Friday, February 26, 2016

Apple's "slide to unlock" and autocorrect patent claims found obvious by CAFC; Samsung wins on these points

The decision of the Northern District of California in No. 5:12-cv-00630-LHK
(Judge Lucy H. Koh) was modified by the CAFC on February 26, 2016.

Within Samsung v. Apple:

Both Apple and Samsung appeal. With regard to Apple’s
’647 patent, we reverse the district court’s denial of
Samsung’s motion for judgment as a matter of law
(JMOL) of non-infringement and find that Apple failed to
prove, as a matter of law, that the accused Samsung
products use an “analyzer server” as we have previously
construed that term. We also reverse the district court’s
denial of JMOL of invalidity of Apple’s ’721 and ’172
patents, finding that the asserted claims of both patents
would have been obvious based on the prior art. We
affirm the judgment of non-infringement of Apple’s ’959
and ’414 patents, affirm the judgment of infringement of
Samsung’s ’449 patent, and affirm the judgment of noninfringement
of Samsung’s ’239 patent. In light of these
holdings, we need not address the other issues on this
appeal. Accordingly, we affirm-in-part and reverse-inpart.

KATHLEEN M. SULLIVAN of Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, argued for defendant-appellant

Of the "analyzer server" issue, the CAFC noted

However, this testimony is not sufficient evidence to
allow a jury to conclude that the Samsung software met
the “analyzer server” limitation. Our previous construction
required more than just showing that accused software
was stored in a different part of the memory and
was developed separately. We found that the “analyzer
server” limitation is a separate structural limitation and
must be a “server routine,” consistent with the “plain
meaning of ‘server’.” Motorola, 757 F.3d at 1304.


Apple could point to no testimony where its expert
stated that the library programs run separately. When
asked at oral argument to point to testimony that shows
that the Samsung software runs separately, Apple continually
pointed to its expert’s testimony on the last day of
trial that the Samsung software “has access to the code
and it goes to the code where it is and uses it there.” J.A.
13037 (emphasis added). This testimony, though, shows
the opposite of what Apple contends. It shows that the
client application borrows or uses the library program
code, not that the library program code runs separately.
This is consistent with other testimony by the same Apple
expert, admitting that the Samsung programs were not
“standalone program[s].” J.A. 13054.


In short, Apple provided no evidence that the accused
software library programs in the Samsung phones run
separately from the Browser and Messenger applications.
No reasonable jury could have concluded that the accused
devices had “an analyzer server for detecting structures in
the data, and for linking actions to the detected structures.”
We reverse the district court’s denial of JMOL of
non-infringement by the Samsung devices of claim 9 of
the ’647 patent.

**As to the '721 and '172 patents of Apple:

Apple asserted claim 8 of the ’721 patent and claim 18
of the ’172 patent. Before trial, the district court granted
Apple summary judgment of infringement of the ’172
patent. The jury found both patents not invalid and
found the asserted claim of the ’721 patent infringed,
awarding $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.
Additionally, the jury found that Samsung had willfully
infringed the ’721 patent, which Apple argued supported
an award of enhanced damages. The district court denied
Samsung’s motions for JMOL of invalidity and noninfringement,
but granted JMOL that Samsung did not
willfully infringe the ’721 patent. On appeal, Samsung
challenges the determination as to invalidity, and Apple
challenges the JMOL as to willfulness.

The CAFC found the claims of the '721 obvious:

Samsung contends that the district court should have
granted its motion for JMOL that the ’721 patent would
have been obvious. We agree.

The ’721 patent is directed to the “slide to unlock” feature
of the iPhone. As described in the specification, one
problem with a portable device with a touchscreen is the
accidental activation of features.

KSR appears:

Samsung argues that these two
references together disclose every limitation of claim 8 of
the ’721 patent and that it would be a trivial matter for
one of skill in the art to combine the teachings of these
two references. Thus, it asserts that claim 8 would have
been obvious because it is simply “the combination of
familiar elements according to known methods.” KSR,
550 U.S. at 416.

Note footnote 8:

We have held that submission of an information
disclosure statement to the USPTO does not constitute an
admission that the reference listed is material prior art.
Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274,
1279 (Fed. Cir. 2003) (finding that of listing a prior sale in
an IDS was not a disclaimer of claim scope). However,
the nature of the prior art listed in an information disclosure
statement can be informative as to the field of endeavor

The matter of "copying" arose:

As to copying, Apple also argues that internal Samsung
documents show that a feature of the Samsung
unlock mechanism was copied from the iPhone. These
documents show that Samsung engineers recommended
modifying Samsung software to “clarify the unlocking
standard by sliding” to make it the “[s]ame as [the] iPhone.”
J.A. 51289. What was copied was not the iPhone
unlock mechanism in its entirety, but only using a fixed
starting and ending point for the slide, a feature shown in
the Plaisant prior art.

Apple loses on slide to unlock:

In short, Apple’s evidence of secondary considerations
is “insufficient as a matter of law to overcome our conclusion
that the evidence only supports a legal conclusion
that [the asserted claim] would have been obvious.”
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1371 (Fed. Cir. 2006). We
reverse the judgment of infringement and no invalidity
because the asserted claim of the ’721 patent would have
been obvious in light of Neonode and Plaisant.

As to the '172 patent of Apple:

The ’172 patent covers the iPhone’s “autocorrect” feature.


Certainly text
correction and text completion are closely related problems
in the “same field of endeavor” such that they would
be considered analogous arts. See, e.g., Verizon Servs.
Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1338 (Fed.
Cir. 2010) (finding that references relating to telephony
and wireless communication were relevant to the Internet
and network protocols because the “problem facing the
inventors of the Network Patents was related to” the
problem faced by the prior art references). There is a
strong prima facie case of obviousness.

Copying arises:

For copying, Apple again points to internal Samsung
documents showing that one feature of the iPhone was
copied. Prior to the copying, the Samsung phones automatically
corrected the typed text as the user typed. See
J.A. 51488. On the iPhone, the correction was made only
after the user “accepts or hits space.” Id. This feature is
exactly what was disclosed in Robinson. When the feature
that is copied is present in the prior art, that copying
is not relevant to prove nonobviousness. See,
239 F.3d at 1366; Wm. Wrigley Jr. Co., 683 F.3d at 1363;
see also In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed.
Cir. 2011) (“Where the offered secondary consideration
actually results from something other than what is both
claimed and novel in the claim, there is no nexus to the
merits of the claimed invention.”).


In short, we find that Samsung presented a strong
case of obviousness, showing that every element of claim
18 was present in the prior art. Apple’s evidence of secondary
considerations was very weak. Claim 18 of the
’172 patent would have been obvious to one of skill in the
art as a matter of law. Therefore, we reverse the judgment
of infringement and no invalidity.
Because we have found that the asserted claims of the
’721 and the ’172 patents would have been obvious, we
need not address Apple’s argument that the jury’s finding
of willful infringement of the ’721 patent should be reinstated
nor Samsung’s argument that the district court
erred in construing “keyboard” in the ’172 patent for
purposes of determining infringement.


In conclusion, we reverse the district court’s judgment
of infringement of the ’647 patent and the judgment of no
invalidity with respect to obviousness of the ’721 patent
and the ’172 patent. Samsung was entitled to a judgment
of non-infringement of the ’647 patent and a judgment of
invalidity as to the ’721 and ’172 patents. We affirm the
judgment of non-infringement of Apple’s ’959 patent,
Apple’s ’414 patent, and Samsung’s ’239 patent and affirm
the judgment of infringement of Samsung’s ’449 patent.
In light of these holdings, we find that we need not address
any of the other issues on appeal.


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