As we reported yesterday, the judge in the Apple versus Samsung case has ruled that Samsung didn't "wilfully infringe" Apple's patents when designing its smartphones. Since publishing that story we have gained access to the complete ruling which is quite an insightful read.
- Samsung failed to prove that Apple's patents were invalid
- Apple's iPhone Trade Dress was famous, and Samsung diluted Apple's brand by copying it
- Samsung's infringement wasn't willful, but Samsung HQ was responsible
- Apple infringed Samsung's '516 patent, but it doesn't matter
- The Apple v Samsung trial was completely fair
Judge Lucy Koh upheld the decision of the US jury that found that Samsung had infringed six of Apple's patents, and as a result Samsung will have to pay Apple $1.05 billion in damages. Had Judge Koh found that Samsung's infringement had been willful, she could have tripled the damages to $3 billion.
In her ruling, Koh wrote: "To establish objective willfulness, Apple must prove by clear and convincing evidence that there was an objectively high likelihood that its actions constituted infringement of a valid patent."
Koh overturned the jury's verdict that the patent infringement had been willful because that Samsung was able to prove it believed the infringed patents were invalid.
Samsung had appealed the jury's finding on 24 August that Samsung had infringed Apple patents. Samsung lawyer Kathleen Sullivan had asked for the damages to be reduced by more than $600 million because the nine-member panel had been hampered by a verdict form that wasn’t "particularized" enough to allow jurors to arrive at damages on a product-by-product basis, writes Bloomberg.
In the document outlinging the ruling, Judge Koh issued a number of post-trial decisions outlined below.
The patents were invalid
Samsung wanted the judge to overrule the ruling that its accused devices infringe the D'087 Patent, the D'677 Patent and the D'305 Patent. The company tried to claim that the patents were invalid because they are 'functional' and 'obvious' and that prior art exists. The company also raised 'double patenting' as an issue.
Judge Koh ruled that: "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," adding: "Samsung has not identified any other evidence of functionality directed at the designs as a whole," overruling Samsung's suggestion that the patents were for functional designs.
As for obviousness: "The jury’s implied factual findings of a significant gap and indicia of non- obviousness are supported by substantial evidence in the record."
With regard to prior art, Koh wrote: "Neither the Fidler tablet, nor the still more divergent TC1000, can serve as a primary reference for obviousness."
Regarding 'double patenting', Koh wrote: "Apple has assured the validity of the D’677 Patent as against Samsung’s claim of double patenting over the D’087 Patent."
Copying the iPhone's Trade Dress diluted Apple's 'famous' brand
Samsung wanted the judge to rule that the iPhone Trade Dress was "not protectable and not diluted" because it is functional, and because trade dress cannot be diluted unless it is famous.
The judge denied Samsung's request, noting that: "There is substantial evidence in the record to support the jury’s findings that: (1) Apple rebutted the presumption that the unregistered iPhone 3G Trade Dress is functional, and (2) Samsung failed to rebut the presumption that the registered iPhone Trade Dress is non-functional."
Judge Koh also ruled that: "This significant pool of evidence represents substantial evidence in the record from which the jury could infer both secondary meaning and fame."
Koh confirmed that she agreed with Apple's claim that by copying its Trade Dress, Samsung had diluted its brand. She wrote: "Apple presented significant evidence that dilution by blurring was likely."
At this point Koh emphased that "an award of damages for trade dress dilution requires a finding that the dilution was willful."
She explained that Samsung's argument that Apple had "not submitted evidence that could support the jury’s verdict of willful dilution," has been denied.
The document goes through a number of different patents including… D’677, ’915, ’163, ’381, and the D'305 Patent. It is here that the judge's ruling that "Samsung’s motion for judgment as matter of law that Samsung did not willfully infringe" the patents is granted.
Judge Koh wrote that: "The court cannot conclude that Apple has met its burden to show willfulness by clear and convincing evidence."
Samsung also tried to claim that its parent company wasn't liable for activity in the US, claiming that: "SEC (Samsung Electronics Company) does not commit patent infringement in the United States" because it sells the accused devices through subsidiaries.
Judge Koh wrote that there was "Substantial evidence suggests that SEC exerted a high degree of control over SEA and STA activities in the United States," and "substantial evidence… that SEC directly infringed Apple’s patents."
The ruling goes on to outline Samsung's patent claims against Apple.
It refers to the '941 patent, '516 patent, '406 patent, '893 patent and the '711 patent, claiming that Apple infringed them.
With regard to the '516 patent the judge points out that it relates to an Intel baseband chip sales to Apple that were authorised by Samsung.
The jury found that Apple’s accused devices do not infringe claims 15 and 16 of the ’516 Patent.
However, the Court granted Samsung’s motion for judgment as a matter of law that claims 15 and 16 of the ’516 Patent are not exhausted.
Not that this matters: "This ruling does not change the outcome in this case because of the jury’s non-infringement finding," states the document.
The infringement of the other patents seems to hang around Apple's claim that its products generally use 'apps' rather than 'modes.' The document rules that the "record contains substantial evidence to support the jury’s finding that Apple’s devices do not use the 'modes' defined in Samsung’s patents."
Trial was manifestly unfair
Samsung's final claim was that the "trial was manifestly unfair". Samsung claimed the trial was unfair because: the trial time limitation prejudiced Samsung; Apple was aloud to point out to the jury which Samsung witness were not called; Samsung’s witnesses were barred from making some arguments, where Apple’s witnesses were allowed to make other arguments; Samsung was required to lay foundation for documents while Apple was not; Samsung was forbidden to play advertisements while Apple was not; and Samsung could not use depositions to cross-examine Apple’s witnesses while Apple was allowed to used deposition testimony during cross examination.
Judge Koh wrote: "None of these arguments merits a new trial," concluding that: "Accordingly, the trial was fairly conducted, with uniform time limits and rules of evidence applied to both sides. A new trial would be contrary to the interests of justice."
You can read the complete ruling here.