• Subscribe

    Subscribe to the RSS feed Subscribe to the blogs's ATOM feed
    Add to your Google Home Page or Google Reader Add to your My Yahoo!
    Add to your My MSN Add to your My AOL
    Subscribe to the Comments RSS feed Add to your Bloglines
    Email Subscription



  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Apple Jury Confuses Obviousness Analysis in Arriving at Record Damage Verdict?

Posted On: Aug. 29, 2012   By: Scott A. McKeown
apple-samsung-patentRecord Verdict Demonstrates Fallibility of Jury Trials

There has been a ton of armchair quarterbacking since last Friday’s one billion dollar damage verdict in the Apple/Samsung patent war. While Apple is generally regarded as a high-tech innovator, many commentators take issue with the mechanism by which Apple has asserted their rights. Many uninformed commentators are quick to decry the verdict as an exploitation of a patent system in need of reform. Yet, it is important to note that the U.S. patent system was reformed not even a year ago. The vast majority of legislative changes to U.S. patent laws will only begin to go into effect this September 16th.

Nowhere is the potential for the current AIA reform more clearly pronounced than in the public statements of the Apple/Samsung Jury Foreman.

When interviewed by Bloomberg (link here), the foreman explained (around the three minute mark) that his “aha moment” in assessing the alleged obviousness of Apple patents was when he realized that the Apple software would not work on the processor of the prior art. This is an odd statement considering that the test for obviousness is not whether features may be bodily incorporated into a prior art structure, but rather, what the combined teachings of those references would have suggested to one of ordinary skill in the art. In re Keller, 642 F.2d 413.

It could be that the Foreman was simply being inarticulate in his explanation. However, it seems far more likely that the jury was confused as to a proper obviousness analysis; this is not at all surprising. The Foreman and his colleagues were tasked with an impossibly complex mission: to navigate over a very short period of time, unfamiliar and arcane legal concepts mashed together with complex questions of technology. For this reason, jury verdicts and their corresponding damage awards can be quite the “crap shoot.” Not surprisingly, most patent litigation will settle prior to a jury trial.

After September 16th, defendants will have a choice to continue on to roll the dice at the district court with a jury trial of laypeople, or avail themselves of the new USPTO patentability trials of the AIA. The new trial proceedings of the AIA will be completed within 12-18 months of initiation and will be conducted before the USPTO’s Patent Trial & Appeal Board (PTAB).

Unlike jurors, the decision makers of the PTAB are not laypeople. Rather, PTAB judges are experienced in the application of U.S. patent law and must additionally have an engineering and/or science background. In addition to the established expertise in technology and patent law, unlike the courts, PTAB judges do not accord patents a presumption of validity, nor do they require clear and convincing evidence to invalidate a patent. Indeed, patent claims are accorded a broadest reasonable interpretation at the USPTO, which makes them that much easier to invalidate.

While some will take advantage of the alternative to litigation this September 16th, others will insist that they “save their arguments” for court. As between the two paths, the choice seems rather “obvious” to me.

9 Responses to “Apple Jury Confuses Obviousness Analysis in Arriving at Record Damage Verdict?”

  1. Kip says:

    Unless you have a weak case on the merits. Then you would prefer a crap shoot.

  2. Charles says:

    Apple will never go for the new system. They will always insist on a jury trial. They are a marketing company, and are adept at making simple message to average people. They would never want to give up that advantage.

  3. Charles,

    It is not up to Apple, it is up to the companies they sue.

    Scott

  4. gcubed says:

    What happens when there are countersuits, like in Apple v. Samsung?

    Would Samsung want PTAB judges to judge their patents for listening to music in the background and emailing of photos on a mobile device?

  5. G,
    The accused infringer decides whether or not to move the dispute to the PTAB, a counter suit is no different.

    Scott

  6. Popo says:

    The entire case rested on prior art, and the jury (very clearly) misunderstood the definition of prior art.

    The doors to appeal are wide open to say the least.

  7. dazed says:

    So wait, am I getting this right? The prior art examples were considered invalid because they could not run the Apple software, but the patent claims were valid even though these devices can’t run Apple software either?

    Even if the former had been a valid point, it seems extremely strange not to apply it to the latter.

  8. Steve Wilson says:

    What is REALLY funny is that the raw hardware COULD run each other’s software at some level. They are both based on the SAME processor. How they do graphics & video is very different – but the RAW CPU is the same beasty, i.e. it is an ARM processor.

    I read groklaw & the real time tweets of the case to follow it. I believe the Foreman of the jury (someone I have a lot in common with since I hold a couple patents, and am a practicing EE in the same physical area) got it wrong! I believe he did indeed mis-understood the whole concept of prior art.

    So I’m wondering/hoping that this does open up the path for an appeal under the standard of “what a reasonable jury” would find if his own words condemn this jury to being unreasonable.

  9. Andrew says:

    I would love to see an interview with the foreman, and a patent lawyer, and have the two of them duke it out. The exposure of those mistakes on national television will ensure a quick overturn of the jury’s verdict by the judge or an appeals court…