This week my most popular blog post in a long time brought to light the fact that the United States Patent and Trademark Office now believes one of Apple's iPhone design patents underlying the bulk of a $540 million judgment against Samsung shouldn't have been granted in the first place since it merely combined existing design elements.
In that post I expressed hopes that Samsung would take the design patent issues in that case to the Supreme Court, and a filing made by Samsung with the Federal Circuit on Wednesday (a motion to stay execution of a mandate, i.e., to prevent Apple from physically collecting money before the case is really over) now states clearly that this will happen (this post continues below the document):
So there will be a petition for writ of certiorari (request for Supreme Court review), and I'll follow that process closely over the next months. Here's a quick initial assessment of the chances, given that only about 1% of such petitions succeed:
Samsung states in the filing that it will raise two legal issues in its petition, one about claim construction and one about damages. The first one is about the need for a court to instruct a jury in clear terms that functional elements of a design must be ignored in the infringement analysis. The second one is about whether an unapportioned disgorgement of infringer's profits relating to an entire multifunctional product is the right way or--as Samsung and many others in the industry believe--the wrong way to apply the law.
Either one of these points is very similar in nature to the questions of patent law the Supreme Court has accepted to look into on several occasions in recent years and on which it has usually, when it accepted to take a look, overruled the Federal Circuit, with Microsoft v. i4i (evidence standard for invalidity defense in infringement proceedings) being a regrettable exception. That is one of the differences that make Samsung's forthcoming petition more interesting than Google's failed attempt to appeal Oracle's copyrightability win to the Supreme Court was. Google's lawyers tried hard to establish parallels between their petition and long-standing philosophical differences between the Supreme Court and the Federal Circuit (which used to be even patentee-friendlier under then-Chief Judge Rader than under current Chief Judge Prost) over patent law and totally different issues in a copyright case. Samsung's petition will be precisely about the types of issues--defendants' rights and reasonableness in remedies--the Supreme Court, besides substantive patent law, does care about.
The Supreme Court is not only interested in the legal issues raised by a petition but also considers the public interest in its involvement in a matter. Google orchestrated a massive but somewhat duplicative campaign, still the support that its Supreme Court petition in the Oracle case received from the industry at large was--sorry to say so because I generally like and respect Google--laughable. It was largely the same echo chamber teeming with Google's best friends as in the Federal Circuit proceedings.
By contrast, Samsung's petition refers to the following supporters of its Federal Circuit rehearing petition:
Dell Inc., eBay Inc., Facebook Inc., Google Inc., Hewlett-Packard Co., Limelight Networks, Inc., Newegg Inc., SAS Institute Inc., the Hispanic Leadership Fund, the National Black Chamber of Commerce, the National Grange of the Order of the Patrons of Husbandry, the Computer & Communications Industry Association, and Professor Mark Lemley, et al.
That's already a much stronger issue coalition than the one in Oracle v. Google (there are overlaps, but Samsung has more industry support than Google ever had in the Oracle case).
Should Samsung manage to muster even more industry support for its Supreme Court petition than for its Federal Circuit rehearing petition, then I believe a call for views of the Solicitor General (CVSG), which even Google's copyright petition achieved, is very likely. And the Department of Justice will then talk to the industry at large and see that Apple is rather isolated on this issue. It's early for these kinds of predictions, but it's not unprecedented for this blog to offer one rather early (and the "hit rate" has been pretty good in my opinion). I predict that in the event of a CVSG, the U.S. government will side with Samsung on this one. If that happens, certiorari will no longer be a long shot.
So the most important question in the near term is whether even more industry players will chime in and ask the Supreme Court to prevent that someone could, for example, seek a disgorgement of the entirety of Facebook's (or anyone else's) profits over a single icon. I've had various conversations with industry players in recent years, but not in the months following the Federal Circuit decision. I believe Samsung will get more support because no one in his right mind can be interested in design patents becoming infinitely more valuable and threatening than technical patents. That's an absurdity that must be addressed now. If the Supreme Court denied cert, the signal would be terrible and patent trolls might spend many millions acquiring broad and vague design patents in order to shake down high-tech companies. "At your peril" is what I would tell anyone in the industry who for whatever reason might prefer to stay out of this.
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