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No. 2015-2088

UNITED STATES COURT OF APPEALS


FOR THE FEDERAL CIRCUIT
APPLE INC., a California corporation,
Plaintiff-Appellee,
v.
SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
Defendants-Appellants,
INTERNATIONAL BUSINESS MACHINES CORPORATION, RESEARCH IN MOTION
CORPORATION, RESEARCH IN MOTION, LTD., REUTERS AMERICA, LLC,
Defendants.
Appeal from the United States District Court for the
Northern District of California in case no. 11-CV-1846, Judge Lucy H. Koh.
PLAINTIFF-APPELLEE APPLE INC.S RESPONSE TO DEFENDANTSAPPELLANTS PETITION FOR REHEARING EN BANC
HAROLD J. MCELHINNY
RACHEL KREVANS
ERIK J. OLSON
NATHAN B. SABRI
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, CA 94105
(415) 268-7000
MARK D. SELWYN
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, CA 94304
(650) 858-6000
November 2, 2015

WILLIAM F. LEE
MARK C. FLEMING
LAUREN B. FLETCHER
SARAH R. FRAZIER
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000
THOMAS G. SPRANKLING
WILMER CUTLER PICKERING
HALE AND DORR LLP
1875 Pennsylvania Avenue, N.W.
Washington, DC 20006
(202) 663-6000
Counsel for Plaintiff-Appellee Apple Inc.

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CERTIFICATE OF INTEREST
Counsel for Plaintiff-Appellee Apple Inc. certifies the following:
1.

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

Apple Inc.
2.

The name of the real party in interest represented by us is:

Not applicable.
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:
None.
4.
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 agency
or are expected to appear in this court are:
MORRISON & FOERSTER LLP: Ruchika Agrawal (former), Deok Keun
Matthew Ahn (former), Charles S. Barquist, Jason R. Bartlett (former), Ruth
N. Borenstein, Brittany N. DePuy (former), Francis Chung-Hoi Ho (former),
Richard S.J. Hung, Michael A. Jacobs, Esther Kim, Grant L. Kim, Alexei
Klestoff (former), Rachel Krevans, Kenneth Alexander Kuwayti, Jack
Williford Londen, Harold J. McElhinny, Andrew Ellis Monach, Erik J.
Olson, Marc J. Pernick (former), Taryn Spelliscy Rawson (former),
Christopher Leonard Robinson, Nathaniel Bryan Sabri, Jennifer Lee Taylor,
Alison Margaret Tucher (former), Christopher James Wiener, Patrick J.
Zhang (former)
WILMER CUTLER PICKERING HALE AND DORR LLP: David B. Bassett, James
C. Burling, Robert Donald Cultice, Andrew J. Danford, Michael A. Diener,
Christine E. Duh, Mark D. Flanagan, Mark C. Fleming, Eric Fletcher,
Lauren B. Fletcher, Sarah R. Frazier, Richard Goldenberg, Robert J.
Gunther, Jr., Liv Leila Herriot, Michael R. Heyison, Peter James Kolovos,
Derek Lam, Gregory H. Lantier, Brian Larivee, William F. Lee, Andrew L.
Liao, Joseph J. Mueller, Kevin Scott Prussia, James L. Quarles, III, Michael
Saji (former), Brian Seeve, Mark Daniel Selwyn, Ali H. Shah (former),

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Victor F. Souto, Thomas G. Sprankling, Timothy Davis Syrett, Nina S.


Tallon, Samuel Calvin Walden, Emily R. Whelan, Jeremy S. Winer
COOLEY LLP: Benjamin George Damstedt, Jesse L. Dyer (former), Timothy
S. Teter
TAYLOR & COMPANY LAW OFFICES, LLP: Joshua Ryan Benson, Stephen
McGeorge Bundy, Stephen E. Taylor
MAVRAKAKIS LAW GROUP LLP: Kenneth H. Bridges (former), Michael T.
Pieja

Dated: November 2, 2015

/s/ William F. Lee


WILLIAM F. LEE
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000

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TABLE OF CONTENTS
Page
CERTIFICATE OF INTEREST .................................................................................i
TABLE OF AUTHORITIES ....................................................................................iv
INTRODUCTION .....................................................................................................1
ARGUMENT .............................................................................................................4
THE SUMMARY AFFIRMANCE ORDER DOES NOT WARRANT REHEARING. .................. 4
A.

Samsung Shows No Reason For Rehearing En Banc Of


The Panels Nonprecedential Summary Affirmance
Order. .....................................................................................................4

B.

Samsungs Collateral Estoppel Argument Is Foreclosed


By The Mandate Rule And, In Any Event, Incorrect. .......................... 5

C.

Samsungs Rule 54(b) Argument Is Likewise


Foreclosed By The Mandate Rule And, In Any Event,
Meritless. ...............................................................................................9

D.

Samsungs Policy-Based Arguments Do Not Warrant


Rehearing En Banc. .............................................................................15

CONCLUSION ........................................................................................................15
CERTIFICATE OF SERVICE
CERTIFICATE OF COMPLIANCE

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TABLE OF AUTHORITIES
CASES
Page(s)
AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc., 759 F.3d
1285 (Fed. Cir. 2014).......................................................................................8
Amado v. Microsoft Corp., 517 F.3d 1353 (Fed. Cir. 2008) ..................................... 5
Apple Inc. v. Samsung Electronics Co., 786 F.3d 983 (Fed. Cir. 2015)..........1, 2, 10
B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293
(2015) .......................................................................................................6, 7, 8
Barnes v. United States, 678 F.2d 10 (3d Cir. 1982) ...............................................13
Carter v. United States, 333 F.3d 791 (7th Cir. 2003) ............................................13
Dempsey v. United States, 32 F.3d 1490 (11th Cir. 1994) ......................................13
e.Digital Corp. v. Futurewei Technologies, Inc., 772 F.3d 723 (Fed.
Cir. 2014) .........................................................................................................7
ePlus, Inc., v. Lawson Software, Inc., 790 F.3d 1307 (Fed. Cir. 2015)..................... 8
Fadhl v. City & County of San Francisco, 804 F.2d 1097 (9th Cir.
1986) ..............................................................................................................13
Fresenius USA, Inc. v. Baxter International, Inc., 721 F.3d 1330 (Fed.
Cir. 2013) .....................................................................................................6, 7
Gould, Inc. v. United States, 67 F.3d 925 (Fed. Cir. 1995) .....................................10
Greenlaw v. United States, 554 U.S. 237 (2008).....................................................15
International Rectifier Corp. v. IXYS Corp., 515 F.3d 1353 (Fed. Cir.
2008) ................................................................................................................9
Jalapeno Property Management, LLC v. Dukas, 265 F.3d 506 (6th
Cir. 2001) .......................................................................................................13
Joshua v. United States, 17 F.3d 378 (Fed. Cir. 1994) .............................................. 4

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King Instrument Corp. v. Otari Corp., 814 F.2d 1560 (Fed. Cir. 1987) .....10, 11, 12
Samsung Electronics Co. v. Apple Inc. (U.S. Oct. 20, 2015) (No.
15A421) ...........................................................................................................2
Taylor v. USPTO, 385 F. Appx 980 (Fed. Cir. 2010) ............................................10
TecSec, Inc. v. International Business Machines Corp., 731 F.3d 1336
(Fed. Cir. 2013)..............................................................................................12
Tronzo v. Biomet, Inc., 236 F.3d 1342 (Fed. Cir. 2001) ............................................ 5
Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc., 546 U.S. 394
(2006) .............................................................................................................14
STATUTES AND RULES
28 U.S.C. 2106 ..........................................................................................11, 13, 15
35 U.S.C. 307(a) .....................................................................................................8
Fed. R. Civ. P.
50(b) ...............................................................................................................14
54(b) .................................................................................................3, 9, 11, 13
Fed. Cir. R. 35 Practice Note .....................................................................................4

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INTRODUCTION
Samsungs petition for rehearing is the latest attempt in Samsungs strategy
of delaying the day when Samsung will have to pay the damages awardedand
previously affirmed by this Courtfor its widespread infringement of Apples
patents as determined by a jury in August 2012. Samsungs appeal presents
nothing resembling a close question of exceptional importance. To the contrary,
Samsungs appeal presents issues that the panel concluded were so clearly onesided that as a matter of law no substantial question regarding the outcome []
exists. Dkt. 29 (internal quotation marks omitted). 1
Samsung already sought review from this Court of a jurys finding that
multiple Samsung products violated Apples intellectual property rights relating to
its iconic iPhone and iPad products. Apple Inc. v. Samsung Elecs. Co., 786 F.3d
983, 989-990 (Fed. Cir. 2015). In that previous appeal, Samsung raised a number
of design and utility patent issues; the panel unanimously rejected every one and
affirmed $548 million in damages awarded for Samsungs infringement of Apples
patents. Id. at 996-1005. And although the Court remanded part of the judgment
that rested on Apples trade dress claims, the Court recognized the need to bring
the affirmed portion of this more than four-year-old litigation to a close. The panel
1

Dkt. refers to docket entries in this appeal, while No. 14-1335 Dkt.
refers to docket entries in Samsungs prior appeal, Apple Inc. v. Samsung Elecs.
Co., No. 14-1335, 786 F.3d 983 (Fed. Cir. 2015).
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thus ordered immediate entry of final judgment on all damages awards not
predicated on Apples trade dress claims. Id. at 1005 (emphasis added).
Samsung petitioned for rehearing en banc in its prior appeal, but notably did
not argue that this Courts instruction that the trial court immediate[ly] enter
final judgment on the affirmed damages award was in any way problematic or
improper. Samsung also did not allege, as it does now, that the panel erred by
failing to give collateral estoppel effect to the decision of the Patent Trial and
Appeal Board (PTAB) in parallel reexamination proceedings regarding one of
the patents-in-suit. The Court denied Samsungs petition without dissent. No. 141335 Dkt. 207 at 2. Samsung then asked this Court to stay issuance of its mandate
pending Samsungs filing of a petition for certiorari. No. 14-1335 Dkt. 208. But
again, Samsung neither denied that the Courts mandate, once issued, would
require the district court to enter judgment on the affirmed damages award
immediately, nor did it argue that the panels order of immediate entry of final
judgment on the affirmed amount was improper. Id. The Court denied Samsungs
motion, and the mandate issued on August 25, 2015. No. 14-1335 Dkts. 211, 212.2

Consistent with its strategy of delay, Samsung sought and was granted an
extension of 32 days in which to file its petition for certiorari. See Samsung Elecs.
Co. v. Apple Inc., No. 15A421 (U.S. Oct. 20, 2015).
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On remand, Apple sought immediate entry of final judgment of the


affirmed damages, the undisputed amount of which is $548 million. Add. 1-2. 3 In
response, Samsung argued for the first time that the direction in this Courts
mandate that final judgment be entered immediate[ly] was somehow contrary to
Federal Rule of Civil Procedure 54(b). Add. 34-44. Samsung also moved for
judgment as a matter of law, arguing that the PTABs decision in a parallel
reexamination proceeding was entitled to collateral estoppel effect. The district
court correctly rejected both arguments, noting that it was not entering partial
final judgment pursuant to Rule 54(b), so the requirements of Rule 54(b) need not
be satisfied (Add. 92), and that collateral estoppel did not apply because the
PTABs decision did not qualify as a final judgment on the merits (Add. 80-81).
Recognizing that [u]nder the Federal Circuits mandate rule it was bound
to follow the Federal Circuits decree as law of the case (Add. 92), the district
court entered judgment in the affirmed damages amount (Add. 60). Despite the
district courts warning that doing so would be frivolous (Add. 106), Samsung
filed the present appeal. Apple moved for summary affirmance, Samsung filed an
opposition, and Apple replied. In a nonprecedential order, the panel summarily
affirmed the district courts entry of partial final judgment. The Court noted that

Add. refers to the addendum submitted with Apples motion for summary
affirmance and reply in support thereof in this proceeding. See Dkts. 17, 28.
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summary affirmance is appropriate when the position of one party is so clearly


correct as a matter of law that no substantial question regarding the outcome of the
appeal exists and that, having reviewed the parties arguments, the Court
conclude[d] that summary affirmance is appropriate. Dkt. 29 (quoting Joshua v.
United States, 17 F.3d 378, 380 (Fed. Cir. 1994)).
Samsung now asks the en banc Court to rehear that nonprecedential order to
address issues not relevant to the facts of this case. Rehearing is not warranted,
and the petition should be denied.
ARGUMENT
THE SUMMARY AFFIRMANCE ORDER DOES NOT WARRANT REHEARING.
A.

Samsung Shows No Reason For Rehearing En Banc Of The


Panels Nonprecedential Summary Affirmance Order.

The panels summary affirmance order did not establish any Circuit
precedent that could bind this Court or any district court. Thus, Samsung is
incorrect to suggest that its petition raises precedent-setting questions of
exceptional importance (Pet. 1); the panels order set no precedent, and any
questions Samsung presents remain open to consideration in future cases.
Samsung does not even attempt to show that this is one of the rare situations
warranting rehearing of a nonprecedential summary order. See Fed. Cir. R. 35
Practice Note (A petition for rehearing en banc is rarely appropriate if the appeal
was the subject of a nonprecedential opinion by the panel of judges that heard it.).

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Moreover, rehearing in this case would be futile, because the panel was correct to
affirm the district courts judgment, as the balance of this response shows.
B.

Samsungs Collateral Estoppel Argument Is Foreclosed By The


Mandate Rule And, In Any Event, Incorrect.

1.

Samsung asserts that the panel held that PTAB invalidity decisions

are not entitled to collateral estoppel effect. Pet. 10. But the panels order
includes no statement suggesting that is the basis of its affirmance, and certainly
not in a way that would bind future panels. Indeed, Apple offered a
straightforward means to avoid deciding that issue in this appeal: Samsungs
argument was made and lost in its prior appeal, and thus is clearly foreclosed as a
matter of law by the mandate rule. Indeed, that was the primary basis invoked by
the district court in rejecting Samsungs attempt to re-raise this issue. Add. 82-83.
Samsung erroneously suggests (Pet. 10 n.6) that the mandate rule is
inapplicable because the panels prior decision did not explicitly discuss
Samsungs collateral estoppel argument. But the mandate rule precludes
reconsideration of any issue within the scope of the judgment appealed fromnot
merely those issues actually raised. Amado v. Microsoft Corp., 517 F.3d 1353,
1360 (Fed. Cir. 2008) (emphasis added); see also Tronzo v. Biomet, Inc., 236 F.3d
1342, 1348 (Fed. Cir. 2001) (refusing to revisit punitive damages on re-appeal
where the issue was necessarily incorporated within the scope of our mandate in
[the first appeal] and foreclosed from further review). Here, Samsung actually
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did raise the same collateral estoppel issue in its prior appeal: Samsung filed a
Rule 28(j) letter notifying the panel of the PTABs decision and, citing many of the
same cases it cites now, argued that Apple could not prevail on its 915 patent
because the PTABs December 2014 decision rejecting the claims of that patent
was [a] final decision by an administrative body [that] has collateral estoppel
effect. No. 14-1335 Dkt. 152-1. As the district court correctly ruled, because
Samsung raised the collateral estoppel issue and this Court still affirmed the
validity of the 915 patent, denied rehearing en banc, and issued the mandate ,
the mandate rule forecloses applying collateral estoppel. Add. 82-83.
In an effort to sidestep the mandate ruleand contrary to its argument in the
prior appealSamsung now suggests (Pet. 10 n.6) that the PTABs decision was
not rendered final for collateral estoppel purposes until after this Courts
mandate issued in the prior appeal and the PTAB denied Apples request for
rehearing. But only a final PTO decision affirmed by this court [is] given effect
in pending infringement cases. Fresenius USA, Inc. v. Baxter Intl, Inc., 721 F.3d
1330, 1346 (Fed. Cir. 2013) (emphasis added).
2.

Even if one were to assume that the panels summary order rejected

the substance of Samsungs arguments (rather than relying on the fact that they are
barred by the mandate rule), Samsungs arguments would still not warrant
rehearing. Samsung suggests that the panels result conflicts with B&B Hardware,

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Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015), and other authorities
governing collateral estoppel. It does not. Unlike the determinations at issue in
those cases, a final reexamination decision is binding not because of collateral
estoppel, but because Congress has expressly delegated reexamination authority to
the PTO under a statute requiring the PTO to cancel rejected claims, and
cancellation extinguishes the underlying basis for suits based on the patent.
Fresenius, 721 F.3d at 1344 (emphasis added). And even if collateral estoppel did
apply, B&B Hardware makes clear that an agency decision may only be given
preclusive effect [s]o long as the other ordinary elements of issue preclusion are
met. 135. S. Ct. at 1310 (emphasis added). 4 In other words, there must be a
final judgment on the merits before a decision can have collateral estoppel effect.
See e.Digital Corp. v. Futurewei Techs., Inc., 772 F.3d 723, 726 (Fed. Cir. 2014);
see also Fresenius, 721 F.3d at 1347 (Even if collateral estoppel were implicated,
both the Restatement and numerous cases have held that an interim decision in one
suit cannot prevail over a final judgment on the same issue in another suit .).
Under the plain terms of 35 U.S.C. 307(a), a claim in reexamination is finally
determined to be unpatentable only when the time for appeal has expired or any
4

B&B Hardware was decided in March of this year, before the panel issued
its opinion in Samsungs prior appeal. Samsung did not consider the decision
pertinent enough to bring to the Courts attention at that time or in its petition for
rehearing, despite having already raised for the Court the question whether
collateral estoppel should apply to the PTABs decision.
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appeal proceeding has terminated. 35 U.S.C. 307(a) (emphasis added). Unlike


in B&B Hardware, where the time to seek review of the agencys decision had
expired, 135 S. Ct. at 1302, the time for Apple to appeal the PTABs decision has
not passed. The PTABs decision is therefore not final for purposes of preclusion.
This answers Samsungs reliance on Judge Dyks concurrence in the denial of
rehearing en banc in ePlus, Inc., v. Lawson Software, Inc., 790 F.3d 1307 (Fed. Cir.
2015), which relied not only on the fact that the PTO had cancelled the patent-atissue, but also on the fact that [t]he cancellation at the PTO was finally affirmed
by this court. Id. at 1309.
Samsung also argues (Pet. 8-9) that en banc review is warranted to decide a
question left open in AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc.,
759 F.3d 1285 (Fed. Cir. 2014). Samsung did not raise AbbVie when it argued in
the prior appeal that collateral estoppel should apply to the PTABs reexamination
decision. See No. 14-1335 Dkt. 152-1. And for good reasonAbbVie has nothing
to do with reexamination decisions. The question unanswered by AbbVie was
[w]hether a Boards interference decision that is on appeal under 141 can have
collateral estoppel effect on issues raised in a co-pending litigation, not whether a
reexamination decision is entitled to such effect. 759 F.3d at 1297 (emphasis

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added). The latter question was asked, and answered, by this Courts Fresenius
decision.5
C.

Samsungs Rule 54(b) Argument Is Likewise Foreclosed By The


Mandate Rule And, In Any Event, Meritless.

1.

Like its collateral estoppel argument, Samsungs argument that [t]he

panels summary order conflicts with precedents in authorizing this Courts


mandate to trump the Federal Rules of Civil Procedure (Pet. 11) assumes that the
panel reached and rejected the substance of Samsungs argument. But once again,
the district court ruled in a manner that made it unnecessary to reach that point:
because Samsung failed to make its Rule 54(b) argument in the prior appeal, its
assertion now is barred by the mandate rule. Add. 93. Once a case has been
decided on appeal, the rule adopted is to be applied absent exceptional
circumstances, in the disposition of the lawsuit. International Rectifier Corp. v.
IXYS Corp., 515 F.3d 1353, 1360 (Fed. Cir. 2008). Samsung has identified no
such exceptional circumstance here, nor does it argue that the en banc Court
should reconsider whether such an exceptional circumstance existed.
As the district court correctly observed, [t]o the extent Samsung believe[d]
that directing the entry of partial final judgment was improper under 28 U.S.C. []
5

Even if some unresolved question from AbbVie were left open after
Fresenius, Samsung shows no reason why the en banc Court should stretch to
decide it now, given that the panels nonprecedential order does not change the
state of the law in any respect.
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2106, Samsung ought to have raised that argument with the Federal Circuit,
namely, when it filed its petition for rehearing in the prior appeal. Add. 93; see,
e.g., Taylor v. USPTO, 385 F. Appx 980, 983 (Fed. Cir. 2010) (per curiam) (If
Mr. Taylor was dissatisfied with the relief accorded by this courts earlier opinion,
he could have petitioned for rehearing or moved to recall the mandate. Because he
failed to seek any such relief in this court at the time of the initial appeal, he cannot
now challenge the district courts compliance with our instructions on remand.).
Samsung did not seek rehearing of the Courts mandatedespite petitioning for
rehearing on other groundsand, accordingly, [u]nder the law of the case
doctrine, th[e district] court was absolutely bound by the mandate to enter partial
final judgment of the design and utility patent damages. King Instrument Corp. v.
Otari Corp., 814 F.2d 1560, 1563 (Fed. Cir. 1987). Any result other than an
affirmance of that judgment would undercut the very purpose of the law of the case
doctrine: to prevent the relitigation of issues that have been decided and to ensure
that trial courts follow the decisions of appellate courts. Gould, Inc. v. United
States, 67 F.3d 925, 930 (Fed. Cir. 1995).6
6

Samsung claims that it could not have speculated then that the district court
would interpret the mandate to require entry of final judgment on the design and
utility patent damages. Pet. 13 n.7. But Samsung did not need to speculate
about how the district court would interpret the mandate. This Court directed
immediate entry of final judgment on all damages awards not predicated on
Apples trade dress claims (Apple, 786 F.3d at 1005), so the precise action the
district court took on remand was entirely foreseeable.
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Even if the en banc Court were to reach Samsungs Rule 54(b)

argumentthough it need not and should notthe panels affirmance of the


district courts conclusion is correct. As the district court made clear, it was not
entering partial final judgment pursuant to Rule 54(b), but rather pursuant to the
Federal Circuits authority under 28 U.S.C. [] 2106, which gives the court of
appellate jurisdiction the authority to remand the case and direct the entry of such
appropriate judgment, decree, or order as may be just under the circumstances.
Add. 92-93. Under this Courts precedent, Rule 54(b) is not applicable in these
circumstances. King, 814 F.2d at 1563 (emphasis added); see also id. (Rule 54(b)
concerns the power of the trial court before appeal).
In King, this Court affirmed (1) the district courts findings that Kings
patent was valid and infringed and (2) a portion of the district courts damages
award, but vacated and remanded another portion of the damages award. 814 F.2d
at 1561. On remand, the district court entered partial final judgment on the portion
of the damages award that this Court had affirmed. Id. Although the infringer
argued that final judgment was improper because the district court did not follow
the dictates of Rule 54(b), this Court affirmed the partial judgment ruling because
[c]learly it was within this courts power under 28 U.S.C. 2106 to order the
district court to enter partial final judgment, and Rule 54(b)[] is not applicable
when the district court is fulfilling its obligations under the mandate. Id. at 1563.

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Thus, [u]nder the law of the case doctrine, [the district] court was absolutely
bound by [this Courts] affirmance of a portion of the damages award and
therefore acted properly by order[ing] execution on that portion of the [damages]
judgment which was final. Id.
As the district court correctly observed here, [t]he instant case presents
exactly the scenario contemplated by King. Add. 91. This Court affirmed the
findings that Apples patents were valid and infringed, as well as a portion of the
damages award, and ordered immediate entry of final judgment on those affirmed
damages. The district court was accordingly absolutely bound on remand to
enter a final judgment that reflected that decision. King, 814 F.2d at 1563.
Samsung asserts an alleged circuit split, but the law of this Court applies to
mandate rule questions. See TecSec, Inc. v. International Bus. Machs. Corp., 731
F.3d 1336, 1341-1342 (Fed. Cir. 2013). And for nearly thirty years, this Court has
expressly endorsed the application of the mandate rule to cases where, as here, the
district court enters partial judgment on remand following an explicit[]
[instruction] that final judgment be entered on a subset of damages. King, 814
F.2d at 1563.
Even among other circuits, the weight of authority strongly reinforces the
correctness of King. The Sixth Circuit is the only court to have concluded
otherwise, and its decision arose on a very different set of facts, including that the

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remand order apparently did not expressly instruct the district court to enter partial
final judgment. See Jalapeno Prop. Mgmt., LLC v. Dukas, 265 F.3d 506, 511-513
(6th Cir. 2001). By contrast, this Courts approach is consistent with that of at
least four other circuits. The Third Circuit adopted the same rule as King in
Barnes v. United States, 678 F.2d 10, 11-13 (3d Cir. 1982), where it held that
once an appeal is properly before this court, there is no reason why our powers
under Section 2106 should be deemed to be as circumscribed as those of a trial
court acting on a Rule 54(b) application. The Seventh, Ninth, and Eleventh
Circuits have likewise concluded that partial final judgment can be appropriately
entered when part of a damages award is finally resolved on appeal. See Carter v.
United States, 333 F.3d 791, 793 (7th Cir. 2003) (entering partial final judgment
in the plaintiffs favor where [n]either she nor the government challenge[d an]
award of $3.4 million in economic damages); Dempsey v. United States, 32 F.3d
1490, 1497-1498 (11th Cir. 1994) (Carnes, J., concurring) (discussing panels
order of partial final judgment to the extent of the uncontested part of the
damages award); Fadhl v. City & Cty. of San Francisco, 804 F.2d 1097, 1099 (9th
Cir. 1986) (per curiam) (affirming the portion of the judgment representing
undisputed attorneys fees, because [t]here is no reason to delay receipt of these
undisputed fees, while maintaining jurisdiction over the question whether
additional amounts were properly awarded); see also Add. 94-95 (district court

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noting that the Third, Seventh, Ninth, and Eleventh Circuits all apply the same
rule as King).
This case is on all fours with King, Barnes, Carter, Dempsey, and Fadhl:
The panels decision in the prior appeal affirmed the damages award in the
undisputed amount of $548 million for 18 products found to infringe Apples
design and utility patents. Add. 60. While other products are subject to a retrial on
damages, that retrial will not implicate the damages award for any of the products
encompassed by the partial final judgment, nor will it revisit questions of patent
infringement or validitythose issues were entirely resolved by the prior appeal.
Finally, Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc., 546 U.S. 394
(2006), has no bearing on this case. Unitherm dealt with the narrow question
whether a court of appeals can order a new trial when the losing party below failed
to make a post-verdict motion for a new trial under Federal Rule of Civil
Procedure 50(b). Even Samsung recognizes this basic distinction. Pet. 11
(Unitherm arose in the context of Rule 50(b).). Because Rule 50 is not at issue
in this case, Unitherm isas the district court foundinapplicable. Add. 95;
see also Add. 96 (Unitherm does not apply in the instant case because all of the
issues encompassed by the Federal Circuits remand for immediate partial final
judgment were the subject of a 50(b) motion in this case and, thus, were
properly before the Federal Circuit on appeal.). Neither the Supreme Court nor

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this Court has ever applied Unitherm in a civil litigation involving anything other
than a partys failure to file a Rule 50 motion, and Samsung provides no reason to
do so for the first time now.7
D.

Samsungs Policy-Based Arguments Do Not Warrant Rehearing


En Banc.

Samsung finally asserts that the issues it raises are of exceptional practical
importance. Pet. 14. But even if Samsung were correct, nothing in the panels
summary affirmance alters the law of the Circuit on either issue; it is a
commonplace application of the mandate rule. Samsung shows no reason for the
Court to reach out and decide those issues now, rather than in another case where
they are raised without that procedural bar.
CONCLUSION
Samsungs petition for rehearing en banc should be denied.

In Greenlaw v. United States, 554 U.S. 237 (2008), the Supreme Court cited
Unitherm as support for the proposition that 2106 does not permit a court of
appeals to increase a criminal defendants sentence when the government fails to
file a cross-appeal. Id. at 249. Greenlaw focused on the special context of the
cross-appeal rule. Id. ( 2106 applies to all cases, civil and criminal, and to all
errors and, if read to abrogate the cross-appeal rule in the criminal plain-error
context, would displace the cross-appeal rule cross the board).
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Respectfully submitted,

HAROLD J. MCELHINNY
RACHEL KREVANS
ERIK J. OLSON
NATHAN B. SABRI
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, CA 94105
(415) 268-7000
MARK D. SELWYN
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, CA 94304

November 2, 2015

/s/ William F. Lee


WILLIAM F. LEE
MARK C. FLEMING
LAUREN B. FLETCHER
SARAH R. FRAZIER
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000
THOMAS G. SPRANKLING
WILMER CUTLER PICKERING
HALE AND DORR LLP
1875 Pennsylvania Avenue, NW
Washington, DC 20006
Counsel for Plaintiff-Appellee Apple Inc.

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CERTIFICATE OF SERVICE
I hereby certify that, on this 2nd day of November, 2015 I filed the foregoing
Plaintiff-Appellee Apple Inc.s Response to Defendants-Appellants Petition for
Rehearing En Banc with the Clerk of the United States Court of Appeals for the
Federal Circuit via the CM/ECF system, which will send notice of such filing to all
registered CM/ECF users.

/s/ William F. Lee


WILLIAM F. LEE
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000

Case: 15-2088

Document: 33

Page: 24

Filed: 11/02/2015

CERTIFICATE OF COMPLIANCE
Counsel for Plaintiff-Appellee Apple, Inc. certifies that:
1.

The brief complies with the type-volume limitations of Federal Rule

of Appellate Procedure 40(b) because exclusive of the exempted portions it does


not exceed 15 double-spaced pages.
2.

The brief complies with the typeface requirements of Federal Rule of

Appellate Procedure 32(a)(5) and the type-style requirements of Federal Rule of


Appellate Procedure 32(a)(6) because it has been prepared using Microsoft Word
2010 in a proportionally spaced typeface: Times New Roman, font size 14 point.

/s/ William F. Lee


WILLIAM F. LEE
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000

November 2, 2015