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Apple's Nerves Show in Buildup to Dec. 6 Hearing ~pj Updated 2Xs
Sunday, December 02 2012 @ 04:41 PM EST

I think Apple may be feeling a little nervous about Samsung winning a new trial in Apple v Samsung. As the December 6th hearing on both parties' motions for summary judgment draws near, there has been a flurry of Apple activity.

First, they have finally voluntarily told [PDF] the court -- voluntarily as in after Samsung filed a motion to compel Apple to respond, but before the judge ruled -- that they didn't know about the jury foreman's litigation with Seagate until after the trial. They did know about the bankruptcy but they didn't delve into it. This, of course, is helpful to Samsung, in that Apple's argument that Samsung shoulda-coulda known earlier about the litigation and failed to pursue it now bites the dust. Or it should. But the truth is, no matter what they said, it helps Samsung, but this is the least harmful to Apple. Presumably it's also true.

Apple has also filed a recent decision [PDF] by the Federal Circuit in another patent case's appeal, Revision Military, Inc. v. Balboa Mfg. Co. The decision in the appeals case was written by Judge Pauline Newman, however, who never saw a patent owner she didn't support, I've come to believe. That's overstating it a bit, perhaps, but if you read her dissent in the Bilski case, you'll see that she is very, very reluctant to narrow patentability, since she believes patents spur innovation.

And Apple has also filed a notice [PDF] of filing a terminal disclaimer with regard to one of its patents, '677, which I take as a sign that they agree with -- or are worried about -- something that Samsung pointed out in its motion for summary judgment or for a new trial, that Apple was double dipping, since two of its design patents, '677 and '087, are for essentially the same thing. The jury, of course, granted damages for both patents, since they were in a generous and hasty mood and apparently didn't notice the similarities. Here's what Apple hopes will be the result of its disclaimer:

This disclaimer moots Samsung’s Motion for Judgment as a Matter of Law, as set forth in Samsung’s reply brief, that Apple’s U.S. Patent No. D618,677 is invalid for obviousness-type double patenting over U.S. Patent No. D593,087.
The jury messed up every which way. And that is what must be making Apple so nervous, although they deny it is the case. They wouldn't take these steps if they felt confident of the jury's work, in my opinion.

Let's get up to date on the filings, first, before I give you a few more details, because there are a lot of them since we last looked in on the case:
2158 - Filed & Entered: 11/21/2012
ORDER GRANTING MOTION TO COMPEL DEPOSITIONS AND MOTION TO COMPEL PRODUCTION OF SETTLEMENT AGREEMENT by Judge Paul S. Grewal granting [2141] Administrative Motion to File Under Seal; granting [2144] Motion to Compel (psglc2, COURT STAFF) (Filed on 11/21/2012)

2159 - Filed & Entered: 11/26/2012
MOTION for Leave to File RESPONSE TO SAMSUNG'S OBJECTIONS TO APPLE'S REPLY EVIDENCE filed by Apple Inc.. (Attachments: # (1) Exhibit A)(Jacobs, Michael) (Filed on 11/26/2012)

2160 - Filed & Entered: 11/26/2012
Declaration of RICHARD S.J. HUNG in Support of [2159] MOTION for Leave to File RESPONSE TO SAMSUNG'S OBJECTIONS TO APPLE'S REPLY EVIDENCE filed byApple Inc.. (Related document(s)[2159]) (Jacobs, Michael) (Filed on 11/26/2012)

2161 - Filed & Entered: 11/26/2012
Proposed Order GRANTING APPLE'S ADMINISTRATIVE MOTION FOR LEAVE TO FILE by Apple Inc.. (Jacobs, Michael) (Filed on 11/26/2012)

2162 - Filed & Entered: 11/27/2012
NOTICE by Apple Inc. OF FILING OF TERMINAL DISCLAIMER FOR U.S. PATENT NO. D618,677 (Attachments: # (1) Errata A)(Jacobs, Michael) (Filed on 11/27/2012)

2163 - Filed & Entered: 11/27/2012
Declaration of Hankil Kang in Support of [2149] Administrative Motion to File Under Seal filed by Samsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Attachments: # (1) Exhibit A)(Related document(s)[2149]) (Maroulis, Victoria) (Filed on 11/27/2012)

2164 - Filed & Entered: 11/27/2012
Statement OF RECENT DECISION by Apple Inc.. (Attachments: # (1) Exhibit A)(Jacobs, Michael) (Filed on 11/27/2012)

2165 - Filed & Entered: 11/29/2012
Statement of Non-Opposition re [2159] MOTION for Leave to File RESPONSE TO SAMSUNG'S OBJECTIONS TO APPLE'S REPLY EVIDENCE and Samsung's Response to Apple's Objections filed bySamsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Related document(s)[2159]) (Maroulis, Victoria) (Filed on 11/29/2012)

2166 - Filed & Entered: 11/29/2012
ORDER by Judge Lucy H. Koh denying [1941] MOTION FOR STAY (lhklc2, COURT STAFF) (Filed on 11/29/2012)

2167 - Filed & Entered: 11/29/2012
ORDER by Judge Lucy H. Koh denying [823] Motion to Remove Incorrectly Filed Document; denying [1403] Motion to Remove Incorrectly Filed Document; denying [1482] Motion to Remove Incorrectly Filed Document; granting [1508] Motion to Remove Incorrectly Filed Document (lhklc2, COURT STAFF) (Filed on 11/29/2012)

2168 - Filed & Entered: 11/29/2012
ORDER by Judge Lucy H. Koh granting in part and denying in part [2064] Administrative Motion to File Under Seal; granting in part and denying in part [2113] Administrative Motion to File Under Seal (lhklc2, COURT STAFF) (Filed on 11/29/2012)

2169 - Filed & Entered: 11/29/2012
ORDER by Judge Lucy H. Koh granting [2159] Motion for Leave to File (lhklc2, COURT STAFF) (Filed on 11/29/2012)

2170 - Filed & Entered: 11/29/2012
Terminated: 11/30/2012
STIPULATION WITH PROPOSED ORDER re [2158] Order on Administrative Motion to File Under Seal, Order on Motion to Compel,, Stipulation and [Proposed] Order Regarding Depisition Schedule filed by Samsung Electronics Co. Ltd.. (Maroulis, Victoria) (Filed on 11/29/2012)

2171 Filed & Entered: 11/29/2012
Terminated: 11/30/2012
Emergency MOTION to Stay Apples Emergency Motion To Stay Enforcement Of Order Denying Motion To Remove Incorrectly Filed Document (Dkt. No. 2167) As To Dkt. No. 1403 filed by Apple Inc.. Responses due by 12/13/2012. Replies due by 12/20/2012. (Attachments: # (1) Declaration Of Nathan Sabri In Support Of Apples Emergency Motion To Stay Enforcement Of Order Re: Incorrectly Filed Documents, # (2) Proposed Order)(Jacobs, Michael) (Filed on 11/29/2012)

2172 - Filed & Entered: 11/30/2012
RESPONSE to re [2147] Objection,, APPLE'S RESPONSE TO SAMSUNG'S OBJECTIONS TO APPLE'S REPLY EVIDENCE by Apple Inc.. (Jacobs, Michael) (Filed on 11/30/2012)

2173 - Filed & Entered: 11/30/2012
ORDER by Judge Paul S. Grewal granting [2170] Stipulation (psglc2, COURT STAFF) (Filed on 11/30/2012)

2174 - Filed & Entered: 11/30/2012
ORDER by Judge Lucy H. Koh granting [2171] Motion to Stay (lhklc2, COURT STAFF) (Filed on 11/30/2012)

2175 - Filed & Entered: 11/30/2012
MOTION to Relate Case filed by Samsung Electronics Co. Ltd.. (Attachments: # (1) Proposed Order)(Ruga, Dylan) (Filed on 11/30/2012)

2176 - Filed & Entered: 11/30/2012
NOTICE by Apple Inc. re [2108] MOTION to Compel Apple to Disclose the Circumstances and Timing of Its Discovery of Juror Information Notice of Service of Declaration of Mark D. Selwyn (Attachments: # (1) Exhibit A)(Selwyn, Mark) (Filed on 11/30/2012)

2177 - Filed & Entered: 11/30/2012
Administrative Motion to File Under Seal Samsung Administrative Request for Leave to File Declaration re HTC Settlement Agreement filed by Samsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Attachments: # (1) Proposed Order Granting Administrative Motion to File Under Seal, # ( 2) Samsung's Administrative Request for Leave to File Declaration re HTC Settlement Agreement, # (3) Exhibit A to Samsung's Administrative Request, # (4) Declaration of Robert J. Becher in Support of Samsung's Administrative Request, # (5) Exhibit 1 to the Becher Declaration in Support of Samsung's Administrative Request, # (6) Exhibit 2 to the Becher Declaration in Support of Samsung's Administrative Request, # (7) Proposed Order Granting Samsung's Administrative Request)(Maroulis, Victoria) (Filed on 11/30/2012)

About the Double Dipping:

Apple accused Samsung of infringing several patents, including the '677 and the '087 patent, both design patents. And the verdict [PDF] found that some Samsung products -- specifically the Vibrant (JZX1010), the Galaxy S (i9000)(JX 1007), and the Galaxy S 4G (JX 1019) -- and that Samsung Electronics Co., Ltd., was aware that its actions would induce Samsung Electronics America or Samsung Telecommunications America to infringe both the '677 and the '087 patents with respect to the Vibrant and the Galaxy S 4G. Oddly, the jury also found that Samsung willfully infringed the '677 patent but not the '087 patent. But Samsung pointed out to the court in its JMOL motion that the two patents are essentially the same, so the latter patent, the '677, is invalid:

The D'677 and D'087 Patents....

Third, the D'677 patent is invalid for double-patenting. Miller v. Eagle Mfg. Co., 151 U.S. 186, 198 (1894) (second patent must be "substantially different" from first). D'677 and embodiments of D'087 (particularly the sixth embodiment) depict the same design; the only elements added by the D'677 are the color black and oblique lines, features that do not make D'677 "a separate invention, distinctly different and independent," id at 198, and the D'087 subsumes the D'677 because Apple admits that "the flat front surface [of D'087] could be any color. It could be transparent. It could be anything." RT 1019212-17.5

_________________
5 Apple claimed that the same Apple devices that embody D'087 also embody D‚'677 (RT 1021:16-1023:22), and that the same Samsung devices that infringe D'087 also infringe D'677. RT 1049:6-23, 1056:6-1057:24; 1060:7-1064:11.

Apparently Apple now concedes the point, or at least the danger. Because the jury didn't break the award down by alleged infringement or trade dress dilution or whatever, just putting a total for each product, there is no answer to the question, What were they thinking? Nobody knows. But Apple here is not only trying to avoid Samsung winning a new trial. It is trying to save the validity of the '677 patent, as you can see in the wording of its notice of termination:
Apple hereby notifies the Court that it has executed and filed with the U.S. Patent and Trademark Office a Terminal Disclaimer for the D’677 patent, a copy of which is attached hereto as Exhibit A. This disclaimer moots Samsung’s Motion for Judgment as a Matter of Law, as set forth in Samsung’s reply brief, that Apple’s U.S. Patent No. D618,677 is invalid for obviousness-type double patenting over U.S. Patent No. D593,087. (Dkt. No. 2131 at 7 (citing Eli Lilly and Co. v. Teva Parenteral Meds., Inc., 689 F.3d 1368, 1376 (Fed. Cir. 2012) for “patentably distinct” standard for obviousness-type double patenting).) See Eli Lilly & Co. v. Barr Lab., Inc., 222 F.3d 9 973, 985 n.4 (Fed. Cir. 2000) (obviousness-type double patenting is cured by terminal disclaimer); Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1378 (Fed. Cir. 2003) (same). This is so notwithstanding that the disclaimer has been filed during litigation. See Boehringer Ingelheim Intern. GmbH v. Barr Labs., Inc., 592 F.3d 1340, 1347 (Fed. Cir. 2010); Syngenta Seeds, Inc. v. Monsanto Co., No. Civ. 02–1331–SLR, 2004 WL 2790499, at *2-3 (D. Del. Nov. 19, 2004) (denying summary judgment of invalidity for double patenting in view of terminal disclaimer filed during litigation).

The filing of a terminal disclaimer cannot be treated as an admission that the later patent is invalid for double patenting. See Ortho Pharmaceutical Corp. v. Smith, 959 F.2d 936, 941 (Fed. Cir. 1992) (“It is improper to convert this simple expedient of ‘obviation’ into an admission or acquiescence or estoppel on the merits.”); Ventana Med. Sys. v. Biogenex Labs., Inc., 473 F.3d 1173, 1184 n.4 (Fed. Cir. 2006) (same).

Here's one of the cases cited, Boehringer [PDF], because it explains what all this double-patenting language is about, namely that you can only get one patent per invention or a modification of it, so as to prevent a patent owner from extending the length of time it is protected forever and ever:
A. Retroactive Terminal Disclaimer

Because 35 U.S.C. § 101 “states that an inventor may obtain ‘a patent’ for an invention,” the statute “permits only one patent to be obtained for a single invention.” In re Lonardo, 119 F.3d 960, 965 (Fed. Cir. 1997) (emphasis added). “A double patenting rejection precludes one person from obtaining more than one valid patent for either (a) the ‘same invention,’ or (b) an ‘obvious’ modification of the same invention.” In re Longi, 759 F.2d 887, 892 (Fed. Cir. 1985). Obviousness-type double patenting is a “judicially created doctrine grounded in public policy (a policy reflected in the patent statute)” that “prevent[s] the extension of the term of a patent, even where an express statutory basis for the rejection is missing, by prohibiting the issuance of the claims in a second patent not patentably distinct from the claims of the first patent.” Id.

The purpose for the doctrine of obviousness-type double patenting is well established:

The doctrine of double patenting is intended to prevent a patentee from obtaining a time-wise extension of patent [rights] for the same invention or an obvious modification thereof.
Lonardo, 119 F.3d at 965; see also Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 967 (Fed. Cir. 2001) (“The judicially-created doctrine of obviousness-type double patenting cements [the] legislative limitation [of § 101] by prohibiting a party from obtaining an extension of the right to exclude through claims in a later patent that are not patentably distinct from claims in a commonly owned earlier patent.”)....

“For obviousness-type double patenting, [the improper extension of the statutory term] can sometimes be avoided for co-owned patents or applications through the use of a terminal disclaimer.” Id. Terminal disclaimers are expressly permitted under 35 U.S.C. § 253:

A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent. . . .

In like manner any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.

“[A] terminal disclaimer may restrict the slight variation to the term of the original patent and cure the double patenting rejection.” Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1378 (Fed. Cir. 2003)....

When the claims of a patent are obvious in light of the claims of an earlier commonly owned patent, the patentee can have no right to exclude others from practicing the invention encompassed by the later patent after the date of the expiration of the earlier patent.

I think you can see just from that excerpt that the issue of the validity of the patent is not *necessarily* resolved by this move on Apple's part. The rest of the factual details will be discussed, no doubt, at the hearing. For one thing, if you read the letter to the Patent office, Apple sort of disclaims and sort of doesn't. Here's the fine print:
The patent owner, Apple Inc., of 100 percent interest in the U.S. Patent No. D618,677 hereby disclaims, except as provided below, the terminal part of the statutory term of U.S. patent No. D618,677 which would extend beyond the expiration date of the full statutory term of prior U.S. Patent No. D593,087, as the term of said prior patent is defined in 35 U.S.C. 154 and 173, and as the the term of said prior patent is presently shortened by any terminal disclaimer. The patent owner hereby agrees that U.S. Patent No. D618,677 and the prior patent are commonly owned. This agreement is binding upon the patent owner, its successors, or assigns.

In making the above disclaimer, the patent owner does not disclaim the terminal part of the term of U.S. Patent No. D618,677 that would extend to the expiration date of the full statutory term as defined in 35 U.S.C. 154 and 173 of the prior patent, as the term of said prior patent is presently shortened by any terminal disclaimer, in the event that said prior patent later: expires for failure to pay a maintenance fee; is held unenforceable; is found invalid by a court of competent jurisdiction; is statutorily disclaimed in whole or temrinally disclaimed under 37 CFR 1.321; has all claims canceled by a reexamination certificate; is reissued; or is in any manner terminated prior to the expiration of its full statutory term as presently shortened by any terminal disclaimer.

So, if I've understood it, this is a disclaimer with a lot of exit doors. For example, Apple could sell or give the '677 patent to somebody else, retaining '087, and the new owner would get the full term of patent protection for the '677, negating the disclaimer. Or Apple could let the '087 lapse by failing to pay fees, and then it gets back the full term of the '677 patent. Huh? Maybe I'm not understanding the wording right. That can't be right, can it? It seems to be a non-disclaimer except for the purposed of the current hearing, after which it's not a disclaimer if Apple doesn't want it to be. I'm not a patent lawyer, but they'll know if the language here is boilerplate or not, but if not, it's a red flag.

Update 2: Michael Risch comes to my rescue, and he explains the language:

You're right - it can't be right, and it's not! What that language means is that if the first patent somehow expires EARLY (due to invalidity or failure to pay fees), then the second patent does not expire EARLY - it just expires when the first one was SUPPOSED to expire. This is boilerplate language. Also, if they sell only one patent, then the patent loses the benefit of the disclaimer and can be invalidated for double patenting - part of the rule is that the patents must be commonly owned.
The Revision Military Decision:

The case they have now filed is a case about design patents:

Pursuant to Local Rule 7-3(d)(2), Apple submits the following attached opinion published by the Federal Circuit on November 27, 2012 after the reply brief submitted in this case: Revision Military, Inc. v. Balboa Mfg. Co., No. 2011-1628, slip op. (Fed. Cir. Nov. 27, 2012). The opinion is relevant to Samsung’s motion under Rules 50 and 59 of the Federal Rules of Civil Procedure (Dkt. No. 1990). Among other things, it discusses the Federal Circuit’s standard for design patent infringement (see slip op. at 5-6).
The ruling cited [PDF] reads in part like this:
Although the district court stated the correct “overall design” standard, citing Crocs, Inc. v. International Trade Commission, 598 F.3d 1294, 1303 (Fed. Cir. 2010), the court focused on features that “stand out as dissimilar,” reciting the shape and sizes of the lenses, the concavity of the nose bridge, and the venting along the top and bottoms. Revision states that the design of the Bravo goggles and the patented goggles is substantially the same, and that any differences would not be noticed by the ordinary observer.

Although individual features may indeed serve in assessing the “impact on the overall appearance,” Order at 25, in determining whether apparently minor differences between specific features would be recognized as distinguishing the designs, it is often helpful to refer to any prior art with which the ordinary observer would reasonably be familiar. As stated in Egyptian Goddess, “the background prior art, provides . . . a frame of reference and is therefore often useful in the process of comparison.” 543 F.3d at 677.

The district court did not consider the prior art context in which the ordinary observer test is applied. Although the district court stated that “[b]ecause this is not a particularly close case, the court does not need prior art as a ‘frame of reference’ to apply the ‘ordinary observer test,’” Order at 22, the record suggests otherwise. On remand, the district court may redetermine the question, applying the design-as-a-whole criterion and the more-likely-than-not standard.

The design-as-a whole criterion is what Apple is citing; the more likely than not applies to preliminary injunctions, which doesn't apply in Apple v. Samsung now, because the case already went to trial, and Apple isn't asking for a *preliminary* injunction.

The appeals court sent the case back so the district court could consider prior art with respect to a design patent. Here's how The Ordinary Observer, a blog about design patents by Lando & Anastasi, LLP, describes it:

The Federal Circuit stopped short of saying that the district court’s infringement analysis was in error though. However, the court warned that “[a]lthough individual features may indeed serve in assessing the ‘impact on the overall appearance,’ … in determining whether apparently minor differences between specific features would be recognized as distinguishing the designs, it is often helpful to refer to any prior art with which the ordinary observer would reasonably be familiar.” The Federal Circuit then remanded the case to the district court with a friendly suggestion to perhaps consider the prior art.

Although the district court’s likelihood of infringement analysis was not central to the appeal, the Federal Circuit took this opportunity to remind district courts (and perhaps design patent practitioners) of the importance of context when determining design patent infringement. Normally, substantial similarity should not be determined in a vacuum, and relevant prior art can inform the trier of fact as to the relative breadth of design patent claims. Furthermore, consideration of prior art does not necessarily mean a narrower scope of protection. Where a design is clearly unique within its field, it may be entitled to broader protection. Thus, Revision Military may signal the Federal Circuit’s intention to create a more rigid framework for design patent infringement analysis, including consideration of prior art.

That last is the part that Apple likes, but the facts of the case are a bit unhelpful in that considering prior art is precisely what the jury failed to do across the board, incorrectly applying an invented legal standard by the jury foreman which resulted in the jury deciding that the prior art didn't help Samsung. But the judge knows the law, so this case, in my view, provides an opening for the judge to cancel the infringement verdict altogether regarding the design patents, should she choose to use this case as an indication of the right course to follow.

Update: If you read Samsung's trial brief [PDF], it provides further context regarding this decision. On page 13, you find this:

B. Minor Differences Matter

Apple argues that "[m]inor differences should not prevent a finding of infringement." Dkt No. 1232 at 157. But this is contrary to law. The hypothetical ordinary observer is assumed to be familiar with the prior art. Egyptian Goddess, 543 at 681-83. Here, the crowded field of art includes a spectrum of rectangular devices with rounded corners, flat surfaces, bezels, display screens with borders around them, and lozenge shapes above display screens. Accordinly, the hypothetical ordinary observer will readily identify and take into account differences that may go unnoticed in the abstract, such as the specific roundness of a corner, thickness of a border, or shape of a bezel. "[D]ifferences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art." Egyptian Goddess, 543 F.3d at 678; see also id. ("[W]hen the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are more likely to be important to the eye of the hypothetical ordinary observer."") (emphasis added). This Court too has recognized this already, noting that "the prior art references identified by Samsung, as well as the overall simplicity of the D'677 patent, may make minor differences between the patent-in-suit and the front view of the Infuse 4 -- for example, the addition of buttons and writing on the Samsung Infuse 4 that are not present in the Apple patents -- take on greater significance in the eyes of the ordinary observer." Dkt No. 449 at 27; see also id at 26 ...

Minor differences that are important to the ordinary observer conversant with the prior art can certainly prevent a finding of infringement.... As another example, in Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1115 (Fed. Cir. 1998), the plaintiff asserted infringement of the patent on the left below by the design on the right. [graphic] The court held that "[a]lthough there are apparent similarities in the overall appearance of the designs, we affirm the conclusion that the trucker as ordinary observer would not notice the differences in the designs and recognize that they are not colorably the same." Id. at 1121-22. Any generalized argument by Apple that minor differences must preclude a finding of non-infringement is therefore unsupported by law and misleading. This is especially true where, as here, Apple is claiming only parts of a hand-held device with minimal features.

You might also find Patently O's analysis of the decision pertinent:
After a hearing, the district court sided with Balboa – holding that Revision had not provided a "clear and substantial" likelihood of success on the merits as required under the Second Circuit law of preliminary injunctive relief. The Federal Circuit has an easier standard for approving preliminary relief in patent cases – requiring only a preponderance of the evidence – and the lower court erred in not applying that standard.

The district court found that the patentee's infringement case lacked sufficient merit to meet the "clear and substantial" standard. On remand, the lower court will be asked to decide whether it meets the Federal Circuit's lower standard.

While the appellate court does a fine job of criticizing the district court judgment, one interesting optical mote in Judge Newman's written opinion is that it fails to mention the leading Supreme Court case on injunctive relief, eBay v. MercExchange. That case is important here. A major element of eBay is the Supreme Court's suggestion that the law of injunctive relief in patent cases should be the same law that is applied in other areas of law.

According to well-established principles of equity, a plaintiff seeking a permanent injunction must satisfy a four-factor test before a court may grant such relief. . . . These familiar principles apply with equal force to disputes arising under the Patent Act. As this Court has long recognized, "a major departure from the long tradition of equity practice should not be lightly implied." Nothing in the Patent Act indicates that Congress intended such a departure.
Federal Circuit precedent on applying its own law to preliminary injunction standards reaches back at least to Hybritech Inc. v. Abbott Labs., 849 F.2d 1446 (Fed. Cir. 1988). In that case, the Federal Circuit held that its own law (rather than that of a regional circuit) controls the grant or denial preliminary injunctions. In my view, eBay places this notion in serious question.

The second half of the opinion looks at the methodology for judging infringement. Here, the appellate court criticized the lower court's decision for unduly focusing on individual elements that "stand out as dissimilar" rather than how those differences would impact an ordinary observer considering the design as a whole and its similarity to the accused device and with reference to the closest prior art.

About the Jury Foreman:

Here's the text of Apple's statement about what it knew and when it knew it:

As explained in Apple’s Opposition to Samsung’s Motion to Compel Disclosure of Circumstances and Timing of Discovery of Juror Information (Docket No. 2118), Apple does not accuse juror Velvin Hogan of misconduct – because there was none – so what Apple knew and when regarding Mr. Hogan’s lawsuit with Seagate nearly two decades ago is irrelevant to any issue raised by Samsung’s post-trial motions. Apple does not contend that any past relationship between Mr. Hogan and Seagate, or any lawsuit between them, is anything remotely close to support a challenge for cause. Nonetheless, in an effort to remove any issue for the Court’s resolution regarding Samsung’s request that Apple provide a declaration relating to “when and how Apple first learned that the jury foreman, Velvin Hogan, had been a party to lawsuits involving Seagate” (Docket No. 2108, Samsung’s Notice of Motion to Compel Apple to Disclose the Circumstances and Timing of its Discovery of Juror Information, at 2), Apple has today served upon Samsung the Declaration of Mark D. Selwyn (“Selwyn Declaration”) attached as Exhibit A. As set forth in the Selwyn Declaration, Apple has not identified any Apple attorney or other member of the Apple litigation teams who was aware that Mr. Hogan had been a party to lawsuits involving Seagate until after the conclusion of trial, when Samsung raised the matter in connection with its post-trial motions.
How about somebody's husband? Just kidding. Here's what Mr. Selwyn says:
3. In connection with this declaration, Michael Jacobs and I surveyed the litigation teams who have worked on this case at Morrison & Foerster and WilmerHale (including every attorney at Morrison & Foerster and WilmerHale who has a current appearance in this case on behalf of Apple) and the in-house litigation team within Apple. We have not identified any attorney or other member of the litigation teams who was aware that Mr. Hogan had been a party to lawsuits involving Seagate until after the conclusion of trial, when Samsung raised the matter in connection with its post-trial motions.

4. On the evening of July 30, 2012, following jury selection, members of the litigation teams at WilmerHale and Morrison & Foerster became aware, based upon publicly available records, that Mr. Hogan had filed for bankruptcy. No attempt was made to obtain or review the contents of the bankruptcy court file, which the teams first saw after the conclusion of the trial when they were submitted by Samsung in support of its JMOL submission.

They could have just said that from the beginning. But then they couldn't argue that Samsung was derelict in its duty to do due diligence, now, could they? Over-aggression rarely pays off. At least not when it's Quinn Emanuel on the other side.

Judge Koh had said she'd hear argument on whether or not to order Apple to answer Samsung's question at the Dec. 6th hearing, and then she would order further briefing as needed. This move by Apple presumably is an attempt to avoid all that.

The Rest:

A lot of the rest of the filings are about whether to seal or not. The judge has explained multiple times what her standard is. And the parties -- she singles out Apple by name -- keep asking to seal without meeting her standard. This naturally results in her repeatedly refusing to seal the same types of things, but she is allowing Apple to appeal, and she is staying the unsealing until that can run its course.

There is one worth noting. Samsung mentions that this case may be related to one in Japan, and it is seeking to do discovery:

The 1782 Application seeks leave to obtain discovery from Apple for Samsung to use in litigation between Apple and Samsung currently pending in Japan. The patent-in-suit in the Japanese litigation is JP 4743919, which is the Japanese counterpart to U.S. Patent No. 7,469,381 (the “‘381 Patent”). The ‘381 Patent is one of the patents asserted by Apple in the Apple/Samsung Litigation.

In light of the foregoing, Samsung hereby notifies the Court that the 1782 Application and the Apple/Samsung Litigation may be related.

This case is endlessly interesting, isn't it? By the way, it's not too late to sign up to attend the hearing for Groklaw, if you can make it.

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