If there are, as Google told us, some 200,000 patents on each smartphone, that means so far we've barely begun with the patent wars. How do you like it? What's it all for?

Here's a new working paper [PDF] The Atlantic highlights that says patents are for propping up businesses that don't want to innovate or can't do it nimbly enough to survive without artificial help from patents:

A closer look at the historical and international evidence suggests that while weak patent systems may mildly increase innovation with limited side-effects, strong patent systems retard innovation with many negative side-effects. Both theoretically and empirically, the political economy of government operated patent systems indicates that weak legislation will generally evolve into a strong protection and that the political demand for stronger patent protection comes from old and stagnant industries and firms, not from new and innovative ones.

After all, why would Apple want design patents on things like rounded corners, with all the scorn they are resulting in, if it intended to bring us something new and innovative? Obviously, it wants to keep giving us the same design, maybe thinner or taller, but otherwise the same. Same = Stagnant. As for Microsoft, it still thinks we all still want good olde Windows, Windows with a new dress on, but the heart of it is the same old, decades old Windows, so it can run the programs you've used forever.

So with that overview, let's see what's new in the Apple v. Samsung case, the one about rounded corners. First, we're going to get to see the redacted section of Samsung's JMOL motion, the part about jury misconduct. The judge has just so ruled. She doesn't care if the jurors get talked to by anybody, either. So much for Samsung's finesse and Groklaw's delicacy in handling that matter. And Apple, as is its wont, waxes indignant about its Most Holy Patents in a new filing, asking the judge not to dissolve the preliminary injunction against the Samsung Galaxy Tab 10.1 even though the jury found Samsung tablets don't infringe Apple's design patent. The jury should have, Apple argues, and so the judge should wait to decide the issue after December 6th, when Apple's motion [PDF] for judgment as a matter of law is argued. Interesting, isn't it, that both parties to this lawsuit now argue that the jury is all wet in what it decided. Who can argue with that? The whole thing is wicked farce.

Apple's arguments are in a motion it just filed opposing Samsung's Notice regarding dissolving the preliminary injunction on Samsung's Galaxy Tab 10.1. Apple repeats the same arguments it used already. Samsung wrote in its Notice that the matter was already fully briefed, citing docket numbers 1936 (Samsung's Memorandum of Points in Support of Motion to Dissolve the June 26, 2012 Preliminary Injunction), 1963 (Apple's response), and 1967 (Samsung's Reply Memorandum). Normally, that would indeed be fully briefed, ready for oral argument, if needed. But with this litigation, the parties never stop writing more and more and more and more. I have all the briefs from the appeal to the Federal Circuit on this matter to show you, where Apple fought like crazy, but unsuccessfully, to persuade that court to deny the limited remand. Now it pivots and argues the same materials again to Judge Koh, as if the matter were not fully briefed.

One might be forgiven for assuming that it is in Apple's best interest to talk until the cows come home and the clock has run out and up pops December 6th, the hearing where the JMOL motions will be argued, and Apple can argue for a permanent injunction, mooting all these words about what to do about the preliminary injunction. As you can see, patents have nothing at all to do with fairness.

Jump To Comments

District Court filings
All Appeal Filings
Apple's Appeal Filing
Apple's Appeal Brief as Text
Samsung's Appeal Reply as Text
Apple's Opposition, District Court
Judge Koh's Order, as Text

The district court filings. Here's what's new, Apple's oppostion to Samsung's allegedly "renewed" application to dissolve the PI plus the judge's order on redactions and talking to jurors:

2008 - Filed & Entered: 09/28/2012 -
Motion for Miscellaneous Relief
Docket Text: MOTION re [2007] Notice (Other) Opposition to Samsung's Renewed Application to Dissolve Galaxy Tab 10.1 Preliminary Injunction filed by Apple Inc.. Responses due by 10/12/2012. Replies due by 10/19/2012. (Krevans, Rachel) (Filed on 9/28/2012)

2009 - Filed & Entered: 09/28/2012
Order on Administrative Motion to File Under Seal
Docket Text: ORDER by Judge Lucy H. Koh granting in part and denying in part [1990] Administrative Motion to File Under Seal (lhklc2, COURT STAFF) (Filed on 9/28/2012)

All the appeal filings on preliminary injunction dispute: Here then are the filings with the Federal Circuit Court of Appeals on this issue, the ones you haven't seen before being docket numbers 33, Apple's brief, and 34, Samsung's reply:

09/20/2012 - 30 - MOTION of Appellants Samsung Electronics America, Inc., Samsung Electronics Co., Ltd. and Samsung Telecommunications America, LLC for limited remand. Response/Opposition due 10/04/2012. [Consent: opposed]. Service: 09/20/2012 by email. [26082]

09/21/2012 - 31 - ORDER requesting a response to [30] Samsung's motion for limited remand. Apple Inc. is directed to respond no later than 12:00 p.m. on September 25, 2012. Service: 09/21/2012 by clerk. [26257]

09/25/2012 - 32 ORDER granting motion to extend time to file appellants' opening brief [28] filed by Appellants Samsung Electronics America, Inc., Samsung Electronics Co., Ltd. and Samsung Telecommunications America, LLC. Samsung's opening brief is due November 26, 2012. No further extensions should be anticipated. Service: 09/25/2012 by clerk. [26689] 09/25/2012 - 33 - RESPONSE of Appellee Apple Inc. to the motion for limited remand [30] filed by Appellants Samsung Electronics America, Inc., Samsung Electronics Co., Ltd. and Samsung Telecommunications America, LLC in 12-1506. Service: 09/25/2012 by email. [Appendices - 103 pages] [26692]

09/26/2012 - 34 - REPLY of Appellants Samsung Electronics America, Inc., Samsung Electronics Co., Ltd. and Samsung Telecommunications America, LLC to response filed by Appellee in 12-1506 , Doc. No [33]. Service: 09/26/2012 by email. [26900]

09/28/2012 - 35 ORDER filed granting motion for limited remand [30] filed by Appellants Samsung Electronics America, Inc., Samsung Electronics Co., Ltd. and Samsung Telecommunications America, LLC. The court retains jurisdiction over the appeal at this time. (Per Curiam). Service: 09/28/2012 by clerk. [27322]

All this means that we very, very much need volunteers who can attend hearings in San Jose. We know about December 6th, but there may be one earlier. So if you are able to take a day to cover this for Groklaw, please email me so I can give you instructions.

Apple's Appeal Filing. And I thought you'd like to see all the documents filed regarding the successful Samsung appeal resulting in a limited remand of the issue of dissolving the preliminary injunction regarding Samsung's Galaxy Tab 10.1. Fair warning. Apple's attached to its 16-page brief appendices 1-7 [PDF] in support of its opposition, together filling 103 pages.

Yes. 103.

What are they:

• Appendix 1 is the filled-in amended jury verdict form (20 pages)
• Appendix 2 is Judge Koh's August 28, 2012 Order Re: Post-Trial Proceedings (3 pages)
• Appendix 3 is Judge Koh's August 29, 2012 Clarification Order Re: Post-Trial Proceedings (2 pages)
• Appendix 4 is Judge Koh's July 2, 2012 Order Denying Samsung's Motion to Stay (13 pages)
• Appendix 5 is excerpts from August 24, 2012 trial transcript, covering discussions with the judge and the parties lawyers after dismissing the jury post-verdict (13 pages)
• Appendix 6 is Apple's Motion for a Permanent Injunction and for Damages Enhancements filed September 25, 2012 (14 pages)
• Appendix 7 is Apple's Motion for Judgment as a Matter of Law, New Trial, and Amended Judgment [FRCP 50, 59] (13 pages -- it's truncated for some unknown reason, but you can read it all here)

Apple's Appeal Filing, as Text. Here as text is Apple's opposition brief to the Federal Circuit, titled PLAINTIFF-APPELLEE APPLE INC.’S OPPOSITION TO DEFENDANTS-APPELLANTS’ MOTION FOR LIMITED REMAND, leaving off the header for space:

INTRODUCTION

Plaintiff-Appellee Apple Inc. respectfully opposes the motion of Defendants-Appellants Samsung Electronics Co., et al., for a limited remand of this appeal. Samsung’s motion implies that the jury found that Samsung’s Galaxy Tab 10.1 tablet computer did not infringe at all. In fact, while the jury found no infringement of the D’889 patent, it also found that the Tab 10.1 did infringe three other patents (the ’381, ’915, and ’163 patents), and that Samsung’s infringement was willful. (Appendix 1 at 2-5, 7, 9.) ¹

Recognizing that Apple’s motion for a permanent injunction would require some time to resolve, Apple immediately sought to obtain a post-verdict preliminary injunction to cover the interim period between the verdict and final judgment. Samsung opposed, contending that the district court should not address injunctive relief at all until it decided Samsung’s challenges to the jury verdict. The district court declined to consider Apple’s request for a preliminary injunction and scheduled both Apple’s motion for a permanent injunction and all challenges to the jury verdict for hearing on December 6, 2012. (Appendix 2, 3.)

1

Having persuaded the district court to defer injunctive relief until Samsung’s post-trial motions are resolved, Samsung now seeks a remand of this appeal so that the previously-issued preliminary injunction against the Galaxy Tab 10.1 can be dissolved immediately, before Apple’s post-trial motions are resolved. Samsung relies on the verdict that the Tab 10.1 does not infringe Apple’s D’889 patent. But Apple has moved for an injunction against the Tab 10.1 based on the verdict that this product infringes three utility patents, and has also moved for judgment as a matter of law (“JMOL”) that the Tab 10.1 infringes the D’889 patent and infringes and dilutes Apple’s trade dress rights. The district court “agree[d] with Apple that based on the post-trial motions, the Court could, potentially, issue a permanent injunction on the Galaxy Tab 10.1.” (Addendum A at 4.)

Samsung’s motion to dissolve the injunction on one basis (the verdict of non-infringement of the D’889 patent) cannot fairly be decided without addressing Apple’s directly related motions that would sustain the injunction on other bases (the verdict that the Tab 10.1 infringes Apple’s utility patents, and JMOL that the Tab 10.1 infringes the D’889 patent and infringes and dilutes Apple’s trade dress rights). Samsung cannot show any urgent need to resolve its motion first, in view of its representations that the Galaxy Tab 10.1 is an “end-of-life” product whose sales “will soon fall to zero,” and that an injunction will not have a “significant impact” on Samsung’s business. (Appendix 4 at 11.)

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Accordingly, this Court should either deny a remand until all post-trial motions that could result in an injunction against the Galaxy Tab 10.1 have been decided, or remand with instructions that the preliminary injunction should not be dissolved until those motions have been decided.

PROCEDURAL BACKGROUND

This is the second appeal arising from Apple’s motion for a preliminary injunction against Samsung’s Galaxy Tab 10.1. In December 2011, the district court denied a preliminary injunction, despite finding that the Galaxy Tab 10.1 likely infringes Apple’s D’889 design patent, and that Apple is likely to suffer irreparable harm absent an injunction. Apple Inc. v. Samsung Elecs. Co., 2011 WL 7036077, at *27-29 (N.D. Cal. Dec. 2, 2011), rev’d in part, 678 F.3d 1314 (Fed. Cir. 2012). This Court vacated the denial of a preliminary injunction in May 2012, finding that: (1) Samsung had failed to raise a substantial question as to the D’889 patent’s validity; (2) Apple was likely to prevail on the merits; and (3) Apple was likely to suffer irreparable harm. Apple Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1328-33 (Fed. Cir. 2012). The Court directed the district court to consider whether to issue a preliminary injunction in view of the balance of hardships and public interest. Id. at 1333.

On remand, the district court issued a preliminary injunction against the Galaxy Tab 10.1 on June 26, 2012, finding that both the balance of hardships and

3

the public interest favored an injunction. (Addendum B.) The district court denied Samsung’s motion to stay the injunction, finding that “Samsung cannot establish that it is likely to suffer irreparable harm absent a stay.” (Appendix 4 at 11.) The court emphasized Samsung’s statements that “sales of the accused Galaxy Tab 10.1 will soon fall to zero” because it is near “the end of its product lifecycle,”² and that the injunction would not have “a significant impact” on its business since “the successor model to the Galaxy Tab 10.1 is already on the market.” (Id.)

Samsung then filed this appeal of the injunction. On July 19, 2012, this Court denied Samsung’s motions to stay the injunction and to expedite the appeal, noting that “Samsung may of course significantly self-expedite the case by filing its own brief early.” (Fed. Cir. Dkt. Nos. 23, 24 at 2.) Samsung chose not to do so, instead requesting a 60-day extension for its brief, which Apple did not oppose.

On August 24, 2012, the jury returned a verdict that overwhelmingly favored Apple. The jury found that Apple had proven that, by marketing the Galaxy Tab 10.1 (Wi-Fi) and the predecessor Galaxy Tab (among many other products), Samsung willfully infringed three Apple utility patents (the ’381, ’915, and ’163 patents). (Appendix 1 at 2-5, 9.) The jury also found that Samsung willfully infringed three Apple design patents (the D’677 and D’087 iPhone design patents,

4

and the D’305 Graphical User Interface design patent), and willfully diluted Apple’s iPhone trade dress. (Id. at 6-9, 11-12, 14.) The jury awarded over $1 billion in damages to Apple, including $2.9 million based on Samsung’s infringing sales of the Galaxy Tab 10.1 (Wi-Fi) and the Galaxy Tab. (Id. at 15-16.) The jury found that Samsung failed to prove that the D’889 patent was invalid, but that the Galaxy Tab 10.1 did not infringe that patent. (Id. at 7, 9.) The jury also found that Apple did not have protectable rights in the iPad/iPad 2 trade dress that could be diluted or infringed by the Galaxy Tab 10.1. (Id. at 10, 14-15.)

At a hearing immediately after the jury verdict, Apple stated that it would move for a preliminary injunction based on the verdict. (Appendix 5 at 4319-20.) Samsung argued that the district court should not decide Apple’s preliminary injunction motion until it resolved Samsung’s Rule 50 motion for JMOL. (Id. at 4320-21.) The district court initially stated that it would not “have the preliminary injunction motion heard after the Rule 50 motions because the Rule 50 motions will probably extend out many months.” (Id. at 4321.) The court set an expedited schedule for the preliminary injunction, with Apple to file its motion on August 29 and a hearing on September 20, 2012. (Id. at 4326-27.) The court directed that Rule 50 motions for JMOL be filed on September 21, which was the normal due date. (Id. at 4329-30.)

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A few days later, the district court vacated the preliminary injunction hearing and scheduled a hearing on Apple’s motion for a permanent injunction and the parties’ motions for JMOL or a new trial for December 6, 2012. (Appendix 2, 3.) The court stated that in light of “the substantial overlap” in issues, “the interests of justice and judicial economy will be best served by addressing Apple’s requests for equitable relief together with the parties’ Rule 50 motions.” (Appendix 3 at 1.) The court found that “it is neither appropriate nor feasible to set an expedited briefing and hearing schedule on Apple’s motion for a preliminary injunction in advance of Apple’s motion for a permanent injunction.” (Id. at 1-2.)

On August 26, 2012, Samsung filed a motion to dissolve the preliminary injunction against the Galaxy Tab 10.1, although it had said nothing about any such motion at the August 24 hearing. On August 28, the district court granted Samsung’s request to expedite its motion, setting a hearing for September 20, the same date that had been reserved for the now-vacated hearing on Apple’s preliminary injunction motion. (Id. at 1-2.) Apple opposed Samsung’s motion because: (1) Samsung’s appeal deprived the district court of jurisdiction to dissolve the injunction; (2) Samsung’s request for an “indicative ruling” that the court would dissolve the injunction if it had jurisdiction could not be fairly decided without addressing Apple’s motions for JMOL and a permanent injunction.

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On September 17, the district court denied Samsung’s motion to dissolve the injunction for lack of jurisdiction. (Addendum A at 2-3.) The court also rejected Samsung’s request for an indicative ruling that it would dissolve the injunction “under all circumstances,” explaining that “based on [Apple’s] post-trial motions, the Court could, potentially, issue a permanent injunction on the Galaxy Tab 10.1.” (Id. at 4.) Instead, the court issued an indicative ruling that Samsung’s motion raised a “substantial issue.” (Id. at 5.) The court emphasized that “[a] statement that the motion raises substantial issues does not tie the district court to a particular ruling on the motion after remand.” (Id. (citation and internal quotation marks omitted).)

On September 21, Apple moved for JMOL that the Galaxy Tab 10.1 infringes the D’889 patent also infringes and dilutes Apple’s famous and protectable iPad/iPad 2 trade dress rights. (Appendix 7.) Apple also moved for a permanent injunction based on the verdict that the Galaxy Tab 10.1 infringes Apple’s ’381, ’915, and ’163 patents, noting that it would move to amend the permanent injunction as appropriate of JMOL was granted. (Appendix 6.) Apple’s JMOL and permanent injunction motions are set for hearing on December 6, 2012.

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ARGUMENT

Apple has submitted detailed arguments showing that the Tab 10.1 should be permanently enjoined due to the jury’s verdict that it infringes the ’381, ’915, and ’163 patents. (Appendix 6.) Apple has also shown that the district court should grant JMOL that the Tab 10.1 infringes the D’889 patent and infringes and dilutes Apple’s famous and protectable iPad/iPad 2 trade dress. (Appendix 7.) If JMOL is granted, that will provide an additional basis for enjoining sales of the Tab 10.1.

Having persuaded the district court to delay consideration of injunctive relief until Samsung’s post-trial motions are decided, Samsung now attempts to take unfair advantage of that situation by seeking a remand of this appeal and dissolution of the preliminary injunction before the district court addresses Apple’s JMOL and permanent injunction motions. Besides being opportunistic, Samsung’s motion lacks merit and should be denied.

Contrary to Samsung’s assertion, the jury verdict that the Tab 10.1 does not infringe the D’889 patent does not eliminate the “sole basis” for enjoining Samsung’s sales of that product. Rather, Apple’s pending motions present multiple, alternative bases for an injunction, including: (1) JMOL that the Tab 10.1 infringes the D’889 patent; (2) JMOL that the Tab 10.1 infringes and dilutes Apple’s trade dress rights; and (3) the jury’s verdict that the Tab 10.1 infringes the

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’381, ’915, and ’163 patents. The injunction should be sustained, not dissolved, if Apple prevails on any of these arguments.

Samsung cannot show any urgent need that would justify deciding Samsung’s motion to dissolve the preliminary injunction before addressing Apple’s JMOL and permanent injunction motions. Samsung has admitted that the Galaxy Tab 10.1 is an end-of-life product whose sales “will soon fall to zero,” and that “the successor model to the Galaxy Tab 10.1 is already on the market.” (Appendix 4 at 11.) Similarly, Samsung told the public that it did not expect the preliminary injunction against the Tab 10.1 to have a “significant impact” on Samsung’s business operations. (Id.) And even if there were some potential harm, the bond that Apple posted as a condition to the injunction protects Samsung’s interests. In contrast, both this Court and the district court found that Samsung’s infringing sales of the Galaxy Tab 10.1 are likely to cause irreparable harm to Apple. Apple, 678 F.3d at 1328; Apple, 2011 WL 7036077, at *28-*29; Appendix 4 at 9-10. Thus, the only party with an urgent need for a decision on injunctive relief is Apple, not Samsung.

Dissolving the preliminary injunction without even considering Apple’s JMOL and permanent injunction motions would reward Samsung for the fact that, at its instigation, the district court declined to address injunctive relief until the December 6 hearing on Apple’s motion for a permanent injunction and the JMOL

9

motions of both sides. But that is no reason to give Samsung a windfall of over two months of infringing sales that this Court and the district court have already held will cause Apple irreparable harm.

The remand cases cited by Samsung all involved a joint or unopposed request to remand due to settlement; none involved a contested motion to dissolve a preliminary injunction in advance of related post-trial proceedings, particularly when the party seeking the injunction was precluded from arguing that the preliminary injunction should be continued based on related post-trial motions.³

Nor did any of Samsung’s cases involve an indicative ruling of “substantial question.” Indeed, even when district courts issue such rulings, courts of appeals remain reluctant to remand. For example, the Eighth Circuit recently denied a similar request for remand despite an indicative ruling that the criminal defendant’s motion to adjust his sentence raised a “substantial issue,” and that the district court would apply a new sentencing approach if the case was remanded. United States v. Hawthorne, 414 F. App’x 879, 880-81 (8th Cir. 2011) (unpublished).

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Samsung argues that a remand would “streamline appellate proceedings” and “promote judicial efficiency and economy,” because there would be no need for further appellate proceedings if the district court dissolves the preliminary injunction. But dissolving the injunction would be improper for the reasons set forth above. Moreover, even if the district court were to erroneously dissolve the preliminary injunction, the injunction against the Tab 10.1 would likely be reinstated shortly thereafter, as a result of Apple’s motions and/or a further appeal. Such an “on-again, off-again” injunction would be confusing to the marketplace, would not promote judicial economy, and is not justified by any urgent need. Given the “substantial overlap” between Samsung’s motion to dissolve and Apple’s motions for JMOL and a permanent injunction, “the interests of justice and judicial economy” will be best served by addressing Samsung’s motion to dissolve together with Apple’s motions, as the district court noted in ruling that it would consider Apple’s request for injunctive relief at the same time as Rule 50 motions. (Appendix 3 at 1.)

Because the merits of Samsung’s motion to dissolve the preliminary injunction against the Galaxy Tab 10.1 are inextricably linked with the arguments in Apple’s JMOL and permanent injunction motions that support continuing that injunction, this Court should decline to remand the appeal where Samsung is

11

seeking that remand to allow the district court to dissolve the injunction without considering those arguments.

In the alternative, this Court should remand with instructions that the district court not dissolve the preliminary injunction unless and until it decides Apple’s motion for a permanent injunction against the Tab 10.1 based on Samsung’s infringement of Apple’s ’381, ’915, and ’163 patents, and Apple’s motion for JMOL that the Tab 10.1 infringes the D’889 patent and infringes and dilutes Apple’s trade dress rights.

Dated: September 25, 2012

Respectfully submitted,

By: /s/ Michael A. Jacobs
HAROLD J. MCELHINNY
MICHAEL A. JACOBS
JENNIFER LEE TAYLOR
MORRISON & FOERSTER LLP
[address, phone, fax, email]

BRIAN R. MATSUI
MORRISON & FOERSTER LLP
[address, phone, fax]

Counsel for Plaintiff-Appellee Apple Inc.

12

[Certificate of Interest - see PDF]

13

[Certificate of Interest cont. - see PDF]

14

[CERTIFICATE OF SERVICE - see PDF]

_____________
¹ Citations to “Appendix” are to the district court documents attached hereto. Citations to “Addendum” are to the orders attached to Samsung’s motion for remand, filed in this Court on September 20, 2012.

² The district court redacted this statement from the public version of its order, but later denied Samsung’s request to seal the brief that contains this statement. Accordingly, Samsung’s statement is now available to the public.

³ See Karl Storz Imaging, Inc. v. Pointe Conception Med., Inc., 471 F. App’x 904 (Fed. Cir. 2012) (unpublished) (joint motion to remand due to settlement, where district court issued indicative ruling that it would vacate judgment); Acoustic Techs., Inc. v. Itron, Inc., 428 F. App’x 996 (Fed. Cir. 2011) (unpublished) (same); Ameranth, Inc. v. Menusoft Sys. Corp., 463 F. App’x 920 (Fed. Cir. 2012) (unpublished) (unopposed request to remand due to settlement, where district court indicated it would vacate judgment); Dicam, Inc. v. Cellco P’ship, 416 F. App’x 899 (Fed. Cir. 2011) (unpublished) (joint motion to remand due to settlement, so district court could consider motion to vacate; no indicative ruling); Ohio Willow Wood Co. v. Thermo-Ply, Inc., 629 F.3d 1374 (Fed. Cir. 2011) (same).

15

Samsung's Reply. Samsung replied, its filing titled "DEFENDANTS-APPELLANTS’ REPLY IN FURTHER SUPPORT OF THEIR MOTION FOR LIMITED REMAND PURSUANT TO FRAP 12.1":

Samsung respectfully submits this reply in further support of its motion for a limited remand pursuant to Fed. R. App. P. 12.1. In its Opposition, Apple does not dispute that the sole basis upon which the district court entered the Galaxy Tab 10.1 preliminary injunction—a likelihood of success in proving infringement of the D’889 patent—no longer exists in light of the jury’s finding that the Tab 10.1 does not infringe the D’889 patent. (See Add. A at 3).^S1 Nor does Apple contest that, but for the pending appeal, the district court would have dissolved the preliminary injunction. (See id.). Instead, Apple relies on a series of arguments that have no relevance to the pending motion; remand should be granted forthwith.

First, Apple’s response turns a routine Rule 12.1 motion following a district court’s indicative ruling into a full-blown argument on the merits, rehashing the very arguments that the district court rejected in ruling that Samsung’s motion to dissolve the preliminary injunction raised a “substantial issue.” But Rule 12.1 is not a vehicle for reviewing a district court’s indicative ruling or otherwise resolving the merits of a motion presented to the district court; it is instead a narrow procedural mechanism by which an appellate court may restore jurisdiction to a district court that has already “state[d] that it would grant [a] motion or that [a] motion raises a substantial issue,” FED. R. APP. P. 12.1, so that the “district court

1

may decide the motion” in the first instance, FED. R. CIV. P. 62.1(c). There is nothing “opportunistic” or “unfair” (Opp. 8, 10) about seeking a limited remand in light of the jury’s verdict of non-infringement as to the D’889 patent, particularly since the Supreme Court has instructed that courts “must never ignore significant changes in the law or circumstances underlying an injunction lest the decree be turned into an ‘instrument of wrong.’” Salazar v. Buono, 130 S. Ct. 1803, 1816 (2010).^S2

Second, much of Apple’s argument (Opp. 8-9) turns on its disagreement with the district court’s sequencing of post-trial proceedings. But such case management decisions are well within the competence and discretion of the district court, and Apple’s disagreement with the district court’s scheduling decision here provides no basis for denying a limited remand under Rule 12.1. The district court, moreover, rejected Apple’s argument that the motion to dissolve “cannot be fairly decided without resolving Apple’s post-trial motions,” correctly explaining that “[e]ven if Apple ultimately prevails on its post-trial

2

motions, any permanent injunction would be prospective and not retrospective.” (Add. A at 4.). Apple offers no support for its view that the possibility of future post-trial relief can justify continuing a preliminary injunction now, let alone any authority that this Court should deny a limited remand under Rule 12.1 on such grounds.^S3

Third, the jury’s findings that the Galaxy Tab 10.1 (Wi-Fi) infringed the ’381, ’915 and ’163 utility patents likewise provide no basis to deny a limited remand under Rule 12.1. Those findings are not presently before the Court on Samsung’s appeal of the preliminary injunction that is solely predicated on the D’889 patent and, in any event, they do not support continuing to enjoin the Galaxy Tab 10.1 (4G LTE). But even if the jury’s verdict with respect to these utility patents could support continuation of the preliminary injunction, the district court’s prior finding of likely irreparable injury does not apply to these utility patents. Neither the preliminary injunction order (Add. B at 6) nor Apple (Opp. 9-10) provides any basis in the record to conclude that there is “some causal nexus between Samsung’s infringement [of these utility patents] and the

3

alleged harm to Apple.” Apple, Inc. v. Samsung Elecs. Co., Ltd., 678 F.3d 1314, 1324 (Fed. Cir. 2012). To the contrary, there is abundant, unrefuted evidence that in the current market, Samsung’s tablets cause no irreparable harm to Apple. (Dkt. No. 1132; Fed. Cir. Dkt. No. 3 at 10-11 & nn. 2-5; id. at Ex. 7-8.)^S4

Finally, Apple does not contest (Opp. 11) that a limited remand would streamline appellate proceedings, but wrongly contends that judicial efficiency and economy favor delaying resolution of Samsung’s motion to dissolve until it can be considered with Apple’s post-trial motions. There is no reason to think that the drawn-out approach Apple favors would be more efficient or economical than an immediate remand during which the district court could promptly dissolve the preliminary injunction with little additional work, thereby mooting this appeal and reducing the burden on this Court as well.

For the reasons set forth above and in Samsung’s motion, the Court should remand the appeal forthwith so that the district court may rule on Samsung’s motion to dissolve the preliminary injunction.

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Dated: September 26, 2012

Respectfully submitted,

By: /s/ Kathleen M. Sullivan
Kathleen M. Sullivan
William B. Adams
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
[address, phone, fax]

Charles K. Verhoeven
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
[address, phone, fax]

Kevin P.B. Johnson
Victoria F. Maroulis
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
[address, phone, fax]

Michael T. Zeller
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
[address, phone, fax]

______________
^S1 “Add. A” and “Add. B” refer to the addenda filed with Samsung’s Rule 12.1 motion. “Opp.” refers to Apple’s opposition to that motion.

^S2 Apple incorrectly suggests (Opp. 10) that in United States v. Hawthorne, 414 F. App’x 879 (8th Cir. 2011), the Eighth Circuit denied a “similar request” as here. In that criminal appeal, a defendant sought a limited remand to take advantage of “the district judge’s recent change in applying the crack Guidelines.” Id. at 880. But a district court generally lacks jurisdiction to modify a sentence, regardless of a pending appeal. See 18 U.S.C. § 3582(c). Here, in contrast, apart from the pending appeal, there is no jurisdictional bar to the district court dissolving the preliminary injunction.

^S3 In the alternative, Apple requests (Opp. 12) that on remand the district court be required to consider Apple’s post-trial motions regarding the Tab 10.1 before ruling on Samsung’s motion to dissolve. But Apple again offers no basis for such intervention in the district court’s interlocutory scheduling decisions on a Rule 12.1 motion, particularly where doing so would serve only to prolong an injunction that is no longer supportable.

^S4 Apple is wrong to suggest (Opp. 9.) that Samsung must show an “urgent need” to decide its motion to dissolve. A court is in fact obligated to reassess a preliminary injunction where an enjoined party presents “significant changes in the law or circumstances.” Salazar, 130 S. Ct. at 1816. In any event, contrary to Apple’s intimations (Opp. 9), its bond (which was at the bottom of Samsung’s estimated range) does not insulate Samsung from harm but instead imposes a cap on damages for the improper injunction, see Nintendo of Am., Inc. v. Lewis Galoob Toys, Inc., 16 F.3d 1032, 1036 (9th Cir. 1994).

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Apple's Opposition to Dissolving Injunction, as text:

Apple opposes Samsung’s renewed application to dissolve the Galaxy Tab 10.1 preliminary injunction (Dkt. No. 2007), because Apple’s recently-filed motion for permanent injunction and JMOL support continuation of the injunction based on (1) the jury verdict that the Tab 10.1 willfully infringes Apple’s ’381, ’915, and ’163 patents; and (2) JMOL that the Tab 10.1 infringes the D’889 patent, and also infringes and dilutes Apple’s iPad/iPad 2 trade dress rights. The Federal Circuit remanded the appeal so that this Court could consider “Samsung’s motion and Apple’s arguments in opposition thereto.” (Dkt. No. 2007-1 at 3 (emphasis added).) The Federal Circuit emphasized that it “takes no position on the proceedings the trial court should employ in considering the motion to dissolve the preliminary injunction or on the merits of the motion.” (Id. at 3.) Thus, the Federal Circuit expressly left it for this Court to decide both the timing of its ruling (i.e., whether to decide Samsung’s motion now or to wait until the December 6 hearing on Apple’s permanent injunction and JMOL motions) and the content of its ruling.

On September 17, 2012, this Court stated in its Order Denying Without Prejudice Samsung’s Motion to Dissolve the June 26, 2012 Preliminary Injunction and Issuing Indicative Ruling that “based on the post-trial motions, the Court could, potentially, issue a permanent injunction on the Galaxy Tab 10.1.” (Dkt. No. 1968 at 4.) That Apple’s permanent injunction and JMOL motions, which Apple filed four days later on September 21. Apple demonstrated that the jury verdict that Samsung has willfully infringed Apple’s ’381, ’915, and ’163 patents by marketing the Galaxy Tab 10.1 (Wi-Fi) entitles Apple to a permanent injunction against that product because (1) Samsung’s infringing sales impose irreparable harm on Apple; (2) the evidence shows a sufficient nexus between irreparable harm and the patented features; and (3) the balance of hardships and public interest both favor an injunction. (Dkt. No. 1982-1 at vi, 1-11.)

Apple also demonstrated that JMOL should be granted that the Galaxy Tab 10.1 infringes the D’889 patent because (1) the only reasonable conclusion from the evidence is that the Tab 10.1 looks substantially the same as the D’889 design, as indicated by this Court’s prior finding of likely infringement and the Federal Circuit’s denial of Samsung’s appeal of that finding; and (2) Samsung’s argument that the Tab 10.1 does not infringe because it does not have a highly

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polished or reflective back was based on the erroneous claim construction that the D’889 patent requires a highly polished or reflective back. (Dkt. No. 1989 at 7-11.) Apple further demonstrated that JMOL should be granted that Apple’s iPad/iPad 2 trade dress is protectable and famous, and that the Galaxy Tab 10.1 infringes and dilutes this trade dress. (Id. at 2-7.)

Apple’s September 21 filing of its permanent injunction and JMOL motions is a significant new development that enables this Court to assess the merits of Apple’s arguments. If Apple prevails on any of its permanent injunction or JMOL arguments related to the Tab 10.1, the preliminary injunction should be sustained, not dissolved. Indeed, in the context of the preliminary injunction, it is sufficient for Apple to show that it is likely to prevail on its arguments. Apple is very likely to prevail in obtaining a permanent injunction, in view of the jury’s verdict that Samsung is willfully infringing Apple’s three utility patents. Apple is also likely to obtain JMOL on the Tab 10.1 for the reasons set forth in Apple’s motion. Thus, if this Court chooses to address the merits of Samsung’s motion now, the motion should be denied.

Given that JMOL and permanent injunction motions have already been filed and that oppositions are due in just three weeks, Apple believes that the more logical course is for the Court to decide all issues of injunctive relief (including Samsung’s motion to dissolve and Apple’s motion for a permanent injunction) at the same time that it decides the related JMOL motions. Samsung cannot show any urgent need to decide its motion first, given that Samsung has admitted that the injunction will not cause significant harm because Samsung is already selling a successor product and the Tab 10.1 is nearing the end of its product life. (Dkt. No. 1171 at 11.) Finally, Samsung’s motion, which seeks equitable relief, must be judged in the context of the jury’s verdict on all patents: Samsung asks the Court to permit it to reinject into the market, in what would indisputably be an act of willful infringement, a product that has now been found to infringe three different Apple patents.

Accordingly, Apple respectfully requests that the Court either deny Samsung’s motion to dissolve the Tab 10.1 preliminary injunction, or defer ruling on Samsung’s motion until the arguments in Apple’s permanent injunction and JMOL motions that support continuation of the injunction have been briefed and considered by this Court. Apple also requests that if the Court is

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considering granting Samsung’s motion, it first hold a hearing so that Apple will have an opportunity to address at that hearing the important issues raised by this motion.

Dated: September 28, 2012

MORRISON & FOERSTER LLP

By: /s/ Rachel Krevans
Rachel Krevans

Attorneys for Plaintiff
APPLE INC.

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Samsung only asked for the limited remand, without asking the appeals court to decide anything else. It was Apple who asked for more, first asking that the court decline to remand, but in the alternative for it to provide instructions to the district court on how to handle this issue:

Because the merits of Samsung’s motion to dissolve the preliminary injunction against the Galaxy Tab 10.1 are inextricably linked with the arguments in Apple’s JMOL and permanent injunction motions that support continuing that injunction, this Court should decline to remand the appeal where Samsung is seeking that remand to allow the district court to dissolve the injunction without considering those arguments. In the alternative, this Court should remand with instructions that the district court not dissolve the preliminary injunction unless and until it decides Apple’s motion for a permanent injunction against the Tab 10.1 based on Samsung’s infringement of Apple’s ’381, ’915, and ’163 patents, and Apple’s motion for JMOL that the Tab 10.1 infringes the D’889 patent and infringes and dilutes Apple’s trade dress rights.

Are you feeling like I am, that this is all incredibly wasteful and stupid? Why are they fighting like demons over this? You tell me. But life is short, and so I am hoping that somebody decides to fix this broken system, where the economy eats its own tail over and over and the only folks benefiting from US patent law are the old and the stagnant.

Judge Koh's Order. Finally, here's Judge Lucy's Koh's newest order, regarding the jury and redactions, as text:

ORDER GRANTING IN PART AND
DENYING IN PART
ADMINISTRATIVE MOTION TO FILE
DOCUMENTS UNDER SEAL;
DENYING REQUEST FOR ORDER
PROHIBITING COMMUNICATION
WITH JURORS

On September 21, 2012, Samsung filed a motion making two requests: to file portions of its Motion for Judgment as a Matter of Law and supporting documents under seal, and for an order prohibiting the parties from further communication with the jurors (“Mot.”). ECF No. 1990. On September 25, 2012, Apple filed a partial opposition to this motion (“Opp’n”). ECF No. 2003.

I. Background

On September 21, 2012, Samsung filed a redacted version of its Motion for Judgment as a Matter of Law raising nine distinct arguments. ECF No. 1990, Exh. 3. One of these arguments concerns the conduct of the jury during voir dire. This argument consumes two whole pages of the motion, as well as a single footnote later in the motion. Samsung seeks to seal this entire section of the Motion. In addition, Samsung seeks to seal almost all of the Declaration of Susan Estrich in

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support of that motion, and 15 exhibits attached to the Estrich Declaration. Samsung has cited these exhibits as evidence of “extensive media coverage” that the trial and deliberations have received. Mot. at 1.

Samsung further requests that the parties be “ordered to have no further contact with any of the jurors until the matters raised by the Rules 50 and 59 Motion have been finally resolved.” Id.

Finally, Samsung has moved to seal five exhibits to the Declaration of John Pierce in Support of Samsung’s Motion for Judgment as a Matter of Law pursuant to Civil Local Rule 79- 5(d), because they have been designated as confidential by either Apple or Intel. The Court will consider each of these three requests in turn.

II. Motion to File Under Seal Samsung’s Motion for Judgment as a Matter of Law

As this Court has explained in its previous orders on Motions to Seal in this case, see ECF Nos. 1966, 1649, 1269 and 1256, there is a “strong presumption in favor of access.” Kamakana v. City and Cnty. of Honolulu, 447 F.3d 1172, 1178 (9th Cir. 2006). In order to overcome this strong presumption, a party seeking to seal a judicial record must articulate justifications for sealing that outweigh the public policies favoring disclosure. See id. at 1178-79. Because the public’s interest in non-dispositive motions is relatively low, a party seeking to seal a document attached to a non-dispositive motion need only demonstrate “good cause.” Pintos v. Pac. Creditors Ass’n, 605 F.3d 665, 678 (9th Cir. 2010) (applying “good cause” standard to all non-dispositive motions, because such motions “‘are often unrelated, or only tangentially related, to the underlying cause of action’” (citing Kamakana, 447 F.3d at 1179)). Conversely, “the resolution of a dispute on the merits, whether by trial or summary judgment, is at the heart of the interest in ensuring the ‘public’s understanding of the judicial process and of significant public events.’” Kamakana, 447 F.3d at 1179 (quoting Valley Broadcasting Co. v. U.S. Dist. Court for Dist. of Nev., 798 F.2d 1289, 1294 (9th Cir. 1986)). Thus, a party seeking to seal a judicial record attached to a dispositive motion or presented at trial must articulate “compelling reasons” in favor of sealing. See id. at 1178. This reasoning applies equally to potentially dispositive motions made during or after trial, such as motions for judgment as a matter of law, which, like summary judgment motions and trials, resolve

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the merits of a case. Accordingly, to prevail on this motion, Samsung would need to demonstrate compelling reasons for sealing.

Samsung’s articulated reason for sealing here is “to protect both the privacy of the jurors and the integrity of the process.” Mot. at 1. This reason might satisfy the “good cause” standard. See Kamakana, 447 F.3d at 1180 (“[I]f ‘good cause’ is shown in discovery, a district court may issue ‘any order which justice requires to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense.’”) (citing Fed. R. Civ. P. 26). But as the Ninth Circuit has explained, “[a] ‘good cause’ showing will not, without more, satisfy a ‘compelling reasons’ test.” Id. “In general, ‘compelling reasons’ sufficient to outweigh the public's interest in disclosure and justify sealing court records exist when such ‘court files might have become a vehicle for improper purposes,’ such as the use of records to gratify private spite, promote public scandal, circulate libelous statements, or release trade secrets.” Id. at 1179 (citing Nixon v. Warner Commc'ns, Inc., 435 U.S. 589, 598 (1978)). There is no indication of such purposes here.

There is, of course, an important interest in protecting the privacy of jurors. See Press-Enterprise Co. v. Superior Court of California, Riverside County, 464 U.S. 501, 514 (1984) (Blackmun, J., concurring). For instance, the Supreme Court has noted that in the context of jury selection in a criminal trial, there may be “a compelling interest of a prospective juror when interrogation touches on deeply personal matters that person has legitimate reasons for keeping out of the public domain.” Press-Enterprise, 464 U.S. at 511. However, the information Samsung seeks to seal here relates not to something private, but to matters that are already public in that they are the subject of publically filed lawsuits and extensive news reporting. See Mot. at 1; Exhibits to Declaration of Nathan Sabri in Support of Opp’n.

Further, because the trial has already been completed, there is no longer any need to avoid the “risk that members of the public, press or non-press, could approach the jurors and attempt to influence the verdict in the case.” U.S. v. Bonds, 2011 WL 902207 (N.D.Ca, March 14, 2011) (ruling that the names of jurors in a high-profile case could be released only after the verdict was

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announced). And the interest in protecting the secrecy and integrity of the deliberative process, which has prompted some judicial concern about post-verdict interviews, is not implicated here, since the motion concerns voir dire, not deliberations. See, e.g., Traver v. Meshriy, 627 F.2d 934, 941 (9th Cir. 1980) (“Because a verdict may not be impeached on the basis of the jury's internal deliberations or the manner in which it arrived at its verdict, the practice of counsel in propounding questions on these subjects to jurors after trial should be discouraged.”); Smith v. Cupp, 457 F.2d 1098, 1100 (9th Cir. 1972) (“Moreover, this court has held, in a federal case, that it is improper and unethical for lawyers to interview jurors to discover what was the course of deliberation of a trial jury.”).

Additionally, all of the exhibits attached to the Estrich Declaration are already publically available, either because they come from public websites or because they are documents from other court cases that have not been sealed. This Court has previously ruled that information that is already in the public record fails even to satisfy the “good cause” standard. See Order Denying Motions to Seal, ECF No. 1269, at 3.

In sum, though there is an important interest in protecting juror privacy, the subjects of Samsung’s Motion for Judgment as a Matter of Law are not private matters. Given the very important interest in the “public’s understanding of the judicial process and of significant public events,” Valley Broadcasting, 798 F.2d at 1294, there is simply not a strong enough interest in privacy at stake here to justify denying the public access to the content of Samsung’s arguments. Accordingly, neither Samsung’s Motion for Judgment as a Matter of Law, nor the documents supporting it, can meet the “compelling reasons” standard. Samsung’s motion to file portions of its Motion, the Estrich Declaration, and the Exhibits to the Estrich Declaration under seal is DENIED with prejudice.

III. Request for Order Prohibiting Parties from Communicating with Jurors

Samsung’s second request is for an order prohibiting the parties from further communicating with the jurors. This request comes too late. The parties have already had some opportunity to speak to the jurors. See Trial Tr. at 4317:12-20 (advising jurors that the attorneys

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and media may wish to speak with them, and that they may do so). Prohibiting the parties from speaking to the jurors now, after Samsung has placed the jurors’ conduct in issue having had a full opportunity to speak with them in presenting its argument, could unfairly prejudice Apple, who would be forced to respond without the same level of access. Further, Samsung cites, and the Court is aware of, no law supporting Samsung’s position that such an order would be appropriate. As explained above, the Ninth Circuit cases discussing the propriety of post-verdict juror interviews address discussion of the deliberative process, not voir dire.

Finally, such an order would not accomplish Samsung’s stated goal of protecting the jurors from “extra-judicial scrutiny and public criticism.” Mot. at 1. An order restraining the parties would not prevent the media from continuing to speak with jurors, which they have continued to do in the weeks following trial. See, e.g., Alison Frankel and Dan Levine, “What's behind Samsung's claims of jury misconduct in Apple patent win?” San Jose Mercury News, September 26, 2012 (quoting juror on the issues raised in Samsung’s Motion for Judgment as a Matter of Law). Accordingly, Samsung’s request for an order prohibiting the parties from communicating with jurors is DENIED with prejudice.

IV. Motion to Seal Pursuant to Civil Local Rule 79-5(d)

Finally, Samsung has moved to seal five exhibits to the Declaration of John Pierce in Support of Samsung’s Motion for Judgment as a Matter of Law on the grounds that Apple and/or Intel have designated them as confidential. On September 24, 2012, Apple filed the Declaration of Cyndi Wheeler in support of this request. ECF No. 1994. In that Declaration, Apple specifically disavowed any desire to seal Exhibits 13 or 18. Accordingly, Samsung’s motion is DENIED with prejudice as to exhibits 13 and 18.

Apple does seek to seal Exhibit 14. This document was admitted as a trial exhibit, PX25A1, and this Court ordered it partially sealed before its introduction at trial. See ECF No. 1649 at 6-7. Specifically, this Court found that the confidential capacity data in the document met the “compelling reasons” standard and approved redactions of that confidential capacity data.

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Accordingly, Samsung’s motion is GRANTED in so far as it seeks to seal only the parts of this document that the Court previously ordered sealed.

Apple also seeks to seal Exhibit 28. This is also an admitted trial exhibit, DX645, which the Court previously ordered sealed, on the grounds that the exhibit contains confidential source code, and thus meets the “compelling reasons” standard. See ECF No. 1649 at 8. Accordingly, consistent with this Court’s prior order, Samsung’s motion to seal Exhibit 28 is GRANTED.

As to the fifth document Samsung moved to seal, Exhibit 19, Samsung indicated that it had been designated as confidential by Intel. Mot at 2. Intel has not filed any supporting declaration, as required by Civil Local Rule 79-5(d). Accordingly, Samsung’s motion is DENIED without prejudice as to exhibit 19.

IT IS SO ORDERED.

Dated: September 28, 2012

[signature]
LUCY H. KOH
United States District Judge

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1. Samsung motion to file JMOL motion under seal: Denied.
2. Samsung request for order prohibiting parties from communicating with jurors: Denied.
3. Samsung motion to seal five JMOL exhibits because Apple or Intel wanted it: Denied as to two exhibits Apple said it didn't care about sealing. Granted as to exhibits 14 adn 28, which Apple wanted sealed. As for the exhibit Intel wanted sealed, denied, but Intel can fix something and get it sealed.

Update: Here's what so far she seems to be missing. The issue is not the internal reasonings of the jury. The issue is bringing in new evidence by a juror. For example, here's a criminal conviction in California that was just overturned because a juror at home did an experiment that turned the tide, and so the conviction that resulted was overturned:

After the verdict, the court said, one of the jurors, a college professor, told Vigil’s lawyer it would have been tough to lift the rifle from the passenger seat, roll the window down and take aim without catching the driver’s attention. The juror said he’d tried it in his own car at home, using a broomstick instead of a rifle, and reported the results to his fellow jurors....

But the law frowns on juror experiments. The Third District Court of Appeal in Sacramento said the juror had committed misconduct and ordered a new trial.

Jurors may be able to test the evidence in their deliberations, the court said — for example, they might have handled the rifle, an exhibit at the trial, to decide whether they believed the witnesses. What they’re prohibited from doing is conducting research on an important issue outside the courtroom, away from lawyers and their fellow jurors.

In this case, the court said, it’s unclear how the broomstick’s size and weight compared to the rifle or how the juror’s car compared to the one used in the crime. And there was also testimony that the window may have already been rolled down when the gunman raised his rifle.

Even if the prosecution’s case was strong, the court said, the jury was torn over the question of Vigil’s advance knowledge of the shooting. The juror, whose occupation as a professor gave him “enhanced stature in the eyes of his fellow jurors … could well have struck a decisive blow in favor of conviction” with his unauthorized experiment, the three-judge panel said.

Deputy Attorney General Jesse Witt said his office hasn’t decided on its next step. Jurors aren’t supposed to conduct experiments on their own, he said, but Vigil knew that his passenger had a gun and that he’d already fired it that night.

That’s not the issue, retorted defense lawyer Jeff Raven. “We had no opportunity to rebut the (juror’s) evidence with our own experiment or cross-examination,” he said. “It illustrates why it’s so critical that the law is what it is.”