Federal Circuit Gives Samsung Another Victory Against Apple In The Smartphone Patent War

Update: On March 21, 2016, the U.S. Supreme Court granted Samsung’s certiorari petition regarding a separate patent (a design patent and related trade dress registration for the design elements of the iPhone).  The Court agreed to review a limited question regarding the types of damages available in such cases: “Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?”

In another twist of fortunes in the long-running smartphone patent war between Apple and Samsung, the U.S. Court of Appeals for the Federal Circuit has once again overturned Apple’s patent infringement jury verdict – this time for $119.6 Million – against Samsung. The Court left intact Samsung’s small $158,400 verdict against Apple.

The case was initially filed by Apple in February 2012, in the United States District Court for the Northern District of California, alleging that Samsung infringed eight of Apple’s patents used on the iPhone. Not to be outdone, Samsung countersued alleging that Apple had infringed eight of its patents used in Samsung’s Android smartphones.

After a series of trial rulings and appeals, the parties conducted a 13-day trial and the jury awarded $119.6 million to Apple based on a finding that Samsung had infringed Apple’s “structures,” “slide to unlock,” and “autocorrect” patents. Samsung was not nearly as successful, with the jury awarding it a mere $158,400 in damages for the infringement of its “camera systems” patent.

Though Apple won the trial court battle, on appeal, the Federal Circuit has granted ultimate victory to Samsung, finding that Apple’s “slide to unlock” and “autocorrect” patents were invalid (and therefore not patentable) because the evidence indicated that the inventions would have been “obvious” to a person having ordinary skill in the art, in light of the publically available information at the time the inventions were made. The Court also reversed the jury’s decision that Samsung had infringed Apple’s “structures” patent based on a technical finding that the patent required the use of a “analyzer server” and Apple failed to present sufficient evidence to allow a jury to conclude that the Samsung software met this “analyzer server” limitation. Apple has a small chance of turning the wheel of fortune back if an en banc Federal Circuit agrees to hear the case or if the U.S. Supreme Court agrees to grant certiorari.

As this case demonstrates, fortunes can be won and lost on appeal and, as such, it is critically important to evaluate the strengths and weaknesses of each case even after a jury verdict is rendered.

For more information regarding patent litigation and appeals or the Court’s Federal Circuit’s decision, please contact Kathleen Barnett Einhorn, Esq., Director of the firm’s Complex Commercial Litigation Group at keinhorn@genovaburns.com, or Jennifer Borek, Esq., a Partner in the Complex Commercial Litigation Group at jborek@genovaburns.com.

Supreme Court’s Opinion Reiterates Principle that Patent Holders Bear Burden of Proof in Infringement Actions

The Supreme Court, in a unanimous decision issued on January 22, 2014, held that the burden of proof in patent infringement actions falls upon the patentee, regardless of whether the patentee is the moving party in the infringement action.

In Medtronic Inc. v. Boston Scientific Corp., Medtronic, Inc., a designer and seller of medical devices, entered into a license agreement with Mirowski Family Ventures, LLC with respect to certain patents held by Mirowski. The license agreement permitted Medtronic to utilize certain patents held by Mirowski in exchange for royalty payments. In 2007, Mirowski provided Medtronic with a notice of infringement alleging that seven new Medtronic products violated two Mirowski patents. Medtronic responded by bringing a declaratory judgment action seeking a declaration that Medtronic’s products did not infringe Mirowski’s patents and that the patents were invalid.

The District Court held that the burden of proof in a declaratory judgment action falls on the patentee to prove that its patent rights have been infringed upon. The Court of Appeals for the Federal Circuit held that the burden should shift to the moving party because when a patentee is the defendant they are unable to bring an infringement action.

The Supreme Court reversed, specifically noting the extensive case law supporting the patentee’s burden of proof, stating that it was “well established that the burden of proving infringement generally rests upon the patentee”.

In addition, Justice Breyer noted that shifting the burden of proof away from the patentee could create “unnecessary complexity” and cause confusion as to what theory a patentee’s infringement claim lays upon because the patentee is best equipped to state how an alleged infringer has infringed on an existing patent, whereas the alleged infringer would need to “negate every conceivable infringement theory” as part of their proof that they did not violate the patent.

In addition, the Court stated that shifting the burden away from the patentee would move against the basic purpose of the Declaratory Judgment Act. The Court held that were it not for the declaratory judgment procedure, the alleged infringer would be forced to either continue the alleged breach, forcing the patent holder to bring an infringement action, or cease the alleged breach and cure.