Apple, Inc. v. Samsung Elecs. Co.

• Decision Date: 29 January 2013
• Docket Number: Case No. 11–CV–01846–LHK.
• Citation: 920 F.Supp.2d 1079
• Court: U.S. District Court — Eastern District of California
• Parties: APPLE, INC., a California corporation, Plaintiff, 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.

920 F.Supp.2d 1079

APPLE, INC., a California corporation, Plaintiff,

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.

Case No. 11–CV–01846–LHK.

United States District Court,

N.D. California,

San Jose Division.

Jan. 29, 2013.

Michael A. Jacobs, Alison Margaret Tucher, Andrew Ellis Monach, Morrison & Foerster LLP, San Francisco, CA, Samuel Calvin Walden, Wilmer Cutler Pickering Hale and Dorr LLP, New York, NY, Brian Larivee, Brian Seeve, Timonthy D. Syrett, Wilmer Cutler Pickering Hall and Dorr LLP, Boston, MA, Andrew L. Liao, Christine E. Duh, Wilmer Hale, Benjamin George Damstedt, Cooley Godward Kronish LLP, Palo Alto, CA, Charles S. Barquist, Morrison & Foerster LLP, Los Angeles, CA, for Plaintiff.

Huan–Yi Lin, Steptoe Johnson LLP, Los Angeles, CA, John M. Caracappa, Paul A. Gennari, Steptoe and Johnson LLP, Washington, DC, Kathleen Marie Sullivan, Quinn Emanuel Urquhart and Sullivan, LLP, New York, NY, Thomas G. Pasternak, DLA Piper U.S. LLP, Chicago, IL, for Defendants.

ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR JUDGMENT AS A MATTER OF LAW

LUCY H. KOH, District Judge.

On August 24, 2012, after a thirteen day trial and approximately three full days of deliberation, a jury in this patent case reached a verdict. See ECF No. 1931. Samsung now seeks judgment as a matter of law to overturn certain of the jury's findings. In the alternative, Samsung moves for a new trial. See Samsung's Motion for Judgment as a Matter of Law, New Trial And/Or Remittitur Pursuant to Federal Rules of Civil Procedure 50 and 59 (“Mot.”), ECF No. 2013. Apple filed an opposition (“Opp'n”), ECF No. 2050, and Samsung filed a Reply (“Reply”), ECF No. 2131. For the reasons discussed below, the Court GRANTS Samsung's motion for judgment as a matter of law that claims 15 and 16 of Samsung's U.S. Patent No. 7,447,516 (“the '516 Patent”) are not exhausted. The Court also GRANTS judgment as a matter of law that Samsung's acts of patent infringement were not willful. However, for the reasons discussed below, the Court DENIES Samsung's motion for judgment as a matter of law in all other respects, and DENIES Samsung's motion for a new trial.¹

I. LEGAL STANDARD

Federal Rule of Civil Procedure 50 permits a district court to grant judgment as a matter of law “when the evidence permits only one reasonable conclusion and the conclusion is contrary to that reached by the jury.” Ostad v. Oregon Health Scis. Univ., 327 F.3d 876, 881 (9th Cir.2003). A party seeking judgment as a matter of law after a jury verdict must show that the verdict is not supported by “substantial evidence,” meaning “relevant evidence that a reasonable mind would accept as adequate to support a conclusion.” Callicrate v. Wadsworth Mfg., 427 F.3d 1361, 1366 (Fed.Cir.2005) (citing Gillette v. Delmore, 979 F.2d 1342, 1346 (9th Cir.1992)).

A new trial is appropriate under Rule 59 “only if the jury verdict is contrary to the clear weight of the evidence.” DSPT Int'l, Inc. v. Nahum, 624 F.3d 1213, 1218 (9th Cir.2010). A court should grant a new trial where necessary “to prevent a miscarriage of justice.” Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir.2007).

II. ANALYSISA. The Jury Reasonably Found Apple's Design Patents to be Valid and Infringed

1. Infringement

Samsung moves for judgment as a matter of law that Samsung's accused devices do not infringe U.S. Patent No. D593,087 (“the D'087 Patent”), U.S. Patent No. D618,677 (“the D'677 Patent”), and U.S. Patent No. D604,305 (“the D'305 Patent”). See Mot. at 4–7. In the alternative, Samsung moves for a new trial on infringement of Apple's design patents. Id.

Samsung argues that there is no evidence to support the jury's findings of design patent infringement. Samsung cites evidence that would have supported a jury finding of non-infringement. Specifically, Samsung points to evidence of similarities between Apple's design patents and the prior art that might limit the scope of the design patents, thus rendering Samsung's designs outside of the scope of Apple's patents. See Mot. at 5–7. However, other evidence in the record supports the jury's finding of infringement. Specifically, the jury was presented with the design patents, accused devices, and prior art, and was appropriately instructed on the “substantially the same” standard for infringement and the role of prior art in analyzing design patent infringement. See Final Jury Instruction No. 46. Furthermore, the jury heard expert testimony supporting the conclusion that Samsung devices infringed Apple's design patents. See Tr. 1049:6–1064:11 (Apple design expert Peter Bressler's testimony on substantial similarity between Samsung's accused phones and the D'087 and D'677 Patents); Tr. 1371:18–1381:23 (Apple design expert Dr. Susan Kare's testimony on substantial similarity between Samsung's accused phones and the D'305 Patent). The phones themselves, along with the expert testimony, constitute substantial evidence in the record to support the jury's finding of infringement. Given this evidence, the jury's conclusion of infringement was not against the clear weight of the evidence.

Samsung also argues that the Court inappropriately failed to instruct the jury to factor out functional design elements. As a preliminary matter, Samsung raised this objection during the briefing on the final jury instructions, and therefore this argument is not waived. See Reply at 6, n. 7. However, a “filtering” instruction of the type Samsung requested is not required. The Federal Circuit has explained that a court may aid a jury in determining design patent infringement by construing the claims, see Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679–80 (Fed.Cir.2008) (en banc), and that claim construction may, but need not, include listing functional elements that should be factored out of the claimed design. See Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293–94 (Fed.Cir.2010) (construing a design patent by factoring out functional elements in the context of a bench trial). However, claim construction is a matter of law for the Court. The cases do not suggest that this type of claim construction is appropriate when instructing a jury. The cases engaging in such explicit filtering analysis generally do so in contexts in which a court then rules directly on infringement, such as summary judgment or a bench trial. See, e.g., Richardson, 597 F.3d 1288 (bench trial). Indeed, Egyptian Goddess warns of the risks of providing an element-by-element construction to a jury, as such instruction could divert the jury's attention from “the design as a whole.” Id.; see also543 F.3d at 680. Moreover, the Court determined in considering Samsung's request for a jury instruction that Samsung had not shown that the allegedly functional design elements were actually functional under the Federal Circuit's “dictated by function” standard, particularly in light of Apple's evidence that alternative designs existed. See Richardson, 597 F.3d at 1294 (applying the “dictated by function” standard during design patent claim construction). See also PX163–168 (alternative designs created by Apple); PX10, PX148, PX150, PX2277, PX2278 (alternative designs created by third parties).

In sum, the Court appropriately instructed the jury, and there is substantial evidence in the record to support the jury's ultimate finding of infringement of the D'087, D'677, and D'305 Patents. Moreover, the jury's verdict was not against the clear weight of the evidence. Accordingly, the Court DENIES Samsung's motion for judgment as a matter of law that none of Samsung's accused phones infringe Apple's design patents, and DENIES Samsung's motion in the alternative for a new trial.

2. Invalidity

Samsung also moves for judgment as a matter of law that Apple's D'087, D'677, and D'305, Patents, as well as U.S. Patent No. D504,889 (“the D'889 Patent”) are invalid, or in the alternative for a new trial. See Mot. at 7–8. Samsung argues that no reasonable jury could have found Apple's design patents valid.

a. Functionality

First, Samsung argues that the patents are invalid because the patented designs are functional. It was Samsung's burden at trial to establish invalidity by clear and convincing evidence. Samsung points to expert testimony identifying some allegedly functional elements of the designs. However, invalidity requires not just some functional elements, but that the overall design is “primarily functional.” See PHG Techs. v. St. John Companies, Inc., 469 F.3d 1361, 1366 (Fed.Cir.2006). A design is primarily functional if “the appearance of the claimed design is ‘dictated by’ the use or purpose of the article.” Id. (quoting L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed.Cir.1993)). Expert testimony of the type Samsung identifies, stating that individual design elements confer specific functional benefits (e.g., that round corners “help you move things in and out of your pocket,” Tr. 680:9–15), does not constitute clear and convincing evidence that the overall patented designs are dictated by function. Samsung has not identified any other evidence of functionality directed at the designs as a whole. Accordingly, the Court cannot say that the jury's finding that Samsung had not met its burden to establish functionality was unsupported by substantial evidence, or was against the clear weight of the evidence. Samsung's motion for judgment as a matter of law or a new trial on the question of design patent functionality is DENIED.

b. D'677 and D'087 Obviousness

Second, Samsung argues that the D'677 and D'087 Patents are invalid for obviousness.² “Because obviousness is a mixed question of law and fact, we first presume that the jury resolved the underlying factual disputes in favor of the verdict and leave those presumed findings undisturbed if they...