Thursday, April 12, 2018

One month prior to yet another Apple v. Samsung trial, old and new disagreements on design patents surface

On May 14, Apple and Samsung will square off in court again. It's going to be the third trial in their first California case alone. What makes it interesting is that it will involve a design patent damages determination (damages in this case amounting to a disgorgement of infringer's profits) following a Supreme Court ruling in the same case. The exact amount of money that will change hands between Apple and Samsung won't impact the parties' positions in the smartphone market. However, it will be a signal to other design patent holders, including patent trolls. Should Apple be awarded a huge amount that Samsung could ultimately afford but the equivalent of which would potentially put many other companies out of business, design patents would be used in aggressive, extortionate ways.

Last week, Judge Lucy Koh ruled on the parties' Daubert motions. Daubert motions and rulings are hard to figure out from the outside unless they're just about numbers (such as damages claims that a court does or does not permit) because one would need to know the related expert reports to really understand the context. What became clear to me from Judge Koh's ruling, however, is that she gave Apple various opportunities beyond the test proposed by the United States government in 2016 to argue that the relevant article of manufacture for a disgorgement of design patent infringer's profits in this case is an entire phone, not just a casing. While Judge Koh adopted the broad lines of the DoJ's proposed test, her Daubert order explicitly and intentionally declines to apply parts of what the DoJ had argued in its amicus curiae brief to the Supreme Court.

This week, Apple and Samsung filed their motions in limine. Judge Koh allowed either party to bring three such motions for excluding evidence from the upcoming trial. Motions in limine are more instructive for third-party observers like you and me because one can largely understand their meaning without having access to the parties' expert reports, and because it's often very telling what kinds of evidence a party believes would be particularly prejudicial to its case.

Apple's motions in limine

Apple's first motion in limine appears to be its strongest one. The court previously excluded evidence relating to smartphone designs independently developed by Samsung before the iPhone--which nevertheless looked a lot like the iPhone--except in the context of invalidity and infringement. This slide shows some examples on the left, and the first iPhone on the right (click on the image to enlarge):

Let's see how Samsung will respond to this motion, but it won't be easy to persuade Judge Koh that this kind of evidence should be admitted now in the article-of-manufacture context if it was excluded from the previous damages retrial. It's not that it isn't interesting or powerful. In fact, if the jury saw this, it could have a major impact in Samsung's favor. But Judge Koh's cherished "Groundhog Day" principle is that what wasn't allowed at previous Apple v. Samsung trials won't be allowed next time.

By contrast, Apple's second motion in limine appears overreaching at least in key parts (this post continues below the document):

18-04-09 Apple Motion in Limine Against Unasserted Patents by Florian Mueller on Scribd

In that second motion in limine, Apple seeks to preclude Samsung from referring to "unasserted patents." If you scroll through the above PDF document, you'll see that the term "unasserted patents" relates to a wide array of rather disparate references to other patents. The question Judge Koh will ask herself is whether or not the probative value of any evidence is outweighed by prejudicial jury confusion. I'd be surprised if she agreed with Apple on each and every part of that motion. For an example, Apple argues that patents not asserted in this case are irrelevant to the determination of the relevant article of manufacture. However, I can't see how the existence of other smartphone-related patents (utility patents as well as design patents) would not have probative value: the single strongest argument for a narrowly-defined article of manufacture (just the casing) simply is that there is so much more in and on a smartphone than just a very few, narrow designs. Therefore, if the unapportioned profits made by Samsung with entire devices were to be disgorged, everything else would be deemed to have no commercial value at all (which would be a ridiculous proposition, of course).

Just like I would probably grant Apple's first motion in limine at first sight, I'd largely or completely deny the second one because Samsung must have the chance to argue to the jury--not only, but also on the basis of other patents--that other patents cover other elements of smartphones.

There's one thing in that entire PDF that I think shouldn't be shown to the jury. On PDF page 111 there is the following user comment:

"The most idiotic source of much of Apple's patent litigiousness has been the design patents -- almost all of the claims being totally farcical. For example, they claimed 'rounded corners' on rectangular phones. Hope you discuss that."

That would indeed be unfair to Apple. This blog has previously debunked the "rounded corners" myth; but that still doesn't mean that anyone could reasonably support a disgorgement of infringer's profits generated with entire devices.

Apple's third motion in limine is hard to analyze from the outside; let me say that for now I'm unconvinced of it. It's about evidence from after the period relevant to the damages determination the jury will have to make. For an example, Samsung provided some screenshots from Amazon's website that show replacement smartphone casings (with a screen) that are sold separately and at a price much lower than that of an entire phone. If the point Samsung wants to make is that casings are sold separately, I'm not sure the exact date matters. It certainly can't matter if the underlying facts (such as the availability of such replacement parts) was already true during the damages period.

Samsung's motions in limine

Samsung's first motion in limine seeks to "preclud[e] Apple from offering evidence, testimony, or attorney argument that improperly implies that Samsung's increased market share was caused by the introduction of features found to infringe in this lawsuit," such as the claim "that Samsung’s market share increased because of the introduction of features found to infringe."

Samsung says such evidence was previously allowed because it was relevant to an analysis of profits that Apple lost, but it isn't relevant now that it's all about the article of manufacture and Samsung's related profits.

For now it is indeed unclear to me how that kind of evidence would help--and not just confuse--the jury with respect to the article-of-manufacture determination. Let's see how Apple will respond.

Just like Apple's second motion in limine is the broadest one, so (though by far not equally broad, and clerly stronger in my view) is Samsung's second motion "for an order prohibiting Apple from presenting evidence or argument suggesting that this Court, the prior jury, or the U.S. Patent and Trademark Office ('PTO') has already determined the articles of manufacture to which Samsung applied the patented designs."

One of the things Apple would like to do is highlight to the jury how often the words "an electronic device" appear in the design patent documents. I agree with Samsung that the United States Patent & Trademark Office didn't accept or reject certain claim language with a view to an article-of-manufacture determination in a future damages case. No matter how often a patent says "an electronic device," it may nevertheless just relate to a component.

Samsung's third motion in limine relates to the '915 pinch-to-zoom API patent. The asserted claim was rejected by the USPTO on reexamination, and the Federal Circuit (which salvaged other Apple patents in other cases) affirmed the USPTO's decision. The way I understand Samsung's motion is that the disagreement between Apple and Samsung is not about whether the '915 patent is relevant to the damages determination in the upcoming retrial. Instead, the disagreement is whether the related adjustments made by Apple and its experts were sufficient.

There's nothing spectacular about those motions in limine, but they do raise some interesting issues. I'll comment again when Apple and Samsung have responded to each other's motions--particularly to each party's second motion.

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