In a Federal Circuit decision handed down recently, the appeals court overturned a $120 million jury verdict awarded to Apple. Samsung prevailed in this, the third appeal in this litigation. Two of Apple’s patents were found to be invalid, while three others did not infringe, according to the opinion. The Court held that Apple’s patents directed to autocorrect and slide-to-unlock features were obvious in view of prior publications and invalidated them. Two other patented features, a data structure analyzer server (i.e., the feature that recognizes telephone numbers and email addresses and creates links) and universal search, were not present in the Samsung device and thus did not infringe the claims asserted by Apple. To make matters worse (for Apple), Apple was found to infringe one of Samsung’s patents, although for the relatively paltry sum of $158,000. Still, one would presume a moral victory for Samsung. 

One of the statutory requirements for patentability is nonobviousness. The Federal Circuit’s opinion indicates that weak secondary considerations of nonobviousness generally do not overcome a strong prima facie case of obviousness. According to the Court, Apple’s patented inventions involved nothing more than the predictable use of prior art elements according to their established functions, and Apple attempted to overcome the obviousness attack by presenting evidence of the popularity and commercial success. Evidence of industry praise in the form of approval by Apple fans—i.e., persons who may or may not have been skilled in the art—during the presentation of the iPhone is not legally sufficient.
 
Further, Apple presented evidence of commercial success, another secondary consideration. But the Court indicated that customers’ preferences for a device with a slide-to-unlock capacity does not show a nexus to the patented invention when Apple presented no evidence to show what alternative device consumers were comparing that device to. For example, it is not clear whether the alternative device had any unlocking feature. Evidence of copying and long-felt need were also rejected, as the copied feature was shown in the prior art, and the long-felt need was merely an unsupported assertion by Apple that the feature was “more intuitive.”
 
If your company is asserting a patent in an infringement suit, it is important to analyze the defendant’s obviousness analysis and determine if only secondary considerations can be presented to rebut the obviousness case. If direct evidence of nonobviousness is unavailable, it is important to strengthen your secondary considerations by presenting targeted survey evidence with feature-by-feature comparisons, and to provide industry praise by experts—i.e., persons skilled in the subject matter.

To learn more about this case, click here to read a recent Reuters article.

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