Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...
By Tony Dutra
Nov. 22 --A second jury in the U.S. District Court for the Northern District of California put back $290 million in a patent infringement award to Apple Inc. from the $450 million that Judge Lucy H. Koh had stricken eight months earlier (Apple Inc. v. Samsung Elecs. Co. N.D. Cal., No. 5:11-cv-01846-LHK, jury verdict 11/21/13).
The first trial resulted in an award of $1.05 billion for infringement by 23 different models of Samsung Electronics Co.'s Android-based smart phones and tablets, but Koh had found errors in the jury's calculations.
The verdict comes on the heels of a mixed decision by the U.S. Court of Appeals for the Federal Circuit related to Apple's request for an injunction in this case (Apple Inc. v. Samsung Elecs. Co.,, No. 2013-1129 (Fed. Cir. Nov. 18, 2013)) (223 PTD, 11/19/13). The appeals court affirmed a judgment denying Apple's request to enjoin Samsung smartphones as related to design patents covering the entire product, but it vacated and remanded as to an injunction against copying certain user features.
Meanwhile, a second case between the companies continues in the Northern District of California. Trial is set for March 31, 2014, on Apple's assertion of patents related to other design patents, features of the Android “Ice Cream Sandwich” operating system and the “unified search” feature that underlies the iPhone's Siri voice-response personal assistant. No. 5:12-cv-00630-LHK (N.D. Cal.).
The 2011 complaint filed by Apple alleged patent and trademark infringement by 28 different models of Samsung's Android-based smart phones and tablets.
Prior to trial, the court found that a design patent (U.S. Patent No. D618,677) and a utility patent (7,469,381) likely were not invalid, that Samsung's Galaxy S and Infuse 4 4G phones likely infringed both patents, and that the Droid Charge and Galaxy Tab likely infringed only the utility patent. Apple Inc. v. Samsung Electronics Co., No. 5:11-cv-01846-LHK, 2011 BL 304343 (N.D. Cal. Dec. 2, 2011) (242 PTD, 12/16/11).
On Aug. 24, a jury awarded $1.05 billion to Apple after finding that different Samsung models infringed different utility (7,469,381; 7,844,915; and 7,864,163) and design (D504,889) patents (166 PTD, 8/28/12). The jury's damages award was per infringing Samsung product, with 23 listed.
The design patents cover the entire products Apple is trying to protect--the iPhone and the iPad. The utility patents covered features--“snap back” or “bounce back,” “pinch-to-zoom,” and “double-tap-to-zoom”--supported under the Android standard, a concern for Google Inc.
Samsung moved for a new trial on damages or for remittur, identifying errors in the jury's considerations.
The jury impermissibly awarded Apple a percentage of Samsung's profits on devices that infringed only utility--and not design--patents, according to the court's March 1 decision. Apple Inc. v. Samsung Electronics Co.,, 926 F. Supp. 2d 1100, 2013 BL 63524 (N.D. Cal. 2013) (43 PTD, 3/5/13).
The court was able to calculate an appropriate remittitur for some but not all of the affected products.
For eight phones--Gem, Indulge, Infuse 4G, Galaxy SII AT&T, Captivate, Continuum, Droid Charge and Epic 4G--that infringed the '381 patent and at least one of the design patents, the court was unable to determine which part of the award impermissibly applied a 40 percent of profits figure, since that would have been an acceptable damages basis for the design patent infringement. Since Apple did not provide adequate evidence of how an alternate theory of damages would apply absent the infringer's profits theory, the court saw no option but to vacate the entire amount awarded for those eight products and order a new trial.
The jury also erred with respect to the timing of the actual notice date of infringement related to five other phones--Exhibit 4G, Galaxy Tab, Nexus S 4G, Replenish, and Transform--the court said, and it was unable to determine the exact number of infringing devices sold in the relevant time frames. It thus ordered a new trial on those models as well.
Finally, the court was unable to determine any legal theory on which the jury could have based its award for utility patent infringement only by the Galaxy Prevail.
These unexplained errors totaled $450 million, which Koh struck from the jury's award.
“The parties are encouraged to seek appellate review of this Order before any new trial,” Koh said in closing. However, the parties subsequently agreed that appeal was not viable. The new trial began on Nov. 12.
In the second verdict, the jury gave awards of about $100 million less than the first jury on seven of the eight models related to the first error--a $40 million award as to the Galaxy S II used on the AT&T network was not reconsidered.
For the five phones where the notice date was at issue, the second jury actually increased the award by over $18 million.
The first award of $58 million for infringement by the Galaxy Prevail was reduced by the second jury to $22 million.
William F. Lee of Wilmer Pickering Hale & Dorr LLP, Boston, represented Apple. William Charlie Price of Quinn Emanuel Urquhart Oliver & Hedges LLP, San Francisco, represented Samsung.
Two-verdict summary is available at http://pub.bna.com/ptcj/Apple1846Awards.pdf
To contact the reporter on this story: Tony Dutra in Washington at email@example.com
To contact the editor responsible for this story: Naresh Sritharan at firstname.lastname@example.org
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)