was supported by substantial evidence). Accordingly,

15

the Court DENIES Samsung’s motion for judgment as a matter of law that SEC is not liable for

16

indirect infringement.

17

J.

18

Samsung claims the jury’s verdict “creates impermissible double recovery” with respect to

Double Recovery

19

the Galaxy S II, Galaxy S II Epic 4G Touch, and Galaxy S II Skyrocket (the “Galaxy S II

20

Products”). Mot. at 39. Samsung notes how in the first case between the parties, Case No. 11-CV-

21

01846, there was a final judgment awarding damages for design patent infringement by the Galaxy S

22

II Products, and that the award for these products represented Samsung’s profits, pursuant to 35

23

U.S.C. § 289. Id. (citing ECF No. 2271 at 9-10, post-trial order recognizing that jury awarded

24

Apple 40 % of Apple’s calculation of Samsung’s profits). Samsung notes how in this case, the jury

25

awarded damages for infringement of utility patents by the Galaxy S II Products. ECF No. 1884

26

(Amended Verdict Form). Accordingly, Samsung claims the Court should deduct the full amount

27
28

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of the Galaxy S II awards in this case as impermissible double recovery at this time. Mot. at 39.

2

The Court DENIES Samsung’s request.

3

As a preliminary matter, the Court notes that it denied Samsung’s motion in limine before

4

trial which effectively raised this same issue by asking the Court to exclude evidence of damages

5

on sales for which Apple had already obtained an award of Samsung’s profits in the first case. See

6

ECF No. 1283-3 at 24-27 (motion); ECF No. 1398 at 3 (case management order). The Court

7

allowed evidence of other forms of damages for the Galaxy S II Products in this second trial on the

8

basis that if the judgment in the first case is vacated by the Federal Circuit, Apple would likely

9

wish to seek recovery in the form of lost profits or reasonable royalty damages for those sales in

10

this second case. ECF No. 1411 at 24 (pretrial conference transcript). Given this possibility, to

11

prevent the necessity of holding a damages retrial in the instant case, the Court issued a verdict

12

form in the instant case which separated out the damages for the Galaxy S II Products in the

13

relevant time periods for which damages in both cases might overlap. Id.

14

The Court declines Samsung’s request to deduct the full amount of the Galaxy S II awards

15

in this case at this time. As this Court recognized at the hearing concerning Samsung’s motion in

16

limine, see ECF No. 1411 at 23-24, it is well settled law that a patentee that receives profits under

17

35 U.S.C. § 289 is not entitled to a further recovery for utility patent infringement from the same

18

sale. Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1291 (Fed. Cir. 2002); 35 U.S.C.

19

§ 289 (a patentee “shall not twice recover the profit made from the infringement.”). It is thus clear,

20

as Apple concedes, that Apple may only recover one form of damages for each infringing sale,

21

regardless of how many patents the Galaxy S II Products infringe. ECF No. 1334-3 at 20 (Apple’s

22

opposition to Samsung’s motion in limine). Accordingly, this Court has already assured Samsung

23

that the Court will not allow Apple to attain a double recovery for each infringing sale of these

24

products. See ECF No. 1411 at 24. The only remaining question is when this Court will take action

25

by formally eliminating any duplicative damages: before entering final judgment in this case before

26

this case is appealed, as Samsung requests, or after appeals of both cases are resolved. The Court

27

already answered that question by holding at the pretrial conference that after the appeals of both

28

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cases are resolved and assuming “both survive appeal” the Court will “consult with the parties

2

[] to determine only one recovery for each sale.” Id.

United States District Court
For the Northern District of California

3

Samsung’s arguments to the contrary are unavailing. Samsung claims that because the

4

jury’s verdict in the instant case “creates” and “includes” a double recovery, the Court must deduct

5

the full amount of the Galaxy S II awards from the verdict now before entering final judgment in

6

this case and before this case goes up on appeal. Mot. at 39-41. The Court is not persuaded. For

7

one thing, the verdict in the instant case does not in and of itself “create” or “include” a double

8

recovery; it is only when Apple receives two awards for each infringing sale that an impermissible

9

double recovery occurs. The cases Samsung cites are not to the contrary. See, e.g., Catalina, 295

10

F.3d at 1291 (recognizing that “once [the patentee] receives profits under § 289 for each sale, [the

11

patentee] is not entitled to further recovery from the same sale[.]”) (emphasis added). Samsung has

12

not yet paid Apple anything for Samsung’s sales of Galaxy S II Products.

13

Second, Samsung does not cite any case suggesting that in this context, where there are two

14

different cases with two separate judgments, damages must be deducted before the second case is

15

appealed. While it is clear that Apple may not actually receive two awards for the same infringing

16

sale of a product, Samsung cites no case holding that a patentee cannot have, pending on appeal,

17

two separate judgments

18

damages for the same infringing sale. This is the situation that will occur here, as the parties have

19

already appealed the judgment in the first case,9 and the parties have suggested they will appeal the

20

instant case. Samsung’s citation to Arlington Industries, Inc. v. Bridgeport Fittings, Inc., No. 3:01-

21

CV-0485, 2010 WL 815466, at *4 (M.D. Penn. Mar. 3, 2010), aff’d per curiam, 477 Fed. Appx.

22

740 (Fed. Cir. 2012) (unpublished), is unavailing. Mot. at 41. There, where a jury had awarded

23

both the full amount of the patentee’s request for lost profits and a reasonable royalty for the same

24

sales, the district court rejected the patentee’s request to enter judgment as determined by the jury

25

and delay deduction of double recovery from the judgment until after appeal. Id. The court reduced

in two different cases

which grant the patentee two possible forms of

26
9

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Samsung’s opening brief to the Federal Circuit included an appeal of the infringer’s profits award
with respect to the Galaxy S II Products. Brief of the Petitioner-Appellant, Apple, Inc. v. Samsung
Elecs., Ltd., No. 14-1335 (Fed. Cir. May 23, 2014), Docket No. 33.
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the total award before entering judgment. Id. The Federal Circuit summarily affirmed the opinion

2

without reasoning. See 477 Fed. Appx. 740. Critically, however, Arlington involved a double

3

damages award in the same case, and did not hold or suggest that when there are two cases with

4

two separate judgments, damages must be deducted before the second case is appealed.10 Given

5

that there is no clear statement of law on this issue, the Court finds no reason to deviate from its

6

previous decision to address the issue of double recovery after appeal of both cases are resolved.

7

This decision is most efficient. Notably, if this Court strikes the damages awarded in the instant

8

case as impermissible double recovery now, and then the judgment of design patent infringement

9

in the first case gets vacated on appeal, this Court will have to reinstate the damages award in this

10

case on remand after the appeal of this case to ensure Apple actually receives damages for each

11

infringing sale, assuming the judgment of infringement in this case withstands appellate review.11

12

10

13
14
15
16
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18
19
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24
25
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27
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The same goes for Samsung’s other cited cases. See, e.g., Aero Prods. Int’l, Inc. v. Intex
Recreation Corp., 466 F.3d 1000 (Fed. Cir. 2006) (reversing as impermissible double recovery
district court’s denial of defendant’s post-trial motion and court’s judgment entering a jury award
of damages in same case for both patent and trademark infringement); Catalina, 295 F.3d at 129192 (reversing judgment in one case involving double award of infringer’s profits and reasonable
royalties).
11
The Court denies Apple’s request that this Court calculate a supplemental damages award and
prejudgment interest in Case No. 11-CV-01846 at this time. Despite the fact that the Court
previously ruled that it would wait until the appeals in the first case are resolved before calculating
supplemental damages and prejudgment interest in that case, see ECF No. 2271 at 6, 8 (March
2013 post-trial order); ECF No. 2947 at 3 (damages retrial post-trial order declining Apple’s
request to reconsider Court’s decision), Apple in its opposition to Samsung’s motion for judgment
as a matter of law in Case No. 12-CV-00630 renews its request for a supplemental damages award
and pre-judgment interest in Case No. 11-CV-01846. Opp’n at 40-41. Apple’s request is
procedurally improper, as it is made in connection with briefing in the second case between the
parties, not the first case. Second, the Court rejects Apple’s request on the merits. Apple now
claims that the Court deferred the award in part to obtain appellate guidance on how supplemental
damages should be calculated, but that in light of the fact that Samsung has not challenged this
Court’s rulings on supplemental damages in its opening appellate brief, the Federal Circuit will not
“be providing any further guidance on supplemental damages.” Opp’n at 40. However, this Court
previously explained that obtaining the Federal Circuit’s guidance “both as to the merits as well as
to how to calculate supplemental damages, before proceeding with an accounting, is the most
efficient and acceptable way to proceed.” ECF No. 2947 at 3 (emphasis added). The Court
continues to conclude that it is more efficient to wait for the Federal Circuit’s guidance on the
merits issue of whether Samsung’s products infringe Apple’s patents before calculating
supplemental damages and prejudgment interest in that case. See ECF No. 2947 at 3 (citing Intron,
Inc. v. Benghiat, No. Civ.99 501 (JRT/FLN), 2003 WL 22037710, at *16 (D. Minn. Aug. 29,
2003)).
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necessary, “consult with the parties [] to determine only one recovery for each sale” after the

3

appeals of both cases are resolved. ECF No. 1411 at 24. The Court will allow for appropriate

4

briefing on the double recovery issue at that time. The Court DENIES Samsung’s motion to deduct

5

any double recovery from the verdict at this time.

6

K.

7

Samsung’s ’239 patent is directed to a “remote video transmission system.” Against Apple,

8
9
10
United States District Court
For the Northern District of California

Accordingly, consistent with this Court’s ruling at the pretrial conference, the Court will, if

11

Infringement of Claim 15 of the ’239 Patent

Samsung asserted claim 15, which recites:
15. An apparatus for transmission of data, comprising:
a computer including a video capture module to capture and compress video in real
time;
means for transmission of said captured video over a cellular frequency.
’239 Patent cl. 15. The jury found that none of the three accused Apple products (iPhone 4, iPhone

12
4S, and iPhone 5) infringe. See ECF No. 1884 at 11. Samsung seeks judgment as a matter of law of
13
infringement. The Court finds that substantial evidence supports the jury’s verdict and DENIES
14
Samsung’s motion.
15
As an initial matter, Samsung claims that “[n]o reasonable jury” could find non16
infringement because “substantial evidence was presented to conclude claim 15 was infringed.”
17
Mot. at 44. Samsung invokes the wrong legal standard: even if substantial evidence could support a
18
contrary verdict, Samsung must show a lack of substantial evidence that favors the existing verdict,
19
such that “only one reasonable conclusion” is possible. Ostad, 327 F.3d at 881. Here, substantial
20
evidence supports the non-infringement determination.
21
Samsung focuses on three limitations in claim 15, arguing that Apple’s expert, Dr. James
22
Storer, made improper arguments for each limitation. First, Samsung argues that Dr. Storer
23
incorrectly testified that the claimed “video capture module” is restricted to a “video card,” must
24
receive analog signals, and must be plugged into another component. However, Samsung
25
mischaracterizes the trial testimony. In explaining his non-infringement opinion, Dr. Storer stated
26
that he reviewed a bill of materials for an accused iPhone 5 (Tr. at 2738:24-2739:8), a live
27
disassembly of an iPhone 5 (id. at 2741:8-25), and the testimony of Apple engineer Roberto Garcia
28

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(id. at 2738:13-23) to determine that the accused devices do not capture video. Contrary to

2

Samsung’s position, Dr. Storer expressly acknowledged that “[c]laim 15 only requires a video

3

capture module,” not a video card, and opined that no such module exists in the accused phones.

4

Id. at 2742:6-15. Dr. Storer did testify that no component of the accused phones receives “analog

5

video,” and “[t]here’s not a cable being plugged in coming from a remote source.” Id. at 2743:10-

6

17. This was not improper argument of claim construction. Samsung did not request claim

7

construction of “video capture module”

8

of other terms in claim 15 at Samsung’s request. Thus, the jury was entitled to evaluate the plain

9

and ordinary meaning of the term based on the evidence at trial. See ECF No. 1301 at 5. Dr. Storer

10

testified that he personally worked with video capture modules in the 1990s, and that the iPhones

11

lacked such hardware. See id. at 2727:2-15. Furthermore, Samsung did not object to this testimony.

12

See Price v. Kramer, 200 F.3d 1237, 1252 (9th Cir. 2000) (noting that failure to object to testimony

13

waives argument on appeal).

14

even though the Court provided last-minute construction

Next, Samsung claims Apple offered improper arguments about “means for transmission of

15

said captured video over a cellular frequency.” The Court construed this term to mean: “one or

16

more modems connected to one or more cellular telephones, and software performing a software

17

sequence of initializing one or more communications ports on said apparatus, obtaining a cellular

18

connection, obtaining said captured video, and transmitting said captured video.” ECF No. 1532 at

19

14. Samsung claims that Dr. Storer gave improper opinions that a “port” required a specific kind of

20

hardware, and that “connected to” requires a cable. Again, Samsung mischaracterizes the

21

testimony. Dr. Storer told the jury that the “electrical connections between chips” that Samsung’s

22

expert identified in the accused iPhones were not “ports” as understood at the ’239 patent’s priority

23

date. Tr. at 2751:14-2752:9. While Dr. Storer referred to a lack of “cables” connecting the iPhones

24

to any modems (id. at 2745:6-14), he also opined that the phones’ baseband processor

25

Samsung’s expert identified as the claimed “modem”

26

cellular telephones” because the baseband processor was itself part of the phone (id. at 2745:15-

which

could not be “connected to one or more

27
28

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2746:18). Thus, Apple presented reasoned expert opinions based on the Court’s claim construction

2

that the jury could have credited.

United States District Court
For the Northern District of California

3

Finally, Samsung contends that Apple improperly tried to limit “video” to “something other

4

than streaming video and video frames.” Mot. at 45. At trial, Samsung argued that Apple’s

5

FaceTime application transmits video. In response, Dr. Storer testified that “[t]here is no video at

6

all on FaceTime” because “an individual frame is created and then it’s immediately transmitted,”

7

and disagreed with Samsung’s expert because “[a] single frame is not video.” Tr. at 2754:1-25; see

8

also id. at 2713:10-2714:3 (Garcia testimony regarding absence of video in FaceTime). Samsung

9

did not object to this testimony and now identifies no reason why these opinions contradict the

10

plain and ordinary meaning of “video.” Dr. Storer agreed on cross-examination that his expert

11

report used the phrase, “the FaceTime application prepares to transmit video” (id. at 2781:10-17),

12

but this does not amount to an admission that FaceTime employs “video” as claimed, particularly

13

because Mr. Garcia distinguished between “video” and “a video frame” (id. at 2713:20-23).

14

Additionally, Samsung argues that Dr. Storer compared the accused products to commercial

15

embodiments of the ’239 patent, instead of the claim language. Samsung’s argument is misplaced.

16

As detailed above, Apple presented specific evidence about its accused products and why they do

17

not infringe. Samsung points to Amgen Inc. v. Hoechst Marion Roussel, Inc., where the Federal

18

Circuit reversed summary judgment of non-infringement because the district court relied solely on

19

commercial embodiments, and thus “eschewed the cardinal principle that the accused device must

20

be compared to the claims rather than to a preferred or commercial embodiment.” 314 F.3d 1313,

21

1347 (Fed. Cir. 2003). However, that is not the situation here. The jury heard substantial evidence

22

in addition to Dr. Storer’s discussion of the inventors’ actual products, and also received

23

instructions to “not compare the Samsung and Apple commercial products to each other.” ECF No.

24

1847 at 32; see Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1470 (Fed. Cir. 1997)

25

(denying new trial where patentee made only a “a few passing references” to commercial products

26

and “the jury instructions properly cautioned the jury not to compare commercial embodiments to

27

determine infringement”).

28

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The jury needed to conclude that only one of the limitations of claim 27 above was not

2

present in the accused iPhones to reach a verdict of non-infringement. The jury received substantial

3

evidence to conclude that any of several limitations were not infringed. Accordingly, Samsung’s

4

motion regarding infringement of the ’239 patent is DENIED.

5

III.

United States District Court
For the Northern District of California

6

CONCLUSION
For the reasons discussed above, the Court:

7

(1) DENIES Samsung’s motion for judgment as a matter of law of non-infringement of claim 9 of

8

the ’647 patent.

9

(2) DENIES Samsung’s motion for judgment as a matter of law of invalidity of claim 9 of the ’647

10

patent.

11

(3) DENIES Samsung’s motion for judgment as a matter of law of invalidity of claim 8 of the ’721

12

patent.

13

(4) DENIES Samsung’s motion for judgment as a matter of law of non-infringement of the ’721

14

patent.

15

(5) GRANTS Samsung’s motion for judgment as a matter of law that Samsung did not willfully

16

infringe the ’721 patent.

17

(6) DENIES Samsung’s motion for judgment as a matter of law of invalidity of the ’172 patent.

18

(7) DENIES Samsung’s motion for judgment as a matter of law of invalidity of claim 25 of the

19

’959 patent.

20

(8) DENIES Samsung’s motion for judgment as a matter of law of invalidity of claim 20 of the

21

’414 patent.

22

(9) DENIES Samsung’s motion for judgment as a matter of law that SEC is not liable for indirect

23

infringement.

24

(10) DENIES Samsung’s request that the Court deduct the full amount of the Galaxy S II awards as

25

impermissible double recovery.

26

(11) DENIES Samsung’s motion for judgment as a matter of law of infringement of claim 15 of the

27

’239 patent.

28

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IT IS SO ORDERED.

2

Dated: September 9, 2014

_________________________________
LUCY H. KOH
United States District Judge

3
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6
7
8
9
United States District Court
For the Northern District of California

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GRAl\i'TING IN PART
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On May 5, 2014,
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Case No.: 12-CV-00630
12-CV-00630
ORDER GRANTING IN
IN PART
PART AND
AND DENYING
DENYING IN
IN PART APPLE'S
APPLE'S MOTION
MOTION FOR
FOR JUDGMENT
JUOOMENT AS
AS AAMATTER
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OF LAW

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Case: 15-1171

Document: 40

Page: 177

Filed: 03/06/2015

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Document1963 *SEALED*
Filed09/08/14 Paget
Page2of
of45
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ase5:12-cv-00630-LHK
*SEALED* Filed09108/14

1

supplemental damages
damages and
and prejudgment
prejudgmentinterest,
interest, and
and DENIES
DENIESApple's
Apple'smotion
motionfor
forjudgment
judgmentasasa a

2
2

matter of
of law
law in all other
other respects.
respects.

L
33 1.

LEGAL STANDARD

4

Federal Rule of
of Civil Procedure
Procedure 50
50 permits
permits aa district
district court
court to
to grant
grantjudgment
judgmentas
asaamatter
matterof
of

5

law "when the evidence
evidence permits
permits only
only one
onereasonable
reasonable conclusion
conclusionand
andthe
theconclusion
conclusionisiscontrary
contrarytoto

6

that reached by the jury."
Or. Health
HealthSe-is.
&Is. Univ.,
Univ.• 327 F
.3d 876,
876,881
Cir; 2003).
2(03). A
jury." astad
Ostad v. Or.
F.3d
881 (9th Cir.

7

oflaw after ajury
a juryverdict
verdictmust
mustshow
showthat
thatthe
theverdict
verdictisisnot
not
party seeking judgment
judgment as a matter of

8

"substantial evidence,"
evidence,"meaning
meaning"relevant
"relevantevidence
evidencethat
thataareasonable
reasonablemind
mindwould
would
supported by "substantial

9

accept as adequate
adequate to
to support
supportaaconclusion."
conclusion." Callicrate v. Wadsworth
Wadsworth Mfg.,
Mfg., Inc.,
Inc., 427 F.3d
F.3d 1361,,
1361,.

10

1366 (Fed. Cir. 2005) (citing
(citing Gillette v.
v. Delmore.
De/more. 979 F.2d 1342,
1342. 1346
t 346 (9th
(9th Cir.
Cir. 1992)).
1992». The
The Court
Court

CIS

'g
L 10
t:<.2
::::s.:=
(>CIS
UU

tl
11

111\.I5t
anddraw
drawall
aU
must "view the evidence in the light most favorable
favorable to
to the
the nonmoving
nomnoving party
party ...
... and

12

reasonable inferences in that
that party's
party'sfavor."
favor." See E.E~O.C.
E.E.O. C. v.v. Go Daddy
Daddy Software,
Software. Inc.,
Inc., 581
581 F.3d

°
"Co

13

20(9) (internal
(internalquotations
quotationsand
andcitations
citationsomitted).
omitted).
951, 961 (9th Cir. 2009)

13'0

'" ...
.-.i

.-.-~

Q.:e
1110

A new trial is
is appropriate
appropriate under
underRule
Rule 59
59 "only
"onlyififthe
thejury
juryverdict
verdictisiscontrary
contrarytotothe
theclear
clear

14

..ec
1.t¢'-

15

1218 (9th Cir. 2010).
Int'I.Inc.
1213,1218
2(10). A
A court
court
weight of
of the evidence." l)8PT
DSPT Iris'!,
Inc. v. NahuJ1I,624
Nahum, 624 F.3d 1213,

"'Ot
C,l0
:=Z

16

'19prevent
preventaamiscarriage
miscarriageofofjustice."
justice." Molski
Molski v.
v. M.J.
MJ.
should grant a new trial
trialwbete
necessary"to
where necessary

17

Cable,
724, 729
729 (9th
(9th Cir.
Cir, 2007).
2(01).
Cable, Inc., 481
481 F.3d 724,

18

II.
n.

_0

oo.c
v~=

co
;:>.;:
.

....

0
0

u..

ANALYSIS
Infringement
of Claim 8 of the
'721 Patent
Patentby
bySamsung
Samsung's
n Products
Products
' s Galaxy
Galaxy SSi!
Infringement of
the'721

19

A.

20

Apple moves
moves for
for judgment
judgmentas
asaamatter
matterof
oflaw
lawthat
thatSamsung's
Samsung'saccused
accusedGalaxy
GalaxyS SIlIIproducts,
produCts

21

infringe claim 8 of
of the '721
'721 patent
patentor,
Qr,ininthe
thealternative,
alternative,for
foraanew
newtrial
trialon
oninfringement
infringementand
and

22

The '721
'721 patent
patentdiscloses
discloses unlocking
unlockingaaportable
portableelectronic
electronic
damages for those products. Mot.
Mot. at 3. The

23

device by using
using aa predetermined
predeterminedgesture
gestureon
onaatouch-sensitive
touch-sensitivescreen.
screen. See generally '721
'721 Patent

24

coL
1. The '721 patent
patenttargeted
targetedthe
theproblem
problemof
cf"unintentional
activationor
ordeactivation
deactivation of functions
col.1.
"unintentional activation

25

Id Apple asserted claim 8
unintentional contact
contactwith
withthe
thetouch
touchscreen"
screen"ininportable
portabledevices.
devices.ld
due to unintentional

26

of
patentagainst
againstSamsung.
Samsung.Claim
Claim88depends
dependsfrom
from claim
claim7.7.Both
Bothclaims
claimsrecite:
recite:
of the '721 patent

27
27

28

7. A portable electronic
electronic device,
device, comprising:
comprising:
a touch-sensitive display;

2

2
Case
Case No.:
No.: 12-CV-00630

ORDER GRANTING
GRANTING IN
IN PART
PARTAND
A}..I{)DENYING
DENYiNGIN
INPART
PARTAPPLE'S
APPLE'SMOTION
MOTIONFOR
FORJUDGMENT
JUDGMENT.AS
MATrER
,AS-AAMATTER
OF LAW

A93

Case: 15-1171

Document: 40

Page: 178

Filed: 03/06/2015

HK Document1963
ase5:12-cv-00630-LHK
Document1963*SEALED*
*SEALED* Fileda9l08114
Filed09/08/14 Page3
of 45
Page3 of

7

memory;
processors; and
and
one or more processors;
in the
the memory
memory and
and configured
configuredfor
forexecution
executionby
bythe
tbeone
one
or more
more modules
modules stored
stored in
one or
one or
or more
more modules
modules including
including instructions:
instructions:
or more processors, ·the
the one
to detect a contact
contact with
with the
tbe touch-sensitive
touch-sensitive display
display at
at aafirst
first predefined
predefinedlocation
location
image;
corresponding
to an
an unlock
unlockimage;
corresponding to
to continuously
continuously move
move the
the unlock
unlock image
image on
on the
the touch-sensitive
touch-sensitivedisplay
displayininaccordance
accordance
ofthe
the detected contact
contact while
while continuous
continuous contact
contact with
withthe
the
with movement of
is a
touch-sensitive display is maintained, wherein the unlock image isa
graphical, interactive
interactive user-interface
user-interface object
object with
with which
which aa user
userinteracts
interactsinin
order
unlock the
the device;
device; and
and
order to unlock
to unlock the hand-held
hand-beld electronic
electronic device
device ififthe
the unlock
unlockimage
image isis moved
moved from
fromthe
the
screen to
toa
predefined unlock
unlock region
regionon
on
first predefined location on the touch screen
a predefined
the touch-sensitive
touch-sensitive display.
display.

8

8. The device of
ofclaim
claim 7,
7, further
further comprising
comprising instructions
instructionsto
todisplay
displayvisual
visualcues
cuestoto

2

3
4

5

6

9

communicate
ofmovement
movement of
ofthe
the unlock
unlockimage
imagerequired
requiredtoto
communicate a direction of
unlock the device.

10

Samsung phones
phones of
ofinfringing
infringing the '721 patent.
patent. For
For the
the Admire,
Admire, Galaxy
GalaxyNexus,
Nexus..
Apple accused six Samsung

....c

i1
11

and Stratosphere,
Stratosphere, Apple
Apple accused
accused the
the "slide
"slidetotounlock"
unlock'"feature
featureininthose
thosephones.
phones.For
Forthe
theGalaxy
GalaxySSIIII,

.......
.-u"'0.......t:

12

Galaxy SS 11
II Epic
and Galaxy S n
("'Galaxy SS I1
II products"), Apple
Apple accused
accu~d
It Skyrocket ("Galaxy
Epic 4G Touch, and

13

only the "slide to answer" feature.
While the
the jury
jury found
found that the Admire, Galaxy
Nexus.. and
feature.'I While
Galaxy Nexus,

Q.r!!
"",,0
aD

14

Stratosphere infringe
infringe claim
claim 8,
8, the
the jury
jury found
found that
thatthe
theGalaxy
GalaxySSIIIIproducts
productsdo
donot
notinfringe.
infringe.ECF
ECFNo.
No.

~'""
_
0

15

1884
Apple'smotion,
motion, as
asexplained
explainedbelow.
below.
1884 at
at 5.
5. The Court DENIES Apple's

.~

t:~
::t'.Q.~
ors
UU
UL)
c,jO
O

._~

.2:!c

CI}':::

-=!:
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a:a: ' v0
""
0'0
U..

r
;;:J-::E

tL.

16
<

proofto
presence of
of
"To prove infringement,
infringement, the
the plaintiff bears the burden of
of proof
to show the presence

17

Y. A47crosvft
Corp., 632
every element or its
accUSed device."
device." Uniloc USA,
USA, Inc.
Inc. v.
MICrosoft Corp.,
its equivalent in the accused

18

F
3d 1292.
1292, 1301
1301 (Fed. Cir. 2011).
20 I I). "If
"Ifany
any claim
claim limitation
limitation is
is absent
absent from the accused
accused device,
device, there
there
F.3d

19

Bayer AG
AG v. Elan Pharm.
Pharm. Research Corp.~
Corp., 212
212 F.3d
infringement as
as aa matter
matterof
oflaw."
law.'" Bayer
is no literal infringement

20

1241,
needed to
to identify
identify only
only one
onelimitation
limitationmissing
missing
1241, 1247 (Fed. Cir.
Cir: 2000). Accordingly, the jury needed

21
21

from
products to reach
reach its
its verdict.
verdict.
from the a<.:cused
accused products:to

22

whetheraareasonable
reasonablejury
jurycould
couldhave
havefound
found
The sole dispute
dispute between
betweenthe
theparties
partieshere
hereisiswhether

23

that Samsung's
Samsung's"slide
"slidetotoanswer"
answer"features
featuresdo
donot
notinfringe,
infringe,but
butthat
thatthe
the"slide
"slidetotounlock"
unlock"features
featuresdo
do

24
24

infringe. At trial, Apple's
expertDr.
Dr. Andrew
Andrew Cockburn
Cockburn testified
testified that
that the
the "slide
"slideto
toanswer"
answer"
Apple's expert

25
26
27

28

I' After
After the
the July
July 10,
10, 2014
2014 hearing,
hearing, and
and without
without permission
permission from
from the
the Court,
Court, Apple
Applefiled
filed additional
additional
exhibits and argument,
argument, claiming
claimingthat
thatthe
theaccused
accusedfunction
functionofofthe
theGalaxy
GalaxySS1IIIEpic
Epic4G
4GTouch
Touch was
the operation used
to retrieve
retrievemissed
missedmessages,
messages,as
asopposed
opposedtotothe
theoperation
operationused
used to respond to
·'the
used to
and argument
argumentare
areuntimely
untimely and
incoming phone
phone calks.
calls."" ECF
.ECFNo.
No.1945
1945atat J.1.Apple's
Apple's new evidence
evidence and
will be disregarded.
3

Case No.: 12-CV-00630
ORDER GRANTING IN PART AND DENYING IN
IN PART APPLE'S
APPLE'S MOTION
MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS AAMATTER
MATIER
OF LAW

A94

Case: 15-1171

Document: 40

Page: 179

Filed: 03/06/2015

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1

in the
theGalaxy
Galaxy SS-11
II products
feature utilized
utilized
functionality in
productswas
was"very
"verysimilar"
similar" to
to the
the "slide
"slide to unlock" feature
1! functionality

2

by the non-Galaxy
Id. at 633-36.
non.;Galaxy SS ItII accused
accused phones.
phones. !d.
Dr.Cockburn
Cockburntestified
testifiedthat
that
633-36, 653-64,673-76.
65-64, 673-76. Dr.

3

both "slide to unlock"
"slide to
to answer"
answer" infringe
infringe because
because they
they `detect
"detectaacontact
contactwith
withthe
thetouchtouchunlock" and "slide

4

at an
an "unlock
"unlockimage";
image";allow
allowthe
theuser
usertoto"continuously
"continuouslymove
movethe
theunlock
unlockimage
image. ...
sensitive display"
display" at

5

accordance to the detected
the "direction
. in ac.c{)rdance
detected contact";
contact"; provide
provide"visual
"visualcues"
cues"for
forthe
"directionofofmovement
movementofof

6

the unlock image
image required
required to
to unlock
unlock the
thedevice";
device";and
and"unlock
"unlockthe
thedevice"
device"when
whenthe
theunlock
unlockimage
imageisis

7

"to aapredeftned
predefined unlock region."
673-74. Apple also argues that
moved ·'to
region." See id.
id. at 6.73-74.
that Figure
Figure 77 in
in the
the

8

'721 patent
patent discloses
disclosesaaform
formof
of"slide
"slidetotoanswer,"
answer."sosothis
thisfeature
featuremust
mustfall
faUwithin
withinthe
thescope
scopeofofclaim
claim

9

8.

10

The Court
Court concludes
concludes that
that aa reasonable
reasonablejury
jurycould
couldhave
havedistinguished
distinguished"slide
"slidetotoanswer"
answer"from
from

(!$

'fE

11

"slide
"slide to unlock"
unlock" for
forpurposes
purposesof
ofinfringement.
infringement. The
The verdict
verdict must
must stand
stand unless
unless the
the evidence,
evidence.

12
12

"construed
to the. nonmoving party, permits
thelight
lightmost
mostfavorable
favorable'tO'theoorunovingparty.
permitsonly
onlyone
onereasonable
reasonable
"construed ininthe

13
13

conclusion, and that conclusion
jury's verdict."
Pagay, 307F3d
307 F 3d 915,
conClusion is
is contrary to the jury's
verdict." Pavao v.
v. Pagay.
conclusion.

Q .l!:

14

r=..... .

partyrequested
requestedclaim
claimconstruction
constructionofofany
anyterms
termsininthe
the'721
'721
918 (9th Cir. 2002).
2002). Notably,
Notably. neither
neitherparty

15

the jury
jury was
wasinstructed
instructedto
torely
relyon
onthe
theplain
plainand
andordinary
ordinarymeaning
meaningofofllte
claim
patent
Accordingly ~ the
patent. Accordingly,
the claim

16

language. See
t 847 at
at 30;
30; see also ePlus,
ePlus. Inc. v. Lawson
Lawson Software,
Software, Inc.,
Inc., 700F
.3d 509,
See ECF No. 1847
700 F.3d

:J::....

17

Cir. 2012)
520 (Fed.
(Fed.Cir.
2012) ("In
("Inthe
the absence
absenceof
ofsuch
suchaaconstruction,
construction,however,
however,the
thejury
jurywas
wasfree
freetotorely
relyonon

tl..

18

the plain and ordinary meaning.").

t:~

=:;::
Q(!$
C).U

......
a9
.
"C"n
;.,;.

L

....-.-w

~

",,0
a~c
G4
_(l)

rl)o!:
~

...

,=,,0

;:::2
C(l)

0

19

Contrary to
arguments, the
jury's non-infringement verdict
Galaxy
S 11
to Apple's:
Apple's'arguments,
thejury'snon-inffingement
verdic.tforforthethe
GahL"y
S II
Contrary

20

contradict the '721
'721 patent
patentor
orthe
the record.
record. As
Asan
an example,
example, the
thejury
jurycould
couldhave
have
products does not contradict

211
21

"slide to
to answer"
answer" functionality
functionality does
does not
not "unlock
"unlockthe
thehand-held
hand-held
reasonably determined that the "slide

22

as claimed.
claimed. The
Thepa.tent
describes aa "lock
"lock state"
state"as
as aa condition
conditionwhere
whereaaphone
phone
patent describes
electronic device,"
device," as

23

or powering off;
"Inthe
theuser-interface
user-interfacelock
lockstate
state
ignores all inputs other than unlocking or
off "In

24

thedevice
device100
100isispowered
poweredon
onand
andoperational
operationalbut
butignores
ignoresmost,
most,ififnot
(hereinafter the 'lock
'lockstate'),
state'),the
not

25

, In
other
words,
locked
device100
100responds
respondstotouser
userinput
inputcorresponding
correspondingtoto
jnput. ..In
all, user input....
other
words,
thethe
locked
device

26

attempts to transition
transition the device 100
100 to the user-interface
user-interface unlock
unlock state
state or
orpowering
poweringthe
thedevice
device100
100
attempts

27

off, but does not respond
respond to
to user
user input
input corresponding
corresponding to attempts
attempts to navigate
navigate between
between user
user

28

4

4
Case No.:
12-CV-00630
No I2-CV-OO63Q
IN PART
PART AND
AND DENYING
DENYING IN
IN PART
PART APPLE'S
APPLE'S MOTION
MOTION FOR
FOR JUDGMENT
JUDGMENTAS
ASAAMATTER
MATIER
ORDER GRANTING IN
OF LAW

A95

Case: 15-1171

Document: 40

Page: 180

ase5:12-cv-00630-LHK
Document1963
"SEALED*
ase5:12-cv-00630-LHK Docu
ent1963 *SEALED*

Filed: 03/06/2015

Filed09/08!14
Filed09/08/14 Page5
Pages of 45

1

interfaces." '721 patent
patentcol.71.64
co1.71.64-66,
answer"
coil.811.12-17.However.
However,ininSamsung's
Samsung's "slide to answer"
66, coI.811.12-17.

2

user to
to answer
answer or
or decline
decline a;call
a call directly,
directly. which
which indicates
indicatesthat
thatthe
the
feature, the phone allows the user

3

responds to
to user
userinputs.
inputs. The
TheGalaxy
GalaxySiS 11
II products
phone responds
products also
also include
include the functionality.of"Reject
functionality of "Reject

4

call with message,"
message," which
which allows
allowsthe
theuser
usertotosend
sendthe
thecaller
calleraapre-set
pre-set text message instead of

5

accepting or
or declining
decliningthe
the call.
call. The
Thejury
jUJ'ycould
could have
haveverified
verifiedthis
thisby
bytesting
testingthe
thefunctionality
functionalityon
onthe
the

6

phones in
in evidence.
evidence. JX
JX 32
32(Galaxy
(GalaxySS11);
In; JX 33 (Galaxy
(Galaxy SS IIII Epic
Epic4G
4GTouch);
Touch);JX
JX34
34(Galaxy
(GalaxySS1III
phones

7

Skyrocket); ECF No. 1866-1
1866-1 (final
(final admitted
admitted exhibit
exhibit list);
list); see
see also POX
demonstrative.of
PDX 40 (video demonstrative
of

8

"slide to answer"
11 products).
products). Based
Based on
on at
at least
least these
thesestatements
statementsininthe
thepatent
patentand
andthe
the
"sHdeto
answer" on
on Galaxy
GalaxySS1I

9

accused devices themselves, the jury could have decided that Samsung's
Samsung's "slide
"slideto
to answer"
answer"screen
screen

}0
10

-

is not a "lock state,"
isnbta
state," and that sliding
sliding to answer or decline a call does not
not "unlock"
"unlock"the
the device,
device.

CI

'c...
1:<2
L w

II
II

also consistent
consistent with
with Figure
Figure 77 of
ofthe
the'721
'721patent.
patent.Apple
Appleclaims
claimsthat
thatFigures
The verdict is also
.Figures

==J
to

¢a

12

77A-7D
A-7D demonstrate sliding
sliding to
to answer.
answer_ However,
However. that
thatembodiment
embodimentarguably
arguablydoes
doesnot
notshow
show sliding

'to
L-.-

13

to answer a call because
because itit does
does not
not result
resultininentry
entryinto
intoan
anactive
activecall.
call.Rather,
Rather.Figure
Figure7D
7Dshows
showsthat,
that,

QrIl

14

after sliding
sliding to unlock,
uniock,the
user can
can press
presseither
either"Decline"
<+Oecline"oror"Accept"
"Accept"ininresponse
responsetotoananincoming
incoming
the user

.2=:::
4'# ....
_Il.)

15

the unlock
unlock action
action ....
... , AtAtthis
call: "In FIG.
FlG. 7D,
70. the user completes the
thispoint,
point,the
theuser
usermay
mayinteract
interact

0
1
.=;2:
"
z

16

with the virtual buttons
buttons 708
708 and
and accept
acceptor
decline the
theincoming
incomingcall."
call,"'721
t721patent
patentcoi.1611.4-1
col.16 Il.4-11
or decline
I. .

j;J;S

17

an"unlocked"
"unlocked"
Thus.
patent explains
explains that
that aascreen
screenwhere
wherethe
theuser
usercan
canaccept
acceptor
ordecline
declineaacall
callisisan
Thus, the patent

18

state~ However, Samsung's
Samsung'saccused
accused "slide
"slidetotoanswer"
answer"screen
screen also
also permits
permitsthe
theuser
userto
toaccept
acceptor
or
state.

19

decline a call,
call. without
without further
further action:
action:

Ut.,...

°
·C t)
.:! t3

",0

oo,€

=:::Il.)

...

0

tl..

~'-

20
20
21

22
23

24
25

26

27
28

5
Case
CaseNo.:
No.: 12-CV-00630
t2-CV-00630

ORDER GRANTING
GRANTING IN
IN PART
PART AND
AND DENYING
DENYINGIN
INPART
PARTAPPLE'S
APPLE'SMOTION
MOTIONFOR,
FORJUDGMENT
JUDGMENTAS
ASAAMATTER
MATTER
OF LAW

A96

Case: 15-1171

Document: 40

Page: 181

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ase5:12-cv-00630-LHK Document1963
*SEALED* Filed09/08/14
Filed09/08/14 Page6
Document1963 *SEALED*
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45

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Touch screen 714

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Incoming call from:

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mobile

5

JohnOoe
John Doe

Decline

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40
Accordingly,
Accordingly. a reasonable
reasonable jury
jury could
could have
havedetermined
detenninedthat
thatsliding
slidingtotoanswer
answeron
onthe
theaccused
accused
devices is
is not
nota
form of
ofunlocking
unlockingbecause
becausethe
thephone
phoneisisininan
an"unlocked"
"unlocked"state
statewhen
whenititpresents
presents
a form

muitipletUn:ctions.
"unlock"; to
to the
the extent
extentApple
Apple
these multiple
functions. AppJedid.not
Apple did not request a construction for '`unlock";
seeks such aconstroction
Apple'srequest
request isis untimely.
untimely. See Hewlett-Packard
Hewlett-Packard Co.
Co. v.v. Alustek
Mustek
a construction now, Apple's

>Svs_, Inc., 340 F.3d
S"vs.,
f.3d 1314.
1314, 1320-21
t320~21 (Fed.
(Fed. Cir.
Cir. 2003)
2003) ("[W]here
("[W]herethe
theparties
partiesand
andthe
thedistrict
districtcourt
courtelect
elect
prov ide an interpretation
interpretation of
ofthe
the
to provide the jury only
only with
with the
the claim
claim language
language itself,
itself and do not provide
ofthe
specification and
and the
the prosecution
prosecution history,
history,ititisistoo
toolate
lateatatthe
theJMOL
JMOL
language in the light of
the specification

and more
the
stage to argue for
for or
or adopt
adopt aa new
newand
moredetailed
de~ailed interpretation
interpretationof
ofthe
theclaim
claimlanguage
languageand
andtest
testthe
jury verdict
jury
verdict by
by that
that new
newand
andmore
moredetailed
detailedinterpretation.
interpretation:'}.
").

21

22
23
24
25

26
27

28

Additionally.
Apple points
points out
o.ut that
that Dr.
Dr. Greenberg
Greenbergdid
didnot
nottestify
testifYtotoany
anyinfringement
infringement
Additionally, Apple

products. Mot.
Mot. at 5. However.
However, Apple bore
n products.
bore the
the burden
burden of
ofproof
proof
defense specific
specific to
to the
the Galaxy
Galaxy SS 11
infringement. and
and Apple
Apple cites
citesno
nocase
~seholding
holding that a jury must rely on expert
expert testimony to find
on infringement,
non-infringement.
courts have held otherwise. See Creative
Creative Compounds.
Compounds, LLC
LLCv.v. Starmark
Slarmark
non- infringement, and courts
Labs.• 651
1303. 1314
1314 (Fed.
(Fed. Cir.
CiT. 2011)
2011)("Ifthepatentee
failsto
meetthat
thatburden
burden[of
[ofproving
proving
Labs.,
651 F.3d 1303,
(`:lf the patentee fails
to meet

infringement], the patentee
patentee loses
losesregardless
regardlessof
ofwhether
whetherthe
theaccused
accusedcomes
comesforward
forwardwith
withany
any

v. Broadcom Corp., No. CIV.A.
evidence to the contrary.");
contrary."); Intel Corp. v.
ClVA. 00-796-SLR, 2003 WL
WL
6
Case No.: l2-CV-00630
12-CV-00630
ORDER GRANTING
GRANifNG IN PART
PARTAND
IN PART
PARi APPLE'S MOTION
MOTION FOR
FOR JUDGMENT
JUDGMENTAS
ASAMAITER
AND DENYING IN
A MATTER
OF LAW

A97

Case: 15-1171

Document: 40

Page: 182

Filed: 03/06/2015

ase5:12-cv-00630-LHK Document1963
Document1963 *SEALED*
*SEALED* FiledO9/08/14
Filed09/08/14 Page7
Page7ofof45
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ase5:12-cv-00630-LHK

1

matter of
oflaw
of
360256, at **14(0.
14 (D. Del.
Del. 2003)
2003) (denying patentee's motion for judgment as a matter
law of

2

infringement; "Broadcom was not
not required to
to put
put on
on its
its own
own expert
experttotodisprove
disproveinfringement
infringement
infringement,

3

Intel that
that bore
borethe
theburden
burdenof
ofproving
provinginfringement.
infringement.").
because it was Intel

4

").

Court cannot
cannot conclude that the evidence
evidence `permits
"permitsonly
onlyone
one
For these reasons, the Court

55

conclusion" and
and substitute
substitute its
its judgment
judgment for
for the
the jury's.
jury's.Davao,
Pavao.307
307F.3d
F.3datat918.
918.Apple's
Apple's
reasonable conclusion"

66

regarding infringement
infringementof
ofthe
theGalaxy
GalaxySSIIHproducts
productsisisDENIED.
DENIED.
motion regarding

1
7

B.

8

The '414
'414 patent
patentcovers
covers"asynchronous
"~ynchtonous data synchronization amongst devices,"
devices." which
which the
the
The

9

Infringement
Claim 20
Infringement of
oCClaim
29 of
ofthe
the '414
'414Patent
Patent

;<batkground sync."
sync."Apple
Apple asserted
asserted claim
claim 20
20of
ofthe
the '414
'414patent
patentagainst
against
parties nicknamed "background

lO
10

Samsung. The jury found that
the ten
that none
none of
afthe
ten accused
accused Samsung
Samsung products
products infringes
infringesthe
the'414
'414patent.
patent.

II
11

See ECF No.
1884 at 9. Apple now
nOw moves for judgment as a matter
matter of
oflaw
law of
ofinfringement
infringement or,
or.
.See
No. 1884

12

trialon
oninfringement
infringementand
anddamages.
damages. Claim
Claim 20
20 depends
depends from
from claim
claim 11.
11. Both
Both
alternatively, anew
anew trial

'0

13

claims recite:
recite:

Q.!!!

14

<0

:.:s==. 'c
UU
UU
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.-."'_-....
fl
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0<0

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_0

{J'}

.e

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Col·

0

j:Z
z

=
::J-:S
Q

....
0

~

15

16

17
18
19

20
20
21
21
22

23

computer readable
11. A computer
readable storage
storagemedium
mediumcontaining.
containingexecutable
executableprogram
program
instructions
which when
whenexecuted
executedcause--a
cause a data processing
processing system
systemtotoperform
perform
instructions which
a method comprising:
comprising:
.
executing at least
least one user-level
user-level non-synchronization
non-synchronization processing
processing thread,
thread, wherein
whereinthe
the
at
least one
one user-level
user-level non-synchronization
non-synchronization processing
processingthread
thread isisprovided
providedby
by
at least
a user application which
which provides
provides aa user
user interface
interface to
to allow
allow aa user
userto
toaccess
access
and edit
edit structured
structureddata
dataininaafirst
firststore
storeassociated
associatedwith
withaafirst
firstdatabase;
database;and
and
executing at least
least one
one synchronization
synchronization processing
processing thread
thread concurrently
concurrently with
with the
the
executing of
ofthe
at least
least one
one user-level
user-level non-synchronization
non-synchronization processing
processing
the at
one synchronization
synchronization processing
processingthread
thread isis
thread, wherein the
the at
at least
least one
provided by a synchronization software component
component which
which isis configured
configured to
to
synchronize the structured
structured data
data from
from the
thefirst
first database
databasewith
withthe
thestructured
structured
data from aa second
second database.
database.

20. The storage .medium
medium as in claim 11 wherein the synchronization
synchronizationsoftware
software
structured data
data of
ofaa first
first data
data class
class
component is configured to synchronize structured
and other
other synchronization
synchronization software
software components
components are
are configured
configuredto
to
ofother
othercorresponding
correspondingdata
dataclasses.
classes.
synchronize structured
structured data
data of
cIs. 11,
11,20.
Apple claims
claimsthat
thatititpresented
presentedevidence
evidencethat
thatall
allSamsung
Samsungaccused
accusedproducts
products
'414
Patent cis.
'414 Patent
20. Apple

24

satisfy every limitation of
satisfY
ofclaim
claim 20,
20. while
while Samsung
Samsung conceded
conceded infringement
infringementof
ofseveral
severallimitations
limitations
25

and presented insufficient
insufficient proof
proofof
ofnon-infringement.
non-infringement. However,
However, as
asset
setforth
forth below,
below,the
thejury's
jury'snonnon26

infringement verdict is supported by
by substantial evidence
evidence and
and isis not
notcontrary
contrary to
tothe
theclear
clearweight
weightof
of
27
the evidence.
Accordingly. Court
Court DENIES
DENIES Apple's
Apple's motion.
motion.
evidence. Accordingly,
28

7
Case
CaseNo.:
No.: 12-CV"()0630
12-CV-00630

ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR JUDGMENT
JUDGMENT AS
AS A
A MATTER
MAlTER
OF LAW

A98

Case: 15-1171

Document: 40

Page: 183

Filed: 03/06/2015

ase5:12-cv-00630-LHK
Page8of
of45
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12-cv-00630-LHK Document1963
Docurnent1963 *SEALED*
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Filed09/08/14 Page8

1 J(
1

Apple's
theory of
ofinfringement
infringementisisthat
thatthe
theAndroid
Androidoperating
operatingsystem,
system,asasinstalled
installedon
onthe
the
Apple's theory

2

accused Samsung devices, contains
contains"Sync
"SyncAdapters"
Adapters"that
thatperform
perfonnthe
thesynchronization
synchronizationfunctions
functionsinin

3

claim 20. It is undisputed that
that claim
claim 20
20 requires
requires at
at least
least three
three distinct
distinct "synchronization
"synchronizationsoftware
software

4

As the
the Court
Court explained
explainedin
in its
itssummary
summaryjudgment
judgmentorder:
order:"The
"Thefirst
firstisisthe
theclaimed
claimed
components."
components." As

5

ofaaflrst
data
synchronization software component 'configured
'configured to synchronize structured
structured data
data of
first data

6

class'
andthe
theother
othertwo
twoare
arethe
theother
'othersynchronization
synchronizationsoftware
softwarecomponents'
components'configured
configured 'to
class and

17

of other corresponding data classes.
classes."'"ECF
EeFNo.
No.1151
1151atat23.
23.Moreover,
Moreover,
synchronize structured data of

8

requires that
thateach
each synchronization
synchronizationsoftware
softwarecomponent
componentbe
beconfigured
configuredtoto"synchronize
·'synchronize
claim 20 requires

9

'414 patent
structured data"
data" from
from aa different
different data
dataclass.
class. See '414
patent cL20.
cL20.

10

At trial,
trial. the parties
parties presented
preSented opposing
oPPQsing expert
expert testimony
testimony from
from Dr.
Dr.Alex
AlexSnoeren
Sneeren(Apple)
(Apple)

.Stic
t.e""

11
11

Theexperts
expertsconcurred
concurred
and Dr. Jeffrey Chase (Samsung), who both analyzed relevant source code. The

QaS

12

ofthree
threedata
dataclasses:
classes:Calendar,
Calendar,
that the accused software
software includes
includessix
sixSync
SyncAdapters,
Adapters, two
twofor
foreach
eacbof

13
13

See Tr. at
at 980:1-1.5
980:1-15 (Snoeren),
(Snoeren), 2166.:12-23
2166:12-2:3 (Chase).,
(Chase); see
seeal$o
Contacts,
andEmail.
Contacts, and.
Email. SeeTr.
also SOX
SDX 3634. The

14

experts further agreed that
thatthe
"GoogleCalendar"
Calendar"Sync
SyncAdapter
Adapterfor
forthe
the"Calendar"
"Calendar" data
dataclass
classand
and
the 'Google

... 0

=""

15
t5

for the
the 'Contacts'
"Contacts"data
dataclass
classare
are"synchronization
"synchronizationsoftware
software
the "Google Contacts"
Contacts" Sync
Sync Adapter
Adapter for

't':I5

16

See Tr.
Tr. at 981:11-17; SDX
configuredtotosynchronize
synchronizestructured
structureddata."
data." See
SOX 3635. In
components ...
... configured

P;S

17

of Apple.
Apple, Dr.
Or. Snoeren
Snoeren testified
testified that
thatthe
the"Gmail"
"Gmail"Sync
SyncAdapter
Adapterfor
forthe
the"Email"
"EmaW'data
dataclass
classisis
support of

18

also aa synchronization
synchronization software
software component,
component,and
and that
thattherefore
thereforethe
theaccused
accusedsoftware
softwarehas
hasthree
threesuch
sueb

19

to different
differentdata
dataclasses.
classes. See Tr. at 981:18-982:3.
981:18-982:3. Dr.
Dr. Snoeren
Sneeren reviewed.
reviewed
components corresponding
corresponding to

20

Google documentation
documentation for
for the
the Sync
SyncAdapters
Adapters(PX
(PX172)
172)and
andopined
opinedthat
thatall
allsix
sixSync
SyncAdapters
Adapterscall
canaa

21
2.1

fum.:tion
"PerformBackgroundSync."which
whichallegedly
allegedlyestablishes
establishesthat
thatthe
theGmail
GmailSync
Sync
function called "PerformBackgroundSync."

22

984:23-986:16.
16. Alternatively,
Alternatively, Dr.
Dr.
Adapter can perform the
the claimed
claimed synchronization
synchronization function.
function.ld.
Id. at 984:23-986:

23

Sneeren
that three
three Sync
Sync Adapters
Adapters that
thatuse
usethe
theMicrosoft
MicrosoftExchange
Exchangeprotocol
protocol("Exchange
("Exchange
Snoeren stated that

24

Calendar," "Exchange
nize structured
id at
Calendar,'"
"Exchange Contacts,"
Contacts," and
and "Exchange
"Exchange Mail")
Mail") also
also synchronize
synchronize
structured data.
data. See id.

25

986:17-987:4.

=::::

UU
_4-0

.--.-......
...
~o

I-Q

v....,;
+A V
~

~.!!!

";0
.

~c

oo;S

.~Z
co

is

t.1..

26
27

Samsung argues that
that the
the jury
jury could
could have determined that the accused
accused software
softwaredoes
doesnot
not
wereeach
each"configured
"configuredtoto
include at least three synchronization
synchronization software
software components
componentsthat
thatwere

28

8
8
Case No.:.
No.: 12-CV-00630
12-CV-00630

ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR JUDGMENT
JUOOMEl\!'f AS
AS A
A MATTER
MAlTER
OF LAW

A99

Case: 15-1171

ase5:12-cv-00630~LHK
K

Document: 40

Page: 184

Filed: 03/06/2015

Document1963 *SEALED*
*SEALED* Filed091O8/14
Filed09/08/14 Page9
Page9of
of 45
45

i

synchronize structured data."
data:' The
The Court
Court agrees that substantial
substantial trial evidence permitted aa

2

Chase explained
explained to
to the
the
reasonable jury to determine
determine non-infringement
non-infringement on at least this basis. Dr. Chase

3

ofthe
the E-mail
E-mail data
data class"
class"that
thatare
areconfigured
configuredtotosynchronize
synchronize
Sync Adapters
Adapters of
jury that "there are no Sync

4

structured data. Id. at 2167:20;..2168:6.
2167:20-2168:6. He disagreed
disagreed directly
directly with Dr. Snoeren's
Snoeren's analysis
anallysis after

5

for the
the Gmail
Gmail Sync
Sync Adapter
Adapterthat
thatDr.
Dr.Snoeren
Snoerenexamined.
examined.See
See id. at
reviewing the same source
source code
code for

6

2170:
12-2171 :5. Dr. Chase
Chase opined
opined that
that the
the Sync
Sync Adapters
Adapters are
arenot
not"configured
"configuredtotosynchronize"
synchronize"
2170:12-2171:5.

7

synchronize data
data themselves,
themSelves, but
but rather
rather indirectly
indirectly"cause"
"cause"synchronization
synchronizationby
by
because they do not synchronize

8

calling other
other software
software components.
components. Id.
It!. at 2180:
17-2181: I 1 ("1
mechanic to
to fix my car;
car~
2.180:17-2.181:11
('t can call the mechanic

9

and if
ifthat
causes the
the mechanic
mechanic to
to fix
fix my
my car,
car, II really
reallycan't
can'rsay
saythat
thatI 1did
didititmyself
myselfororI ) could
that call causes
could do

to
10

it myself.
Furthermore, Dr. Chase told the
the jury that
that "{t]here's
"[t]bere's no
nosynchronization
synchronizationof
ofstructured
structured
myself."). Furthermore.

...

11
II

data of
of these classes in
in the
the Exchange
Exchange Sync
Sync Adapters"
Adapters" because
because "the code passes a synchronization
synchronization

Qa:!

12

request along to another
another component
componentof
ofExchange
Exchange called
calledthe
theExchange
ExchangeService."
Service."Id.
It!.atat2713.232713:23-

~~

.....
'" ...-

13

Samsurig also
also called
called Google
Google manager
managerPaul
Paul Westbrook,
Westbrook,who
whotestified
testified that the Gmail Sync
2174:6. Samsung

Q.!!!
A

14

Aqapter
"passes messages
messagesbetween
behveenthe
theSync
SyncManager
Manager here to this Mail Engine here,"
here,'" and that
that itit isis
Adapter "passes

15

the Mail Engine that
ofthe
theGmail
GmaHAndroid
Android
theMaii
that performs
performs synchronization,
synchronization. to
to optimize
optimizethe
thespeed
speedof

~o

l6
16

application. It!.
1649:20-1650: 12. Mr.
Mr. Westbrook
Westbrook also
also testified
testified that
thatthe
theExchange
ExchangeSync
SyncAdapters
Adapters
Id. at 1649:20-1650:12.

...." .c

-....

17

Id. at 1653:1-17.
1653: 1-17. Based on
on this
this expert
expert and
and factual
factual
only pass messages without
without synchronizing.
synchronizing. [d.

0
u.5

18

testimony, the jury
jury could
could have
have decided
decided that
thatthe
theaccused
accused products
productslack
lackthree
threedistinct
distinctsynchronization
synchronization

19

thus do
do not
not infringe.
infringe.
software components, and thus

").

I':S

'2

t.£
::I:'::
UU
'.tic>

- ....

"'0

",Q
O

~c

c= ...
.... !I)
VJ..!::.
"t't:

:::z
CV

20

Apple contends that Samsung
Samsung made
made improper
improper claim
claim construction
constru..:tion arguments to the jury by

21

stating that "configured
different from "causing"
"causing" another
another software
softwarc component
component to
to
"configured to synchronize"
synchronize" isis different

22

synchronize. According to Apple,
Apple. "Samsung
"Samsung proposed
proposedthat
thatthe
thejury
jury 'import
import fl additional limitations

23

into the
suggestingthat
thatthe
theclaim
claim required that au sync adapter
adapter be
be configured
configured to
to
the claims'
claims' ...
... bybysuggesting

24

way." Mot.=at
Mot. at 13. Apple
synchronizationor
ortotoperform
performsynchronization
synchronizationinina-a specific way."
perform all synchronization

25

further asserts that Samsung's
alleged claim
claim construction
construction "is
"is also
alsoinconsistent
inconsistentwith
withthe
the
Samsung's alleged

26

o1't11.:
'414 patent's
patent'sintrinsic
intrinsicrecord.
record.
specification and the prosecution history," and cites portions of
the '414

27

13-14.
Id. at 13-14.

n

28

9
Case No.: 12-CV-00630
11-CV-00630

ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION
MOTION FOR
fOR IUDGMENT
JUDGMENT AS
AS AAMATTER
MATIER
OF LAW

A100

Case: 15-1171

Document: 40

Page: 185

Filed: 03/06/2015

se5:12·cv-00630-LHK
PagelOof
of 45
45
se5:12-cv-00630-L.HK Document1963
Document1963*SEALED*
*SEALED* Filed09J08J14
Filed09/08/14 Page10

1

Apple's
arguments regarding
regarding claim
claim construction
construction are unfounded
unfounded.Apple
Applerelies
reliesheavily
heaviJy
Apple's arguments

2

throughout its papers
papers on Moba
Moho B.V
B. V. v.v. Diamond
DiamondAutomation,
Automation,Inc.
Inc. In Moho,
Moba, the district court

3

claim prior
prior to
to trial,
trial, but
but when
when resolving
resolvingpost-trial
post-trialmotions,
motions."reasoned
"reasonedthat
thatthe
the
construed aa method claim

4

fromthe
thetestimony
testimonypresented
presentedthat
thatsequential
sequentialperformance
performanceisis
jury reasonably
reasonably could
could have
havedetermined
determinedfrom
jury

5

ofthe
themethod
methodclaim.
claim.325
325F.3d
F.3d1306,
1306,13.13
1313(Fed.
(Fed.Cir.
Cir.2003).
2003).The
TheFederal
Federal
a necessary characteristic"
characteristic"of

6

Circuit reversed, holding
holding that
that`the
''thedistrict
districtcourt
courtallowed
allowedthe
thejury
jurytotoadd
addan
anadditional
additionallimitation
limitationtoto

7

the district court's
construction." ld.
Moho dealt with a situation where the
the district
district court
court had
had
Id. Thus, Moba
court's construction."

8

already construed
construed the
the claim
claim at
at issue,
issue. but
butrelied
relied on
on an
an extra
extralimitation
limitationwhen
whenreviewing
reviewingthe
theverdict.
verdicL

9

However, the Federal
Federal Circuit
Circuit has
hasclarified
clarified that
thatparties
partiesmay
may not
notre-argue
rc-argueclaim
claimconstruction
constructionininpostpost..,

10
.!:

...c:

11

trial motions:

}..o

l3
13

_.",0

14
14

c;I'"
_
0

15
15

"0'"
(UO

16

When issues of
not been
been properly
properly raised
mised in
in connection
connectionwith
with
of claim construction have not
jury instructions, itit isis improper
improper for
for the
the district
district court
court to
to adopt
adoptaa new
newor
ormore
more
the jury
detailed claim construction
construction in
in connection
connection with
with the
the JMOL
JMOLmotion.
motion.On
OnJMOL.
JMOL,the
the
question of
ofwhether
whethersubstantial
substantialevidence
evidence
issue here should have been limited
limited to the question
Alolia, B.
B. V. v. Diamond
Diamond
supported the verdict
verdict under
underthe
theagreed
agreedinstruction.
instruction. See Moba,
Automation, Inc..
Inc., 325
325 F.3d
F3d 1306,
1306, 13l3-14
where
1.313-14{Fed.
(Fed. Cir.
Cir. 2003).10
2003). In other words, where
the parties
parties and the
the district
district court
courtelect
electto
toprovide
providethe
thejury
juryonly
onlywith
withthe
theclaim
claim
of
an. interpretation
interpretation of
of the language in the light of
language itself, and do not provide an
specification and
and the
the prosecution
prosecutionhistory,
history,ititisisloo
latcatatthe
theJMOL
JMOLstage
stagetoto
the specification
too late
argue for or adopt
adopt aa new
new and
and more
more detailed
detailed interpretation
interpretationof
ofthe
theclaim
claimlanguage
languageand
and
more detailed
detailedinterprc
interpretation.
test the jury verdict
verdict by
new and
and more
tation.
tr that new

17

Hewleft-Packard. 340
340F~3d
1320-21. InePlus,
v. Lawson
LawsonSofi
Softll'are.
Hewlett-Packard,
F.3d at 1320-21.1n
ePlus, Inc. v.
► r•are,Inc.,
Inc., the
the parties disputed

IS
18

claimterm
term ''determining"
"determining"required
requiredananelement
element
could decide
decidethat
that the
the unconstrued
unconstrued claim
whether the jury could

19

of
Cir. 2012).
2012). The Federal
Federal Circuit
Circuit rejected
rejected the
the appellant's
appellant's
of control. 700 F.3d 509, 520 (Fed. Cit.

20

rding the meaning
argument as "essentially
"essentiallyraising
raising aaclaim
claimconstruction
construction argument rcg
rcgording
meaning of
ofthe
the term
term

2[
21

'determining'
in the
theguise
guiseof
ofaachaUenge
to the
the sufficiency
sufficiency of
ofthe
the evidence
cvidcnceof
infringement,." and
`determining' in
.challenge to
of infringement;"and

22

f cc to rely on the plain and
held that in the absence of
ofan express
eXpress construction,
construction., 'the
"thejury
jurywas
was fn:c

23

term." Id.
Id. Accordingly,
ordinary meaning of the term:'
Accordingly. itit isis improper tc
to create
..:rcate a new claim construction

24

after the verdict, and parties
partiesmay
may not
notrevisit
revisitclaim
claimconstruction
constructionfor
forterms
terms governed by
by plain
plain and

'r
-)
25

meaning.
ordinary meaning.

E
t:'£
:s:.:::
Oc;l
UU

L- ...°
«.
41
(,/0
-"'""

II'~~

I
12

~~-

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...

."" ttl

~c:

00,':

0
=4.>
.
::J':5
~;z:

....
0

lJ;...

26
27

28

Here.
seeks a post-trial
post-trial construction
construction for
for "configured
"configuredtotosynchronize,"
synchronize."raising
raisingnew
new
Here, Apple seeks
arguments regarding
regarding the
the '41:4
'414 patent's
patent'sspecification
specificationand
andprosecution
prosecmionhistory,
history.despite
despitenever
never
10
Case No.: 12-CV-00630
12-CV-00630
ORDER GRANTING IN PART AND DENYING IN PART APPLE'S
APPLE'S MOTION
MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS A
AMATTER
MATIER
OF LAW

A101

Case: 15-1171

Document: 40

Page: 186

Filed: 03/06/2015

e5:12-cv-00630-LHK
Document1963 *SEALED*
45
e5:12-cv 00630-LHK -Documenti963
*SEALED* Filed09108/14
FiledO9l08/14 Pagell
Pageli ofof45

I
1

requesting such a construction before. At trial, Apple did
Dr.Chase's
Chase'stestimony
testimonyasas
did not
not objt:;,:t
objet totoDr.

2

improperlyarguing
arguingClaim
cJaim construction..
construction. See
See Price v. Kramer..
Kramer. 200 F.3d 1237,
1237. 1252
1252 (9th Cir.
Cir. 2000)
2000)
improperly

33

to testimony
testimony waives argument on appeal). Furthermore,
Furthermore, this
this Court
Court
(noting that failure to object
object to

4

WhenApple
Applesought
soughtsummary
summary
already addressed and
and rejected
rejected Apple's
Apple'sargument
argumentbefore
beforetrial.
trial.When

5

ofinfringement,
infringement, the
the Court
Court noted
noted than
that: (1)
(1) the
the parties did not seek a construction of
judgment of
of
judgment

6

jury could
"configured to synchronize,"
synchronize." (2.
(2)) that plain and ordinary meaning applied,
applied, and (3)
(3) that
that "a
"ajury
could

77

reasonably conclude
conclUde that
that the
the accused
accused Sync Adapters merely dired
other components
componentS to
to perform
perform
direct other

8g

'configured to
to synchronize
synchronize structured
structured data'
data'as
as
synchronization operations and are not themselves 'configured

9
9

required by the claim."
claim:' ECF
ECF No.
No. 1.151
1151 at 23-24. Apple'saucmpt
lJ revisit this decision is
is
Apple's attempt :.>

10
1.0

Inc..
03561-WHA, 2012 U.S.
by fact
factor
law. See Oracle
Oracle Ant.
Am. v.v. Google
.. N.
N,J.1=,.-CVW-CV-03561-WHA.
unsupported by
or law.
Goggle inc

·e

11

Dist"
*9 (N.D.
(N.D. Cal.
Cal. May
May 30,
30, 2012)
2012) ("Rule
(<<Rule:O
Hot an
311 occasion
occasion for
for yet
yet another
another
Dist. LEXIS 75026, at *9
.`() ii·-,.ot

==

12

•'').
round of summary judgment
judgment based
based on
on new
new slants
slantson
onthe
thecas.:
case13\\
la ."j.

«J

1;:<9
c«J

!;.)U

--.(;1;;

.2
....
""c)

.Q.:!a
A-....

I3
13

ell ...

Apple's
Apple's remaining
remaining arguments
arguments challenge
challenge Samsung's
Samsung'sinterpretation
interpretationof
ofthe
theconflicting
conflicting

14

at 10-I
1Q-ll;
at 4-6.
4-6. However,
However. "we
"We do I1i
\t wejgh
weigh the evidence or make
Mot. at
1; Reply at
not
testimony. See Mot

15

of law;"
law."
of granti,ag
grantillgjudgment
matter of
credibiUtydetetminations
credibility determinations in assessing the propriety of
jdgment asasaamatter

u O

16

Harperv.
Angeles, 533 F.3d 1010,
1010, 1021
1021 (9th
(9th Cir.
Cir. 20
20ng).
evidence
Hat
per v. City of
of Los Angeles,
" S). Because substantial evidence

-S...
tl..

J7
17

supports the jury's
non-infringementverdict,
verdict,the
theCourt
CourtDENIES
DENIES.
respect to
apple's motion with respect
to the
the
jury's non-infringement
. \\pple's

18

'414
414 patent.

",Q

2S
.au
00-5
"C ...

o=ou

!::z
~-S
a..

J'aseut
of Claim
Claim 25
2S of
oftbe
Infringement of
the '959 i'aklll

19

C.

20

The '959
"959 patent
patent is
is directed
directed to a "universal interface
interfa~\! iir
lorretrieval
r.:trievalof
of information in
in a

21

computer
"univer~j search."
search:'Apple
:\pplcasserted
ussertedclaim
claim25
25of
ofthe
the'959
'959
computer system,"
system:' also
also colloquially
colloquially called
called `universal

22

against Samsung.
Samsung. The
The jury
juryfound
found that
thatnone
noneof
ofthe
theten
tenac:
ac\,:t:scd
Samsungproducts
productsinfringes
infringes
patent against
;.scd Samsung

23

patent. See ECFNo.
a::,aJ matter
matterof
oflaw
lawof
ofinfringement
infringement
the '959
'959 patent.
ECF No, 1884 at
at 9.
9. Apple
Apple seeksjudgmcHi
seeks judgmc:.::,

24

or, alternatively, a new trial on infringement and damages. Clam.:
Cbim :::5
claim 24. Both
Both
from Maimor,
'5 depends from

25

claims recite:
recite:

26

27

infornyation from
from aa plurality
plurality of
24. A computer
computer readable
readable medium
medium for
for locating
locating information
locations containing program
program instructions
instructions to:
to:

28
28

11
II
Case No.:
No.: 12-CV-00630
Case

III PART APPLE'S MOTION
ORDER GRAl'-.'TING
MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS A MATTER
MATIER
GRANTING IN PART AND DENYING IN
OF LAW

A102

Case: 15-1171

Document: 40

Page: 187

Filed: 03/06/2015

seS:12-cv-00630-LHK
:12-cv-00630-LHK Document1963 *SEALED'"
*SEALED* Filed09/08114
Filed09/08/14 Page12
Page12of
of45
45

3

receive an
an information
information identifier;
identifier;provide
providesaid
said information
informationidentifier
identifiertotoaaplurality
pluralityofof
receive
heuristics to locate information in the plurality of'locations
of locationswhich
whichinclude
include
media;
the Internet and local
local storage
storagemedia;
determine at least one
one candidate
candidate item
item of
ofinformation
based upon
upon the
theplurality
pluralityof
of
information based
heuristics; and
and
display a representation of
ofsaid
said candidate
candidate item
item of
ofinformation.
infonnation.

4

25. The computer
computer readable
readable medium
medium of
ofclaim
claim 24,
24, wherein
wherein the
the information
informationidentifier
identifier

2

separately to
is applied separately
to each
each heuristic.
heuristic.

5

'959
24. 25. Apple claims
claims that
that itit presented
presented evidence
evidence that
that all
all products
productssatisfy
satisfyeach
each
`959 Patent cis. 24,
6

limitation of
challen=ged
limitation
ofclaim
claim25,
25,while
whileSamsung
Samsungunsuccessfully
unsuccessfully
challengedonly
onlyone
onelimitation::
limitation.The:`Cottrt
The Court
7

DENIES Apple's.
Apple's motion.
motion. The
The jury's
jury'snon-infringement
non-infringementverdict
verdictisis SJlpported
disagrees and DENIES
supported by
8

substantial evidence
evidence and is
is not
not contrary
contraryto
tothe
the clear
clear weight of :h.:
°f%eevidence.
evidence.
9

instructions to
to "provide
provide said
The parties focus on claim 25's
25'srequirement
requirementfor.
for instnlcttons
saidinformation
information
I4
10
.:!!

E
E

11
II

==
o~
8a
UU
.........G

12
1.2

t:¢!
~o

.L~o
+

-.on ...

infringement of
ofthis
thiselement,
element,Apple
Applerelied
reliedon
on
the Internet and local storage
storage media."
media."To
Toprove
proveinfringe01ent
expert testimony from Dr.
Dr. Snoeren.
Snoeren. See generally Tr. at 940:21-945:5,
940:21-945:5. 952:8-956:23.
952:8--956:23. In
In the
:the
13

14
S.~
. 14
onO

~c

sa
a,

"t:I ....

16

;;,;:).;:

11

00-5

i

...

0
t.:...

accused products,
pr()ducts, Dr. Snoeren
Snoeren identified
identified the
theinfringing
infringing llmctiUl1;llit>'
as the
the Quick Search Box
Box (or
(or
i cti:;nality as
'`Google Search")
Gingerbread, Jelly
!m `.::ndwich
theOingerbread,
JellyBean,
Bean,and
andIceIccC.—
Cn.,"HU
S:llldwich.versions
versionsofofAndroid.
Android.
"Google
Search")ininthe

15

.sO
._z
r:::lv

identifier to a plurality of
ofheuristics
heuristics to
to locate
locate information
information in
in the
theplurality
pluralityof
oflocations
whichinclude
include
locations which

lei.
942:7-19 (Gingerbread),
(Gingerbread), 943:13-944:7
943;13-944:7l(Jdly
Beanand
andIce
CreamSandwich).
Sandwich).
Id. at 940:21-941:20, 942:7-19
clly Bean
Ice Cream
For Gingerbread, Dr. Snoeren told
told the
the jury
jury that
thatthe
the "Web ivt.>,Lk
til..: Samsung
Samsung products"
products"
M,.,'I:; ininthe
locating information
information on
on the
theInternet
Interneti.e;.tt:se
b;,;\:~ltI:>citit"combine[s]
"combine[s]places
placesthat
thatthe
the
provides a heuristic for locating
18
18

user has actually
actually previously
previouslybrowsed
browsedusing
usingthe
theweb
webbrowser
browseri.:;d
.md suggestions that the Google search
search
19
13c.,n :md
Id. at 956:8-23. For
suggestion server has presented."
presented." lei.
For Jelly fk.m
: ;adIcc
IceCream
Cream Sandwich.
Sandwich, Dr.
D.

20
i11t2cl;:lc that on these versions of
Snoeren testified that the "Google
"Google Module"
Module"isis"the
''theheuristic
heuristic mUGuh:
ofthe
the
21

22

lei. ,Itt.t'945:.
945:2-5;
PDX91.24
91.24(Apple
(Apple
phone provide the
the Internet
Internet searching
searchingapplications."
applications."Icl.
:.,tsci,!
e PDX
demonstrative).
demonstrative).

23

penn it the jury to decide
decide that
that
However.
presented sufficient
sufficient rebuttal
rebuttal ~\'iJ":;i':C
cvi..::.c to permit
However, Samsung presented
24

the accused
accused devices
deviceslack
lackinstructions
instructionstotosearch
search"a"aplurality°
pluraEty c,::
uj' ~ >cation:;
Internet,"
ications which include the Internet,"
25

as claim 25 requires. Bjorn Bringert, a Google
hu \,'
llk~Jon
on "all"
"all"versions
versionsof
ofthe
the
Google engineer
engineer \\who
:, .;led
26
acL "',;
d Gvoglc
1568: 15-22),explained
explainedthat
thatthe
th.: aCL'
Google search app
app (Tr.
(Tr. at
at 1568:15-22),
Google search functionality
27

employs a software
software method
methodcalled
c(llledblendResultsO
blendResultsOthat
thatdues
du..:snolli LL
': , ..:.
r..:h the
theInternet,
Internet,but
butrather
rather
.Feh
28

12
Case No.: I2-CV-00630
12-CV-00630

ORDER GRANTING IN
l' "'
'·!',n'i
"": FOR
!'OR JUDGMENT AS A MAITER
MATTER
IN PART AND
AND DENYING IN
IN PART
PARTAP!'LE'S
API .!TS 1\"
OF LAW

A103

Case: 15-1171

Document: 40

Page: 188

Filed: 03/06/2015

K Document2963
Pagei3 of
se5:l2-cv-00630-LHK
Document1963 *SEALED*
"'SEALED'" Filed09108114
Filed09108/l4 Page13
of 45
45

I

"blends"data
datapreviously
previouslyretrieved
retrievedfrom
from-aaGoogle
Googleserver
serverand
and a local database.
database. See
See id.
id at
at 1567:8-23
1567:8-23
"blends"

2

("Q. Now this Blend Results, does
does that
that search
searchthe
theInternet?
Internet?A.
A.No,
No,ititdoesn't.
doesn't....
. ..The
Theblender
blender

33

doesn't go
go and buy them or
or locate
locate them.").
them.''). Samsurtg's
Samsung'sexpert
expertDr.
Dr.Martin
MartinRinard
Rinardtestified
testifiedtotothe
the
doesn't

4

conclusion.: "What it's
it's doing is taking information that has
has already
already been
been located,
located, either
either in
in the
the
same conclusion:

5

can't possibly
the
possibly be
be any
any of
ofthe
locaJdatabase
or by
by the
the Google
Googleservers,
servers,and
andputting
puttingitittogether.
together. So it can't
database or
local

6

claim 25."
25." Id.
Id. at 1890.11-21.
1890:11-21.
heuristics in claim

7

Apple.
claims that Samsung'
Samsung'ss positions
po~itionscontradicted
contradictedthe
theplain
plainclaim
claimlanguage
languagebecause
becauseclaim
claim
Apple claims

8

"does not
not require
require the
the accused
accused device
device or
orapplication
application to
tosearcb
theInternet
Internetevery
everytime
timethe
theuser
user
25 "does
search the

9

"[tJhe fact
fact that
that something
something else initially
initiallyiocatedinformation
located information on
on the
the Internet
Internet
inputs a query,"
query," and "[t]he

10

on the
the Internet."
Internet."Mot.
Mot.atat19-20.
19-20.
affect whether
whetherthe
theheuristic
heuristic also locates information on
does not affect

'sE

II

Apple's argument
argument isis misguided.
misguided. The
The '959
'959patent
patentrequires
requiresheuristics
heuristics to "locate
"locate information
information in
inthe
the
Apple's

==
00:1

._""u

12

of locations which
which include
include the
the Internet."
Internet." Apple
Apple implies
impliesthat
thata
systeminfringes
infringesififit
locates
plurality of
a system
it locates

u o

13

stored locally
locallybut
butis,
is,ororwas
wasatatsome
sometime,
time,also
alsopresent
presentononthe
theInternet.
Internet.However,
However,
that isis stored
information that

Q .!!!

A

14

Apple never requested such aa strained
strained claim
claim construction,
construction, and
and the
the jury
jury was
wasfree
free to credit the

"'S
=4)

15

testimony from Dr. Bringert
Bringert and
and Dr.
Dr. Rinard
accused search
search features
features did
did not
not
Rivard and conclude that the accused

'go
0

16

infringe. Apple's
Moba v. Diamond
DiamondAutomation
Automation isis once again misplaced. As explained
Apple's reliance on hloba

i=liS

=4>

11
17

performance" requirement
requirement
above, Moba held that the district court improperly added a "sequential performance"

tL.

18

13.13-14. Here,
when assessing
assessing aajury
verdict. 325
325 F.3d
F.3d at 1313-14.
to a previously construed
construed method
method claim
claim when
jury verdict.

19

newclaim
claim construction
construction position
Rather, itit is
is Apple
Apple that
that asserts
asserts ::a
a new
position
Samsung made no such argument. Rather,

20

not request
request additional
additional claim
claim construction,
construction, and
andplain
plainand
andordinary
ordinary
after trial, when Apple did not

21
2.1

meaning applied to the
the 'terms
terms that Apple
Apple now
now raises.
raises.

0:1

t:c£

a.

tj
tU
U
... <""

.i·5
~O

.... ..c:

flit::

;::Z
z

...0

22

an inconsistent
inconsistent position
position regarding
regardinginvalidity
invalidityof
ofclaim
claim
Apple also argues that
that Dr.
Dr. Rinard
Rinard took
took an

23

25 because he opined that
that the
the "WAIS"
·'WAIS"prior
priorart
artreference
reference applied a heuristic after data was

24

data did
did not
not need
need to
to be
be on
on the
the Internet.
Internet. However,
However.Dr.
Dr.Rinard's
Rinard's
retrieved, suggesting that the
the data

25

he described
described aa "relevance
"relevanceranking
rankingheuristic"
heuristic" that sorted data
testimony was not so contradictory: he

26

WAISreference
referenceperformed..
performed.
entries.
identified searches
searches"from
"fromthe
theInternet"
Internet"that
thatthe
theWAIS
entries, but separately identified

27

Jd.
concluded that
that claim,25
claim 25 was
wasnot
not invalid, so it
Id. at 1928:8-20, 1927:20-24. Moreover, the jury concluded

28
28

13
CaseNo.:
12~CV-00630
Case Na 12-CV-00630

ORDER GRANTING IN PART AND DENYING IN PART
FOR JUDGMENT
JUDGMENT AS
AS A
A MATTER
MATIER
PART APPLE'S
APPLE'S MOTION FOR
OF LAW

A104

Case: 15-1171

Document: 40

Page: 189

Filed: 03/06/2015

se5:12-cv-00630-LHK Document1963
Document1963*SEALED*
Filed09/08/14 Page14
Page14of
of45
45
se5:12-cv-00630-LHK
*SEALED* FiledO9f08I14

1

have determined
determinedreasonably
reasonablyand
andconsistently
consistentlythat
thatclaim
claim25
25reads
readsononneither
neitherthe
theWAIS
WAIS
could have

2

nor the
the accused
accuseddevices
devicesdue
duetotolack
lackofofsearches
searcheson
onthe
theInternet.
Internet.
reference nor

33

Samsung
Samsurtg further
further argues
argues that
thatthe
thejury
jury could
couldhave
havedecided
decidedthat
thatthe
theaccused
accusedproducts
productslacked
lackeda a

4

ofheuristics
heuristics because Dr.
Dr~ Snoeren identified only a single heuristic for each product"plurality" of
"plurality"
product-

5

either the Web
Web Module
Module (for
(forGingerbread)
Gingerbread)orOfthe
theGoogle
GoogleModule
Module(for
(forJelly
JeUyBean
Beanand
andIce
IceCream
Cream
either

6

Dr;
Sandwich). See
Opp'natat14-15.
14-15.Samsung
Samsungfails
fails to
to explain
explain the
thebasis
basisfor
forthis
thisargument,
argument,ininlight
lightof
ofOt.
Sandwich).
See Opp'n

7

Snoeren'sidentification
identificationof
ofother
other"modules"
"modules" ininthe
theaccused
accusedoperating
operatingsystems,
systems,such
suchasasBrowser
Browserand
and
Snoeren's

8

Jelly Bean
Beanand
andIce
IceCream
CreamSandwich.
Sandwich.See
SeeTr.
Tr.atat950:22-951:8
950:22-951:8("1
("Ifound
foundininthe
thecase
caseofof
Contacts in Jelly

9

Gingerbread two modules, the Contacts
Contacts Module
Module and
and the
the Web
Web Module,
Module, and
and in
in the
theother
othertwo
two

10

were four.");
four,");PDX
91.24. However,
However, even
even setting
settingthis
this issue
issue aside,
aside,substantial
substantial
versions there were
PDX 91.24.

11
Ii

jury'snon-infringement
non-infringement verdict,
verdict. as
as explained
explained above.
above. Apple's
Apple'smotion
motion
supports the jury's
evidence supports

UU.... aU

12

regarding infringement
infringement of
ofthe
the '959
'959patent
patentisisDENIED.
DENIED.
regarding

........
""t>

ColO

13

D.

~.;e

©

14

Apple also seeks
seeks judgment
judgmentas
as aa matter
matterofJaw
that Samsung
Samsung (specifically,
(specificany~SEC
SECand
and STA)
STA)
of.law that

-;E
e

t5
15

infringed the
the '647
'647patent
TheFederal
FederalCircuit
Circuitset
setthe
therelevant
relevantstandard
standardfor
forthe
thewillfulness
willfulness
willfully infringed
patent. The

16

inquiry for patent infringement: "a
"a patentee
patentee must
must show
show by
by clear
clearand
and convincing
convincingevidence
evidencethat
thatthe
the

;:J.;:i

17

objectively high
high likelihood
likelihood that
that its
its actions
actions constituted
constituted infringement
infringementof
ofaa
infringer acted despite an objectively

IJ:..

18

valid patent. The
The state
state of
ofmind
mind of
ofthe
the accused
accused infringer
infringer is
is not
not relevant
relevant to
to this
this objective
objectiveinquiry.
inquiry. IfIf

19

this threshold objective
objectivestandard
standardisissatisfied,
satisfied.the
thepatentee
patenteemust-also
must rusodemonstrate
demonstratethat
thatthis
this

20

. . was
objectively-defined risk.
risk ...
waseither:
either known or so obvious that
that itit should
should have
havebeen
beenknown
knownto
to the
the

21

Tech.. LLC, 497
497 F.3d 1360, 1371
1371 (Fed.
(Fed. Cur.
eir. 2007) (internal
accused infringer."ln
infringer." In re SeagaJe
Seagute Tech.,

22

inquiry isis aa two-prong
two-prong analysis,
analysis, requiring
requiringan
anobjective
objective
citation omitted). Thus, the
the willfulness
willfulness inquiry

23

inquiry and a subjective inquiry,
inqUiry
inquiry. The
Theobjective
objectiveinquiry
inquiryisisaaquestion
questionfor
forthe
theCourt,
Court,and
andthe
the

24

subjective inquiry is a question for
for the
the jury.
jury. See Bard
Vascular. Inc. v.
v. W.L:
W.L. Gore &
Bard Peripheral Vascular,
&

25

Assocs., Inc.,
inc., 682
682 F.3d 1003, 1007 (Fed. Cir. 2012). A patent
patent owner
owner must
must prove
prove willfulness
willfulness "by
"by

26

clear and convincing evidence."
evidence." Seagate, 497 F.3d at 1371.
137 I .

t':S

'8E
0

tt2
::s:'::

Qt':S
~

._-="0
~Q

(;}~

!~
..,
=/1)

....
0

Infringement of
of Claim 9 of
oUlte
'647 Patent
Patent
Willful Infringement
the '647

27
28

14
14
Case
CaseNo.;
No.: 12-CV-00630
12-CV-00630

ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR JUDGMENT
A MATTER
MA'ITER
JUDGMENT AS A
OF LAW

A105

Case: 15-1171

Document: 40

Page: 190

Filed: 03/06/2015

e5:l2-cv-Q0630-lHK
:12-cv-00630-LHK Document1963
DocumenU963 *SEALED*
*SEAlED* Filed09108114
Filed091081l4 Page15
Page15of
of45
45

case, the
the jury
jury found
found that,
that,as
asaasubjective
subjectivechatter,
matter, Samsung
Samsungdid
didnot
notwillfully
willfullyinfringe
infringe
In this case,
2

'647 patent.
patent, ECF No. 1884
1884 at 7. In other words, the jury considered
considered whether
whetherthe
the"objectively"objectivelythe '647

3

defined risk (determined
(detennined by
by the
the record developed
deveJoped in the
the infringement
infringementproceeding)
proceeding)was
waseither
either

4

that itit should
should have
have been
been known
known to the accused
accused infringer,"
infringer," Seagate, 497 F.3d
F.3d at
known or so obvious that

5

detennined that
that itit was
was not.
not. Apple
Appleposits
positsthat
thatSamsung
Samsung willfully infringed because Apple
Apple
1371, and determined

6

writtennoticetoSamsung
ofthe
the '647
'647patent
patentinin August 2010 (.see
(see PX 132),
132). and Samsung
Samsung
gave written
notice to Samsung of

7

subsequently copied
copied the
the "quick
links"feature
featureand
and continued
continuedto
to infringe even
even after this lawsuit
lawsuit
subsequently
"quick links"

8

began. However, Samsung
Samsung points
points to
to substantial evidence that
that supports
supportsthe
the jury's
jury'sview
viewtotothe
the

9

contrary. Specifically,
Specifically. Apple's
Apple'sexpert
expertDr.
Dr~Mowry
Mowryadmitted
admittedon
oncross-examination
cross-examinationthat
thathis
hisexpert
expert

10

report noted that
that "the
"'the accused
accused browser
browserfunctionality
functionality has
has existed
existed in
in Android
Androidsince
since at least version

11

l5
that there
there have
have been
been no
no changes in the accused
accused functionality,"
functionality /'and
and
1.5 (Cupcake)
(Cupcake)...
... and that

U
U
UV

12

Cupcake was
was released
released in
in April
April 2009.
2009. Tr.
Tr. at
at 919:9-920:14.
919:9-920: 14.Because
Becausethe
theaccused
accused
acknowledged that Cupcake

....

13

ofthe
the '647
'647patent,
patent.this
thistiming
timingcould
couldnegate
negate any
featuresappeated
features:
appeared before
before Apple
Apple notified Samsung of

~.~

14

inference of
Sam sung. The
The jury
jury also could have
have concluded
concludedthat
thatSamsung
had
of copying by Samsung.
Samsung had

\!!S~

15

reasonable defenses
defenses to
to infringement,
infringement,despite
despitethe
the ultimate verdict of
of infringement
infringement and
and no
no invalidity.
invatidity~

16

Samsung presented expert
expert testimony
testimony from
Dr. Kevin
Kevin Jeffay
Jeffay on
on both
both non-infringement
non-infringementand
and
from Dr.

17

of claim 9 of
of the
invalidity of
the''647
647 patent,
patent,and
andSamsung
Samsungdid
did not
notpresent
presentevidence
evidenceregarding
regardingthe
the

18

Samsung's defenses
adequacy of
ofSamsung's
defensesthroughout
throughoutthe
thelawsuit.
lawsuit.22

E
tIS

's

t:~
=;.:::

¢I!!!
am

... <0-..

(10

.E+ U

'Ct)
~

.:1 b

AQ
aO
-eE

;j,€
"CIo
!;zo
U
=<1)
~.s

....00

\:X,.
e4

As explained above,
above, willfulness
willfulness requires
requires both
both that
that the
the jury
jury find
find subjective
subjectivewillfulness
willfulnessand
and

19
20

that the court findl
find objective
no subjective
subjectivewillfulness,
willfulness,and
andthe
the
objective willfulness. Here, the jury found no

21

Court agrees that substantial
substantial evidence
evidence in
in the
the record supports
supports this
this finding.
f'mding. Therefore,
Therefore,even
evenifif the

22

Court were to find the objective
objective prong
prong satisfied,
satisfied, there
there can
can be
beno
no ultimate
ultimatewillfulness
willfulnessdetermination.
determination.

23

Accordingly, the Court
Court need not
not reach
reach the
the objective
objective analysis.
analysis. Apple's
Apple'smotion
motionisisDENIED.
DENIED.

24
25
26

27

28

2

2 The parties

whether Apple
Apple proved
proved that
that itit practices
practicesthe
the '647
'647patent
patent(for
(forpurposes,
purposes.of
of
also dispute whether
establishing that Samsung copied the patented feature), and Samsung's
Samsung'salleged
allegedability
abilitytotodesign
design
around the patent. Resolving these disputes
disputes isis unnecessary
unnecessary because
because the
thejury
jurycould
couldhave
haverelied
reliedon
on
the other evidence discussed here to find no subjective willfulness.
15
Case No.:
-00630
No.: l12-CV
2-CV-00630
ORDER GRANTING IN PART AND DENYING
DENYING IN
IN PART
PART APPLE'S
APPLE'S MOTION FOR
FOR JUDGMENT AS A MATIER
MATTER
OF LAW
LAW

A106

Case: 15-1171

Document: 40

Page: 191

Filed: 03/06/2015

*SEALED* Filed09/08/14
Filed09/O8/14 Pagelb
se5:l2-cv-00630-LHK Document1963
Document1963 "'SEALED'"
Page16of
of45
45

WhetherSamsung
SamsungFailed
Failedto
toEstablish
EstablishAffirmative
AffirmativeDefenses
Defenses
Whether

I

E.

2

moves for
for judgment
judgmentas
asaamatter
matterof
oflaw
lawthat
thatSamsung
Samsungfailed
failedtotoprove
provethe
theaffirmative
affirmative
Apple moves

33

in Samsung's
Samsung'sAnswer,
Answer,including
includingwaiver,
waiver,acquiescence,
acquiescence,estoppel,
estoppel.laches,
laches.failure
failuretoto
defenses listed in

4

mitigate,
mitigate. prosecution history estoppel,
estoppel, prosecution
prosecution laches,
laches, "acts
"acts of
ofplaintiff,"
plaintiff,"and
and"actions
"actionsof
of

5

others:' Mot.
Mot at
at 22
22 (,citing
(citing ECF No. 107).
107). Apple
Apple notes
notes that
that Samsung
Samsungdid
didnot
notoffer
offerany
any evidence
evidenceaatt.
others."

6

defenses. Id.
ld. The
The Court
Court denies Apple's
Apple'smotion.
motion.
trial on these defenses.

71

Because Samsung
Samsungdid
did not
notinclude
includethese
thesedefenses
defensesininthe
thejoint
jointpretrial
pretrialstatement,
statement,which
whichthe
the

88

specified the "issues
"issues of
offactand
law remaining
remaining to
to be
belitigated/'
ECFNo.
No.1455.1
1455-1atat.
parties stated specified
fact and law
litigated," ECF

9

25. Samsung abandoned
abandoned those
thosedefenses
defensesand
andthey
theywere
wereeliminated
eliminatedfrom
fromthe
thecase.
case. Cf
Cj:S.
& Cal.
Cal Retail
Retail
25,

10

728 F.2d 1262, 1264
v.Bjorklund,
1264 (9th
(9th
Bjorklund, 128F.2d
Clerks Union and Food Employers Joint PensionTr;
Pension Tr. Fund v.

11
1i

Cir.
1984) ("We
Cir.1984)
("We have
have consistently
consistentlyheld
heldthat
thatissues
issuesnot
notpreserved
preservedininthe
thepretrial
pretrialorder
order[under
[underRule
Rule

a.~
0U
t~
.-....-Q,....,

12
12

3 Nonetheless, Apple
16(e)J
from the
the action.").
action.").3Nooetheless,,
Apple does
does not
notcite,
cite,nor
norhas
hasthis
this
16(e)] have been eliminated
eliminated from

13
13

Court found, any
any case
case inin the
theNinth
NinthCircuit
CircuitororFederal
FederalCircuit
Circuitholding
holdingthat
thatwhen
whena aparty
partyabandons
abandonsanan

~.~

A

14

issue pretrial.
opposing party
partyisisentitled
entitledtotojudgment
judgmentasasaamatter
matterofoflaw
Jaw.. 44 To the contrary,
contrary. the
the
pretrial, the opposing

uE
.... .,c

$E
CiS

15

Federal Circuit recently clarified
clarifled that
that judgment
judgmentas
as a matter
matter of
oflaw
law should
should be
begranted
grantedonly
onlyon
onissues
issues

"'I:S

'0 o
z
~Z
=u
;J';;

16

in issue,
issue, during
during the
the trial.
trial."" AlcQn
Research Ltd.
Ltd. v.v. Barr
Barr
that were "litigated.
or fairly
fairly placed
placed in
"litigated, or
Alcon Research

17

745 F.3d
F3d 1180,
In Alcon,
Alcon, the Circuit
Laboratories, Inc.,
J 180,1193
1193 (Fed.
(Fed. Cir.
Cir. 2014)
2014) (citation
(citation omitted).
omitted).ln
Laboratories,
Inc., 145

c;r...

18

50(b)]with
withrespect
respect
held that "[a] court
court should not
not render
render judgment
judgment [as
[as aa matter
matter of
oflaw
underRule
Rule50(b)]
law under

CiS
Cs

OsI;

s".. '.°.
=

1:~

..

~ U

~·5

r.riCl

f;l.)t

...0

19

20
21

22
22
23
23

24
25
25
26
26
27
27
28

3
1

Pinal
governed by
by Rule
Rule 16(e),
16(e),which
whichprovides
providesthat
thataapretrial
pretrialorder
order"shall
"shaH
Final pretrial orders are governed
control the subsequent course
course of
ofthe
the action
action unless
unless modified
modified by
by aa subsequent
subsequentorder."
order."The
TheNinth
Ninth
finalpretri~l
order supersedes
supersedes the
the pleadings
pleadings and
and that
that claims
claimsor
ordefenses
defensesset
set
Circuit has held that a final
pretrial order
forth in the pleadings but
bot omitted
omitted from
from the
the final
final pretrial
pretrial order
order are
are not
notproperly
properly before
beforethe
thedistrict
district
joint pretrial statement
court. Bjorklund, 728 F.2d
F2d at
at 1264.
1264. Here,
Here. the
the parties
parties filed a joint
statementand
andattached
attachedaa
J6 pretrial order
order which
which held
held that
that the
the parties
parties had
had specified
specified the
the"issues
"issuesof
offact
factand
andlaw
law
proposed Rule 16
remaining to be litigated"
litigated" in
in the
the pretrial
pretrial statement
statement and
and that
that the
the order
orderwould
would"supplement
"supplementthe
the
oftrial
trial of
ofthis
this action."
action." ECF
ECFNo.
1455-1 atat25,
25,28.
28.This
ThisCourt
Court
pleadings and govern the course of
No. 1455-1
subsequently filed a pretrial conference
conference order
order that
that did not
not specifically
specifically adopt
adoptthe
theparties'
parties'proposed
proposed
order by specifying the remaining issues
issues of
offact
fact and
and law
law to
to be
be litigated.
litigated. ECF
ECF No.
No. 1398
1398(Case
(Case
Management Order). Nonetheless, the
the Court
Court finds that
that Samsung's
Samsung'sconcession
concessionthat
thatthe
thepretrial
pretrial
that Samsung
Samsung abandoned
abandonedits
itsdefenses.
defenses.
statement supplemented the pleadings
pleadings suffices
suffices to deem that
4 The case Apple cites, Bjorklund, 728 F
2d 1262, is inapposite. It merely
merely held
held that
thatbecause
becauseaaRule.
Rule
F.2d
16{e)
of the action, a defendant's
defendant'sfailure
failuretotopreserve
preserve
16(e) pretrial
pretrial order
order controls the subsequent course of
an issue by failing to raise itit in
in the
the pretrial order
order prevents
prevents him
him from
from asserting
asserting that
thatthat
thatissue
issueisisaa
material issue offactthat
precludes summary
summary judgment.
judgment.ld.
Id: at 1264-65.
of fact that precludes
16
Case
CaseNo.:
No.: 12-CV-00630

ORDER GRANTING IN PART AND DENYlNG
DENYING IN
IN PART
PARTAPPLE'S
APPLE'S MOTION
MOTION FOR JUDGMENT AS A MATTER
OF LAW

A107

Case: 15-1171

Document: 40

Page: 192

Filed: 03/06/2015

se5:12--cv-0063Q..LHK Document1963
Document1963 *SEALED*
*SEALED* F11ed09108114
Hled09/08/14 Page17
Page17 of
of 45
45

I

to claims 'reference[d]
'reference[d]ininthe
thecomplaint'
complaint'but
butnot
notraised
raisedininthe
thepretrial
pretrialstatement
statementoror litigated at
at trial
trial
to

2
2,

'a reference in the complaint
complaint is
is not
not sufficient
sufficient to support
support aajudgment:"
by
Id. Here, by
[because] `a
judgment."' !d.

3

thepretrial
pretrial
because Samsung
Samsungraised
raisedthese
thesedefenses
defensesininits
itsAnswer
Answerbut
butdid
didnot
notraise
raisethem
themininthe
analogy, because

4

trial> this Court
Court finds that
thatno
no judgment
judgmentmay
maybe
berendered
renderedon
onthese
these
nor litigate
litigatethem
them at trial,
statement nor

55

See. e.g.,
e.g.,VirnetX
VirnetXInc.
Inc.v.v.
Other courts
courts have
have rejected
rejectedsimilar
similarmotions
motionsininother
otherpatent
patentcases.
cases. See,
defenses. Other

6

Apple Inc.,
Inc•• 925 F. Supp.
Supp.2d
816, 848-50 (ED
(E.D.Tex.
Tex.2013)
2013)(denying
(denyingplaintiff's
plaintiff's
motion
judgment
Apple
2d 816,
motion
forfor
judgment

7

as a matter
to the jury"
parties
oflaw
law on
on defenses
defenseswhich
whichwere
were"never
"neverpresented
presentedtothe
jury"because
becauseboth
both
partieshad
had
matter of

8

narrow their
theirclaims
claimsand
anddefenses
defensesbefore
before· trial, and the court would not
not "penalize
"penalize
agreed to narrow

9

[defendant's
attempt to] narrow issues [for trial] by entering judgment"
against the defendant).
judgment" against
[defendant's attempt

10

'so:.

Apple~s motion.
Accordingly, the
the Court
Court denies
denies Apple's

."

the '721 Patent and the '647 Patent
Enhanced Damages
Damages for thery21
Request for Enhanced

11

F.

t

=;::
o

12

U.s.C. §§ 284 states
that "the
"the court
court may
may increase
increasethe
thedamages
damagesup
uptotothree
threetimes
timesthe.
the
states that
35 U.S.C.

.-........2....

13

amount found or
or assessed_"
assessed." Apple asks
asks this
this Court
Court to
to award
award enhanced
enhanceddamages
damagesbased
basedon
onSamsung's
Samsung's

Q.!!a
A4

14

Mot. at
at23
23.However,
However, a "finding of
allegedly willful infringement
infringement of the '721
'721 and
and '647 patents.
patents Mot

.ae
au

IS
15

i41 Ltd
Ltd. P'ship
enhanced damages."
willful infringement
infringement is a prerequisite
prerequisite to the
the award
award of
ofenhance<i
damages."i4i
P'ship v.
v.

"'cIt:
w .O0
=;Z

16

Microsoft Corp.,
Corp" 598F.3d
831. 858
858 (Fed.
(Fed. Cir.
Cir. 2010);
2010); see also Bard,
Bard; 682 F.3d at 1005.
1005. Because this
this
598 F.3d 831,

=u
;;;,-s

17

law that
did not
oflaw
that Samsung
Samsungdid
not willfully
willfully
Court grants Samsung's motion for judgment
judgment as a matter of

""

18

of
'721 patent
patent in a separate Order, and denies Apple's motion for judgment
judgment as a matter of
infringe the
the'721

19

Ibasis to
tc I
the Court has no basis
law that Samsungwillfully
'647 patent,
patent, see
see supra
II.D, the
supra Part II.13,
Samsung. willfully infringed the '647

20

request.
grant enhanced damages for the
the '721
'721 and the '647 patents, and thus DENIES Apple's
Apple's request

t:~

Q.~

U
U
.... .t;...
0 0

fooO

ffl L
~J:f

I7JO

{/}..t:

a...
0

21

G.

22

Apple seeks an award of
of supplemental damages-through
damages through the date of
ofjudgment
judgment for
for infringing
infringing

23

284requires
requiresthat
thatcourts
courtsaward
awardcompensation
compensationfor
forevery
every
sales not considered by the jury.
.S.C. §284
jury. 35 U
U.S.C.'

24

sale, and the Federal Circuit has
infringing sate,
has held that a patent
patent holder
holder is
is entitled
entitledto
tosupplemental
supplemental

25

11. Secure Computing
damages for infringing sales
sales that
that the
the jury did not consider. See Finjan, Inc. v.

26

Corp., 626 F.3d 1197,
1197, 1212-13
1212-13 (Fed. Cir. 2010). Thus, '~[c]ourts
foraa
"[c]ourts routinely grant motions for

27

further accounting where the jury did not consider certain periods of
.]" Metso
of infringing activity[
activity[.]"

Supplemental
Supplemental Damages

28

17
Case No.:
No.: 12-CV-00630

ORDER GRANTING
JUDGMENT AS A
A MATTER
GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR JUDGMENT
OF LAW

A108

Case: 15-1171

Document: 40

Page: 193

se5:12~cv~00630~LHK
Document1963*SEALED*
*SEALED*
ILK Document1963

Filed: 03/06/2015

Filed09/08/l4 Page18
Page18ofof45
45
Filed09108114

I1

Inc. v.
v. Powerscreen
PowerscreenInt'7Distribution
Int.'[ DistributionLtd.,
LId,833
833F.
F.Supp.
Supp.2d
2d333,
333,347
347(E.D.N.Y.
(E.D.N.Y.2011);
Minerals, Inc.
2011);

22

99-cv-501 JRT-FLN, 2003 WL
also Itron,
[tron, Inc.
Inc. v.v. Benghiat,
Benghiat, Case No. 99-cv-501-JRT-FLN.
WL22037710,
220377]0, at
at *15 (D.
see also

3

Minn. Aug. 29,
infringing activities); Hynix
29, 2003)
2003) (granting
(granting motion
motion for
for accounting
accounting of
ofinfringingactivities);
Hynix

4

SemiconductorInc.
Inc.v.v.Ram
Rambus
Inc., 609 F. Supp. 2d 951, 96()';61
2009) (awarding
960-61 (N.D. Cal. 2009)
Semiconductor
bus Inc.,

5S

damages for
for infringement
infringement occurring
occurring between
between verdict
verdictand
and entry
entryof
ofjudgment).
judgment).
supplemental damages

6

of supplemental damages is
is necessary
necessary here,
here, as
as there are
The Court agrees that an award of

7

jury did
did not
notmake
makean
anaward,
award,because
becausethey
theyoccurred
occurredafter
afterthe
thejury
jtlryreached
reacheditsits
sales for which the jury

88

verdict. This
This would
would include
includesales
salesofofthe
theGalaxy
GalaxySSIII
IIIand
andthe
theGalaxy
GalaxyNote
Note11.
II.Mot.
Mot.atat29;
29;Opp'n
Opp'natat

9

27. Consistent with Federal
Federal Circuit
Circuitcase
case law
law and
and this
this Court's
Court'sapproach
approachininthe
thefirst
firstcase
casebetween
betweenthe
the

10

parties, the Court
Court intends
intends to
to calculate
calculatethe
the supplemental
supplemental damages
damages award
award for these products
products starting
starting

'fE

11

No. 2271
3
from May 6, 2014,
2014, the
the day
dayafter
afterthe
thejury
juryverdict.
verdict. See Case No. II I-CV-01846,
I-CV-O 1846, ECF
ECFNo.
2271 at
at3

o
U
UU==

12

r'Apple
Ordet") ("Consistent
('~Consistent with
with the
the Presidio Components decision, the Court
Court intends
intends to
("Apple I Order")

J3
13

supplemental damages
damages award
award beginning
beginning on
on August
August25,
25,2012,
2012,the
the -lay
day after the
calculate the supplemental

~.~

14

verdict."). The Court
Court will
will calculate
calculate supplemental
supplemental damages
damages using
usingthe
thesame
samemethodology
methodologythe
theCourt
Court

_0

15

in thefirst
firstcase,
case,namely
namelythat
thatthe
theper-product
per~productrate
rateshould
shouldbe
becakulated
based on
on the
the jury's
jury's
adopted lathe
calculated based

~.O
d
.:::z

'Ot::

16

verdict: "[The
'"[The Court
Court will]
will] determine
determine the
the per-sale
per-sale amount
amount on
00 aa product-by-product
pfoouct-by-productbasis,
basis,and
anduse
use

;;J ..;i

17

that per-sale
per-sale amount
amount to
to determine
determine the
the supplemental
supplemental damages
damagesamount
amountfor
foreach
eachproduct
productthat
thathas
has

~

18

remained on the
any post-verdict
the market
marketfor
forany
post-verdictperiod.
period.Because
Becausethe
thejury
juryreturned
returnedananaward
awardforforeach
each

19

product separately, the;Court
the Court can simply
simpJy divide the jury award for
for each
each product
product by
by that
thatproduct's
product's

20

number of
of sales
sates to calculate
calculate this
this per-product
per-product amount."
amount" Apple 1I Order at 5.

<IS

t:~

<IS

-~
u O
°
1:.1$
yL
.b

.=-.-

G
~e
fIlO1

U)..s::

=0
...
0

21

However, the Court denies Apple's
Apple'srequest
requestthat
thatthe
theCourt
Courtcalculate
calculateand
andaward
awardsupplemental
supplemental

22

damages at this time
the Court
COurt enters
enters final judgment. Mot. at
at 31. Courts have found it
time before the

23

appropriate to delay orders
orders forthe
for thesubmission
submissionofofevidence
evidenceofofthe
thenumber
numberofofpost-verdict
post-verdictsales
salesand
and

24

hearings thereon pending
pending the resolution
resolution of
ofappeals,
appeals, to
to `avoid
"avoidpotentially
potentiallyunnecessary
unnecessaryexpenditures
expenditures

25

oftime
preparing such
such an
an accounting[.]"
accounting[.]" [Iron,
Itron, 2003 WL 22037710, at *16; see also
of time and money in preparing

26

EoIas
Techs., Inc;
Corp., 2004 WL 170334, at *8 (N.D. III.
Ill. Jan. 15,
15,2004).
2004), vacated in
Eolas Techs_,
Inc. v.
v. Microsoft
Microsoft Corp.,

27

part on other grounds.
F3d 1325'(Fed.
1325 (Fed. Cir.
Cir. 2005)
2005)("
("It grant
grant the
the motion
motionand
andwill
willrequire
requirean
an
grounds, 399 F.3d

28

18
Ca:seNo.:
12-CV-00630
Case No.: 12-CV-00630

ORDER GRANTING IN PART Al\'D
FOR JUDGMENT
JUDGMENT AS
AS A
A MATTER
AND DENYING IN PART APPLE'S MOTION FOR
OF LAW

A109

Case: 15-1171

Document: 40

Page: 194

Filed: 03/06/2015

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Document1963 *SEAlED*
Filed09/08/14 Page19
Page19ofof45
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1

accounting after
after any appeal
appeal in
in this
thiscase
caseisis terminated."). Because
Because the parties have indicated
indicated that
that an
an

2

proceeding without
without the
the Federal Circuit's
Circuit'sguidance
guidancemay
maycause
causeunnecessary
unnecessary
appeal is anticipated, proceeding

3

part of
of the jury's
verdicton
on
expenditures of
of time and resources should the Circuit reverse any part
jury's verdict

4

liability. The Court thus
thus finds
finds itit appropriate
appropriateto
to delay
delay the consideration of
ofevidence
evidence of
ofactual
actual postpost-

5

ofsupplemental
supplementaldamages
damagesuntil
untilafter
afterthe
thecompletion
completionofofthe
theappeal
appealinin
and calculation
calculationof
verdict sales and

6

made this
this same
same determination
determination in the first
first case.
case. See Apple
Apple I Order at 6,
6~ 8; Case
Case
this case. The Court made

77

No. I1
I l-CV-01846.
EeFNo.
2941 at 3.
- CV - 01846, ECF
No. 2947
No,
Finally, Samsung
Samsung argues
argues Apple
Apple isis not
not entitled to supplemental
supplemental damages
damages because
becausethe
the verdict
verdict

8
9

indicates the jury's
damagesaward
awardwas
wasaalump-sum
Iump..gumroyalty
royaltyintended
intendedtotocompensate.
compensateApple
Applefor
forall
all
jury's damages

10

past and future infringement, and that
that granting
granting supplemental
supplemental damages
damages would
would breach
breach the
the jury's
jury'srole
role

11

in awarding damages.
at 24
24-25.
verdict does
does not
notexpressly
expresslystate
statewhether
whetheritit
damages. Opp'n
Opp'n at
-25. Because the jury verdict

U

12

compensates Apple for Samsung's
Samsung'sboth
bothpast
pastand
andfuture
futureuse
use·of
ofthe
thepatented
patentedtechnology
technologyororonly
only

°
V
-u
.....
.r:
q~Qr

13

compensates Apple
Apple for
for past
past use,
use, itit isis ambiguous
ambiguous on
on this
this point.
point. In
In interpreting
interpretingan
anambiguous
ambiguousverdict
verdict

a

14

form'> this Court has
has "broad
"broaddiscretion"
discretion"totodetermine
determineifif"the
"the verdict
verdictfigure
figurerepresented
representedpast:
past
fonn,s

SuE

15

Techs.• Inc.
Inc. v.
v. Cisco
Cisco Sys.,
Sys., Inc.,
Inc., 612 FFad
3d
infringement as wen
ongoing infringement."
infringement" Telcordia Techs.,
well as ongoing

'01::

$0

16

1365, 1378
argument,as
asexplained
explainedbelow.
below.
1378 (Fed.
(Fed. Cir. 2010). The Court rejects Samsung's
Samsung's argument,

.-S
f!:S

0
t~

=:.::;
cf!:S
U
!;,)U

.... 1+-.
~o

.-.~
•~

b

~. (11

....S

oo..c:

=Z

=4)

Telcordia, the district
district court rejected the defendant's
defendant'sargument
argumentthat
thatthe
thejury's
jury'sdamages
damages
In Telcordia.

;J..c:
.
~

11
17

""-

18
l8

award was necessarily
necessarily aalump-sum
lump-sumaward
awardintended
intendedtotocompensate
compensatethe
thepatentee
patenteefor
forpast;and
past andfuture
future

19

infringement; reasoning
trial provided
provided no
no way of
of knowing one way or
infringement,
reasoning that
thatthe
the evidence_
evidence atattrial
or the other
other

20

Teehs., Inc. v. Cisco Sys.,
Supp.2d
727 ~ 728 n.8
what the jury actually did. Telcordia Techs.,
Sys, Inc., 592 F. Supp.
2d 727,

21

. 0)
(rejecting
(D. Del. 2009), aJf'd
in part, vacated
vacated in part, 612 F.3d 1365 (Fed.
(Fed. Cir.
CiT. 201
2010)
(rejectingdefendant's
defendant's
aff'd in

22

argument that the court
court could
could not
notgrant
grant patentee
patentee an
an ongoing
ongoingroyalty
royaltyuntil
untilexpiration
expirationofofthe
thepatent
patent

23

awarded aalump-sum
lump-sumthat
thatcovered
coveredfuture
futureinfringement,
infringement,reasoning
reasoningthat
that(1):
(1)the
thejury
jury
because the jury
jury awarded

24

issued a general verdict; (2)
(2) the
the jury
jury heard
heard different
different sets
sets of
ofdamages
damages numbers
numbersfrom
from the
theparties'
parties'two
two

25

experts, which the jury
jury could
could accept,
accept, reject,
reject, or
orvary;
vary; (3)
(3) the
thejury's
jury'saward
awardwas
wasdifferent
differentfrom
fromthe
the

26

damages award advanced
advanced by
by either
either party's
party'sexpert;
expert;and
and (4) there was "nothing
"nothing in
in either
either the
the record
record or
or

...
0

21
27
28

5

5

special verdict
verdict form
fonn that
that indicates
indicates the
thejury's
jury'sintent
intenton
onthis
thisissue.
issue.
Neither party requested aa special
19

CaseNo.:
No.: 12-CV-00630
Case
ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION
MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS A
AMATTER
MATTER
OF LAW

A110

Case: 15-1171

Document: 40

Page: 195

Filed: 03/06/2015

e5:12-cv-0063D-LHK
DocumenU963 *SEALED*
Filed09/08/14 Page20
Page20 of
of 45
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:12-cv-00630-LHK Document1963
*SEALED* Filed09108114

verdict form from which
whkh the
the court
court could
coulddetermine
determinewhether
whetherthe
thejury
jurybased
baseditsitsaward
awardonona alumplump-

'8E

2

sum.
paid-up
royalty rate;
rate; some
some variation
variation or
orcombination
combinationofofthe
thetwo;
two;ororrejected
rejected
up license; running royalty
sum, paid

3

the theories and reached its
its own number.").
number:'). When
When the
the defendant
defendantappealed
appealed the
the district
districtcourt's
court'sorder
order

4

granting the patentee
patentee equitable
equitablerelief
reIiefin
theform
formof
ofan
anongoing
ongoingroyalty,
royalty~the
theFederal
FederalCircuit
Circuit
in the

55

affirmed, reasoning that the court
court did
did not
not abuse
abuse its
its "broad
"broad discretion"
discretion" in
ininterpreting
interpretingthe
theverdict
verdict

6

form becausethe
because theverdict
verdictform
formwas
wasambiguous,
ambiguous,neither
neitherparty
partyhad
hadproposed
proposedthe
thejury's
jury'sexact
exact$6.5
$6.5

7

million award;
award, and it was "unclear
<4unclearwhether
whetherthe:
thejury
on aa lump-sum,
lump-sum,paid-up
paid-up
jury based its award on

8

some variation
variationor
orcombination
combinationof
ofthe
thetwo,
two,ororsome
someother
othertheory.
theory .',6
license, running royalty,
royalty. some
"6

9

Telcordia, 612 F.3d
F.3d at 1378.
1318. The
The Federal
Federal Circuit
Circuit thus
thus implicitly
implicitly affirmed
affirmed the
the district
districtcourt's
court's

-

10
18

rationale
when aa record
record isis unclear
unclearas
as to
to what
what the
the jury
jury actually
actuallydid,
did, ititisisappropriate
appropriateto
toreject
rejectaa
rationale that when

11

defendant'sargument
argumentthat
thatthe
thejury's
jury'saward
awardnecessarily
necessarilycompensated
compensatedthe
thepatentee
patenteefor
forfuture
future
defendant's

12

infringement
infringement.

(s

(IS

t<2
==
o

o~

(IS

\,)U
UU

_4-<
0
<,;0

-._-

Similarly,
LLCv.v. Computer Packages,
Packages. Inc., 694
10,35-38
(Fed. Cir.
6994 F.3d 10,
35-38 (Fed.
Similarly,. in Whitserve, LLC

·C" t)

13

~.~

14

2012), the Federal
2012).
Federal Circuit
Circuit vacated
vacated and
and remanded
remanded the
the district
district court's
court'sdenial
denialofofsupplemental
supplemental

~E
tlS4)

15

afterthe
the verdict
verdict·but
but before
before final
fmal judgment
judgment was
wasentered
enteredbecause
becausethe
thecourt
court
damages for infringement
infringement after

1;:::Z0

16
16.

explain its
itsreasottsfor
denying such
such damages. However,
However. in
inthe
the midst
midstof
ofdoing
doing so,
so.the
the
had failed to explain
reasons for denying

P-S

17

Circuit rejected the defendant's
defendant'sargument
argumentthat
thatthe
thepatentee's
patentee'ssupplemental
supplemental damages request was

18

properly denied because
because the
the jury
jury had
had necessarily
necessarily awarded
awarded aa lump-sum
lump-sumlicense
licensefor
forall
allpast
pastand
and

19

"nothing in
in the record
record would
would support"
support" that
that
future infringement.
infringement. Id. at 38. The Circuit noted that "nothing

20
20

"the parties
parties limited
limited their
theirdamages
damages arguments
arguments to
topast
pastinfringement
infringementrather
ratherthan
than
conclusion because
because "the

21

projected future infringement"
infringement" and
and the
the 'jury's
verdictdid
did not
notindicate
indicatethat
thatthe
theaward
awardwas
wasmeant
meanttoto
"jury's verdict

22

cover future use of [plaintiff's]
patents[.]" Id. at 35,
35,38;
("We cart
not[sic] accept
accept
[plaintiffs] patents[.]"
38; see also id. at35
at 35 ("Vile
can not

23

wasawarded
awarded[by
[bythe
thejury].").
jury}.").
[defendant's]
suggestionthat
thataapaid-up
paid-uplicense
licensewas
[defendant's] suggestion

.........
00

w

=z

-"J::
<l)t:

:I<\,)
cap

0
~

tJ;.;

24
25
26:
26

27
28

6

The Federal Circuit
Circuit noted
noted that
that while
while the
the district
districtcourt's
court'sdecision
decisionwas
wasnot
notclearly
clearlyerroneous,
erroneous.the
the
Federal Circuit
Circuit itself
itselfcould
could not
not "determine
"determinewhether
whetherthe
thejury
jurycompensated
compensatedTelcordia
Telcordiafor
forall
allofof
activities. " Telcordia,
Telcordia, 612 F.3d at 1378.
Cisco's infringing activities."

6

20
Case
Case No.:
No.: 12-CV"()0630
t 2-CV-00630
ORDER GRANTING IN PART AND DENYING IN PART APPLE'S M
MOTION
JUDGMENT AS A MATTER
MA TIER
OTION FOR JUDGMENT
OF LAW

A111

Case: 15-1171

Document: 40

Page: 196

Filed: 03/06/2015

se5:12-cv-0063Q-LHK
Document1963 *SEALEO*
Page21ofof45
45
-cu-00630-LHK Docurnent1963
*SEALED* Filed09/08/14
Filed09/08114 Page2i

Here, in light of
of the ambiguity concerning whether the jury actually
actually awarded
awarded aa lump-sum
lump-sum

11
2

future infringement, the Court rejects Samsung's
past and future
Samsung's
royalty to compensate Apple for past

3

Whitserve and Telcor
dia. there
As in
in Whitserve
Telcordia.
there isis no
no express
express statement
statement in
in the
the
jury did
did so.
so. As
argument that the jury

4

thatthe4arnages
awardwould
wouldencompass
encompassdamages
damagesfor
forfuture
futureinfringement.
infringement. See ECF
verdict form that
the damages award

5

No. 1884.
1884. The verdict
verdict form
fonn did
did not
not require
require the
the jury
juryto
to denote
denote which
whichdamages
damagestheories
theoriesititapplied.
applied. Id
Id.

6

Further, as in Telcordia.
presented with
with several
several sets
setsof
ofdamages
damagesnumbers
numbersduring
duringDr.
Dr.
Telcordia, the jurors were presented

7

Chevalier and Dr. Vellturo's
Vellturo~stestimony
trial,which
whichthe
thejurors
jurorscould
couldhave
havechosen
chosentotoaccept,
accept,
testimony atattrial,

8

reject, or vary, and the jury's
$119,625,000 isisdifferent
jury'saward
awardof
of$119,625.000
differentfrom
fromthe
thedamages
damagesaward
awardproposed
proposed
reject.

9

parties' experts.
experts.Finally,
Finally,the
thefact
factthat
thatthe
theverdict
verdictform
fonnchart
chartwith
withrespect
respecttotothetheGalaxy
Galaxy
S II
by both parties'
S 11

10

Products expressly indicated
indicated that
that the
the award
award would
wouLd be
be made
made for
for sales
salesthrough
throughthe
the"Present"
"Present"supports
supports

11

the interpretation
interpretation that
that the
the jury
jury could
could have
have believed
believed that
that its
its damages
damagesawards
awardsfor
forall
allproducts
productswere
were

U
U .....

12

1&84 at
at 10
10 (asking
(asking jury
jury to
meantto
Apple only
only for
for past
past infringing
infringing sales.
sales. See ECF No. 1884
meant to compensate Apple

~o

°

13

their"dollar
"dollarbreakdown"
breakdown"for
foreach
eachofofcertain
certainproducts
products
- theGalaxy
GalaxySS·11II Epic
Epic4G
4GTouch,
Touch,the
the
provide their
—the:

'" ....
.Q.~
Ca
<1.>0
~t::
os .....
°

14

Galaxy
II Skyrocket,
Galaxy SSII11—for
foreach
each of
of the
the following
following three
three time
time periods
periodsonly:
only:(1)
(1)
Galaxy SS 11
Skyrocket ; and Galaxy

a_0

15

"August 1,
1,2011June30,
30.2012";(2)
"July1,2012—August
1,2012 -August24,
24,2012";
and(3)
(3)"August
"August25,
25,2012
20122011-June
2012"; (2) "July
2012"; and

'1:10

16

Present.").
Present.

...

17

R

(\:J

's

tcS
==
QcO

_

L-.--Q
"'0

('/}'€

!Zo
=0IS
;;JoS
0O

~

").

clear that
thatthe
the jury
jurymade
madeits
itsdamages
damagesaward
awardbased
basedon
on
While Samsung argues
argues the
the evidence
evidence isis clear

18

Samsung'sexpert
expertDr.
Dr.Chevalier,
Chevalier,Opp=n
Opp'n at
at 25-26
25-26 (citing
(citing Chevalier
ChevalierDeclaration,
Declaration,
calculations by Samsung's

19

ECF No. 1907-5),7
1907~5), 7 Apple rebuts
rebuts that
that there.are
there are "multiple
"multiple ways
ways the
the jury
jurycould
couldhave
havereached
reachedits
itstotal
total

20
20

from Dr.
Dr. Vellturo's
Vellturo'sproposed
proposedreasonable
reasonableroyalty
royaltydamages[.]"
damages[TReply
Replyatat
damages number
number by
by starting
starting from

21

17. The Court need not dissect the
theverdicno
resolve this
this dispute
dispute because
becauseeven
evenassuming
assumingthe
thejury
jury
verdict to resolve

22
22:

utilized Dr. Chevalier's
Chevalier'sreasonable
reasonableroyalty
royaltynumbers
numbersas
asaastarting
startingpoint,
point.that
thatwould
wouldnot
notprove
provethat
that

23

the jury awarded a lump-sum
past and future infringement
infringement as
as opposed
opposed to
to
lump-sum to compensate for past

24

on aa per-unit,
per-unit, per-patent
per"patentrunning
runningroyalty
royaltybasis
basisfor
forall
all
compensating Apple
Apple for
for past
past infringement
infringement on

25:
25
7

26
27

28

7 Dr. Chevalier claims that the jury's
anocation of
'721. and
and''172
172
jury's allocation
of damages between the '647, '721,
between the
the accused
accused products
productsfor
for each
each patent,
patent,and
andthe
thefact
factthat
thatthe
thejury
jurydid
didnot
notgrant
grantaa
patents and between
1907-5,1¶
unifonn per-unit
per-unitroyalty
royalty for
for all
all products,
products, demonstrates
demonstrates aalump-sum
lump-sumverdict.
verdict. See ECF No. 1907-5,
uniform
67. She also claims
claims that
that the
the fact
fact that
thatthe
thejury
reallocated the
thetotal
totaldamages
damagesnumber
numberwhen
when
jury reallocated
II products
lump sum.
sum. See id. 1¶ 68.
calculating damages
damages for
for the
the Galaxy S 11
productsfurther
further indicates
indicates a lump
2]
21

Case No.: 12-CV-00630
12-CV-00630

ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION
MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS A
AMATTER
MATIER
OF LAW

A112

Case: 15-1171

Document: 40

Page: 197

Filed: 03/06/2015

Confidential Information Redacted

e5:12-cv-00630-lHK
Document1963 *SEALED*
*SEALED* FiledO9/08/14
Filed09/08/14 Page22
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K Document1963

I

sales made through the trial.$
triaLS This is because
because although Dr. Chevalier
her total
total proposed
proposed
Chevalier testified her

2

award of
"roughly$38.4
$38.4million"
million}'was
wasaa"lump
"lumpsum."
sum:'ECF
ECFNo.
No.1938
1938atat2422,
2422, she
shedid
did not
not testify
testify
of"roughly

3

infringement, and
and her
herdamages
damagesexhibit
exhibit
that this lump-sum:
lump-sum was intended to cover past and future infringement,

4

nowhere describes her damages total
tomlas
"Jump-sum," let
let alone
alone aa lump-sum
lump-sum covering
coveringpast
pastand
and
as a "lump-sum,"

5

future
OX 453A.
453A.
tiiture infringement. See gen/lrally
generally DX
EVen her testimony and demonstratives
demonstratives at trial
Even

6

'sE

7

to her
her$035
$0.35per-unit,
per-unit.per-patent
per-patentroyalty
royaltyrate.
rate.See
SeeSDX
SDX3791
3791 (describing
repeatedly referred
referred to

88.

"royalty rate per
per patent
patent per unit" of
of$O.3S);
ECFNo,
1938 at
at 2422
2422("1
(~l concluded
concluded that
thataareasonable
reasonable
$0.35); ECF
No. 1938

9

royalty would be $0.35 per
per patent,
patent. per
per unit.");
unit:'); id. at 2432 (noting she arrived at
at the
the $0.35
$0.35 "per
"per

10

patent. per unit"
unit" number
number by
by applying
applying Georgia-Pacific factors); id.
(stating that
that her
her
patent,
id, at 2435 (stating

ii
11

reasonable royalty number
number came
came from `applying
"applyingthat
that$0.35
$0.35 per
perpatent,
patent,per
perunit
unit[sic]
[sic]totoeach
eachofofthe
the

12

infringing."). Ifffanything.
anything, the
accused units based on which patents
patents they're
they'reaccused
accusedof
ofinfringing.j.
thefact
factthat
thatDr.
Dr.

13

Chevalier calculated
calculated her
her reasonable
reasonable royalty
royalty damages
damages for
for the
the Galaxy
Galaxy SSII
Ii Products
Productsinindistinct
distincttime
time

14

the "Present."
..Present.. . .
periods only through the

CIS

t,,;:

=:.:
U
°d
U'to

t,)~

" ...
°
.--."'u
tIl'-

•- 1;;
A
~.-

0.
.as
SlI)
g
til

rn
tiJ-E
!~
=lI)

::J..;i

5

""

15
16

_ ., suggests
suggests that
that ififthe
the jury
jury based
based its
its calculation
calculation on
on Dr.
Dr. Chevalier's
Chevalier'snumbers,
numbers.the
thejury
jurylikely
likely

17

would have believed
would.have
believed her numbers were intended to compensate Apple only for
for past
past infringement
infringement.9

18
I8

Because the record suggests it is plausible that thejury
intended to award Apple
Apple damages
thejury intended

19

only for past infringing
infringing sales,
sales. the
the Court
Court cannot
cannot conclude
conclude that
thatthe
the jury
jurynecessarily
necessarUyawarded
awarded aa lump-

20

Whitser ve and
sum award intended to cover past and future infringement. Accordingly,
Accordingly,tender
under Whitserve

21

Telcordia,
rejects Samsung's
Samsung'sargument
argumentand
andfinds
findsthat
thatan
anaward
awardofofsupplemental
supplementaldamages
damages
Telcordia. the Court rejects

warranted.
22 1 is iswarranted.
22

23

24
25
26
26
27

28

. While
n
. the Jury
.followed
' . the final jury
i y could
Samsungg argues
jury must have
argue that
Jury instruction that. they
thejury
award a "one-time lump sum," that is not dispositive because the
jurywas
wasalso
alsoinstructed
instructedthat
thataa
reasonable royalty award
1847 at
at 50.
50.
award could
could be
be based
based on
on aa running
running per-unit
per-unitroyalty.
royalty. See ECF No. 1847
22

Case No.: 12-CV-00630
12-CV-00630
GRANTING IN
ORDER GRANTING
INPART
PART AND DENYING IN
TIER
IN PART APPLE'S
APPLE'S MOTION FOR JUDGMENT AS A MA
MATTER
OF LAW

A113

Case: 15-1171

Document: 40

Page: 198

Filed: 03/06/2015

*SEALED*: Filed09108114
se5:12-cv-00630-LHK
Document1963 *SEALED*
Filed09/08/14 Page23
Page23of
of 45
45
LHK Document1963

I

H.

Prejudgment Interest

2

Under 35 U.S.C. §§ 284,
284. the district
district court has considerable
considerable discretion
discretion in
in awarding
awarding

3

Bio-RadLabs.,
Labs., Inc.
Inc. vv.Nicolet
NicoletInstrument
InstrumentCorp.,
Corp., 807 F.2d
F.2d 964, 969 (Fed.
prejudgment interest. See Bib-Rad

4

Cir. 1986).
1986). The purpose of
ofprejudgment
prejudgment interest
interest is to "compensate[
"compensate[j1the
thepatent
patentowner
ownerfor
forthe
theuse
use

5

of
of injury
injury and
and the date of
of judgment."
WalgreenCo.,
Co., 88 FF.3d
of its money between the date of
judgment." Oiness v. Walgreen
3d

6

1025,
1033 (Fed.
(Fed. Cir.
Cir. 1996).
1996).Such
Suchinterest
interestisis usually
usually awarded
awarded from
from the
thedate
dateof
ofinfringement
infringementto
tothe
the
1025,1033

77

date of
ofjudgment.
Nickson Indus.
Indus.Inc.,
Inc.,v.v.Rol
RolMfg.
Mfg.Co.,
Co.,Ltd.,
Ltd., 847 F.2d 795, 800 (Fed.
(Fed. Cir.
judgment. See Nickson

8

beawarded
awardedabsent
absentsome
somejustification
justificationfor
for
1988). "[P]rejudgment
interestshould
shouldordinarily
ordinarilybe
"[P]ejudgment interest

9

Corp., 461 U.S. 648,657
Motors Corp. v. Devex Corp.,
648, 657 (1983)
withholding such an award[.]"
awardf.]" Gen. Molors

.

10

award of
ofprejudgment
prejudgmentinterest
interestisisgenerally
generallyappropriate
appropriateafter
aftera afinding
findingofofpatent
patent
(holding that
that an award

11
I1

Apple II
in the
the first
first patent
patentinfringement
infringementcase
casebetween
betweenApple
Appleand
andSamsung,
Samsung, see Apple
infringement). As in

U

12

Order at
Order
at 7-8, the
the Court
Court concludes
concludeshere
berethat
thatApple
Appleisisentitled
entitledtotoan
anaward
awardofofprejudgment
prejudgmentinterest.
interest.

-.q

13

·s
~

ttS
L ~
-=:.:::
et';j
U
C,)U
... to....

u O
.........

ylooc
Ls . V

.r.l.1::

~ .... U)

~O
aQ
"'E
a
«0E

-...c:
rI.l

t
10
;::Z
~z
CO
...s
-S.
00...
.'-1.

.~

of prejudgment
prejudgmentinterest
interestisisleft
leftto
to the
thewide
discretionofofthis
thisCourt,
Court.which
whichmay
may
The rate of
wide discretion

144
14

award interest
interestat
or above
abovethe
theprime
primerate.
rate. Uniruyal,lnc.
Uniroyal, Inc. v.
v. Rudkin-Wiley
Rudkin-Wl1eyCorp.,
Corp., 939
93.9 FF.2d
.2d 1540,
at or

15

1545 (Fed. Cir.
Cir; 1991).
1991). Courts
Courtsmay
mayuse
usethe
theprime
primerate,
rate,the
the,prime
rateplus
plusa apercentage,
percentage,the
theU.S..
U.S.
prime rate

16

Treasury Bill
Bilt rate, state
statestatutory
statutoryrate,
rate,corporate
bondrate,:
rate, or'whatever
or whateverrate
ratethe
thecourt
courtdeems
deems
corporate bond

17

2008 WL
WL 3385819,
338581 9,atat*6
*6(N.D.
(N.D.Cal_
Cal July
July
appropriate. Junker v.
v. HOC
HDC Corp.,
Corp, No. C-07-05094 JCS, 2008

18

Mot atat
28,2008).
partiesbave
proposed two
two different
different rates.
rates. Apple
Apple proposes
proposesthe
theprime
primerate.
rate. Mot.
28, 2008). The parties
have proposed

19

30-31. Samsung argues that
that the lower
lower52-week
52-weekTreasury
TreasuryBill
Billrate
rateisisappropriate,
appropriate,consistent
consistentwith
with

20

this Court's
approach in
in the
the first
first case
case between
between the parties. Opp'n
Opp'nat
at 28; Apple 1I Order at
at 7. In
Court's approach

21

detennining
determining the appropriate
appropriaterate,
rate,courts.
courts have
have considered
considered whether,
whether, during
duringthe
theperiod
periodofof

22

infringement, the plaintiff
plaintiff"borrowed
moneyatataahigher
higherrate,
rate,what
whatthat
thatrate
ratewas,
was,oror[v[whether]
there
"borrowed money
hether] there

23

and the
the loss
loss of
ofthe
the use
use of
ofthe
themoney
moneyawarded
awardedas
asaa
was a causal connection between
between any
any borrowing
borrowing and

24

result of [the defendant's]
infringement." Laitram Corp. v. NEC
defendant'sr infringement."
NEC Corp., I1 l5
t 5F.3d
F.3d 947,
947; 955 (Fed.

25

usethe
theTreasury
TreasuryBill
Billrate
rateinincase
casewhere
wheredistrict
district
Cir. 1997) (upholding district
district court's
court'sdecision
decisiontotouse

26

of"a
«a causal
causalconnection
connection between
between any
anyborrowing
borrowingand
andthe
theloss
lossofofthe
theuse
useof
of
court found no evidence of

27

the money awarded as
as aa result
result of
ofthe
the infringement.").
infringement."). Such
Such factors
factorswould
wouldmake
makean
anaward
awardatataa

2

28

28

23
-CV 00630
Case
12-CV-00630
Case No.:
No.: 12
-

ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR
FORJUDGMENT
JUDGMENT AS
AS A
A MATTER
MATTER
OF LAW

A114

Case: 15-1171

Document: 40

Page: 199

Filed: 03/06/2015

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Document1963 *SEALED*
*SEALED* Filed09/08/14
Filed09/08/14 Page24
Page24of
of45
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1

higher rate more
more appropriate.
appropriate.Here,
Here,although
althoughApple
Applehas
hassubmitted
submittedaadeclaration
declarationstating
statingthat
thatApple
Apple
higher

2

markets at
at rates
rateshigher
higherthan
than the
theTreasury
TreasuryBill
BiHrate,
rate, see Robinson Decl., ECF
borrowed in the public markets

3

Applemaintains
maintainssubstantial
substantialcash
cash reserves
reservesand
andhas
hasnot
notpresented
presented any evidence that
1897-8 ¶9, Apple
No. 1897-8,9,

4

borrow money because it was deprived of
award. Thus,
Thus, here,
here, as in
it needed to borrow
of the damages award.

55

this Court
Courtfound
foundininthe
thefirst
firstcase,
case,the
theCourt
Courtconcludes
concludesthe
the52—week
52-weekTreasury
TreasuryBill
Bill
Laitram, and as this

6

rate is sufficient. The Treasury Bill rate has been accepted and employed
employed by
by many
many courts
courts in patent

7

cases
method of
ofplacing
placing aapatent
patent owner
owner in-a
in a position equivalent
equivalent to
to where
where itit would
would
cases as a reasonable method

8

infringement. See, e.g., Datascope
SMEC, Inc.,
Inc., 879
879F.2d
F.2d820,
have been had there been no infringement.
L atascope Corp. v.
v SMEC,
820,

9

829 (Fed. Cir. 1989),
1989).cert.
denied, 493 U.S. 1024 (1990).
cert. denied,

10

Finally
Courtaddresses
addressesthe
theappropriateness
appropriatenessofofcompounding.
compounding.Apple
Appleseeks
seeksannual
annual
Finally,~ the Court

de

'fE
=>=d
C
uc..>
",,'0
....
a-t,)
-.S-.!i
A

11

whether to
to
compounding. Mot. at 31. The Federal Circuit has explained that "the determination whether

12

or compound
compound interest
interest [][J isis aamatter
matter largely
largely within
within the
the discretion
discretionof
ofthe
thedistrict
districtcourt."
court."
award simple or

13

Gyromat Corp. v.
v. Champion
ChampionSppark
SparkPlug
PlugCo.,
CO.,735
F.2d 549, 557 (Fed. Cir. 1984). Courts "have
"have
735 F.2d

14

Sealant Sys. Int'L
Intl,
recognized that compounding
compounding isis necessary
necessary to
to fully compensate
compensate the
the patentee."
patentee." SealantSys.

15

Inc. v. TEK
TEK Global
Global S.R.L.,
S.R.L.,No.
No.5:1
S:ll-CV-00774-PSG.
2014WL
WL1008183,
1008183,atat*6*6 (N.D.
N.D. Cal. Mar. 7,
l -CV-00774-PSG, 2014

"eo

d2

16
16'

2014) (citation omitted).
omitted). "Because
"Because aa patentee's
patentee~sdamages
damagesinclude
includethe
theforegone
foregoneuse
useofofmoney,
money,

P-5

17

omitted). Thus,
compounding is needed to
to account for the time value of
ofmoney."
money." Id
Ill. (citation omitted).
Th~

&:z.;

18

Id. (citation
(citation omitted)..
"courts have approved
approved annual
annual compounding
compounding and.even
and even daily
dailycompounding."
compounding." [d.
omitted).

19

As Samsung
Samsunghas
has not
not indicated any objection to compounding, Opp'n
Opp'natat28-30,
28-30,the
theCourt
Court.concludes,
concludes.
As

20

as it did in the first case,
case, that
that annual
annual compounding
compounding should
should be
be utilized.
utilized. See Apple
Apple JI Order
at 7-8.
7-8.
Order at

21

Accordingly, when
when the
the anticipated
anticipated appeal
appeal of
ofthis
this case
caseisisresolved,
resolved,and
and the final damages

t:<2

Uv
-

.... 4-0

0

...

.
!~
- E
Su

!Zl,€
.~Z
A
=::u

...
'0

22

Apple prejudgment
prejudgmentinterest
interestatatthe
the52—week
52-week Treasury
Treasury Bill
Bill rate,
rate~
amount settled,
settled; this Court will award Apple

23

compounded annually.
annually. The
TheCourt
Courtdeclines
declinesApple's
Apple'srequest
requestthat
thatthe
theCourt
Courtcalculate
calculateand
andaward
award

24

prejudgment interest
resolved. Mot.
Motatat31.
31.Because
Becauseboth
bothparties
parties
prejudgment;
interest at this time before any appeal isis resolved.

25

have indicated that they
they may
may challenge
challenge the legal sufficiency ofthe
of the jury's award.
award,: itit will
will be more

26
27
28

24
Case
12-CV
-00630
Case No.:
No.: 12-C
V-00630

ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR
FOR JUDGMENT
JUDGMENT AS A MATTER
OF LAW

A115

Case: 15-1171

Document: 40

Page: 200

Filed: 03/06/2015

se5:12-cv-00630-lHK
K Document1963
Document1963*SEALED*
*SEAlED* Filed09108114
Filed09/08/14 Page25
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of45
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efficient to calculatepr€judgment
calculate prejudgmentinterest
interestafter
afterappeal,
appeal,when
whenthe.
thefinal
finalamount
amountofofthe
thejudgment
judgmentisis

1

2

II

known. The Court
Court made
made this
thissame
samedecision
decisionininthe
thefirst
firstcase.
case. See Apple
Apple II Order
Order at
at 8.
8. 10
10

L

4

The '449
'449 patent
patent isis directed
an "apparatus
reproducing digital
digital image
image
`apparatus for recording and reproducing
directed to an

5

and speech."
speech." Samsung
Samsung asserted
asserted claim 27 ofthe
'449 patent
patent against
against Apple.
Apple. The jury found that all
of the '449

6

five accused Apple products infringe the '449
'449 patent,
patent, and
and awarded
awardeddamages
damagesof
of$158,4oo.00
forthat
that
$158,400.00 for

7

J 1-12. Apple now moves for judgment
matter of
oflaw
law of
of
infringement
judgment as a matter
infringement. See ECF No. 1884 at 11-12.

8

non-infringement or,
or. alternatively,
alternatively,aanew
newtrial
trialon
on infringement and damages. Claim 27 depends
non-infringement

9

from claim 25. Both claims
claims recite:

to
10

25. A digital camera
cameraeomprising:
comprising:
a lens,
an imaging device which converts
converts an
an optical image
image into
into an
an analog
analog signal;
signal;
an A/D
AID converter
converter which converts
converts said
said analog
analog signal
signal from
from said
said imaging
imaging device
deviceto
to a
digital signal;
a compressor which compresses
compresses said
said digital signal
signal outputted
outputted from
from said
said A/D
AID
converter, and generates
generates compressed
compresseddata
databy
byusing
usingaadifferent
differentcompressing
compressing
method for moving image signals
signals and for
for still
still image
ilnagesignals;
signals;
a recording circuit
circuit which records
records compressed
compressed data,
data, said
said compressed
compresseq.data
including a
data including
moving image signal,
signaL, and aa still
S\i11 image signal;
decompressor which decompresses said
aa decompressor
said compressed
compressed data
data by
by using
usingaa different
different
decompressing method according
according to
to whether
whether said
said recorded
recorded compressed
compressed data
is a moving image signal or
or a still image signal;
a reproducing
reproducing circuit
circuit which
which reproduces
reproduces a moving
moving image
image signal,
signaI~aasound
soundsignal
signalinin
synchronous to said moving image signal,
signal. and aa still
stilt image
image signal;
signal; and
and
a display which displays
displays said
said moving
moving image
image signals
signals and
and still
stilI image
imagesignals
signalsoutputted
outputted
list of
ofsaid
said moving
moving image
image signal
signal and
and still
from said
said reproducing
reproducing circuit, and a list
of classifications
classifications as
as aa classification
classification
image signal as a search mode, and a list of
mode;
ofsaid
said plurality
pluralityof
ofimage
image signals
wherein said
said recording
recording circuit
circuit records
records each
each one
one of
with classification data, and
said display lists
lists a plurality
plurality of
ofclassifications
classifications and
and aa number
numberof
ofimages
imagesbelonging
belongingtoto
each classification.

C$

's

11

*, o
t:43
#=:::
oQ6j

12

'tto
...........

13

\)1..0..0

-.J..()

.f4 l:l.
Q.~

G .-

14
14

,aS~iv

15

"CIS

16

=0

17

A
~O
a
_c

\I.I ..s:::

~;Z

t:;I.;i

I-

0

~

Non-infringement of
ofClaim
Claim 27 oftbe
Patent
of the '449 Patent
Non-infringement

3

18
19

20
21

22
23

24

27. A digital camera
camera according
according to
to claim
claim 25,
25,
wherein said classification
classification isis able
able to
to change
change by
by aa direction
direction of
ofaauser.
user.
'449
Patent cis.
cis. 25,
25. 27.
27. Apple
Applecontends
contendsthat
thatSamsung's
Samsung'strial
trialevidence
evidencefailed
failedtotodemonstrate
demonstrate
'449 Patent
ofat
at least
least four
four limitations
limitations of
ofclaim
claim 27.
27. Considering
Consideringeach
eachof
ofthese
theselimitations
limitationsininturn,
tum,
infringement of

25

26
27
27
28

10 The Court rejects
rejects Samsung's
Samsung'sargument
argumentthat
thatprejudgment
prejudgmentinterest
interestmust
mustbebecalculated
calculatedonona afinal
final
judgment amount
amount that
that has
has subtracted $158,400,
$158.400, which represents Samsung's
Samsung's award
award for
for Apple's
Apple's
judgment
infringement of Sam
sung's '449
'449patent.
patent.Opp'n
Opp'natat30.
30.Samsung
Samsungcites
citesno
nolaw
lawfor
forthe
theproposition
propositionthat
that
Samsung's
subtraction of
of the counterclaimant's
counterclaimant'saward
awardisisrequired
requiredprior
priortotocalculating
calculatingprejudgment
prejudgmentinterest
intereston
on
an award relating to infringement
infringement of
ofthe
the patentee's
patentee'spatents.
patents.
25
' 0

Case No.: 12-CV-00630
ORDER GRANTING IN PART AND DENYING IN PART APPLE'S
APPLE'S MOTION
MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS A
A MATTER
MATIER
OF LAW

A116

Case: 15-1171

Document: 40

Page: 201

Filed: 03/06/2015

se5:12-cv-00630-LHK
5:12-cv-0063Q..LHK Document19f3
Document1963 *SEALED*
*SEAlED* Piled09/08/14
Filed09/08/14 Page26
Page26ofof45
45

1

the Court concludes that substantial evidence
evidence supports
supports the jury's
jury'sfinding
findingof
ofinfringement,
infringement,and
andthe
the

2

the evidence,
evidence. and accordingly DENIES
DENIES Apple's
Apple's
verdict is not contrary to the clear weight of
ofthe

3

motion.

.4

First, Apple contends
contends that
that the
the accused
accused iPhone
iPhone4S,
4S,iPhone
iPhone5,5.and
andiPod
iPodTouch
Touch5th
5thGeneration
Generation

5

"reproducing circuit
circuit which
which reproduces.....
reproduces ...aasound
soundsignal
signalininsynchronous
synchronoustotosaid
said
products lack a "reproducing

6

moving image signal," as
as claim
claim 27
27 requires.
requires. Apple
Apple states
states that
that Samsung's
Samsung'sexpert
expertfor
forthe
the'449
'449patent,
patent,

7

SDX 3742),
accused devices
devices (see SOX
3742). but
but argues
argues
Kenneth Parulski,
identified an "audio .circuit"
circuit" in the accused
Parulski identified

8

ofApple
Apple
this audio circuit
circuit cannot
cannot reproduce
reproduce synchronous
synchronous audio.
audio. Apple
Apple points
points to
to the
the testimony
testimony of

9

Dr. Dan
Dan
engineer Tim Millet
Millet and allegedly
allegedly contradictory
contradictory testimony from another Samsung
Samsung expert,
expert, Dr.

10

Schonfeld.
jury'sdetermination.
determination,
However, the record contains sufficient evidence to support the
the jury's
Schonfeld. However.

's8

11

"audio subsystem"
subsyste.m"
Mr. Millet did testify that
that Apple's
Apple's "software team" decided not to use the "audio

0-;
R

12

contained in the three disputed
disputed products
products for
for audio
audio processing.
processing. Tr. at
at 2699:20-2700:13.
2699:20-2700: 13.However,
However.

-...........--

13

Mr. Millet
Millet also testified
testified on
on cross-examination
cross-examinationthat
that he was not an expert on Apple's
Apple'ssoftware,
software. see

~.~

14

id
2701 :14-16, and
and the
the jury
jurywas
wasfree
freetotoassess
assessthe
thecredibility
credibilityofofhis
hisdirect
directtestimony.
testimony. Samsung~s
Samsung's
id. at 2701:14-16,

aS~

15

expert explained how the accused
accused products
products have
have reproducing
reproducing circuits
circuits for
for sound,
sound,see
see id. at 2609:22-

Z

16

2610:14, while Apple's
Apple'sexpert,
expert,Dr.
Dr.Jim
JimStorer,
Storer,did
didnot
notoffer
offeraanon-infringement
non-infringementopinion
opinionbased
basedon
on

17

circuit" despite
despite talking
talking with
with Apple
Apple engineers,
engineers, see id.
2721 :20of a "reproducing
"reproducing circuit"
id at 2721:20the absence of

18

'239patentexpert
2722:6,
position, the cited testimony from Samsung's '239
patent expert
2722:6. Next, contrary to Apple's
Apple's position,

19

Dr. Schonfeld
Schonfeldstated
statedthat
thatintegrated
integrated
did not contradict Samsung's position for the '449
'449 patent:
patent: Dr.

20

patent or
or a "reproducing
circuits require software generally,
generally, but
but said nothing about the '449 patent

21

in the accused
accused devices.
devices. See
id. at 2558:1-4. It is also undisputed that
that Apple's
Apple'sproducts
productscan
can
circuit" in
See id.

22

audio-afact
factthat
thatthe.
thejury
couldhave
haveconfirmed
confirmed from the representative
representative devices
devices
reproduce
reproduce audio—a
jury could

23

OX 38-46A).
3846A).
admitted into the record (JX

as

t.£
:='U
C)U
U
..c...
tJ O
y
- tU
J

.~

b

.
00
SE

tl).J::

-01:
Z
~Z
=~
p;s
;...

0

~

24

arRues that none
none of
ofthe
the five
five accused
accused products
products contains
containsthe
theclaimed
claimed
Second, Apple argues

25

that these limitations require components that
that
"compressor"
or "decompressor."
"decompressor," Apple's
Apple'stheory
theoryisisthat
"compressor" or

26

"separate and
"both still
still images
images and
and videos,"
videos," and
and that its products
products use
use "separate
compress or decompress "both

27

distinct components
components to compress/decompress still images
images and videos."
videos," Mot.
Mot. atat33-34.
33-34.Apple's
Apple's

28

26
Case No.:
No.: 12-CV=00630
Case
12-CV-00630

ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR JUDGMENT AS A MATTER
MA TIER
OF LAW

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Case: 15-1171

Document: 40

Page: 202

Filed: 03/06/2015

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1

argument is unpersuasive. This
This Court
Court did
did not
not construe
construe the
the claim
claim terms
terms "compressor"
"compressor"and
and

2

"decompressor," and instructed the jury to apply plain and ordinary
"decompressor."
ordinary meaning for terms not

3

ECF No.
No. 1847
1847 at
at 30.
30. On
On cross-examination
cross-examination from
from Apple's
Apple'scounsel,
counsel, Mr. Parulski
construed. See ECF

4

circuitry that
that performs
perfonnsboth
both
testified that he "identified a single Apple
Apple design chip with the circuitry

5

originate with
with different
different
compressing methods,"
methods," even
even though certain components of
of the chip originate

6

oneintegrated
integratedcircuit.".
circuit"),Mr.
Mr.Millet:also
Millet also
manufacturers.
manufacturers. Tr. at 2638:25-2639:6, 2643:5-14
2643:5-I4 ("That's
(That's one

7

told
jury that
"essentially a single integrated circuit
the jury
that a system on chip ("SOC")
("SOC") is
is «essentially
circuit that
that integrates
integrates
told the

8

ofdifferent
different components,"
components." and
and that
that the
the Apple
Apple A6
A6chip
chipin
inthe
theinfringing
infringingdevices
devices
a large number of

9

Id. at 2688:13-20,2701
:21-2702:8. Apple's
Apple's
contains
for compressors
compressors and
and decompressors.
decompressors. Id:
contains circuitry for
2688:13-20, 2701:21-2702:8.

10

"SOC contains
contains dozens of
components. most
most unrelated
unrelatedtotocompression
compression
contention that the "SOC
of different components,

1:1
11

misplaced because
because the
the presence
presenceof
ofadditional
additionalcomponents
componentsdoes
does
or decompression"
(Reply at
at 20)
20) isis misplaced
decompression" (Reply

12

Chiron Corp
Corp.,
.• 112 F.3d 495,501
Cir. 1997)
1997)
not negate infringement.
infringement See Genentech, Inc. v. Chiron
495, 501 (Fed. Cir,

13

"comprising" claim,
(in a "comprising"
claim, "other
"otherelements
elementsmay
maybe
beadded
addedand
andstill
stillform
formaaconstruct
constructwithin
withinthe
thescope
scope

~~!

14

of
of the chum").
claim").

,seE

oo..c
"CIt:
0

Su

15
I5

001

16

image signals
signals"with
"withclassification
classificationdata."
data."Samsung
Samsung
contain a "recording
circuit"that
thatrecords
recordsimage
"recording circuit"

~;S

17

identified the Camera Roll feature in Apple's
Apple'sproducts
productsas
asmeeting
meetingthis
thislimitation.
limitation.Apple's.
Apple'snonnon-

18

infringement argument
argument is
is that the
aU photos
photos and
and videos
videos taken
taken with
withthe
the
the Camera Roll includes all

19

no "classification"
"classification"of
ofthose
thoseimages.
images. See Mot. at 35. Apple
Apple also
also argues
arguesthat
thatthe
the
device, so there is no

20

'449 patent requires recording of
of "image
"image signals
signals with classification data," such that
that the

21

classification data must
must be
be recorded
recorded simultaneously
simultaneously with
with the
the images.
images. The
TheCourt
Courtdisagrees
disagreesthat
that there

22

is inadequate evidence
evidence to support the verdict. The parties did not
not request
request construction
construction of
of

23

"classification
data," so
so its
its plain
plainand
andordinary
ordinarymeaning
meaningapplies.
applies.Mr.
Mr.Parulski
Parulskitestified
testifiedthat
thatthe
the
"classification data,"

24

theCamera
CameraRoll
Rolland
andthe
theother
other
accused products store
store information
information about
about"which
"which images
images are
areininthe

25

rolls."
Apple's source
source code
code and
and testimony
testimony from
from Apple's
Apple'scorporate
corporate
rolls," based on his inspection of
of Apple's

26

Storertestified
testified that
that the
the
representative.
Tr. at 2615:22-2616:9;
2615:22-2616:9; see also id. at 2637:9-16. While Dr. Storer
representative. Ti'.

27

Camera Roll does not
not include
include classification
classification data,
see Uf.
the jury
jury could
could have
have
data,:see
ad. at 2775:25-2778:24,
2775:25-2778:24, the

's
a:!

t@
::tQa:!

tJu

....u ""'O

.....-

-C t)

G"}I-<

1'1.10

=uz

~:z

Third, Apple challenges
challenges the
the sufficiency
sufficiency of
ofSamsung's
Samsung'sproof
proofthat
thatthe
theaccused
accusedproducts
products

I-<

0
0
w
r..

28

27

27
Case No.:
12-CV-00630
Case
No.: 12-CV-00630

ORDER GRANTING IN PART
ORDER
PART AND
AND DENYING
DENYING IN
IN PART APPLE'S
APPLE'S MOTION
MOTION FOR
FORJUDGMENT
JUDGMENTAS
AS AAMATTER
MATIER
OF LAW

A118

Case: 15-1171

Document: 40

Page: 203

Filed: 03/06/2015

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of45
45

tI

Parulski's explanation
credited Mr. Parulski's
explanation and concluded that the fact that the accused
accused devices
devices can
can

2

data.
distinguish Camera Roll photos
photos from
from other
otherphotos
photosindicates
indicatesthe
thepresence
presenceofofclassification
classificationaata.

3

.S

Fourth, Apple
Apple contests infringement
of the'
the '449
449 patent limitation requiring a display with "a
Fourth,
infringement of

4

list of said moving image signal and still image signal as a search mode." According to Apple, the

55

displays an array of
thumbnails, which cannot be
Camera Roll displaysan
ofthulllbnails,
be'aa "list."
"list.'~Dr.
Dr. Storer
Storeropined
opined that
thatthe
the

6

•'449
449 patent
patent is
is directed toward avoiding
avoiding the
the need
need to
to browse
browse through
through numerous
numerousimages,
images, which
which isis

7

provides, ill.
2767:11-20,
what a thumbnail array provides.
id. at 2767:
11-20, but
but Mr.
Mr. Parulski
Parulskioffered
offeredaacontrary,,
contrary opinion and

8

explained that Figure 8 of the patent shows a sample search mode with thumbnails,
thumbnails, id
2613:5id. at 2613;5-

9

2614:10.
Thus, a reasonable jury could
Storer's characterization
2614:
10. Thus.
could have rejected Dr. Storer's
characterization of
of the Camera

10
to

Roll as not having a "list of
of said moving
Roll
moving image
image signal and still image signal as a search
search mode."

eE

11
II

==
0(3

12

DENIED.

.......
........°

13

J.

~.~

14

Apple moves
moves for
for judgment
judgmentas
asaamatter
matterof
oflaw
lawthat
thatits
itsiPad
iPadproducts
productsdodonot
notinfringe
infringeclaim
claim1515

t:Ja

U
""'
...
(,i0,

..'" ...
G1
.!c:
!i.(,i

For
For the foregoing reasons, Apple's
Apple'smotion
motion regarding
regarding non-infringement
non-infringement of
ofthe '449
'449 patent
patent isis

of Claim 15 of
of the '239
Non-infringement
'239 Patent
Patentwith
with Respect
Respect to iPad Prodllets
Products
Non-infringement of

.n s..

'fit

0

=100

15

of the '239
accused Apple's iPad
of
'239patent.
patent. Mot.
Mot. atat36.
36.Apple
Apptenotes
notesthat
thatSamsung
Samsungaccused
Wad products of
of

"01::
'41°
:::z
=~
iJ-,S
...c

16

infringing the '239
'239 patent
patentfor
fortwo
two years
yearsof
oflitigation;
litigation;that
thatSamsung
Samsungincluded
includedthis
thisclaim
claimand
andApple
Apple

17

included its counterclaim for declaratory
declaratory judgment
judgment of
ofnon-infringement
non-infringement in
inthe
thejoint
jointpretrial
pretrial

18

statement, see ECF No. 1455-1 at 2-3, 8; and that the Court
claim
Court informed
informed the
the jury
juryof
ofSamsung's
Samsung'sclaim
statement.

19
19

of
of infringement
infringement in
in the
the preliminary
preliminary jury
jury instructions,
instructions, see ECF No. 1543.
1543. Apple
Apple further
further notes
notes that
that

20

Samsung told Apple and the
third week
the Court
Court during
duringthe
tbethird
Week of
oftrial
trial that
thatSamsung
Samsungwas
wasno
nolonger
longer

21

accusing the iPad
iPad 2, iPad
iPad 3,
3, iPad
iPad 4,
4, and
and iPad
iPad mini ofinfringement
of infringement of
of claim 15.
15, Mot. at 36 (citing

22

ECF No. 1764-5, letter
letter from Samsung
Samsung counsel
counsel to
to Apple
Apple counsel);
counsel); ECF
ECF No.
No.1743
1743(Updated
(UpdatedList
Listof
of

23

Accused Products by Samsung).Sarnsung
Samsung.
did not present any evidence of
ofinfringement
infringement by
by Apple's
Apple'S

24

iPad products.
products at trial. The Court
Court grants
grants Apple's
Apple'smotion,
motion,as
asexplained
explainedbelow.
below.

-~
(1,)':::

0
~

25

The Federal Circuit's
Circuit'srecent
recent holding
holdingin
in Alcoa
Alcon Research Ltd
Ltd vv.Barr
BarrLaboratories,
Laboratories, Inc.,
Inc., 745
145

26

F.3d 1180 (Fed. Cir. 2014), guides the analysis. There, the
the plaintiff
plaintiffhad
hadasserted
assertedtwo
twopatents
patentsininitsits

27

complaint,
complaint. but
but subsequently
subsequently sent
sent the
the defendant
defendant a letter stating
stating that
that the
the plaintiff
plaintiffhad
haddecided
decidedtoto

28

28
Case No.: 12-CV-00630
12-CV-00630
ORDER GRANTING
GRANTING IN
IN PART
PART AND
AND DENYING
DENYINGIN
INPART
PARTAPPLE'S
APPLE'S.MOTION
MOTIONFOR
FORJUDGMENT
JUDGMENTAS
ASAAMATTER
MATIER
OF LAW

A119

Case: 15-1171

Document: 40

Page: 204

Filed: 03/06/2015

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Document1963
*SEALED** FiledO9108114
FHed09/08/14 Page29
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e5:12-cv-00630-LHK
3 *SEALE[

I

claims of
ofinfringement,
infringement, but
butnever
never formally
formally moved
moved to
to dismiss
dismiss those
thoseclaims.
claims.The
The
dismiss those claims

2

plaintiffdid
did not
not assert
assert those
thoseclaims
claimsininthe
thepretrial
pretrialorder,
order.and
anddid
didnot
notadduce
adduceany
anyevidence
evidencerelated
relatedtoto
plaintiff

3
31

those patents
patents at
at trial.
trial.ld.
1184, 1193. The district court
denied the
the defendant's
defendant'spost-trial
post-trial motion
motion
courtdenied
those
Id. at 1184,

4

amend the judgment
judgment under
under Rule 59(e) in order to enter
enter judgment
judgment as
as aamatter
matterof
oflaw
law ofofnonnonto amend

55

infringement of
ofthose
those two
two patents,
patents.and
andthe
theFederal
FederalCircuit
Circuitaffirmed.
affirmed.ld.
1] 86-87. The
TheFederal
Federal
Id. at
at1186-87.
infringement

6

Circuit
Circuit held
held that
that judgment
judgmentwas
wasnot
notwarranted
warrantedbecause
becausethe
thepatents
patentswere
werenot
not"litigated,
"litigated.ororfairly
fairly

7

(citation omitted).
issue~ during
during the
the trial."
triaL" Id.
III at 1193
1193 {citation
omitted}, The
The Circuit
Circuitnoted
notedthat
thatinin
placed in issue,

8

determining ififthis
this standard
standardisismet,
met,courts
courtsshould
should"assess[]
"assess[]both
bothwhat
whatthe
theparties
partiesexpected`to
expected totrytry
determining

9

their statements
statements and
and conduct
conductand
andwhat
whatthey
theyactually
actuallylitigated
litigatedatat trial." Id
III The Circuit
Circuit held
given their

10

were not
not "litigated.
during the
the trial"
trial"because
because(1)
(1)the
the
"litigated, or fairly placed in issue, during
that the patents were

'e

11

plaintiff had informed the defendant
defendant of
oNts
decision to
to drop
drop its
its claims;
claims; (2)
(2) the
theclaims
claimswere
were omitted
omitted
plaintiff
its decision

{cUI,j..
Q~
U

12

from the pretrial order; (3)
(3)neither
neither party
party set
setforth
forth any arguments
arguments or
orevidence
evidence on
on the
themerits
meritsof
of

13

counterclaim for
infringement of
ofthose
thoseclaims;
claims; and
and(4)
(4)the
thedefendant
defendantnever
neverfiled
filed a counterclaim
for declaratory
declaratory

14

judgment of
ofnon-infringement.
non-infringement.ld.
"[a]
Id. The Circuit further noted that-"[
a] court should not render
judgment

15

in the complaint'
complaint' but
with respect
respect to
to claims
claims`reference[d]
'reference[dJ in
butnot
notraised
raisedininthe
thepretrial
pretrial
judgmentwith
judgment

16

a reference
statement or litigated at trial [because] 'a
referencein
inthe
thecomplaint
complaintisisnot
notsufficient
sufficientto
tosupporta
support a

;;J-5

17

judgment.,n Id (citation omitted).
judgment."

t:..

18

a:I

1::<£
::s:':::

'So
.--.-0....
.~~
A
0

Q
is
:;uv
~"€

Q.-

2

~o

~Z
=~

...0

Here.
the Court concludes
concludes that
that the
the issue
issue of
ofwhether
whether Apple's
Apple's;Pad
iPad products infringe the '239
Here,-the

19

patent was "litigated,
~litigated, or
placed in
in issue,
issue, during
during the
the trial.
triaL"" Although
Samsungpresented
presentedno
no
Although Samsung
or fairly placed

20

evidence at trial on
on the
the issue
issue of
ofinfringement
infringementasasto.
to the iPad
iPad products,
products.ititisisclear
clearthat
thatboth
bothApple
Appleand
and

21

Samsung expected to
to try
try the
the issue
issue of
ofinfringement-as
infringement asto
tothose
thoseproducts
productsand
andthat
thatthese
theseclaims
claimswere
were

22

"referenced in
in the
the complaint,"
complaint," for
for the
the following
followingreasons.
reasons.First,
First,Samsung
Samsung
not akin to claims merely "referenced

23

infringement claim as
as to
to these
these products
products in
in the
the pretrial
pretrial statement,
statement,and
andApple
Appleincluded
includedits
its
included its infringement

24

counterclaim for declaratory
c{)unterclaim
declaratory judgment
judgmentof
ofnon-infringement
non-infringement as
as to
to these
theseproducts
productsininthe
thepretrial
pretrial

25

statement as well. Second, the
the jury
jury was
was explicitly
explicitly informed
informed of
ofSamsung's
Samsung'sclaim
claimofofinfringement
infringementasas

26

to these products in the preliminary
preliminary jury
juryinstructions,
instructions. and
and was
was informed
informedthat
thatApple
Apple"denie[d]
"denie[d]that
thatitit

27

has infringed the claims asserted by
by Samsung," ECF
ECF No.
No. 1543. Third, Samsung did not withdraw

2&
28

29
CaseNo.:
Case No.: 12-CV-00630
I2.CV-00630

PART APPLE'S
APPLE'S MOTION FORJUOOMENT
FOR JUDGMENT AS A MATTER
MATTER
ORDER GRANTING IN PART AND DENYING IN PART
OF LAW

A120

Case: 15-1171

Document: 40

Page: 205

Filed: 03/06/2015

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1

claim until the
the third week
week of
oftrial,
trial. albeit before presenting
presenting its
its affirmative
affirmative case.
case. Samsung's
Samsung's
its claim

22

in the
the proceeding
proceeding was
was prejudicial
prejudicial to
to Apple.
Apple. Apple
Applewas
wasforced
forced to
to
at such aa late
late stage
stage in
withdrawal at

3

Apple~s defense
defense to
to Samsung's
Samsung'sclaim
claimin
in advance
advance of
oftrial
trial and
and had
had to
to try
try Apple's
Apple'scase
casefor
for
prepare Apple's

4

assuming that
that Apple
Apple had
had to
to reserve
reserve time
time to
to rebut
rebut Samsung's
Samsung'sclaim.
claim.Finally,
Finally,Samsung's
Samsung's
three weeks assuming

55

of its claim
claim of
ofinfringement
did not
not moot
moot Apple's
Apple'scounterclaim
counterclaimby
byindicating
indicatingthat
that
dismissal of
infringement did

6

Samsung would not
thefuture.
future.Under
Underthese
these
ilot sue
sue Apple
Applefor
forinfringement
infringementas
astotothose
thoseproducts
productsininthe

7

that the`issue
the issue of
of non-infringement
non-infringement was
was "fairly
"fairly placed
placed in
in issue'
issue"such
such
circumstances. the Court
Court finds
finds that
circumstances;

8

I) the
a determination on the issue, unlike
unlike in Alcoa
Alcon where(
where (I)
the parties
parties
that Apple is entitled to a-detefnination

9

explicitly
jury
(2)the
thejury
expJicitly recognized in
in the
the pretrial
pretrial order
order that
that the
the plaintiff
plaintiffhad
had dropped
dropped those
those patents,
patents.(2)

10

-sE

I
ofthe
the infringement
infringementclaim,
claim.and
and(3)
(3)the
thedefendant
defendantnever
neverfiled
fileda acounterclaim.
cQunterclaim. 11
never learned of

a$

1:'£
o::=
0CIS
Ut)
UU

11

This Court
Court notes
notes that
that in
in affirming
affirming the
the district
district court's
COurt~sdenial
denialofofjudgment
judgmenttotothe
thedefendant
defendantinin

a

12

Alcon, the Federal Circuit
Circuit emphasized
emphasized that
that the
the defendant
defendant had
had not
not filed a counterclaim for
Alcoa,

°
'C1)

-""'

13

ofnon-infringement,
non-infringement, and
and noted
noted that
that such
such aa filing
filing would
wouldlikely
likely have
have
declaratory judgment
judgment of

.Q-~.....

14

745 F.3d at 1193
1193 (noting that "if
"ifthe
the accused
a<:cused infringer
infringerdoes
does
compelled a different outcome.
outcome. Alcon,
Alcon, 745

SO

~e

15

not file a counterclai~
up to the patentee to decide
decide what
whatclaims
claimsare
are to be litigated and
counterclaim, then itit isis up

0

16

decided at trial" but
but "[i]f
"[ilfan
an accused
accused infringer
infringerhas
has filed
filed aa counterclaim,
counterclaim,then
thenthe
thepatentee
patenteehas
hasnotice
notice

17

if it drops its
its infringement
infringement claims, the issue of
ofinfringement
infringement remains
remains to
to be
be litigated.");
litigated.");
that, even if

18

Geselischaft m.
b<II., 945 F.2d 1546,
Inc. v. Proma
Mktg. Gesellschaft
m.b.H.,
Proma Produlct-UnJ
Produkt id
(h Mktg.
see also Tol-O-Matic, Inc.

19

1554 (Fed. Cir. 1991),
1991). abrogated on
Markman v.v. Westview
WestviewInstruments,
Instruments,Inc.,
Inc.,52
52
on other grounds, Markman

20

F.3d 967 (Fed.
must be sufficient
sufficient and
and explicit
explicitnotice
noticeofofthe
theclaims
claimsatatrisk"
risk"toto
(Fed.. Cir.
Cir. 1995) ("There must

21

grant judgment as a matter
matteroflaw).
Here, Apple's
Apple'sfiling
filingof
ofa
counterclaimmeans
meansSamsung
had
of law). Here,
a counterclaim
Samsung had

22

notice that the issue of
ofinfringement
infringement was
was still
still at
at issue
issue even
even after
afterSamsung
Samsungwithdrew
withdrewits
its

23

This isis because
because Apple
Apple never
never withdrew
withdrewApple's
Apple'scounterclaim-after
counterclaim afterSamsung
Samsung
infringement claims. This

~o

-0
--"-i
...
Nl V

rI'lO
A

OO€
"go
~Z

=0
...0

::J-S
S..

u..

24

24
25

26
26

27
28

11
reached aa similar
similarconclusion
conclusionininan
ananalogous.
analogouscase
casepre
pre-Alcon.
TheFederal
Federal Circuit
Circuit reached
Alcon. See, e.g.,
e.g.,. Strub
Strut
1 }The
v.
Corp.~ 168
F.3d1321,
1321,1998
WL537721,
537721,at
at**10-11
17,1998)
1 8.F.3d
1998 WL
10-1 I (Fed. Cir.Aug.
Cir. Aug. 17,1998)
v. Axon Corp.,
(unpublished) (reversing district court's
of the plaintiffs
plaintiff'smotion
motionfor
forjudgment
judgmentasasaamatter
matterofof
court's denial of
law of validity because defendant's
defendant'scounterclaim
counterclaimfor
fordeclaratory
declaratoryjudgment
judgmentofofinvalidity
invaliditywas
waspart
partofof
the pre-trial order and defendant
defendant waited
waited until
until the
the close
close of
ofevidence
evidenceto
towithdraw
withdrawthe
thecounterclaim,
counterclaim,
ofaa clearly
clearly presented
presentedclaim
claimatatsuch
suchaalate
latestage
stageininthe
theproceeding
proceedingwas
was
reasoning that "[withhdrawal
"[w]ithdrawal of
wasforced
forcedtotoprepare
preparea adefense
defensetotothis
thisclaim
claimininadvance.
advance
clearly prejudicial
prejudicial to
to [the
[theplaintiff]
plaintiff]which
whichwas
of trial," and thus plaintiff
plaintiffwas
was entitled
entitled to
to judgment
judgment on
on that
thatclaim).
claim).
30

Case No.: 12-CV-00630
12-CV-O()630
ORDER GRANTING
FOR JUDGMENT
JUDGMENT AS
AS A
A MATTER
MATIER
GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR
OF LAW

A121

Case: 15-1171

e5:12-cv-00630~lHK
12-cv-00630-LHK

*.
0e
tt2
==
0«5

Page: 206

Filed: 03/06/2015

OocumenU963*SEALED*
"'SEAlEO* Filed09108114
Filed09/08/14 Page31.
Page31ofof45
45
Document1963

1

gave Apple
Applenotice.
notice that
that Samsung
Samsung was
was withdrawing
withdrawing Samsung's
Samsung'sclaim
claimofofinfringement
infringementasastotothe
tbeiPad
Wad
gave

2

products.
products.

Finally,
thatApple's
nonFinally. Samsung
Samsungargues
argues Apple
Apple somehow waived its argument that
Apple'snon-

33

.S!!

Document: 40

4

infringement counterclaim
counterclaimwas
Wasstill
stillatatissue
issueafter
afterSamsung
Samsungwithdrew
withdrewitsitsinfringement
infringementclaim
claim
infringement

5

because
because Apple
Apple did
did not
not file
file any
any response
response to
to this
this Court's
Court'sorder,
order,issued
issuedininthe
themiddle
middleofoftrial,
mal,that
thatthe
the

6

an update
update regarding
reganfingwhich
whichApple
Appleproducts
productswere
wereaccused
accusedof
ofinfringing
infringingSamsung's
Samsung's
parties file
file an
parties

77

Opp'n at
at 35.
35. This
This argument
argument fails.
fails. The
The Court's
Court's order, see ECF No. 1737,
1137, never
never asked
asked Apple
Apple
patents. Opp'n

8

whether Apple
Apple withdrew
withdrewits
its non-infringement
non,.inmngementcounterclaim,
counterclaim,so
sothere
therewas
wasno
noreason
reasonfor
for
to state whether

9

file any
any such
such statement.
statement.
Apple to file

10
to

In sum, the
the Court
Court finds
finds that
that Apple's
Apple'scounterclaim
counterclaimwas
wasfairly
fairlyplaced
placedininissue
issueduring
duringthe
thetrial.
trial.

11

BecauseSamstlng
burden to
to show
showinfringement,
infringement. Medtronic, Inc. v.
v. Mirowski
MirowskiFamily
Family
Because.
Samsung had the burden

U

12
12

Ventures.
S.Ct 843,
843, 850-51
850-51(2014),
(2014), but presented no evidence,
evidence,the
the Court
CourtGRANTS
GRANTS
Ventures, UC,
LLC, 134 S.Ct.

-.-

13

Apple's motion
motionfor
forjudgment
judgmentas
asaamatter
matterof
.oflaw
lawthat
thatthe
theiPad
iPadproducts
productsdo
donot
notinfringe
infringethe
the '239
Apple's

14

patent.

t,)u
_4..
u O

1:'t
.:2l:;

A=.~
00
A
.ae
SQE

1~
~:Z

=u

15
IS
16

P-S

17

~

18

a

19
19
20
21

22

23

24
25
25
26
26

21
27
28
28

K.

InfringemenHor
'414 and
and '959;
'959;New
NewTrial
Trialon
onWillfulness
Willfulnessfor
forall
all
New Trial on Infringement
for '414
Apple Patents
Patents Other
Other than
than '721;
'721; New
New Trial
Trial on
onDamages
Damagesfor
forall
aUApple's
Apple~sPatents
Patents

Apple seeks
seeks a new
new trial
mal on
on various
various bases.
bases, and
and the
the Court
Court addresses
addresseseach
eachininturn
tumbelow.
below.
1.

Assertions that Apple Does Not
Not Practice
Practice the
the '172,
'112,'414,
'414,and
and'959
'959Patents
Patents

Apple seeks a new mal
I 4 and '959,
'959, aanew
newtrial
trialon
onwillfulness
willfulness for
for
trial on infringement for the
the '4
'414
an Apple's
Apple's patents
patentsother
otherthan
than the
the '721,
'121.and
andaanew
newtrial
trialon
ondamages
damagesfor
forall
allof
ofApple's
Apple'spatents
patentson
onthe
the
all

basis that
and prejudicially
prejudicially told
told the
thejury
jurythat
thatApple
Appledoes
doesnot
notand
andhas
hasnever
never
that Samsung
Samsung improperly
improperlyand
practiced the '414
'414patent.
patent,' '959
patent,and
andU.S.
U.S. Patent
PatentNo.
No. 8,074,
'112 patent").
patent").Mot.
Mot.at.
at
8,074, 172
172("the
('the '172
959 patent,
31.
motion.
Apple's motion.
7. The Court DENIES Apple's

Court's case
The Court first sets forth the relevant procedural history. This Court's
casenarrowing
narrowing order
order
early on in
in this
this case
case to
to each
each "limit
`limit their
required
their asserted
asserted claims
claims to
to 55 per
per side"
side"
required Apple
Apple and
and Samsung eaflyon
sung filed
a motion to
to enforce
enforce the
the Court's
Court'scase
case
at trial.
trial. ECF No.
No. 411
471 at 2. In October 2013, Sam
Samsung
fled a:motion

by arguing
arguing that
that
trial by
narrowing order, arguing that
that Apple was attempting-to
attempting to assert eight claims
claims at
at mal
Samsung infringed five claims and separately arguing that Apple practiced
Sam-sung
practiced three
three extra
extraclaims
claims -31
31
Case
12-CV~0Q630
No.: 12-CV-00630
Case No.:

ORDER GRANtING
GRANTING IN PART AND
AND DENYING
DENYING IN PART
PART APPLE'S
APPLE'S MOTION FOR JUDGMENT AS A MAnER
MATTER
ORDER
OF
OF LAW
LAW

A122

Case: 15-1171

Document: 40

Page: 207

Filed: 03/06/2015

e5:12-cv-00630-LHK
Document1963 *SEALED*
*SEALED* FiledO9/08/14
Fifed09/08J14 Page32
Page32ofof45
45
LHK Document1963

I

Claim 34 of the '959
'959 patent,
172 patent.
patent, and
and Claim 11
ii of
patent. Claim
Claim 27
27 of
ofthe ''172
of the
the '414
'414 patent
patent

2

"extra claims").
(hereinafter "extra
claims"). See ECF No. 804-3
804~3 at 3. Apple argued in
in response
response that
thatthe
thethree
threeextra
extra

3

practice were
were not
not "asserted claims"
claims for which
which Apple
Applewanted
wantedto
topresent
presentevidence
evidence ofApple's
Apple's practice

4

at 2.
2. At
At the
the hearing
hearing on
that should count towards the five claim limit at trial. ECF No. 845 at

5

Samsung's motion
to enforce,
enforce,the
theCourt
Courtdisagreed
disagreedwith
withApple.
Apple.The
TheCourt
Courtnoted
noted that if Apple
Samsung's
motion to

6

at trial
trial that it practiced those extra claims, those claims would
would count towards
wanted to argue at

7

"asserted claims"
claims" and
and Apple
Apple would
would have
have to
to accordingly
accordinglyreduce
reducethe
the number of
Apple's limit
limit of
of five "asserted
of

8

claims it asserted for infringement.
infringement. ECF
ECF No.
No. 1133
1133 atat158.
158.The
TheCourt
Courtalso
alsogave
gaveApple
Applea achoice.
choice. The

9

Court stated that if
if Apple
Apple was going
going to
to argue
argue at
at trial that
that Apple
Apple practiced the
the extra claims to rebut

10

Samsung~s
argumentthat
thatApple
Appledoes
doesnot
notpractice
practicethe
thepatents,
patents.ininthe
theinterest
interestofoffaimess
Samsung
Samsung's argument
fairness Samsung

11

challenge the
the validity
validity of
nfthe extra
extra claims.
claims.ld
was because
would be allowed to challenge
Id. at 155-59, 170. This was:because

.(13

12

the Court reasoned itit would
would be
be unfair
unfair for
for Apple
Apple to
to use
use the
the extra
extra claims
claims as
as aa sword
swordfor
fordamages
damages

--.......

13

arguing Apple
Apple practices
practices those
those claims,
claims, yet
yet prevent
prevent Samsung
Samsungfrom
from challenging
challengingthe
the
purposes by arguing

Q.~

14

Id. In response.
of those claims.
validity of
claims.ld
withdraw the
thethree
threeextra
extraclaims
claimsand
andnot
not
response; Apple elected to withdraw

'!e
aSQ)v

15

ofpractice.
practice.ld
170.The
TheCourt
Courtconfirmed
confIrmedthis
thisininitsitsorder
ordermemorializing
memorializingthe
the
evidence of
present evidence
Id atat170.

'i o
;::Z

16

E hearing.
hearing. See ECF No. 1057 at 2 ("At
("At the
the hearing. Apple stated that
that itit would not
not seek
seek to
to introduce
introduce at
at

...
0c
c.
'"'"

17

of the '959
'959patent,
patent. claim 27 of
ofthe
trial any evidence of
of its three unasserted claims, i.e., claim 34 of

18

'172
patent. and
and claim
claim 11
II of
ofthe
the '414
'414patent.
patent.Accordingly,
Accordingly, the
theCourt
Courtdenies
deniesSamsung's
Samsung'smotion
motiontoto
'172 patent,

19

enforce Apple's
[] as moot.").
moot.").
Apple's compliance with the Court's case narrowing order []as

('IS

'8

1:<£
t::s.~
w_°
<:>

UU
Uw
-~
Col 0
°
J..Q

•:il .b

AlIlQ
.

Ci)'E

v2

CQ)

;J-5
D5

20

At the pretrial hearing
hearing on
on the
the parties'
parties' motions
motionsininlimine,
limine,the
theparties
partiesand
andthe
theCourt
Courtrevisited
revisited

21

issue. The
The Court
Courtagain
again told
told Apple
Applethat
this issue.
thatififApple
Applewanted
wantedtotoassert
assertits
itspractice
practiceofofthe
the extra claims

22

in order to wipe out
infringing alternative, that
out aa potential
potential nonnon-infringing
that in
in the
the interest
interestof
offairness,
fairness,the
the claims

23

would count as one
one of
ofApple's
Apple'sfive
fiveasserted
assertedclaims
claimsand
andwould
wouldbe
besubject
subjecttotoananinvalidity
invaliditychallenge
challenge

24

1411 at 48-50, 54-55,58
54-55. 58 ("If
("[fyou
you want
wanttotoput
putthis
thisclaim
claim at issue, you are
by Samsung. ECF No. 1411

25

welcome to do that. ItIt just
just needs
needs to be one
nne of
ofynur
three of
like to use all
your five, three
of your five if you'd
you'd like

26

three. That's
just your
your choice ...
..•[If[If
youassert
assertthe
thepractice
practiceofofthese
theseclaims,]
claims.]it itcounts
countsasasone
oneofnf
That's just
you

27

your five and it is potentially going to
I'mnot
notgoing
goingtotolet
letthis
thisbe
belitigated
litigated
to be
be invalidated
invalidated...
... I'm

28

32
Case No.: 12-CV-00630
12-CV-00630

ORDER GRANTING IN PART
PART AND DENYING IN PART APPLE'S
APPLE'S MOTION
MOTION FOR
FORJUDGMENT
JUDGMENTAS
AS AAMATTER
MATTER
OF LAW

A123

Case: 15-1171

Document: 40

Page: 208

Filed: 03/06/2015

K Document1963
e5:12-cv-00630-LHK
OocumenU963*SEALED*
*SEALEO* FiledO9108/14
Filed09/08/14 Page33
Page33ofof45
45

1

door in
in aa sword
swordand
andshield
shieldfashion
fashionwhere
wherethey
theycan't
can'tchallenge
challengevalidity,.
validity,but
butyou
youget
gettoto
behind the door

2

That'sjust
justnot
notgoing
goingto
tohappen.
happen. What's
What'syour
yourchoice?").
choice?").The
TheCourt
Courtalso
also
use it defensively. That's

3

ofthe
the unasserted
unassertedclaims
claimsbefore
beforetrial.
trial. Id at
at 51
51
explicitly gave
gave Apple
Applethe
theoffer
offertotolitigate
litigatethe.
thevalidity
validity of
explicitly

4

you prepared
prepared [to]
[to] litigate
litigate the
the validity?
validity? I'm
I'mwilling
willingtotodo
dothe
thevalidity
validityon
onthese
thesethree
threeand
andwe
we
("Are you

55

potentiallyinvalidate.
invalidate these three unasserted claims
claims before
before the
the trial
trialon
onthis
thisand
andititwould
wouldbe
beaa
could potentially

6

id at
at54
54(Court
(Courtinforming
infonningparties
partiesthat
thatthe
theCourt
Courtcould
could.decide
decidevalidity
validitybefore
beforetrial
trialifif
non-issue.");
non-issue."); id.

77

rejected the
the Court's
Court'soffer
offerand
andagain
again chose to "stick
"stick with
with [its]
[itsJoriginal
original five
five
Apple agreed). Apple rejected

8

Accordingly,the
the Court
Courtprecluded
precludedApple
Applefrom
fromcontendingattrial.I
contending at trialthat
thatApple
Apple
[claims]." Jd.
Id. at 58. Accordingly,

9

practices
practices the extra
extra claims
claims and
and held
held that
that Apple
Apple "may
"may not
not rebut
rebut any
anySamsung
Samsungcontention
contentionthat
thatApple
Apple

to
10

products constitUte
constitute an acceptable noninfringing alternative
alternative to
tothe
the '414~
'414, '172,
'172, or
or'959
'959patents[.]"
patentsl.}"

e

11

Court noted
noted in
in its
its Order
Order that
that "it
"it gave
gave Apple
Apple an
an opportunity
opportunityto
torebut
rebut
ECF No. 1398 at 3. The Court

V
tJu

::=
U.......
Od

12

constitUteacceptable
acceptablenoninfringing
noninfringingalternatives
alternativesby
by
Samsung's contention
contentionthat
thatApple
Appleproducts
productsconstitute
Samsung's

.--.-....°

yO
-y
.~ !J

13

'172,or
or'959
'959patents
patentssoso long as
contending that
thatApple
Apple practices unasserted
unasserted claims of
of the '414, '172,

14

Apple was willing to litigate
litigate the
the validity
validity of
ofthe
the unasserted
unasserted claims
claims either
eitherbefore
beforeor
orduring
duringthe
theMarch
March

15

31,
declined the Court's offer." Id.
Id
3'1, 2014triaL
2014 trial. Apple
Apple declined.

..$

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~.!!

00
.
~E
d u
E
-.s::

oot:

1z
.... Z
=u

j;J .-5

....

00

u.

16

Before trial, the parties
parties filed ajoint
a jointmotion
motionto
tosupplement
supplementPreliminary
PreliminaryJury
JuryInstruction
InstructiOnNo.
No.

17

jury that
20 and filed Proposed
Proposed Final
Final Jury
Jury Instruction
Instruction No
NO'.18
18which
whichwould
wouldinform
infonnthe
thejury
that"Apple
"Appledoes
does

18

l
not contend that it practices the '414,'172,
'414, '172.oror'959
'959patents"
patentsfin
inthis
thisaction.
action.ECF
ECFNo.
No.1418
1418atat2.2.The
The

19

Court's final
"fiJn this
this case,
case, Apple
Apple does
does not
not
Court's
final preliminary
preliminaryjury
juryinstructions
instructionsaccordingly
accordingly stated
statedthat
that`t[i]n

20

contend that it practices
practices the
the '414,'
'414, 172,
'172,and
and'959
'959patents?'
patents."ECF'
ECFNo.
No.1542
1542atat22.
22.The
Theparties:also
parties also

21

filed a "joint amended pretrial
pretrial statement
statement and
and order"
order" in
in which
which the
the parties
partiesstated
statedinillthe
the"Undisputed
"Undisputed

22

Facts" section
Facts"
secticn that
that "Apple's.
"Apple'sproducts
productsdo.
do not practice claim
claim 23
25 of
ofthe
the '959
'959patent,
patent,claim
claim2020ofofthe
the

23

'414 patent, or
or claim 18
18 of
ofthe
the '172
'172patent,"
patent,"which
which are
are the
the claims
claims Apple
Apple asserted
asserted against
againstSamsung
Samsung

24

1455-1 at 9.
for infringement
infringementpurposes'
purposes (hereinafter
(hereinafter "asserted
"assertedclaims").
claims").ECF
ECFNo.
No.1455-1:at.9.

25

During Samsung's
Samsung'sopening
openingstatement,
statement,Samsung
Samsungtotd
told the
thejury
jurythat
thatApple
Appledoes
doesnot
notpractice
practice

26

ECF No. 1622 at.
357, 359, 386-87, 391, 401,
has. See ECFNo.
at 357,
the '172, '414,
'414, and
and '959
'959patents
patentsand
andnever
neverhas.

27

413-14. Shortly thereafter, Apple
Apple filed
filed aa motion
motion asking
asking this
this Court
Court to
to permit
pennitApple
Appletotointroduce
introduce

28

33
Case No,:
No.: 12-CV-00630
ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS A MATTER
MATIER
OF LAW

A124

Case: 15-1171

Document: 40

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1

evidence to rebut Samsung's
Samsung'sassertions
assertionsby
byclaiming
claimingApple
Applepractices
practicesand
andused
usedtotopractice
practicethe
the

2

patents. and asking
asking for
for aa curative
curativeinstruction
instructiontotominimize
minimizethe
theprejudice
prejudiceresulting
resulting from Samsung's
patents,:and

3

assertions. ECF No. 1567
1567 at
at 5-6. The
The Court
Court denied Apple's
Apple'smotion
motion"for
"forcurative
curativeaction
actionasas to

4

whether Apple currently practices the '414,
'414, '172,
'172, and
and '959
'959Patents."
Patents."ECF
ECFNo.
No.1578
1578atat1.1.

S
5

Nonetheless, the
"as to
the Court
Court ordered
ordered Apple
Apple to
to file
file aa supplemental
supplemental brief
brief"as
towhat
whattimely
timelyproduced
produced

6

and/or timely disclosed evidence
evidence exists
exists in
in the
the record
re.cord as
as to
to whether
whether Apple
Apple inin the
the past
pastpracticed"
practiced"the
the

7
7

three
asserted claims.
claims. Id.
Id
three asserted

8

In response,
response. Apple submitted aa brief
briefidentifying only the following evidence. ECF No.

9

1581-3. With respect to claim 20 of
'414, Apple
Apple submitted:a
submitted a quote
quote from
from the
the deposition
deposition of
of
of the '414,

to
10

Gordon Freedman, the
the inventor
inventor of
ofthe
the '414
'414patent,
patent:,ininwhich
whichhe
henoted
notedthat
thatan
aniPhone
iPhone

11
II

synchronization prototype
prototype included
included "software
"software that
that embodied
embodied all
aU the
the ideas
ideasin
inclaim
claim20
20of
ofthe
the'414
•414

12

patent" and that
thaJ that
thatsoftware
was "essentially
"essentiallywhat
whatwas
wasininthe
theshipping
shippingproduct."
product." ECF
ECFNo.
No.1581-5
] 581-5
patent"
software was

°
"C t)

13

at
216. .218. With respect
respect to
to claim
claim 18
t 8of
ofthe
the '172
'172patent,
patent:,Apple
Applesubmitted
submittedaaquote
quotefrom
fromthe
the
at 216-218.

~.!:

A

14

deposition of
of Kenneth
Kenneth Kocienda,
Kocienda, an
an inventor
inventor of
ofthe
the '172
'I n patent,
patent:,ininwhich
whichhe
henoted
notedthat
thathehedid
didnot
not

SUE
UJ"€

15

"fll'Storiginal
originaliPhone
iPhonepractice[d]
practice[d]claim
claim18"
18~'but
butthen
thenininresponse
responsetotothe
thequestion
question
.."think"
think" that
that the
the "first

'0
~~

16

for the
theiPhone
iPhonepractice
practiceclaim
claim18,"
18."he
heresponded
responded"I"l
whether
"other non-English
non-English language
languagekeyboards
keyboards for
whether "other

;:J.,a

17

believe that the languages
languages which
which II listed
listed earlier,
earlier, Japanese,
Japanese, Chinese,
Chinese, et
etcetera,
cetera,do
doemploy
employthis."
this,"

18

ECF No. 1581-6 at 128.
128. With
With respect
respect to
to claim
claim 25 of
ofthe
the '959,
'959,Apple
Applecited
citedtotoApple's
Apple'sResponse
Responsetoto

19

13,2013
ThirdSupplemental
SupplementalResponse
Responsetoto
Interrogatory No. 42 dated June 13,
2013 and Apple's
Apple'sTbird

20

Interrogatory No. 25 dated
dated June
June 19,
19.2013.
in which
which Apple
Apple identified
identifiedsource
sourcecode
codefiles
fileswith
withrespect
respect
2013, in

21

as implementing
implementing the
thefunctionality
functionality that
that practices
practices"the
"theasserted
assertedclaims
claimsofofthe
tile'959"
'959~'
to iOS version 66 as

22

patent.
patent, ECF
ECF No.
No. 1.581-7
1581-7 at 17-18
17-18 and
and ECF
ECFNo.
No. 1581-8
1581-8at
at16.
16,Apple
Appleexpressly
expresslyconceded
concededininitsits

23

briefthat
that "Apple's
"Apple'sexperts
expertsdid
didnot
notprovide
provideopinions
opinionsthat
thatApple
Applepractices
practicesororhas
has
supplemental brief

24

practiced" the
the asserted
asserted claims.
claims. ECF
ECFNo.
No.1581-3.
1581-3. The
The Court
Courtsubsequently
subsequentlydenied,
denied,on
onthe
therecord,
record,
practiced"

25

Apple's
motionseeking
seekingaacurative
curativeaction
actionregarding
regardingwhether
whetherApple
Applepracticed
practicedthe
thepatents
patentsininthe
thepast.
past.
Apple's motion

26

No; 1623
1623 at
at 613.
ECF No.

Ce
~

"s

1:<2

==
c:>~

C,)U
UU

_<0~o

-..='£.00

A

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.... S

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0

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27
28

34

28

Case No.:
I 2-CV -00630
No.: I2-CV-00630

ORDER GRANTING IN PART AND
A}\;'D DENYING
DEN"YING IN PART APPLE'S MOTION FOR
FOR JUDGMENT
ASAA MA
ITER
MATTER
JUDGMENT AS
OF LAW

A125

Case: 15-1171

Document: 40

Page: 210

Filed: 03/06/2015

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11

Samsung's closing
closing statement, Samsung's
coutlselsuggested
suggestedtotothe
thejury
jurythat
thatany
any
During Samsung's
amsung's counsel

2

damages award should be
be reduced
reduced because
becauseApple
Apple does
does not
notpractice
practiceApple's
Apple'sasserted
assertedpatents.
patents. See

3

ECF No. 1929 at 3270 (claiming
(claiming that
thatApple
Apple"seekf
"seek[s] lots
money for
for things
things that
that Apple
Apple itself
itselfdoes
does
tots of
of money

4

not even use"); id. at 3328-29.
3'328-29. Samsung
Samsung also
also argued Samsung
Samsung could
couldnot
nothave
havecopied
copiedthe
theasserted
asserted

5

usedinin Apple's
Apple'sproducts.
products.ld.
cO.py it if
have never
neverbeen
beenused
patents because they have
Id. at.3256
at 3256 eyou
("You can't copy

6

it's not there, ififApple
Apple doesn't
doesn'tpractice
practiceit.";
it.");id..
idatat3257-58
3257-58("If
("Ifit's
it'snot
notininyour
yourproduct,
product,someone
someone

7
7

Andwhy
whywould
wouldsomeone
someonecome
come[sic]
[sic]totoyour
yourproduct
productififyou're
you'renot
notpracticing
practicingthose
those
can't
copy itit.And
can't copy

8

same patents?,,);
patents?"), id
id.atat3265-66
3265-66("By
e'Bythe
theway,
way,[Apple]
[Apple]wasn't
wasn'tpracticing
practicingmost
mostofofthese
thesepatents,
patents,atat

9

this point aU
them.");
practice most.of
mostofthese
patents:'); id.at
doesn't practice
these patents."),
all of
ofthem.
id. at
"); id. at 3277 ("[T]he iPhone doesn't

10

s)

3287 ("Well, we've
we've already
alreadyseen
seenthat,most
that mostof
ofthese
these patents
patents aren't
aren'tused
usedininthe
theiPhone.").
iPhone.").

'sI~

11
IJ

U
G_°8
.J ......

12

points that
that Apple
Appledoes
doesnot
notand
andhas
hasnever
neverpracticed
practicedthe
theasserted
assertedpatents,
patents,without
withoutgiving
giving
at various points

or::

ColO

13

Apple a chance
chance to
to rebut.
rebut. Apple
Appleargues
arguesthat
thatthe
theprejudicial
prejudicialvalue
valueofofthose
thosestatements
statementsand
andthe
thefact
fact

A
=.~

U
$e

14

trial necessary. The Court rejects
new trial
rejeCts Apple's
Apple's argument.
argument.
that Apple could
could not
not rebut
rebut them
them renders
rendersaanew

.auE

15

oct!
0

uO

16

Appiey Mot.
Mot. at
at38-40.
3840.Yet
Yetany
anyargument
argument
damages] based on false
false information,"
information,"which
whichprejudiced.
prejudiced Apple.

=u
:;;;;.;;

17

by Samsung that Apple does
does not currently practice the asserted claims of the '959, '414, and '172
'172

18

light of
ofApple's
Apple'smultiple
multipleadmissions
admissionspre-trial
pre-trialthat
thatApple
Appledoes
doesnot
not
patents was not "false"
"false" inin light

19

asserted claims.
claims. See ECF No. 1133 at 162-63 (Apple
(Apple stating
statingat
atDecember
December2013
2013hearing
hearing
practice
the -asserted
practice the

20

that Apple does
No. 1455-1
1455-1 atat99("joint
ejointamended
amended
does. not
not practice the three asserted claims); ECF No.

21

order" in
in which
which the
the parties
parties stated in the "Undisputed
4'Undisputed Facts"
Facts"section
section that
that
pretrial statement and order"

22

"Apple's products
donot
notpractice
practiceclaim
claim25
25 of
ofthe
the '959
'959patent,
patent,claim
claim20
20ofofthe
the'414
'414patent,
patent,ororclaim
claim
"Apple's
products do

23

patent."); ECF
ECF No.
No. 1581-3
1581-3at
at I1(Apple
(Appleconceding
concedingthat
that"Apple's
'~Apple'sexperts
expertsdid
didnot
not
18 of
of the '172 patent:");

24

Apple practices"
practices" the
the three
three asserted
asserted claims);
claims); ECF
provide opinions that Apple
ECF No.
No. 1418
1418at:2
at2 (joint
(joint

25

stipulation pre-trial stating that
that "Apple
"Apple does
does not contend that
thatitit practices
practices the
the '414,
'414.'172,
'172,oror'959
'959

26

patents',.
patents").

a$

t:~

=:.::

U

.-.'"_-....
t)
HL

fitQ

Apple now contends
contends itit was
was manifestly
manifestly unfair
unfairfor
forthe
theCourt
Courttotoallow
allowSamsung
Samsungtototell
teUthe
thejury
jury

Apple.argues
Court.to
:toallow
allow the
the jury
jury to "reach
"reach aa verdict
verdict [and
[andcalculate
calculate
Apple argues it was unfair for the Court

\/}.J:

.,!:: ;Z

...

00

t.L.

27
28

35

28

Case No.: 12-CV-00630
12-CV-00630
ORDER GRANTING IN PART
PART AND DENYING IN PART APPLE'S MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS A
A MATTER
MATTER

OF LAW

A126

Case: 15-1171

Document: 40

Page: 211

Filed: 03/06/2015

se5:12-cv-00630-LHK Document1963
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of 45
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With respect to
to' Samsung's
Samsung'sarguments
arguments that
that Apple
Apple never practiced the asserted claims in the
2

past, the Court
CO'urt fails
fails to
to see
see how
how Samsung's
Samsung'sassertions
assertionswere
were"false"
"false"given
giventhat
thatthis
thisCourt
Courtexplicitly
explicitly

3

gave Apple the
the opportunity
oppontlnity to
to present
presentits
itsevidence
evidenceof
ofpast
pastpractice
practiceofofthe
theasserted
assertedclaims,
claims,and
and

4

Apple's evidence
Apple's
evidencewas
wasweak
weakatat·best.
best.Moreover,
Moreover, Apple
Appledid
didnot
notobtain
obtainany
anyexpert
expertopinion
opinionthat
thatApple
Apple

5

practiced those
those claims,
claims. as
as Apple
Apple expressly
expressly conceded.
conceded. ECF
ECF No.
No. 1581-3
1581-3atat11("Apple's
("Apple'sexperts
expertsdid
did

6

..•has
haspracticed"
practiced"the
the three
three asserted
assertedclaims).'
claims).122
not provide opinions that Apple ....
With respect
respect to any argument by Samsung that
that Apple does
does not
not practice
practice and
and has
has never
never

7
8

Apple
the three
three unasserted extra claims, the Court
Court is
is not
not convinced
convincedby.
by Apple's
Apple'sclaim
claimthat
thatApple
practiced the

9

was prejudiced by
by not
not being able to rebut Samsung's
Samsung's arguments.
arguments. Apple's
Apple'sclaim
claimisisunavailing
unavailing

10

Court gave
gaveApple
Apple the
thechoice
choice not
not once,
once, but
buttwice,
twice, to
to rebut by presenting
presenting evidence
evidence at
at
because this Court

11

that Apple
Apple practices
practicesthe
theextra
extraclaims,
claims, but
butApple
Apple declined
declinedthe
theCourt's
Court'soffer
offerboth
bothtimes.
times.When
When
trial that

UU
U
U
w

12

given tbe
not to present
presentevidence
evidence of
ofApple's
Apple'spractice
practiceof
ofthese
theseextra
extraclaims,
claims,orortotodo
doso
sowith
with
the choice not

U ~

13

the consequence of
ofopening
opening up
up those
those claims
claims to
to aa validity
validity challenge
chaUenge bySamsung
by Samsungand
andtoto.have
havethose
those

~.~

AQ
rIlCl

14

present such
claims count as one
one of
ofits
its five
five "asserted"
"asserted"claims,
claims, Apple
Appleitself
itself chose not to present
such evidence
evidence

~o
....
..c:

$5

15

and to only assert the
the five other
O'ther claims
claims Apple
Apple originally
originally asserted
asserted for
forinfringement
infringementpurposes.
purposes.

""E

's

't~

:::t-

0""
....gO
"-'
-;:
.....u.l::.~

oot:
"00

a~a
!:z

=0

;;;J;S

The Court
Court notes
notes that
thatApple's
choicewas
wasaastrategic
strategicdecision
decisionbeneficial
beneficialtotoApple.
Apple.This
Thisisis
Apple's choice

16
17

because Apple chose not
notto
to assert
assert claims
claims which
which were
were broader
broaderand
and thus
thusmore
morevulnerable
vulnerabletotovalidity
validity

18

claim) depends
depends from
from claim
claim 11
11 of
of the
challenges.
challenges.. For
For example,claim
example, claim 20
20 of
of the
the '414 patent (asserted claim)

19

'414 (unasserted claim).
claim). Independent
Independentclaim.
claim 11
II requires only one "synchronization
"Synchronization software
software
"414

20

component,"
but asserted
asserted dependent
dependentclaim
claim20
20requires
requiresatatleast
leastthree
threedistinct
distinctsoftware
softwarecomponents.
components.
component," but

21

See ECF No.
1151at
23.Before
Beforeand
andduring
duringtrial,
trial, Apple repeatedly
repeatedly, relied
relied on
on the
the fact
fact that
that claim
claim 20
20
No 1151
at 23:

l-o

0
C

r.z..

22
23
24

25
26
27
28

12

Furtbennore.
cases Apple
Apple cites
cites in
in support
support of
ofits
its proposition
propositionthat
thatthe
theCourt
Courthad
hadan
an"obligation"
"obligation"
Furthermore, the cases
to permit Apple to rebut
rebutSamsung's
Samsung'sstatements
statementsare
areinapposite,
inapposite,asasone
onecase
caseisisa acriminal
criminalcase
casewhich
which
held onlythatfalse
inadmissible rebuttal
rebuttalevidence,
evidence, see
only that false information can open the door to otherwise inadmissible
another, Dillon, Read &
& Co.
Co v.
493 F.3d 1021,
e.g., United
United States
States v.
v. Sine,
Sine, 493F.3d
1021, 1037
1037 (9th Cir.
Cir. 2007),
2007). and
and another,Dillon,
v.
United States.
1989), stands
stands for
for the
the unremarkable
unremarkableproposition
propositionthat
thataa
States, 875 F.2d 293, 300 (Fed. Cir. 1989),
trial court
court should
should not
not allow
allowstipulations
stipulationswith
withrespect
respectto
tofacts
factsthe
thecourt
courtknows
knowsare
arefalse.
false.Apple's
Apple's
other cited case for
for the
the proposition
propOsition that
thataacurative
curative instruction
instructionisisneeded
neededwhen
whenthere
thereisis"attorney
"attorney
is also
also inapposite.
inapposite. See United
United States
States v.
v. Schuler,
Schuler, 813 .F
F.2d
misconduct" is
.2d978.
978,979-83
979-83 (9th
(9th Cir. 1987)
(holding that without
without aa curative
curative instruction,
instruction, aaprosecutor's
prosecutor'sreference
referenceduring
duringclosing
closingargument
argumenttotoa a
non-testifying
defendant'sbehavior
behaviorduring
duringtrial
trialalleged laughter
laug.ijterwhen
whentestimony
testimonyabout
aboutthe
the
non-testifying defendant's
— his alleged
threats he made
made was
waspresented
presentedtotothe
thejury
jury—
- violated Fed. R. Evid. 404(a),
~04(a), Due
DueProcess,
Process,and
andthe
the
defendant's
FifthAmendment
Amendmentright
rightnot
nottototestify,
testify,and
andthus
thuswarranted
warrantedreversal).
reversal).
defendant's Fifth
12

36
36

.

Case
CaseNo.:
No.: 12-CV-0063Q
12-CV-00630
ORDER GRANTING IN
IN PART.AND
PART AND DENYING
DENYING IN
IN PART
PART APPLE'S
APPLE'SMOTION
MOTIONFOR.
FORJUDGMENT
JUDGMENTAS
AS AAMATTER
MA ITER
OF LAW

A127

Case: 15-1171

Document: 40

Page: 212

Filed: 03/06/2015

Filed09~08/14

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Document1963*SEALED*
*SEALED* FiledO91OS/14 Page37
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K Document1963

1

three software
software components
components to
to rebut
rebut Samsung's
Samsung'sinvalidity
invalidityarguments
fu'gumentsbased
basedon
onthe
the
requires three

2

(Apple's opposition
853-4 at 7 (kpple's
opposition to
to Samsung's
Samsung's
5.0 prior
prior art reference.
reference. See ECF No. 853=4
Windows Mobile 5.0

3

motion for summary judgment) ("The 'sync
'sync client'
client' does
does not
notmeet
meet t;lairn
~laim 20's
20's requirement for
;

4

multiple components
components (let
(let alone
alone multiple
multipledata-class
data-classspecific
specificcomponents)
compo~ents)and
andthus
thusdoes
doesnot
not
multiple

5

original};Tr.
Tr.atat2828:25-2829:11,
2828:25-2829:11.2847:1-10 (Dr.
(Dr.Snoeren
Snoerentestimony:
testimony:
anticipate:') (emphasis
(emphasisininoriginal);
anticipate.")

6

"So, again,
in claim
claim 20
20 we
we need
need those
those three
threedifferent
differentsoftware
software synchronization
synJhronizationcomponents,
components,and
and
again, in

7

all of the limitations
ofthem has
has to
to meet
meetallofthe
limitations from II.").
1L").Thus,
Thu/i,Apple
Applewould
wouldhave
havefaced
facedaa
each one of

8

the validity
validity of
ofunasserted
unasserted claim
claim 11
11 as
as opposed
~pposedtoto the
thevalidity
validity of
of
defending the
greater challenge defending

9

claim 20.
asserted claim

10

2847:~-10

ofthe
the '959
'959patent
patentrequires
requiressearches
seatchesininaa"plurality
"pluralityofoflocations.
locations,
Similarly. asserted claim
claim 25 of
Similarly,

tIS

'E

t:<2
:::;.:
Qa:s
U
UU
U

..........
QO
U.
0
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1:)
...,.
..
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.r;b

11

which include the Internet and local storage media:'
media."959
'959Patent
Patentcls.
c1:s.24,
24,25.
25.However,
However,claim
claim34
34

12

not have
have these
these limitations,
limitations. Apple
Apple has
has repeatedly
repeatedly!relied
uponclaim
claim25's
25's
(unasserted) does not
retied upon

13

oflocations
locations including
including the Internet
Internet to
to distinguish
di~tingUjShSamsung's
Samsung's"freeWAIS"'freeWAISrequirelllent for a plurality
plurality of
requirement

14

sf"prior
artreference.
reference. See Tr.at
2825:7-2826: t (Dr. Snoeren
Snoeren testimony);
testikony);ECF
ECFNo.
No.1908-3
1908-3atat28-29
28-29
Tr. at 2825:7-2826:1
sf' prior art

15

(Apple's opposition
as aa matter
law) (arguing
(Apple's
opposition to
to Samsung's
Samsung'smotion
motionfor
forjudgment
judgtnentas
mattet of
oflaw)
(arguing that
that

16

freeWAIS-sf
"would not
free
W
nothave
havethe
theability
abilitytotolocate..
locate information
information inina plurality
pluralityofoflocations
locationsthat.
that

17

Internet and local
local storage
storage media").
media'''). Accordingly,
Accordingly, Apple would have faced a
includes both the Internet

18

ofunasserted
unasserted claim
claim 34
34 as
as ppposedd to the validity of
greater challenge
challenge defending
defending the
the validity
validity of

19

asserted claim 25.

s.

~<I>

lila
..54)
.. s

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20

AIS-sf~'would

J

Apple's
choiceto
Apple's choice
toassert
assertthe
theasserted
assertedclaims
claimsas
asopposed
opposedtoto ~e unasserted claims was aa

21

)t now complain that
strategic decision beneficial to Apple.
Apple~ The
The Court finds that
that Apple
Apple ~annot
thatits
its own
own

22

decision led to an unfair
unfair result
result or
or prejudice
prejudice by
by "undermin[ing]
"undermin[ing] Ap
Apple's infringement, willfulness,
willfulness.

23

at 39.
and damages arguments." Mot. at

24

Furthermore,
AppJehas
hasalso
alsonot:explained
not explainedwhy
whythe
theCoura
Court J,hOUld not have pressed Apple to
Furthermore, Apple

~ot

25

;e of
of the extra claims,
make an election between
between not presenting
presentingevidence
evidenceof
ofApple's
Apple'spr<
pra4ice
claims. or

26

openingupupth+
presenting such
such evidence
evidencewith
withthe
theconsequence
consequenceofofopening

27
27

In other words, Apple has not
not explained
explained why
why itit would be fair
fair for
for flpple to use the unasserted

28
Case
CaseNo.:
No.: 12-CV-00630
12-CV-00630

tho~ claims to a validity challenge.
challenge.

37
37

I

GRANTING IN PART AND DENYING IN
IN PART
PART APPLE'S
APPLE'S MOTlqN FOR JUDGMENT AS A MATTER
ORDER GRANfING
OF LAW

A128

Case: 15-1171

Document: 40

Page: 213

Filed: 03/06/2015
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i led09108114
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of 45
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;
i

I

c1aimsas
sbield and
andaasword
swordby
byarguing
arguingatattrial
trialthat
tbatApple
Applepractices
qracticesthe
theclaims
claimsininorder
ordertoto
claims as both a shield
i

2

support its damages arguments and wipe out Samsung's
Samsung'snon-infringing
non-infringingalternative
alternativearguments,
arguments.but
but

3

simultaneously prevent
prevent Samsung
Samsung from challenging
challenging the validity
validity of
ofthose
those claims.
claims. Absent
Absentany
any

4

explanation from Apple,
Apple, such
such an election was
was necessary
necessart in
in the interest of
of fairness to
to
persuasive explanation

5

Samsung.

I
3

6

know that Apple's
soJehowdid
didnot
not know
The Court further rejects
rejects Apple's
Apple'sargument
argumentthat
thatApple
Applesomehow

7

the unasserted
unasserted claims
claims would
would mean Samsung
Samsun~ would
would be
be allowed
allowed to
toargue
argue at
at
choice with respect to the

8

trial that Apple
Apple does
does not
notpractice
practicethe
theasserted
assertedpatents.
patents. See Reply at
at! 23; Mot. at 39 ("What
("What began
began as

9

Apple could affirmatively contend at trial on a single issue thus morpbed
morphed
an order limiting what Apple

10

and misleading
misleading statements[,
]") (emphasis in
into a license for Samsung to make numerous false and
statements[.]")

11

original). This claim
claim is
is belied
belied by
by the
the fact
fact that
that at
at the
the pretrial
pretrial conference,
conference, when
when Apple
Appledecided
decidedonce
once

12

original five
five claims,
claims, Apple
Apple itself
itselfacknowledged
acknowledged that
thatits
itschoice
choicenot
notto
toargue
argue
again to stick with its original

13

Samsungwould
wouldAbe
1be able
Apple does
doesnot
not
that Apple practices
practices the
the extra claims
would mean Samsung
claims would:
able to
to argue Apple

Q.~

14

ReF No.
No. 1411
1411 at
at 58
S8 ("[l]f
("(I]fyou
rulethat,
that,[Samsung]
[Samsung1can
canargue
arguethat
thatApple
Apple
practice the patents. ECF
you rule

.Be:
Cl-<

15

aU these
these patents,
patents, and,:therefore,
and, therefore, that
that the
the iPhore
iPhoneisisaanon-infringing
non-infringing
practices no claim in all

16

ifthafs
yourruling,
ruling, we
we will
will abide
abide by
by itit,and
andwe
wewould
wouldlike
liketotostick
stickwith
withour
ourfive
five
alternative;
alternative, if
that's your

~-S

17

id at 61 (the Court informed the parties that
"Samsungwill
willbe
beable
ableto
to argue
arguethat
that
claims,");
claims."); see also id.
that"Samsung

"'"
c...

18

doesnot
notpractice
practicethe
thepatents).
patents). J3
the Apple products
are non-infringing
non-infringing alternatives"
alternatives" because
becauseApple
Appledoes
products are
13

t:<$

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QtU
o~
t,)u
Uv
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w~
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.-u

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"go
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::::IU.I

0a

19

20
21

22
23

24
25

26
27
28

propositi~n

13The
TheCourt
Courtfurther
further notes
notes that
that Apple's
Apple's cited case
J3
case for
for the
the proposition that
that`false
"falsestatements"
statements"
9o.~ 60 F.3d
Fold 631, 637
637 (9th
(9th Cir.
Cir.
warrant aa new
new trial
trial isisdistinguishable.
distinguishable.Wharfv.
BurlingtonN.R.R.
.Wharf'v. Burlington.
N.R.R. Co.,
t1995),
995). was
workplace injury,
injury. and
and the
the Ninth
N.inth
was a case
case in which an employee sued his employer
employer for a workplace
defense counsel
Circuit held the district
district court
court should
should have
have granted
granted aa new
new trial.
trial. The
The!defense
counselhad
hadallowed
allowedthe
the
teU the
the jury
jury the
thestipulated
stipulatedfact
factthat
thatthe
theplaintiff
plaintiff"still
"stillha[d]:
ha[d]!his
hisjob"
job"with
withthe
thedefendant,
defendant,
court to tell
knew that
thatthis
this "fact"
'"fact"was
wasfalse
falsebecause
beca~the
thedefendant
defendanthad
hadalready
already
even though defense
defense counsel
counsel knew
information prejudiced
prejudiced the
the plaintiff
plaintiff
decided to terminate
terminate plaintiff.
plaintiff. Id. The court found this false information
who could
he knew
knewhehedid
didnot
notactually
actuallyWill
stillhave
havehis
his
could have
have asked
askedthe
thejury
jurytotoaward
awardmore
moredamages
damagesififhe
Because the
the lawyer's
lawyer'smisconduct
misconductprevented
preventedthe
thejury
juryfrom
fromconsidering
consideringthe
thefull
funextent
extent
job. Id. at 638. Because
of the damages caused
ofthe
caused by
by the
the defendant's
defendanfsnegligence,
negligence,aanew
newtrial
trialwas
waswarranted.
warranted. Id. In this case,
the
Court
cannot
conclude
that
the
statements
by
Samsung
withrespect
respectto
topractice
practice
unlike in Wharf.
Wharf
Court cannot conclude that the statements by Samsung with
of the unasserted claims
of
claims were
were"false,"
"false,"as
asthey
theywent
wenttoto a contested issue that Apple itself
itselfchose
chose not
not
to instead
instead assert
assertits
its five
five other
otherclaims
claimsof
ofinfringement.
iu.fringement.
to address when electing
electing to
38
'
38
Case
CaseNo.:
No.: 12-CV-00630

:

ORDER GRANTING IN PART AND DENYING IN PART
MOTIQN FOR JUDGMENT AS A
A MATTER
MATIER
PART APPLE'S MOTION
OF LAW

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Case: 15-1171

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:01of45

1

that Apple
Apple was
wasgiven:
given ample opportunities to make its
its choice,
choice, and
andthat
thatits
itschoice
choicewas
was
Given that

22

could
intended to benefit
benefrt Apple,
Apple, this
this Court
Court finds that
that Apple's
Apple'sassertion
assertionthat
thatititcould
a strategic decision intended

3

not present
its practice
present evidence
evidenceof
ofits
practiceofofthe
theunasserted
unassertedclaims
claimsdoes
doesnot
notsuffice
sufficetotomeet
meetRule
Rule59,
59,

44

raresituations
situationswhen
whenititisisnecessary
necessarytoto"prevent
"prevent
which permits
permitsthis=Court
this Court to grant
only inrare
which
grant a new trial onlyin

55

Fe4. R.
R. Civ.
Civ.P.
P.59.
59.
a miscarria.ge of
a_miscarriage
of justice."
justice." Fed.

6

Finally,
Finally, the
the Court
Courtisisnot
notconvinced.
convinced by Apple's
Apple's contention
contentionthat
that"adherence
"adherencetotoaacase
case

'77

narrowing procedure
justify depriving
depriving Apple
Apple of
ofthe
the right
right to
to present
presentthe
the truth
truthabout
aboutits
its
procedure cannot
cannot justify

88

-re Katz
Katz Interactive
40-41; Reply
Reply atat24.
24. In
In support,
support, Apple
Appleclaims
claims that
that In
Inre
rights." Mot.
Mot. at
at 40-41,
property rights."

9

1303, 1312-13
1312-l3 (Fed.
(Fed. Cir.
Cir. 2011),
2011),"suggest[s]
"suggest[s]that
thataacase
case
Call Processing Patent Litigation, 639 F.3d 1303,

10

procedure could
could violate
violate the
the patentee's
patentee'sdue
dueprocess
processrights
rightswhere
whereititresults
resultsininpreventing
preventing
narrowing procedure

's

11

from introducing
introducingevidenceconceming
unasserted claims
claimsthat
that`present[]
'present[]unique
uniqueissues
issues
the patentee
patentee from
the
evidence concerning unasserted

UU U

12
12.

Mot at 40-41. The Court rejects Apple's
Apple's suggestion
suggestionthat
thatthis
thisCourt's
Court's
as to liability or damages.
damages."m Mot.

-.-.

13

five claims
claims violated
violated Apple's
Apple'sdue
dueprocess
processrights.
rights.InIn Katz, after
limit Apple
Apple to asserting
asserting five
decision to limit

~.!!.!

14

ofclaims
claimsthe
thedistrict
districtcourt
courtwould
wouldallow
allowthe
thepatentee
patenteetotoassert
assertatattrial,
trial"the
the
selecting the total number
numberof

$E
So

15

asked the
the district
districtcourt
courttotostay
staythe
thedisposition
dispositionofofvarious
variousextra
extraclaims
claimswhich
whichthe
thepatentee
patentee
patentee asked

"go
B
;::Z

16

at 1309-10. The district court denied the patentee's
Katz. 639 F.3d
F.3dat
patentee'smotion
motion
did not select
select. In re Katz,

~-S
.....

17

because the patentee
extra claims
claims"presented
"presentedunique
uniqueissues
issuesas
astoto
patentee failed
failed to
to demonstrate
demonstrate that
that these
these extra

~

18

Id at 1312. The Federal Circuit.
affrmed, rejecting
liability or
damages"so
soas
asto
to justify
justifyaastay.
stay.ld.
Circuitaffirmed.
rejecting the
the
ordamages"

19

patentee's
the district
and reasoning
reasoning that
thatthe
thepatentee
patenteehad
hadnot
notshown
shownthat
thatthe
district
patentee'sdue
dueprocess
processargument
argumentand:

20

court's
claim selection
selectionprocedure
procedure"was
"wasinadequate
inadequatetotoprotect
protectKatz's
Katz'srights
rightswith
withrespect
respecttotothe
the
court's claim

21

unasserted claims."
The .Circuit
Circuit noted that (the
"some
tf the patentee had demonstrated that "some
claims." Id. at 1311. The

22

of its unselected
of
unselected claims presented unique
unique issues
issues as to
to liability
liability or
or damages"
damages"and
andthe
thedistrict
districtcourt
court

.23
:23

had refused to permit
permitthe
the patentee
patenteetotoassert
assertthose
those claims.
claims, such a "decision would be subject to

24

that the
the patentee
patentee had
had "made
"madeno
no
review and reversal." Id. at 1312-13. However, the Circuit noted that

25

effort to make such a showing with respect to
to any
any of
of the
the unselected
unselected claims."
claims" Id. at 1313. Similarly

26
266

washighly
highlyrelevant
relevantand
andunique
unique
here, although Apple now claims that "Apple's
"Apple'spractice
practice[]0was

27

determining infringement
infringement and
and damages,"
damages,"Reply
Reply
information that the jury would have considered in determining

\lIS

E
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-

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00

28

39
Case No.:
No.: 12-CV-00630
DENYING IN
IN PART
PART APPLE'S
APPLE'S MOTION
MOTIONFOR
FORJUDGMENT
JUDGMENTAS
ASAAMATTER
MATIER
ORDER GRANTING IN PART AND DENYING
OF LAW

A130

Case: 15-1171

Document: 40

Page: 215

Filed: 03/06/2015

se5:12-cv-.00630-LHK
Docutnentl963 *SEALED*
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*SEALEO* Rled09l08/14
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Page40ofof45
45

1

24. Apple
Apple failed
failed to
to explain
explainininspecific
specificdetail
detailbefore
beforetrial
trialhow
howitsitsthree
threeextra
extraclaims
claimspresented
presentedany
any
at 24,

2

"unique issues
issues as to
to liability
liability or damages" which would have
have required
requiredthis
thisCourt
Courttotodeviate
deviatefrom
fromits
its
"unique

33

decision:
to:limit
limiteach
eachparty
party to fiVe
five claims.
claims. The
The Court
Courtacted
actedwithin
within its discretion
discretion when
when limiting
limiting the
the
decision to

4

parties
claimseach
eachininorder
ordertotokeep
keepthis
thiscomplex
complexcase
casemanageable
manageablefor
forthe
thejury.
jury. See Joao
parties to five claims

55

Control
& Monitoring
MonitoringSys
LLCv.
Co., No. 13-CV-13615,
13..CV-13615, 2014
2014 WL
WL 106926,
106926, at
at *3
*3
Control &
Sys.,.• LLC
v. Ford Motor Co.,;No.

6

10, 2014)
20 14) {citing
(citing Federal
Federal Circuit
Circuit cases
cases "establish[ing]
"establish[ing1 the
thebroad
broaddiscretion
discretion of
ofaa
(E.D. Mich. Jan. 10,

7

<limit the scope of
of trial in a patent case by limiting the
the number
number of
of claims that can be
district court to `limit

8

asserted.")
asserted."')(citation
(citationomitted).
omitted). To
To credit
credit Apple's argument
argument that
that Apple
Apple should
shouldhave
havebeen
beenallowed
allowed to

9

essentially assert
assert eight
eightclaims
claimsbecause
becauseits
itsextra
extra claims were
were relevant
relevanttotoinfringement
infringementand
anddamages
damages—essentially

10

while insulating
would eviscerate
eviscerate that discretion
insulating three of
ofthese
these claims from invalidity
invalidity challenges
challenges—
- would

's

U
11

that courts
courts allow
allowparties
partiestotoassert
assertail
allclaims
claimspotentially
potentiallyrelevant
relevanttotothe
thecase.
case. It would
by mandating that

jU
QCI:S

12
12

wit\:l the Katz decision which emphasized, while affirming
affirming the
the district
district court's
court'sdecision,
decision,
also conflict with

~o

13

"complex: cases,"
cases," the
thedistrict
district court "needs
«needs to have broad discretion to administer
administer the
the
that in "complex

14

1313 (citation omitted).
proceeding." In reKatz.
re Katz, 639 F.3d at 1313

CI:S

-"e
3;:::

._...
.......
tt,)u
..... <.0-,
~

t;·"c
VJ 4w

Q

Q.~

flO

-=
='"'

15

Ultimately. the Court
Court concludes
concludes that
that even crediting
crediting Apple's
Apple'sconcerns,
concerns,the
thecircumstances
circumstancesof
of
Ultimately,

!:z0

'e~

16

the high
high standard
standard under
under Rule
Rule 59,
59, which
which permits
permitsthis
thisCourt
Courttotogrant
grantanew
a newtrial
trial
this case do not reach the

t:J-S

...

17

only in rare situations
situations where
where necessary
necessary to
to "prevent
"preventaa miscarriage
miscarriageof
of justice"
justice." Fed. R. Civ. P. 59.

~

18

Accordingly,
Court DENIES
DENIESApple's
Apple'smotion
motionfor-anew
for a newtrial:
trialon
onthe
thebasis
basisthat
thatSamsung:
Samsungmade.
made
A€;cordngly, the Court

19

concerning Apple's
improper statements concerning
Apple'spractice
practiceof
ofits
itspatents.
patents.

_0

\/l'c

=0
r

0

20
21

2.

Reference to the
the Possibility
Possibility of
of a Permanent
PermanentInjunction
Injnnction

Apple seeks a new trial on infringement for the
'959, aanew
newtrial
trial on
on willfulness
willfulness for
for
the '414 and '959,

22

all
aU Apple's
Apple's patents
patents other
other than
than the
the'721
'721,,and
andaanew
newtrial
trial on
on damages
damagesfor
forall
allof
ofApple's
Apple'spatents
patentsinin

23

order to correct Samsung's
Samsung'sallegedly
allegedlyprejudicial
prejudicialreference
referenceits
itsopening
openingstatement
statementthat
thatApple
Apple :S
is

24

«to get
get an
an order
ordersaying
sayingthat
thatnone
noneof
ofthese
these phones
phonescan
canbe
besold
sOldininthe
theUnited
UnitedStates
States
seeking "to

25

m~tion.
anymore." ECF No. 1622 at 358. Mot. at 41. The Court DENIES Apple's
Apple's motion.

26
27

The procedural
proc-edural history isis as
as follows.
follows. The
The Court
Court initially
initially overruled
overruledApple's
Apple'sobjection
objectiontoto
Samsung's reference in
in Samsung's
Samsung'sopening
openingslides
slides to
to how
how Apple
Apple isis seeking
seekingaapermanent
permanent injunction
injunction

28

40
Case No.: 12-CV-00630

;

AND DENYING IN PART
PART APPLE'S
APPLE'S MOTION
ORDER GRANTING IN PART AND
MOTIQN FOR JUDGMENT AS A MATTER
OF LAW

A131

Case: 15-1171

Document: 40

Page: 216

Filed: 03/06/2015

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1

because the reference allegedly suggested
in this case because.
suggested Apple
Apple was
was "not
"notentitled
entitled to
tothe
thedamages"
damages"and
and

2

"equitable relief
also because "equitable
reliefisis to
to be
be decided
decided by
by the
theCourt."
Court."ECF
ECF No.
No. 1517-3
1517-3atat77(motion);
(motion);ECF
EeF

3

1538 at II (ruling);
(ruling);ECF
ECFNo.
No.1555
1555(denying
(denyingmotion
motionfor
forreconsideration).
reconsideration).Nonetheless,
Nonetheless.after
after
No. 1538

4

Samsung's opening
whichSamsung
Samsungtold
toldthe
thejury
juryApple
Appleisisseeking
seeking"to
"toget
getananorder
order
Samsung's
openingstatement
statementininwhich

5

saying that nOne
ofthese
these phones
phones can
can be
be sold
sold in
in the
the United
United States
States anymore,"
anymore."ECF
EeFNo.
No.1622
1622atat358,
358,
none of

6

prohibited Samsung
the Court pronibited
Samsung from
from making
making further
further reference
reference to
to Apple's
Apple'spermanent
permanentinjunction
injunction

7
8

ECF No. 1623
request on the ground
ground that
thatsuch
suchreferences
referenceswould
wouldbe
beirrelevant.
irrelevant &e
1623 at
at 615. The
The
See EeF
.
ECF Nos. 1567 at 8-9 (motion)
Court dellie.dApple's,request
for ~curative
instruction, see ECYNos.
(moti<m) &
&, 1578
1578
denied Apple's request fora
curative instruction,

9

(orcjer),
record that
that any
any such
such instruction
instruction would
would unnecessarily
unnecessarily"highlight
"highlighttheissue~"
(order), stating on the record
the issue."

10

No. 1623 at 615.
ECF No,
6t5. The Court
Court also
also denied
denied Apple's
Apple'srequest
requestfor
foraaifinal
finaljury
juryinstruction,
instruction,see
seeECF
ECF

ctt

'f

11

=:=
ctt

12

.--..--.
,L ....U

13

halding
asaa matter
matter of
oflaw,
law, references
references to the possibility of
ofa permanent
permanent injunction
injunction must
mustbe
be
holding that as

S~
AQ

14

excluded in patent
patent trials.
trials. Rather,
Rather. whether
whetherto
to allow
aHow such
such references
referencesat
,attrial
trialisisaamatter
matterwithin
withinthe
the

E
-<1)

t;E

15

court's
discretion subject
subjecttotobalancing
balancingunder
underFederal
FederalRule
Ruleof
ofEvidence.403.
Evidence 403. See, e.g., Broadcom
court's discretion

"=0

16

Corp. v. Emulex Corp.,
Corp.• No. 09-CV-0
09-CV-OI058.
Cal. Aug.
Aug. 10,
10r2011)(granting
1058, ECFNo.
ECF No. 770 at2
at 2 (C.Dt
(C D. Cal.
2011) (granting

.s

17

in patent
patent case
case to
to exclude
excludereference
reference to
to the
the possibility
possibilityof
ofpermanent
permanentinjunction
injunctionrelief
relief
motion in limine in

18

because the
the defendant
defendant "offer[ed]
"offer[ed] no
noreasoned
reasonedbasis
basisfor
furbeing
beingpermitted
permittedtotorefer
refertoto
under Rule 403 because

19

relief.,,)14
this Court's
Court'sdecision
decision to
toallow
allowthe
thereference
referenceduring
duringopening
openingstatements
statements
injunctive relief.")
Here, this
i4 Here.

20

was made
made-after
balancingof
ofthe
theappropriate
appropriate Rule
Rule 403
403 factors.
factors. Although
A~thoughthis
thisCourt
Courtruled
ruledafter
after
after a balancing

21

opening statements that
that no
no further
further references
references to
to the
the possibility
possibility of
ofpermanent
permanentinjunctive
injunctiverelief
relief

22

should be made,
made. the
the Court
Court finds
finds that
that Samsung's
Samsung'sone
onereference
referenceduring
duringitsitsopening
openingstatement
statementwas
Wasnot
not

23

Molski,
warrant aa new
newtrial
underRule
Rule 59
59"to
"toprevent
prevent a
justice,," Moisld,
so prejudicial as to warrant
trial under
a miscarriage ofofjustice."

24

481
Court found,
found. any
any,case
caseininwhich
whicha anew
newpatent
patenttrial_
trial
481 F.3d at 729. Apple does not cite, nor has this Court

~~
Q

U
U .....

~ o
1Z0
-0
"" $0.<

v3~
oo~

!:z
av
=<1)
.j;;j

0

I Nos,
Nos. 1758
1758 at 120-21
120-21 &
& 1848.
1848.

Apple's
request for
for a new trial. As an initial
there isis no
no rule
rule
Court denies Apple's
request
matter, there
The CO\iltdenie$
.
.

$0.<

0

~

25

26
27

28

14
at trial
trial that
that the
the question
question of
ofwhether
whetheraa party mayi reference
permanent injunction
injunction
reference a permanent
14 Apple conceded at
is a matter "completely
Court's] discretion.
discretion. It's
It's ajudgmentfor
make," ECF
ECF
t for. [the
[the Court] to make."
"completely in [the Court's]
No. 1621
1621 at
at255.
.
255.
41

I

Case
Case No.:
No.: 12-CV-00630
12-CV-00630

ORDER GRANTING IN PART
PART AND DENYING IN PART APPLE'S
A MATTER.
MATIER
IN FOR
FOR JUDGMENT AS A
APPLE'S MOTION
OF LAW

A132

Case: 15-1171

Document: 40

Page: 217

Filed: 03/06/2015

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Document1963 *SEALED*
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Filed09,108/14 Page42
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45

granted on
on the
the ground
groundthat
thatthe
thejury
juryheard
heard aa reference to
to aa permanent
pem,tanentinjunction
injunctionrequest
requestororon
on
was granted
2
3

that aa curative
curadveinstruction
instructionwith
withrespect
respecttotothat
thatissue
issuewas
wa$not
notgiven.
given. 15IS
the ground that
under Ninth
Ninth Circuit
Circuit case
case law,
law, granting
granting a motion
motion for
fqr anew
a newtrial
trial on the basis of
of
Further, under

4

misC()nduct isis only
only appropriate
appropriate where the "flavor
"flavor of misconduct..
miscondu,ct •..
sufficientlypermeate.
permeate
. sufficiently
attorney misconduct

5

proceeding to
to provide
provide conviction
conviction that
that the
the jury
jury was
was influenced
influenced by
by passion
passion and
and prejudice in
an entire proceeding

6

its verdict
verdict."
Harris Upham
Upham &
& Co.,
Co.,dnc.,
736 F.2d 1283,
1283, 1286
1286 (9th
." Kehr v. Smith Barney, Harris
Inc., 736
reaching its

7

1984) (citation
(citation omitted).
omitted). While
While Apple
Apple claims
claims that
that Samsung's
Samsung'sreference
referenceduring
duringits
itsopening
opening
Cir. 1984)

8

basedon
onthe
thepotential
potentialconsequences
consequencesofofthe
theverdict,
verdict,
statement invited
invited the
the jury
juryto
to"decide
"decidethe
thecase
casebased
statement

9

taw," Mot.
Mot. at
at 42,
42, the
the Court
Court isis not
not convinced
convincedthat
tha,t the
thejury's°consideration
jury's'considerationof
ofthe
the
not the facts or the law,"

10

was so
so tainted
tainted or
orinfluenced
influencedasasaaresult
resultofofthis
thisone
onereference
referenceasastotowarrant
Warraflta
newtrial.
trial.
evidence was
a new

's

11

Sarnsung"sopening
openingstatement,
statement,the
the jury heard evidence
witnesses over
over the
the
evidence from ,multiple
multiple witnesses
After Samsung's

o==

12

oftrial,
trial, and
and there
there were
were no further
further references
references to
toApple's
Apple'srequest
requestfor
for
course of
of thirteen days of

.-

13

permanent injunctive
injunctive relief.
relief. Accordingly.,
Accordingly, the Court
Court DENIES
DENIES Apple's
Apple'smotion
motionfor
fora anew
newtrial
trialdue
duetoto

S.2i

14

Samsung's
allegedlyprejudicial
prejudicialreference
referenceininits
itsopening
openingstatement
statementtotothe
thepossibility
possibilityofofpermanent
permanent
Samsung's allegedly

(1:$<1.>

15

injunctive relief.

!Z

16

3.

::>£

17

(1:$

t:t2

0(1:$

U
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U
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yO
w ....
a

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~"C

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.se

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o
=<1.>

Reference to Federal Circuit
Circuit Preliminary
Preliminary, Injunction
Injunction Decision
Decision

'959 patent to
Apple seeks
seeks aa new
new trial
trial on
on infringement,
infringement, willfulness,
willfulness, and
and damages
damagesfor
forthe
the '959

!-o

0
0

>.t.
u;

18

correct Samsung's
allegedlyprejudicial
prejudicialreferences
referencestotothe
theFederal
FederalCircuit's
Circuit'spreliminary
preliminary injunction
Samsung's allegedly

19

F d 1370
decision in this case.
Inc. v;
v. Samsung
Samsung Elecs. Co.,
Co., 695 FJd
1370(Fed.
(Fed.Cir.
Cir.2012).
2012). Mot.
Mot at
case, see Apple lac.

20

42, In that decision, the Federal Circuit
42.
Circuit held
held Apple
Apple did not
not satisfy
satisfY its
its burden
burden necessary
necessary for
foraa

21

22
23

24
25
26
27
28

15
Carp., 352 F. Supp.2d
which Apple
Apple cites,
cites, was
was aa
526, 529 (D. Del.:2005),
Del 2005), which
Corp. v. Corvis Corp.,
Supp. 2d 526.
k5 Ciena Carp.
reconsideration of
ofthe district
district court's
courfsdenial
den~alof
ofaapermanent
permanentinjunction
injunction in a
decision on aamotion for reconsideration
patent case. There, the court
court simply
simply cited,
cited, without
without any
any reasoning,
reasoning, the
~e court's
court'sprevious
previousmotion
motioninin
limine ruling which "required
"required [Defendant]
[Defendant] not
not to
to refer
refer to
to the
the injunctive
injunptiveremedy
remedyininthe
thepresence
presenceof
of
the jury."
cites Computer Associates
Inc. v. American Fundware, Inc., 831 F.
AssociatesInt'l,
Intl Inc.
jury." Apple also cites
Supp. 1516, 1530 (D. Colo. 1993),
1993), which
which is
is aa breach
breach of
ofcontract
contract and
and trade
trade secret
secretmisappropriation
misappropriation
case, not a patent case, that
that granted a motion in
in limine
I imine excluding
excluding reference
referenceto
tothe
theplaintiff's
plaintiff'sclaim
claim
must be
be granted
granted when
when the
thepossibility
possibilityof
of
for injunctive relief. Neither
Neither case held that
that aa new trial must
813 FF.2d
2 978,
States v. Schuler,
injunctive relief
referenced at
at trial.
trial. Finally,
Finally, United States
SchWer, 813
978,982
982(9th
(9th Cir.
Cir.
relief is referenced
1987),
as itit isis aa criminal
criminal case
case where
wherethe
theprosecutor
prosecutorimproperly
improperlymade
made
1987), isis clearly
clearly distinguishable, as
comments about the conduct
conduct of
ofaa non-testifying
non~testifying defendant,
defendant. and
and the
th4 Ninth
Ninth Circuit
Circuitgranted
grantedaanew
new
trial because the failure of
ofthe district court
court to give a curative
curative instruction
instruction violated
violatedthe
thedefendants
defendant's
fifth
.
Fifth Amendment rights.
42

Case No.: 12-CV-00630
.
MATTER
IN PART
PART APPLE'S
APPLE'S MOTION FOR JUDGMENT AS A MATIER
ORDER GRANTING IN PART AND DENYING IN

OF
OF LAW
LAW

A133

Case: 15-1171

Document: 40

Page: 218

e5:12-cv-00630-LHK Document1963
e5:12-cv-00630-LHK
Document1963*SEALED*
*SEALED*

Filed: 03/06/2015

Filed09 /08/24 Page43
FiledOQ/08/14
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of45
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;

I

_no

andthus
thus
preliminary injuru:tion
injunction wit.
with respect 10
to U.s.
U.S. P_t
Patent No.
No. 8,086,604
8,086,604 Jthe'6(14
(the '604 patent"), and

2

reY~ed
grantingaapreliminary
preliminary injunction
injunctionon
od the
the '604.1d.
1317. The Court
reversed this Court'sdecision
Court's decision granting
'604. Id. at 1377.

13;

DENIES Apple's
motion.
Apple's motion.

4
5

6

.

Apple claims that the following allegedly prejudicial
prejudicialstate~ent
was made
made by
by Samsung's
Samsung's
statement was
counsel during Samsung's
Samsung'sopening
openingstatement:
statement:

~·What.l~appened

pate~t.

9

[Apple1 sued
sued on
on a different
different search
search patent. [Apple]
[Apple] sued
suedon
onthe
the '604
'664
"What happened isis [Apple]
'959'1,and
and[Apple]
[Apple]went
.Wentto
to.court
courtand
andthey
they got an injunction
against
patent, not [the '959],
injunction against
was right,
[Samsung] doing this type of
of search. We didn't
didn't think
thinkitit w*
right. We
Wedidn~t
didn't agree,
agree, but
but we
we
[S3IlJsung]
so we
we —
...:. ititwasn't
tutjned that
that off.
off. We
We appealed
appealed it,
it, and
and
complied. And
And so
wasn't hard to do. I mean, we turned
appeals reversed
~s wrong,
wrong, we're
we'reentitled
entitledtotodo
do
the court of
ofappeal.s
reversed and
and said
said we were
were right, Apple
Appl+ was
it, and then dropped that patent."
patent:f
.

10

ECF No.
that when making this statement,
statem*nt, Samsung
Samsung incorrectly
incorrectly told
told the
the
No. 1622 at 402. Apple claims that

11

jury
ruled Samsung
is entitled
jury that
that the
the Federal
Federal Circuit
Ci(cuitruJed
Samsungis
entitledto
touse
useApple's
APpJ,'Suniversal
universalsearch
searchfeature
feature

_o

12

though the
'959 patent
42claimed in the '959
~959 patent,
patent, even
evet.ithough
the'959
patentwas
was not
not atissue
at/issueininthe
theappeal.
aPpeal.Mot.
Mot.atat42-

13

43. Apple further claims
claims that
that Samsung
Samsung also
also improperly-cross-examined
improperly cross-ex~ined Dr.
Dr. Vellturo,
VeUturojApple's
Apple's

61;)
pA
:sCiE

14

damages expert;
daIllages
expert, by asking
asking him to
to admit
admit that
that the only reason
reason Samsung removed
removedthe
theQuick
QUickSearch
Search

~a
_.<1)
oo..c:

15

''C'

(liP

t::

16

reincorporated that
thatfeature·
intoits
itsproducts
productsonly
onlybecause
becausethat
thatdecision
dec¥onwas
wasultimately
ultimatetyreversed.
feature into
reversed.

=IU
j:);
""'
00

17

Mot. at 43 (citing ECF
ECFN.o.
1715 at
at 1341-42).
1341-42). In
In sum,
sum, Apple
Apple claims
cla~s that
that Samsung's
Samsung'sstatements
No. 1715
statements

18

prejudiced Apple because
because they
"suggested to
to the
the jury
jury that
that an
an appeals
ap~lscourt
courtsided
sidedwith
withSamsung
and
they "suggested
Samsung and

19

against
issue that
that was
was relevant
relevant in
in the
the current
current trial,
trial, when
wh~nin
infact
factthe
theFederal
FederalCircuit's
Circuit's
against Apple on an issue

20

decision had no relevance to
to the
the issues
issues that
that were
were before
before the
the jury"
jury."Mot.
Mot.atat43.
43.

7
8

tIS

's

tom
_
1:<£
;:s.o t;;.
4C).C
~
.....
UU

uP
(J

$,t)
... ·cJ
.y

z

j::Z
~
w

;

21

sam~ng
Box feature from its
its products
products was
was this
this Court's
Court'spreliminary
preliminaryinjunction
injunct~on
order,and
andthat
thatSamsung
Samsung
order,
i

!

Apple previously moved
moved fora
foracurative
curativeinstruction
instructionand
andpro
pro~osed
finaljury
Juryinstructions
instructionstoto
.osed final

22

correct Samsung's
Samsung'sallegedlyprejudicial
statementininits
allegedly prejudicial statement
itsopening
Opening statement,
sljatement,see
ECF No. 1567;
1567;
see EeF

23

ECF No. 11758
1578 at 2; ECF
EeF No. 1848.
1848.
ECF No. 1578
758 at
at 122, but this Court
Court denied both requests. See Eef

24

The Court finds no reason
reason to
to change
change course
course and
and thus
thus denies
denies Apple's
App1e:t.srequest,
request,for
fortwo
tworeasons.
reasons.

25

First, Apple's
Apple~sclaim
elaimthat
thatSamsung
Samsungincorrectly
incorrectlysuggested
suggestedtotolthej~ry
thatthe
theFederal
FederalCircuit
Circuit
the jury that

26

ruled Samsung is entitled
to use
use Apple's
Apple'suniversal
universalsearch
searchfeature
feature qlaimed
entitled to
claimed in the
the '959 is meritless in

21

light of
Samsung's
opening
statement
explicitly
told
thejury
jury
thatApple
Appleattained
attainedaa
of the
factfact
thatthat
Samsung's
opening
statement
explicitly
told
the
that
!

28

43

!

Case No.: 12-CV-00630
12-CY-00630
IN PART
PART APPLE'S
APPLE'S MOTION
MATTER
ORDER GRANTING IN PART AND DENYING rN
MOTrqN FOR JUDGMENT AS A MA
TIER
OF LAW

A134

Case: 15-1171

Document: 40

Page: 219

Filed: 03/06/2015

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*SEALED* Filed09108114
Filed09/08/14 Page44
Page44of
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:12-cv-00630-LHK Document1963 *SEALED*
e5

I

preliminary injunction
injunction with
with respect
respect to
to the
the '604 patent,
patent. not
not the
the '959
'959 patent,
patent, and
and that
that this
this decision
decision
preliminary

2

mentioned the
the'959
by the
the Federal
FederalCircuit.
Circuit.ECF
ECFNo.
No. 1622 at 402. Samsung never mentioned
'959
was reversed
reversed by
was

33

patent in connection
Circuit decision. Samsung
Samsung even
eyen explicitly
explicitly told
told the
the jury at
connection with the Federal Circuit

4

other,
times throughout
throughout trial that Apple
other times
Apple attained
attained aa preliminary
preliminary injunction
inju~ctionwith
withrespect
respecttotothe
the'604
'604

55

1714 at
at 1031-33
1031-33 (Cross
(Crossof
ofDr.
Dr.Snoeren);
Snoeren);ECF
ECFNo.
No.1715
1715atat1342
1342(Cross
(CrossofofDr.
Dr.
patent See ECF No. 1714
patent.

6

VeUturo).
Vellturo).

77

Second.
Apple's claim
claim that
thatthe
theFederal
Federal Circuit's
Circuit'sdecision
decisionhad
hadno
norelevance
relevanceto
tothe
thecurrent
current
Second, Apple's

8

belied bythe
thefact
factthat
thatApple
Appleitself,
itself.when
whengiven
giventhe
thechoice
choicebyqythis
thisCourt,-chose
Court. chosetotomake
tmtkethe
trial is beliedby
the

9

This Court
Court expressly
expressly told
told Apple
Apple before
before trial
trial that
thatififApple
Applechose
chosetotoargue
arguethat
~t
decision relevant. This

to
10

Samsungremoved
Quick Search
Search Box
Box feature
feature and
and then
then reincorporated
reincorboratedititdue
dueto
tocustomer
customer
Samsung
removed the Quick

11

complaints about the feature's
feature'sabsence.
absence,Samsung
Samsungwould
wouldbe
beallowed
allowd,dtotorebut
rebutby
bytelling
tellingSamsung's
Samsung's

12

of the story
story —
- i.e.,
Samsungremoved
removed the
the Quick
QuickSearch
Search.Box
Box only
only to
to comply
comply with
withthis
this
i.e., that Samsung
side of

13

CQurt's
grantof
ofaapreliminary
preliminaryinjunction
injunctiontotoApple
Appleregarding
regardingthe
the'604,
'()04,and
andreincorporated
reincorporatedthe
the
Court's grant

Q.A

14

Federal Circuit's
Circuit'sreversal
reversal of
ofthat
thatinjunction.
injunction. See ECF
ECF No. 1621
t 621 at
feature only in response to the Federal

~S

15

255 (THE COURT: "But
"But ififyou're
you'regoing
goingtotosay,
say,yes,
yes,we
wewant
wanttotoget
g~into
intothe
thefact
factthat
thatthis
thiswas
was

2

16

removed and customers
customers complained
complained and
and itit was
was reincorporated,
reincorporated, then
then IIthink
.think[the
[thefact;that
fact thatthe
the

::;Iii

17

injunction was
...•So
Sotake
takeyour
yourpick.
pick.
was issued
issued and
and itit was
was reversed
reversed by
bythe
thehigher
highercourt]
court]comes
comesinin....

18

Which one do you want?").
Apple'scounsel
counsel elected
elected to
to make
tmtke Apple's
Apple'sargument,
argument.which
whichopened
openedthe
the
want?''). Apple's

19

door to rebuttal. See ill.
COUNSEL: "The first.
first We're
We'regoing
goingtotoput
putititin.")..Thus,
in."). Thus,when
when
id (APPLE'S COUNSEL:

20

Apple subsequently told the jury
jury that
that Samsung
Samsung removed the
the Quick
QuickSearch
SearchBox
Boxand
andrestored
restoredititas
asaa

21

result of
996-98~ Samsung
at 322~23;
322-23; ECF No. 1624 at 996-98,
see ECF No. 1622 at
of customer complaints, ~'f!e

22

byreferring
referringto
tothe
theFederal
FederalCircuit's
Circuit'sdecision.
decision.ECF
ECFNo.
No.
permissibly rebutted Apple's
Apple'sallegation
allegationby

23

1622
Because Apple
Apple chose to argue
1622 at
at 402·403;
402-403; ECF
EGF No.
No. 1714 at 1030-33 (cross of Dr. Snoeren). Because

24

that Samsung removed
removed the Quick
Quick Search
Search Box
Box feature
feature and
and reincorporated
reincorporatedititdue
duetotocustomer
customer

25

complaints, Apple knowingly opened
opened tare
the door
references to
to the
the Federal
Federal Circuit's
Circuit's
door to
to Samsung's
Samsung's references

26

to make the decision
decision relevant.
relevant. Accordingly,
Accordingly.the
theCourt
Court
preliminary injunction decision and
and chose
chose to

27

finds that a new trial is not warranted, and DENIES
DENIES Apple's motion.

at

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28

44
44
Case
lZ-CV-00630
CaseNo.;
No..12-CV-00630

.

ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS A
A MATTER
OF LAW

A135

Case: 15-1171

Document: 40

Page: 220

Filed: 03/06/2015

e5:12-cv-00630-LHK Documentl963
FiledO~/08/14 Page45
Page45ofof45
45
Document1963 *SEALED*
*SEALED* Filed09/08/14

HI.
CON,CLUSION
III. CONCLUSION

For the reasons discussed
for
discussed above,
above.the
the Court:
Court:

2
0
3

(1) DENIES Apple's
motionfor
for judgment
judgmentas
asaamatter
matterof
oflaw
ofclaim 88 of
ofthe '721
'721
Apple's motion
law of infringement of

4

patent.

5

(2) DENIES Apples
Apple;~motion
motionfor
forjudgment
judgmentasasaamatter
matterofoflaw
infringementofofclaim
claim20
20ofofthe.
the
law ofofinfringement

6

~'414
414 patent.
patent.

7

(3) DENtES
motionfor
for judgment
judgmentas
as aamatter
matterof
oflaw
ofclaim
claim 25
25 of
ofthe
the
of infringement of
DENIES Apple's
Apple's motion
law ofinfringement

8

'959
patent.
'9S9patent

9

Apple'smotion
motionfor
forjudgment
judgmentasasaamatter
matterof
oflaw
lawthat
thatSamsung
$amsung willfully infringed
(4) DENIES Apple's

to

patent
claim 9 of
of the ~647
'647 patent.

It

(5) DENIES Apple's
Apple's motion
motion for
forjudgment
judgmentas
asaamatter
matterof
oflaw
lawthat
thatSamsung failed
failedtotoestablish
establishits
its

oU
°d

12

affirmative defenses.
defenses.

.;:U0
tr

13

Apple'srequestfor
enhanced damages
damages for
for the '721
'721 patent
patentand
and the
the'647
'647patent.
patent.
(6) DENIES Apple's
request for enhanced

14

(7) GRANTS Apple's
Apple' srequest
requestfor
forsupplemental
supplementaldamages.
damages.

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E

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15

(8) GRANTS Apple's
Apple'srequest
requestfor
forprejudgment
prejudgmentinterest.
interest.

16

(9) DENIES Apple's
Apple'srequest
requestfor
forjudgment
judgmentasasa
matterof
oflaw
ofnon-infringement
non-infringementofofclaim
claim27
27ofof
a matter
law of

::J.;:i

17

the'
449 and
and vacatur
vacatur of
ofthe
the damages
damages award.
award.
the '449

18

(10) GRANTS Apple's
of law of
(l0)
Apple'srequest
requestfor
forjudgn~tent
judgment as a matter of
ofnon-infringement
non-infringementof
ofclaim
claim15
15of
of

19

the '239
patentwith
with respect
respect to
to Apple's
Apple'siPad
iPadproducts.
products.
'239 patent

20

(11) DENIES Apple's
request for
for aa new
new trial
trial on infringement for the
q.e '414
'414and
and '959,
'959,aanew
newtrial
trialon
on
Apple's request

21

and aa new
new trial on damages for all Apple's
willfulness foraH
for all Apple patents other than
than the'72!,
the'721, and

22

patents.
patents,

23

IT IS SO ORDERED.

24

Dated: September
September 8, 2014

=4)

,..

00

~

µ.
LUCY H. K
United States

25

Judge

26
27

28

45
i
ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTIQN FOR JUDGMENT AS A
A MATTER
MA TIER
OPLAW
OF
LAW
Case No.: 12-CV-00630
12~CV-00630

A136

Case: 15-1171

Document: 40

Page: 221

ase5:12-cv-00630-LHK
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Fi led03/28/l4 Pagel
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2
3
4

5
6
7

8
UNITED
UN
ITED STATES DISTRICT COURT
9

NORTHERN DISTRICT OF CALIFORNIA
10
SAN JOSE DIVISION

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Plaintiff
and Counterdefendant,
PlaintilTand

)
)

Case No.: 12-CV-00630-LHK

)

ORDER DENYING SAMSUNG'S
STR IKE PORTlONS
PORTIONS OF
MOTION TO STRIKE
DR. VELLTURO'S SUPPLEMENTAL
EXPERT REPORT

)

v.

)
)

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APPLE. INC., aa California corporation,
APPLE,

18

TO., a
)
SAMSUNG ELECTRONICS CO., L
LTD.,
SAM SUNG
)
Korean corporation; SAMSUNG
ELECTRONICS AMERICA,
C., a New York)
AME RI CA, lINC.,
corporation; and SAMSUNG
SA MSlJNG
)
TELECOMMUNICATIONS AMERICA,
AME RICA, LLC, )
aa Delaware limited liability company,
)

(SEALED
[SEALED VERSION]
VE RSION[

)

19
20
2211

Defendants and Counterclaimants.
Coumcrclaimants. )
_____________________________
)
---------------------)
Sarnsung
pmtions of Apple's February 17,
2014 Supplemental Expert
Samsung moves to strike portions
17,2014

22

Report of
ofChris\opher
Christopher A. Vellturo,
Velltura, Ph.D.
Ph. D . as untimely under Fed. R.
R. Civ. P. 26 and contrary to
to this
thi s

23

Court's prior rul
rulings
in gs regarding off-the-market lost profits. See ECF
EeF No. 1420-3 ("MOL").
("Mot"). Apple

24

fililed
led an Opposition, and Samsung filed
fi led a Reply. See ECF Nos. 1438-3
1438~3 (''Opp'n"),
("Opp 'n"), 1445. Having

25

cons
idered the brie
considered
briefing,
fing, relevant record, and applicable law, the Court DENIES
DEN IES the Motion
Mot ion for the

26

reasons stated below.

27
28
Case No.: 12-CV-00630-LHK
12-CY ·00630·LHK

ORDER DENYING SAMSUNG'S MOTION TO
TO STRIKE PORTIONS OF DR. VELLTURO'S SUPPLEMENTAL

EXPERT
EXPE!<T REPORT

A136.1

Case: 15-1171

Document: 40

Page: 222

ase5:12-cv-00630-LHK Document1537 *SEALED*

I.

Filed: 03/06/2015

Filed03/28/14
Filed03J28114 Page2 of 8

BACKGROUND
On February 4, 2014, the parties stipulated to exchange updated sales information for

2
3

accused products, as well as "supplemental calculations of damages incorporating" that data. ECF

4

Nos. 1235, 1239. On February 17,2014, the agreed date for exchanging supplemental calculations,

5

App le served Dr. Vellturo's Supplemental Report addressing Apple's asserted damages. Samsung

6

seeks to strike two aspects of Dr. Ve
Vellturo's
llturo's Supplemental Report. First, Samsung argues that Dr.

7

Vellturo's new analysis of Apple's off-the-market lost profits for the '647 patent contradicts this

8

Court's ruling on damages in a prior case involving Apple and Samsung, No. 11-CV-1846-LHK.
I1-CV-1846-LHK .

9

See Mot. at 2-5; see also Joint Pretrial Statement at 13-14,22-23
13-14, 22-23 (ECF No. 1336) (noting dispute).

10

Second, Samsung attacks Dr.
Dr. Vellturo's attempts to rely on certain new deposition testimony and

11

sales information produced after his August 12, 2013
20 13 Opening Report. See Mot. at 2 n.l. Apple

12

opposes.

13

II.

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LEGALSTANDARDS
LEGAL STANDARDS
Samsung moves to strike pursuant to Fed. R. Civ. P. 26, contending that Apple failed to

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15

timely disclose Dr. Vellturo's opinions under Rule 26(a)(2).
26(a)(2) . See Mot. at 3. As the moving party,

;;: z

16

Sam sung bears the burden of showing a discovery violation has occurred. See, e.g., Dong Ah Tire

;::l-5
::;:l-5

17

& Rubber Co.
Co. v. Gla.';jorms,
Gla,<;forms, Inc., No. 06-CV -33 59
59,, 2008 WL 4786671, at *2 (N.D . Cal. Oct. 29,

18

2008) . Once Samsung satisfies that burden, it becomes Apple's burden to show that Apple's

19

failure to comply with Rule 26 was either justified or harmless. See Yeti by Molly Ltd. v. Deckers

20

Outdoor Corp., 259 F.3d 1101, 1106-07 (9th Cir. 2001).

21

III.

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DISCUSSION

22

A.

Off-the-Market Lost Profits for the '647 Patent

23

On November 7, 2013, in a prior case involving Apple and Samsung,
Sam sung, Apple, Inc. v.

24

Samsung Electronics Co., Ltd., No. 5:l1-CV-1846-LHK
5:11-CV-1846-LHK (N.D. Cal.) ("Apple 1'),
F'), this Court

25

addressed the parties' arguments about the proper timing for analyzing Apple's asserted off-the-

26

market (or "blackout") lost profits--damages
profits--ciamages corresponding to times when Samsung was allegedly

27

infringing but should have been unable to sell the accused products until Samsung had built non-

28

2
Case No.: 12-CV-00630-LHK
ORDER DENYING SAMSUNG'S MOTION TO STRIKE PORTIONS OF DR. VELLTURO'S SUPPLEMENTAL
EXPERT REPORT

A136.2

Confidential Information Redacted

Case: 15-1171

Document: 40

Page: 223

ase5:12-cv-00630-LHK Document1537
Documen1l537 'SEALED'
*SEALED*

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Filed03/2B/14 Page3 of 8

infringing alternatives. The issue presented was whether potential
potentia! design-arounds must be

2

considered beginning on the date of first infringement, or on the
thc date
dale when Samsung first received

3

ofinfringemcnt.
infringement. See Order Re: Design
lJesign Around Start Dates at l-2,
1-2, Apple !(N.D.
I(N.D. Cal. Nov.
notice of

4

13) ("Apple I Order"). Under the
7, 20
2013)
thc circumstances that the parties presented in Apple I, the

5

Court
Courl accepted Samsung's
Sumsung's position and ruled that "one would need to
La begin the analysis at the date

66

of first infringement
infringemen t to avoid arbitrari
arbitrarily
ly ignoring actions the infringer could have taken in lieu of

77

infringing."
infringing." Id
Id. at 5. That ruling reduced Apple's damages demand in Apple I by $305 million.

8

Opp ' n at 4.
See Opp'n

9

Turning to the present case, Samsung
Sam sung used the same arguments about design-around dates

10

10,2013,
2013, Samsung filed
to restrict Apple's damages theories in this second litigation. On October 10,

1II1

a Daubert motion to exclude Dr. Vellturo's
VeUturo's opinions on off-the-market lost profits. See Sam
Samsung
sung

0"
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or;!

12

802·3). In his Opening Report on Apple's damages theories
Mol. to Exc lude Ops. at 13 (ECF No. 802-3).
Mot.

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13

in this case, Dr. Vellturo analyzed off-the-market lost profits based on notice dates, not first

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14

infringement dates. See Opening Expert
Expen Rpt.
Rpl. of Christopher A. Vellturo,
Vcllturo, Ph.D. ("Vellturo Opening
infhngement

f!:

II)
to)

15

Rpt.'')
ur of Apple's five asserted patents, the date of first infringement
fOUT
Rpt.") ~ 306, Tbl. 4. For (o

.,, "

16

alternatives
preceded the notice date. See id. By
Uy requiring Dr. Vellturo to analyze non-infringing alternat
ives

17

first infringement instead of the later notice dates, Apple's lost profits
at the earlier dates of fIrst

18

recovery wou
would
ld drop by as much as -_

19

802-3). In its Daubert
Dauber' motion to exclude Dr. Vellturo's
Vell turo's initial
initial opinions about blackout damages,

20

Sam sung wielded the same arguments about design-around dates that it asserted in Apple 1:
I: ""Dr.
Dr.

21

Vellturo's
Vellturo' s failure to use
lise the date of first infringement for his lost profits calculations is improper."

22

!d.
Id. On February 25, 2014,
20 I4, the Court
Caliri granted Sam
Samsung's
sung's Daubert
Dauben motion to preclude Dr. Vellturo
Vel/turo

23

from using ""notice
notice dates rather than first-infringement dates in his lost profits analysis" because

24

"this Court ruled in favor ofSamsung
;'this
of Sam sung on that issue" in Apple 1.
I. Feb. 25, 2014
20 14 Order at 2-3
2-3 (ECF

25

No. 1326).

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27
28

·. Samsung Mot. to Exclude Ops. at 13 (ECF No.

On February
Ft::bruary 17, 20
2014
14 (after the Apple I1Order, and while
wh ile Samsung's Daubert
Dauben motion in the
instant case was pending), Apple served Dr. Vellturo's
Vellturo 's Supplemental
Supplememal Report,
Repo rt, which now includes
3J
Case No.: 12-CV-00630-LHK
ORDER DENYING SAMSUNG'S
Of DR. YELLTURO'S
VELLTURO'S SUPPLEMENTAL
SAMSUNCi'S MOT ION TO STRIKE PORTIONS OF
EXPERT
l!XI'ERT REPORT
REPOrrr

A136.3

Confidential
Information
Redacted
Case: 15-1171
Document: 40
Page: 224 Filed:
03/06/2015
ase5:12-cv-00630-LHK Document1537 *SEALED*
'SEALED'

Filed03/28114
Filed03/28/14 Page4 of 8

off-the-market
orr·lhc-market lost profits calculations
cnlculati ons for the '64
' 6477 patent using the date of first infringement.
in fringement. For
2

the '647 patent,
patenl, the current
cu rrent alleged date of first infringement

3J

notice date

4

("Vel
ltu ro Supp. Rpt.") ,]5;
306, Tbl.
("Vcllturo
'15; Vellturo
Vetlturo Opening Rpt. ,!
' 1306,
TbL 4.
4 . Previously, Dr.
Dr. Vellturo
Vcllturo did not

5

calcu late such damages for the '647
' 647 patent
palent because the notice date
dale preceded infringement. See

6

Vellturo Opening Rpt.
Rpl.

7

infringement instead o[
of the earlier notice date, Dr.
Dr. Vellturo
Ve llturo opines that Apple is entitled to an

8

addi tional
additional

9

~,

10
.:S
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c

fal Is after the
falls

See Supplemental Expert Rpt. of Christopher A. Vellturo,
Vcllturo. Ph.D.
Ph .D.

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309. Now, by analyzing non-infringing alternatives on the first date of

in off-the-market
o ff-the-market lost profits for the '647 patent. See Vellturo Supp. Rpt.

4-6; Mot. at l.
I Order and in its Daubert
Dauberl motion in the instant case,
Despite prevailing in the Apple IOrder

II

Sam sung
lost profits calculations for the '64
7
su ng now argues that Dr.
Dr. Vellturo's ne}v off-the-market
off-the-marketlost
'647

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patent should be stricken-even though they arc based on design-around periods heginning
beginn ing on the

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13
IJ

first infringement date.
requ ire that designdate . According to Samsung,
Samsung. the Apple II Order does not require

14

arounds be analy-zed
analyzed at the date of first infringement if the notice date is earlier.
earlier. Mot. at 4-5.
4-5 .

....

15

Sam sung maintains that the date
However, Samsung
in fringement is still the appropriate date for
d:ne of first infringement

16

Apple's filur
four other patents for which
which the date of first infringement precedes the notice date. On the

17

Court has already held that design-arounds
other hand, Apple contends that this CoUtt
dcsign-arollnds should
s hould be analyzed

I188

as of the first infringement date, and points out
Olll that Sam sung advocated such
sueh a rule but now

19

contradicts
contradi cts itself to reduce its potential damages exposure for the '647 patent. Opp'n at 2-4.

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Sam sung'!' arguments are unpersuasive.
unpersliasive. The Court
Samsung's
COllrt concludes
conclunes that Dr. Vellturo's
Velltllro's

21

s upplemental opinions on blackout damages for the '647
' 647 patent are
Brc not inconsistent
inconsis tent with the Apple
supplemental

22

1J Order. In Apple I, this Court held that "potential
"potent ial design arounds ought to be considered as of the

23
2J

date of
offirst
fi rst infringement,"
in frin gement," based on the relevant dates and issues presented in that dispute.
di spute. Apple 1
J

24

Order at 10. The Court applied the underlying reason
ing of Federal Circu
it precedent in
reasoning
Circuit

25

concluding that ·'reconstructing
"reconstructing the hypothetical market requires
requ ires one to factor out infringement

26

entirely, " and that it is legally improper
entirely,"
im proper to "arbitrarily
"arbitrari ly ignor[e]
igl1or[e] actions the infringer could have

27

infringing."
fri nging." !d.
ld. at 5. Specifically, in Grain Processing Co1p.
COI·p. v. American Maize
Maiu-taken in lieu of in

28

4
Case
CilscNo.:
No.: 12-CV
t2-cv-{)0630-LlIK
-00630-LII K
ORDER DENYING SAMSUNG'S MOTION TO STRIKE
STRlKE PORTIONS OF DR. VELLTURO'S
VELtTURO'S SUPI'LEMENTAL
SUPPLEMENTAL
EXPERT REPORT

A136.4

Confidential
Information Redacted
Document: 40 Page: 225 Filed: 03/06/2015

Case: 15-1171

ase5:12-cv-00630-LHK
aseS:12-cv-00630-L
HK Document1537 *SEALED*
"SEALED"

Filed03/28/14 Page5 of 8

Products,
PmdUCIS, the Federal Circuit addressed lost profits and stated that "a fair and accurate
2

reconstruction of the 'but for' market also must take
rake into account, where relevant, alternative

3

Ihe infringer foreseeably would have undertaken
underta ken had he not infringed
infri nged ."
." 185 F.3d 1341,
actions the

4

CiT. 1999).
1350·51 (Fed.
(Fed . Cir.
1350-51

5

''It]h e critical time period for determining
detennining
However, Grain Processing also confirmed that "[t)he

6

ngement for which the
availability of an alternative is the period of
of infri
infringement
Ihe patent owner claims

7

damages, i.e., the 'accounting
'account ing period."'
period.'" !d.
Jd. at 1353 (citation
(c itation omitted). This is because tthe
he lost

8

infringed. "
profits inquiry is based on what the patentee would have earned "had the Infringer not infringed."

9

Aro 1\{fg.
MIg. Co.
CO. v. Convertible Top Replacement Co.,
Co. , 377 U.S. 476,507
476, 507 (1964) (citation omitted);
om itted); see

10

also Grain Processing,
Proces.~ing, 185 F.3d at 1349 (''To
("'To recover lost profits, the patent owner must show

'-

11

that 'but
·causation
'blll for' the
Ihe infringement,
infri ngemem, he would have made additional
add itional
' causation in fact,' establishing thai

uu
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12

profits."
/nstrumenrs Corp.
C01p. v. Perego, 65·F.3d
65· F.3d 941,952
941, 952 (Fed. Cir. 1995)).
profits. " (citing King Instruments

.i:
'i: t)
'0

13

Accordingly,
ti me frame for assessing lost profits
According ly, the Federal Circuit has held that the relevant time

·-Q,.,a:2?
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14

non -infringing alternatives)
alternati ves) is during the period of
o f infringement, when
(including the absence of non-infringing

"
-<Ll

15

palentce .
the infringer made sales that would have otherwise gone to the patentee.

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wou ld require analysis of
Contrary to these principles, Samsung
Sam sung now proposes a rule that would

17

potential design-ar·ounds
design-arounds before the infringement period- in this case, on
on the notice date ofoC _

18

IIIII
• ~ which precedes the first infringement date

19

Yellturo
Vellturo Supp. Rpt.

20

becn available. Indeed,
Indeed, Grain
before infringement even
cven began, when no lost profits could have been

2
211

Processing counsels that "[w]hen
"IwJhen an alleged
alJeged alternative is not on
on the market during the
'he accounting

22

period, a ttrial
rial court may reasonably infer that it was not available
ava ilable as a noninfring
noninfringing
ing substitute at

23

that time," and the infringer "then has the burden to overcome this inference by showing that the

24

available during the accollnling
accounting period." 185 F.3d at 1353 (emphases
(em phases added).
subst itute was avaihible
substitute

25

According to Apple's
Apple 's allegations, Sam sung decided
decid ed to infringe instead of designing around the

26

not ice more than a year earlier.
earlier. See Opp'n at 4. As a factual matter,
'647 patent, despite receiving notice

27

Samsung
SamsLlng may show that various non-infringing
non -infrin ging alternatives were developed before Samsung's first

28

~

by over
o ver one year. See

55.. Samsung
Sam sung provides no authority
aUlhori ty that requires
requ ires assessing
assessi ng design-arounds

5l
Case No.:
No. : 12-CV-00630-LHK
t 2-CV-00630-U IK
ORDER DEN
DENYJNG
YING SAMSUNG'S
SAM SUNG' S MOTION TO STRIKE PORTIONS OF DR. VELLTURO'S
VELLT URO'S SUPPLEMENTAL
EX
PERT REPOR
REPORT
T
EXPERT

A136.5

Case: 15-1171

Document: 40

Page: 226

ase5:12-cv-00630-LHK Document1537 *SEALED*
'SEALED'

Filed: 03/06/2015

Filed03/28/14
Filed03128114 Page6 of 8

infringement date and were available during the relevant accounting
accounti ng period. See Apple JI Order at

2

5. However, Sam
Samsung
sung provides insufficient justification for holding, as a matter of
orIaw,
law, that a

3

patentee's damages expert must consider non-infringing
non -i nfringing alternatives at a notice date that precedes

4

the infringement accounting period.

5

FUJthermore,
Furthermore, under Samsung's current view, early notice of
o f infringement would make it

6

easier for an infringer to avoid liability for lost profits because the in
infringer
fringer could
cou ld choose to
\0

7

infringe and later assert the availability of design-arounds
design-a rounds at the earlier notice date,
date. instead of the

8

A lso. an infringer could be subject
su~ject to
10 potentially
potentia lly greater
gre(l/(!r lost profits damages
date it first infringed. Also,

9

if
it received notice after infringing, instead of before.
ifll
before . Such a rule could create a disincentive for a

10

patentee to provide early notice
nolice or for an accused infringer to pursue early non-infringing
non·infringing

cj::;
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II

Samsu ng previously argued that early notice should be encouraged: "If
alternatives. Indeed, Sarnsung
" If Apple


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12

were right about the
Ihe law, the statute intended to encourage early notice would reward nol
not giving

·-Q"'·.~-...."

-·-

13

notice ." Samsung's
Samsung ' s Resp. to Apple's Statement Regarding Design Around Dates at 5, Apple
early notice."

~ .~

14

I (ECF
(EC r No. 2598). Samsung'
Samsung 'ss current position regarding the '647
' 647 patent runs contrary to this

....
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15
15

principle.

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must begin with the date of first infringement as a matter of law, but now retreats from that

0
1.1...
"-

18

2·4. In Apple!,
Apple I, Samsung
position to avoid lost profits liability
liabil ity for the '647 patent. See Opp'n at 2-4.

19

design·around date is the first
fi rst infringement
infr ingement date, not the notice date. See
insisted that the proper design-around

20

Mol. to Strike at 3-4,
3·4, Apple I (ECF 1No.
Samsung's Mot.
o. 2386) ("When calculating lost profits, courts

21

starting on Ithe
he dale
date of
first
look to whether noninfringing design arounds
around s are available slarring
o/firsl

22

infringement-even
at
in/ringemem--even if it is earlier than the notice
not ice date.");
date.") ; Oct.
OCI. 10,
la, 2013
20 J3 Tr. of Proceedings al

23

127:3~8, Apple I (ECF No. 2535) ("(F)or
("[F]or lost profits design around starts at the date of first
fir st
127:3-8,

24

Samsu ng's
infringement. It does not happen at the notice date."); Samsung
's Resp. to Apple's Statement

25

259&) (''Apple's
("App le's improper
Improper Methodology ls
Is
Regarding Design Around Dates at 2, Apple 1I (ECF No. 2598)

26

Contrary to Law'');
Law"); Samsung's
Sam sung's Statement Regarding the Court's
Courl 's Order, Apple I (EeF
(ECF No.
No. 2530).

.~

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•"

SamslIng vigorously argued that design-around
design·around periods
Moreover, as Apple points out, Samsung

27
28

6
Case No.: 12-CV-00630-l.IIK
IZ.cV-00630-U1K
ORDER DENYING
STRI KE PORTIONS
POI{TIONS OF DR.
OR. VELLTURO'S
VELL TURO' S SUPPLEMENTAL
DENY ING SAMSUNG'S MOTION TO STRIKE
EXPERT REPORT

A136.6

Case: 15-1171

Document: 40

Page: 227

ase5:12-cv-00630-LHK Document1537
Documentl537 'SEALED'
*SEALED*

Filed: 03/06/2015

Filed03/28/14 Page7 of 8

Then, after obtaining a favorable
I, Samsung successfully
favo rable ruling on this issue in Apple 1,
success full y

2

moved in this case to exclude Dr. Vellturo's
Vellturo' s opinions in his Opening Report regarding off-the-

3

market lost profits based on the notice dates for Apple's
App le's patents, without ever addressing a possible
poss ib le

44

exception for the '647
' 647 patent. See Samsung's
Sam sung 's Mot. to Exclude Ops. at 13 (ECF No. 802-4) ("This

5

is contrary to the law:
law: when calcu
ca lculating
lating lost profits, courts
cou rts look to whether non-infringing design

6

Slarting on the dale
date of
ojfirJt
first ill!rillgemenl
infringement - even if it is earlier than the notice
arounds are available slarting

7

date."); Samsung's Reply in Supp.
Supp . of Mot.
MOL to Exclude Ops. at 9 (ECF No. 948A)
948-4) ("Apple's efforts

8

.... to justify Dr. Vellturo's design-around period for his lost
losl profits calculation are contrary to the

9

Court's recent ruli
ng in NDCA I that, as a matter of
oflaw,
law, the design-around
design-a round period must commence
ruling

LO
10

oflhe
the first
first infringement,
infr in gement, not on the notice
noti ce date.").
on the date of

ro

cc
,_

11
II

Neither party has timely raised this issue to the Court, for
fo r Apple did not supplement Dr.
Or.

o
ro

uu
UU

12
12

Vcl1turo'ss opinions for the '647 patent until February 17,2014,
Vellturo'
17, 2014, more than three months after the

·--.-....U
·--·-.-.....

13

Apple IIOrder.
Order. However, it is far too late for Samsung
Salllsung to reverse positions
pOSitions regarding design-around

14

I3ccause Samsung has failed to provide a sufficient legal basis for excluding Dr.
dates. Because
Dr. Vellturo's
Vellturo 's

...,C!)
.;.: eJ

c:: ....

15

Supplemental Report in light of the Apple I Order, Samsung's
Samsun g' s motion
mot ion to strike is DENIED
DEN IED with

....
"'-5
.,,"
"0""
C!)
• 0

16

respect to opinions on off-the-market
patenlo
oIT-the-market lost profits for the '647 patent.

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~

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:-.: ;Z
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0
u...
"-

17

B. Reliance on Other Discovery

18

In a footnote, Samsung also seeks to preclude
precl ude Dr. Vellturo from relying
re lyin g on (1)
(I) new

19

of Go ogle employees, (2) new data about certain accused
acclised Apple
App le products, and (3)
depositions ofGoogle

20

adjustments to reasonable royalty calculations
calcu lations for time periods based on new Samsung
Samsu ng product

21
21

n. l . Samsung fails to demonstrate
data. See Mot. at 2 n.l.
demonstrat e that any of these updates are impermissible.

22

dam ages calculations
ca lculations based on
The parties plainly agreed to supplement their experts' damages

23

updated sales in
information.
formation. See ECrECF No.
No . 1235 at2
at 2 (''The
("The parties agree to exchange supplemental

24

calculations of damages incorporating Updated Financial Data .... ").
"). Each of Dr.
Dr. Vellturo's
Vellturo'$

25

supplementations to
10 wh
which
ich Samsung
Sam sung objects appears
appea rs to fall within the scope of the pa1ties'
parties'

26

llturo identifies two Google depositions that took place
stipu
lation. Regarding
stipulation.
Regardin g depositions, Dr. Ve
Vcllturo

27

on August 16,20
16, 2013,
13, shortly
shortl y after his Opening Report, and reserves the ability
abil ity to cite those

28

7
Case No.: 12-CV-00630-LHK
12·CV -00630-LHK
ORDER DENYING SAMSUNG'S
SAMSVNG'S MOTION TO STRIKE PORTIONS Of
or DR. VELL
VELLTURO'S
TURO'S SUPPLEMENTAL
REPORT
EXPERT REPORT

A136.7

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Document: 40

Page: 228

ase5:12-cv-00630-LHK
ase5:12·cv·00630·LHK Document1537 'SEALED'
*SEALED*

Filed: 03/06/2015

Filed03/28/14 PageS
Page8 of 8

materials to "reinforce" his original opinions. See Vellturo Supp. Rpt. ~ 28 &
& nn. 22, 23. Thus,
2

op inions based on these materials, and the
Dr. Vellturo does not appear to introduce new opinions
lhe

3

depositions that took place seven months ago cannot be a surprise to Samsung. As to new data

4

about Apple products, Dr. Vellturo claims to update market share calculations
calcul ations "using methods

5

"cxclud[ing] products for which I[
previously disclosed"
disclosed" to account
accoulll for new numbers, such as "exclud[ing]

6

observe no unit sales by the end of20
of2013."
13." Id.
Id ~~,221-25.
1-25. Dr. Vellturo also updates his reasonable

7

royalty conclusions about customers
clIstomers repurchasing smartphones based on Samsung's newly

8

produced data. See id.
it!.

9

impermissible uses of new data, particularly given Apple's representation that
lhat these changes

~~

14-15. Samsung offers
explanation
otTers no exp
lanat ion for why these updates would be

[0
10

asser1ed damages. See Opp'n at
aI411.3.
4 n.3. Accordingly, Samsung's
Salllsung's motion to
actually reduce Apple's asserted

E

II

strike these modifications to Dr. Vellturo's
Vellturo' s Opening Report is DENIED.

uu
.... <+-<

0

ctl

12

IV.

·c u
....
A .~

~

0

13
IJ

"'

L..

14

Supplemental Report is DENIED.

-E
Z:a;

15

IT IS SO ORDERED.
O RIJ ER ED.

"O t::

16

Dated: March 28, 2014

.~

t<S
:::: :.=

·--·~0

CONCLUSION

For the foregoing reasons, Samsung's
SalllSung's motion to strike portions of Dr. Vellturo's
Ve lltu ro's

rf.l ..S::
Q.l

0

.<::: Z

c a)
:::>;5

17

United States District Judge

L..

0

4..

18
19

20

21
22
23
24
25

26
27

28

8
12-CV-00630-LHK
Case No.: 12-CV-0063G-LHK
STRI KE PORTIONS OF
or DR. VELL TURO'S SUPPLEMENTAL
ORDER DENYING SAMSUNG'S MOTION TO STRIKE
EXPERT REPORT

A136.8

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Document:
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229 Filed: 03/06/2015
Case5:12-cv-00630-LHK
Document1532
Page1 of 14

1
2
3
4
5
6
7
8
9

United States District Court
For the Northern District of California

10

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

11
12
13
14
15
16
17
18
19
20
21

)
)
Plaintiff and Counterdefendant,
)
)
v.
)
)
SAMSUNG ELECTRONICS CO., LTD., a
)
)
Korean corporation; SAMSUNG
ELECTRONICS AMERICA, INC., a New York )
corporation; and SAMSUNG
)
TELECOMMUNICATIONS AMERICA, LLC, )
a Delaware limited liability company,
)
)
Defendants and Counterclaimants. )
)
APPLE, INC., a California corporation,

Case No.: 12-CV-00630-LHK
ORDER CONSTRUING ’239 PATENT
CLAIM 15

Samsung has requested that the Court construe an additional limitation in claim 15 of the

22

’239 patent: “means for transmission of said captured video over a cellular frequency.” Samsung

23

also requests permission to amend its infringement contentions to include theories for means-plus-

24

function equivalents and the doctrine of equivalents for claim 15. The parties have submitted

25

briefs and expert declarations in support of their respective positions. The Court has reviewed the

26

parties’ submissions and, in the interest of resolving any potential dispute prior to trial (cf. O2

27

Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362-63 (Fed. Cir. 2008)), now

28

construes the limitation at issue.
1
Case No.: 12-CV-00630-LHK
ORDER CONSTRUING ’239 PATENT CLAIM 15

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2

BACKGROUND
On April 10, 2013, the Court issued its Order Construing Disputed Claim Terms, following

3

a claim construction hearing and full briefing from the parties. ECF No. 447 (“Order”). At the

4

time, Samsung asserted claims 1 and 15 of the ’239 patent. Among the disputed terms, the Court

5

construed certain means-plus-function limitations in claim 1 of the ’239 patent, but the parties did

6

not request construction of any terms in claim 15 of the ’239 patent. See Order at 64; Joint Claim

7

Construction Statement at 9-40 (ECF No. 300-1). Since the Court issued its Order, the parties have

8

filed multiple rounds of motions seeking to exclude opposing expert opinions based on the Court’s

9

existing claim construction rulings. See ECF Nos. 878-4, 877-4, 1202-3. Those disputes were

10
United States District Court
For the Northern District of California

I.

resolved well before the March 5, 2014 pretrial conference. See ECF Nos. 1127, 1301.

11

On February 4, 2014, the parties filed case-narrowing statements pursuant to the Court’s

12

case management orders, limiting their asserted patent claims to five claims per side. Samsung

13

elected claims 1 and 15 of the ’239 patent among its five claims. See Samsung’s Feb. 4, 2014 Case

14

Narrowing Statement at 2 (ECF No. 1236). However, at the March 5, 2014 pretrial conference,

15

Samsung sua sponte indicated that it might voluntarily withdraw some asserted claims for trial and

16

would do so by March 7. See ECF No. 1411 at 6:14-24.

17

On March 7, 2014, the parties sua sponte filed a stipulation in which Samsung agreed to

18

withdraw several asserted patent claims, including claim 1 of the ’239 patent, leaving claim 15 as

19

the only asserted claim of the ’239 patent. See ECF No. 1419. On March 13, 2014, Samsung filed

20

an “administrative motion” for additional claim construction of “means for transmission of said

21

captured video over a cellular frequency” as recited in claim 15, requesting briefing and a hearing

22

prior to trial, which will begin on March 31, 2014. See ECF No. 1461. Apple responded by

23

contending that additional claim construction was not necessary in light of the Court’s construction

24

of claim 1, but requesting permission for a summary judgment motion and hearing regarding

25

noninfringement of claim 15 should the Court construe the terms at issue. See ECF No. 1465. The

26

parties agree that claim 15 presents a means-plus-function limitation and concur on the claimed

27

function, but disagree about the scope of the corresponding structure. The parties also disagree

28
2
Case No.: 12-CV-00630-LHK
ORDER CONSTRUING ’239 PATENT CLAIM 15

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about whether Samsung previously waived its ability to assert equivalents (either means-plus-

2

function or under the doctrine of equivalents) for claim 15.

United States District Court
For the Northern District of California

3

The Court allowed the parties to submit short briefs regarding claim construction and

4

Samsung’s ability to amend its infringement contentions, but denied Apple’s request for another

5

round of summary judgment briefing on the eve of trial. See ECF No. 1470. Samsung filed its

6

brief on March 19, 2014. See ECF No. 1484 (“Samsung Br.”). Apple filed a response on March

7

21, 2014. See ECF No. 1491 (“Apple Br.”).

8

II.

LEGAL STANDARDS

9

As before, the Court construes patent claims as a matter of law based on the relevant

10

intrinsic and extrinsic evidence. See Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp.,

11

No. 2012-1014 (Fed. Cir. Feb. 21, 2014) (en banc); Phillips v. AWH Corp., 415 F.3d 1303 (Fed.

12

Cir. 2005) (en banc); see also Order at 2. Claim construction of means-plus-function limitations

13

pursuant to 35 U.S.C. § 112(f) requires identifying the claimed function and the corresponding

14

structure for performing that function in the patent’s disclosure. See Noah Sys., Inc. v. Intuit Inc.,

15

675 F.3d 1302, 1311 (Fed. Cir. 2012); see also Order at 47.

16

“Amendment of the Infringement Contentions or the Invalidity Contentions may be made

17

only by order of the Court upon a timely showing of good cause.” Patent L.R. 3-6. This Court’s

18

rules have required the parties to give “early notice of their infringement and invalidity

19

contentions, and to proceed with diligence in amending those contentions when new information

20

comes to light in the course of discovery.” O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467

21

F.3d 1355, 1365-66 (Fed. Cir. 2006). Accordingly, determining whether “good cause” justifies

22

amendment of contentions in a particular situation depends on the amending party’s diligence and

23

the degree of prejudice to other parties. See Order Re: Samsung’s and Apple’s Mots. for Leave at

24

2-4 (ECF No. 636) (collecting cases). “Only if the moving party is able to show diligence may the

25

court consider the prejudice to the non-moving party.” Genentech, Inc. v. Trs. of the Univ. of Pa.,

26

No. 10-CV-02037, 2011 U.S. Dist. LEXIS 108127, at *4 (N.D. Cal. Sept. 16, 2011).

27
28
3
Case No.: 12-CV-00630-LHK
ORDER CONSTRUING ’239 PATENT CLAIM 15

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1

DISCUSSION

2

A.

3

The only limitation at issue is “means for transmission of said captured video over a

Claim Construction

4

cellular frequency,” recited in ’239 patent claim 15. Both claim 1, which the Court previously

5

construed, and claim 15 are reproduced below for reference.

6

Claim 1
1. An apparatus for transmission of data,
comprising:

Claim 15
15. An apparatus for transmission of data,
comprising:

a mobile remote unit including:
a.) means for capturing, digitizing, and
compressing at least one composite signal;
b.) means for storing said composite signal;
c.) means for transmitting said composite
signal;

a computer including a video capture module to
capture and compress video in real time;

7
8
9
10
United States District Court
For the Northern District of California

III.

11
12
13
14

means for transmission of said captured
video over a cellular frequency.

a host unit including:
a.) means for receiving at least one
composite signal transmitted by the remote
unit;

17

a playback unit including:
a.) means for exchanging data with said host
unit;
b.) means for storing the composite signal
received by the host unit;
c.) means for decompressing said composite
signal.

18

Samsung and Apple agree that the contested phrase (bolded above) is a means-plus-function

19

limitation under § 112(f), and that the claimed function is “transmission of said captured video over

20

a cellular frequency.” See Samsung Br. at 1; Apple Br. at 1. However, the parties identify

21

different sets of corresponding structure:

22

Claim Language

23

“means for transmission
of said captured video
over a cellular
frequency”

15
16

24
25

Samsung’s Proposed
Construction
structure: “one or more modems
connected to one or more cellular
telephones or cellular radio
transmitters”

26
27
28
4
Case No.: 12-CV-00630-LHK
ORDER CONSTRUING ’239 PATENT CLAIM 15

A140

Apple’s Proposed Construction
structure: “one or more modems
connected to one or more cellular
telephones, and software
performing a software sequence of
initializing one or more
communications ports on the
remote unit, obtaining the stored
data file, and transmitting the
stored data file”

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1

Samsung Br. at 1. Both constructions include the structure of “one or more modems connected to

2

one or more cellular telephones,” but otherwise diverge. There are two primary points of

3

disagreement: (1) whether the claimed structure also includes “cellular radio transmitters”

4

(Samsung’s proposal), and (2) whether software of any kind is claimed (Apple’s proposal).

United States District Court
For the Northern District of California

5

The parties’ prior dispute regarding claim 1 of the ’239 patent provides some context for

6

this claim construction. Previously, the Court construed the similar limitation in claim 1 of “means

7

for transmitting said composite signal” to mean “one or more modems connected to one or more

8

cellular telephones, telephone lines, and/or radio transmitters, and software performing a software

9

sequence of initializing one or more communications ports on the remote unit, obtaining the stored

10

data file, and transmitting the stored data file.” Order at 55-64. Thus, the Court has already

11

determined that certain types of hardware and software from the specification correspond to

12

“means for transmitting” a signal. Id.

13
14

1.

“Cellular Radio Transmitters”

Samsung, citing expert opinion, argues that the claimed structure must include “cellular

15

telephones or cellular radio transmitters” because a person of ordinary skill would have understood

16

that a cellular radio transmitter performs the transmission in a cellular telephone. Samsung Br. at

17

1; Decl. of Prof. Dan Schonfeld (ECF No. 1484-1, “Schonfeld Decl.”) ¶ 3. Samsung also argues

18

that the doctrine of claim differentiation favors its definition. Claim 16 depends from claim 15 and

19

recites “a cellular telephone.”

20

Claim 15
15. An apparatus for transmission of data,
comprising:

21
22
23
24

Claim 16
16. The apparatus of claim 15 wherein the
means for transmission of said captured video
over a cellular frequency includes;

a computer including a video capture module to
capture and compress video in real time;

at least two interfaces operating in conjunction
with said computer;

means for transmission of said captured
video over a cellular frequency.

a cellular telephone connected to each said
interface.

25
26
27
28

Generally, a dependent claim is construed to be narrower and distinct from its corresponding
independent claim. See InterDigital Commc’ns, LLC v. Int’l Trade Comm’n, 690 F.3d 1318, 132425 (Fed. Cir. 2012). According to Samsung, claim 15’s structure cannot be limited to cellular
5
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telephones because claim 16 also recites “a cellular telephone,” and claim differentiation requires

2

that the two claims be distinguishable. See Samsung Br. at 2.

3

Samsung’s positions are unpersuasive. First, the intrinsic evidence does not support

4

Samsung’s proposal. As Apple points out, the phrase “cellular radio transmitter” appears nowhere

5

in the entire patent. Also, if Samsung is correct that a cellular telephone necessarily comprises a

6

cellular radio transmitter, then Samsung’s proposed language of “cellular telephones or cellular

7

radio transmitters” is superfluous. Therefore, it would be incorrect to read the structure of “cellular

8

radio transmitters” into claim 15, for § 112(f) does not “permit incorporation of structure from the

9

written description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v.

United States District Court
For the Northern District of California

10
11

Great Plains Chem. Co., Inc., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
Nor do principles of claim differentiation require Samsung’s construction. Claim 16

12

specifies additional limitations not found in claim 15: “at least two interfaces” and “a cellular

13

telephone connected to each interface” (emphasis added). These extra limitations differentiate

14

claim 16 from claim 15, and also require that a cellular telephone be connected to each interface,

15

which adds an additional restriction on cellular telephones that does not exist in claim 15.

16

Furthermore, this Court previously observed that “the presence of a dependent claim reciting a

17

structure does not override the requirements of § 112, ¶ 6.” Order at 48 (citing Laitram Corp. v.

18

Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991)). Here, as explained above, the specification

19

provides no basis for reading “cellular radio transmitters” into the claimed structure.

20

Samsung’s unexplained delay also undermines its arguments

Samsung waited until less

21

than three weeks before trial and more than a year after claim construction briefing and the hearing

22

to take this new position. Indeed, Samsung did not propose “cellular radio transmitters” in its

23

construction of the similar “means for transmitting” limitation in claim 1. See Samsung’s Opening

24

Claim Construction Br. at 22 (ECF No. 335); see generally Feb. 21, 2013 Tr. of Proceedings (ECF

25

No. 429). Samsung’s late efforts to construe claim 15 appear to be a last-ditch attempt to seek

26

reconsideration of the Court’s construction of claim 1, which Samsung no longer asserts.

27

As to extrinsic evidence, the parties provide only brief expert declarations. These opinions

28

are conclusory and provide little guidance. Samsung’s expert opines that a person of ordinary skill
6
Case No.: 12-CV-00630-LHK
ORDER CONSTRUING ’239 PATENT CLAIM 15

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would know that a cellular radio transmitter “is the actual hardware enabling transmission of

2

information” in a cellular telephone, but provides little support for this position. Schonfeld Decl.

3

¶ 3. As explained above, even if all cellular telephones have cellular radio transmitters, then

4

Samsung’s proposed construction is superfluous. Apple’s expert repeats portions of the

5

specification, noting for example the absence of “cellular radio transmitter” in the specification.

6

See Decl. of James Storer, Ph.D. (ECF No. 1491-2, “Storer Decl.”) ¶¶ 10-11. In short, neither

7

side’s expert provides a dispositive opinion that alters the conclusion supported by the

8

specification that “cellular radio transmitters” is not part of the required structure for transmission

9

of signals.

10

The parties appear to agree that claim 15’s structure also excludes conventional telephone

11

lines and radio transmitters, which are structures that the Court included in its construction of the

12

similar limitation of “means for transmitting said composite signal” in claim 1. The Court

13

construed that limitation in claim 1 to encompass “one or more modems connected to one or more

14

cellular telephones, telephone lines, and/or radio transmitters.” In doing so, the Court observed

15

that claim 1 does not restrict the type of frequency used for transmitting a signal, and the ’239

16

patent’s specification also discloses the use of land lines and radio transmissions, in addition to

17

cellular telephones. Order at 57-59; see also ’239 Patent col.2 ll.29-31 (“A further object is to

18

provide an apparatus that will transmit audio/video files for immediate broadcast over radio

19

frequencies, cellular telephone frequencies, or land telephone lines.”). By contrast, claim 15 limits

20

“means for transmission” to “over a cellular frequency.” Accordingly, neither party contends that

21

claim 15’s structure comprises conventional telephone lines and radio transmitters.

22

In light of the foregoing, the hardware structure corresponding to “means for transmission

23

of said captured video over a cellular frequency” is properly construed as “one or more modems

24

connected to one or more cellular telephones.”

25

2.

Software as Part of the Corresponding Structure

26

Samsung argues that claim 15’s structure should not be restricted to software of any kind

27

because software is not necessary for transmission of captured video. Samsung Br. 3. Although

28

the Court construed claim 1’s “means for transmitting” to require software (Order at 64), Samsung
7
Case No.: 12-CV-00630-LHK
ORDER CONSTRUING ’239 PATENT CLAIM 15

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points out that claim 1 includes the terms “remote unit” and “host unit,” and the specification

2

discusses transmission software only in the context of communication between a “remote unit” and

3

“host unit.” E.g., ’239 Patent col.8 ll.23-25 (“Transfer software sequence B enables the remote

4

unit to communicate with the host unit to transmit a stored data file using the system hardware.”).

5

Samsung contends that claim 15 is different because it “does not require transmitting from a

6

remote unit to a host unit,” and therefore does not require software. Samsung Br. 3.

United States District Court
For the Northern District of California

7

Apple proposes that claim 15 be construed to require “software performing a software

8

sequence of initializing one or more communications ports on the remote unit, obtaining the stored

9

data file, and transmitting the stored data file.” Apple asserts that the ’239 patent states that

10

software is necessary for any transmission, and that the “computer” of claim 15 corresponds to the

11

“remote unit” in the specification, such that the specification’s discussion of transmission software

12

applies equally to claim 15. See Apple Br. at 2.

13

The Court agrees that claim 15’s means-plus-function structure requires software for the

14

same reasons that applied to claim 1. As explained above, the Court previously determined that

15

claim 1’s “means for transmitting” must include software because the specification teaches that a

16

software sequence is necessary for transmitting a signal in the context of the invention. See Order

17

at 61-63. Under the preferred embodiment, the ’239 patent discloses that software is required for

18

transmission: “Transfer software sequence B enables the remote unit to communicate” and

19

“contains all of the instructions necessary” for communication. ’239 Patent col.8 ll.23-30

20

(emphases added); see also id. col.8 l.45

21

col.2 l.24 col.3 l.14 (“Summary of the Invention”; “a computer program sequence . . . sends

22

[data] to one or more computer interfaces which transmit the data file”). Samsung is correct that

23

claim 15 does not recite a “remote unit” or “host unit,” which appear in both claim 1 and the

24

specification. However, Samsung fails to demonstrate that this difference shows that software is

25

unnecessary for “transmission” as recited in claim 15, or that the specification supplies any other

26

structure for performing an alternate type of transmission that does not involve a “remote unit” and

27

“host unit.” Indeed, the term “transmission” implies communication from one unit to another, and

28

the specification explains that software is necessary to enable such communication. E.g., id. col.8

col.10 l.2 (discussing “Transfer Software Sequence B”),

8
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ll.25-30. Samsung also suggests that “transmitting” (claim 1) and “transmission” (claim 15)

2

require different constructions (ECF No. 1461 at 3), but fails to explain why “transmitting”

3

involves software while “transmission” does not. See, e.g., AIA Eng’g Ltd. v. Magotteaux Int’l S/A,

4

657 F.3d 1264, 1275 (Fed. Cir. 2011) (construing “homogeneous solid solution” and

5

“homogeneous ceramic composite” as “synonymous”).

United States District Court
For the Northern District of California

6

Samsung next argues in the alternative that, if claim 15’s structure is construed to include

7

software, the software “should be restricted solely to software to perform the claimed function,”

8

which “does not include initializing a communications port or obtaining the stored data file.”

9

Samsung Br. at 4. Accordingly, Samsung proposes the alternative construction of “software that

10

transmits the file.” Id. Apple counters that the same software sequence for “initializing” and

11

“obtaining” in claim 1 is also necessary for “transmission” in claim 15. See Apple Br. at 1. Apple

12

also argues that claim 15’s software requires a sequence for “obtaining the stored data file” because

13

the “captured video” recited in claim 15 must be a stored data file. Id. at 1-3. Apple points out that

14

the ’239 patent applicants relied on creation of a data file to distinguish prior art. Id.

15

The Court agrees in part with Apple. Samsung provides no persuasive reasons why the

16

software sequence that the Court identified for claim 1 is not also required for claim 15. The Court

17

previously explained in detail why the software sequence in claim 1 is necessary, not optional, for

18

transmitting a signal. See Order at 61-62 (“[T]he other steps performed by software sequence B

19

initializing communication ports, obtaining the stored data file, and transmitting the stored data

20

file all appear to be necessary for any transmission . . . .”). Specifically, the written description

21

lists five software algorithms in “transfer software sequence B”: “[1] initialize the communications

22

ports on the remote, [2] obtain a cellular connection with each cellular telephone to the host unit,

23

[3] obtain the stored data file, [4] initiate file splitting sequence C, and [5] transmit the split data

24

file.” ’239 Patent col.8 ll.25-30. However, not all five algorithms are necessary for transmission

25

the step of “file splitting” need not occur, or may occur prior to transmission. E.g., id. col.3 ll.22-

26

23 (“In an alternate embodiment, a basic one, the signal is not divided before it is transmitted.”);

27

see Order at 62. Moreover, claim 17 depends from claim 15 and includes “means for splitting the

28

captured video into pieces for transmission,” which further confirms that claim 15 does not require
9
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software for initiating file splitting. By contrast, the steps of initializing the communications ports

2

and obtaining the data for transmission are required for the transmission process. See id. at 62-63.

3
4

frequency,” while claim 1 is not. For claim 1, the Court previously concluded that the

5

specification’s algorithm to “obtain a cellular connection with each cellular telephone to the host

6

unit” (’239 Patent col.8 ll.27-28) was not necessary structure because claim 1 encompasses

7

transmitting over telephone lines and radio transmitters, not just cellular telephones:

8

10

[T]he transmission may take place using a radio transmitter instead of a traditional
phone or cell phone. Thus, the software algorithm of “obtain[ing] a cellular
connection with each cellular telephone” relates only to a particular embodiment of
the invention using cell phones, and is not necessary for the embodiments using a
radio transmitter.

11

Order at 63. Here, because claim 15 is limited to cellular frequencies, this software algorithm for

12

obtaining a cellular connection would be necessary for transmission “over a cellular frequency.”

13

Therefore, the Court construes claim 15 to include this software algorithm.

9

United States District Court
For the Northern District of California

However, as explained above, claim 15 is limited to transmission “over a cellular

14

The Court further disagrees with Apple’s proposed construction because it includes terms

15

from claim 1 that do not appear in claim 15. Apple proposes “software performing a software

16

sequence of initializing one or more communications ports on the remote unit, obtaining the stored

17

data file, and transmitting the stored data file” (emphases added). However, neither “remote unit”

18

nor “stored data file” (or “storing”) appears in claim 15:

19

Claim 1
1. An apparatus for transmission of data,
comprising:

Claim 15
15. An apparatus for transmission of data,
comprising:

a mobile remote unit including:
a.) means for capturing, digitizing, and
compressing at least one composite signal;
b.) means for storing said composite signal;
c.) means for transmitting said composite
signal;

a computer including a video capture module to
capture and compress video in real time;

20
21
22
23
24
25
26
27

means for transmission of said captured video
over a cellular frequency.

Therefore, claim 15 provides no antecedent basis for either “the remote unit” or “the stored data
file.” See Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 782 (Fed. Cir. 2010)
(rejecting claim construction that ignored antecedent basis).

28
10
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2

unit,” claim 15 recites that the “means for transmission” are included in “[a]n apparatus for

3

transmission of data.” Therefore, the “one or more communications ports” in Apple’s proposed

4

construction must refer to ports in the claimed apparatus for transmission.

5

Claim 1 also includes “means for storing said composite signal,” which does not appear in

6

claim 15. Instead, claim 15 recites a computer with a video capture module “to capture and

7

compress video,” with means for transmission of “said captured video.” Accordingly, the

8

information that is obtained and transmitted in claim 15 must be “said captured video.”

9

United States District Court
For the Northern District of California

Where claim 1 states that the “means for transmitting” is included in a “mobile remote

Apple posits that “[t]he disclosed structure for ‘captured video’ is a stored data file.” Apple

10

Br. at 2. Apple’s argument is that the ’239 patent applicants stated during prosecution that their

11

invention requires a stored data file because they distinguished a prior art reference on that basis:

12

“Thus, Gattis does not disclose the creation of a data file as required by Applicants’ claims.” ECF

13

No. 1491-3 (Feb. 2, 1996 amendment, SAMNDCA630-00832606). However, the excerpted

14

prosecution history also shows that the applicants were discussing then-pending claims 1 and 12,

15

and claim 12 specifically recited “a data file.” Id. (SAMNDCA630-00832605). There is no

16

indication that the applicants were addressing claim 15 as issued or the term “said captured video.”

17

Accordingly, the Court rejects Apple’s prosecution history argument.

18

For the reasons above, the Court provides the following construction of the software

19

structure: “software performing a software sequence of initializing one or more

20

communications ports on said apparatus, obtaining a cellular connection, obtaining said

21

captured video, and transmitting said captured video.”

22

B.

23

In its motion requesting construction of claim 15, Samsung sought permission to argue

24

infringement under the doctrine of equivalents, if the Court did not adopt Samsung’s proposed

25

construction. See Samsung’s Admin. Mot. for Limited Additional Claim Construction at 4 n.1

26

(ECF No. 1461). In its claim construction brief, Samsung further clarifies that it wants to amend

27

its infringement contentions to assert equivalents under § 112(f) in addition to the doctrine of

28

equivalents. See Samsung Br. at 5. Apple responds that Samsung waived its right to amend when

Amendment of Samsung’s Infringement Contentions for Claim 15

11
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Samsung previously withdrew equivalents contentions for claim 15 and failed to seek additional

2

claim construction until the eve of trial. See Apple Br. at 4-5.

3
4

below), the Court concludes that Samsung had not preserved the right to assert equivalents (for

5

means-plus-function structure or the doctrine of equivalents) prior to its present request for

6

additional claim construction. The parties have repeatedly litigated the proper scope of Samsung’s

7

infringement contentions, and Samsung failed to assert its equivalents theories for claim 15 until

8

now, after sua sponte dropping claim 1 voluntarily from the case.

9

United States District Court
For the Northern District of California

Based on the parties’ litigation conduct regarding infringement contentions (discussed

After the Court issued its claim construction Order, the parties moved for leave to amend

10

their respective infringement contentions. On June 26, 2013, Judge Grewal granted and denied in

11

part Samsung’s request to assert equivalents for the ’239 patent. See ECF No. 636. Judge Grewal

12

rejected Samsung’s general attempt to include the doctrine of equivalents for all asserted patents

13

and § 112(f) equivalents for all means-plus-function limitations not yet construed, finding that

14

Samsung did not have “good cause to add DOE and Section 112(f) equivalents theories” at that

15

time. Id. at 5, 8. Samsung concedes that it lost its attempt to assert equivalents for claim 15:

16

“Judge Grewal denied Samsung’s amendments for claim 15 because Samsung’s request was

17

‘premature.’” Samsung Br. at 5 & n.3. However, Judge Grewal advised: “If and when Samsung

18

faces an adverse construction, it may seek leave to amend in light of that adverse construction.”

19

ECF No. 636 at 8.

20

Meanwhile, Judge Grewal partially granted Samsung’s specific request to assert both

21

§ 112(f) equivalents and the doctrine of equivalents for the “means for transmitting” limitation in

22

claim 1 of the ’239 patent because “the claim construction order provides good cause for the

23

proposed amendments,” but did not permit Samsung to include the vague phrase “and/or other

24

processes.” Id. at 17-18. Samsung specifically identified this limitation and presented arguments

25

as to why it should be allowed to adjust its contentions in response to the Court’s claim

26

construction. Id.

27
28

On November 5, 2013, both parties filed motions to strike certain infringement contentions.
ECF Nos. 877-4, 878-4. On December 13, 2013, the parties submitted a joint chart of issues
12
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disputed in their motions to strike, noting that Apple’s motion targeted Samsung’s equivalents

2

arguments for claim 15. ECF No. 1056 at 3, 4. The chart also included the following agreement

3

on equivalents theories in light of Judge Grewal’s June 26, 2013 Order:

4

9

Both Apple and Samsung agree to withdraw all doctrine of equivalents and
structural equivalents arguments under Section 112(f) in their respective expert
reports that are subject of the parties’ pending motions to strike. For clarity, Apple’s
motion to strike did not include and this agreement does not extend to the “means
for capturing” and “means for transmitting” limitations that were subject to Judge
Grewal’s June 26, 2013 order. (Dkt. No. 636.) Subject to the resolution of Apple’s
pending Daubert motion, Samsung can argue both doctrine of equivalents and
structural equivalents under Section 112(f) for these terms. This agreement does not
preclude the parties from seeking leave to amend their infringement contentions to
include doctrine of equivalents or structural equivalents arguments under Section
112(f) if the Court construes terms adverse to a party in the future.

10

Id. at 3 n.4. Therefore, Samsung expressly withdrew all equivalents contentions including those

11

for claim 15 other than the same two specific limitations in claim 1 of the ’239 patent permitted

12

by Judge Grewal’s June 26, 2013 Order.

5
6
7

United States District Court
For the Northern District of California

8

13

While the June 26, 2013 Order and the parties’ agreement allowed the parties to seek leave

14

to amend contentions in response to later claim constructions, Samsung has failed to demonstrate

15

that it exercised the necessary diligence to do so. To obtain leave to amend, the moving party must

16

“proceed with diligence in amending those contentions.” O2 Micro, 467 F.3d at 1365-66; Patent

17

L.R. 3-6. Here, Samsung has asserted claim 15 since before claim construction (see ECF No. 383

18

at 2-3 (Feb. 18, 2013)), but never requested construction of any terms until March 13, 2014 after

19

rulings on summary judgment, Daubert, and in limine motions; almost a year after the claim

20

construction Order; and less than three weeks before trial. Between Judge Grewal’s June 26, 2013

21

Order and Samsung’s March 13, 2014 motion for additional claim construction, Samsung did not

22

seek claim construction for claim 15 or leave to assert equivalents theories. See, e.g., Acer, Inc. v.

23

Tech. Props. Ltd., No. 5:08-CV-877, 2010 U.S. Dist. LEXIS 142472, at *17 (N.D. Cal. Sept. 10,

24

2010) (denying leave to amend infringement contentions; “Because TPL has not demonstrated

25

diligence, ‘the inquiry should end.’” (citation omitted)). Nor does Samsung identify any new

26

evidence that would justify this late request. The fact that Samsung sua sponte voluntarily

27

withdrew claim 1 of the ’239 patent does not permit Samsung to wholly revisit claim construction

28

and pose new infringement theories.
13
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United States District Court
For the Northern District of California

1

Furthermore, Samsung’s belated tactics would now unfairly prejudice Apple and tax the

2

resources of the Court. Jury selection will begin on Monday, March 31, 2014. Instead of

3

narrowing the issues for trial, Samsung now seeks to expand them by introducing new

4

infringement theories. Samsung contends that Apple faces no prejudice because both parties’

5

experts already opined on equivalents for claim 15. See Samsung Br. at 5 n.3. However, Apple

6

responds that it would “need to re-consider its exhibit list, and submit new jury instructions,” and

7

that it relied on Samsung’s withdrawal of its equivalents contentions for claim 15. Apple Br. at 5

8

& n.7. Samsung would almost certainly seek to revise its own proposed exhibits and jury

9

instructions in response to any changes that Apple makes. Moreover, the Court has already ruled

10

on summary judgment, Daubert motions, and motions in limine. With opening statements only

11

days away, the Court will not entertain new rounds of motions for leave to amend infringement

12

contentions, witness and exhibit lists, and jury instructions based on theories that Samsung could

13

have raised long ago.

14

For the foregoing reasons, Samsung’s request for leave to amend its infringement

15

contentions to include equivalents theories for claim 15 is DENIED.

16

IV.

17

CONCLUSION
In summary, and for the reasons stated herein, the Court construes the relevant limitation of

18

’239 patent claim 15 as follows:

19

Patent
5,579,239

20

Disputed Term
“means for transmission of said capture
video over a cellular frequency”

21
22
23
24
25
26

Court’s Construction
“one or more modems connected to one
or more cellular telephones, and
software performing a software
sequence of initializing one or more
communications ports on said
apparatus, obtaining a cellular
connection, obtaining said captured
video, and transmitting said captured
video.”

IT IS SO ORDERED.
Dated: March 28, 2014

________ ________________________
LUCY H. KOH
United States District Judge

27
28
14
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ORDER CONSTRUING ’239 PATENT CLAIM 15

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ase5:l2-cv-00630-LHK Document1151
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*SEALED*

Filed: 03/06/2015

FiledOl/21/14
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-00630-LHK
Case No.:
No.: 12-CV
12-CV-00630-LHK
ORDER
ORD ER GRANTING-IN-PART
G RANTING- IN-PART AND
DENYING-IN-PART
DENYIN G-IN-PART APPLE'S MOTION
FO R PART
IAL SUMMARY
FOR
PARTIAL
JJUDGMENT
UDGMENT AND DENYING
DENY ING
SAMSUNG
SAMSUNG'S
' S MOTION FOR PARTIAL
PA RTIAL
SUMMARY JJUDGMENT
UDGMENT

[UNDER SEAL]
SEAL)

_____________________________

The parties in th
this
is patent suit have cross moved for part
partial
ial summary
su mmal), judgment on various

22

PlaintilTand
pm1ia ] summary
issues. Plaintiff
and Counterdefcndant
Counterdefendant Apple, Inc. ("Apple") filed a motion for pattial

23

judgment against Defendants and Countcrclaimants
Counterclaimants Samsung E
Electron
lectronics
ics Co., Ltd.; Samsung

24

Inc.; and Samsung Telecommuni
Electronics America, fnc.;
Telecommunications
cations America, LLC (collective
(collectively
ly

25

"Samsung")
"Sa msung") oonn October 10,2013. See ECFNo.
ECF No. 803-4 ("Apple MSJ").
MSJ "). Samsung filed a motion
mo tion for

26

partial sum
mary judgment on the same date. See ECF
summary
Ecr No. 805-3 ("Samsung MSJ"). The parties
patiies

27

filed corresponding oppositions
oppo:;ilions on November 1,
1,2013,
2013, see ECF
Ec r Nos.
No:;. 854-3 ("Samsung
(" Samsung Opp'n"),

28

853-3 ("Apple
("App le Opp' n"), and replies on November 14,2013, see ECFNos.
ECr Nos. 944
944-4
-4 ("Apple Reply"),

I
Case No.: 12-CV-00630-LHK
12-CY-00630-LHK
DENYING-IN-PART APPLE'S MSJ
MSl AND DENYING SAMSUNG'S
SAM SUNG'S MSJ
MSl
ORDER GRANTING-IN-PART AND DENYlNG-IN-PART

A151

Case: 15-1171

Document: 40

Page: 244

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ase5:12-cv-00630-LHK Document1151 *SEALED*

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946-3 ("Samsung Reply"). The Court heard oral
ora l arguments on these motions on December 12,
[2,
2

2013
2013.. After hearing oral argument on the matter, and reviewing the briefing by the parties, the

3

evidence offered in support of
or lhe
the briefing, and the relevant case law, the Court GRANTS
G RAN TS in part
pa!t

4

and DENIES in pa1
partt Apple's motion for
fo r summary judgment and DENIES Samsung's motion for

5

summary judgment.

6

I.
1.

BACKGROUND
BACKGROUND

At the center afthe
of the parties' dispute in this lawsuit are some of Apple and Samsung's
Samsullg's latest

7
8

smartphones, media players, tablets, and computers. The Court is also presiding over an earliersmattphones,

9

filed case between the same parties that involves older devices.
devices. See, e.g., Apple, Inc. v. Samsung

10
10

II-CV -01846,20
[3 WL 6225202 (Nov. 25, 2013).ln
2013). I n the present case, each
Electronics Co., No. 11-CV-01846,
2013

11

side's claims include allegations that the other has infringed its utility patents by using, selling,

12

offering to sell, and importing the accused devices in violation of35 U.S.c.
U.S. C. § 271. Apple moved to

13
13

preliminarily
prelim inarily enjoin Samsung's allegedly infringing sales of one of the accused products, the

14

Coutt granted Apple's preliminary injunction motion as to one of Apple's
Galaxy Nexus. T his Court

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15
15

No . 8,086,604 (the "'604 Patent"), see Apple, Inc.
Inc. v.
v. Samsung
Sa/nsung
patents-in-suit, U.S. Patent No.

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=
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0-5

16

Electronics Co., Ltd., 877 F. Supp. 2d 838 (N.D. Cal. 2012), but the Federal Circuit reversed, in

17

part because this Court erroneously construed a claim term from the ''604
Inc. v.
604 patent, see Apple inc.

18

Samsung Electronics Co., 695 F.3d 1370,
13 70, 1378 (Fed.
(Fed . Ci
Cir.r. 20
2012).
12).

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In order to stream
streamline
line the case for trial, the Court has required the parties to limit their

19
20

infringement contentions to 5 patents, 10 asserted claims, and 15 accused products per side. See

21
21

ECF No. 471 at 2.
2.\1 The parties have accordingly limited th
their
eir infringement
infri ngement contentions as follows.

22

U.S. Patent No.
No . 8,074,172 (the'" 172 Patent"); claims 1,
1,4,6,8,
4, 6, 8,
Apple currently asserts claim 18 of U.S.

23

and 9 of U.S. Patent No. 5,946,647 (the "'647 Patent");
Patent") ; claim 20 of U.S. Patent No. 7,761,414 (the

24

"'414 Patent"); claims
cla ims 24 and 25 of U.S.
U .S. Patent No. 6,847,959 (the '"959
"'959 Patent'');
Patent"); and claim 8 of

25

U.S.
U.s. Patent No. 8,046,
8,046,721
721 (the "'721
'"721 Patent") against the following Samsung products: Admire,

26

II 4G, Galaxy Nexus, Galaxy Note, Galaxy Note II , Galaxy SH,
SII , Galaxy
Conquer 4G, Dart, Exhibit fJ

27
28

1

I By February 6, 2014, the parties will be required to limit their asserted claims to 5 per side and
limit their accused products to 10 per side. See ECF No. 471 at
a12.
2.
2

Case No.: 12-CV-00630-LHK
ORDER GRANTING-IN-PART AND DENYING-IN-PART
DENYtNG-IN-PART APPLE'S MSJ AND DENYING SAiV1.SUNG'S
SAMSUNG'S MSJ

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FiledOl/21114

SU
SII Epic 4G
40 Touch, Galaxy SII Skyrocket, Galaxy S HI,
[II , Galaxy Tab 2 110.1,
0.1, Illusion, Stratosphere,
22

and Transform Ultra.
No . 786. 2 Samsung currently asserts cla
claims
ims 10 and 35 ofU.S.
o f U.S. Patent
Ultra. See ECF No.

3

No. 7,756,087 (the '"087
'''087 Patent");
Patent"); cla
claim
im I133 of U.S. Patent No.
No . 7,551,596 (the'"
(the '''596
596 Patent");

44

claims I, 14, and 15 of U.S. Patent No. 7,577,757 (the "'757
'''757 Patent"); claims 25 and 27 of U.S.
U.S .

55

''' 449 Patent"); and clai
claims
ms 1I and 15 of
o f U.S. Patent No.
No . 5,579,239 (the
Patent No. 6,226,449 (the "'449
Patent

6

'"239
'''239 Patent") against the following
following Apple
App le prod
products:
ucts: iPhone 4, iPhone 4S, iPhone 5, iPad 2, iPad 3,

77

iPad 4, iPad Mini, iPod Touch (5th Generation), iPod Touch (4th Generation), MacBook
Macl3 00k A ir,
ir,

88

Mini , iTunes (including
(i ncluding iTunes Match), and iCioud.
iCloud. See ECF No.
No. 787.
787 .
MacBook Pro, iMac, Mac Mini,

99

In a prior
pr ior order, the Cotnt
Court construed
constru ed various terms in these claims. See ECF No.
No. 447 ("Cla
("Claim
im

10

.••~t::

.....
t:. <2
="
_

0

Construction Order") .

lIIl

In its summary judgment motion, Apple asks this
th is Court to rule
ru le that various accused

12

the''172
172 Patent, clai
claim
m 1I of the '647 Patent, and cla
claim
im 20 of
orthe
the'' 414
products infringe claim 18 of the

13

obvio us claims 24 and
Patent; that two purported prior art systems fail to anticipate or render obvious
a nd 25 of

14

the '959 Patent;
Patent; and that U.S. Patent No. 7,587,446 (the "'446
'''446 Patent") antic
anticipates
ipates claims 1,
I, 14,
14 ,

15

and IISS of
ofthe
the '757 Patent.

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Samsung's summary judgment motion seeks an order from
from this Court that certain
certa in accused

16

4,)

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17

I, 4,
6, 8, and 9 of the '647 Patent; that Microsoft's Windows
products do not infi'inge
infringe claims 1,
4,6,

18

c laims 11
II and 20 of the '414 Patent; that claims 24 and 25 of the
Mobile 5.0 platform anticipates claims

19

'959 Patent are invalid as indefinite; and that claim 13 of the '596 Patent
Patent enjoys a priority date that

20

is one year earlier
earlierthan
than the date the claim was first
fi rst presented to the USPTO.
USPTO . Additional
Additional facts are
a re

2211

discussed below, as necessary, in the Court's ana
analysis.
lysis.

22

II.
II .

LEGAL STANDARD
The standard for evaluating motions for
fo r summary
su mmary judgment
j udgment is well settled and set forth

23
24

mot ion for summary
summa ry judgment, the jjudge
udge must
mu st view the
below. In addition, because, "in ruling on a motion

25

evidentiary
burden,"
evidence presented through the prism of
rden," Anderson v. Liberty
o f the substantive
substant ive evident
iary bu

26
27
28

2
2

Apple maintains that at least some
so me of these products are representative of other accused products
for purposes of Apple's infringement claims.
claims . The patties
parties are sti
stillll seek ing to reach an agreement on
Apple's representative-products contentions.
content ions.
3

Case No.: 12-CV-00630-LHK
12·CY-00630-LHK
ORDER GRANTINGGRANTING-IN-PART
IN-PART AND DENYING-IN-PART
DENYING-[N-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ

A153

Case: 15-1171

Document: 40

Page: 246

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Lobby,
Lobby, Inc.,
inc., 477 U.S. 242, 254 (1986), the Court sets for.th
for.th the substantive evidentiary burdens for
22

literal infringement and anticipation-issues
anticipation- issues common to both parties' motions.

3

A.

Summary Judgment

4

Under
Under Federal Rule of
ofeivi!
Civil Procedure
Procedu re 56(a), "[t]he court
COU I1 shall grant summary judgment if

5

the movant shows that there is no genuine dispute as to any material fact and the movant is entitled

66

to judgment as a matter
martel' of law."
law ." Material
Materi al facts are those that might affect the outcome orthe
of the case.

77

See Liberty
Uberty Lobby,
Lobby, 477 U.S. at 248. A dispute as to a material fact is "genuine"
"genuine" if
If the evidence is

8

such that "a reasonable jury could return a verdict for the nonmovitlg
nonmovit1g party." !d.
ld. The question is

9

ju ry could
cou ld reasonably find either that the [moving partyj
partyJ proved his case by the quality
""whether
whether a jury

10

fd. at 254 (emphasis
and quantity of evidence required by the governing law or that he did not." !d.

11
II

omitted). '''[A
'"[A]ll
JII justifiable inferences
in fe rences are to be drawn in [the nonmovant's]
nomnovant's] favor.'"
favor. '" United

12

ofAm. v.
v. Phelps Dodge
Dodge Corp.,
Corp. , 865 F.2d 1539, 1542 (9th Cir.
Cil". 1989) (en bane)
banc)
Steelworkers 0/

0
........
" ti
a
'C

.-.....'"' ·-"

13

at 255).
(quoting Liberty Lobby, 477 U.S. at255).

.~

14

.Q
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~ E

15

for
fo r its motion and identifying those portions of the pleadings, depositions, interrogatory answers,

<Zl~

16

admissions, and affidavits,
affidav its, if any, that it contends demonstrate the absence of a genuine issue of

17

material fact. See Celotex Corp. v. Catrett,
Calrell, 477 U.S
U.S.. 317,323
317 , 323 (1986). A party opposing a properly

18

al legations or denials of that
supported motion for summary judgment may not rest upon the mere allegations

19

party's
particularr patts
ofmatcrials
materials in the record" showing that there is
party ' s pleading, but must "cit[e] to particula
parts of

20

tr ial. Fed. R
R.. Civ
Civ.. P. 56(c)(1)(A);
56(c)(I)(A); see also Liberty
Uberty Lobby, 477 U.S. at 250. The
a genuine issue for trial.

21

opposing party need not show the issue will be resolved conclusively in its favor.
favo r. See Liberty

22

U.S.
.S. at 248-49.
248-49 . All that is nccessary
necessary is submission of sufficient evidence to create a
Lobby, 477 U

23

material factual dispute, thereby requiring a jury or judge to resolve the parties' differing versions

24

at trial. See id.

ro
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The moving party bears the initial responsibility for informing the district court of the basis

25

H.
B.

26

A party must prove patent infringement by a preponderance of the evidence. See Siemens

Literallnfringement
Literallnfringcmcnl

27

fnc. v. Saint-Gobain
Sainl-Gobain Ceramics & Plastics. Inc.,
fnc. , 637 F.3d 1269, 1279 (Fed.
Medical Solutions USA, Inc.

28

Cir. 2011). At this stage, the parties' infringement disputes center on whether certain Samsung

4
Case No.:
No.: 12-CV-00630-LHK
DENYING-iN-PART APPLE'S MSJ AND
AND DENYING SAMSUNG'S
SAMS UNG'S MSJ
ORDER GRANTING-IN-PART AND DENYING-IN-PART

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products literally infringe certain patents. "Literal
" Literal infringement requires the patentee to prove that

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2

ofthe
the accused device contains each limitation of
the asserted claim(s)." Bayer AG v. Elan Pharm.

3

r.3d
3d 1241,
\241, 1247
\247 (Fed. Cir.
C if. 2000). ""If
If any claim
cla im limitation
limitat ion is absent 1l-om
from the
Research Corp., 212 F.

4

110 literal infringement as a matter of law." !d.
Id.
accused device, there is no

5

C.
e.

6

Patents are presumed valid. See 35 U.S.C. § 282(a). A party challenging
cha llenging the validity of
oraa

Anticipation
Antici
llat ion

7

palent
ofpraving
proving invillidity
invalidity by clear and convincing evidence.
ev idence . See
patent claim bears Ihe
the burden of

8

P 'ship, 131
13 1 S. Ct.
Cl. 2238, 2242 (20 II).
I I). An accused infringer may show
s how
Microsoft Corp. v.v. i4i Ltd. P'ship,

9

U.S.c. § 102 and to do so "must show by clear
that a patent claim is invalid as anticipated under 35 U.S.C.

10

and convincing evidence that a single prior art reference
rererence discloses each and every element of
oraa

lIII

invention. " Krippelz
Krippe/z v.
\I. Ford MOlol'
Motor Co., 667 F.3d 1261
1261,, 1265 (Fed. Cir. 20 12).
claimed invention."

12

III.
Ill.

DISCUSSION
DI SCUSSION

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A.

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Before
Berore addressing the merits orthe
of' the parties' su mmary judgment arguments, the Court

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Preliminary
Prcliminary Matters
Mattcrs

15

(1) whether
addresses two threshold issues that arise at various points in the parties' briefs: (I)

16

additional claim construction is necessary and (2) the
th e weight the Court should give to its

17

conclusions at the preliminary injunction stage.

18
19

l.
1.

Clai
m Construction
C laim
C Ollstt'uctioll

Many of
or the present issues rest on
On claim construction
construct ion positions
posit io ns that the parties never raised
rai sed

20

during the claim construction phase of
or this case. For example, Samsung seeks
seek s to construe "DDT
"001

21

field" in the '596 Patent to mean a "logical identifier representing the first PDU."
PO U." Samsung MSJ at
al

22

linds these arguments untimely.
unti mely. lI f'the
rthe parties
part ies wanted to tee up summary
su mmary judgment
23. The Court finds

23

positions based on particular
pa1ticular constructions, they "could
"cou ld (and should) have sought ...

24

construction[s]
construction[sl to [those]
[Ihosel effect[s]."
errect[s]." ePlus.
ePius, Inc. v. Lawson
Lawson Software, Inc., 700 F.3d 509, 520 (Fed.

25

Cir.
2012).
Cir.2012).

26

reso lve funda
rundamental
The Court recognizes its duty to resolve
mental disputes regarding claim scope. See

27

02 Micro Int
Inl 'l'f v.
v. Beyond Innovation Te ch. Co.,
Co" 521 F.3d
FJd 1351 ,> 1360 (Fed. Cir. 2008) (citing

28

Markman v.v. Westview Instruments, Inc., 52 F.3d
F.3d 967,979
967, 979 (Fed. Cir. 1995) (en bane)).
banc)). The Court

5
Case No.: 12-CV-00630-LHK
12-CV-00630-LHK

ORDER GRANTING-IN-PART AND DENYING-IN-PART APPLE'S MSJ AND DENY
DENYING
ING SAMSUNG'S MSJ

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fulfilled that duty when it provided a thorough claim construction opinion earlier in these

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2

proceedings. Yet
Y ct "district courts are not
nOI (and should not be) required to construe every limitation

3

present in a patent's
patent 's asserted claims."
claims,"'d
ld at 1362 (emphasis in original). Nor are they obligated to

4

rule
ru le on claim construction
constructio n arguments
argu ments presented
presen ted for the first
fi rst time
ti me in summary judgment briefs. See

5

Function
Functioll Media,
Media, L.L.C.
L. Le. v. Googie
Google Inc.,
IIIC., 708 F.3d 1310, 1325 (Fed. Cir. 2013)
20 13) ("We hold that the

6

of a pre-trial motion for summary judgment ofnoninfi'ingement
ofl1oninfringcmcnt docs
does not,
nOl, by itself, show
denial ofa

77

that the district court delegated claim construction to the jury."). This is not a case like 02 Micro ,

8

where the district colllt
court erred when it declined to resolve a dispute over claim scope raised during

9

claim construction. Indeed,
Indeed , Function Media distinguished
distingui shed 02 Micro in part because "the
" the parties [in
lin

10

02 Micro1
Micro] disagreed [about the term in dispute] during claim cOllslruction."
constntclion." Jd.
Ie/. (emphasis added).

11
II

Here, the Cowt
constructionn stage.
Court resolved the parties
parties'' disputes over claim scope at the claim constructio
The Federal Ci
Circuit
rcuit has held that it can be error to engage in hypertechnical refinements
refinemen ts of

12

- ~

J3
13

the meaning of claims followi
ng claim construction to support a grant of
summary judgment. In
following
ofsUlnmary

"

14

AFG
A FG Industries,
Induslries, Inc. v. Cardinal JG
IG Co., 375 F.
F.3d
3d 1367 (Fed.
(Fed . Cir.
C ir. 2004
2004),
), the court, after previously
prev iously

e

15
15

construing the term "layer," held that a district court erred in granting summary judgment of

16

noninfhngement
noninfringemcnt under a supplemental
supplementa l definition
defini tion of the term that excluded a certain
certa in class of

17

accused devices. "Thi
"Thiss court'
court'ss remand did not invite further refinements in the meaning of the term

18

' layer.' .... Rather, this court requested the trial
tr ial cowt
court to apply the established claim
cla im construction

19

to the accused products." Jd.
Id. at 1372. Simi
Similarly,
larly, the Cou.rt
Court here, based on the patties'
parties' prior selection

20

ofterms
of terms in need of construction, has left many of the terms at issue to their plain and ordinary

21
21

meaning. for
For the majority
maj ority ofterms
of terms the parties now address
addrcss in their summary judgment briefs, the

22

Court
does not sec
COUIt docs
see the need for further re'fi
refinement
nement at the risk
fisk of taki
taking
ng factual
fact ual issues away from the
thc

23

jury.
Jury,

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Sound practical reasons counsel against construing additional terms based on claim

25

construction argtrments
District
arguments raised for the fiJ·st
first time in summary judgment briefs. The Northern Dis
trict

26

of California's
Ca lifornia's local rules require the parties to narrow the number
nu m ber of disputed terms
tcrms to l10
0 as parI
part

27

of their joint claim construction statement. See Patent L.R. 4-3(
oflheir
4-3(c).
c). ln
In accordance with those rules,

28

the parties made their selections
se lections at claim construction
co nstruction as to "the
" the terms whose construction will be
6
Case No.: 12-CV
12-CV-00630-LIIK
-00630-LI!K
ORDER GRANTING·
GRANTJNG-IN-PART
IN-PART AND D£.NYING·1~~f.i'~RT
DENYING·U.,·PART APJ>{,.E'S
APPLE'S MSJ AND DENYING SAMSUNG'S MSJ

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most significant
significanllo
to the resolution of the case." !d.
Id. This requirement forces
force s parties to identify
2

potential case-dispositive terms at an early stage and also forces parties to help manage the
lhe scope

3

of patent
paten! cases. The Court painstakingly adjudged the parties' claim construction disputes during

4

the
Ihe claim construction phase based on their in-depth technology tutorials and voluminous

5

submissions of intrinsic and extrinsic evidence. The local rules
rutes and this Court did not set
sel out a

6

particular process for resolving claim construction disputes only to let the parties make additional

7

arguments at the summary judgment phase untethered to those carefully structured rules.

8
9

Practical considerations
considerat ions specific to this case also counsel against engagi
engaging
ng in additiona
additionall

claim construction now. The Cowt
Court warned the parties at their July
Jul y 31,
3 1, 2013 case management

10

conference thai,
Cou rt would not treat the
that, given the fast-approaching Spring 2014 trial date, the Court

II

c hance for the parties to make additional
addit ional claim
summary judgment phase of this case as a chance

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12

construction arguments. See Hr'g Tr. at 22:13-16,
22: 13-16, 24:22-25:7. The Court has learned through two

~

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13

prior trials
tr ials with these parties, both in Case No. 11-CV-1846,
II-CV-1846, that, given the chance, each side will

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14

continue to generate creative linguistic arguments about nearly every term in a claim in order to

.,, "
c~

I155

accuse the other side of"
of " ignoring the Court's claim construction rulings" or ""addi
adding
ng limitations to

oo..c:
"'~
-ot::

16

the plain language
langua ge of the claim."
cla im." Resolving those disputes has taken on a "whack-a-mole"
"w hack-a-mole"

17

diminished .
character, one for which the returns have quickly diminished.

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COLIrt ref1.rses
refuses to consider the parties' summary judgment
All thi s is not to say that the Court

19

arguments merely because an apparent dispute
d ispute has arisen
ar isen about the scope of a term's plain and

20

ordinary or construed meaning. The Court does carefully consider these disputes, but does so as

21

"part of
ofthe
the infringement analysis, not part of the claim construction."
construction," Thorn
ThorneI'
er v.
v, Sony Computer

22

Am.. ILLC,
__ LC, 669 F.3d
F.3d 1362, 1369 (Fed. C
Cir.
ir. 20
2012).
12). The Federal Circuit's decision in
Entertainment Am.,

23

Thorner is instructive. There, the district court had construed the term
lerm "flexible"
"flex ible" to mean "capable
"capab le

24

of being noticeably flexed
nexed with ease."
ease," !d.
[d. On appeal,
uppeal, the Federal Circuit
Circu it concluded
conc luded that the
(he district

25

court's construction was too rigid.
rigid . The
T he court highlighted, however, that even though the plain and

26

ordinary meaning of" flexible"
preclude
nexible" controlled, that ruling
rul ing did not prec
lude summary
su mmary judgment of

27

noninfringement on
011 remand.
remand, "The district court is of course
Cou rse free
free on summary judgment to decide

28
7
Case No.: 12-CV-00630-LIIK
12-CV-00630-L1iK

ORDER GRANTING-IN-PART AND DENYING-IN-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ

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that there
th ere is no genuine issue of material fact that the accused
accu sed products in Ihi
thiss case do not meet the

2
3

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plain and ordinary
ord inary meaning of
orthe
the term 'flexible."'
' flexible ...• IId.
d.
With thi
thiss guidance, the Court will view the parties' disputes through the lens of whether a!I

4

reaso
rea so nable
llablejury,
jury, armed with the Court's
Co urt 's claim construction as to ce1tain
certain tenns
terlll S and
alld an instruction
instructi on

5

nary meaning controls
that the plain and ordi
ordinary
contro ls as to others, could or would necessarily
necessari ly conclude that

6

pri or art reference reads on an asserted
the asserted claim reads oonn an accused device (or Ihal
that a prior

7

claim). Similar to claim construction,
co nstruction, in determining whether an infringement or anticipation
anticipati on

8

argument fits within the plain and ord
ordinary
the Court reviews
he written
inary meaning of
ofaa term
termlhe
rev iews "[t]
"[t]he

9

description
part s ofthe
o f the specification," as those tools "may
" ma y shed contextua
contextuall light on the
descriptio n and other parts

10

plain
I 5 F.3d
Aven/is Pharms. Inc.
inc. v.v. Amino Chemicals Ltd.,
Ltd., 7
715
F.3 d 1363,
1363 , 1373
plnin and ordinary meaning."
menning. " Aventis

11
II

(Fed. Cir.
(red.
Clr. 20
2013).
13). But
BUlthe
the goal at this stage is not to complete the·
the' Sisyphean task
ta sk of providing

12

term's
's plain and ordinary meaning. Instead,
Instead , the Court must
mllst determine
determi ne
definitive guidance as to a term

...';:.....-,_ ·-.--0

13

whether a jury, "free
" free to rely on
o n the plain and ordinary
ord inary meaning
meani ng ofthe termls],"
lermls]," eP/us,lnc.,
ePlus. inc., 700

14

F.3d at 520, may
mayor
mu st conclude !hnt
in fr inge (or
or must
that Ihe
the accused devices (or prior art references) infringe
P.3d

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anticipate) the asserted claims.
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2.

T
The
he Court's
Co urt's Preli
Preliminary
minary IInjunct
nj unction
io n R
Ruling
uling

The parties dispute whether the Court should here apply various factual conclusions made

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.e

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18

in the
tbe likelihood-of-success
like lihood-o f- success portion of
o rtbe
the Court's preliminary injunction ruling. For example,

19

Apple argues that, in ruling on Apple's motion
Illotion for summary
sUlllmary judgment of
o f infringement
infringe men I of
o flhe
the ' 172

20

Patent, the Court should
co nsider that "[ljhis
"[ t[hi s Court has already
alread y found that Samsung devices with
s ho uld consider

21
21

the Google Keyboard likely
li kely infringe the'
the ' 172 Patent in its preliminary
prelim inary injunction
injuncti o n order."
order. " Apple

22

MSJ at J.
CO Llrt 's conclusion
conclu sio n that
tbat Apple was
wnS
I. This
Tbi s and similar arguments
argument s are without merit. The Cowt's

23

prevail on certain points "at trial,"
877,, does not entitle Apple, or even
likely
lik ely to prevnil
tr ia l," 877 F. Supp. 2d at
a1877

24

App le is entitled, to a summary judgment victory. "The
" The limited purpose of
o r a preliminary
prelimina ry
suggest Apple

25

injunction is to preserve the status quo
qu o and prevent irreparable injury,
provide
inj ury, not to pro
vide an evidentiary

26

basis
ba
sis for granting summary
SlImll1<lry judgment." elvfachines,
eMachines, inc.
In c. v.
II. Ready Access lvlemory,
Mem olY, inc.,
Inc. , No.

27

EDCV00-00374-YAPEEX,
456404 , *4
' 4 (C.
(C.D.
D. Cal. Mar. 5,
5 ,2001
200 I)) (cil
(citing
ing Univ.
Univ_ of Texas v.
EDC VOO-00374-VAPEEX, 2001 WL 456404,

28
8
Case No.: 12-CV-00630-LIJK
12-CV-00630-LHK
ORDER GRANTING-IN·
GRANTfNG-IN-PI\RT
PART AND DENY
DENYING-LN-PART
ING-tN-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ

A158

Case: 15-1171

Document: 40

Page: 251

ase5:12-cv-00630-LHK Document1151 'SEALED'
*SEALED*

Filed: 03/06/2015
Filed01l21/14
FiledOl/21/14 Page9 of 49

Camenisch, 451 U.S. 390, 394 ((1981».
1981)). To hold otherwise
otherwi se would
wou ld improperly transform the Court's

2
3

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benefl! of
engaged in extensive fact and expert discovery. Neither the parties nor the Court had the benefit

5

this discovery at the preliminary injunction phase, and the pa1ties
parties have used that discovery to refine