IP News

Claim 1 requires “program routines including an analyzer server for detecting structures in the data.” Before the trial, neither party sought claim construction of the “analyzer server” term, and both agreed to its ordinary meaning. However, on the last day of trial, the Federal Circuit issued a decision in Apple Inc. v. Motorola construing “analyzer server,” and the district court adopted this construction. Both parties were allowed to recall their experts to testify whether the Samsung devices met the limitation under the new construction.

Apple accused the Samsung Browser application and Messenger application of infringement. Apple asserted that software stored in shared program libraries was the “analyzer server” that detected structures and created links. The Federal Circuit stated that “a client program can go to the shared program library and 'borrow' (i.e., use) code from the library to perform a specific needed task, rather than having to program that functionality into the client program. In other words, the software library program runs as part of the client program.” Slip Op. at 9. In contrast, also stated by the Federal Circuit, a client-server relationship means the client sends information to a separately running server program that performs tasks using the information.

Notably, the CAFC pointed out that until the last day of the trial, Apple had tried its case based on a claim construction that was rejected in Motorola. The Apple expert first said that the “analyzer server” need not be a separate piece of software running independently. Then, on the last day of trial, the same expert stated that the Samsung software was separate and the client application goes to the program library and “uses [the server program] there.” Slip Op. at 9. Apple contended this was evidence that the “analyzer server” used by Samsung runs separately. However, the Federal Circuit decided that this testimony from Apple's expert showed the opposite; that the client program uses the server program, not that the server program runs separately.

The Apple expert also testified that the Samsung shared library programs were “definitely separate from the applications” because they were stored in a different part of the memory, they received data from the Messenger and Browser applications, and they were developed independently of the Browser and Messenger applications. Slip Op. at 9-10. However, the CAFC decided “this testimony is not sufficient evidence to allow a jury to conclude that the Samsung software met the 'analyzer server' limitation.” Slip Op. at 10. In support of its decision, the Federal Circuit referenced Samsung's experts and Apple's expert, who stated that the Samsung programs were not “standalone programs,” and they needed to be “exercised” by an application. Slip Op. at 11. Additionally, the Federal Circuit referenced an inventor of the '647 patent, who stated in a deposition that a shared library implementation was “a different kind of implementation” from a client-server implementation. Slip Op. at 13, Footnote 6.

The Federal Circuit keys in on the idea that the shared library code, which is stored somewhere separately from the Messenger app and Browser app, is “used” by those apps, and not run separately from those apps. Thus, the Messenger and Browser apps go to the “analyzer server” code in the shared library and use it to analyze the information in the apps, whereas in the '647 patent apps send information to the “analyzer server” to be analyzed. The Federal Circuit found that no reasonable jury could have concluded these are the same, and reversed the district court's denial of JMOL of non-infringement by the Samsung devices.

The Apple '721 Patent

Apple asserted claim 8 of the '721 patent, and the jury found that Samsung infringed, awarding Apple $2,990,625. Samsung moved for JMOL of invalidity, which was denied. The Federal Circuit reversed the district court denial of JMOL, finding that two prior art references, NeoNode and Plaisant, rendered the claim obvious.

The '721 patent is directed to a “slide to unlock” feature for touch-sensitive displays, where a user can slide an image from one spot on the screen to another spot to unlock the device. The parties did not dispute that the two references contained all the claimed features. Rather, Apple argued that the jury could have reasonably found that: 1) “Plaisant teaches away from using the 'slider toggle'” feature; and 2) a skilled artisan would not have been motivated to combine the references since “Plaisant describes wall-mounted devices rather than portable mobile phones.” Slip Op. at 19.

With respect to Apple's first argument, the Federal Circuit held that the Plaisant reference did not teach away from using the “slider toggle” feature merely because it noted that users did not prefer that particular design of the slider toggle. With respect to Apple's second argument, Plaisant concerns user interfaces for touchscreen devices and, notably, Apple did not offer any expert testimony to the contrary. Accordingly, the Federal Circuit held that “no reasonable jury could find that the Plaisant reference is not analogous art in the same field of endeavor.” Slip Op. at 21.

Apple argued that “even if Samsung established a prima facie case of obviousness, the evidence of secondary considerations demonstrates nonobviousness.” Slip Op. at 23. Apple asserted that there was evidence of a long-felt but unresolved need, industry praise, copying, and commercial success. However, the Federal Circuit held that the evidence of secondary considerations was too weak to be sufficient as a matter of law to overcome the prima facie obviousness case.

The Apple '172 Patent

Apple asserted claim 18 of the '172 patent, and the jury found that Samsung infringed, awarding Apple $17,943,750. Samsung moved for JMOL of invalidity, which was denied. The Federal Circuit reversed the district court denial of JMOL, finding that two prior art references, Robinson and Xrgomics, rendered the claim obvious.

The '172 patent is directed to “autocorrect” software on a mobile device that automatically corrects spelling errors. The parties did not dispute that autocorrect features were known in the prior art. Apple argued that “the jury could have found that a skilled artisan would not have been motivated to combine Xrgomics with Robinson because Xrgomics primarily discloses a text completion (rather than text correction) system and this is a different field than the autocorrect system.” Slip Op. at 33. However, the Federal Circuit held that text correction and text completion are closely related and are “in the 'same field of endeavor' such that they would be considered analogous art.” Slip Op. at 33.

Apple again argued that secondary considerations were sufficient to show non-obviousness, based on evidence of copying and commercial success. With respect to copying, the feature alleged to have been copied by Samsung was disclosed in the prior art, and therefore could not be relevant to prove non-obviousness. With respect to commercial success, the survey evidence relied on by Apple failed to prove a nexus between commercial success of the iPhone and the patented features. Accordingly, the evidence of secondary considerations was insufficient to overcome the strong prima facie obviousness case.

The Apple '959 Patent

Apple asserted claim 25 of the '959 patent, and the jury found the claim not invalid, and that Samsung did not infringe. Samsung moved for JMOL of invalidity and Apple moved for JMOL of infringement, both of which were denied by the district court. The Apple '959 patent covers “universal search” on the iPhone, permitting a user to search for results from both the phone and from the Internet based on a single search term. The Federal Circuit affirmed the judgment of non-infringement, finding that substantial evidence supported the jury's verdict because it showed that the accused Samsung products searched information previously downloaded from the Internet, not a plurality of locations including the Internet.

The Apple '414 Patent

Apple asserted claim 20 of the '414 patent, and the jury found the claim not invalid and not infringed. Samsung moved for JMOL of invalidity and Apple moved for JMOL of infringement, both which were denied. The Apple '414 patent describes and claims “background sync” software, which enables the phone to synchronize data while a user is manipulating that same data in an application, such as the Address Book. The CAFC affirmed the judgment of non-infringement, finding that substantial evidence supported the jury's verdict because it showed that the accused Samsung products did not include a synchronization software component “configured to synchronize” for e-mail, but merely included a software component that indirectly causes synchronization by calling other software components.

The Samsung '239 Patent

Samsung asserted claim 15 of the '239 patent, and the jury found the claim not infringed. The Samsung '239 patent claims systems for capturing, compressing, and transmitting videos. Samsung argued that the district court erred in construing the term “means for transmission” as requiring software (in addition to hardware) for transmission as a corresponding structure identified in the specification. The Federal Circuit disagreed, finding that software is necessary because hardware alone does nothing without software instructions telling it what to do, and affirmed the district court's construction and judgment of no infringement.

The Samsung '449 Patent

Samsung asserted claim 27 of the '449 patent, and the jury found that Apple infringed, awarding $158,000 in damages. Apple filed a motion for JMOL of non-infringement, which was denied. The Samsung '449 patent claims camera systems for compressing, decompressing, and organizing digital files such as photos and videos. Apple argued that the accused products did not meet the limitations of “compressor” and “decompressor” because the limitations require that the component compress and decompress both still images and videos, and Apple's products use separate and distinct components for images and videos. The Federal Circuit rejected this argument, holding that Samsung presented testimony that identified a single Apple design chip with circuitry that performs compressing/decompressing methods for both images and videos. Apple also argued that the accused products did not include the “search mode” limitation because the products do not display a list. Again the Federal Circuit rejected Apple's argument because the “Camera Roll” feature displays an array of thumbnail images, which was a “list.” Slip Op. at 35. Last, Apple argued that its products do not have a recording circuit that records images with classification data. The Federal Circuit found that Samsung presented testimony that Apple's “Camera Roll” feature contained “Albums,” which could include “classification data.” Slip Op. at 35. The Federal Circuit held that a jury could have relied on this testimony in reaching its verdict, and affirmed the judgment of infringement.

Howard J. Shire is Editor-in-Chief of this newsletter and a Partner in the New York office of Kenyon & Kenyon LLP. Daniel Shea is an associate at the firm.