No. 16-___
`
`IN THE
`Supreme Court of the United States
`————
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., AND SAMSUNG
`TELECOMMUNICATIONS AMERICA, LLC,
`Petitioners,
`
`v.
`APPLE INC.,
`
`Respondent.
`
`————
`On Petition for a Writ of Certiorari to the
`United States Court of Appeals
`for the Federal Circuit
`————
`PETITION FOR A WRIT OF CERTIORARI
`————
`KATHLEEN M. SULLIVAN
`Counsel of Record
`WILLIAM B. ADAMS
`DAVID M. COOPER
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`51 Madison Avenue
`22nd Floor
`New York, NY 10010
`(212) 849-7000
`kathleensullivan@
`quinnemanuel.com
`
`JOHN B. QUINN
`MICHAEL T. ZELLER
`SCOTT L. WATSON
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`865 S. Figueroa Street
`10th Floor
`Los Angeles, CA 90017
`(213) 443-3000
`BRIAN C. CANNON
`KEVIN P.B. JOHNSON
`VICTORIA F. MAROULIS
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`555 Twin Dolphin Drive
`5th Floor
`Redwood Shores, CA 94065
`(650) 801-5000
`
`Counsel for Petitioners
`
`March 10, 2017
`WILSON-EPES PRINTING CO., INC. – (202) 789-0096 – WASHINGTON, D. C. 20002
`
`
`
`IN THE
`Supreme Court of the United States
`————
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., AND SAMSUNG
`TELECOMMUNICATIONS AMERICA, LLC,
`Petitioners,
`
`v.
`APPLE INC.,
`
`Respondent.
`
`————
`On Petition for a Writ of Certiorari to the
`United States Court of Appeals
`for the Federal Circuit
`————
`PETITION FOR A WRIT OF CERTIORARI
`————
`KATHLEEN M. SULLIVAN
`Counsel of Record
`WILLIAM B. ADAMS
`DAVID M. COOPER
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`51 Madison Avenue
`22nd Floor
`New York, NY 10010
`(212) 849-7000
`kathleensullivan@
`quinnemanuel.com
`
`JOHN B. QUINN
`MICHAEL T. ZELLER
`SCOTT L. WATSON
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`865 S. Figueroa Street
`10th Floor
`Los Angeles, CA 90017
`(213) 443-3000
`BRIAN C. CANNON
`KEVIN P.B. JOHNSON
`VICTORIA F. MAROULIS
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`555 Twin Dolphin Drive
`5th Floor
`Redwood Shores, CA 94065
`(650) 801-5000
`
`Counsel for Petitioners
`
`March 10, 2017
`WILSON-EPES PRINTING CO., INC. – (202) 789-0096 – WASHINGTON, D. C. 20002
`
`
`
`QUESTIONS PRESENTED
`This petition presents three questions of great
`importance to patent law that arise from the decisions
`of a deeply divided Federal Circuit:
`1. Do this Court’s decisions in Graham v. John
`Deere Co., 383 U.S. 1 (1966), and KSR International
`Co. v. Teleflex Inc., 550 U.S. 398 (2007), require a court
`to hold patents obvious as a matter of law under 35
`U.S.C. § 103 where the patents make at most trivial
`advances over technologies well-known to a person of
`skill in the art?
`2. Does this Court’s decision in eBay Inc. v.
`MercExchange, L.L.C., 547 U.S. 388 (2006), require
`application of the four-factor test for injunctions in
`accordance with traditional equitable principles, and
`therefore require more than merely “some connection”
`between an infringing feature and asserted irrepar-
`able harm to support issuance of an injunction for
`patent infringement?
`3. Does this Court’s decision in Warner-Jenkinson
`Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997),
`require evidence that an accused product meets all
`elements of the relevant claim to support entry of a
`judgment of patent infringement?
`
`
`
`
`
`
`
`
`(i)
`
`
`
`ii
`RULE 29.6 STATEMENT
`Samsung Electronics America, Inc. (“SEA”) is a
`wholly-owned subsidiary of Samsung Electronics Co.,
`Ltd. (“SEC”), a publicly held corporation organized
`under the laws of the Republic of Korea. SEC is not
`owned by any parent corporation and no other publicly
`held corporation owns 10% or more of its stock. No
`other publicly held corporation owns 10% or more
`of SEA’s stock. Effective January 1, 2015, Samsung
`Telecommunications America, LLC (“STA”) merged
`with and into SEA, and therefore STA no longer exists
`as a separate corporate entity.
`
`
`
`TABLE OF CONTENTS
`
`QUESTIONS PRESENTED ...............................
`RULE 29.6 STATEMENT ...................................
`INTRODUCTION ................................................
`OPINIONS BELOW ............................................
`JURISDICTION ..................................................
`STATUTORY PROVISIONS INVOLVED ..........
`STATEMENT OF THE CASE ............................
`A. The Patents At Issue ..................................
`B. The District Court Proceedings ..................
`C. The Federal Circuit’s Injunction Decision ..
`D. The Federal Circuit’s Merits Decision .......
`E. The Federal Circuit’s En Banc Decision ....
`REASONS FOR GRANTING THE WRIT ..........
`I. THIS CASE RAISES LEGAL ISSUES
`OF GREAT IMPORTANCE TO PATENT
`LAW THAT MERIT THIS COURT’S
`REVIEW ....................................................
`II. THE FEDERAL CIRCUIT CREATED
`NEW AND
`INCORRECT PATENT
`LAW ON THE ISSUES OF OBVIOUS-
`NESS, INJUNCTIVE RELIEF, AND
`INFRINGEMENT .....................................
`A. The Decision Below Departs From
`KSR And Graham By Significantly
`Raising The Bar For Obviousness ......
`
`
`Page
`i
`ii
`1
`3
`4
`4
`5
`5
`7
`7
`9
`9
`15
`
`15
`
`20
`
`20
`
`(iii)
`
`
`
`iv
`TABLE OF CONTENTS—Continued
`
`
`
`Page
`
`28
`
`31
`35
`
`1a
`
`B. The Decision Below Departs From
`eBay By Significantly Lowering The
`Bar For Patent Injunctions .................
`C. The Decision Below Conflicts With
`The Warner-Jenkinson All-Elements
`Rule For Patent Infringement ............
`CONCLUSION ....................................................
`APPENDIX
`APPENDIX A – Federal Circuit En Banc
`Merits Decision (Oct. 7, 2016) .......................
`APPENDIX B – Federal Circuit
`Panel
`Merits Decision (Feb. 26, 2016) ..................... 112a
`APPENDIX C – Federal Circuit Injunction
`Decision (Dec. 16, 2015) ................................. 159a
`APPENDIX D – District Court Order Grant-
`ing In Part And Denying In Part Samsung’s
`Motion For Judgment As A Matter Of Law
`(Sept. 9, 2014) ................................................. 218a
`APPENDIX E – District Court Order Deny-
`ing Apple’s Motion For Permanent Injunc-
`tion (Aug. 27, 2014) ........................................ 291a
`APPENDIX F – Federal Circuit Order Deny-
`ing Rehearing En Banc In Merits Appeal
`(Nov. 28, 2016) ................................................ 353a
`APPENDIX G – Federal Circuit Order Deny-
`ing Rehearing En Banc In Injunction Appeal
`(Dec. 16, 2015) ................................................ 355a
`
`
`
`
`v
`TABLE OF CONTENTS—Continued
`
`Page
`
`APPENDIX H – Federal Circuit Order Grant-
`ing In Part And Denying In Part Panel
`Rehearing In Injunction Appeal (Dec. 16,
`2015) ............................................................... 357a
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`vi
`TABLE OF AUTHORITIES
`
`CASES
`
`Page(s)
`
`8
`
`8
`
`9
`
`17
`
`17
`
`Apple Inc. v. Motorola, Inc.,
`757 F.3d 1286 (Fed. Cir. 2014) ....... 6, 10, 32, 33
`Apple Inc. v. Samsung Elecs. Co.,
`695 F.3d 1370 (Fed. Cir. 2012) .................
`Apple Inc. v. Samsung Elecs. Co.,
`735 F.3d 1352 (Fed. Cir. 2013) .................
`Apple Inc. v. Samsung Elecs. Co.,
`No. 12-cv-630, Dkts. 2157, 2158
`(N.D. Cal. Jan. 18, 2016) ..........................
`Bestop, Inc. v. Tuffy Sec. Prod., Inc.,
`No. 13-cv-10759, 2016 U.S. Dist. LEXIS
`56965 (E.D. Mich. Apr. 29, 2016) .............
`Dominion Res. Inc. v. Alstom Grid, Inc.,
`No. CV 15-224, 2016 WL 5674713
`(E.D. Pa. Oct. 3, 2016) ..............................
`eBay Inc. v. MercExchange, L.L.C.,
`547 U.S. 388 (2006) ...... i, 1, 2, 15, 16, 17, 28, 30
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .. i, 1, 14, 20, 21, 22, 24, 25, 27
`Great Atl. & Pac. Tea Co. v. Supermarket
`Equip. Corp.,
`340 U.S. 147 (1950) ...................................
`Hotchkiss v. Greenwood,
`52 U.S. 248 (1851) .....................................
`Innogenetics NV v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .................
`Jungersen v. Ostby & Barton Co.,
`335 U.S. 560 (1949) ...................................
`
`25
`
`24
`
`18
`
`25
`
`
`
`vii
`TABLE OF AUTHORITIES—Continued
`
`
`
`Page(s)
`
`26
`
`4
`
`29
`
`KSR International Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)
` ....... i, 1, 14, 15, 16, 20, 21, 22, 23, 24, 25, 27, 34
`Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
`485 F.3d 1157 (Fed. Cir. 2007) .................
`Limelight Networks, Inc. v. Akamai
`Techs. Co.,
`134 S. Ct. 2111 (2014) ............................... 31, 34
`Major League Baseball Players Ass’n
`v. Garvey,
`532 U.S. 504 (2001) ...................................
`Parker v. Winnipiseogee Lake Cotton
`& Woollen Co.,
`67 U.S. 545 (1862) .....................................
`Presidio Components, Inc. v. Am. Tech.
`Ceramics Corp.,
`No. 14-CV-02061-H-BGS, 2016 WL
`4377096 (S.D. Cal. Aug. 17, 2016) ............
`Radware, Ltd. v. F5 Networks, Inc.,
`No. 5:13-CV-02024-RMW, 2016 WL
`4427490 (N.D. Cal. Aug. 22, 2016) ...........
`Sakraida v. Ag Pro, Inc.,
`425 U.S. 273 (1976) ...................................
`Samsung Elecs. Co. v. Apple Inc.,
`136 S. Ct. 2522 (2016) ...............................
`Spine Sols., Inc. v. Medtronic Sofamor
`Danek USA, Inc.,
`620 F.3d 1305 (Fed. Cir. 2010) .................
`
`17
`
`17
`
`25
`
`9
`
`21
`
`
`
`viii
`TABLE OF AUTHORITIES—Continued
`
`
`
`Page(s)
`
`29
`
`18
`
`19
`
`34
`
`25
`
`18
`
`22
`
`Steel Co. v. Citizens for a Better
`Environment,
`523 U.S. 83 (1998) .....................................
`Superguide v. DirectTV,
`358 F.3d 870 (Fed. Cir. 2004) ...................
`Teva Pharmaceuticals, Inc. v. Sandoz, Inc.,
`135 S. Ct. 831 (2015) .................................
`Texas Instruments Inc. v. Cypress
`Semiconductor Corp.,
`90 F.3d 1558 (Fed. Cir. 1996) ...................
`Transocean Offshore Deepwater Drilling,
`Inc. v. Maersk Drilling USA, Inc.,
`699 F.3d 1340 (Fed. Cir. 2012) .................
`W. Pac. RR Corp. v. W. Pac. RR Co.,
`345 U.S. 247 (1953) ...................................
`W. Union Co. v. MoneyGram Payment
`Sys., Inc.,
`626 F.3d 1361 (Fed. Cir. 2010) .................
`Warner-Jenkinson Co. v. Hilton Davis
`Chemical Co.,
`520 U.S. 17 (1997) .............................. i, 2, 31, 34
`Water-Meter Co. v. Desper,
`101 U.S. 332 (1879) ...................................
`Winter v. Natural Resources Defense
`Council, Inc.,
`555 U.S. 7 (2008) .......................................
`
`31
`
`29
`
`STATUTES AND RULES
`
`28 U.S.C. § 1254(1) .......................................
`
`4
`
`
`
`ix
`TABLE OF AUTHORITIES—Continued
`
`
`
`Page(s)
`
`i, 4
`35 U.S.C. § 103 .............................................
`35 U.S.C. § 283 ........................................... 4, 5, 28
`Fed. R. App. Proc. 34(a)(2) ...........................
`19
`Fed. R. App. Proc. 35 ................................ 2, 12, 19
`
`MISCELLANEOUS
`
`2-5 Chisum on Patents § 5.06 (2015) ...........
`Apple Inc. v. Samsung Elecs. Co., No. 14-
`1802, Oral Argument at 8:32-8:40 (Fed.
`Cir. Mar. 4, 2015), available at http://
`oralarguments.cafc.uscourts.gov/default.
`aspx?fl=2014-1802.mp3 ............................
`Bernard Chao, Causation and Harm in
`a Multicomponent World, 164 U. Pa. L.
`Rev. Online 61 (2016) ...............................
`Donald Chisum & Janice Mueller,
`Smartphone Wars: Federal Circuit
`Shenanigans?, NATIONAL LAW REVIEW
`(Oct. 31, 2016), available at http://www.
`natlawreview.com/article/chisum-and-
`mueller-dissect-recent-en-banc-decision-
`apple-v-samsung-smartphone-wars .........
`Derek F. Dahlgren et al., Apple v. Sam-
`sung: Procedural Fairness At The Fed.
`Circ., LAW360 (Nov. 6, 2016), available at
`https://www.law360.com/articles/860063/
`apple-v-samsung-procedural-fairness-at-
`the-fed-circ ................................................
`
`
`15
`
`3
`
`3
`
`2
`
`2
`
`
`
`x
`TABLE OF AUTHORITIES—Continued
`
`
`
`Page(s)
`
`Mark Hannemann et al., Fed. Circ. Radi-
`cally Changes The Law Of Obviousness,
`LAW360 (Oct. 19, 2016), available at
`https://www.law360.com/articles/853200/
`fed-circ-radically-changes-the-law-of-
`obviousness ...............................................
`
`20
`
`
`
`INTRODUCTION
`This petition arises from a pair of deeply divided
`decisions by the Federal Circuit that make critical
`changes in several of the most frequently litigated
`issues of patent law: obviousness, injunctive relief,
`and infringement. In one decision, the en banc Federal
`Circuit overturned a unanimous panel decision that
`had reversed a nearly $120 million judgment of patent
`infringement—and did so without briefing or argu-
`ment and over the dissents of all three panel members.
`In the other decision, on interlocutory review, a differ-
`ent Federal Circuit panel insisted over a vigorous dissent
`that the district court should have issued a permanent
`injunction despite detailed findings of lack of irrepara-
`ble harm.
`The four dissents from the two decisions starkly
`demonstrate the need for this Court’s review. As to
`obviousness, this Court held in Graham v. John Deere
`Co., 383 U.S. 1 (1966), and KSR International Co. v.
`Teleflex Inc., 550 U.S. 398 (2007), that obviousness is
`a question of law requiring objective inquiry. But the
`en banc majority treated obviousness as a question of
`fact, found it dispositive that prior art was embodied
`in a different device, and gave secondary considera-
`tions
`like
`industry praise greater weight than
`technical evidence showing obviousness to a skilled
`artisan. The decision thus raised the bar for proving
`obviousness so high as to make KSR and Graham all
`but meaningless.
`As to injunctive relief, this Court held in eBay Inc.
`v. MercExchange, L.L.C., 547 U.S. 388 (2006), that
`patent injunctions are to be governed by the same
`four-factor, equitable test as other injunctions. Ordi-
`nary injunctions require a causal nexus to irreparable
`harm. But the injunction decision below held that
`
`
`
`2
`there need only be “some connection” between patent
`infringement and irreparable harm. This abrogation
`of traditional causation principles creates a special
`rule for patent injunctions in violation of eBay and
`has encouraged a resurgence of patent injunctions no
`matter how minor the patent at issue.
`Finally, as the Court reaffirmed in Warner-Jenkinson
`Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997),
`a patent claim can be infringed only if the accused
`product practices all elements of the claim. But the en
`banc decision reinstates a judgment of infringement
`without even considering two of the three asserted
`claim elements challenged on appeal.
`For all these reasons, the decisions below are wrong
`and warrant this Court’s review. But they especially
`warrant this Court’s review because of the troubling
`way in which they were issued. The en banc decision
`took the parties and observers entirely by surprise. It
`was issued without notice, briefing, or argument and
`without any plausible Rule 35 basis. It thus caused
`one prominent commentator to suggest that it “smacks
`of pro-patentee bias” and may be the Federal Circuit’s
`“most controversial decision ever,”1 and another to
`suggest that its “strange procedural path” may “ulti-
`mately undermine perceptions of the Federal Circuit’s
`institutional legitimacy.”2 As to the injunction deci-
`sion, its author stated at oral argument, “I think eBay
`
`
`1 Donald Chisum & Janice Mueller, Smartphone Wars: Federal
`Circuit Shenanigans?, NATIONAL LAW REVIEW (Oct. 31, 2016),
`available at http://www. natlawreview.com/article/chisum-and-
`mueller-dissect-recent-en-banc-decision-apple-v-samsung-smartph
`one-wars.
`2 Derek F. Dahlgren et al., Apple v. Samsung: Procedural
`Fairness At The Fed. Circ., LAW360 (Nov. 6, 2016), available at
`
`
`
`3
`was wrongly decided …. I think patentees should get
`injunctions.”3 And the decision retrenched so far from
`settled Federal Circuit law that, in one commentator’s
`words, the Federal Circuit’s “new and lower causal
`nexus standard appears disconnected from the reality
`of multicomponent devices. … The result is a causal
`nexus standard that has almost no connection to
`causation at all.”4
`Because no other circuit can consider the important
`patent issues here, and because the Federal Circuit
`was so deeply divided and followed such troubling
`procedures, this Court should grant certiorari.
`
`OPINIONS BELOW
`For the merits appeal, the opinion of the en banc
`U.S. Court of Appeals for the Federal Circuit is
`reported at 839 F.3d 1034 and reproduced at App.
`1a-111a, and the opinion of the panel is reported at
`816 F.3d 788 and reproduced at App. 112a-158a. The
`Federal Circuit’s order denying Samsung’s petition for
`rehearing en banc is reproduced at App. 353a-354a.
`For the injunction appeal, the Federal Circuit’s
`opinion is reported at 809 F.3d 633 and reproduced at
`App. 159a-217a. The orders of the court of appeals
`denying rehearing en banc and granting panel rehear-
`ing for the limited purpose of modifying the opinion
`are reproduced at App. 355a-359a.
`
`
`https://www.law360.com/articles/860063/apple-v-samsung-procedu
`ral-fairness-at-the-fed-circ.
`3 Apple Inc. v. Samsung Elecs. Co., No. 14-1802, Oral Argu-
`ment at 8:32-8:40 (Fed. Cir. Mar. 4, 2015), available at http://
`oralarguments.cafc.uscourts.gov/default.aspx?fl=2014-1802. mp3.
`4 Bernard Chao, Causation and Harm in a Multicomponent
`World, 164 U. Pa. L. Rev. Online 61, 70 (2016).
`
`
`
`4
`JURISDICTION
`On November 28, 2016, the court of appeals denied
`Samsung’s petition for rehearing en banc in the merits
`appeal from the district court’s final judgment. On
`February 21, 2017, the Chief Justice extended the
`time for filing a petition for a writ of certiorari to
`March 29, 2017. This Court has jurisdiction under 28
`U.S.C. § 1254(1). The interlocutory decision on the
`injunction appeal is properly raised for certiorari now
`on final judgment. See, e.g., Major League Baseball
`Players Ass’n v. Garvey, 532 U.S. 504, 508 n.1 (2001).
`
`STATUTORY PROVISIONS INVOLVED
`Section 103 of the Patent Act, 35 U.S.C. § 103,
`states:
`A patent for a claimed invention may not be
`obtained, notwithstanding that the claimed
`invention is not identically disclosed as set
`forth in section 102, if the differences between
`the claimed invention and the prior art are
`such that the claimed invention as a whole
`would have been obvious before the effective
`filing date of the claimed invention to a per-
`son having ordinary skill in the art to which
`the claimed invention pertains. Patentability
`shall not be negated by the manner in which
`the invention was made.
`Section 283 of the Patent Act, 35 U.S.C. § 283,
`states:
`The several courts having jurisdiction of cases
`under this title may grant injunctions in
`accordance with the principles of equity to
`prevent the violation of any right secured by
`
`
`
`5
`patent, on such terms as the court deems
`reasonable.
`
`STATEMENT OF THE CASE
`This petition arises from the Federal Circuit’s en
`banc decision (App. 1a-111a) affirming a judgment of
`infringement as to three utility patents (U.S. Patent
`No. 5,946,647 (“the ’647 patent”), U.S. Patent No.
`8,046,721 (“the ’721 patent”), and U.S. Patent No.
`8,074,172 (“the ’172 patent”)) and from an earlier
`panel decision on interlocutory review (App. 159a-
`217a) vacating the denial of a permanent injunction.
`
`A. The Patents At Issue
`1. Filed in 1996 in the age of desktop computers,
`Apple’s ’647 patent, commonly known as “quick links,”
`allows use of an “analyzer server” to “perform[] actions”
`(like sending an email) by clicking on a “detected
`structure” (like an email address) when that data is
`received in a document. Claim 9 of the ’647 patent
`depends from claim 1, which provides:
`1. A computer-based system for detecting
`structures in data and performing actions on
`detected structures, comprising: …
`an analyzer server for detecting structures in
`the data, and for linking actions to the
`detected structures ….
`A597.5 In a decision issued in a separate case on the
`last day of trial in this case, the Federal Circuit
`construed the limitation “analyzer server” in this
`claim as “a server routine separate from a client that
`receives data having structures from the client.”
`
`5 Cites to “A__” refer to the appendix filed in the Federal
`Circuit. Cites to “App. __” refer to the Petition Appendix.
`
`
`
`6
`Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1304 (Fed.
`Cir. 2014).
`2. Apple’s ’721 patent, commonly known as “slide to
`unlock,” concerns software for a user interface on a
`touchscreen in which the screen can be unlocked by
`sliding a finger across the screen. Claim 8 of the ’721
`patent depends from claim 7, which provides for:
`7. A portable electronic device, comprising: …
`one or more modules … including instruc-
`tions: …
`to unlock the hand-held electronic device if
`the unlock image is moved from the first
`predefined location on the touch screen to a
`predefined unlock region on the touch-
`sensitive display.
`A685.
`3. Apple’s ’172 patent, commonly known as
`“autocorrect,” is directed to one particular way of
`providing word recommendations for correcting text a
`computer user types. Claim 18 of the ’172 patent
`provides for:
`a first area of the touch screen display that
`displays a current character string … ; and
`a second area of the touch screen display …
`that displays the current character string or
`a portion thereof and a suggested replace-
`ment character string … ;
`wherein;
`the current character string in the first area
`is replaced with the suggested replacement
`character string if the user activates a …
`delimiter [or] if the user performs a gesture
`
`
`
`7
`on the suggested replacement character
`string in the second area ….
`A707-08.
`
`B. The District Court Proceedings
`Apple filed a complaint alleging infringement of
`eight patents, including the three discussed above.
`A3044-57. In summary judgment proceedings, the
`district court found the ’172 patent infringed as a
`matter of law. A164. After a four-week trial, a jury
`returned a verdict finding that nine Samsung products
`infringed one or both of Apple’s ’647 and ’721 patents.
`A40869; A40872. The jury also answered “Yes” to a
`general verdict question as to the validity of the ’721
`and ’172 patents. A40874. The jury awarded Apple
`$119.6 million in damages. A40875.
`The district court denied Samsung’s post-trial
`motion for, inter alia, judgment as a matter of law
`that the ’647 and ’721 patents were invalid and not
`infringed and that the ’172 patent was invalid. App.
`219a-251a, 256a-259a.
`The district court also denied Apple’s motion for a
`permanent injunction. App. 291a-352a. Applying
`previously settled Federal Circuit law, the district
`court made detailed factual findings that there was
`no showing that “quick links,” “slide to unlock” or
`“autocorrect” drove consumer demand for the phones,
`and thus no showing of causal nexus between infringe-
`ment and Apple’s asserted irreparable harm from lost
`sales. App. 300a-336a. The district court entered final
`judgment for Apple. A1-2.
`
`C. The Federal Circuit’s Injunction Decision
`On interlocutory appeal, a divided panel of the
`Federal Circuit (Moore, J., joined by Reyna, J.) vacated
`
`
`
`8
`the district court’s denial of a permanent injunction.
`App. 159a-183a. The panel majority held that irrep-
`arable harm from lost sales could be established
`merely by a showing of “‘some connection’ between the
`patented features and the demand for the infringing
`products” (App. 170a), and that “the public interest
`nearly always weighs in favor of protecting property
`rights in the absence of countervailing factors,
`especially when the patentee practices his inventions”
`(App. 181a).
`Chief Judge Prost dissented, stating (App. 203a)
`that “[t]his is not a close case” for an injunction. App.
`203a-217a. The dissent emphasized the utter absence
`of record evidence that consumer demand for Samsung’s
`smartphones is driven by “quick links,” “slide to
`unlock,” or “autocorrect.” App. 209a-215a. The dissent
`would have found no abuse of discretion in the district
`court’s finding that Apple had failed to prove any
`“causal nexus” between the infringing features and
`irreparable harm. App. 215a.
`On Samsung’s petition for panel rehearing or
`rehearing en banc, the panel majority amended the
`opinion to delete the statement that the patented
`features were not a “significant driver of customer
`demand.” App. 358a. Prior Federal Circuit precedent
`had established that “some insubstantial connection
`between the alleged harm and the infringement” did
`not suffice. App. 207a (Prost, C.J., dissenting) (quot-
`ing Apple Inc. v. Samsung Elecs. Co., 695 F.3d 1370,
`1375 (Fed. Cir. 2012)) (emphasis added by Chief Judge
`Prost); see Apple Inc. v. Samsung Elecs. Co., 735 F.3d
`1352, 1364 (Fed. Cir. 2013). Nonetheless, the panel
`majority did not state that the patented features were
`a significant driver of demand, and thus Chief Judge
`Prost concluded that the amendment “does not obviate
`
`
`
`9
`the central problem with the majority’s conclusion.”
`App. 209a. Samsung’s petition was otherwise denied.
`App. 355a-359a. On remand, the district court enjoined
`Samsung from infringing the ’647, ’721, and ’172
`patents. Apple Inc. v. Samsung Elecs. Co., No. 12-cv-
`630, Dkts. 2157, 2158 (N.D. Cal. Jan. 18, 2016).6
`
`D. The Federal Circuit’s Merits Decision
`After the decision in the injunction appeal, on a
`separate appeal and cross-appeal from final judgment,
`a unanimous panel of the Federal Circuit (Dyk, J.,
`joined by Prost, C.J., and Reyna, J.) reversed in
`relevant part. App. 112a-158a. The panel held that
`the evidence was insufficient as a matter of law to
`support the judgment of infringement of the ’647
`patent (App. 117a-124a), and that the ’721 and ’172
`patents are invalid as obvious as a matter of law in
`light of prior art references (App. 124a-147a). The
`panel’s decision that no Apple patent was valid and
`infringed effectively mooted the decision in the
`injunction appeal.
`
`E. The Federal Circuit’s En Banc Decision
`Apple petitioned for rehearing en banc, and after six
`months with no sign of any grant of en banc review, a
`divided Federal Circuit suddenly issued an en banc
`opinion (Moore, J., joined by Newman, Lourie, O’Malley,
`Wallach, Chen, and Stoll, JJ.) that abrogated the
`panel’s merits decision. App. 1a-55a.
`
`
`6 Samsung filed a petition for certiorari (No. 15-1386) asking
`that the injunction decision be vacated as moot in light of the
`subsequent panel decision in the merits appeal. This Court
`denied the petition. Samsung Elecs. Co. v. Apple Inc., 136 S. Ct.
`2522 (2016).
`
`
`
`10
`The ’647 Patent—The en banc majority first
`vacated (App. 6a-21a) the panel decision’s reversal of
`the judgment of infringement as to the ’647 “quick
`links” patent. The panel had found no basis in the
`record to conclude that the code that Apple had
`accused is a “server routine separate from a client that
`receives data having structures from the client,” as
`the Motorola claim construction required, because the
`code does not run separately from the client. App.
`117a-124a. The en banc majority overturned that ruling,
`concluding that the claim’s “separateness” require-
`ment is satisfied by Apple’s expert’s testimony that the
`code was located in parts of memory separate from the
`client, even if it did not run separately from the client.
`App. 9a-16a.
`The en banc majority failed to consider Samsung’s
`arguments that, in addition to not satisfying the
`“separateness” requirement, the accused code does
`not meet the “server” or “receiving data” requirements
`of the Motorola claim construction. While the panel
`need not have reached either of those elements once it
`found the separateness element not met, the en banc
`majority was obliged to identify all claim elements in
`the accused products before reinstating the judgment
`of infringement, but did not do so.
`The ’721 Patent—The en banc majority next
`vacated (App. 21a-45a) the panel’s holding (App. 126a-
`140a) that claim 8 of the ’721 “slide to unlock” patent
`is invalid as obvious in light of two pieces of prior
`art: “Neonode,” which discloses all the limitations of
`claim 8 other than a moving image associated with
`the sliding gesture, and “Plaisant,” which discloses
`such a moving image in a slider-toggle design for wall-
`mounted touchscreens. The en banc majority held it
`undisputed that “Neonode and Plaisant disclose all the
`
`
`
`11
`elements of claim 8.” App. 28a. But it nonetheless
`held their combination nonobvious.
`In reaching that surprising conclusion, the en banc
`majority assumed that, “where there is a black box
`jury verdict,” it must “presume the jury resolved under-
`lying factual disputes in favor of the verdict winner.”
`App. 21a-22a. Holding (App. 29a) that “whether a
`skilled artisan would have been motivated to combine
`references [is a] question[] of fact,” the court attributed
`to the jury (App. 31a) a hypothetical factual finding
`that a skilled artisan would not have combined Neonode
`and Plaisant because one involved a mobile phone and
`the other involved a wall-mounted controller. The en
`banc majority also held (App. 22a-23a) that secondary
`considerations like industry praise, copying, commer-
`cial success, and long-felt need “must be considered in
`every case where present.” The court further held
`(App. 33a-43a) that facts supporting such consid-
`erations may be presumed from a black-box jury
`verdict of validity, and held (App. 45) that these
`implicit jury findings on secondary considerations
`must be treated as “particularly strong” and that
`they “powerfully weigh in favor of validity.” The en
`banc majority thus, for example, attributed great
`significance to the fact that a general audience “burst
`into cheers” when Apple founder Steve Jobs demon-
`strated “slide to unlock” at an Apple event. App. 35a,
`39a (quotation marks omitted).
`The ’172 Patent—Finally, the en banc majority
`overturned (App. 45a-55a) the panel’s holding (App.
`140a-147a) that claim 18 of the ’172 “autocorrect”
`patent is invalid as obvious based on two pieces of
`prior art: “Robinson,” which discloses every element
`of the claim except displaying and replacing an
`incorrectly typed word in a first text-entry area, and
`
`
`
`12
`“Xrgomics,” which discloses that very element for
`auto-completion. The en banc majority held that the
`jury could have found that Xrgomics does not supply
`the missing element in Robinson because “Xrgomics is
`not directed to spelling correction, but is a ‘word
`completion patent.’” App. 50a (quotation marks
`omitted). The majority also concluded that the jury
`could have found each secondary consideration
`satisfied, and that this supported a showing of
`nonobviousness. App. 50a-52a.
`The En Banc Dissents—All three judges who sat
`on the unanimous panel filed dissenting opinions.
`App. 56a-78a (Prost, C.J., dissenting); App. 79a-102a
`(Dyk, J., dissenting); App. 103a-111a (Reyna, J.,
`dissenting).7 All three dissenting opinions expressed
`“concerns as to the procedural irregularities surround-
`ing this case at the en banc stage.” App. 56a (Prost,
`C.J., dissenting); see App. 79a-80a (Dyk, J. dissenting)
`(calling it “remarkabl[e]” that the court took an obvi-
`ousness case en banc for the first time in 26 years
`“without further briefing and argument from the parties,
`amici, or the government, as has been our almost uni-
`form practice in this court’s en banc decisions”); App.
`104a (Reyna, J., dissenting) (noting that the majority
`opinion, contrary to Rule 35, “reverses the panel …
`based on a belief that the panel’s decision was wrong”).
`As to whether the ’721 and ’172 patent claims are
`nonobvious, all three panel members dissented. App.
`58a-78a (Prost, C.J., dissenting); App. 82a-102a (Dyk,
`J., dissenting); App. 103a-111a (Reyna, J., dissenting).
`The dissents by Chief Judge Prost and Judge Dyk
`concluded that both patent claims are clearly obvious
`
`
`7 Judge Hughes concurred in the result without opinion. App.
`2a. Judge Taranto did not participate. App. 2a.
`
`
`
`13
`under this Court’s precedents. As to the ’721 “slide to
`unlock” patent, the dissents reasoned that “a skilled
`artisan, starting with the portable phone of Neonode,
`would have seen a benefit to adding Plaisant’s sliders
`to solve the accidental activation problem described by
`the ’721 patent.” App. 63a (Prost, C.J., dissenting); see
`App. 84a, 90a, 94a (Dyk, J., dissenting) (noting that
`this case “is not a close one” because the only element
`missing from Neonode was provided by Plaisant,
`which is “directed to solving the same problem in the
`same area”). As to the ’172 patent “autocorrect” patent,
`the dissents reasoned that autocorrection “was known
`in the prior art (Robinson),” the “only innovation is
`displaying contemporaneously the text to be autocor-
`rected,” and “[s]uch text displays have long been
`known in the prior art” as a “routine feature” well
`known to “anyone who’s used a computer since the
`late 1970s.” App. 84a, 88a-89a (Dyk, J., dissenting);
`see App. 74a (Prost, C.J., dissenting) (finding “no
`evidence” to support any finding that “Robinson and
`Xrgomics, when combined, would not disclose every
`limitation of the asserted claim”).
`The dissents likewise criticized the en
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