The jury in Apple’s US proceedings in California against Samsung has determined that a number of Samsung's products infringe Apple's intellectual property rights and has awarded Apple $1.04billion in damages.
- Certain of Samsung's mobile phones and tablet devices (including the Galaxy SII and Galaxy Tab) infringed patents (including design patents), including in relation to scrolling and tap to zoom, and the design of the iPhone 3G’s front surface, its round corners and home button, and the home screen design and icon layout.
However, the Galaxy Tab did not infringe the design of the iPad.
The amount of damages could be increased since the jury held the infringement to be wilful.
However, Samsung has stated its intention to appeal.
This is the latest in a series of high-profile disputes between Apple and Samsung over their respective mobile phone products, but it is unlikely to be the last.
Some of the technology in issue relates to the underlying Android operating system rather than Samsung’s phones per se. If the decision stands, it may mean that the infringing functionality would need to be removed from Android (at least in the US), or replaced with other technologies. Mobile phone manufacturers may also shy away from using Android in their mobile phones, opting for competing operating systems such as Windows Phone.
In relation to the design patents, the verdict may mean that phone manufacturers such as Samsung have to create more distinctive phone designs than they have to date. However, the fact that the Galaxy Tab design did not infringe the iPad’s design means that only subtle differences may be enough to avoid infringement.
The story is far from over however. Courts in different jurisdictions (such as Korea, Japan and the UK) have reached different decisions as between Apple and Samsung, and there may be further litigation in future.
There have been a series of court actions throughout the world between Apple and Samsung. Please see for example our newsflash where we commented on the recent UK decision in which it was held that the Samsung Galaxy Tab did not infringe Apple's Community Registered Design which protects Apple's iPad. There have also been recent decisions in South Korea (where both Apple and Samsung were found to infringe each others’ patents) and Japan (where Samsung was found not to infringe one of Apple’s patents).
In the most significant litigation of the ongoing history of disputes between Apple and Samsung, the jury in a US action has found that certain of Samsung's products infringe a number Apple's US patents and has awarded Apple substantial damages. (Apple Inc. v Samsung Electronics Co Ltd et al. (C11-01846 & C12 -0630 – United States District Court for the Northern District of California)). Samsung’s corresponding claims that Apple had infringed a number of its patents were rejected.
Apple alleged that various Samsung products (including the Galaxy S2 and Galaxy Tab) infringed three US utility patents (US 7469381, US 7844915 and US 7864163) that covered technologies such as inertial scrolling with a finger and a “bounce” effect when the end of a list or document is reached (‘381), tap to zoom (‘163) and various features of the underlying operating system that allow single finger scrolling and pinch to zoom gestures to be detected and actioned (‘915).
Apple also alleged wilful infringement of four US design patents (US D593087, US D618677, US D504889 and US D604305). Design patents are not a form of protection available in the UK as such. In broad terms a US design patent protects the ornamental appearance (including shape or configuration) of a functional item. A US design patent is similar in concept to a UK or Community Registered Design. If a design is dictated by functionality then the patent would be invalid because the design was not "ornamental". The design patents in this case relate to the iPhone 3G’s front surface design (‘677), its round corners and home button (‘087), the home screen design and icon layout (‘305) and the iPad’s rounded corners and bezel (‘889).
Samsung in turn claimed that that Apple had wilfully infringed a number of its patents: US 7447516, US 7675941, US 7577460, US 7456893 and US 7698711. Some of these concerned a number of features relating to 3G communications technology such as power control in the Enhanced Uplink, also known as HSUPA (‘516), and the more efficient transmission of data packets (‘941). Other of the patents concerned playing MP3 music in the background (‘711), integrating picture and mobile phone capabilities into a single device (‘460) and the ability to switch between different display modes for a photo gallery (‘893).
Importantly, Samsung’s two 3G related patents had been declared essential. Various bodies, such as ETSI, set standards for wireless technology which relevant products must meet if they are to be compatible with each other. If particular technology required to meet a standard is covered by a patent then that patent will be considered essential since a manufacturer will necessarily infringe that patent in order to implement the required standard. As such, holders of standard-essential patents generally agree, at the time they declare them to the standards bodies as being essential, to license such patents on fair, reasonable and non-discriminatory (FRAND) terms. Apple therefore argued that, in claiming infringement of such essential patents by Apple, Samsung was in violation of relevant US anti-trust laws and had breached its contractual obligations to disclose and license those patents on fair and reasonable terms.
Each party also claimed that the other party's patents were invalid, as is usual practice.
Apple also brought claims against Samsung for dilution of Apple's registered and unregistered trade dress relating to the iPhone. Apple also claimed dilution of and infringement of its unregistered trade dress relating to the iPad. In the US trade dress protects appearance that is distinctive and non-functional. Trade dress as an intellectual property right is not something recognised as such under English law. However, in the UK, the common-law action of passing off in relation to a product's get-up provides, in broad terms, similar protection.
Samsung’s flagship mobile phones the Galaxy S3 and Galaxy Note were not included in Apple’s proceedings. However, Apple has recently introduced them.
Trial by jury
In the UK, patent infringement actions are heard by and determined by judges sitting in specialised courts namely the Patents Court (which is part of the Chancery division of the High Court) or the Patents County Court. The judge decides all issues of fact and law. However, by virtue of the Seventh Amendment of the US Constitution, a person claiming patent infringement in the US is entitled to have the trial heard and determined by a jury of not less than 6 and not more than 12 people. In the US the jury not only makes determinations as to infringement but also as to the amount of damages payable. Whereas in the UK, a judge is required to give a detailed judgment explaining the reasoning for any decision, the jury’s verdict in the US Samsung v Apple case does not set out any reasoning at all.
The jury's verdict
In the Apple-Samsung case each party presented its case over a three week period to a jury of nine people. At the end of the trial itself, the presiding judge provided the jury with a document of instructions of over 100 pages which served to guide the jury in reaching their conclusion. The jury reached its verdict in less than 3 days and concluded that all of the Apple patents were valid.
The jury’s verdict is best summarised in a table. For each of Samsung’s products, the table shows whether infringement of Apple’s rights was found (“Y”), not found (“N”) or was not alleged (“blank”).
Click here to view table.
It can immediately be seen that Apple did not win on all of its claims, something which informed the jury’s decision to award just over $1bn, rather than the $2.7bn Apple had reportedly asked for. However, with the exception of the Galaxy Tab 10.1 (4G LTE) and the Intercept, each of the cited Samsung products infringed at least one of Apple’s utility or design patents, or the registered or unregistered iPhone trade dress. Also of note is that the Galaxy Tab did not infringe the design of the iPad, something which is consistent with the UK Court’s judgment on the equivalent Community Registered Design. The jury also decided that only a few models of Samsung's phones diluted the registered and unregistered trade dress relating to the iPhone but otherwise Apple's claims relating to trade dress failed (including in relation to the iPad).
Not only was Apple successful in relation to its own patents it was also held that Apple's devices did not infringe the Samsung patents although the jury upheld the validity of the Samsung patents. In fact, none of the patents of Apple or Samsung was held to be invalid.
The jury determined that the appropriate amount of damages payable by Samsung was $1.049 billion and also held that Samsung's acts of infringement had been wilful which would, in principle, allow the judge to increase this award.
Interestingly, there were a number of inconsistencies in the jury’s original verdict, such as damages awarded for a product that did not infringe. These were later corrected after intervention by The Honorable Judge Lucy Koh.
Samsung has already announced its intention to appeal the decision. For example, one means by which it could do so is to rely on a “Rule 50(b) motion”, on the basis that no reasonable jury could have reached those conclusions on the evidence presented.
Similarly, Apple has announced its intention to seek injunctions preventing Samsung from selling eight of the affected products in the US. Apple has also reportedly filed further proceedings in respect of the Galaxy SIII and Galaxy Note.
The nature of some of the patents is such as to target features of the Android operating system rather than features of Samsung phones as such. If Apple is ultimately successful, this may afford a boost to other mobile phone operating systems such as Windows Phone, for which the look-and-feel is very different. However, it is unlikely to represent the demise of Android. Some of the features in issue have already been removed in the latest versions of Android (for example the bounce back feature has been replaced by a blue flare). While other features such as inertial scrolling and tap to zoom are more difficult to design-around, they are afforded less protection by patent systems outside the US and particularly in Europe.
What is clear, however, is this is not the end of the story.