Apple Inc. v. Samsung Electronics Co., Ltd. , 839 F.3d 1034 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC., A CALIFORNIA CORPORATION,
Plaintiff-Cross-Appellant
v.
SAMSUNG ELECTRONICS CO., LTD., A KOREAN
CORPORATION, SAMSUNG ELECTRONICS
AMERICA, INC., A NEW YORK CORPORATION,
SAMSUNG TELECOMMUNICATIONS AMERICA,
LLC, A DELAWARE LIMITED LIABILITY
COMPANY,
Defendants-Appellants
______________________
2015-1171, 2015-1195, 2015-1994
______________________
Appeals from the United States District Court for the
Northern District of California in No. 5:12-cv-00630-LHK,
Judge Lucy H. Koh.
______________________
Decided: October 7, 2016
______________________
WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
Dorr LLP, Boston MA, argued for plaintiff-cross-
appellant. Also represented by DANA OLCOTT BURWELL,
ANDREW J. DANFORD, MARK CHRISTOPHER FLEMING,
LAUREN B. FLETCHER, SARAH R. FRAZIER, RICHARD WELLS
O’NEILL; MARK D. SELWYN, Palo Alto CA; THOMAS
GREGORY SPRANKLING, Washington, DC; RACHEL
2 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
KREVANS, Morrison & Foerster LLP, San Francisco, CA;
ERIK JEFFREY OLSON, Palo Alto, CA.
KATHLEEN M. SULLIVAN, Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, argued for defendant-
appellants. Also represented by WILLIAM ADAMS, DAVID
MICHAEL COOPER; BRIAN COSMO CANNON, KEVIN P.B.
JOHNSON, VICTORIA FISHMAN MAROULIS, Redwood Shores,
CA; JOHN B. QUINN, SCOTT L. WATSON, MICHAEL THOMAS
ZELLER, Los Angeles, CA.
______________________
Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,
MOORE, O’MALLEY, REYNA, WALLACH, CHEN, HUGHES, and
STOLL, Circuit Judges. ∗
Opinion for the court filed by Circuit Judge MOORE, in
which NEWMAN, LOURIE, O’MALLEY, WALLACH, CHEN, and
STOLL, Circuit Judges, join.
Concurring in the result without opinion Circuit Judge
HUGHES.
Dissenting Opinion filed by Chief Judge PROST.
Dissenting Opinion filed by Circuit Judge DYK.
Dissenting Opinion filed by Circuit Judge REYNA.
MOORE, Circuit Judge.
I. INTRODUCTION
The current appeal results from a patent infringe-
ment suit and countersuit between Apple Inc. (“Apple”)
and Samsung Electronics Co., Ltd., Samsung Electronics
America, Inc., and Samsung Telecommunications Ameri-
ca, LLC (collectively, “Samsung”). Relevant to this en
∗
Circuit Judge TARANTO did not participate.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 3
banc decision, the district court granted summary judg-
ment that Samsung’s accused devices infringe the assert-
ed claim of U.S. Patent No. 8,074,172 (“the ’172 patent”).
After a thirteen day trial, the jury found the asserted
claim of U.S. Patent No. 5,946,647 (“the ’647 patent”)
infringed, and the district court denied Samsung’s re-
quested judgment as a matter of law (“JMOL”). The jury
also found the asserted claim of U.S. Patent No. 8,046,721
(“the ’721 patent”) infringed and not invalid and the
asserted claim of the ’172 patent not invalid. The district
court later denied Samsung’s requested JMOL and en-
tered judgment accordingly. 1 Samsung appealed the
district court’s grant of summary judgment of infringe-
ment as to the ’172 patent, denial of JMOL of non-
infringement as to the ’647 patent, and denial of JMOL of
obviousness as to the ’721 and ’172 patents.
II. PROCEDURAL PROGRESS
A. The Decision to Grant En Banc Review
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
1 Separately, the jury found that Samsung had not
infringed the asserted claims of Apple’s ’414 or
’959 patents. Additionally, the jury found that Apple had
infringed the asserted claim of Samsung’s ’449 patent but
had not infringed the asserted claim of Samsung’s
’239 patent and awarded Samsung $158,400 in damages.
We reinstate the panel decision as to the appeals relating
to these issues.
4 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
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 construc-
tion. See, e.g., id. at 8 (“The panel looked to [this extra-
record evidence] to create its own plain meaning of ‘serv-
er’ as requiring a ‘stand alone’ program.”). Apple also
argued that this extra-record evidence was used in “con-
sidering 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 re-
versed nearly every fact finding by the jury which favored
Apple. Id. at 1.
We granted Apple’s en banc petition to affirm our un-
derstanding of the appellate function as limited to decid-
ing 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 wheth-
er 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 extrin-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 5
sic 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 addi-
tional briefing or argument to determine that the appel-
late 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 obvious-
ness. We did not take this case en banc to decide im-
portant 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.
B. The En Banc Decision
We affirm and reinstate the district court’s judgment
as to the ’647, ’721, and ’172 patents. We conclude that
the jury verdict on each issue is supported by substantial
evidence in the record and that the district court did not
err when denying Samsung’s respective JMOLs. Accord-
ingly, we vacate the panel opinion and affirm the district
6 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
court’s judgment with respect to these patents. We rein-
state the panel opinion regarding U.S. Patent Nos.
6,847,959, 7,761,414, 5,579,239, and 6,226,449. In all
other respects, the panel decision is vacated. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
III. DISCUSSION
We review a district court’s order granting or denying
JMOL under the standard applied by the regional circuit.
In the Ninth Circuit, JMOL “is proper when the evidence
permits only one reasonable conclusion and the conclusion
is contrary to that of the jury.” See Monroe v. City of
Phoenix, 248 F.3d 851, 861 (9th Cir. 2001). The Ninth
Circuit explains that “[t]he evidence must be viewed in
the light most favorable to the nonmoving party, and all
reasonable inferences must be drawn in favor of that
party.” Id. The Ninth Circuit reviews a district court’s
decision to grant or deny JMOL de novo. Id.
A. The ’647 Patent
Apple asserted infringement of claim 9 of the
’647 patent. The jury found that Samsung infringed and
awarded Apple $98,690,625. J.A. 40869–79. The district
court denied JMOL of non-infringement. J.A. 40–48.
Samsung argues the district court erred in not granting
its motion for JMOL of non-infringement. Because there
was substantial evidence to support the jury’s verdict, we
affirm. “Substantial evidence . . . means such relevant
evidence as a reasonable mind might accept as adequate
to support a conclusion.” Consol. Edison Co. of N.Y. v.
N.L.R.B., 305 U.S. 197, 229 (1938).
Infringement is a question of fact. Lucent Techs., Inc.
v. Gateway, Inc., 580 F.3d 1301, 1309 (Fed. Cir. 2009).
Our review on appeal is limited to whether there was
substantial evidence in the record to support the jury’s
verdict. Id. We presume the jury resolved all underlying
factual disputes in favor of the verdict. SSL Servs., LLC
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 7
v. Citrix Sys., Inc., 769 F.3d 1073, 1082 (Fed. Cir. 2014).
The ’647 patent discloses a system and method for de-
tecting structures such as phone numbers, addresses, and
dates in documents, and then linking actions or com-
mands to those structures. When the system detects a
structure in a document, an “analyzer server” links ac-
tions to that detected structure. Actions include things
such as placing a phone call or adding an address to an
electronic address book. See ’647 patent at 2:21–41.
Apple asserted claim 9, which depends from claim 1:
1. A computer-based system for detecting struc-
tures in data and performing actions on detected
structures, comprising:
an input device for receiving data;
an output device for presenting the data;
a memory storing information including
program routines including
an analyzer server for detecting
structures in the data, and for
linking actions to the detected
structures;
a user interface enabling the selec-
tion of a detected structure and a
linked action; and
an action processor for performing
the selected action linked to the
selected structure; and
a processing unit coupled to the input de-
vice, the output device, and the memory
for controlling the execution of the pro-
gram routines.
9. The system recited in claim 1, wherein the user
interface enables selection of an action by causing
8 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
the output device to display a pop-up menu of the
linked actions.
’647 patent at 7:9–55 (emphasis added).
Samsung contends no reasonable jury could have
found infringement based on our constructions of “analyz-
er server” and “linking actions to the detected structures.”
We previously addressed the constructions of both terms
in Apple, Inc. v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir.
2014) (“Motorola”), a separate litigation involving the
’647 patent. Our Motorola opinion issued on the parties’
final day for presenting evidence at trial in this case.
J.A. 42. During the Markman hearing, neither Apple nor
Samsung had sought a construction of “analyzer server”
or “linking actions,” and instead sought to rely on the
plain and ordinary meanings of those terms. After
Motorola issued, the parties agreed to give the Motorola
constructions to the jury and reopen evidence to give both
sides an opportunity to present expert testimony about
the impact of the Motorola constructions on
’647 infringement. J.A. 43. The jury was instructed as
follows:
The term “analyzer server” means “a server rou-
tine separate from a client that receives data hav-
ing structures from the client.”
The term “linking actions to the detected struc-
tures” means “creating a specified connection be-
tween each detected structure and at least one
computer subroutine that causes the CPU to per-
form a sequence of operations on that detected
structure.”
Final Annotated Jury Instrs., No. 22, Apple Inc. v. Sam-
sung Elecs. Co., No. 5:12-cv-00630-LHK, (N.D. Cal. Apr.
28, 2014), ECF No. 1848. Neither side objected to the jury
instruction and neither side has appealed the construc-
tions given to the jury. We address Samsung’s arguments
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 9
for each term separately.
1. Analyzer Server
The only issue on appeal relating to the “analyzer
server” limitation is whether there was substantial evi-
dence to support the jury’s fact finding that Samsung’s
accused devices satisfy this limitation under our Motorola
construction. In Motorola, we construed “analyzer server”
as “a server routine separate from a client that receives
data having structures from the client.” Motorola, 757
F.3d at 1304. In Motorola, the court explained:
We agree with the district court’s construction of
“analyzer server.” As the district court recog-
nized, the plain meaning of “server,” when viewed
from the perspective of a person of ordinary skill
in the art, entails a client-server relationship.
Consistent with this perspective, the specification
discloses an analyzer server that is separate from
the application it serves. The analyzer server is
part of the “program 165 of the present invention.”
’647 patent at col. 3, ll. 38–39. Fig. 1 shows the
program 165 and the application 167 as separate
parts of a random-access memory (RAM):
10 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
Id. at Fig. 1. Further, the specification states that
“the program 165 of the present invention is
stored in RAM 170 and causes CPU 120 to identi-
fy structures in data presented by the applica-
tion 167.” Id. at col. 3, ll. 37–41. Thus, the
specification describes the analyzer server and the
application, which it serves, as separate struc-
tures.
Id. at 1304–05 (red box annotation to figure added). 2 This
court explained that the ’647 patent’s separate require-
ment for the analyzer server is met when the “pro-
gram 165” and “application 167” are stored in “separate
parts of random access memory.” Id. As we explained,
Figure 1 of the patent “shows the program 165 and the
application 167 as separate parts of a random-access
memory (RAM)” and they are thus “separate structures.”
Id. Under the Motorola claim construction, the program
and application satisfied the separate requirement be-
cause they were structurally separate, i.e., located in
different parts of the RAM. In this case, the parties
agreed that the Motorola construction be given to the
jury, and neither party appealed that construction.
The panel, however, used extra-record extrinsic evi-
2 The district court opinion in Motorola—which we
affirmed—likewise based its determination of “separate”
on the fact that the client and analyzer server are located
in different parts of the memory, also citing Figure 1 of
the patent: “Had the patent intended the analyzer server
to be integrated into the application, rather than sepa-
rate, the program box would logically appear inside the
application box in Figure 1.” Apple Inc. v. Motorola Inc.,
No. 1:11-cv-08540, 2012 WL 12537293, at *6 (N.D. Ill.
Mar. 19, 2012).
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 11
dence to modify the agreed upon and unappealed con-
struction of “analyzer server.” 3 Panel Op. at 8, 10 n.5. It
held that Samsung’s accused systems did not infringe
because “the Samsung software library programs are not
‘standalone’ programs that run separately.” Panel Op. at
13. Neither party asked for this changed construction. 4
And there is no foundation in Motorola for it.
3 The panel opinion also used the extra-record evi-
dence to understand the operation of the accused prod-
ucts. See, e.g., Panel Op. at 9 (“In other words, the
software library program runs as part of the client pro-
gram. See Program library (software library), Dictionary
of Computing 391 (4th ed. 1996) (“Usually it is only
necessary to reference the library program to cause it to
be automatically incorporated in a user’s program.”)
(emphasis added).”); id. at 10–11 n.5 (“A client/server
relationship assumes a ‘clean separation of functions’—
both the client and the server are independently operat-
ing programs, each performing separate functions. See,
e.g., Stephen L. Montgomery, Object-Oriented Infor-
mation Engineering: Analysis, Design, and Implementa-
tion 265 (1994).”). Apple argues that portions of the same
extra-record evidence not cited by the panel support
Apple’s position. We make no findings regarding the
teachings of the extra-record evidence.
4 Samsung did not argue that the Motorola con-
struction should be expanded or modified to require that
the “analyzer server” “run separately” or “stand alone”
from the client application. The only instances where
Motorola uses the word “separate” are when describing
locations, such as “separate parts of a random-access
memory (RAM)” or describing the analyzer server and
client application as “separate structures.” Motorola, 757
F.3d at 1304–05. Both parties tried the case and present-
ed appellate arguments based on this understanding.
12 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
The dissents claim that Apple agreed to a new con-
struction during oral argument. 5 The dissents take
Apple’s statement out of context. When Apple’s counsel
stated that the analyzer server runs separately, he was
explaining that the analyzer server runs in its own loca-
tion in memory; the shared library code is not copied into
and run as part of the client application. See Oral Arg. at
29:15–30:25. “The big fight was this, this was the big
fight, does the code from the analyzer server get copied
and become part of the analyzer server where it is run, or
is there one copy of the code, and it is run at the analyzer
server separately at the analyzer server as a part of a
separate routine.” Id. at 44:55. Apple’s counsel repeated-
ly and clearly rejected the panel’s suggestion that “sepa-
rate” means a standalone program which runs separately.
“There is no requirement in the claim interpretation that
it run as a standalone program.” Oral Arg. at 34:55. 6
Apple argued that the panel’s proposed interpretation of
“separate” was “a new claim construction that’s actually
more specific and different than the jury charge. No one
5 Two of the dissents argue Apple agreed to the
panel’s construction that the analyzer server must “run
on its own.” Prost Dissent at 21–22; Dyk Dissent at 22.
We note that Judge Reyna’s dissent does not address this
issue.
6 See also Oral Arg. at 28:45 (“There is no require-
ment that it be stand alone.”); id. at 33:15 (“There is
nothing in the claim interpretation that says it has to be
stand alone. It says it has to be a separate routine.”); id.
at 40:15 (“The question is . . . does the claim require a
completely standalone, separate routine, and this court’s
Motorola interpretation doesn’t require it, and the claim
doesn’t require it, but it does require a separate routine.”);
id. at 44:00 (“There is no requirement legally that it be a
standalone program.”).
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 13
has urged you to do that. There is no suggestion that the
claim interpretation is wrong.” Id. at 45:45. 7 Apple reit-
erated its objection to the panel’s modified construction in
its Petition for Rehearing. 8
Claim construction was not appealed and we do not
agree that Apple agreed to the panel’s change to the
construction of analyzer server. Even Samsung’s counsel
agreed, “[Apple] is correct that we are not disputing the
claim construction.” Oral Arg. at 1:12:40. We thus return
to our Motorola construction which was agreed upon by
the parties in this case, given to the jury, and not ap-
pealed: “analyzer server” is “a server routine separate
from a client that receives data having structures from
the client.” We evaluate whether there is substantial
evidence for the jury’s finding of infringement under that
7 Apple’s counsel explained that to require the ana-
lyzer server to be a standalone program “would be taking
the claim interpretation that was given in the Motorola
case and reinterpreting it to require something more
specific.” Id. at 44:00; see id. at 46:05–46:25 (“Court: The
question is what does the claim interpretation mean?
Apple: No your honor, they haven’t raised that issue.
There is no issue of claim interpretation, there is no issue
of whether it was incorrect, there is no issue of whether it
was given. The only question is, on that charge, was there
substantial evidence to support the jury’s decision.”).
8 See Apple Pet. 6 (“[T]he panel relied on non-record
sources to make its own finding as to [server’s] plain
meaning. Specifically, the panel ruled that ‘servers’ must
be ‘‘standalone programs’ that run separately.’”); id. at 7
n.4 (“But Apple’s counsel was clear that ‘[t]here is no
requirement that [the analyzer server] be standalone.
The requirement is that it be a separate routine.’”) (alter-
ations in original).
14 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
construction. 9
On appeal, Samsung argues no reasonable jury could
have found its accused devices meet the “analyzer server”
limitation because the accused devices do not contain a
server routine “separate” from the client application.
Samsung Br. 16–25. It argues that “the uncontested
evidence at trial showed that the Browser and Messenger
applications each contain their own routines within the
application for analyzing the data (i.e., performing the
detecting and linking functions) and do not rely on a
separate server.” Id. at 18 (emphasis in original). It
argues that in its accused devices, when a client applica-
tion needs shared library code, “it will copy it from the
library and it will run as part of the application.” Id.
at 19. It cites the testimony of its expert, Dr. Jeffay, that
“[y]ou go to the library, you take code out of the library,
you integrate it in your application, and at that point the
9 Two of the dissents allege that the library pro-
grams cannot satisfy the analyzer server limitation de-
spite the fact that they are separate programs which
perform detecting and linking actions in response to a
client request as required by the claims. Prost Dissent at
21–22; Dyk Dissent at 20–21. The claim language plainly
indicates that the client application uses the analyzer
server to perform the linking and detecting functions. See
’647 patent claim 1. Samsung argued it did not infringe
because of where the shared library code was used
(whether it was copied into the client application before
use), not whether it was used by the client application.
See, e.g., Samsung Br. 17, 18, 19, 21–22, 24. The concept
that the analyzer server must be “standalone” or “run on
its own” or run in isolation apart from a client request has
no foundation in the ’647 patent, in our prior Motorola
decision, or in the parties briefs on appeal to this court.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 15
library code is no different than any other code in the
application.” Id. at 21.
There is no real dispute regarding whether the shared
library code in the accused devices performs all the
claimed functionality—the dispute is where it performs
those functions. Samsung contends the shared library
code in its devices is copied and incorporated into the
client application, so when the code is run, it runs as part
of the client application. Therefore, its shared library
code is not “separate” from the client application.
Apple contends the shared library code in Samsung’s
accused devices is never copied but rather remains at the
library. It contends that, when a client application wishes
to use Samsung’s shared library code, the application goes
to the shared library and uses the code there. Therefore,
Samsung’s shared library code is “separate” from the
client.
We limit our appellate review to the evidence of rec-
ord before the district court. On this record, we hold that
substantial evidence supports the jury’s finding that
Samsung’s accused devices contain “a server routine
separate from a client that receives data having struc-
tures from the client.” See Motorola, 757 F.3d at 1304.
Apple’s expert, Dr. Mowry, testified that the “analyzer
server” in the accused devices is shared library code, and
the client applications are the Browser and Messaging
applications. J.A. 13030:4–22. He testified that Sam-
sung’s shared library code and client applications are
“separate” because they are located in separate parts of
memory: “the shared libraries are developed independent-
ly of the application” and are “designed to be reused
across different applications.” J.A. 13035:12–18,
13036:13–20. He explained that “there’s only one copy of
the shared library code,” and when client applications in
Samsung’s accused devices wish to use the library code,
“those applications go to that code and use it where it is
16 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
each time they want to access that code.” J.A. 13035:22–
25. He testified that, in the accused devices, one copy of
shared library code may be shared by “20 or 100” different
applications, J.A. 13036:13–20, and that, in order for an
application to use the library code, the application must
“go to the shared library code in the one place that exists
in the computer memory hardware to use it.” Id.; see also
J.A. 13037:1–6 (“It has access to the code and it goes to
the code where it is and uses it there, and it does that
each time that it accesses the code.”). Dr. Mowry also
testified that the client applications and shared library
code in the accused devices are stored “in a different part
of the address base.” J.A. 13036:1–2. He concluded that
the shared library code and client programs in the ac-
cused devices are “definitely separate.” J.A. 13036:20.
On this record, this is substantial evidence to support
the jury’s finding that the accused devices meet the “ana-
lyzer server” limitation. Dr. Jeffay provided contrary
testimony to Dr. Mowry, but the jury was in the best
position to determine whether it found Dr. Mowry or
Dr. Jeffay more persuasive. See, e.g., MobileMedia Ideas
LLC v. Apple Inc., 780 F.3d 1159, 1168 (Fed. Cir. 2015)
(“[W]hen there is conflicting testimony at trial, and the
evidence overall does not make only one finding on the
point reasonable, the jury is permitted to make credibility
determinations and believe the witness it considers more
trustworthy.”). 10 We see no error in the district court’s
10 We leave credibility issues to the jury. We note
that the district court repeatedly mentioned that Sam-
sung’s expert Dr. Jeffay gave inconsistent testimony
about a particular limitation. See, e.g., 4/28/14 Tr.
at 3058:6–10 (“[Dr. Jeffay has] been all over the map
about what the plain and ordinary meaning of this term is
. . . . He’s been all over the map.”); id. at 3059:2–3 (“He’s
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 17
conclusion that substantial evidence supported the jury
verdict with respect to this limitation.
2. Linking Actions
Samsung also appealed the district court’s denial of
JMOL of non-infringement based upon the “linking ac-
tions” limitation. We hold that there was substantial
evidence to support the jury’s finding that the accused
devices meet the “linking actions” limitation under our
construction in Motorola.
In Motorola, we construed “linking actions to the de-
tected structures” as “creating a specified connection
between each detected structure and at least one comput-
er subroutine that causes the CPU to perform a sequence
of operations on that detected structure.” Motorola, 757
F.3d at 1307. On appeal, Samsung argues there is no
“specified connection” in the accused devices between a
user’s request to perform some action and the application
that ultimately performs the requested action. More
specifically, Samsung argues the “startActivity()” subrou-
tine—the accused “computer subroutine” in Samsung’s
all over the map on plain and ordinary meaning of ana-
lyzer server.”); id. at 3063:17 (“I think that is contrary to
how he just testified.”); id. at 3072:17–18 (“What’s been
testified to thus far is misleading.”); id. at 3073:13–17; id.
at 3076:7–9 (“He was all over the map, he didn’t give an
opinion on plain and ordinary meaning of analyzer server,
he’s very inconsistent throughout.”). The district court
also scolded Dr. Jeffay in its JMOL order for “misleading-
ly” attempting to argue he had used the Motorola con-
structions “since the very first day I worked on this case.”
J.A. 43. A reasonable jury could have concluded that such
inconsistencies negatively impacted the persuasiveness of
Dr. Jeffay’s opinions.
18 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
products—does not satisfy the specified connection re-
quirement. Samsung Br. 27. It argues startActivity()
merely determines which application will perform the
requested action rather than performing the task itself.
Id. at 29. Thus, a “specified connection” to the startActiv-
ity() subroutine would not infringe because there is no
connection to the application that ultimately performs the
task. Id.
This argument can be illustrated through an example.
Android (the operating system run on the accused phones)
phones typically contain multiple applications capable of
sending emails. When a user inputs a command to send
an email, the phone prompts the user to select an availa-
ble application to send the email. There may be two or
three available applications; the user selects which appli-
cation to use. Samsung contends this is not a “specified
connection” because the user’s command is not tied to a
particular application that performs the command. See
Samsung Br. 28; J.A. 11586:1–11587:6 (trial testimony of
Dianne Hackborn, Google engineer). It argues there is
“no evidence of any specified connection between detected
structures and actions,” Samsung Br. 26 (emphasis add-
ed).
Our claim construction, however, does not require a
specified connection between detected structures and the
applications that perform operations on them. It requires
a specified connection between detected structures and
the computer subroutine that causes the CPU to perform
the operations. The district court made this observation
in its JMOL order: “The Motorola construction of ‘linking
actions,’ however, requires only that the detected struc-
ture be linked to a ‘computer subroutine that causes the
CPU to perform’ that function.” J.A. 45 (emphasis in
original). The court quoted and rejected Samsung’s
argument that “no specified connection exists because
claim 9 requires that ‘you link the actual program that
performs that function,’ such as dialing a phone number.”
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 19
Id. (quoting Dr. Jeffay).
We agree with the district court that Apple presented
substantial evidence that the accused devices contain a
specified connection between a detected structure and a
computer subroutine that causes the CPU to perform a
sequence of operations. In the accused devices, the de-
tected structure is an object in the data, such as a phone
number or email address. J.A. 10854:11–25, 10858:3–12.
And the computer subroutine is a method called “startAc-
tivity().” J.A. 13040:25–13041:4. Dr. Mowry testified that
the phone numbers and email addresses form part of an
Intent object. J.A. 10858:3–12. When a user wishes to
perform some action in the accused devices (such as place
a phone call or send an email), a method called setIntent()
passes the Intent object to the startActivity() subroutine.
J.A. 13040:6–23. 11 Dr. Mowry explained that if a “pro-
gram wants to open another program, it uses an Intent
object.” J.A. 10861:4–6. He described startActivity() as
the “launcher” that launches other programs to perform
the requested action. J.A. 10858:13–20. For example, if a
user wishes to make a phone call, the startActivity()
subroutine launches the user’s selected dialing applica-
tion. See J.A. 10861:4–10.
According to Dr. Mowry, startActivity() is “the com-
puter subroutine that causes the CPU to perform a se-
quence of operations on that detected structure,” as our
construction requires. J.A. 13040:25–13041:4. Dr. Mowry
testified that startActivity() is “necessarily” called when a
user selects a particular action. J.A. 13040:6–23,
13041:7–16. He explained that “if the user picks a partic-
11 Dr. Mowry testified that “the names [of the sub-
routines] are a little different” depending on the version of
the accused product. J.A. 10862:16–20.
20 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
ular option, that information will be passed to another
procedure shown on the bottom, which is called Start
Activity, and that is the launcher.” J.A. 10858:13–20. He
testified that “you get different behaviors from Start
Activity based on how you fill in the fields in the Intent
object. So that causes the different actions to occur.”
J.A. 13042:25–13043:2. A reasonable jury could have
relied on this testimony to find that Samsung’s accused
devices meet the linking actions limitation. See J.A. 45
(“[T]he jury could have determined that startActivity()
satisfies this limitation because it is admittedly a linked
subroutine that causes performance of an action.”). 12
In the Ninth Circuit, JMOL “is proper when the evi-
dence permits only one reasonable conclusion and the
conclusion is contrary to that of the jury.” Monroe, 248
F.3d at 861. Dr. Mowry’s testimony provided substantial
evidence of infringement. In light of Dr. Mowry’s testi-
mony, we cannot conclude that the evidence permits only
one reasonable conclusion which is contrary to the jury
verdict. We see no error in the district court’s denial of
JMOL of non-infringement.
The judgment of validity of the ’647 patent was not
appealed. We affirm the district court’s denial of JMOL
12 Samsung also argues the “specified connection”
must be in place before the user selects a command to
begin operations on a detected structure. Samsung
Br. 31–32. This timing argument is premised on Sam-
sung’s contention that startActivity() does not satisfy the
specified connection limitation. Because we conclude that
there is substantial record evidence for this jury finding,
the timing argument necessarily fails. Regardless, we see
no timing limitation in the claim, and construction of this
claim was not appealed.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 21
as to this patent.
B. The ’721 Patent
Apple asserted infringement of claim 8 of the
’721 patent. The jury entered a verdict that claim 8 was
infringed and would not have been obvious. J.A. 40872,
40874. Samsung challenges the district court’s denial of
JMOL that claim 8 would have been obvious. We agree
with the district court that there was substantial evidence
to support the jury’s underlying fact findings and that
these fact findings supported the conclusion that Sam-
sung failed to establish by clear and convincing evidence
that claim 8 would have been obvious.
Obviousness is a question of law based on underlying
facts. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688
F.3d 1342, 1356–57 (Fed. Cir. 2012). When reviewing a
denial of JMOL of obviousness, where there is a black box
jury verdict, as is the case here, we presume the jury
resolved underlying factual disputes in favor of the ver-
dict winner and leave those presumed findings undis-
turbed if supported by substantial evidence. Id. We then
examine the legal conclusion de novo in light of those
facts. Id. at 1357.
In Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966), and KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 406 (2007), the Supreme Court set out the framework
for the obviousness inquiry under 35 U.S.C. § 103:
Under § 103, the scope and content of the prior art
are to be determined; differences between the pri-
or art and the claims at issue are to be ascer-
tained; and the level of ordinary skill in the
pertinent art resolved. Against this background,
the obviousness or nonobviousness of the subject
matter is determined. Such secondary considera-
tions as commercial success, long felt but unsolved
needs, failure of others, etc., might be utilized to
22 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
give light to the circumstances surrounding the
origin of the subject matter sought to be patented.
A determination of whether a patent claim is invalid
as obvious under § 103 requires consideration of all four
Graham factors, and it is error to reach a conclusion of
obviousness until all those factors are considered. In re
Cyclobenzaprine Hydrochloride Extended-Release Capsule
Patent Litig., 676 F.3d 1063, 1075–76 (Fed. Cir. 2012)
(citing Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d
1476, 1483 (Fed. Cir. 1997)). 13 Objective indicia of non-
obviousness must be considered in every case where
present. See, e.g., Transocean Offshore Deepwater Drill-
ing, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340,
1349 (Fed. Cir. 2012) (“[E]vidence rising out of the so-
called ‘secondary considerations’ must always when
present be considered en route to a determination of
obviousness.” (quoting Stratoflex, Inc. v. Aeroquip Corp.,
713 F.2d 1530, 1538 (Fed. Cir. 1983)); Simmons Fastener
Corp. v. Illinois Tools Works, Inc., 739 F.2d 1573, 1575
(Fed. Cir. 1984) (“The section 103 test of nonobviousness
set forth in Graham is a four part inquiry comprising, not
only the three familiar elements (scope and content of the
prior art, differences between the prior art and the claims
at issue, and level of ordinary skill in the pertinent art),
but also evidence of secondary considerations when such
evidence is, of course, present.”). This requirement is in
recognition of the fact that each of the Graham factors
helps inform the ultimate obviousness determination.
13 Even though no secondary considerations were
argued to the Supreme Court in KSR with regard to
obviousness, the Court explains: “Graham sets forth a
broad inquiry and invited courts, where appropriate, to
look at any secondary considerations that would prove
instructive.” KSR, 550 U.S. at 415.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 23
Kinetic Concepts, 688 F.3d at 1360; Nike, Inc. v. Adidas
AG, 812 F.3d 1326, 1340 (Fed. Cir. 2016) (holding that
evidence of secondary considerations must be examined to
determine its impact on the first three Graham factors).
The ’721 patent discloses a portable device with a
touch-sensitive display that can be “unlocked via ges-
tures” performed on the screen. ’721 patent at Abstract.
The patent teaches that a “problem associated with using
touch screens on portable devices is the unintentional
activation or deactivation of functions due to unintention-
al contact with the touch screen.” Id. at 1:38–40. “Unin-
tentional activation or deactivation of functions due to
unintentional contact with the touch screen” is commonly
referred to as “pocket dialing.” See, e.g., J.A. 10638:9–13
(Andrew Cockburn) (describing the “pocket dial problem”);
Apple Br. 25 (“Apple’s ’721 patent discloses a user-
friendly solution to the problem of accidental activation of
mobile touchscreen devices (e.g., ‘pocket dialing’).”). Greg
Christie, an inventor of the ’721 patent, described the
problem he and his colleagues set out to solve:
[W]e were worried about accidental use, pocket
dialling [sic], the phone getting shut down acci-
dentally, or since we were going to have all these
features on the phone, like e-mail and messaging,
we were worried that, you know, mail could be
sent accidentally or deleted accidentally or the
phone would answer itself simply because the
touch surface – you know, if it was like, like, the
touch surface against your leg in your pocket, we
were worried that just, like, you know, jostling
around, moving around would trigger things on
the screen.
J.A. 10601:4–13.
The ’721 patent also describes the importance of mak-
ing phone activation as “user-friendly” and “efficient” as
possible. It teaches:
24 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
Accordingly, there is a need for more efficient, us-
er-friendly procedures for unlocking such devices,
touch screens, and/or applications. More general-
ly, there is a need for more efficient, user-friendly
procedures for transitioning such devices, touch
screens, and/or applications between user inter-
face states (e.g., from a user interface state for a
first application to a user interface state for a sec-
ond application, between user interface states in
the same application, or between locked and un-
locked states). In addition, there is a need for
sensory feedback to the user regarding progress
towards satisfaction of a user input condition that
is required for the transition to occur.
’721 patent at 1:56–67. Mr. Christie testified that the
ease of the user interface was a central design considera-
tion when developing the slide to unlock feature:
[W]e thought to introduce some sort of definite
gesture. We knew we wanted to have some in-
struction. We knew we wanted the interface to be
obvious to the customer. It would be possibly the
first experience even in a retail environment.
They’re deciding whether they want to buy it.
They pick up this iPhone, you know, it would be
very bad if they looked at the phone that they had
heard so much about and they look at it and say “I
can’t figure out how to use this. I don’t know how
to unlock it. It’s locked.” At the same time, we
knew that people would be unlocking their phone,
you know, tens or hundreds of times a day, so we
didn’t want the instruction to be, you know, in-
sulting or talk down to the customer. We didn’t
want it to be cumbersome, something that they
would grow tired of after a while.
J.A. 10602:6–20. Apple’s expert, Dr. Cockburn, explained
that there was a tension between preventing pocket
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 25
dialing and ease of use: “. . . [I]t has to work. It has to
succeed in preventing accidental activation by mistake.
But yet it needs to be something that’s easy to do, but not
so easy that it can occur by accident, and it succeeds in
that.” J.A. 10639:19–23.
Apple asserted claim 8, which depends from claim 7,
against several Samsung devices. These claims recite:
7. A portable electronic device, comprising:
a touch-sensitive display;
memory;
one or more processors; and
one or more modules stored in the memory
and configured for execution by the one or
more processors, the one or more modules
including instructions:
to detect a contact with the touch-
sensitive display at a first prede-
fined location corresponding to an
unlock image;
to continuously move the unlock
image on the touch-sensitive dis-
play in accordance with the
movement of the detected contact
while continuous contact with the
touch-sensitive display is main-
tained, wherein the unlock image
is a graphical, interactive user-
interface object with which a user
interacts in order to unlock the
device; and
to unlock the hand-held electronic
device if the unlock image is
moved from the first predefined lo-
26 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
cation on the touch screen to a
predefined unlock region on the
touch-sensitive display.
8. The device of claim 7, further comprising in-
structions to display visual cues to communicate a
direction of movement of the unlock image re-
quired to unlock the device.
The jury found that Samsung’s accused devices infringed
claim 8 of the ’721 patent. J.A. 40872. Samsung does not
appeal this aspect of the verdict. The jury also found that
Samsung’s infringement was willful and that Samsung
failed to prove by clear and convincing evidence claim 8 is
invalid. J.A. 40874. Following the verdict, Samsung
moved for JMOL that, inter alia, claim 8 would have been
obvious and Samsung did not willfully infringe the claim.
The district court denied Samsung’s motion as to obvious-
ness but granted the motion as to willfulness.
Samsung argues claim 8 would have been obvious in
light of the combination of Neonode and Plaisant. “Ne-
onode” refers to the Neonode N1 Quickstart Guide.
J.A. 20713. Neonode discloses a mobile device with a
touch-sensitive screen. It explains that a user may unlock
the device by pressing the power button. After the user
presses the power button, text appears instructing the
user to “Right sweep to unlock.” Sweeping right then
unlocks the unit. J.A. 20725.
“Plaisant” refers to a video and corresponding two-
page paper published in 1992 titled “Touchscreen Toggle
Design” by Catherine Plaisant and Daniel Wallace.
J.A. 20742. The authors of the paper conducted an exper-
iment to determine which controls (“toggles”) users prefer
on wall-mounted controllers for “entertainment, security,
and climate control systems.” Id. These controllers were
intended to be installed “flushmounted into the wall or
the cabinetry.” Id. The authors presented six alternative
unlocking mechanisms to a group of fifteen undergradu-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 27
ate students, including a “slider toggle” where a user
could activate the controller by “grab[bing] the pointer
and slid[ing] it to the other side.” J.A. 20743. The stu-
dents preferred “toggles that are pushed” over “toggles
that slide,” and generally ranked the slider fifth of the six
alternatives. Id. The paper also notes that sliders “were
not preferred,” “sliding is a more complex task than
simply touching,” and that “sliders are more difficult to
implement than buttons.” Id.
On appeal, Apple does not contest that, together, Ne-
onode and Plaisant disclose all the elements of claim 8. 14
Rather, the parties dispute whether a person of ordinary
skill in the art would have been motivated to combine one
of the unlocking mechanisms disclosed in Plaisant with
Neonode. Samsung argues “there was no evidence of any
kind suggesting that Plaisant’s application to a wall-
mounted device would lead inventors not to combine
Plaisant with Neonode.” Samsung Resp. Br. 19–20. Its
expert, Dr. Greenberg, testified that a person of ordinary
skill “would be highly interested” in both references
because “they both deal with touch base systems, they
both deal with user interfaces.” J.A. 11982:13–17. Dr.
Greenberg testified that “a person looking at this would
just think it natural to combine these two, as well taking
the ideas in Plaisant, the slider, and putting them on the
Neonode is, is just a very routine thing to think about in
14 There does not appear to be a dispute between the
parties over whether the two references are prior art and
within the analogous arts. Of course, concluding that the
references are within the scope and content of the prior
art to be considered for obviousness does not end the
inquiry. Graham makes clear that the obviousness in-
quiry requires a determination whether the claimed
invention would have been obvious to a skilled artisan.
28 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
terms of interaction design.” J.A. 11982:23–11983:2.
Samsung points to the Plaisant reference which states
that sliding movement “is less likely to be done inadvert-
ently.” Samsung Br. 35–36 (quoting J.A. 20743).
Apple counters that a skilled artisan designing a mo-
bile phone would not have been motivated to turn to a
wall-mounted air conditioning controller to solve the
pocket dialing problem. Apple Br. 26–27. Its expert, Dr.
Cockburn, testified that a person of ordinary skill would
not have been naturally motivated to combine Neonode
and Plaisant. J.A. 12877:17–21. Dr. Cockburn testified
that the way the Plaisant controllers “were intended to be
used was the touch screen would be mounted into a wall
or into cabinetry and it would be used to control, for
remote control, office or home appliances, like air condi-
tioning units or heaters.” J.A. 12876:20–23. He also
explained to the jury that Plaisant itself discloses that
sliding toggles were less preferred than the other switches
disclosed. J.A. 12877:7–16. Apple points to Plaisant’s
teachings that “sliders were not preferred,” “sliding is a
more complex task,” and “sliders are more difficult to
implement.” Apple Br. 27–28. Apple argues there was
substantial evidence for the jury to conclude that there
would not have been a motivation to combine Plaisant
and Neonode to arrive at the claimed invention.
What a prior art reference teaches and whether a
skilled artisan would have been motivated to combine
references are questions of fact. See Par Pharm., Inc. v.
TWi Pharms., Inc., 773 F.3d 1186, 1196–97 (Fed. Cir.
2014); Transocean Offshore Deepwater Drilling, Inc. v.
Maersk Contractors USA, Inc., 617 F.3d 1296, 1303 (Fed.
Cir. 2010). “Before KSR, we had also consistently treated
the question of motivation to combine prior art references
as a question of fact. . . KSR did not change this rule . . . .”
Wyers v. Master Lock Co., 616 F.3d 1231, 1238–39 (Fed.
Cir. 2010); id. at 1237 (“[W]hether there was sufficient
motivation to combine the references” is a “factual is-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 29
sue[].”). The district court determined that a reasonable
jury could have found that a person of ordinary skill
would not have been motivated to combine Plaisant and
Neonode:
A reasonable jury could infer from [Dr. Cock-
burn’s] testimony that an ordinary artisan would
not have been motivated to combine elements
from a wall-mounted touchscreen for home appli-
ances and a smartphone, particularly in view of
the “pocket dialing” problem specific to mobile de-
vices that Apple’s invention sought to address.
Additionally, Dr. Cockburn explained that
Plaisant “teach[es] away from the use of sliding,”
because it “tells you not to use the sliding [toggle]
mechanism.”
J.A. 55 (citations omitted). 15 After noting that what a
reference teaches is a question of fact, the district court
discussed the various statements in Plaisant about sliding
toggles and concluded that substantial evidence supports
the jury’s fact findings that Samsung failed to establish a
motivation to combine. J.A. 55–56. We agree with the
district court that on this record, the jury’s implicit fact
findings that Plaisant would not have provided a skilled
15 The district court denied JMOL on two discrete
bases. J.A. 54–56. Because we find substantial evidence
support for the jury’s fact finding regarding motivation to
combine, we need not reach the issue of whether Plaisant
teaches away from the combination. We note, however,
that, even if Plaisant does not teach away, its statements
regarding users preferring other forms of switches are
relevant to a finding regarding whether a skilled artisan
would be motivated to combine the slider toggle in
Plaisant with the mobile phone in Neonode.
30 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
artisan with a motivation to combine its slider toggle
switch with Neonode is supported by substantial evi-
dence. In addition to the statements in Plaisant, the
court explained:
Dr. Cockburn testified, contrary to Dr. Greenberg,
that a person of ordinary skill in the art would not
have been motivated to combine the Neonode and
Plaisant in such a way as to invent claim 8. He
provided two reasons. First, Plaisant described
“toggle designs” intended to be used with a “touch
screen [that] would be mounted into a wall or into
cabinetry” for controlling “office or home applianc-
es, like air conditioning units or heaters.” A rea-
sonable jury could infer from this testimony that
an ordinary artisan would not have been motivat-
ed to combine elements from a wall-mounted
touchscreen for home appliances and a
smartphone, particularly in view of the “pocket
dialing” problem specific to mobile devices that
Apple’s invention sought to address.
J.A. 54–55 (citations omitted).
We agree with the district court’s analysis. Because
the jury found the issue of validity in favor of Apple, we
presume it resolved the conflicting expert testimony and
found that a skilled artisan would not have been motivat-
ed to combine the slider toggle in Plaisant with the cell
phone disclosed in Neonode. The question for our review
is whether substantial evidence supports this implied fact
finding. We conclude that it does. Neonode discloses a
mobile phone. Plaisant discloses a wall-mounted air
conditioning controller. The jury had both references
before it. Although Samsung presents arguments for
combining the two references, these arguments were
before the jury. Our job is not to review whether Sam-
sung’s losing position was also supported by substantial
evidence or to weigh the relative strength of Samsung’s
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 31
evidence against Apple’s evidence. We are limited to
determining whether there was substantial evidence for
the jury’s findings, on the entirety of the record. And
under the Ninth Circuit standard, we cannot conclude
that the evidence affords only one reasonable conclusion
and that it is contrary to that of the jury. See Monroe, 248
F.3d at 861. We agree with the district court: “A reasona-
ble jury could infer from this testimony that an ordinary
artisan would not have been motivated to combine ele-
ments from a wall-mounted touchscreen for home appli-
ances and a smartphone, particularly in view of the
‘pocket dialing’ problem specific to mobile devices that
Apple’s invention sought to address.” J.A. 55.
1. The Objective Indicia of Non-Obviousness
The Supreme Court explained that various factors
“may also serve to ‘guard against slipping into use of
hindsight,’ and to resist the temptation to read into the
prior art the teachings of the invention in issue.” Gra-
ham, 383 U.S. at 36 (citation omitted). These factors are
commonly known as secondary considerations or objective
indicia of non-obviousness. These include: commercial
success enjoyed by devices practicing the patented inven-
tion, industry praise for the patented invention, copying
by others, and the existence of a long-felt but unsatisfied
need for the invention. As this court held in Stratoflex:
Indeed, evidence of secondary considerations may
often be the most probative and cogent evidence in
the record. It may often establish that an inven-
tion appearing to have been obvious in light of the
prior art was not. It is to be considered as part of
all the evidence, not just when the decisionmaker
remains in doubt after reviewing the art.
713 F.2d at 1538–39. Apple introduced evidence of indus-
try praise, copying, commercial success, and long-felt
need. We presume the jury found that the evidence was
sufficient to establish each by a preponderance of the
32 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
evidence. We find substantial evidence in the record to
support each of those findings.
a. Industry Praise
Evidence that the industry praised a claimed inven-
tion or a product that embodies the patent claims weighs
against an assertion that the same claimed invention
would have been obvious. Industry participants, especial-
ly competitors, are not likely to praise an obvious advance
over the known art. Thus, if there is evidence of industry
praise of the claimed invention in the record, it weighs in
favor of the non-obviousness of the claimed invention.
See, e.g., Institut Pasteur & Universite Pierre Et Marie
Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013)
(“[I]ndustry praise . . . provides probative and cogent
evidence that one of ordinary skill in the art would not
have reasonably expected [the claimed invention].”);
Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343,
1352 (Fed. Cir. 2010) (noting that industry praise, and
specifically praise from a competitor, tends to indicate
that the invention would not have been obvious).
Samsung’s entire appeal regarding the jury’s fact
finding that industry praise weighed in favor of non-
obviousness is contained in one half of one sentence:
“Indeed, the district court relied solely on generic praise
not linked to the actual subject matter of the claim . . . .”
Samsung Br. 37. The district court rejected Samsung’s
argument on this issue, determining that substantial
evidence supports the jury’s underlying findings in favor
of “industry praise specifically for Apple’s slide to unlock
invention.” J.A. 56. It cited numerous internal Samsung
documents that both praised Apple’s slide to unlock
feature and indicated that Samsung should modify its
own phones to incorporate Apple’s slide to unlock feature:
• PTX 119 at 11: presentation prepared by Sam-
sung’s European design team in June 2009 with
a picture of the iPhone stating that Apple’s slide
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 33
to unlock invention is a “[c]reative way[] of solv-
ing UI complexity” and that “swiping unlock on
the screen allows to prevent erroneous unlock,”
J.A. 50950;
• PTX 121 at 100: Samsung software verification
group document with a picture of the iPhone
noting that unlike Samsung’s “Victory” phone,
the iPhone’s “unlocking standard is precise as it
is handled through sliding, and it allows pre-
vention of any wrong motion,” and recommend-
ing a “direction of improvement” to make it the
“same as iPhone, [and] clarify the unlocking
standard by sliding,” J.A. 51289;
• PTX 157 at 19–20: Samsung document with a
picture of the iPhone recommending improving
the Samsung phone by making it “easy to un-
lock, [given that] lock screen always shows
guide text or arrow like the iPhone” and to
make the lock icon’s movement “be smooth and
continuous” like the iPhone, J.A. 57 (JMOL Or-
der citing PTX 157);
• PTX 219 at 14: Samsung document with a pic-
ture of the iPhone noting that the iPhone “intui-
tively indicate[s] the direction and length to
move when unlocking on the lock screen,”
J.A. 51603;
• PTX 120 at 28, 84: Samsung document with a
picture of an iPhone that describes the “Direc-
tion of Improvement” as using a defined bar to
unlock the phone, as is done on the iPhone. The
same document describes the “Direction of Im-
provement” as displaying the unlock instruction
on the screen, as is done on the iPhone.
J.A. 51028, 51084.
See J.A. 56–57 (JMOL Order citing several Samsung
34 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
documents). Such internal documents from the patentee’s
top competitor represent important admissions, acknowl-
edging the merits of the patented advance over the then
state of the art and can be used to establish industry
praise. Dr. Cockburn, Apple’s expert, testified “these
various Samsung documents recognized the advantages of
claim 8.” J.A. 57 (citing J.A. 10640–52).
The court also explained that Apple presented a video
at trial showing Steve Jobs unveiling the slide to unlock
feature at an Apple event. When Mr. Jobs swiped to
unlock the phone, “the audience burst into cheers.”
J.A. 12879–80 (Andrew Cockburn). The video was shown
to the jury, and Apple’s expert, an inventor, and Apple’s
Vice President of Marketing all referenced the video in
their testimony. See J.A. 57 (JMOL Order citing 4/4/14
Tr. at 603:6–11 (Greg Christie)); J.A. 12879:17–12880:2
(Andrew Cockburn); 4/1/14 Tr. at 428:12–17 (Phillip
Schiller) (“There were many press in attendance at the
event, and the reaction was enormous.”).
Samsung does not discuss any of this evidence on ap-
peal. In light of this evidence, we find its argument that
the district court cited only generic praise of the iPhone,
and not praise tied to the claimed slide to unlock feature,
is without merit. The jury was presented with substan-
tial evidence of praise in the industry that specifically
related to features of the claimed invention, thereby
linking that industry praise with the patented invention.
b. Copying
Samsung does not dispute in its briefing that the jury
heard substantial evidence that it copied the iPhone’s
claimed features. In other words, Samsung does not
challenge on appeal that substantial evidence exists in
the record that Samsung copied Apple’s slide to unlock
feature, nor does it challenge on appeal that this evidence
of copying supports a conclusion that claim 8 would not
have been obvious. Apple cites the same Samsung inter-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 35
nal documents for both industry praise and copying, as
they show evidence of both. The record contains multiple
internal Samsung presentations given by different Sam-
sung groups at different times stating that the iPhone’s
slide to unlock feature is better than the various Samsung
alternatives. See supra J.A. 50950 (PTX 119); J.A. 51028,
51084 (PTX 120); J.A. 51289 (PTX 121); J.A. 57 (JMOL
Order citing PTX 157); J.A. 51603 (PTX 219). And many
of these same presentations conclude that the direction
for improvement is for Samsung to modify its unlocking
mechanism to be like the iPhone. See id. This is substan-
tial evidence of copying by Samsung, and it supports the
jury’s verdict that the claimed invention would not have
been obvious.
c. Commercial Success
In its opening appellate brief, Samsung also glosses
over commercial success, giving it one sentence: “Apple
made no effort to establish a nexus between commercial
success and the subject matter of claim 8.” Samsung
Br. 37. Commercial success requires a nexus to the
claimed invention. Transocean, 699 F.3d at 1350. We
look to the record to ascertain whether there is substan-
tial evidence for the jury’s fact finding that Apple estab-
lished a nexus between commercial success and the
invention in claim 8.
At trial, Apple’s expert, Dr. Cockburn, testified that
the iPhone practiced the asserted claim of the ’721 patent,
and “clearly there’s been commercial success of the
iPhones that use this invention.” J.A. 12879:20–22; see
also J.A. 11984:24–25 (“[T]here’s no question that the
Apple iPhone was a commercial success.”) (Saul Green-
berg, Samsung’s expert). Critically, Apple presented
survey evidence that customers would be less likely to
purchase a portable device without the slide to unlock
feature and would pay less for products without it, thus
permitting the jury to conclude that this feature was a
36 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
key driver in the ultimate commercial success of the
products. 16 J.A. 21066, 21108. Apple’s Senior Vice Presi-
dent of Worldwide Marketing testified that slide to unlock
was the very first feature shown in Apple’s original iPh-
one TV commercial, 4/1/14 Tr. at 433:16–434:18 (Phillip
Schiller) (citing PTX 180), and the jury saw that commer-
cial during the trial. Id. A reasonable jury could have
found evidence that Apple’s marketing experts elected to
emphasize the claimed feature as evidence of its im-
portance. It is likewise reasonable to conclude that adver-
tising that highlights or focuses on a feature of the
invention could influence customer purchasing decisions.
And an inventor of the ’721 patent—an Apple Vice Presi-
dent—confirmed that slide to unlock was important
because it “would possibly be [a customer’s] first experi-
ence even in a retail environment” when the customer
was “deciding whether they want to buy it.”
16 In its reply brief, Samsung argues that Apple’s
survey evidence “did not even test the ’721 patent for
smartphones.” Samsung Resp. Br. 21. The claims of the
’721 patent, however, are not directed to a smartphone,
but rather to a “hand-held electronic device.” J.A. 685.
Apple’s survey evidence tested tablets with 7” screens. No
one argued that a 7” tablet was not a “hand-held electron-
ic device,” nor does this distinction have anything to do
with the slide to unlock feature. The dissents suggest
that the survey evidence should be rejected because the
survey only establishes that customers would prefer to
purchase a device with a slide-to-unlock feature and that
such evidence does not demonstrate a nexus to Apple’s
particular slide-to-unlock mechanism. We decline to
reach this argument because it was never made in this
appeal.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 37
J.A. 10601:25–10602:22 (Greg Christie). 17 Mr. Schiller
explained the importance of the slide to unlock feature in
great detail:
When this ad ran, people hadn’t had the oppor-
tunity yet to actually use an iPhone for them-
selves, and so they’ve never used at this point in
time a device anything like it. The challenge is
how do you show people, in a simple, 30-second
ad, something that gives them a feel for what it’s
like to use this new generation of Apple’s
smartphone. And we started the ad with some-
thing you’re going to be doing every day, many,
many times a day, which is to unlock the screen,
and to do that, you use a simple gesture, slide to
unlock. And that one gesture, having seen that
one thing first, you get an instant idea of how
multitouch works so that you’re doing a gesture
on the screen, and it does something simple and
useful to you, and that it’s easy to use. You don’t
need a manual to figure it out. And that one
starting point was a great beginning to your un-
derstanding of what an iPhone is and what this
17 We have previously recognized that a finding of
nexus between the commercial success of a product and
the merits of the patented invention embodied in that
product can be undermined by factors external to the
patented invention, such as marketing and advertising.
See, e.g., Brown & Williamson Tobacco Corp. v. Philip
Morris Inc., 229 F.3d 1120, 1129–30 (Fed. Cir. 2000); In re
Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994). Unlike the
present facts, however, those cases did not involve an
advertising campaign that specifically stressed and high-
lighted the patented feature as a way to introduce a new,
complex product to the public.
38 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
kind of device can do.
4/1/14 Tr. at 433:1–18. Finally, the video of the crowd
“burst[ing] into cheers” when Steve Jobs demonstrated
the slide to unlock feature supports a conclusion that
consumers valued this particular feature. J.A. 12879:20–
12880:2 (Andrew Cockburn). It is the fact finders’ job to
assess the probative value of the evidence presented. Pro-
Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1574 (Fed. Cir. 1996) (“It is within the province of
the fact-finder to resolve these factual disputes regarding
whether a nexus exists between the commercial success of
the product and its patented features, and to determine
the probative value of Pro-Mold’s evidence of secondary
considerations . . . .”).
This record overall contains substantial evidence of a
nexus between the slide to unlock feature and the iPh-
one’s commercial success, and we are required to give this
jury fact finding deference. It is not our role to reweigh
the evidence or consider what the record might have
supported. This commercial success evidence supports
the jury’s verdict that the claimed invention would not
have been obvious.
d. Long-Felt Need
Evidence of a long-felt but unresolved need can weigh
in favor of the non-obviousness of an invention because it
is reasonable to infer the need would not have persisted
had the solution been obvious. There is substantial
evidence for the jury to have found that there was a long-
felt but unresolved need for a solution to the pocket
dialing problem until Apple’s claimed invention, with its
slide to unlock feature, solved that problem. Samsung’s
appeal of the jury’s fact finding of long-felt need was
limited to a single sentence, which was itself simply a
quote from George M. Martin Co. v. All. Mach. Sys. Int’l
LLC, 618 F.3d 1294, 1304 (Fed. Cir. 2010): “[w]here the
differences between the prior art and the claimed inven-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 39
tion are as minimal as they are here, . . . it cannot be said
that any long felt need was unsolved.” Samsung Br. 37
(alteration in original). In its brief, there was no applica-
tion to this case, no analysis of the issue of long-felt need,
and no citation to any record evidence.
To the extent that Samsung’s quote should be inter-
preted as precluding a jury finding of long-felt need
favoring non-obviousness when the difference between the
prior art and the claimed invention is small, we reject
such a categorical rule. This type of hard and fast rule is
not appropriate for the factual issues that are left to the
province of the jury. There could be a long-felt need for
what might be considered a relatively small improvement
over the prior art—it all depends upon the evidence, and
it is up to the fact finder to assess that evidence.
Moreover, we do not understand the quote from
George M. Martin to be a proclamation of law but instead
simply an application to the particular facts of that case.
The quoted language makes clear that the court was
evaluating the facts in that particular case regarding the
claimed advances over the prior art, “as minimal as they
are here.” George M. Martin, 618 F.3d at 1304. And
importantly, the George M. Martin court explains that the
“need” had already been met by the prior art devices that
already solved the problem at issue. Id. at 1305. Thus, in
George M. Martin, not only was the difference between
the prior art and the claimed invention minimal, but the
prior art had already solved the problem for which the
patentee claimed there was a long-felt need. Id. Sam-
sung’s sole argument on long-felt need is thus based on a
misreading of George M. Martin.
In this case, there is substantial evidence for the ju-
ry’s finding that long-felt need supported the non-
obviousness of the claimed invention. Denying JMOL on
this issue, the district court cited testimony from Apple’s
expert: “Dr. Cockburn’s testimony that phone designers
40 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
had been trying to solve the problem of accidental activa-
tion and the ‘pocket dial problem’ before the iPhone
existed, but had only come up with ‘frustrat[ing]’ solu-
tions.” J.A. 57 (quoting J.A. 10638–39). While the expert
discusses particular examples in the first person: “I have
been very frustrated with [the prior art options],” the jury
could still reasonably find that this testimony was proba-
tive of a long-felt need. See J.A. 10638:17–19.
The district court also cited the testimony of one of
the inventors, where he discussed concerns over pocket
dialing. 18 In addition to the portion of Dr. Cockburn’s
testimony cited by the district court, there are other
portions of his testimony upon which the jury fact finding
could be predicated. The record contained a document
18 This is how the inventor described the problem to
be solved:
Q: What was the problem that you guys were
working on at the time that you came up with the
’721 invention?
A: . . . We were worried about accidental use,
pocket dialling [sic], the phone getting shut down
accidentally, or since we were going to have all
these features on the phone, like e-mail and mes-
saging, we were worried that, you know, mail
could be sent accidentally or deleted accidentally
or the phone would answer itself simply because
the touch surface—you know, if it was like, like,
the touch surface against your leg in your pocket,
we were worried that just, like, you know, jostling
around, moving around would trigger things on
the screen.
J.A. 10600:17–10601:13 (Greg Christie).
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 41
(PTX 55) in which Samsung listed all the alternatives to
the iPhone slide to unlock. See 4/4/14 Tr. at 680:10–
687:15 (Andrew Cockburn). Apple’s expert went through
several of the alternatives, including the Ripple unlock,
the glass unlock, and the circle unlock, and explained how
each of these failed to solve the accidental activation
problem. Id. The jury could have reasonably found that
this testimony established long-felt unresolved need.
In addition, the jury could have found that the same
internal Samsung documents Apple relied upon for indus-
try praise and copying demonstrate that Samsung com-
pared four of its own rejected alternative unlock
mechanisms (Kepler, Victory, Behold, & Amythest) to the
iPhone slide to unlock mechanism, and that Samsung
concluded the iPhone slide to unlock was better. See, e.g.,
J.A. 51028 (PTX 120 at 28 (“Behold3: Unintentional
unlock occurs . . . iPhone Lock undone only when sliding
action is applied to a specific button”)); J.A. 51289
(PTX 121 at 100 (“Victory: The Screen Lock gets unlocked
with a slight flick motion”; “iPhone Unlocking standard is
precise as it is handled through sliding, and it allows
prevention of any wrong motion”)). The jury could have
found that these Samsung documents show that Sam-
sung, Apple’s fiercest competitor, was unsuccessfully
trying to solve the same problem. All of this evidence was
presented to the jury during the trial in this case. This
evidence constitutes substantial evidence for the jury fact
finding that there was a long-felt but unresolved need,
which Apple’s ’721 patented invention solved. This evi-
dence weighs in favor of non-obviousness.
2. Conclusion on Obviousness of the ’721 Patent
Acknowledging that “it can be important to identify a
reason that would have prompted a person of ordinary
skill in the relevant field to combine the elements in the
way the claimed new invention does,” the Supreme Court
cautioned that “[h]elpful insights, however, need not
42 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
become rigid and mandatory formulas.” KSR, 550 U.S.
at 418–19. The Supreme Court explained:
The obviousness analysis cannot be confined by a
formalistic conception of the words teaching, sug-
gestion, and motivation, or by overemphasis on
the importance of published articles and the ex-
plicit content of issued patents. The diversity of
inventive pursuits and of modern technology
counsels against limiting the analysis in this way.
Id. at 419. “Rigid preventative rules that deny factfinders
recourse to common sense, however, are neither necessary
under our case law nor consistent with it.” Id. at 421.
With these principles in mind, we review de novo the
ultimate legal determination and conclude that it would
not have been obvious to a skilled artisan to combine the
prior art to arrive at the claimed invention.
Common sense and real world indicators indicate that
to conclude otherwise would be to give in to hindsight, to
allow the exact ex post reasoning against which the
Supreme Court cautioned in Graham and KSR. The
record includes Plaisant and Neonode and all that these
references teach, including Plaisant’s reference to inad-
vertent activation, complexity, difficult implementability,
and that users do not prefer sliders. Though the prior art
references each relate to touchscreens, the totality of the
evidence supports the conclusion that it would not have
been obvious for a skilled artisan, seeking an unlock
mechanism that would be both intuitive to use and solve
the pocket dialing problem for cell phones, to look to a
wall-mounted controller for an air conditioner. The two-
page Plaisant paper published in 1992 reported the
results of a user-preference survey of fifteen undergradu-
ates on six different computer-based switches. That a
skilled artisan would look to the Plaisant paper directed
to a wall-mounted interface screen for appliances and
then choose the slider toggle, which the study found rated
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 43
fifth out of six options in usability, to fulfill a need for an
intuitive unlock mechanism that solves the pocket dialing
problem for cell phones seems far from obvious.
We have considered the jury’s implicit fact findings
about the teachings of Plaisant and Neonode. We have
also considered the objective indicia found by the jury
which are particularly strong in this case and powerfully
weigh in favor of validity. They include copying, industry
praise, commercial success, and long-felt need. These real
world indicators of whether the combination would have
been obvious to the skilled artisan in this case “tip the
scales of patentability,” Graham, 383 U.S. at 36, or “dis-
lodge the determination that claim [8 would have been]
obvious,” KSR, 550 U.S. at 426. Weighing all of the
Graham factors, we agree with the district court on the
ultimate legal determination that Samsung failed to
establish by clear and convincing evidence that claim 8 of
the ’721 patent would have been obvious. We affirm the
district court’s denial of JMOL.
3. Willfulness
Apple appealed the district court’s grant of JMOL
that Samsung did not willfully infringe claim 8 of the ’721
patent. The district court’s decision was solely based on
its determination that Samsung’s defenses were objective-
ly reasonable under the standard from In re Seagate
Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir.
2007). J.A. 63–66. Given the Supreme Court’s recent
willfulness decision in Halo Elecs., Inc. v. Pulse Elecs.,
Inc., 136 S. Ct. 1923 (2016), we remand the willfulness
issue for the district court to consider under the new
standard in the first instance.
C. The ’172 Patent
Apple moved for summary judgment of infringement
of claim 18 of the ’172 patent, which the district court
granted. The jury entered a verdict that claim 18 of the
44 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
’172 patent would not have been obvious. Samsung
challenges the district court’s judgment of infringement
which was based on the court’s construction of the term
“keyboard.” It also challenges the district court’s denial of
JMOL that claim 18 would have been obvious. We affirm
both the judgment relating to infringement and that
relating to invalidity.
The ’172 patent is directed to a method, system, and
interface for providing “autocorrect” recommendations to
users inputting text into a portable electronic device.
’172 patent at Abstract. Claim 18, the only asserted
claim, recites a graphical user interface comprising “a
first area” and “a second area” of a touchscreen. The “first
area” displays the text, or “current character string,”
input by the user. The “second area” displays both the
“current character string” and a suggested replacement.
Claim 18 provides a user with the option to accept the
suggested replacement or keep the text as inputted. The
user can accept the suggested replacement by activating a
key on the keyboard (such as a spacebar) or by performing
a gesture on the suggested replacement in the second
area. The user can keep its inputted text by performing a
gesture on the “current character string” in the second
area. Claim 18 is recited below.
18. A graphical user interface on a portable elec-
tronic device with a keyboard and a touch screen
display, comprising:
a first area of the touch screen display
that displays a current character string
being input by a user with the keyboard;
and
a second area of the touch screen display
separate from the first area that displays
the current character string or a portion
thereof and a suggested replacement
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 45
character string for the current character
string;
wherein;
the current character string in the first
area is replaced with the suggested re-
placement character string if the user ac-
tivates a key on the keyboard associated
with a delimiter;
the current character string in the first
area is replaced with the suggested re-
placement character string if the user per-
forms a gesture on the suggested
replacement character string in the second
area; and
the current character string in the first
area is kept if the user performs a gesture
in the second area on the current charac-
ter string or the portion thereof displayed
in the second area.
Before trial, Apple moved for summary judgment that
Samsung’s accused devices infringe claim 18 of the
’172 patent. In response, Samsung disputed only whether
its accused devices satisfy claim 18’s requirement of a
“keyboard.” The district court granted Apple’s motion,
determining that Apple had shown infringement and that
no reasonable jury could find that Samsung’s accused
devices fell outside the court’s construction of “keyboard.”
J.A. 164.
The jury trial proceeded on the issues of validity and
damages. The jury found claim 18 of the ’172 patent was
not invalid and awarded Apple $17,943,750 for infringe-
ment by Samsung’s accused devices. J.A. 40874–
76. Samsung moved for JMOL, arguing that no reasona-
ble jury could find that claim 18 of the ’172 patent is not
invalid. In its motion, Samsung argued that claim 18
46 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
would have been obvious over the combination of U.S.
Patent No. 7,880,730 (“Robinson”) and International
Publication No. WO 2005/008899 (“Xrgomics”). The
district court denied Samsung’s motion, determining that
substantial evidence supported the jury’s fact findings
related to obviousness and concluding that these fact
findings supported the conclusion that Samsung had
failed to prove by clear and convincing evidence that the
’172 patent was invalid. J.A. 67–69.
On appeal, Samsung argues the district court erred by
denying its motion for JMOL that the ’172 patent would
have been obvious over Robinson and Xrgomics. Samsung
also argues the district court erred in construing “a key-
board and a touchscreen display” to encompass both
physical and virtual keyboards, resulting in the district
court’s erroneous grant of summary judgment that Sam-
sung’s devices infringe claim 18 of the ’172 patent. We
consider each argument in turn.
1. Obviousness
Robinson, titled “Keyboard system with automatic
correction,” is directed to “an enhanced text entry system
that uses word-level disambiguation to automatically
correct inaccuracies in user keystroke entries.” Robinson
at 3:24–26 (J.A. 20910). Xrgomics, titled “Letter and word
choice text input method for keyboards and reduced
keyboard systems,” is directed to a “method for entering
text efficiently by providing letter or word choices.”
Xrgomics at Abstract (J.A. 21000). The parties presented
the jury with expert testimony on both references and on
objective indicia of non-obviousness.
Samsung’s expert, Dr. Wigdor, testified that Robinson
discloses every limitation of claim 18 of the ’172 patent
except the limitation requiring a “current character string
in the first area.” J.A. 12024:5–12025:9. Dr. Wigdor
further testified that “anyone who’s used a computer since
the 1970s would be familiar with this idea that . . . as you
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 47
type, the text shows up at your cursor.” J.A. 12025:1–9.
He testified that one example of prior art that discloses
the limitation missing from Robinson, a “current charac-
ter string in the first area,” is Xrgomics. J.A. 12025:1–11.
Dr. Wigdor stated that Figure 5 of Xrgomics, like
claim 18, displays the inputted text “deva” both where the
user is typing and in the suggestions bar. J.A. 12026:3–
19. He also testified that a person of ordinary skill in the
art would have combined Robinson with Xrgomics to
render claim 18 obvious. J.A. 12027:1–21.
Apple’s expert, Dr. Cockburn, disagreed on the scope
and content of the prior art. He testified that Robinson
fails to disclose “a series of elements” in addition to lack-
ing the “current character string in the first area” limita-
tion. J.A. 12915:24–12916:15. According to
Dr. Cockburn, because Robinson does not display the text
when the user types the characters in the first area,
Robinson fails to disclose any of claim 18’s options for
replacing or keeping the “current character string.” In
particular, he testified that Robinson does not disclose
that the “current character string in the first area is
replaced,” either by activating a key on the keyboard or by
performing a gesture on the suggested replacement,
because in Robinson, “there was no text there to be re-
placed.” J.A. 12916:6–13. Likewise, Dr. Cockburn testi-
fied that “because the current character string is not there
[in Robinson], it can’t be kept if the user performs a
gesture.” J.A. 12916:14–15.
Dr. Cockburn testified that Xrgomics does not disclose
these missing elements. He testified that Xrgomics is not
directed to spelling correction, but is a “word completion
patent,” where a user can “type a series of characters and
Xrgomics offers alternative words that complete that
word.” J.A. 12916:22–25. Using the same example as
Samsung’s expert, Dr. Cockburn testified that Xrgomics
does not teach correcting the spelling of “deva,” but sug-
gests the words “devastating, devalue, devastate, all of
48 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
which are completions of what the user has already
typed.” J.A. 12917:11–15. He testified that Xrgomics,
like Robinson, therefore does not disclose “the current
character string in the first area is replaced with the
suggested replacement string,” because “[i]n Xrgomics, if
the user presses the space bar . . . D-E-V-A is kept.
There’s no replacement.” J.A. 12917:18–12918:2.
On objective indicia of non-obviousness, Samsung’s
expert testified, “it’s clear to me that none of those sec-
ondary considerations were met.” J.A. 12032:14–15.
Dr. Wigdor testified that, while the iPhone is commercial-
ly successful, it does not have the user interface specifical-
ly recited in claim 18. J.A. 12032:17–24. Apple’s expert,
Dr. Cockburn, disagreed, stating there was “clearly”
commercial success, testifying that “Samsung has sold
over 7 and a half million devices that use this technique.”
J.A. 12918:6–9. Apple introduced survey evidence com-
paring the willingness of users to buy devices containing
the patented feature versus those without. J.A. 51440.
This survey indicated a heightened willingness to buy
devices with the ’172 patent’s patented feature. Dr.
Cockburn also testified that Samsung’s internal docu-
ments and comments from carriers were evidence of
industry praise. J.A. 12918:10–13. Dr. Cockburn testi-
fied that one such internal Samsung document, J.A.
51488, reflected T-Mobile’s request that Samsung modify
its autocorrect technology to adopt the functionality of
claim 18. J.A. 68 (citing 4/4/14 Tr. at 698–700). A rea-
sonable jury could have construed evidence that Sam-
sung’s carrier customer requested Samsung adopt the
claimed technology as praise of the claimed feature.
The jury determined that Samsung did not prove by
clear and convincing evidence that claim 18 was invalid.
J.A. 40874. The district court determined that substan-
tial evidence supported the jury’s implicit fact findings on
each Graham factor and that “[i]n light of the jury’s
factual findings, this Court cannot conclude that there is
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 49
clear and convincing evidence that it would have been
obvious, as a matter of law, to bridge the gaps between
the prior art and claim 18.” J.A. 69. The district court
reasoned that the jury impliedly found Dr. Cockburn’s
testimony that Robinson and Xrgomics did not disclose all
the elements of claim 18 more credible than Dr. Wigdor’s
opinion, and the jury impliedly accepted Apple’s evidence
of objective indicia of non-obviousness over Dr. Wigdor’s
testimony that no such evidence existed. J.A. 67–68. The
district court held that these presumed fact findings were
supported by substantial evidence and denied Samsung’s
motion for JMOL. Id. We see no error in the district
court’s weighing of the Graham factors.
Samsung does not appeal the jury’s finding that Ap-
ple’s evidence of objective indicia supports non-
obviousness. Samsung’s only mention of the objective
indicia with regard to the ’172 patent in its opening brief
appears in a footnote which in its entirety reads: “For the
same reasons discussed with respect to the ’721 patent
(see supra at 37), secondary indicia of non-obviousness are
likewise inapplicable to the ’172 patent.” Samsung Br. 45
n.5. Samsung’s passing reference to its arguments for an
entirely different patent, claiming an entirely different
invention, and concerning different evidence, is hardly
enough to constitute a meaningful dispute regarding the
weight of Apple’s evidence of objective indicia of non-
obviousness or the jury’s fact findings in favor of Apple.
Apple presented evidence of commercial success and
industry praise for the ’172 patented invention, which
supports non-obviousness. Samsung did not dispute this
evidence or the jury fact findings related to them on
appeal.
Apple also presented substantial evidence on which a
reasonable jury could find that the combination of Robin-
son and Xrgomics failed to disclose every claimed element.
Apple’s expert, Dr. Cockburn, testified that neither Rob-
inson nor Xrgomics disclose that “the current character
50 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
string in the first area is replaced with the suggested
replacement character string,” and that Robinson does not
disclose replacing text at all. See J.A. 12915:24–12916:15
(testifying that Robinson does not disclose a “current
character string in the first area,” replacing text in the
first area, or keeping text in the first area);
J.A. 12916:19–12917:17 (testifying that Xrgomics does not
disclose text replacement at all, but teaches text comple-
tion). While Samsung’s expert provided contrary testimo-
ny, as the district court observed, with conflicting expert
testimony before it, “the jury was free to ‘make credibility
determinations and believe the witness it considers more
trustworthy.’” J.A. 68 (quoting Kinetic Concepts, 688 F.3d
at 1362 (citation omitted)). By finding in favor of Apple,
the jury impliedly found Apple’s expert’s testimony more
credible and persuasive than the testimony proffered by
Samsung. Kinetic Concepts, 688 F.3d at 1362; Mo-
bileMedia, 780 F.3d at 1168. This evidence, together with
Apple’s evidence of objective indicia of non-obviousness,
weigh in favor of the legal conclusion that Samsung did
not prove by clear and convincing evidence that claim 18
would have been obvious to a skilled artisan.
Even in cases in which a court concludes that a rea-
sonable jury could have found some facts differently, the
verdict must be sustained if it is supported by substantial
evidence on the record that was before the jury. But as an
appellate court, it is beyond our role to reweigh the evi-
dence or consider what the record might have supported,
or investigate potential arguments that were not mean-
ingfully raised. Our review is limited to whether fact
findings made and challenged on appeal are supported by
substantial evidence in the record, and if so, whether
those fact findings support the legal conclusion of obvi-
ousness. We agree with the district court that there is
substantial evidence for a reasonable jury to have found
that there was a gap in the prior art that was not filled by
the combination of Robinson and Xrgomics, and that the
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 51
entirety of the evidence weighs in favor of non-
obviousness. We cannot conclude that the evidence
affords only one reasonable conclusion contrary to that of
the jury. See Monroe, 248 F.3d at 861. Weighing the
Graham factors, we agree with the district court that
Samsung failed to establish by clear and convincing
evidence that claim 18 of the ’172 patent would have been
obvious. We thus affirm the district court’s denial of
Samsung’s motion for JMOL.
2. Claim Construction & Infringement
In a single page in its opening brief, Samsung argues
that the district court erred when it construed the term “a
keyboard and a touchscreen display” in claim 18 to en-
compass both physical and virtual keyboards. We disa-
gree. The district court determined that the plain and
ordinary meaning of the term “keyboard” as used in
claim 18 and throughout the specification included both
physical and virtual keyboards. J.A. 162–63. The specifi-
cation of the ’172 patent discloses graphical user interfac-
es containing both virtual and physical keyboards. See
’172 patent at 7:13–15, 7:33–35 (describing embodiments
containing “a virtual or soft keyboard” or “physical key-
board”). The specification expressly contemplates key-
boards that are part of the touchscreen. See, e.g., id.
at 4:11–12 (“The user interfaces may include one or more
keyboard embodiments displayed on a touch screen.”); id.
at 5:38–39 (“The touch screen 112 may be used to imple-
ment virtual or soft buttons and/or one or more key-
boards.”); id. at 7:10–15 (describing a touch screen
containing a virtual or soft keyboard). As recognized by
the district court, every figure in the ’172 patent that
depicts a portable electronic device, as recited in the
preamble of claim 18, includes a virtual keyboard.
J.A. 162 (citing ’172 patent at figs. 2, 4A–4I, 5A–5B). And
the specification describes Figure 2, which has a virtual
keyboard, as “a portable electronic device having a touch
screen and a soft keyboard.” ’172 patent at 3:15–17
52 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
(emphasis added). We see no error in the district court’s
construction.
Because Samsung concedes that its accused devices
contain a virtual keyboard and does not otherwise dispute
infringement of claim 18, we affirm the court’s grant of
summary judgment that Samsung’s accused devices
infringe claim 18 of the ’172 patent.
IV. CONCLUSION
We affirm and reinstate the district court judgment as
to the ’647, ’721, and ’172 patents. We reinstate the
portions of the panel decision that pertain to the ’959,
’414, ’239, and ’449 patents, for which the panel decision
affirmed the district court’s rulings on all issues of those
patents. We thus reinstate the district court’s award of
costs which the panel had vacated. We remand the will-
fulness issue for the district court to consider under the
Supreme Court’s Halo standard in the first instance.
AFFIRMED
COSTS
No costs on this appeal.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC., A CALIFORNIA CORPORATION,
Plaintiff-Cross-Appellant
v.
SAMSUNG ELECTRONICS CO., LTD., A KOREAN
CORPORATION, SAMSUNG ELECTRONICS
AMERICA, INC., A NEW YORK CORPORATION,
SAMSUNG TELECOMMUNICATIONS AMERICA,
LLC, A DELAWARE LIMITED LIABILITY
COMPANY,
Defendants-Appellants
______________________
2015-1171, 2015-1195, 2015-1994
______________________
Appeals from the United States District Court for the
Northern District of California in No. 5:12-cv-00630-LHK,
Judge Lucy H. Koh.
______________________
PROST, Chief Judge, dissenting.
At the outset, I share Judge Dyk’s and Judge Reyna’s
concerns as to the procedural irregularities surrounding
this case at the en banc stage. There was no need to take
this case en banc. However, having done so, the en banc
court would certainly have benefited from our normal
practice of allowing further briefing and argument from
the parties and from hearing the views of amici, such as
the government.
2 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
On the merits, I agree with Judge Dyk that KSR In-
ternational Co. v. Teleflex Inc. significantly reduced the
evidentiary burden necessary to establish a motivation to
combine prior art references and held that motivation to
combine can be found in “any need or problem known in
the field of endeavor,” not just the problem faced by the
inventor. 550 U.S. 398, 420 (2007). I also agree with his
concerns regarding the majority’s elevation of secondary
considerations beyond their historic role, which is that
secondary considerations take on less importance when
there is little doubt as to obviousness. See Dow Chem. Co.
v. Halliburton Oil Well Cementing Co., 324 U.S. 320, 330
(1945) (“But these considerations are relevant only in a
close case where all other proof leaves the question of
invention in doubt.”); Goodyear Tire & Rubber Co. v. Ray-
O-Vac Co., 321 U.S. 275, 279 (1944) (“These factors were
entitled to weight in determining whether the improve-
ment amounted to invention and should, in a close case,
tip the scales in favor of patentability.”).
Aside from these broader legal principles, though, I
write separately to express concern that the majority
misapplies the substantial evidence standard of review
with respect to the invalidity analysis, finding evidence in
the record when there is none to support the jury’s implic-
it factual findings. With respect to the ’647 patent, the
majority goes too far by implicitly modifying our prior
claim construction that is binding on and agreed upon by
the parties.
In the majority’s view, the existence of any evidence
that could theoretically support a jury verdict would seem
to end our substantial evidence review on appeal. But see
Consol. Edison Co. of N.Y. v. Nat’l Labor Relations Bd.,
305 U.S. 197, 229 (1938) (“Substantial evidence is more
than a mere scintilla. It means such relevant evidence as
a reasonable mind might accept as adequate to support a
conclusion.”). Indeed, as Judge Reyna forcefully articu-
lates in his dissent today, the majority has abdicated its
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 3
role in substantial evidence review. For the additional
reasons discussed below, I respectfully dissent.
DISCUSSION
I
A
Under the majority’s analysis, the question with re-
spect to the validity of claim 8 of the ’721 patent is
straightforward: whether there is substantial evidence to
support the jury’s implicit finding that there was no
motivation to combine Neonode and Plaisant. The en
banc majority relies on the testimony of Apple’s expert,
Dr. Cockburn, to say that a skilled artisan would not be
motivated to combine Neonode and Plaisant. In support,
the en banc majority cites only one fact (that is self-
evident from the face of the references themselves): Ne-
onode concerns a portable telephone and Plaisant con-
cerns wall-mounted touchscreen devices. That lone
statement does not rise to the level of substantial evi-
dence.
Neonode describes a portable phone that may be acti-
vated by “[s]weep[ing] right” on the screen. J.A. 20725.
Plaisant discloses a toggle device for use on a touch
screen, referred to as a “[s]lider toggle,” which requires a
user to slide a pointer from one side of the toggle to the
other in order to activate it. J.A. 20743. Plaisant also
teaches that an “advantage of the sliding movement is
that it is less likely to be done inadvertently therefore
making the toggle very secure (the finger has to land on
and lift off the right locations).” Id. It is undisputed that
Neonode and Plaisant are analogous art references that
together disclose all of the limitations of claim 8. The
relevant question is whether a skilled artisan would be
motivated to combine the references to solve the problem
addressed by the ’721 patent, namely “the unintentional
activation or deactivation of functions due to unintention-
4 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
al contact with the touch screen.” 1 ’721 patent col. 1 ll.
38–40. See KSR, 550 U.S. at 420 (noting that a motiva-
tion to combine may be found in “any need or problem
known in the field of endeavor at the time of invention
and addressed by the patent”).
The majority holds that there is no motivation to
combine Neonode with Plaisant because a person of
ordinary skill would not turn to Plaisant’s wall-mounted
1 Apple also argued at the district court and on ap-
peal that Plaisant teaches away from using sliders be-
cause they were “not preferred” over other toggle devices.
Apple Br. 27. The majority declined to address teaching
away, focusing instead on motivation to combine. The
majority states, however, that “even if Plaisant does not
teach away, its statements regarding users preferring
other forms of switches are relevant to a finding regarding
whether a skilled artisan would be motivated to combine
the slider toggle in Plaisant with the mobile phone in
Neonode.” Majority Op. at 22 n.13. This rationale is new.
It was never before the jury, see J.A. 12876–78, and even
Apple does not assert that rationale.
In any event, there is no teaching away here. Though
Plaisant notes that sliders may not be preferred, it also
describes advantages that sliders have over other toggle
methods. J.A. 20743. As a matter of law, “the mere
disclosure of more than one alternative does not amount
to teaching away from one of the alternatives where the
reference does not criticize, discredit, or otherwise dis-
courage the solution” presented by the disclosure.
SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307,
1320 (Fed. Cir. 2015) (internal quotation marks omitted)
(citation omitted); see also Allergan, Inc. v. Apotex Inc.,
754 F.3d 952, 964 (Fed. Cir. 2014) (stating that “mere
disclosure of alternative preferences” does not teach
away).
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 5
touchscreen to solve the “unintentional activation” prob-
lem of a portable phone. The problem with that conclu-
sion is that Apple did not present any evidence to support
it. Indeed, a review of the entirety of Dr. Cockburn’s
testimony on motivation to combine reveals the striking
absence of any evidence that a skilled artisan would not
look to Plaisant simply because it discloses wall-mounted
touchscreens:
Q. And can you show us, please, using some
graphics, remind us what the Plaisant application
is.
A. Sure. Quickly I’ve got a few slides on Plaisant,
this is the paper, the two-page paper, it describes
touch screen toggle designs, so these are on/off
switches.
And the way they were intended to be used was the
touch screen would be mounted into a wall or into
cabinetry and it would be used to control, for re-
mote control, office or home appliances, like air
conditioning units or heaters.
The publication itself and the video that accom-
panies it both teach away from the use of slid-
ing. . . . [Plaisant] tells us that toggles that are
pushed seem to be preferred over toggles that
slide; and the sliding is more complex than simply
touching; and also that sliders are harder to im-
plement.
And the figure at the top shows those results for
user preference indicating that both of the two de-
signs that they considered, levers and sliders, was
the least preferred, that’s the slider highlighted in
red and the lever.
Q. [Samsung’s expert] told this jury that a person
of ordinary skill in the art would have been natu-
6 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
rally motivated to combine the Neonode guide
with the Plaisant article.
Did you agree with that opinion?
A. No, I do not.
Q. And why do you say that?
A. The patent office, the patent examiner, had all
of the Neonode guide available to them.
They also had Plaisant, in its complete form,
available to them, and they commented extensive-
ly on Plaisant. There was an extensive discussion
of Plaisant, and at the end of that discussion, they
conclude that Plaisant does not, or none of the
prior art discloses continuous movement of the
unlock image to order to unlock the device.
J.A. 12876–78 (emphases added to denote portions of the
testimony relied on by the majority). 2
Dr. Cockburn’s statement concerning wall-mounted
touchscreens did not concern whether a person of ordi-
nary skill would look to Plaisant to solve the problem of
“unintentional activation”; it was merely a restatement of
Plaisant’s express disclosure. See J.A. 20742 (“Users see
the screen flushmounted into the wall or the cabinetry.”).3
2 Apple never even argued to the jury that
Plaisant’s disclosure being a wall-mounted device had any
bearing on motivation to combine. See Apple Inc. v.
Samsung Elecs. Co., No. 5:12-cv-630, Trial Tr. of Apr. 29,
2014 at 3212–14, ECF No. 1929.
3 The majority only cites Dr. Cockburn’s statement
that he did not believe there was a motivation to combine
Neonode with Plaisant but not his subsequent explana-
tion. A court may not treat a conclusory answer without
any context as evidence. See Telemac Cellular Corp. v.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 7
Indeed, leaving aside his reference to the entirely discrete
issue of teaching away, Dr. Cockburn’s only purported
rationale for a lack of motivation to combine was that
both Neonode and Plaisant were before the Patent Office
during prosecution—a fact that Apple does not rely on
before us with respect to motivation to combine.
In stark contrast, the jury heard compelling evidence
that a skilled artisan would be motivated to combine the
references to solve the problem of unintentional activa-
tion. Most importantly, Plaisant itself expressly teaches
that an “advantage of the sliding movement is that it is
less likely to be done inadvertently.” J.A. 20743. Indeed,
this disclosure alone does more than motivate the combi-
nation of Plaisant with Neonode—it actually teaches and
suggests it.
Samsung’s expert, Dr. Greenberg, explained this to
the jury when asked whether a skilled artisan would be
motivated to combine the references:
They both specifically describe how a sliding ac-
tion is used to prevent accidental activation.
So this is -- you know, a person looking at this
would just think it natural to combine these two,
as well taking the ideas in Plaisant, the slider,
and putting them on the Neonode is, is just a very
routine thing to think about in terms of interac-
tion design.
J.A. 11982–83. By the end of trial, the jury had thus
heard from Samsung’s expert, who articulated a specific
motivation to combine based on the explicit disclosure of
Plaisant itself, and from Apple’s expert, who gave no
Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001)
(holding that conclusory statements offered by experts are
not evidence).
8 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
explanation as to why a skilled artisan would not be so
motivated.
Nonetheless, the majority finds that there is substan-
tial evidence of a lack of motivation to combine. But a
reviewing court in our situation must “review the record
as a whole,” crediting not only evidence favoring the
nonmovant but also “evidence supporting the moving
party that is uncontradicted and unimpeached, at least to
the extent that that evidence comes from disinterested
witnesses.” Reeves v. Sanderson Plumbing Prods., Inc.,
530 U.S. 133, 151 (2000) (internal quotation marks omit-
ted). Here, the record as a whole makes clear that a
skilled artisan, starting with the portable phone of Ne-
onode, would have seen a benefit to adding Plaisant’s
sliders to solve the accidental activation problem de-
scribed by the ’721 patent. 4 See KSR, 550 U.S. at 424. A
straightforward evaluation of the entire record compels
only one reasonable conclusion—there is a motivation to
combine Neonode with Plaisant.
In sum, there is no support in the record for the ma-
jority’s conclusion that substantial evidence supports the
jury’s implicit factual finding that a person of ordinary
skill in the art would not be motivated to combine Ne-
onode and Plaisant. Substantial evidence may be a
lenient standard, but it is a standard nonetheless that
cannot be met with the stark absence of evidence. There-
4 Because it is undisputed that Plaisant is analo-
gous art, a hypothetical person of ordinary skill would be
aware of it. See Mast, Foos, & Co. v. Stover Mfg. Co., 177
U.S. 485, 494 (1900) (“[I]n determining the question of
invention, we must presume the patentee was fully in-
formed of everything which preceded him, whether such
were the actual fact or not.”); Kimberly-Clark Corp. v.
Johnson & Johnson, 745 F.2d 1437, 1449–54 (Fed. Cir.
1984) (collecting cases).
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 9
fore, no rational jury could find that a motivation to
combine the references to arrive at the claimed invention
was lacking.
B
Despite the majority’s statement that there is no mo-
tivation to combine, the majority does not appear to rest
its conclusion on that basis. See Majority Op. at 30.
Instead, the majority goes on to state that it considers
Plaisant’s teachings, including the reference to “inadvert-
ent activation,” against the evidence of secondary consid-
erations. Id. at 42–43. It is unclear what analytical
framework the majority has adopted in its analysis and
whether this goes to the question of motivation to com-
bine. We have only weighed the teachings of a prior art
reference related to motivation to combine against each
other in the teaching away context. See, e.g., Galderma
Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 739 (Fed. Cir.
2013) (a teaching that a concentration of 0.1% was opti-
mal did not weigh against a teaching that 0.3% concentra-
tion was possible); DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)
(a teaching expressing a “general preference for an alter-
native” did not weigh against a teaching). Doing so as
part of the ultimate legal question of obviousness, as the
majority does now, is a new approach that neither we nor
the Supreme Court has sanctioned.
Given the majority’s conclusion (with which I disa-
gree) that there was no motivation to combine references
in this case, there is no reason for the majority to go on to
opine on the question of secondary considerations at all—
that discussion is arguably dicta. 5 See, e.g., Allergan, Inc.
5 The majority’s assessment of secondary considera-
tions also relies on additional evidence that was not
presented by Apple to the district court or to us on appeal
10 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
v. Sandoz Inc., 796 F.3d 1293, 1304–07 (Fed. Cir. 2015)
(affirming a nonobvious determination based only on
issues of teaching away and unexpected results); Stryker
Corp. v. Zimmer, Inc., No. 2013-1668, 2016 WL 4729504,
at *7 (Fed. Cir. Sept. 12, 2016) (declining to reach second-
ary considerations in reaching a determination of nonob-
viousness), vacated and remanded on other grounds sub
nom. Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923
(2016); In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988)
(same).
In my analysis, however, I conclude that no reasona-
ble jury could find a lack of motivation to combine, so I am
obligated to consider Apple’s proffered evidence of second-
ary considerations. Nike, Inc. v. Adidas AG, 812 F.3d
1326, 1339 (Fed. Cir. 2016).
In the history of our court, we have only once held
that evidence of secondary considerations outweighs
strong evidence of obviousness. See Transocean Offshore
Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699
F.3d 1340 (Fed. Cir. 2012). In that case, the jury, in view
of “compelling” evidence, made express findings that
seven types of secondary considerations supported nonob-
viousness. Id. at 1349, 1354. However, we acknowledged
that “[f]ew cases present such extensive objective evidence
of nonobviousness, and thus we have rarely held that
objective evidence is sufficient to overcome a prima facie
case of obviousness.” Id. at 1354. This is not a case
where evidence of secondary considerations is so “exten-
in opposition to Samsung’s obviousness evidence, and
relies on theories that appear nowhere in Apple’s briefs.
Compare Majority Op. at 31–43 with Apple’s Opp’n to
Samsung’s Mot. for J. as a Matter of Law Pursuant to
Fed. R. Civ. P. 50(b) & Mot. to Am. the J. at 18, Apple Inc.
v. Samsung Elecs. Co., No. 5:12-cv-630, ECF No. 1908–03
(“Apple JMOL Opposition”); Apple Br. 29.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 11
sive.” See KSR, 550 U.S. at 426 (“Like the District Court,
finally, we conclude Teleflex has shown no secondary
factors to dislodge the determination that claim 4 is
obvious.”).
When examining evidence of secondary considera-
tions, “courts must exercise care in assessing proffered
evidence of objective considerations, giving such evidence
weight only where the objective indicia are attributable to
the inventive characteristics of the discovery as claimed in
the patent.” In re Cyclobenzaprine Hydrochloride Extend-
ed-Release Capsule Patent Litig., 676 F.3d 1063, 1079 n.6
(Fed. Cir. 2012) (internal quotation marks omitted) (cita-
tions omitted). The proponent of such evidence of second-
ary considerations, in this case Apple, “bears the burden
of showing that a nexus exists between the claimed fea-
tures of the invention and the objective evidence offered to
show non-obviousness.” WMS Gaming, Inc. v. Int’l Game
Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). Though the
existence of such a nexus is a question of fact, which we
review for substantial evidence, the consideration of
objective indicia is part of the ultimate determination of
obviousness which we review de novo. See Agrizap, Inc. v.
Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008)
(“Even when we presume the jury found that the objective
evidence of nonobviousness favored [the patentee], this
evidence is insufficient to overcome the overwhelming
strength of [the alleged infringer’s] prima facie case of
obviousness.”); Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (agreeing with the
district court’s conclusion that even substantial evidence
of various secondary considerations was “inadequate to
overcome” obviousness as a matter of law). The mere
existence of evidence of secondary considerations does not
control the obviousness determination. Richardson-Vicks
Inc. v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997).
In this case, Apple presented evidence that it con-
tends shows there was commercial success, long-felt need,
12 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
industry praise, and copying. However, Apple’s evidence
of commercial success does not establish a nexus with the
patented feature, and the remaining evidence, even if a
nexus is assumed, is not sufficient to “tip the scales of
patentability.” Graham v. John Deere Co., 383 U.S. 1, 36
(1966).
1
To argue commercial success on appeal, Apple only re-
lies on a portion of a survey introduced to establish the
value of the “patent-related” slide-to-unlock feature on
tablets with screens larger than 7 inches, J.A. 21066,
21108, coupled with Dr. Greenberg’s statement that
“there’s no question that the Apple iPhone was a commer-
cial success.” J.A. 11984; see Apple Br. 29. This evidence
does not establish a nexus for commercial success. 6
With respect to the survey, it did not ask about the
slide-to-unlock feature on smartphones, which in the
survey had screens no larger than 5.5 inches (smaller
than the surveyed tablet screens). J.A. 21076, 21108.
Apple does not point to any separate evidence regarding
the sales of those tablets. As for the success of the iPhone
device, there is no evidence tying that success specifically
to the features embodied in the claimed invention. To
6 To find a nexus for commercial success, the major-
ity also relies on testimony by Apple’s Senior Vice Presi-
dent of Worldwide Marketing, a television commercial
shown to the jury, and additional testimony from Apple’s
witness, Mr. Christie. Majority Op. at 35–38. Apple did
not rely on any of that evidence before the district court in
its JMOL opposition or before us on appeal to support a
showing of commercial success. See Apple JMOL Opposi-
tion 18; Apple Br. 29. These rationales are new. There is
no need to reach these arguments because they were
never made in this appeal.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 13
establish the requisite nexus, there needs to be some
record evidence to tie the commercial success of a product
to the slide-to-unlock feature of that product embodying
the claimed invention. Here, there is none.
In addition, although Dr. Greenberg testified that the
iPhone was commercially successful, he continued: “[b]ut
I’ve seen no evidence that says that that commercial
success was due to the lock screen.” J.A. 11985. No
reasonable juror could conclude that Dr. Greenberg’s
statement that he had seen no evidence of a nexus was
somehow evidence of a nexus. 7
2
The remainder of Apple’s secondary consideration ar-
guments consists of long-felt need, industry praise, and
copying. To show long-felt need, Apple relies on the
testimony of Dr. Cockburn, who provided a single example
of a portable phone that he characterized as “entirely
unintuitive.” J.A. 10638–39. For industry praise, Apple
relies upon the audience reaction at the first public un-
veiling of the iPhone. J.A. 12879–80. Finally, Apple
relies on internal Samsung documents that it argues
7 Apple also argued before the district court, but not
on appeal, that Dr. Cockburn’s testimony was evidence of
commercial success for the ’721 patent. See Apple JMOL
Opposition 18. But Dr. Cockburn only testified that the
iPhone was commercially successful, not that the iPhone
was commercially successful because of the slide-to-
unlock feature. See J.A. 12879 (“Well, clearly there’s been
commercial success both of the iPhones that use this
invention, and for the devices that have copied the tech-
nique.”). This testimony is also insufficient to establish
nexus.
14 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
show both copying and industry praise. See, e.g., J.A.
51289. 8
Even assuming that the jury implicitly found a nexus
between Apple’s evidence and the claimed invention, this
evidence is insufficient in the face of the strong evidence
of obviousness. The testimony of an expert testifying as
to a single example of unsatisfactory prior art is, at best,
weak. Cf. Cyclobenzaprine, 676 F.3d at 1083 (testimony
regarding an expert’s experience over ten years). Similar-
ly, Apple’s evidence of applause at its own press event is
also weak evidence of nonobviousness. See In re Cree, 818
F.3d 694, 702 (Fed. Cir. 2016) (finding a company’s press
release unpersuasive evidence of non-obviousness).
Finally, though Samsung’s internal documents are proba-
tive of copying (and industry praise), they do not move the
needle in this case. See Tokai Corp. v. Easton Enters.,
Inc., 632 F.3d 1358, 1370 (Fed. Cir. 2011) (finding evi-
dence of copying unpersuasive evidence of non-
obviousness).
Considering the totality of the evidence, Apple’s evi-
dence relating to secondary considerations does not “tip
the scales of patentability.” Graham, 383 U.S. at 36; see
also Leapfrog Enters., 485 F.3d at 1162 (finding substan-
tial evidence of commercial success, industry praise, and
long-felt need insufficient to overcome strong evidence of
obviousness); Richardson-Vicks, 122 F.3d at 1483 (“Evi-
dence of secondary considerations . . . are but a part of the
‘totality of the evidence’ that is used to reach the ultimate
8 In addition to the evidence cited by Apple and the
district court, the majority also relies on additional docu-
mentation and testimony regarding alternatives to the
iPhone slide-to-unlock feature to support its conclusion on
long-felt need. Majority Op. at 40–41. There is no need to
reach this argument because Apple never cited that
evidence before the district court or before us on appeal.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 15
conclusion of obviousness.”). The asserted claim of the
’721 patent is therefore obvious as a matter of law. 9
II
With respect to the ’172 patent, the majority also errs
in finding substantial evidence in support of the jury
determination that the ’172 patent is nonobvious. Specifi-
cally, the majority’s conclusion regarding the scope and
content of the prior art relies entirely on out-of-context
statements by Dr. Cockburn.
The ’172 patent is directed to methods of automatical-
ly correcting typographical errors as the user is typing on
the keyboard of a portable device. In essence, asserted
claim 18 of the ’172 patent requires that a current “char-
acter string,” or text, be displayed in a “first area;” that
the text, as typed, and suggested “replacement” text be
9 As a basis for affirmance, the majority implies
that it would be inappropriate to “reverse nearly a dozen
fact findings.” See Majority Op. at 5. The number of
underlying findings to a legal conclusion is irrelevant in a
legal analysis. Reversal of a jury finding of nonobvious-
ness, which we have done not infrequently, usually re-
quires by its very nature the explicit or implicit reversal
of multiple fact findings. See, e.g., W. Union Co. v.
MoneyGram Payment Sys., Inc., 626 F.3d 1361, 1368–
1374 (Fed. Cir. 2010) (reversing jury’s implicit factual
findings of the scope and content of the prior art, motiva-
tion to combine, and evidence of secondary considera-
tions); Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1348–50
(reversing a jury determination of nonobviousness and,
implicitly, the underlying factual findings); PharmaStem
Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360–67
(Fed. Cir. 2007) (reversing a jury’s implicit factual find-
ings regarding the scope and teaching of the prior art,
expectation of success, and secondary considerations).
16 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
displayed in a second area; and that the replacement text
be automatically entered in the first area if a certain key,
such as the space bar, is pressed or if the user touches the
suggested replacement. Additionally, the user can choose
to use the current text (as typed) if he touches that option
in the second area.
Samsung presented evidence at trial through its ex-
pert, Dr. Wigdor, that claim 18 of the ’172 patent is obvi-
ous in light of the Robinson and Xrgomics prior art
references. Robinson describes a touchscreen keyboard
that can automatically correct incorrectly typed text. Dr.
Wigdor opined that Robinson discloses every aspect of the
invention except for displaying incorrectly typed text in a
“first area.” For that missing limitation, he explained
that “anyone who’s used a computer since the late 1970s
would be familiar with this idea that . . . as you type, the
text shows up at your cursor.” J.A. 12025. In addition, he
pointed to Xrgomics, which describes a text-entry system
in which the current character string is displayed in a
first area. J.A. 21049.
The majority does not point to any evidence that
Xrgomics fails to disclose displaying current text in a first
area, nor could it because Xrgomics plainly discloses that
limitation. See J.A. 12025–26. Rather, the majority
concludes, based on Dr. Cockburn’s testimony, that there
is substantial evidence that neither Robinson nor Xrgom-
ics discloses the text replacement recited by the asserted
claim, as distinguished from text completion. That is
demonstrably incorrect, at least with respect to Robinson.
Dr. Cockburn testified primarily that Robinson fails to
disclose displaying current text in a “first area.” He then
used that statement to conclude that Robinson also lacks
“a series of [other] elements” recited by the asserted
claim, namely replacing or keeping current text in a first
area. J.A. 12915–16. In context, Dr. Cockburn’s testimo-
ny about Robinson’s missing elements was entirely prem-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 17
ised on the absence of a single element—i.e., no text being
displayed in a first area:
[B]ecause the current character string is not in the
first area, it is not replaced with the suggested re-
placement character when the user presses a de-
limiter.
As you saw, there was no text there [in the first ar-
ea] to be replaced when a delimiter was pressed.
Similarly, the character -- current character string
is not in the first area, so it can’t be replaced when
the user selects a suggested replacement string.
And, again, because the current character string is
not there [in the first area], it can’t be kept if the
user performs a gesture.
J.A. 12916 (emphases added). To be clear, he did not
testify that Robinson fails to disclose replacing or keeping
text per se, but only that it fails to disclose replacing or
keeping text in a first area.
Indeed, there can be no genuine dispute that Robin-
son discloses replacing or keeping, in a different area of a
display, text that the user has input. Robinson is titled
“Keyboard System with Automatic Correction.” J.A.
20885 (emphasis added). And, as explained by Dr.
Wigdor, Figure 1B of the patent shows that a pop-up
menu includes the text as typed and suggested replace-
ment text:
18 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
J.A. 20890. Robinson states that “[t]he space key acts to
accept the default word . . . and enters the [default] word
. . . in the text output region.” J.A. 20925 (col. 33 ll. 12–
14). In addition, it is possible to “[s]elect[] the [text as
typed] for output.” Id. (col. 18 l. 10).
Again, Xrgomics plainly supplies Robinson’s missing
limitation of displaying current text in a first area. In
light of the record evidence, a reasonable jury would only
be able to conclude that taking Robinson and supplying
that limitation from Xrgomics would result in the claimed
invention. Contrary to the majority’s conclusion, there is
no evidence—let alone substantial evidence—to support
the jury’s finding that Robinson and Xrgomics, when
combined, would not disclose every limitation of the
asserted claim.
Although the majority does not address motivation to
combine with respect to the ’172 patent, I also find no
substantial evidence upon which a reasonable jury could
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 19
decide that motivation was lacking. Samsung’s expert
gave unrebutted testimony that “the person of ordinary
skill in the art, seeing all of the behaviors in Robinson
and understanding how they work, and then seeing how
Xrgomics works, would certainly recognize this one miss-
ing element that what they type shows up where their
cursor is. I believe they would combine it.” Apple Inc. v.
Samsung Elecs. Co., No. 5:12-cv-630, Trial Tr. of Apr. 15,
2014 at 2019, ECF No. 1717. Apple offered no expert
testimony to the contrary. See id. at Trial Tr. of Apr. 25,
2014 at 2902–06, ECF No. 1927. There is no question
that Robinson and Xrgomics address the same problems
that arise from typing on a relatively small keyboard.
And there is nothing to indicate that the asserted combi-
nation does more than yield predictable results. There-
fore, the only evidence of record demonstrates that all of
the limitations of claim 18 of the ’172 patent were known
in the prior art, and combining those features to solve a
known problem yielded no more than a predictable result.
See KSR, 550 U.S. at 416 (“[W]hen a patent claims a
structure already known in the prior art that is altered by
the mere substitution of one element for another known in
the field, the combination must do more than yield a
predictable result.”).
With respect to secondary considerations, Apple ar-
gues that the success of the accused Samsung devices,
coupled with survey evidence that consumers are more
likely to buy smartphones with “automatic word correc-
tion,” J.A. 21108, is evidence of commercial success.
Apple also asserts that an internal Samsung document
describing an alternative approach as “jarring,” J.A.
51488, is evidence of industry praise. However, as with
the ’721 patent, Apple cites no expert or other testimony
connecting the survey results to the obviousness inquiry.
Furthermore, the survey evidence does not speak to
whether a consumer would be more or less likely to buy a
device with the specific combination of features recited in
20 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
claim 18 of the ’172 patent. That is, this evidence does
not show the required nexus between the patented fea-
ture and Samsung’s commercial success. As with the ’721
patent, any remaining evidence of secondary considera-
tions here is not sufficient to “tip the scales of patentabil-
ity.” Graham, 383 U.S. at 36.
Accordingly, the asserted claim of the ’172 patent is
obvious as a matter of law.
III
As for the ’647 patent, the crux of the parties’ dispute
is the proper application of our construction of the “ana-
lyzer server” limitation. We had construed this limitation
in another case concerning the same patent to mean “a
server routine separate from a client that receives data
having structures from the client.” Apple Inc. v. Motorola,
Inc., 757 F.3d 1286, 1304 (Fed. Cir. 2014). Our previous
construction of “analyzer server” is not at issue on appeal,
and the parties agree that it applies in this case. Sam-
sung does not dispute the construction, and, even if Apple
had disagreed with our construction, it is bound by it. See
Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402
U.S. 313, 328–29 (1971). The question is whether sub-
stantial evidence supports the jury’s finding that, under
our construction, the accused instrumentalities meet the
requirement for a “server routine separate from a client.”
In addition to Judge Dyk’s analysis with respect to
the ’647 patent in section VIII parts A and B of his dis-
sent, I would add the following.
The majority asserts that, in light of the specification,
a program that is “structurally separate,” without more,
satisfies the “‘separate’ requirement.” Majority Op. at 10.
We did not so cabin the word “separate” in our Motorola
construction. Because no two program routines may
physically occupy the same memory at the same time (i.e.,
any two separate program routines are, by definition,
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 21
separate in storage), the majority’s interpretation effec-
tively and erroneously reads “separate” out of our con-
struction. Relatedly, the majority also fails to give effect
to the requirement under our construction that the rou-
tine is a server routine, not any piece of code. That is
significant because we relied in Motorola on the plain
meaning of “server,” which entailed a client-server rela-
tionship. See Motorola, 757 F.3d at 1304–05.
As applied to the facts of this case, no reasonable ju-
ror could conclude that Samsung’s devices embody the
“analyzer server” limitation. Apple asserted that pieces of
software code stored in “shared libraries” are the “analyz-
er server” that performs the “detecting” and “linking”
functions. 10 Notably, even Apple does not advocate for the
majority’s view that our construction merely requires the
shared library code to be “structurally separate.” Apple
contends that the accused code is “separate” not only in
its location but also in its development and design to be
reused across different applications. See Apple Opening
& Response Br. 16; Oral Argument at 29:21–30:25, 33:35–
34:59, available at http://www.cafc.uscourts.gov/oral-
argument-
recordings?title=Apple&field_case_number_value=2015-
1171&field_date_value2%5Bvalue%5D%5Bdate%5D.
10 According to the parties’ experts, a shared library
is a collection of code that can be accessed by other appli-
cations. J.A. 13054 (Apple’s expert); J.A. 11792 (Sam-
sung’s expert). At oral argument, Samsung analogized
the difference between a server and a shared library to
the difference between a client asking a reference librari-
an (the server) to perform a task and a client going to the
library and performing a task by following instructions
from a book in the library (the shared library). Oral
Argument at 9:24–10:15.
22 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
Crucially, the record lacks substantial evidence that
the shared library code of the accused instrumentalities
meets our Motorola construction requiring a separate
server routine. Regarding the “separate” requirement,
there is nothing in our Motorola construction to indicate
that the independent development of a program routine or
reuse across different applications, relied on by Apple, is
relevant. The only arguably relevant evidence that Apple
relies on is that the accused applications use the shared
library code at a separate location, which, as noted above,
is not the only requirement of our construction. Because
Apple has not offered sufficient evidence to meet our
claim construction, that alone is sufficient to find nonin-
fringement as a matter of law.
To be sure, Samsung also affirmatively argued why
the shared library code is not “separate.” Contrary to the
majority’s assertion, Samsung proffered evidence that the
code “does not run on its own.” 11 Samsung Br. 19. In-
deed, Apple’s expert admitted that the shared library code
is incapable of running “outside of the client application.”
J.A. 13054. And, as Samsung points out, Apple did not
explain why the shared library code is a “server” routine.
See Samsung Br. 18–19, 24. There is simply no evidence
that the accused instrumentalities rely on a client-server
architecture.
11 The majority argues that the jury could have
found Samsung’s expert testimony regarding the meaning
of “analyzer server” inconsistent, citing the district court’s
criticism of the expert. Majority Op. at 16–17 n.10. The
court’s remarks, however, were not made in front of the
jury, and Apple did not argue in its appeal briefing that
the expert’s testimony was inconsistent. Therefore, there
is no need to address this point. Regardless of the credi-
bility of Samsung’s expert, Apple’s evidence under our
previous construction of “analyzer server” is insufficient.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 23
In sum, Apple’s evidence only shows, in relevant part,
that the shared library code is a piece of code located in a
separate part of memory that is used by other applica-
tions. That is not sufficient under our previous construc-
tion of “analyzer server” to prove infringement of the ’647
patent as a matter of law. No reasonable jury could
conclude otherwise.
CONCLUSION
For the foregoing reasons, no jury could rationally
conclude that the ’721 and ’172 patents were not obvious,
or that Samsung infringed the ’647 patent. Therefore, I
respectfully dissent.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC., A CALIFORNIA CORPORATION,
Plaintiff-Cross-Appellant
v.
SAMSUNG ELECTRONICS CO., LTD., A KOREAN
CORPORATION, SAMSUNG ELECTRONICS
AMERICA, INC., A NEW YORK CORPORATION,
SAMSUNG TELECOMMUNICATIONS AMERICA,
LLC, A DELAWARE LIMITED LIABILITY
COMPANY,
Defendants-Appellants
______________________
2015-1171, 2015-1195, 2015-1994
______________________
Appeals from the United States District Court for the
Northern District of California in No. 5:12-cv-00630-LHK,
Judge Lucy H. Koh.
______________________
DYK, Circuit Judge, dissenting.
I
For the first time in 26 years, this court has taken an
obviousness case en banc. See In re Dillon, 919 F.2d 688
(Fed. Cir. 1990) (en banc). Remarkably, the majority has
done so without further briefing and argument from the
2 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
parties, amici, or the government, as has been our almost
uniform practice in this court’s en banc decisions. 1 Fail-
ure to ask for the government’s views is particularly
significant given the ramifications of this issue for the
U.S. Patent and Trademark Office (“PTO”). This has
deprived the parties and amici of the opportunity to
express their views on these important issues, and has
deprived this court of the opportunity to consider these
issues in light of those views.
Obviousness is the most common invalidity issue in
both district court and post-grant proceedings before the
PTO. 2 The importance of our obviousness jurisprudence
to the intellectual property community is evidenced by, for
example, the 38 amicus briefs filed in KSR International
Co. v. Teleflex Inc., 550 U.S. 398 (2007), including an
amicus brief by the government, and the multiple amicus
briefs filed in our last obviousness en banc case. The
present en banc decision will have a significant and
immediate impact on the future resolution of obviousness
issues. While purporting to apply established circuit law,
the majority is in fact making significant changes to the
law as articulated by the Supreme Court. Indeed, as
Judge Reyna convincingly points out, it is difficult to
understand how this case would satisfy the requirements
for en banc review if the majority’s purpose were not to
clarify the law.
The majority states that it takes this case en banc to
correct the original panel’s reliance on extra-record evi-
1 Over the last 10 years, the court extended sup-
plemental briefing or argument from parties in 36 en banc
cases; in only three cases did we not do so.
2 See 2-5 CHISUM ON PATENTS § 5.06 (2015) (“The
nonobviousness requirement of Section 103 is the most
important and most litigated of the conditions of patenta-
bility.”).
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 3
dence. Maj. Op. at 3–5. This could hardly be the reason
the majority has granted en banc review, since the panel
has continuingly expressed willingness, and indeed de-
sire, to eliminate references to any extra-record evidence
because of concerns raised in Apple’s petition for rehear-
ing and because they were unnecessary to the panel
opinion.
While for the most part the majority does not express
its shifts in obviousness principles explicitly, an examina-
tion of the majority’s opinion makes clear its substantial
impact on the law of obviousness. And that impact will
not be a positive one, for the principles that the majority
announces are inconsistent with the Supreme Court’s
decisions in KSR, Graham v. John Deere Co., 383 U.S. 1
(1966), as well as earlier Supreme Court cases, and will
make proof of obviousness far more difficult.
The majority complains that the parties themselves
did not “raise big questions about how aspects of the
obviousness doctrine ought to operate.” Maj. Op. at 5.
But that is exactly the point. The majority makes signifi-
cant changes to the law of obviousness even though these
important issues are raised by the court sua sponte with-
out the opportunity by the parties and amici to address
them, or the majority adopts previous panel decisions on
obviousness that the parties could address only at the en
banc level.
I agree with Chief Judge Prost’s dissent, which ably
points out that even under the majority’s view that the
issues are factual rather than legal, there is not substan-
tial evidence to support the result the majority reaches on
the issue of obviousness. The flimsy nature of the evi-
dence found by the majority to support the jury verdict
emphasizes the dangers of inviting factfinding to domi-
nate the obviousness determination. Quite apart from the
question whether the jury’s factfinding was supported by
substantial evidence, is the fact that these asserted
4 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
factfindings are largely irrelevant to the legal question of
obviousness.
I write separately to point out the profound changes in
the law of obviousness that the majority creates and to
point out the majority’s errors in its approach to claim
construction of the ’647 patent.
II
First, the majority turns the legal question of obvi-
ousness into a factual issue for a jury to resolve, both as to
the sufficiency of the motivation to combine and the
significance to be given to secondary considerations.
KSR explicitly rejected the contention that obvious-
ness is always a matter of fact requiring jury resolution.
In KSR, the patentee argued that the question of motiva-
tion to combine was for the jury. See Brief for Respond-
ents, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)
(No. 04-1350), 2006 WL 2989549, at *45. The Supreme
Court rejected this contention, holding that this question
was properly resolved on summary judgment because
“[t]he ultimate judgment of obviousness is a legal deter-
mination. Where, as here, the content of the prior art, the
scope of the patent claim, and the level of ordinary skill in
the art are not in material dispute, and the obviousness of
the claim is apparent in light of these factors, summary
judgment is appropriate.” KSR, 550 U.S. at 427 (internal
citations omitted). Thus, while “the content of the prior
art, the scope of the patent claim, and the level of ordi-
nary skill in the art” potentially present fact issues, the
KSR Court determined that the sufficiency of the motiva-
tion to combine was not a factual issue, and that in the
particular case “it was obvious to a person of ordinary
skill to combine” the prior art. Id. at 424.
Here too, “the content of the prior art, the scope of the
patent claim, and the level of ordinary skill in the art are
not in material dispute,” id. at 427, and there is no indica-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 5
tion that the combination of the relevant prior art does
more than yield a predictable result. Yet the majority
holds that the question of the sufficiency of the motivation
here was a jury question. This is inconsistent with KSR.
For secondary considerations, Graham and KSR ex-
plained that both the significance and the weighing of
secondary considerations are for the court. Secondary
considerations “focus attention on economic and motiva-
tional rather than technical issues and are, therefore,
more susceptible of judicial treatment than are the highly
technical facts often present in patent litigation.” Gra-
ham, 383 U.S. at 35–36. The specific holdings in Graham
and KSR themselves demonstrate that both the signifi-
cance and the weighing of secondary considerations are
legal issues for the court. Even as an appellate court, the
Supreme Court in Graham determined that “these [sec-
ondary] factors do not, in the circumstances of this case,
tip the scales of patentability.” 383 U.S. at 36. Similarly,
the KSR Court “conclude[d] [that] Teleflex has shown no
secondary factors to dislodge the determination that claim
4 is obvious.” 550 U.S. at 426. Again, the majority’s
approach—turning the significance of secondary consider-
ations into a factual question—is contrary to Graham and
KSR.
III
Second, the majority lowers the bar for nonobvious-
ness by refusing to take account of the trivial nature of
the two claimed inventions. With respect to the ’721
patent, the slide to unlock feature was known in the prior
art (Neonode) and the only innovation is an image associ-
ated with the sliding gesture from fixed starting to ending
points. 3 See Maj. Op. 25–27. With respect to the ’172
3 Courts in other countries have uniformly found
the ’721 patent invalid. See Oral Argument 18:48–19:05
6 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
patent, the autocorrect feature was known in the prior art
(Robinson), and the only innovation is displaying contem-
poraneously the text to be autocorrected. See Maj. Op.
44–47. Such text displays have long been known in the
prior art (though not specifically in connection with
autocorrect display).
Treating such minimal advances over the prior art as
nonobvious is contrary to KSR, where the Supreme Court
confirmed that the obviousness doctrine is designed to
ensure that “the results of ordinary innovation are not the
subject of exclusive rights under the patent laws.” KSR,
550 U.S. at 427. On the face of these patents, only ordi-
nary, indeed trivial, innovation is involved. The majori-
ty’s holding that these trivial features can render a patent
nonobvious will have a significant impact on future cases.
IV
Third, the majority concludes that combinations of
prior art used to solve a known problem are insufficient to
render an invention obvious as a matter of law. According
to the majority, there must be evidence of a specific moti-
vation to combine. See Maj. Op. at 28–31. Both aspects of
these conclusions are contrary to KSR.
Under KSR, the existence of each patented feature in
the prior art is alone not sufficient to establish obvious-
ness. See KSR, 550 U.S. at 418. There must be a reason
to make a combination. But KSR holds that the reason
(“All the other jurisdictions of the world who have consid-
ered the ’721 patent . . . have invalidated it . . . based on
obviousness from these references.”); HTC Eur. Co. v.
Apple Inc., [2013] EWCA (Civ) 451 (Eng.); The Hague
District Court, 24 Aug. 2011, Apple v. Samsung, Docket
Nos. 396957/KG ZA 11-730 and 396959/KG ZA 11-731;
Bundesgerichtshof [BGH] [Federal Court of Justice] Aug.
25, 2015, X ZR110/13 (Ger.).
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 7
may be found as a matter of law in the solution to a
known problem. KSR was quite clear that the existence
of a known problem suffices: “[o]ne of the ways in which a
patent’s subject matter can be proved obvious is by noting
that there existed at the time of invention a known prob-
lem for which there was an obvious solution . . . .” KSR,
550 U.S. at 419–20. “[W]hen a patent simply arranges old
elements with each performing the same function it had
been known to perform and yields no more than one
would expect from such an arrangement, the combination
is obvious.” Id. at 417 (internal quotations omitted).
“[T]he simple substitution of one known element for
another” makes the claimed invention obvious. Id.
In holding that the existence of a known problem is
sufficient reason to combine prior art references, the
Court specifically rejected our court’s holding in KSR that
the existence of a known problem was insufficient. Tele-
flex, Inc. v. KSR Int’l Co., 119 F. App’x 282, 288 (Fed. Cir.
2005) (requiring that in addition to noting “the problem to
be solved, . . . the district court was [also] required to
make specific findings as to whether there was a sugges-
tion or motivation to combine the teachings of [the prior
art addressed to the same problem] in the particular
manner claimed”), rev’d, 550 U.S. 398 (2007).
KSR also held, contrary to the majority, that evidence
of a specific motivation to combine is not required. The
Court rejected our court’s approach in requiring a “specific
understanding or principle” that creates a specific motiva-
tion to combine. See 550 U.S. at 414. In KSR itself, the
combination was held obvious despite no “precise teach-
ings” to combine the previous references. See id. at 418.
Earlier decisions of the Supreme Court relied on by
KSR reflect the same approach. First, KSR explained
that United States v. Adams taught that “when a patent
claims a structure already known in the prior art that is
altered by the mere substitution of one element for anoth-
8 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
er known in the field, the combination must do more than
yield a predictable result.” Id. at 416 (citing 383 U.S. 39,
40 (1966)). Second, KSR explained that Anderson’s–Black
Rock v. Pavement Salvage Co. taught that when “two
[prior art references] in combination d[o] no more than
they would in separate, sequential operation . . . , while
the combination of old elements perform[s] a useful func-
tion, it add[s] nothing to the nature and quality of the . . .
already patented, and the patent fail[s] under § 103.” Id.
at 417 (internal quotation marks omitted) (citing 396 U.S.
57, 60–62 (1969)). Finally, KSR explained that Sakraida
v. Ag Pro, Inc. taught that “when a patent simply arrang-
es old elements with each performing the same function it
had been known to perform and yields no more than one
would expect from such an arrangement, the combination
is obvious.” Id. (internal quotation marks omitted) (citing
425 U.S. 273, 282 (1976)). The KSR Court held that the
“principles underlying these cases are instructive when
the question is whether a patent claiming the combina-
tion of elements of prior art is obvious. . . . Sakraida and
Anderson’s–Black Rock are illustrative—a court must ask
whether the improvement is more than the predictable
use of prior art elements according to their established
functions.” Id. Thus, under KSR, the existence of a
known problem solved by the combination can render that
combination obvious as a matter of law and without
further evidence of a specific motivation to combine.
Here, the inventions combine features known in the
prior art. With respect to the ’721 patent, Apple does not
dispute, and the majority agrees, that the combination of
the prior art Neonode and Plaisant references produces
the claimed invention. Maj. Op. at 27. As discussed
below, the same is true with respect to the ’172 patent
(combining the Robinson, Xrgomics, and other prior art
references). There is no claim that either combination
yielded unpredictable results. Both of the patents also
address a known problem. With respect to the ’721 pa-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 9
tent, the problems are ease-of-use and avoidance of inad-
vertent activation. With respect to the ’172 patent, the
problem is the need to see text entries. Contrary to KSR,
the majority now holds that a known problem is not
sufficient and that there must be evidence of a specific
motivation.
V
Fourth, the majority errs in cabining the relevant
technology in the field of prior art. The majority invites
the factfinder to dismiss prior art evidence on the theory
that it concerns a different device than the patented
invention, even if the references are directed to solving
the same problem and pertain to a related device. For
example, with respect to the ’721 patent, the majority
holds that the jury could dismiss the Plaisant reference
because it was directed to wall-mounted rather than
portable devices. Maj. Op. at 28–29. With respect to the
’172 patent, the majority makes much of the distinction
between word correction versus word completion, reject-
ing Xrgomics as relevant prior art on that basis, and
ignoring the extensive prior art showing text display as a
routine feature. Maj. Op. at 47–48.
The Supreme Court in KSR rejected the theory that
prior art addressing the same problem can be dismissed
because it concerns a different device. “[I]f a technique
has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the tech-
nique is obvious unless its actual application is beyond his
or her skill.” KSR, 550 U.S. at 417. In other words, the
question is not whether the art involves precisely the
same device. The question is whether it addresses the
same problem within the same general field. “Under the
correct analysis, any need or problem known in the field
. . . and addressed by the patent can provide a reason for
10 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
combining the elements in the manner claimed.” KSR,
550 U.S. at 420.
For example, in Graham, the patentee argued that
prior art disclosing a container for other liquid sprayers
was in a different field of art than the patented insecticide
sprayer. The Court held that a “restricted . . . view of the
applicable prior art is not justified. The problems con-
fronting [the patentee] and the insecticide industry were
not insecticide problems; they were mechanical closure
problems. Closure devices in such a closely related art as
pouring spouts for liquid containers are at the very least
pertinent references.” 383 U.S. at 35. In fact, this princi-
ple dates as far back as Hotchkiss v. Greenwood, 52 U.S.
248 (1851). In that case, the use of porcelain in a differ-
ent field was held to be sufficiently related to the use of
porcelain in doorknobs. Id. at 254.
In short, the proper inquiry is whether the prior art
references address the same problem in a related area.
The ’172 patent involves text display for word correction.
There is no question that the prior art also addresses the
problem of displaying a typed text so that it can be viewed
by the user; Xrgomics concerns the related art of text
completion. The majority concludes that the missing
element is not present in the prior art Xrgomics device
because the art is in a different technology, specifically
text completion as opposed to text correction. Maj. Op. at
47–48. However, Samsung presented uncontroverted
evidence, quite apart from Xrgomics, that “anyone who’s
used a computer since the late 1970s would be familiar
with this idea” of displaying the full text of what a user is
typing. J.A. 12024–25. The ’172 patent itself recognizes
this relatively broad field of prior art, as its specification
states that the disclosed invention “relate[s] generally to
text input on portable electronic devices.” ’172 Patent,
col. 1 ll. 15–16.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 11
The ’721 patent concerns unlocking touchscreen de-
vices. Here, the prior art dismissed by the majority is, by
the majority’s own admission, art that concerns the
general field of touchscreen devices. See Maj. Op. at 42.
Thus, there is no question that the two prior art refer-
ences address the same problem in related areas. None-
theless, the majority urges that “an ordinary artisan
would not have been motivated to combine elements from
a wall-mounted touchscreen for home appliances and a
smartphone, particularly in view of the ‘pocket-dialing’
problem specific to mobile devices that Apple’s invention
sought to address.” Maj. Op. at 31 (quoting the District
Court’s analysis). The majority errs in two respects.
First, the ’721 patent is not limited to cell phones or to the
cell phone pocket-dialing problem, and indeed makes no
reference to a pocket-dialing problem. The ’721 patent is
directed to portable devices generally, and to ease of use
and inadvertent activation with respect to all such devic-
es. Second, the Plaisant prior art was concerned with the
same problems as the ’721 patent in the field of touch
screen devices. Plaisant indicated that the study’s “focus
is on providing . . . systems that are easy for the home
owner to use.” J.A. 20742. Plaisant also indicated that
an “advantage of the sliding movement is that it is less
likely to be done inadvertently.” J.A. 20743. Plaisant was
thus directed to solving the same problem in the same
area as the patented invention. 4
4 Even if the ’721 patent had identified the pocket-
dialing problem, the Supreme Court in KSR made clear
that the prior art need not solve all problems or even
address the specific problems that motivated the patent-
ee. 550 U.S. at 420. Here, moreover, the pocket dialing
problem would provide an additional reason to combine,
not a reason not to combine.
12 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
The majority’s approach will create significant oppor-
tunities to dismiss relevant prior art and find almost any
patent nonobvious by narrowly defining the relevant
technology. In this respect, the en banc decision will work
a significant change on future cases in the district courts
and the PTO.
This change is evident from comparing the majority’s
holding here to our past jurisprudence. We have previ-
ously held that “[a] reference is reasonably pertinent if,
even though it may be in a different field from that of the
inventor’s endeavor, . . . [it] logically would have com-
mended itself to an inventor’s attention in considering his
problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
“We therefore have concluded, for example, that an inven-
tor considering a hinge and latch mechanism for portable
computers would naturally look to references employing
other housings, hinges, latches, springs, etc., which in
that case came from areas such as a desktop telephone
directory, a piano lid, a kitchen cabinet, a washing ma-
chine cabinet, a wooden furniture cabinet, or a two-part
housing for storing audio cassettes.” In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007) (inter-
nal quotation marks omitted). Even if cited prior art
references “are not within the same field of endeavor . . . ,
such references may still be analogous if they are reason-
ably pertinent to the particular problem with which the
inventor is involved.” In re Paulsen, 30 F.3d 1475, 1481
(Fed. Cir. 1994) (internal quotation marks omitted).
Not only does the majority alter our jurisprudence
with respect to district court proceedings, its approach
would affect patent examiners who are currently instruct-
ed that analogous prior art “does not require that the
reference be from the same field of endeavor as the
claimed invention.” Manual of Patent Examination
Procedure § 2141.01(a).
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 13
VI
Fifth, the majority errs in elevating secondary consid-
erations of nonobviousness beyond their role as articulat-
ed by the Supreme Court. Secondary considerations
“without invention[] will not make patentability.”
Sakraida, 425 U.S. at 278 (internal quotation marks
omitted). Thus, when, as here, a patent is plainly not
inventive, that is, when the prima facie case of obvious-
ness is strong, secondary considerations carry little
weight.
The majority holds that secondary considerations must
“always” be considered and that even a strong case of
obviousness involving small advances in the prior art can
be outweighed by secondary considerations. Maj. Op. at
22. Here, the majority is quite explicit. It concludes that
“[t]o the extent that Samsung’s [arguments] should be
interpreted as precluding a jury finding of long-felt need
favoring non-obviousness when the difference between the
prior art and the claimed invention is small, we reject
such a categorical rule. This type of hard and fast rule is
not appropriate for the factual issues that are left to the
province of the jury.” Maj. Op. at 39. In this respect, the
majority effectively overrules our earlier decision in
George M. Martin Co. v. Alliance Machine Systems Inter-
national LLC, which held that “[t]he district court correct-
ly concluded as a matter of law that the differences
between the prior art and the claimed improvement were
minimal,” 618 F.3d 1294, 1302 (Fed. Cir. 2010), and that
“[w]here the differences between the prior art and the
claimed invention are as minimal as they are here, . . . it
cannot be said that any long-felt need was unsolved,” id.
at 1304. The majority’s approach to other secondary
considerations mirrors its discussion of long-felt need.
But under Supreme Court authority, secondary considera-
tions are insufficient to outweigh a strong case of obvi-
ousness involving small advances over the prior art.
14 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
KSR and Graham assigned a limited role to secondary
considerations. KSR required inquiry into secondary
considerations only “where appropriate.” 550 U.S. at 415
(emphasis added). In Graham, secondary considerations
are referred to as factors that “might be utilized to give
light to the circumstances.” 383 U.S. at 17 (emphasis
added). For example, the Graham Court weighed (in
evaluating the Scoggin insecticide sprayer patent) that
despite the presence of “long-felt need in the industry”
and “wide commercial success” of the patentee, “these
factors do not, in the circumstances of this case, tip the
scales of patentability.” 383 U.S. at 35–36. This was so
because in that case the invention “rest[ed] upon exceed-
ingly small and quite non-technical mechanical differ-
ences in a device which was old in the art.” Id. at 36.
Similarly, even though the patentee in KSR introduced
evidence of commercial success, 550 U.S. at 413, the
Court dismissed it because it “conclude[d] Teleflex has
shown no secondary factors to dislodge the determination
that claim 4 is obvious.” Id. at 426.
Before Graham, the Supreme Court repeatedly held
that courts should give secondary considerations limited
weight in the ultimate legal determination of obviousness
and that the courts need not consider them where the
claimed invention represents a small advance and there is
a strong case for obviousness. For example, Jungersen v.
Ostby & Barton Co. taught that “[t]he fact that this
process has enjoyed considerable commercial success . . .
does not render the patent valid. It is true that in cases
where the question of patentable invention is a close one,
such success has weight in tipping the scales of judgment
toward patentability. Where, as here, however, invention
is plainly lacking, commercial success cannot fill the
void.” 335 U.S. 560, 567 (1949) (citations omitted).
Similarly, in Dow Chemical Co. v. Halliburton Oil Well
Cementing Co., the Court explained that “petitioner
claims that the Grebe-Sanford process has filled a long-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 15
felt want and has been a commercial success. But these
considerations are relevant only in a close case where all
other proof leaves the question of invention in doubt.
Here the lack of invention is beyond doubt and cannot be
outweighed by such factors.” 324 U.S. 320, 330 (1945)
(citations omitted). Goodyear Tire & Rubber Co. v. Ray-O-
Vac Co. cautioned that “[t]hese factors [are] entitled to
weight in determining whether the improvement amount-
ed to invention and should, in a close case, tip the scales
in favor of patentability.” 321 U.S. 275, 279 (1944). 5
These pre-KSR “decisions remain binding precedent until
[the Supreme Court] see[s] fit to reconsider them . . . .”
Hohn v. United States, 524 U.S. 236, 252–53 (1998).
This case also is not a close one. The combination of
references, the known problem, the predictable results,
and the exceedingly small differences from the prior art
make the combination evident and secondary considera-
tions insufficient as a matter of law.
VII
Finally, even if secondary considerations in this case
were legally relevant, the majority fails to compare to the
5 Anderson’s–Black Rock taught that although “[i]t
is . . . fervently argued that the combination filled a long
felt want and has enjoyed commercial success[,] . . . those
matters without invention will not make patentability.”
396 U.S. at 61 (internal quotation marks omitted) (cita-
tions omitted). Great Atlantic & Pacific Tea Co. v. Su-
permarket Equipment Corp. similarly taught that “[t]he
Court of Appeals and the respondent both lean heavily on
evidence that this device filled a long-felt want and has
enjoyed commercial success. But commercial success
without invention will not make patentability.” 340 U.S.
147, 153 (1950). These cases are cited with approval in
KSR or Graham. See 550 U.S. at 416–17; 383 U.S. at 6.
16 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
closest prior art to properly assess the innovation over the
prior art. Secondary considerations must be directed to
what is claimed to be inventive, because secondary con-
siderations “without invention[] will not make patentabil-
ity.” Sakraida, 425 U.S. at 278 (internal quotation marks
omitted). It requires comparison to prior art that reflects
known advances. In other words, there must be a demon-
strated nexus to the claimed invention—a nexus to what
is new in comparison to the prior art. Furthermore, the
proponent of such evidence of secondary considerations, in
this case Apple, “bears the burden of showing that a
nexus exists between the claimed features of the inven-
tion and the objective evidence offered to show non-
obviousness.” WMS Gaming, Inc. v. Int’l Game Tech., 184
F.3d 1339, 1359 (Fed. Cir. 1999).
Our court has previously adopted the closest prior art
as the relevant comparison for secondary considerations.
In Bristol-Myers Squibb Co. v. Teva Pharmaceuticals
USA, Inc., we noted that “the district court found evidence
of some secondary considerations of nonobviousness . . . .
To be particularly probative, evidence of [secondary
considerations] must establish that there is a difference
between the results obtained and those of the closest prior
art . . . .” 752 F.3d 967, 977 (Fed. Cir. 2014) (emphasis
added) (internal quotation marks omitted). In another
example, in Kao Corp. v. Unilever United States, Inc., we
observed that while the “district court . . . concluded . . .
that secondary considerations . . . were sufficient to rebut
the prima facie case, . . . the district court failed to use the
closest prior art.” 441 F.3d 963, 969 (Fed. Cir. 2006)
(emphasis added). Thus, ascertaining the significance of
the innovative leap over the prior art using secondary
considerations requires a comparison to the closest prior
art. This framework no longer governs under the majori-
ty’s approach.
The majority’s secondary considerations analysis re-
peatedly compares the ’721 and ’172 patents to inferior or
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 17
non-existent prior art, rather than to the relevant, closest
prior art. Specifically, the evidence relied upon by the
majority with respect to the secondary considerations
makes no comparison, with respect to the ’721 patent, to
Neonode and the claimed innovation of the image associ-
ated with the slide to unlock feature, and with respect to
the ’172 patent, to Robinson and the claimed innovation of
displaying the currently typed string of text.
For example, for commercial success, Apple and the
majority rely on survey evidence developed for Apple’s
damages case that consumers are more likely to purchase
(and pay more for) a phone with a slide to unlock feature
and an autocorrect function than a phone without these
features. Maj. Op. at 35–36, 48. However, this is an
irrelevant comparison because Neonode provides a slide-
to-unlock feature and Robinson provides an autocorrect
function. There was no showing of nexus between the
inventive steps (over the closest prior art) disclosed by the
’721 and ’172 patents and the surveyed consumer de-
mand. For long-felt but unresolved need, the majority
compares to an older Nokia device with a very different
non-touchscreen, button-based unlocking feature, Maj.
Op. at 40, as well as to Samsung touchscreen unlocking
mechanisms that do not have the slide-to-unlock feature
of Neonode, Maj. Op. at 40–41. The majority also cites
Steve Job’s unveiling of the slide to unlock feature at an
Apple event and the audience’s cheers as evidence of
industry praise for the ’721 patent. Maj. Op. at 34.
Again, however, Apple provides no evidence that this
praise was specifically for the ’721 patent’s innovative
step beyond Neonode or even that the audience was
comprised of industry experts. The majority thus errs in
elevating such irrelevant comparisons as providing “par-
ticularly strong” and “powerful[]” evidence of nonobvious-
ness. Maj. Op. at 43.
18 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
In summary, the majority decision here materially
raises the bar for obviousness by disregarding Supreme
Court precedent.
VIII
A
Finally, I address the ’647 patent which presents
issues of infringement rather than obviousness. The
“analyzer server” limitation requires that the analyzer
server “run” separately, and there is no substantial evi-
dence that Samsung’s devices embody the “analyzer
server” limitation because the shared library code does
not run separately. That the majority substitutes its own
claim construction (requiring only separate storage) for
the parties’ agreed construction that the analyzer server
must “run” separately is both improper and unwise.
In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.,
the Supreme Court made clear the principle “that a judge,
in construing a patent claim, is engaged in much the same
task as the judge would be in construing other written
instruments, such as . . . contracts.” 135 S. Ct. 831, 833
(2015). In the contract area, it is established that the
parties’ interpretation of the contract’s terms is generally
entitled to significant if not dispositive weight. 6 The same
6 “Where the parties have attached the same mean-
ing to a promise or agreement or a term thereof, it is
interpreted in accordance with that meaning.” Restate-
ment (Second) of Contracts §201(1) (1981). In contract
interpretation, “it [is] clear that the primary search is for
a common meaning of the parties, not a meaning imposed
on them by the law.” Id. cmt. c. “[A]uthority . . . supports
giving effect to a common meaning shared by both parties
in preference to” a meaning imposed by the courts. 2
FARNSWORTH ON CONTRACTS (3d) § 7.9 (2004). See also 5
CORBIN ON CONTRACTS (Rev.) § 24.5 (1998) (When “the
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 19
should be true where the parties agree as to the meaning
of technical terms in infringement litigation, where the
outcome affects only the particular parties to the dispute.
The majority here inappropriately declines to give the
parties’ agreed claim construction any weight, much less
significant or dispositive weight.
B
In the original Motorola claim construction, an “ana-
lyzer server” must be a “server routine,” consistent with
the “plain meaning of ‘server.’” 757 F.3d at 1304. That is,
the analyzer server must run separately from the client
application it serves. Id. Both parties agreed at oral
argument to this construction. Apple’s counsel stated
that “we agree actually that [the analyzer server] has to
be run separately from the client.” Oral Argument at
29:29–35. Samsung’s counsel likewise agreed that the
analyzer server “must run” separately from the client. Id.
at 7:25–26. This agreed-upon construction was reiterated
by the parties on their petitions for rehearing. Apple
argued that Samsung’s shared library code is an analyzer
server because it “runs separately from the client applica-
tions it serves.” 7 Samsung responded that Apple had
parties attach the same meaning to a contract term . . . ,
the contract is enforceable in accordance with that mean-
ing.”). This principle has been applied as well by the
Courts of Appeals. See Ahmad v. Furlong, 435 F.3d 1196,
1203 (10th Cir. 2006) (recognizing the impropriety of “a
court’s resolving a contractual ambiguity contrary to the
intent of both contracting parties.”); James v. Zurich-Am.
Ins. Co. of Ill., 203 F.3d 250, 255 (3d Cir. 2000) (“[T]he
consistent practical construction given to that provision
by the parties to the contract controls its terms.”).
7 Apple Inc.’s Corrected Combined Petition for Pan-
el Rehearing and Rehearing En Banc 5, ECF No. 93.
20 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
failed to show infringement of “an analyzer server that
ran separately from the program it serves.” 8
Running separately is indeed the only construction
which is consistent with an “analyzer server” program
that “receives data having structures from the client,”
processes the data, and then returns it to the client.
Motorola, 757 F.3d at 1304–05. 9 The so-called “library
program” present in the accused Samsung device cannot
be an “analyzer server” and thus cannot satisfy the claim
limitation. The parties’ experts agreed that a library
program is a collection of code that can be accessed by
other applications in the accused Samsung device. 10 As
the name implies, a client application can go to the soft-
ware library and “borrow” (i.e., use) code from the library
to perform a specific needed task rather than having to
program that functionality into the client application. As
we held in Motorola, in the required client-server imple-
mentation, the client sends information to an independent
server which then performs a task using that information
and sends information back to the client application. See
8 Response to Combined Petition for Panel Rehear-
ing and Rehearing En Banc 6, ECF No. 97 (internal
quotation marks omitted).
9 This is consistent with the district court’s finding
that an analyzer server is “a server routine separate from
a client that receives data having structures from the
client,” and is “definitely separate from the [client] appli-
cations.” J.A. 46–47 (internal quotation omitted).
10 See J.A. 13054 (Apple expert testifying that soft-
ware library code is “written as software that any pro-
gram can go and access and execute”); J.A. 11792
(Samsung expert testifying that software libraries are
“bits of code that exist so that all programmers can use
them”).
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 21
757 F.3d at 1304–05. That is not what a library program
does.
The majority explicitly rejects the parties’ agreed con-
struction and affirms the infringement verdict on the
basis of its own claim construction that an “analyzer
server” requires only separate storage. Maj. Op. at 9–10,
15. Something which is “stored” separately is not “run”
separately. The majority’s approach is inconsistent with
our appellate function.
The majority claims that the dissent takes Apple’s
concession that the analyzer server must run separately
“out of context.” Maj. Op. at 12. Apple’s statement as to
claim scope was no slip of the tongue. It was repeated
four times at the oral argument, 11 and reiterated explicit-
ly in the Apple petition for rehearing.
The majority also makes much of Apple’s insistence
that there is no claim construction requirement that the
analyzer server be a “standalone” program, and that the
panel erred in equating running separately with a
standalone program. Running separately and being
standalone may indeed be different concepts (because
standalone implies that no assistance is provided by other
hardware or software), but that makes no difference to
this case. Even if the claim construction does not require
a standalone program, the analyzer server still “must run
separately from the program it serves.” Panel Op., 816
F.3d 788, 796.
11 Oral Arg. at 29:30–35 (“We agree that it has to be
run separately from the client.”); 30:28–39 (Q: “Did [the
Apple expert] say it was run separately from the client
program?” A: “Yes.”); 45:09–11 (“it’s run at the analyzer
server separately”); 45:27–33 (Q: “[T]he question is
whether it runs separately.” A: “And Dr. Mowry [Apple
expert] said it was.”).
22 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
Separate storage is not separate running. Crucially,
there is no evidence in the record that shared library code
runs separately, or is capable of running separately.
Apple’s expert only testified that the accused code uses
the shared library code; he admitted that the shared
library code was incapable of running separately. See J.A.
13054 (testifying that the shared library code could not
run “outside of the client application”); Apple Inc. v.
Samsung Elecs. Co., No. 5:12-cv-630, Trial Tr. of Apr. 28,
2014 at 3052, ECF No. 1928 (agreeing that the accused
code “can’t run on its own”); J.A. 13035 (testifying that
the Samsung applications “go to that code and use it
where it is each time they want to access that code”
(emphasis added)); J.A. 13036 (“And all those applications
go to the shared library code in the one place that exists
in the computer memory hardware to use it.” (emphasis
added)); J.A. 13037 (testifying that Samsung application
software “has access to the code and it goes to the code
where it is and uses it there” (emphasis added)). In other
words, it is the client, not the analyzer server, that runs
the library program. The library program is not run
separately by the analyzer server as required by the
claim.
C
There are important reasons why an appellate court
should not reject the parties’ agreed claim construction.
In this case as in other patent cases, we are dealing with
complex technology that is beyond the knowledge of lay
judges. “[T]he judiciary . . . is most ill-fitted to discharge
the technological duties cast upon it by patent legisla-
tion.” Graham, 383 U.S. at 36. “[C]onsciousness of their
limitations should make [the courts] vigilant against
importing their own notions of the nature of the creative
process . . . .” Marconi Wireless Tel. Co. v. United States,
320 U.S. 1, 61–62 (1943) (Frankfurter, J., dissenting).
Substituting the views of lay judges for the agreement of
the parties, who are intimately familiar with the technol-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 23
ogy, risks getting the construction quite wrong. This is
exactly what happened here. The majority got the claim
construction wrong, as a result of its freelance reinterpre-
tation of “analyzer server” which departs from the parties’
agreed-upon construction. It is difficult enough for the
court to arrive at a claim construction when the parties
disagree. Courts should be very wary to override the
parties’ agreement as to claim construction when the
parties are the experts in the technical matters.
For all these reasons, I respectfully dissent.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC., A CALIFORNIA CORPORATION,
Plaintiff-Cross-Appellant
v.
SAMSUNG ELECTRONICS CO., LTD., A KOREAN
CORPORATION, SAMSUNG ELECTRONICS
AMERICA, INC., A NEW YORK CORPORATION,
SAMSUNG TELECOMMUNICATIONS AMERICA,
LLC, A DELAWARE LIMITED LIABILITY
COMPANY,
Defendants-Appellants
______________________
2015-1171, 2015-1195, 2015-1994
______________________
Appeals from the United States District Court for the
Northern District of California in No. 5:12-cv-00630-LHK,
Judge Lucy H. Koh.
______________________
REYNA, Circuit Judge, dissenting.
The court should not have granted en banc review in
this case. En banc review is disfavored and granted only
when necessary to secure or maintain uniformity of the
court’s decisions or when the proceeding involves a ques-
tion of exceptional importance. Fed. R. App. Proc. 35(a);
Missouri v. Jenkins, 495 U.S. 33, 46 n.14 (1990). This
case meets neither requirement. The en banc decision
2 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
neither resolves a disagreement among the court’s deci-
sions nor answers any exceptionally important question.
Applying Rule 35, this court has found a variety of
grounds to support an en banc review. One reason we
take cases en banc is to overrule precedent. See, e.g., In re
Tam, 808 F.3d 1321, 1330, n.1 (Fed. Cir. 2015), as correct-
ed (Feb. 11, 2016); Williamson v. Citrix Online, LLC, 792
F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015). Another is to
consider whether prior decisions remain sound in light of
later Supreme Court decisions. See, e.g., Lexmark Int’l,
Inc. v. Impression Prod., Inc., 816 F.3d 721, 726 (Fed. Cir.
2016); SCA Hygiene Prod. Aktiebolag v. First Quality
Baby Prod., LLC, 807 F.3d 1311, 1315 (Fed. Cir. 2015).
We also take cases en banc to review whether a panel
properly interpreted a statute, such as in a case of first
impression. See, e.g., Suprema, Inc. v. Int’l Trade
Comm’n, 796 F.3d 1338, 1344–45 (Fed. Cir. 2015). We
have also taken cases en banc to “set forth the law” on an
issue the Supreme Court has invited us to revisit. See,
e.g., Akamai Techs., Inc. v. Limelight Networks, Inc., 797
F.3d 1020, 1022 (Fed. Cir. 2015). The majority opinion
today does not purport to do any of these. 1
Instead, the majority opinion reverses the panel based
on its disagreement on extremely narrow questions—the
claim construction of a single patent, whether substantial
evidence exists to support certain jury factual findings,
and the ultimate determination of obviousness for two
patents. The majority opinion is based on a belief that
the panel’s decision was wrong in its application of exist-
ing law to the facts of the case, and in its understanding
1 I agree with Chief Judge Prost’s and Judge Dyk’s
dissents in that the majority’s application of law to the
facts of this case seems inconsistent with Supreme Court
precedent on obviousness and substantial evidence.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 3
of the facts of the case. Neither reason justifies en banc
review.
Granting en banc review merely because the panel al-
legedly reached the incorrect result “reduces the ‘excep-
tional importance’ test” to one based on “result-oriented
criteri[a].” Bartlett ex rel. Neuman v. Bowen, 824 F.2d
1240, 1242 (D.C. Cir. 1987) (Edwards, J., joined by Wald,
C.J. and Circuit Judges R. B. Ginsburg, Mikva, and
Robinson, concurring in denials of rehearing en banc).
“The fact that 6 of 11 judges agree with a particular result
does not invest that result with any greater legal validity
than it would otherwise have.” Id. at 1243.
Judges on this court have explained that en banc re-
view should be reserved for matters of exceptional im-
portance or to maintain uniformity in our precedent.
When a panel opinion “is not viewed as having changed
the law,” disagreement with the panel’s decision “is not a
sufficient reason for en banc review.” Dow Chem. Co. v.
Nova Chems. Corp. (Canada), 809 F.3d 1223, 1227–28
(Fed. Cir. 2015) (Moore, J., joined by Newman, O’Malley,
and Taranto, JJ., concurring in denial of rehearing en
banc). En banc intervention should be reserved for actual
conflicts between precedential cases and for cases of
exceptional importance. DSU Med. Corp. v. JMS Co., 471
F.3d 1293, 1311 (Fed. Cir. 2006) (Michel, C.J. and Mayer,
J., concurring). 2
2 A survey of this issue shows that judges on every
circuit have agreed that en banc review should be re-
served for such circumstances. For example, “if the legal
standard is correct, then the full court should not occupy
itself with whether the law has been correctly applied to
the facts.” Watson v. Geren, 587 F.3d 156, 160 (2d Cir.
2009) (per curiam). “If that were the appropriate course,
then our dockets would be overloaded with en banc polls
4 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
The role of an en banc court is “not simply to second-
guess the panel on the facts of a particular case.” In re
Dillon, 919 F.2d 688, 700 n.3 (Fed. Cir. 1990) (Newman,
J., joined by Cowen and Mayer, JJ., dissenting). Not
every error by a panel is “enbancable,” and “[a] panel is
entitled to err without the full court descending upon it.”
Amgen Inc. v. Hoechst Marion Roussel, Inc., 469 F.3d
1039, 1043 (Fed. Cir. 2006) (Lourie, J., concurring in
denial of rehearing en banc).
Under principles of judicial economy, the Federal
Rules of Appellate Procedure instruct us to limit our en
banc review to cases presenting important issues meriting
the court’s full resources and careful attention. Fed. R.
App. P. 35.
The decision to grant en banc consideration is un-
questionably among the most serious non-merits
contesting a panel’s examination of particular sets of
facts.” Id. Even if a panel allegedly errs, en banc review
is not warranted when “the error would at most amount
to one of misapplication of precedent to the facts at hand.”
United States v. Nixon, 827 F.2d 1019, 1023 (5th Cir.
1987) (per curiam).
Disagreement with a panel decision is not a sufficient
ground for an en banc rehearing. Mitchell v. JCG Indus.,
Inc., 753 F.3d 695, 699 (7th Cir. 2014) (Posner, J., concur-
ring in denial of rehearing en banc). “[T]here are stand-
ards for granting rehearing en banc, and for obvious
reasons they do not include: ‘I disagree with the panel
majority.’” Id. “In considering rehearing requests, the
inquiry should not be, ‘would I have voted differently than
the panel majority,’ but rather, ‘is the issue this case
presents particularly important or in tension with prece-
dent.’” United States v. Foster, 674 F.3d 391, 409 (4th Cir.
2012) (Wynn, J., dissenting from denial of rehearing en
banc).
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 5
determinations an appellate court can make, be-
cause it may have the effect of vacating a panel
opinion that is the product of a substantial ex-
penditure of time and effort by three judges and
numerous counsel. Such a determination should
be made only in the most compelling circumstanc-
es.
Bartlett, 824 F.2d at 1242.
The issues the majority opinion addresses are not
such issues, as it claims to apply existing law to the facts
of the case. The majority opinion does not explore the
applicability of existing law, or the first interpretation of
a statute. The opinion does not claim to change the law or
lead to a greater understanding of the law as its result.
In sum, the majority’s en banc review is simply a do over.
My concern here is that we have made exceptional
something that is unexceptional. I see lurking in this
matter potential for damage to our system of justice. I
agree with Justice Cardozo that law should be “uniform
and impartial,” and that “[t]here must be nothing in its
action that savors of prejudice or favor or even arbitrary
whim or fitfulness.” Benjamin N. Cardozo, The Nature of
the Judicial Process 112 (1921). En banc reviews under-
taken on bases that are not of exceptional importance or
to maintain uniformity in the court’s decisions will create
jurisprudence based on arbitrary whim and fitfulness.
The majority opinion is not a response to specific legal
questions, as is typically the case for an en banc review.
Indeed, en banc questions were not presented to the
public, new or supplemental briefing was not ordered, and
additional oral argument was not held. The majority
based its “substantial evidence” review on the original
briefs and record before the court.
Yet, I discern certain legal issues that I believe the
court could or should have explicitly addressed. I address
6 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
two such issues below: substantial evidence and objective
indicia of nonobviousness.
1. SUBSTANTIAL EVIDENCE
The en banc court reverses the panel’s decision be-
cause it disagrees with the panel about whether substan-
tial evidence supports the jury’s implicit factual findings
underlying its obviousness and infringement verdicts. As
Chief Judge Prost’s dissent explains, the majority opinion
misapplies the substantial evidence standard of review.
It is not apparent what type of substantial evidence
review standard—if any—the majority opinion applies.
Merely reciting all of the evidence that arguably tangen-
tially relates to the factual findings at issue is not con-
sistent with the Supreme Court’s case law on substantial
evidence. See, e.g., Con. Edison Co. v. Nat’l Labor Rela-
tions Bd., 305 U.S. 197, 229–30 (1938).
In reviewing a jury’s obviousness verdict, “we review
all of the jury’s explicit and implicit factual findings for
substantial evidence.” Kinetic Concepts, Inc. v. Smith &
Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012). “We
then examine the legal conclusion of obviousness de novo
to determine whether it is correct in light of the factual
findings that we find adequately supported.” Id. (citing
Jurgens v. McKasy, 927 F.2d 1552, 1557 (Fed. Cir. 1991)).
The majority opinion implies that any evidence is
substantial evidence, and that therefore we cannot actual-
ly examine the evidence presented to determine whether
it actually supports the findings it is alleged to support.
For example, the opinion cites survey evidence that
consumers would rather purchase devices with a slide-to-
unlock feature preventing accidental unlocking than
purchase devices without a feature preventing accidental
unlocking. Maj. Op. 35–36; J.A. 21066. This evidence is
cited as substantial evidence of commercial success of the
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 7
’721 patent, which claims a particular slide-to-unlock
feature.
But prior art devices, such as the Neonode, included
similar slide-to-unlock features, so evidence of commercial
success tied to the mere presence of such a feature—and
not the novel aspects of it—is not substantial evidence of
commercial success. “Where the offered secondary con-
sideration actually results from something other than
what is both claimed and novel in the claim, there is no
nexus to the merits of the claimed invention.” In re Huai-
Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (empha-
sis original); see also, e.g., Tokai Corp. v. Easton Enters.,
Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If commercial
success is due to an element in the prior art, no nexus
exists.”). 3 Such survey evidence cannot support an implic-
it jury finding of any commercial success.
I believe that a district court or this court, when re-
viewing whether findings of fact are supported by sub-
stantial evidence, must actually review the evidence. It
should determine if it is substantial evidence, as opposed
to merely evidence. As the majority opinion does not do
so today, perhaps an en banc opinion explaining this
court’s role in substantial evidence review is warranted.
The court en banc could provide guidance on what the
substantial evidence standard means and how it is ap-
plied when we review the factual findings that underlie
jury verdicts. 4
3 Samsung argued in its briefing on appeal that
Apple had not established a nexus between this evidence
and the slide-to-unlock feature. Samsung Br. 37; see also
Samsung Response & Reply Br. 21.
4 As the case before us demonstrates, different ap-
pellate judges can review the same evidence and disagree
whether it is substantial evidence in support of a jury’s
8 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
2. OBVIOUSNESS ANALYSIS
I see an additional implicit dispute underlying the en
banc court’s reversal of the panel’s obviousness determi-
nations, one that might have served as proper grounds for
en banc review in this case.
The original panel opinion could arguably be inter-
preted as applying a burden-shifting analysis for deter-
mining whether a patent is obvious. For example, it said
“the prima facie case of obviousness was strong. Apple’s
evidence of secondary considerations was weak and did
not support a conclusion that the ’721 patent was nonob-
vious.” Apple, 816 F.3d at 804. In addition, in his dis-
sent, Judge Dyk cites Supreme Court precedent in
factual findings, and they can interpret the same patent
and decide on a different claim construction. Judges can
and often do disagree on results, as demonstrated by the
frequent number of split panels.
Here, for example, the majority opinion finds that
substantial evidence supports an implicit jury factual
finding of commercial success for the ’721 patent. Maj.
Op. 38. As an example of such evidence, it cites Apple’s
expert testimony that “clearly there’s been commercial
success of the iPhones that use this invention.” Id. at 35.
In contrast, the panel did not even find this testimony
worth mentioning in its analysis that no nexus existed
between Apple’s commercial success evidence and the
merits of Apple’s ’721 patent. Apple Inc. v. Samsung
Elecs. Co., 816 F.3d 788, 806 (Fed. Cir. 2016). We have
repeatedly stated that that conclusory testimony does not
suffice as substantial evidence, see, e.g., Whitserve, LLC v.
Comput. Packages, Inc., 694 F.3d 10, 24 (Fed. Cir. 2012),
and that evidence of commercial success is not substantial
evidence unless there is a nexus between it and the
merits of the claimed invention, see, e.g., Merck & Cie v.
Gnosis S.P.A., 808 F.3d 829, 837 (Fed. Cir. 2015).
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 9
making a forceful argument that secondary considerations
of non-obviousness carry little weight where strong evi-
dence of obviousness exists.
The majority opinion states that “[a] determination of
whether a patent claim is invalid as obvious under § 103
requires consideration of all four Graham factors, and it is
error to reach a conclusion of obviousness until all those
factors are considered.” Maj. Op. 22. It notes that
“[o]bjective indicia of non-obviousness must be considered
in every case where present.” Id.
We addressed this issue in In re Cyclobenzaprine Hy-
drochloride Extended-Release Capsule Patent Litig., 676
F.3d 1063 (Fed. Cir. 2012). We explained that applying a
burden-shifting framework in district court proceedings
was inconsistent with this court’s decision in Stratoflex,
Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir.
1983). 676 F.3d at 1076–80. We noted that such a bur-
den-shifting framework only “ma[d]e sense” in the context
of prosecuting patents before the U.S. Patent and Trade-
mark Office. Id. at 1080 n.7.
It seems to me that the court disagrees over the role
objective indicia play in the court’s analysis of the ulti-
mate determination of obviousness. If so, we should
candidly address this issue en banc.
The legal questions I see here include (1) whether an
obviousness analysis involving secondary considerations
(or objective indicia of non-obviousness) is a one- or two-
step process and (2) how much weight to accord secondary
considerations in the obviousness analysis.
These are important issues that should be addressed
in the front room of the courthouse, with all stakeholders
at the litigation table. Because we failed to do so in this
case, I respectfully dissent.