Chisum and Mueller Dissect The Recent En Banc Decision In Apple v Samsung – “Smartphone Wars: Federal Circuit Shenanigans?”

This is a guest post by Donald Chisum and Janice Mueller.

The Federal Circuit’s October 7, 2016 en banc decision, 2016 WL 5864573, concerning onchismposte phase of the ongoing Apple v. Samsung smartphone patent wars, may turn out to be the court’s most controversial decision ever. We intend to explore this decision in depth during upcoming Chisum Patent Academy seminars. Meanwhile, for the benefit of Academy graduates and other patent professionals, we circulate here a detailed abstract of the decision, prepared by Academy co-founder Donald Chisum for future inclusion in his Patent Law Digest and the Chisum on Patents treatise. Click to download the detailed abstract.

Here’s a brief summary of the decision and some comments:
In Apple v. Samsung, the en banc court granted rehearing of a February 2016 panel decision and overturned that decision, without further requesting or permitting further argument or briefing.

The en banc majority (for seven judges), in an opinion by Judge Moore, proclaimed that it was merely applying existing law on obviousness and infringement. That proclamation rings hollow. How can a precedential en banc opinion discussing obviousness, claim interpretation, and the court’s precedent not impact the law? If the contrary, why was the case taken en banc?

The dissents (one each by the three February 2016 panel members) charged that the en banc majority had elevated the status of “secondary considerations” and made issues on the motivation to combine more fact-intensive. Those assertions will undoubtedly resonate in some quarters. For example, making obviousness more factual could well impact the scope of Federal Circuit review of PTAB decisions in inter partes review (now the largest part of the court’s docket).

The highly unusual posture of the Apple-Samsung en banc case may even cause some to question whether the decision smacks of pro-patentee bias.

Discussions at our Academy seminars are always lively, but our exploration of this intriguing case promises to be particularly spirited.

Read the full opinion here.

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One Response to Chisum and Mueller Dissect The Recent En Banc Decision In Apple v Samsung – “Smartphone Wars: Federal Circuit Shenanigans?”

  1. Paul Cole says:

    The extreme importance of this case has been noted, and it is discussed in the forthcoming Supplement to the CIPA Guide.

    Study was focused on the illustrated “slide to unlock” feature, a patent for which was held patent-eligible but invalid for obviousness by the UK Court of Appeal over similar art to that cited in the US.

    From my European standpoint one of the most interesting aspects of the decision is the deference implicitly given to field of endeavour. The invention concerned touch displays for mobile devices, and a wall-mounted display would seem a less than promising starting point for development of the invention, especially where the relevant embodiment was only one of five alternatives and was ranked 4th in user preference. US practitioners have tended to downplay “field of endeavour”, and the decision here shows the value of this type of argument.

    Based on my reading of US decisions, the significance of the secondary consideration evidence comes as no surprise. For contemporaneous peer reaction and even discounting the atmosphere at a Steve Jobs product launch, the cheers of the audience which contained journalists and other knowledgeable people when “slide to unlock” was first displayed should be set against expert hindsight dissection of the invention with starting points selected with knowledge of the invention. There was also evidence that the feature contributed to the success of the ultimate product, and that its value was recognised in non less than five Samsung internal documents recommending copying.

    Neither US law nor UK law provides any statutory or rule-based framework for evaluating obviousness, unlike that of the EPO where problem/solution analysis can be traced back to the PCT implementing regulations. The task of the court is to weigh all relevant evidence and reach a conclusion. All that we can do is to identify potentially relevant evidential topics and consider the weight to be given to the relevant ones in individual cases. In this case the secondary consideration evidence was very compelling and the outcome is hardly a surprise.

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