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Full Opinion
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.
I. Introduction
The current appeal results from a patent infringement suit and countersuit between Apple Inc. (“Apple”) and Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”). Relevant to this en banc decision, the district court granted summary judgment that Samsung’s accused devices infringe the asserted 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 requested 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 entered judgment accordingly.
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
We granted Apple’s en banc petition to affirm our understanding of the appellate function as limited to deciding 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 whether 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 Pharths., Inc. v. Sandoz, Inc., — U.S.-, 135 S.Ct. 831, 841, — L.Ed.2d-(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 extrinsic 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 additional briefing, or argument to determine that the appellate 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 without 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 obviousness. We did not take this case en banc to decide important legal questions about the inner workings of the law of obviousness. We have applied existing obviousness law to the facts of this ease. 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
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, 59 S.Ct. 206, 83 L.Ed. 126 (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 v. Citrix Sys., Inc., 769 F.3d 1073, 1082 (Fed. Cir. 2014).
The '647 patent discloses a system and method for detecting structures such as phone, numbers, addresses, and dates in documents, and then linking actions or commands to those structures. When the system detects a structure in a document, an “analyzer server” links actions 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 structures in data and performing actions on detected structures, comprise ing:
an input device for receiving data;
an output device for presenting the data;
a memory storing information including program routines including
an analyzer sener for detecting structures in the data, and for linking actions to the detected structures-,
a user interface enabling the selection 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 device, the output device, and the*1041 memory for controlling the execution of the program routines.
9. The system recited in claim 1, wherein the user interface enables selection of an action by causing 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 “analyzer 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 routine separate from a client that receives data having structures from the client.”
The term “linking actions to the detected structures” means “creating a specified connection between each detected structure and at least one computer subroutine that causes the CPU to perform a sequence of operations on that detected structure.”
Final Annotated Jury Instrs., No. 22, Apple Inc. v. Samsung Elecs. Co., No. 5:12-cv-00630-LHK, 2015 WL 4967769 (N.D. Cal. Apr. 28, 2014), ECF No. 1848. Neither side objected to the jury instruction and neither side has appealed the constructions given to the jury. We address Samsung’s arguments for each term separately.
1. Analyzer Server
The only issue on appeal relating to the “analyzer server” limitation is whether there was substantial evidence 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 recognized, 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, 11. 38-39. Fig. 1 shows the program 165 and the application 167 as separate parts of a random-access memory (RAM):
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 identify structures in data presented by the application 167.” Id. at col. 3, 11. 37-41. Thus, the specification describes the analyzer server and the application, which it serves, as separate structures.
Id. at 1304-05 (red box annotation to figure added).
The panel, however, used extra-record extrinsic evidence to modify the agreed upon and unappealed construction of “analyzer server.”
The dissents claim that Apple agreed to a new construction during oral argument.
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
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 (ie., 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 application 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 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 record 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 structures 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 Samsung’s shared library code and client applications are “separate” because they are located in separate parts of
On this record, this is substantial evidence to support the jury’s finding that the accused devices meet the “analyzer 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 trust worthy.”).
2. Linking Actions
Samsung also appealed the district court’s denial of JMOL of non-infringement based upon the “linking actions” 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 detected structures” as “creating a specified connection between ■ each detected structure and at least one computer 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
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 available application to send the email. There may be two or three available applications; the user selects which application 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 Haekbom, Google engineer). It argues- there is “no evidence of any specified connection between detected structures and actions,” Samsung Br. 26 (emphasis added).
Our claim construction, however, does not require a specified connection between detected structures and the applications that perform operations oh 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 structure 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.” 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 detected 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 “startActivity().” 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 setlntent() passes the Intent object to the startActivity() subroutine. J.A. 13040:6-23.
According to Dr. Mowry, startActivity() is “the computer subroutine that causes the CPU to perform a sequence of opera
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.” Monroe, 248 F.3d at 861. Dr. Mowry’s testimony provided substantial evidence of infringement. In light of Dr. Mowry’s testimony, 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 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 Samsung 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 verdict winner and leave those presumed findings undisturbed 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, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), and KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406, 127 S.Ct. 1727, 167 L.Ed.2d 705 (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 prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the*1048 pertinent art resolved. Against this background, the obviousness or nonobvi-ousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to 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)),
The '721 patent discloses a portable device with a touch-sensitive display that can be “unlocked via gestures” 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 unintentional contact with the touch screen.” Id. at 1:38-40. “Unintentional 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 accidentally, 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 sur*1049 face 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 making phone activation as “user-friendly” and “efficient” as possible. It teaches:
Accordingly, there is a need for more efficient, user-friendly procedures for unlocking such devices, touch screens, and/or applications. -More generally, there is a need for more efficient, user-friendly procedures for transitioning such devices, touch screens, and/or applications between user interface states (e.g.; from a user interface state for a first application to a user interface state for a second application, between user interface states in the same application, or between locked and unlocked 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 consideration when developing the slide to unlock feature:
[W]e thought to introduce some sort of definite gesture. We knew we wanted to have some instruction. 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, insulting 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. Cock-burn, explained that there was a tension between preventing pocket 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.” JA.. 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 vrith the touch-sensitive display at a first predefined location corresponding to an unlock image;
to continuously move the unlock image on the touch-sensitive display in accordance with the movement of the detected contact while continuous contact with the touch-sensitive display is maintained, 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 location on*1050 the touch screen to a predefined unlock region on the touch-sensitive display.
8. The device of claim 7, further comprising instructions to display visual cues to communicate a direction of movement of the unlock image required 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 obviousness but granted the motion as to willfulness.
Samsung argues claim 8 would have been obvious in light of the combination of Neonode and Plaisant. “Neonode” 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 experiment 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 undergraduate students, including a “slider toggle” where a user could activate the controller by “grab[bing] the pointer and sliding] it to the other side.” J.A. 20743. The students 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, Neonode and Plaisant disclose all the elements of claim 8.