Earlier today the United States Court of Appeals for the Federal Circuit issued an incredibly important en banc decision in Apple Inc. v. Samsung Electronics Co. This decision reestablishes what should always have been the case; namely that the Federal Circuit is an appellate court that does not consider evidence outside the record or engage in fact finding on their own.
This case arose form a patent infringement suit and countersuit between Apple and Samsung where the district court granted summary judgment that Samsung’s accused devices infringed. The jury found the infringed claims were not invalid. Thereafter, the district court denied Samsung’s request for judgment as a matter of law (JMOL). Samsung appealed the district court’s grant of summary judgment and the denial of JMOL.
Initially in a panel decision the Federal Circuit reversed the detail of JMOL, which prompted Apple to request rehearing en banc. The decision today was the en banc resolution, which was a stinging rebuke of the panel. The majority of the Federal Circuit — Judges Moore, Newman, Lourie, O’Malley, Wallach, Chen, and Stoll — wrote a decision that will hopefully once and for all put an end to the Federal Circuit acting as judge, jury and appellate tribunal. In a majority decision authored by Judge Moore the Court explained that the Federal Circuit is an appellate court and as such it is not supposed to consider evidence outside the record or engage in fact finding. While that statement should sound funny for those familiar with the law and unfamiliar with the Federal Circuit, this is a huge moment in the modern history of the Federal Circuit. The Federal Circuit has been increasingly out of control for years, acting as a trial court and jury rather than an appellate court. Hopefully that will end today.
Perhaps the best summary of today’s decision is from the section of the majority opinion labeled The Decision to Grant En Banc Review. In this section Judge Moore wrote:
On February 26, 2016, a panel of this court reversed the denial of JMOL with regard to the jury verdict of infringement as to the ’647 patent and non-obviousness as to the ’721 and ’172 patents. Apple filed a petition for rehearing en banc. Apple’s petition argued that the panel reversed the jury’s finding of infringement of the ’647 patent by relying on extra-record evidence “none of which was of record and that the panel appears to have located only through independent research.” Apple Pet. 2. Apple argued that this extra-record extrinsic evidence was used to modify the agreed to and unappealed claim construction. See, e.g., id. at 8 (“The panel looked to [this extra- record evidence] to create its own plain meaning of ‘server’ as requiring a ‘stand alone’ program.”). Apple also argued that this extra-record evidence was used in “considering the factual question whether Samsung’s phones met the ‘analyzer server’ limitation.” See id. at 6, 8 (“The panel also relied on dictionary and encyclopedia entries to inform its understanding of how the shared library code in Samsung’s phones work.” (emphasis in original)). Apple also argued that the case should be taken en banc because “in an unprecedented decision,” the panel reversed nearly every fact finding by the jury which favored Apple. Id. at 1.
We granted Apple’s en banc petition to affirm our understanding of the appellate function as limited to deciding the issues raised on appeal by the parties, deciding these issues only on the basis of the record made below, and as requiring appropriate deference be applied to the review of fact findings. There was no need to solicit additional briefing or argument on the question of whether an appellate panel can look to extra-record extrinsic evidence to construe a patent claim term. “The Supreme Court made clear that the factual components [of claim construction] include ‘the background science or the meaning of a term in the relevant art during the relevant time period.’” Teva Pharms., Inc. v. Sandoz, Inc., 789 F.3d 1335, 1342 (Fed. Cir. 2015) (quoting Teva Pharms., Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015)). After Teva, such fact findings are indisputably the province of the district court. We did not need to solicit additional briefing or argument to conclude that the appellate court cannot rely on extra-record extrinsic evidence in the first instance or make factual findings about what such extrinsic evidence suggests about the plain meaning of a claim term in the art at the relevant time or how such extra record evidence may inform our understanding of how the accused device operates. We likewise did not need additional briefing or argument to determine that the appellate court is not permitted to reverse fact findings that were not appealed or that the appellate court is required to review jury fact findings when they are appealed for substantial evidence. The panel reversed nearly a dozen jury fact findings including infringement, motivation to combine, the teachings of prior art references, commercial success, industry praise, copying, and long-felt need across three different patents. It did so despite the fact that some of these findings were not appealed and with- out ever mentioning the applicable substantial evidence standard of review. And with regard to objective indicia, it did so in ways that departed from existing law.
The dissents, and Judge Dyk’s dissent in particular, raise big questions about how aspects of the obviousness doctrine ought to operate. But no party—at the panel or the petition for rehearing en banc stage—invited this court to consider changing the existing law of obviousness. We did not take this case en banc to decide important legal questions about the inner workings of the law of obviousness. We have applied existing obviousness law to the facts of this case. We took this case en banc to affirm our understanding of our appellate function, to apply the governing law, and to maintain our fidelity to the Supreme Court’s Teva decision.
Ultimately, the Federal Circuit affirmed the district court’s judgment and concluded that the jury’s verdict was supported by substantial evidence in the record. Further, the Federal Circuit determined the district court did not err in denying Samsung’s requests for JMOL. Thus, the panel opinion was vacated and the district court was affirmed.
In addition to separate dissents filed by Judge Dyk and Chief Just Prost, Judge Reyna also filed a separate dissent.
Join the Discussion
13 comments so far.
Paul F. MorganOctober 10, 2016 11:10 am
Thanks Paul Cole.
This may not be the end of disputes over these patents, since any smartphone or tablet maker or seller other than Samsung who has not yet been sued by Apple could file an IPR against any of these same patents. Ironically, they could even use the same additional art and arguments which the panel decision here had used which this en banc reversal decision has said must not be considered in this appeal.
Night WriterOctober 10, 2016 08:29 am
@10 Paul: that is a great question one that I have pondered for years. It would be nice to see an article on just this one point.
AnonOctober 8, 2016 06:26 pm
Your suggestions do not change the legal/factual options for the appellate courts
Paul F. MorganOctober 8, 2016 04:21 pm
Another blog raises an interesting question re this decision [on which I have no personal opinion]: Namely, the case law that the final question of claim obviousness is supposed to be a question of law [decided by a court], based on underlying facts [which can be decided by the jury]. What about all the juries that are only given a one question jury verdict form as to the final question of whether the claim is valid or not, with no jury decision on any underlying facts? Does that preclude any possible reversal on appeal if the jury was given any substantial evidence on validity? What if the jury was not given any KSR jury instructions?
Paul F. MorganOctober 8, 2016 03:11 pm
Gene has an interesting suggestion that the increased workload of the Fed. Cir. may be a factor in this decision. And there have certainly been many unanimous Sup. Ct. reversals of Fed. Cir. decisions in recent years.
But as to JNGs wistful view of the “good old days,” it never actually was. The CCPA and then its successor the CAFC have always had only a small percentage of judges with substantial patent law practice experience or formal engineering or science education and practice. And note that the issue in this en banc decision is G.P. law, not patent law.
Paul ColeOctober 7, 2016 06:14 pm
Readers may be interested to note that the “Slide to Power On” feature was the subject of a patent which was held invalid by the UK Court of Appeals in HTC v Apple.
The reasons of the panel majority for holding the US equivalent patent valid, including references to field of the invention, commercial success, peer acknowledgement, public acknowledgement and copying by others are of great interest, not only to US readers but also to my colleagues in England. I am currently preparing a supplement to the CIPA Guide to the Patents Acts of which I am an editor, and these issues will find their way into the various paragraphs of our Section 3 which deals with obviousness.
Again on a personal level, I watched the online broadcast of the Steve Jobs (sorely missed!) presentation when the iPhone was first launched and it was an unforgettable event in every respect. As noted by the panel majority, the audience of experienced journalists and professionals cheered when they first saw the slide to launch feature, and who are we to say, with the benefit of hindsight and the ability to do structured searches with knowledge of the invention, that it was obvious.
The panel majority decided the case bearing in mind that obviousness is a legal conclusion based on factual determination and in particular on weighing the totality of the evidence on each side of the question, and that is what they rightly and properly did here.
AnonOctober 7, 2016 04:53 pm
The tea leaves just may be signaling something else.
Maybe, just maybe, the CAFC has grown weary of being the whipping boy for patent matters. Surely, they have been bullied long enough by the Supreme Court.
Maybe looking at how the Supreme Court does not want bright lines (one can read that as “maximum” lower court discretion), and growing tired of being in a no-win situation of trying to make some cohesive sense of the Court’s mashed beyond recognition of the nose of wax, maybe this is a sign of the CAFC’s abdication of its appointed role to bring order to patent law, and they are signaling that “whatever” “wherever” is decided below is simply going to be rubber stamped through (outside of the “strictly appellate” items).
I see this as quite possibly exacerbating the forum shopping “issues.”
Patent ProphetOctober 7, 2016 04:13 pm
If this signal turns into something that panels constituted by Mayer and others similarly situated actually follow, then this decision will be extremely significant to the IP licensing market.
I imagine the folks at Vringo are asking why this did not come sooner. I guess it took enough patentee litigants to get whacked (see Judge Chen’s dissent in the I/P engine case), before there was sufficient momentum at the circuit to come out with this.
The dissenters appear to be more embarrassed than anything else (given the high profile nature of the case), and would likely have joined the majority if they weren’t the unfortunate ones lulled into a sense that the CAFC was an appropriate venue to re-try a patent case on the papers.
Gene QuinnOctober 7, 2016 03:50 pm
Hard to argue with your assessment.
Unlike many, however, I think Obama’s appointments have been on a whole good. Chen and Stoll are patent people and get it. O’Malley also gets it and brings the eye of a district court judge with respect to evidence (i.e., obviousness issues) and process (and being overturned by activist appellate judges). I think the tide is turning. We will have to see what the future holds, but this is a very good place to start. Go back to being an appellate court!
AnonOctober 7, 2016 03:15 pm
How – if at all – would this impact the concurrence that has stirred up a hornet’s near?
Are “sua sponte” renditions of fantasy law curtailed? Are such a normal role for an appellate body?
JNGOctober 7, 2016 03:01 pm
Gene, to my mind, what is most telling is that the dissenters could not convince a single other judge to join their cause. This shows how polarized the Court is, with some of the panel members having very outlying theories/positions (i.e., Mayer is not the only bad actor, even though his behavior is by far the worst). But this is also a direct consequence of the politicization of the Court, which used to be stocked with people who actually knew and litigated patent cases, and is now diluted with folks (Prost, Dky, Reyna) who little or no experience in technology or IP law.
Gene QuinnOctober 7, 2016 02:00 pm
That may be it, but I suspect it has nothing to do with the constitutional petitions. I think there are some younger Judges who are deeply troubled with the way the court has moved over the years. I also think the majority of Judges look at their docket and recognize that they simply cannot act as judge, jury and appellate court for every patent issue any more they way some panels have for years. With IPRs being more than 3 times as popular as predicted the Court is already way overusing Rule 36 and non-precedential opinions. It is simply inappropriate for any appellate court to engage in fact finding or consider evidence not in the record, but it is docket malpractice to do it when 75% to 80% of dispositions are either 1 line affirmances or non-precedential.
I think this is all about returning the CAFC to order and docket realities have caused the issue to come to a head.
At least that’s my 2 cents.
DavidOctober 7, 2016 01:34 pm
The pending constitutional petitions have the CAFC acting very uncharacteristically (i.e., responsibly).