After the jury trial between Apple and Samsung, and shortly before the July 10, 2014 hearing on post-trial motions, Samsung requested leave to file supplemental briefing to argue that the asserted claims of two of Apple's patents were invalid under 35 U.S.C. § 101, in light of the Supreme Court's decision in Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (June 19, 2014) ("Alice").
The district court permitted the filing of the supplemental briefing on the invalidity issued, but ultimately concluded that Samsung had not timely raised the invalidity issue. "The Court concludes in this case that Samsung could have--but failed to--preserve § 101 invalidity defenses, and that Samsung's request for the Court to adjudicate a legal theory that was disclosed after trial is untimely, regardless of the Supreme Court's intervening decision in Alice. Accordingly, the Court will not consider the merits of Samsung's § 101 arguments."
The district court found that "Samsung's request is a belated attempt to litigate entirely new substantive defenses. Samsung seeks post-trial judgment as a matter of law of invalidity under § 101 for the '959 and '721 patents, Supp. Br. at 1, and claims that supplemental briefing 'would assist the Court in assessing the impact of Alice on the pending post-trial motions,' Req. at 1. However, Samsung failed to assert and to preserve § 101 defenses for any Apple patents before, during, or after trial, and now fails to demonstrate good cause for the Court to evaluate new defenses."
The district court first rejected Samsung's claim that it preserved its invalidity defense, finding that Samsung's experts had not disclosed any opinion regarding section 101. "Samsung cites statements in its May 24, 2013 disclosures of invalidity contentions to Apple. See ECF No. 540-16 at 66-67 (contentions for '959 patent), 113-14 (contentions for '721 patent). However, those disclosures were very brief and served over ten months prior to trial, which started on March 31, 2014. After Samsung served those invalidity contentions, the parties proceeded with expert discovery. Samsung's technical experts on invalidity for the '959 and '721 patents (Drs. Martin Rinard and Saul Greenberg, respectively) did not disclose any opinions regarding § 101 in their reports. As a result, the parties have not provided any expert opinions (or other potentially relevant evidence) regarding their § 101 arguments. Samsung also declined to assert § 101 in summary judgment motions. Samsung has identified no other disclosure after its May 24, 2013 invalidity contentions where Samsung stated that it would continue to assert § 101."
The district court also found that Samsung had not raised the defense in the pre-trial order nor in any of its JMOL filings. "Next, Samsung argues that it preserved § 101 "by seeking a declaration of invalidity in the Joint Amended Pretrial Statement," and that "the defense was undeniably 'implicit' in the Joint Pretrial Statement's request for an invalidity finding - a request that necessarily incorporated Samsung's invalidity contentions, including their discussion of §101." Reply at 4. Samsung's arguments are misplaced. On March 13, 2014, the parties filed a Joint Amended Pretrial Statement and Proposed Order, listing all remaining disputed issues. ECF No. 1455-1. Samsung enumerated 31 disputed legal issues--including defenses under 35 U.S.C. §§ 102, 103, and 112--but did not identify any § 101 defenses against any Apple patents, nor incorporate Samsung's earlier invalidity contentions."
"Critically, Samsung did not raise § 101 at trial or in any pre-verdict or post-verdict motions for judgment as a matter of law ("JMOL"). During trial, Samsung filed multiple pre-verdict JMOL motions under Fed. R. Civ. P. 50(a). See ECF Nos. 1663, 1806-1. Then, Samsung filed a renewed post-verdict JMOL motion under Fed. R. Civ. P. 50(b). See ECF No. 1896-3. In those motions, Samsung identified numerous invalidity defenses, including anticipation, obviousness, and indefiniteness. See, e.g., ECF No. 1806-1 at 4-5; ECF No. 1896-3 at 28-34. However, in none of those motions did Samsung seek judgment under § 101."
Finally, the district court rejected Samsung's assertion that the timing of the Alice decision excused Samsung's delay in raising any § 101 defenses because Alice was issued on June 19, 2014. "Any uncertainty in the law due to the pending Alice decision did not excuse Samsung's delay. Tellingly, Samsung raised and maintained invalidity defenses based on indefiniteness under § 112 throughout trial and post-trial motions, even though the Supreme Court's decision on indefiniteness in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (June 2, 2014), was pending during those times. Indeed, in its May 23, 2014 post-trial JMOL motion, Samsung noted the pending decision in Nautilus, excerpts from the U.S. Supreme Court oral argument, and the competing proposed legal standards for indefiniteness that were under consideration, and argued that claim 25 of the '959 patent would be invalid under any of those proposed standards. See ECF No. 1896-3 at 33-34 & n.4. By contrast, Samsung made no such effort regarding § 101 defenses. The Supreme Court granted certiorari in Alice on December 6, 2013, before it granted certiorari in Nautilus on January 10, 2014. Thus, Samsung had even more notice that the Supreme Court might issue a new decision regarding patentable subject matter."
Apple, Inc. v. Samsung Electronics Co., LTD., Case No. 12-CV-00630-LHK (N.D. Cal. Aug. 21, 2014)
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.