Yesterday, Apple had a deadline for responding to Samsung's mid-March petition for writ of certiorari" (request for Supreme Court review) in the second California Apple v. Samsung case, which had received very significant support from software and Internet companies, non-governmental organizations and law professors. Here's Apple's responsive brief (this post continues below the document):
Before sharing a few observations on the brief, I'd like to recommend a Washington, DC panel discussion that will take place at the National Press Club the day after tomorrow (Thursday, March 25) at 9 AM Eastern Time. The panel breakfast wil be presented by the Public Knowledge Foundation, an amicus curiae, and feature speakers who are working or have worked for other amici curiae, such as former CCIA patent counsel Matt Levy (who was a thought leader on design patent damages) and Carl Cecere (representing the Hispanic Leadership Fund and the National Grange in the current cert proceedings), and Ellen Schrantz, the Internet Association's Counsel and Senior Director of Government Affairs.
If you're in or near DC and interested in patent litigation (and particularly in the rules governing patent (in)validity), I'm confident that attending the Public Knowledge event will be interesting.
Apple's brief does what one would expect from a sophisticated respondent to such a petition: they argue that the decision below was right, that the issues aren't certworthy (since they're just about applying settled law to the specific facts of the case), and that even if they were certworthy, this case wouldn't be a good vehicle. In addition, Apple argues that an injunction that has practically been worked around with respect to two patents (the third one, "quick links," having expired) is irrelevant in practical terms even in this case. And Apple says Samsung's second cert petition (this here is already the third in this dispute) should already have raised the issues concerning the standard for injunctive relief that Samsung's latest (third) petition presents, and since Samsung didn't do it before, it's "far from clear" that the Supreme Court could even hear the matter.
Samsung's petition has three parts and Apple is attacking each of them from multiple angles. I may go into more detail on this some other time. One thing I do find interesting is that WilmerHale's Seth Waxman, the Solicitor General of the United States during President Clinton's second term and The American Lawyer's 2016 Intellectual Property Litigation Lawyer of the Year, is on the brief. (Bill Lee, also of WilmerHale, is counsel of record as in other Apple v. Samsung matters.) Mr. Waxman is a Supreme Court expert--and they are normally not involved at the cert stage. In the design patents case, he became involved only after certiorari was granted. While Apple and its lawyers naturally seek to downplay the importance of the issues Samsung raises, Mr. Waxman's involvement does nothing to lower the profile of the case and of the questions for review.
Any case-specific (non-)impact arguments won't bear much weight with the Supreme Court. Even if a patent has expired or worked around here, the Supreme Court is primarily concerned with the transcendental question of the legal standard. However, if Apple's other arguments against certiorari got traction, then the case-specific arguments could "seal the deal." I hope that won't happen. The issues Samsung raises regarding obviousness, injunctions, and even infringement (though it's only a small part of the petition and didn't get traction among amici cuirae) are central to countless patent litigations.
Apple points to statements by the panel judges (who sided with Samsung on obviousness and non-infringement but were then outvoted by eight other judges in what a leading author on patent law, Professor Donald Chisum, called the Federal Circuit's potentially "most controversial decision ever") and by Samsung, according to which statements there shouldn't have been a full-court review (en banc) after the panel ruling since no "exceptionally important question" had to be addressed here. However, that doesn't automatically and necessarily mean that the issues raised by Samsung aren't certworthy. Before the other eight judges decided to grant an en banc review and overrule the panel, the question was whether the panel decision raised exceptionally important questions. Now the question is whether the en banc decision does. It's a different situation now. In the very same case, an issue can be uncertworthy as long as settled law is applied and become certworthy when "unsettling" things occur.
As for the injunction part, Apple's argument that Samsung should have raised the issues in a previous cert petition that didn't go anywhere) may have the desired effect of discouraging the Supreme Court from looking at this, but I disagree with Apple on this one, too:
Samsung's second cert petition (the one that failed) just asked the Supreme Court to moot the injunction decision after the Federal Circuit panel opinion had sided with Samsung on the merits. In other words, the merits rug had been pulled out from under the remedies. But Samsung had jumped the gun: Apple's petition for an en banc review was still pending. The Supreme Court denied the petition.
Apple says Samsung could also have tackled the equitable analysis underlying the injunction decision, as a fallback. But how could that have worked? At least with respect to the "quick links" patent, I can't see how. The Federal Circuit panel found it wasn't infringed. Without an underlying infringement, it's either hard or (depending on the specifics of a case) downright impossible to talk about the causal nexus between an infringement and irreparable harm. Under the Posner claim construction as applied by the Federal Circuit panel, even the iPhone itself doesn't practice the patented invention.
Even Apple doesn't deny that an interlocutory (before the case is over) matter is properly raised in an appeal from a final judgment, and that the Supreme Court has allowed "multiple petitions" in connection with interlocutory decisions. But Apple tries to distinguish those cases from Apple v. Samsung:
"[In those other cases] the interlocutory decisions led to further proceedings from which the petitioner appealed. Here, by contrast, the permanent injunction decision proceeded independently from the Federal Circuit's liability decision. As a result, Samsung is now challenging the same Federal Circuit judgment (dated December 16, 2015) as it did in its last petition."
What I take issue with is the term "independently." A permanent injunction does depend on an underlying merits decision. At the time of Samsung's second petition, the state of affairs in this case was that a Federal Circuit panel had held that there was no underlying merit. It was the totally surprising en banc decision that ended up breathing new life into the injunction decision. If one focuses on that dependency, then Apple's claim that Samsung should have raised any eBay factor questions on what was then highly unlikely (a reversal of fortunes on the merits) doesn't appear efficient (if practicable at all; actually, any number of outcomes, also with respect to "quick links" claim construction, would have been imaginable at the time Samsung filed its premature second petition).
Apple wants Samsung to pay the price for its decision to bring a second petition. But the whole distinction here between an injunction appeal and a merits appeal is actually due to Apple's decision to appeal Judge Koh's denial of a permanent injunction before the merits part was ready to be appealed.
In a footnote, Apple accuses Samsung of unfairness because Samsung pointed to Circuit Judge Moore's statement at oral argument that she disagreed with the Supreme Court's eBay ruling since she "immediately acknowledged that she was of course bound by it." Apple's other point in the footnote is stronger: it's the written opinion that matters. In my words, statements at oral hearing are not reviewable. I agree with Apple that the focus must be on the written opinion. But what Circuit Judge Moore said at the oral hearing is also part of the record (even of the public record). It's fair to point to it since it shows a certain attitude.
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