Apple, Inc. v. Samsung Electronics Co., Ltd. (Fed. Cir. 2016)

Apple, Inc. v. Samsung Electronics Co., Ltd.

839 F.3d 1034 (Fed. Cir. 2016) (en banc)

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.

Moore, Circuit Judge.

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. ^[1] Samsung appealed the district court’s grant of summary judgment of infringement as to the ′172 patent, denial of JMOL of non-infringement as to the ′647 patent, and denial of JMOL of obviousness as to the ′721 and ′172 patents.

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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.

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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 pertinent art resolved. Against this background, the obviousness or nonobviousness 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)). ^[2] Objective indicia of nonobviousness must be considered in every case where present. See, e.g., Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (“[E]vidence rising out of the so-called ‘secondary considerations’ must always when present be considered en route to a determination of obviousness.” (quoting Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983))); Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575 (Fed. Cir. 1984) (“The section 103 test of nonobviousness set forth in Graham is a four part inquiry comprising, not only the three familiar elements (scope and content of the prior art, differences between the prior art and the claims at issue, and level of ordinary skill in the pertinent art), but also evidence of secondary considerations when such evidence is, of course, present.”). This requirement is in recognition of the fact that each of the Graham factors helps inform the ultimate obviousness determination. Kinetic Concepts, 688 F.3d at 1360; Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1340 (Fed. Cir. 2016) (holding that evidence of secondary considerations must be examined to determine its impact on the first three Graham factors).

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 surface 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. Cockburn, 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.” J.A. 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 with 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 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 slid[ing] 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 8.145 Rather, the parties dispute whether a person of ordinary skill in the art would have been motivated to combine one of the unlocking mechanisms disclosed in Plaisant with Neonode. Samsung argues “there was no evidence of any kind suggesting that Plaisant’s application to a wall-mounted device would lead inventors not to combine Plaisant with Neonode.” Samsung Resp. Br. 19–20. Its expert, Dr. Greenberg, testified that a person of ordinary skill “would be highly interested” in both references because “they both deal with touch base systems, they both deal with user interfaces.” J.A. 11982:13–17. Dr. Greenberg testified that “a person looking at this would just think it natural to combine these two, as well taking the ideas in Plaisant, the slider, and putting them on the Neonode is, is just a very routine thing to think about in terms of interaction design.” J.A. 11982:23–11983:2. Samsung points to the Plaisant reference which states that sliding movement “is less likely to be done inadvertently.” Samsung Br. 35–36 (quoting J.A. 20743).

Apple counters that a skilled artisan designing a mobile phone would not have been motivated to turn to a wall-mounted air conditioning controller to solve the pocket dialing problem. Apple Br. 26–27. Its expert, Dr. Cockburn, testified that a person of ordinary skill would not have been naturally motivated to combine Neonode and Plaisant. J.A. 12877:17–21. Dr. Cockburn testified that the way the Plaisant controllers “were intended to be used was the touch screen would be mounted into a wall or into cabinetry and it would be used to control, for remote control, office or home appliances, like air conditioning units or heaters.” J.A. 12876:20–23. He also explained to the jury that Plaisant itself discloses that sliding toggles were less preferred than the other switches disclosed. J.A. 12877:7–16. Apple points to Plaisant’s teachings that “sliders were not preferred,” “sliding is a more complex task,” and “sliders are more difficult to implement.” Apple Br. 27–28. Apple argues there was substantial evidence for the jury to conclude that there would not have been a motivation to combine Plaisant and Neonode to arrive at the claimed invention.

What a prior art reference teaches and whether a skilled artisan would have been motivated to combine references are questions of fact. See Par Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196–97 (Fed. Cir. 2014); Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1303 (Fed. Cir. 2010). “Before KSR, we had also consistently treated the question of motivation to combine prior art references as a question of fact… KSR did not change this rule ….” Wyers v. Master Lock Co., 616 F.3d 1231, 1238–39 (Fed. Cir. 2010); id. at 1237 (“[W]hether there was sufficient motivation to combine the references” is a “factual issue[ ].”). The district court determined that a reasonable jury could have found that a person of ordinary skill would not have been motivated to combine Plaisant and Neonode:

A reasonable jury could infer from [Dr. Cockburn’s] testimony that an ordinary artisan would not have been motivated to combine elements from a wall-mounted touchscreen for home appliances and a smartphone, particularly in view of the “pocket dialing” problem specific to mobile devices that Apple’s invention sought to address.

Additionally, Dr. Cockburn explained that Plaisant “teach[es] away from the use of sliding,” because it “tells you not to use the sliding [toggle] mechanism.”

J.A. 55 (citations omitted).146 After noting that what a reference teaches is a question of fact, the district court discussed the various statements in Plaisant about sliding toggles and concluded that substantial evidence supports the jury’s fact findings that Samsung failed to establish a motivation to combine. J.A. 55–56. We agree with the district court that on this record, the jury’s implicit fact findings that Plaisant would not have provided a skilled artisan with a motivation to combine its slider toggle switch with Neonode is supported by substantial evidence. In addition to the statements in Plaisant, the court explained:

Dr. Cockburn testified, contrary to Dr. Greenberg, that a person of ordinary skill in the art would not have been motivated to combine the Neonode and Plaisant in such a way as to invent claim 8. He provided two reasons. First, Plaisant described “toggle designs” intended to be used with a “touch screen [that] would be mounted into a wall or into cabinetry” for controlling “office or home appliances, like air conditioning units or heaters.” A reasonable jury could infer from this testimony that an ordinary artisan would not have been motivated to combine elements from a wall-mounted touchscreen for home appliances and a smartphone, particularly in view of the “pocket dialing” problem specific to mobile devices that Apple’s invention sought to address.

J.A. 54–55 (citations omitted).

We agree with the district court’s analysis. Because the jury found the issue of validity in favor of Apple, we presume it resolved the conflicting expert testimony and found that a skilled artisan would not have been motivated to combine the slider toggle in Plaisant with the cell phone disclosed in Neonode. The question for our review is whether substantial evidence supports this implied fact finding. We conclude that it does. Neonode discloses a mobile phone. Plaisant discloses a wall-mounted air conditioning controller. The jury had both references before it. Although Samsung presents arguments for combining the two references, these arguments were before the jury. Our job is not to review whether Samsung’s losing position was also supported by substantial evidence or to weigh the relative strength of Samsung’s evidence against Apple’s evidence. We are limited to determining whether there was substantial evidence for the jury’s findings, on the entirety of the record. And under the Ninth Circuit standard, we cannot conclude that the evidence affords only one reasonable conclusion and that it is contrary to that of the jury. See Monroe, 248 F.3d at 861. We agree with the district court: “A reasonable jury could infer from this testimony that an ordinary artisan would not have been motivated to combine elements from a wall-mounted touchscreen for home appliances and a smartphone, particularly in view of the ‘pocket dialing’ problem specific to mobile devices that Apple’s invention sought to address.” J.A. 55.

1. The Objective Indicia of Non–Obviousness

The Supreme Court explained that various factors “may also serve to ‘guard against slipping into use of hindsight,’ and to resist the temptation to read into the prior art the teachings of the invention in issue.” Graham, 383 U.S. at 36, 86 S.Ct. 684 (citation omitted). These factors are commonly known as secondary considerations or objective indicia of non-obviousness. These include: commercial success enjoyed by devices practicing the patented invention, industry praise for the patented invention, copying by others, and the existence of a long-felt but unsatisfied need for the invention. As this court held in Stratoflex:

Indeed, evidence of secondary considerations may often be the most probative and cogent evidence in the record. It may often establish that an invention appearing to have been obvious in light of the prior art was not. It is to be considered as part of all the evidence, not just when the decisionmaker remains in doubt after reviewing the art.

713 F.2d at 1538–39. Apple introduced evidence of industry praise, copying, commercial success, and long-felt need. We presume the jury found that the evidence was sufficient to establish each by a preponderance of the evidence. We find substantial evidence in the record to support each of those findings.

a. Industry Praise

Evidence that the industry praised a claimed invention or a product that embodies the patent claims weighs against an assertion that the same claimed invention would have been obvious. Industry participants, especially competitors, are not likely to praise an obvious advance over the known art. Thus, if there is evidence of industry praise of the claimed invention in the record, it weighs in favor of the non-obviousness of the claimed invention. See, e.g., Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013) (“[I]ndustry praise … provides probative and cogent evidence that one of ordinary skill in the art would not have reasonably expected [the claimed invention].”); Power–One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1352 (Fed. Cir. 2010) (noting that industry praise, and specifically praise from a competitor, tends to indicate that the invention would not have been obvious).

Samsung’s entire appeal regarding the jury’s fact finding that industry praise weighed in favor of nonobviousness is contained in one half of one sentence: “Indeed, the district court relied solely on generic praise not linked to the actual subject matter of the claim ….” Samsung Br. 37. The district court rejected Samsung’s argument on this issue, determining that substantial evidence supports the jury’s underlying findings in favor of “industry praise specifically for Apple’s slide to unlock invention.” J.A. 56. It cited numerous internal Samsung documents that both praised Apple’s slide to unlock feature and indicated that Samsung should modify its own phones to incorporate Apple’s slide to unlock feature:

• PTX 119 at 11: presentation prepared by Samsung’s European design team in June 2009 with a picture of the iPhone stating that Apple’s slide to unlock invention is a “[c]reative way[ ] of solving UI complexity” and that “swiping unlock on the screen allows to prevent erroneous unlock,” J.A. 50950;
• PTX 121 at 100: Samsung software verification group document with a picture of the iPhone noting that unlike Samsung’s “Victory” phone, the iPhone’s “unlocking standard is precise as it is handled through sliding, and it allows prevention of any wrong motion,” and recommending a “direction of improvement” to make it the “same as iPhone, [and] clarify the unlocking standard by sliding,” J.A. 51289;
• PTX 157 at 19–20: Samsung document with a picture of the iPhone recommending improving the Samsung phone by making it “easy to unlock, [given that] lock screen always shows guide text or arrow like the iPhone” and to make the lock icon’s movement “be smooth and continuous” like the iPhone, J.A. 57 (JMOL Order citing PTX 157);
• PTX 219 at 14: Samsung document with a picture of the iPhone noting that the iPhone “intuitively indicate[s] the direction and length to move when unlocking on the lock screen,” J.A. 51603;
• PTX 120 at 28, 84: Samsung document with a picture of an iPhone that describes the “Direction of Improvement” as using a defined bar to unlock the phone, as is done on the iPhone. The same document describes the “Direction of Improvement” as displaying the unlock instruction on the screen, as is done on the iPhone. J.A. 51028, 51084.

See J.A. 56–57 (JMOL Order citing several Samsung documents). Such internal documents from the patentee’s top competitor represent important admissions, acknowledging the merits of the patented advance over the then state of the art and can be used to establish industry praise. Dr. Cockburn, Apple’s expert, testified “these various Samsung documents recognized the advantages of claim 8.” J.A. 57 (citing J.A. 10640–52).

The court also explained that Apple presented a video at trial showing Steve Jobs unveiling the slide to unlock feature at an Apple event. When Mr. Jobs swiped to unlock the phone, “the audience burst into cheers.” J.A. 12879–80 (Andrew Cockburn). The video was shown to the jury, and Apple’s expert, an inventor, and Apple’s Vice President of Marketing all referenced the video in their testimony. See J.A. 57 (JMOL Order citing 4/4/14 Tr. at 603:6–11 (Greg Christie)); J.A. 12879:17–12880:2 (Andrew Cockburn); 4/1/14 Tr. at 428:12–17 (Phillip Schiller) (“There were many press in attendance at the event, and the reaction was enormous.”).

Samsung does not discuss any of this evidence on appeal. In light of this evidence, we find its argument that the district court cited only generic praise of the iPhone, and not praise tied to the claimed slide to unlock feature, is without merit. The jury was presented with substantial evidence of praise in the industry that specifically related to features of the claimed invention, thereby linking that industry praise with the patented invention.

b. Copying

Samsung does not dispute in its briefing that the jury heard substantial evidence that it copied the iPhone’s claimed features. In other words, Samsung does not challenge on appeal that substantial evidence exists in the record that Samsung copied Apple’s slide to unlock feature, nor does it challenge on appeal that this evidence of copying supports a conclusion that claim 8 would not have been obvious. Apple cites the same Samsung internal documents for both industry praise and copying, as they show evidence of both. The record contains multiple internal Samsung presentations given by different Samsung groups at different times stating that the iPhone’s slide to unlock feature is better than the various Samsung alternatives. See supra J.A. 50950 (PTX 119); J.A. 51028, 51084 (PTX 120); J.A. 51289 (PTX 121); J.A. 57 (JMOL Order citing PTX 157); J.A. 51603 (PTX 219). And many of these same presentations conclude that the direction for improvement is for Samsung to modify its unlocking mechanism to be like the iPhone. See id. This is substantial evidence of copying by Samsung, and it supports the jury’s verdict that the claimed invention would not have been obvious.

c. Commercial Success

In its opening appellate brief, Samsung also glosses over commercial success, giving it one sentence: “Apple made no effort to establish a nexus between commercial success and the subject matter of claim 8.” Samsung Br. 37. Commercial success requires a nexus to the claimed invention. Transocean, 699 F.3d at 1350. We look to the record to ascertain whether there is substantial evidence for the jury’s fact finding that Apple established a nexus between commercial success and the invention in claim 8.

At trial, Apple’s expert, Dr. Cockburn, testified that the iPhone practiced the asserted claim of the ′721 patent, and “clearly there’s been commercial success of the iPhones that use this invention.” J.A. 12879:20–22; see also J.A. 11984:24–25 (“[T]here’s no question that the Apple iPhone was a commercial success.”) (Saul Greenberg, Samsung’s expert). Critically, Apple presented survey evidence that customers would be less likely to purchase a portable device without the slide to unlock feature and would pay less for products without it, thus permitting the jury to conclude that this feature was a key driver in the ultimate commercial success of the products. ^[3] J.A. 21066, 21108. Apple’s Senior Vice President of Worldwide Marketing testified that slide to unlock was the very first feature shown in Apple’s original iPhone TV commercial, 4/1/14 Tr. at 433:16–434:18 (Phillip Schiller) (citing PTX 180), and the jury saw that commercial during the trial. Id. A reasonable jury could have found evidence that Apple’s marketing experts elected to emphasize the claimed feature as evidence of its importance. It is likewise reasonable to conclude that advertising that highlights or focuses on a feature of the invention could influence customer purchasing decisions. And an inventor of the ′721 patent—an Apple Vice President—confirmed that slide to unlock was important because it “would possibly be [a customer’s] first experience even in a retail environment” when the customer was “deciding whether they want to buy it.” J.A. 10601:25–10602:22 (Greg Christie).148 Mr. Schiller explained the importance of the slide to unlock feature in great detail:

When this ad ran, people hadn’t had the opportunity yet to actually use an iPhone for themselves, and so they’ve never used at this point in time a device anything like it. The challenge is how do you show people, in a simple, 30–second ad, something that gives them a feel for what it’s like to use this new generation of Apple’s smartphone. And we started the ad with something you’re going to be doing every day, many, many times a day, which is to unlock the screen, and to do that, you use a simple gesture, slide to unlock. And that one gesture, having seen that one thing first, you get an instant idea of how multitouch works so that you’re doing a gesture on the screen, and it does something simple and useful to you, and that it’s easy to use. You don’t need a manual to figure it out. And that one starting point was a great beginning to your understanding of what an iPhone is and what this kind of device can do.

4/1/14 Tr. at 433:1–18. Finally, the video of the crowd “burst[ing] into cheers” when Steve Jobs demonstrated the slide to unlock feature supports a conclusion that consumers valued this particular feature. J.A. 12879:20–12880:2 (Andrew Cockburn). It is the fact finders’ job to assess the probative value of the evidence presented. Pro–Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996) (“It is within the province of the fact-finder to resolve these factual disputes regarding whether a nexus exists between the commercial success of the product and its patented features, and to determine the probative value of Pro–Mold’s evidence of secondary considerations ….”).

This record overall contains substantial evidence of a nexus between the slide to unlock feature and the iPhone’s commercial success, and we are required to give this jury fact finding deference. It is not our role to reweigh the evidence or consider what the record might have supported. This commercial success evidence supports the jury’s verdict that the claimed invention would not have been obvious.

d. Long–Felt Need

Evidence of a long-felt but unresolved need can weigh in favor of the non-obviousness of an invention because it is reasonable to infer the need would not have persisted had the solution been obvious. There is substantial evidence for the jury to have found that there was a long-felt but unresolved need for a solution to the pocket dialing problem until Apple’s claimed invention, with its slide to unlock feature, solved that problem. Samsung’s appeal of the jury’s fact finding of long-felt need was limited to a single sentence, which was itself simply a quote from George M. Martin Co. v. All. Mach. Sys. Int’l LLC, 618 F.3d 1294, 1304 (Fed. Cir. 2010): “[w]here the differences between the prior art and the claimed invention are as minimal as they are here, … it cannot be said that any long felt need was unsolved.” Samsung Br. 37 (alteration in original). In its brief, there was no application to this case, no analysis of the issue of long-felt need, and no citation to any record evidence.

To the extent that Samsung’s quote should be interpreted as precluding a jury finding of long-felt need favoring non-obviousness when the difference between the prior art and the claimed invention is small, we reject such a categorical rule. This type of hard and fast rule is not appropriate for the factual issues that are left to the province of the jury. There could be a long-felt need for what might be considered a relatively small improvement over the prior art—it all depends upon the evidence, and it is up to the fact finder to assess that evidence.

Moreover, we do not understand the quote from George M. Martin to be a proclamation of law but instead simply an application to the particular facts of that case. The quoted language makes clear that the court was evaluating the facts in that particular case regarding the claimed advances over the prior art, “as minimal as they are here.” George M. Martin, 618 F.3d at 1304. And importantly, the George M. Martin court explains that the “need” had already been met by the prior art devices that already solved the problem at issue. Id. at 1305. Thus, in George M. Martin, not only was the difference between the prior art and the claimed invention minimal, but the prior art had already solved the problem for which the patentee claimed there was a long-felt need. Id. Samsung’s sole argument on long-felt need is thus based on a misreading of George M. Martin.

In this case, there is substantial evidence for the jury’s finding that long-felt need supported the nonobviousness of the claimed invention. Denying JMOL on this issue, the district court cited testimony from Apple’s expert: “Dr. Cockburn’s testimony that phone designers had been trying to solve the problem of accidental activation and the ‘pocket dial problem’ before the iPhone existed, but had only come up with ‘frustrat[ing]’ solutions.” J.A. 57 (quoting J.A. 10638–39). While the expert discusses particular examples in the first person: “I have been very frustrated with [the prior art options],” the jury could still reasonably find that this testimony was probative of a long-felt need. See J.A. 10638:17–19.

The district court also cited the testimony of one of the inventors, where he discussed concerns over pocket dialing. ^[4]

In addition to the portion of Dr. Cockburn’s testimony cited by the district court, there are other portions of his testimony upon which the jury fact finding could be predicated. The record contained a document (PTX 55) in which Samsung listed all the alternatives to the iPhone slide to unlock. See 4/4/14 Tr. at 680:10–687:15 (Andrew Cockburn). Apple’s expert went through several of the alternatives, including the Ripple unlock, the glass unlock, and the circle unlock, and explained how each of these failed to solve the accidental activation problem. Id. The jury could have reasonably found that this testimony established long-felt unresolved need.

In addition, the jury could have found that the same internal Samsung documents Apple relied upon for industry praise and copying demonstrate that Samsung compared four of its own rejected alternative unlock mechanisms (Kepler, Victory, Behold, & Amythest) to the iPhone slide to unlock mechanism, and that Samsung concluded the iPhone slide to unlock was better. See, e.g., J.A. 51028 (PTX 120 at 28 (“Behold3: Unintentional unlock occurs … iPhone Lock undone only when sliding action is applied to a specific button”)); J.A. 51289 (PTX 121 at 100 (“Victory: The Screen Lock gets unlocked with a slight flick motion”; “iPhone Unlocking standard is precise as it is handled through sliding, and it allows prevention of any wrong motion”)). The jury could have found that these Samsung documents show that Samsung, Apple’s fiercest competitor, was unsuccessfully trying to solve the same problem. All of this evidence was presented to the jury during the trial in this case. This evidence constitutes substantial evidence for the jury fact finding that there was a long-felt but unresolved need, which Apple’s ′721 patented invention solved. This evidence weighs in favor of non-obviousness.

2. Conclusion on Obviousness of the ′721 Patent

Acknowledging that “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does,” the Supreme Court cautioned that “[h]elpful insights, however, need not become rigid and mandatory formulas.” KSR, 550 U.S. at 418–19, 127 S.Ct. 1727. The Supreme Court explained:

The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents. The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way.

Id. at 419, 127 S.Ct. 1727. “Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” Id. at 421, 127 S.Ct. 1727. With these principles in mind, we review de novo the ultimate legal determination and conclude that it would not have been obvious to a skilled artisan to combine the prior art to arrive at the claimed invention.

Common sense and real world indicators indicate that to conclude otherwise would be to give in to hindsight, to allow the exact ex post reasoning against which the Supreme Court cautioned in Graham and KSR. The record includes Plaisant and Neonode and all that these references teach, including Plaisant’s reference to inadvertent activation, complexity, difficult implementability, and that users do not prefer sliders. Though the prior art references each relate to touchscreens, the totality of the evidence supports the conclusion that it would not have been obvious for a skilled artisan, seeking an unlock mechanism that would be both intuitive to use and solve the pocket dialing problem for cell phones, to look to a wall-mounted controller for an air conditioner. The two-page Plaisant paper published in 1992 reported the results of a user-preference survey of fifteen undergraduates on six different computer-based switches. That a skilled artisan would look to the Plaisant paper directed to a wall-mounted interface screen for appliances and then choose the slider toggle, which the study found rated fifth out of six options in usability, to fulfill a need for an intuitive unlock mechanism that solves the pocket dialing problem for cell phones seems far from obvious.

We have considered the jury’s implicit fact findings about the teachings of Plaisant and Neonode. We have also considered the objective indicia found by the jury which are particularly strong in this case and powerfully weigh in favor of validity. They include copying, industry praise, commercial success, and long-felt need. These real world indicators of whether the combination would have been obvious to the skilled artisan in this case “tip the scales of patentability,” Graham, 383 U.S. at 36, 86 S.Ct. 684, or “dislodge the determination that claim [8 would have been] obvious,” KSR, 550 U.S. at 426, 127 S.Ct. 1727. Weighing all of the Graham factors, we agree with the district court on the ultimate legal determination that Samsung failed to establish by clear and convincing evidence that claim 8 of the ′721 patent would have been obvious. We affirm the district court’s denial of JMOL.

[Text omitted]

IV. CONCLUSION

We affirm and reinstate the district court judgment as to the ′647, ′721, and ′172 patents. We reinstate the portions of the panel decision that pertain to the ′959, ′414, ′239, and ′449 patents, for which the panel decision affirmed the district court’s rulings on all issues of those patents. We thus reinstate the district court’s award of costs which the panel had vacated. We remand the willfulness issue for the district court to consider under the Supreme Court’s Halo standard in the first instance.

AFFIRMED

Prost, Chief Judge, dissenting.

At the outset, I share Judge Dyk’s and Judge Reyna’s concerns as to the procedural irregularities surrounding this case at the en banc stage. There was no need to take this case en banc. However, having done so, the en banc court would certainly have benefited from our normal practice of allowing further briefing and argument from the parties and from hearing the views of amici, such as the government.

On the merits, I agree with Judge Dyk that KSR International Co. v. Teleflex Inc. significantly reduced the evidentiary burden necessary to establish a motivation to combine prior art references and held that motivation to combine can be found in “any need or problem known in the field of endeavor,” not just the problem faced by the inventor. 550 U.S. 398, 420, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). I also agree with his concerns regarding the majority’s elevation of secondary considerations beyond their historic role, which is that secondary considerations take on less importance when there is little doubt as to obviousness. See Dow Chem. Co. v. Halliburton Oil Well Cementing Co., 324 U.S. 320, 330, 65 S.Ct. 647, 89 L.Ed. 973 (1945) (“But these considerations are relevant only in a close case where all other proof leaves the question of invention in doubt.”); Goodyear Tire & Rubber Co. v. Ray–O–Vac Co., 321 U.S. 275, 279, 64 S.Ct. 593, 88 L.Ed. 721 (1944) (“These factors were entitled to weight in determining whether the improvement amounted to invention and should, in a close case, tip the scales in favor of patentability.”).

Aside from these broader legal principles, though, I write separately to express concern that the majority misapplies the substantial evidence standard of review with respect to the invalidity analysis, finding evidence in the record when there is none to support the jury’s implicit factual findings. With respect to the ′647 patent, the majority goes too far by implicitly modifying our prior claim construction that is binding on and agreed upon by the parties.

In the majority’s view, the existence of any evidence that could theoretically support a jury verdict would seem to end our substantial evidence review on appeal. But see Consol. Edison Co. of N.Y. v. Nat’l Labor Relations Bd., 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938) (“Substantial evidence is more than a mere scintilla. It means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.”). Indeed, as Judge Reyna forcefully articulates in his dissent today, the majority has abdicated its role in substantial evidence review. For the additional reasons discussed below, I respectfully dissent.

DISCUSSION

I

A

Under the majority’s analysis, the question with respect to the validity of claim 8 of the ′721 patent is straightforward: whether there is substantial evidence to support the jury’s implicit finding that there was no motivation to combine Neonode and Plaisant. The en banc majority relies on the testimony of Apple’s expert, Dr. Cockburn, to say that a skilled artisan would not be motivated to combine Neonode and Plaisant. In support, the en banc majority cites only one fact (that is self-evident from the face of the references themselves): Neonode concerns a portable telephone and Plaisant concerns wall-mounted touchscreen devices. That lone statement does not rise to the level of substantial evidence.

Neonode describes a portable phone that may be activated by “[s]weep[ing] right” on the screen. J.A. 20725. Plaisant discloses a toggle device for use on a touch screen, referred to as a “[s]lider toggle,” which requires a user to slide a pointer from one side of the toggle to the other in order to activate it. J.A. 20743. Plaisant also teaches that an “advantage of the sliding movement is that it is less likely to be done inadvertently therefore making the toggle very secure (the finger has to land on and lift off the right locations).” Id. It is undisputed that Neonode and Plaisant are analogous art references that together disclose all of the limitations of claim 8. The relevant question is whether a skilled artisan would be motivated to combine the references to solve the problem addressed by the ′721 patent, namely “the unintentional activation or deactivation of functions due to unintentional contact with the touch screen.” ^[5]

′721 patent col. 1 ll. 38–40. See KSR, 550 U.S. at 420, 127 S.Ct. 1727 (noting that a motivation to combine may be found in “any need or problem known in the field of endeavor at the time of invention and addressed by the patent”).

The majority holds that there is no motivation to combine Neonode with Plaisant because a person of ordinary skill would not turn to Plaisant’s wall-mounted touchscreen to solve the “unintentional activation” problem of a portable phone. The problem with that conclusion is that Apple did not present any evidence to support it. Indeed, a review of the entirety of Dr. Cockburn’s testimony on motivation to combine reveals the striking absence of any evidence that a skilled artisan would not look to Plaisant simply because it discloses wall-mounted touchscreens:

Q. And can you show us, please, using some graphics, remind us what the Plaisant application is.

A. Sure. Quickly I’ve got a few slides on Plaisant, this is the paper, the two-page paper, it describes touch screen toggle designs, so these are on/off switches.

And the way they were intended to be used was the touch screen would be mounted into a wall or into cabinetry and it would be used to control, for remote control, office or home appliances, like air conditioning units or heaters.

The publication itself and the video that accompanies it both teach away from the use of sliding…. [Plaisant] tells us that toggles that are pushed seem to be preferred over toggles that slide; and the sliding is more complex than simply touching; and also that sliders are harder to implement.

And the figure at the top shows those results for user preference indicating that both of the two designs that they considered, levers and sliders, was the least preferred, that’s the slider highlighted in red and the lever.

Q. [Samsung’s expert] told this jury that a person of ordinary skill in the art would have been naturally motivated to combine the Neonode guide with the Plaisant article.

Did you agree with that opinion?

A. No, I do not.

Q. And why do you say that?

A. The patent office, the patent examiner, had all of the Neonode guide available to them.

They also had Plaisant, in its complete form, available to them, and they commented extensively on Plaisant. There was an extensive discussion of Plaisant, and at the end of that discussion, they conclude that Plaisant does not, or none of the prior art discloses continuous movement of the unlock image to order to unlock the device.

J.A. 12876–78 (emphases added to denote portions of the testimony relied on by the majority). ^[6]

Dr. Cockburn’s statement concerning wall-mounted touchscreens did not concern whether a person of ordinary skill would look to Plaisant to solve the problem of “unintentional activation”; it was merely a restatement of Plaisant’s express disclosure. See J.A. 20742 (“Users see the screen flushmounted into the wall or the cabinetry.”). ^[7] Indeed, leaving aside his reference to the entirely discrete issue of teaching away, Dr. Cockburn’s only purported rationale for a lack of motivation to combine was that both Neonode and Plaisant were before the Patent Office during prosecution—a fact that Apple does not rely on before us with respect to motivation to combine.

In stark contrast, the jury heard compelling evidence that a skilled artisan would be motivated to combine the references to solve the problem of unintentional activation. Most importantly, Plaisant itself expressly teaches that an “advantage of the sliding movement is that it is less likely to be done inadvertently.” J.A. 20743. Indeed, this disclosure alone does more than motivate the combination of Plaisant with Neonode—it actually teaches and suggests it.

Samsung’s expert, Dr. Greenberg, explained this to the jury when asked whether a skilled artisan would be motivated to combine the references:

They both specifically describe how a sliding action is used to prevent accidental activation.

So this is—you know, a person looking at this would just think it natural to combine these two, as well taking the ideas in Plaisant, the slider, and putting them on the Neonode is, is just a very routine thing to think about in terms of interaction design.

J.A. 11982–83. By the end of trial, the jury had thus heard from Samsung’s expert, who articulated a specific motivation to combine based on the explicit disclosure of Plaisant itself, and from Apple’s expert, who gave no explanation as to why a skilled artisan would not be so motivated.

Nonetheless, the majority finds that there is substantial evidence of a lack of motivation to combine. But a reviewing court in our situation must “review the record as a whole,” crediting not only evidence favoring the nonmovant but also “evidence supporting the moving party that is uncontradicted and unimpeached, at least to the extent that that evidence comes from disinterested witnesses.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 151, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000) (internal quotation marks omitted). Here, the record as a whole makes clear that a skilled artisan, starting with the portable phone of Neonode, would have seen a benefit to adding Plaisant’s sliders to solve the accidental activation problem described by the ′ 721 patent. ^[8] See KSR, 550 U.S. at 424, 127 S.Ct. 1727. A straightforward evaluation of the entire record compels only one reasonable conclusion—there is a motivation to combine Neonode with Plaisant.

In sum, there is no support in the record for the majority’s conclusion that substantial evidence supports the jury’s implicit factual finding that a person of ordinary skill in the art would not be motivated to combine Neonode and Plaisant. Substantial evidence may be a lenient standard, but it is a standard nonetheless that cannot be met with the stark absence of evidence. Therefore, no rational jury could find that a motivation to combine the references to arrive at the claimed invention was lacking.

B

Despite the majority’s statement that there is no motivation to combine, the majority does not appear to rest its conclusion on that basis. See Majority Op. at 1052. Instead, the majority goes on to state that it considers Plaisant’s teachings, including the reference to “inadvertent activation,” against the evidence of secondary considerations. Id. at 1058-59. It is unclear what analytical framework the majority has adopted in its analysis and whether this goes to the question of motivation to combine. We have only weighed the teachings of a prior art reference related to motivation to combine against each other in the teaching away context. See, e.g., Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 739 (Fed. Cir. 2013) (a teaching that a concentration of 0.1% was optimal did not weigh against a teaching that 0.3% concentration was possible); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (a teaching expressing a “general preference for an alternative” did not weigh against a teaching). Doing so as part of the ultimate legal question of obviousness, as the majority does now, is a new approach that neither we nor the Supreme Court has sanctioned.

Given the majority’s conclusion (with which I disagree) that there was no motivation to combine references in this case, there is no reason for the majority to go on to opine on the question of secondary considerations at all—that discussion is arguably dicta. ^[9] See, e.g., Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293, 1304–07 (Fed. Cir. 2015) (affirming a nonobvious determination based only on issues of teaching away and unexpected results); Stryker Corp. v. Zimmer, Inc., No. 2013–1668, 837 F.3d 1268, 1277-78, 2016 WL 4729504, at *7 (Fed. Cir. Sept. 12, 2016) (declining to reach secondary considerations in reaching a determination of nonobviousness), vacated and remanded on other grounds sub nom. Halo Elecs., Inc. v. Pulse Elecs., Inc., ––– U.S. ––––, 136 S.Ct. 1923, 195 L.Ed.2d 278 (2016); In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (same).

In my analysis, however, I conclude that no reasonable jury could find a lack of motivation to combine, so I am obligated to consider Apple’s proffered evidence of secondary considerations. Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1339 (Fed. Cir. 2016).

In the history of our court, we have only once held that evidence of secondary considerations outweighs strong evidence of obviousness. See Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340 (Fed. Cir. 2012). In that case, the jury, in view of “compelling” evidence, made express findings that seven types of secondary considerations supported nonobviousness. Id. at 1349, 1354. However, we acknowledged that “[f]ew cases present such extensive objective evidence of nonobviousness, and thus we have rarely held that objective evidence is sufficient to overcome a prima facie case of obviousness.” Id. at 1354. This is not a case where evidence of secondary considerations is so “extensive.” See KSR, 550 U.S. at 426, 127 S.Ct. 1727 (“Like the District Court, finally, we conclude Teleflex has shown no secondary factors to dislodge the determination that claim 4 is obvious.”).

When examining evidence of secondary considerations, “courts must exercise care in assessing proffered evidence of objective considerations, giving such evidence weight only where the objective indicia are attributable to the inventive characteristics of the discovery as claimed in the patent.” In re Cyclobenzaprine Hydrochloride Extended–Release Capsule Patent Litig., 676 F.3d 1063, 1079 n.6 (Fed. Cir. 2012) (internal quotation marks omitted) (citations omitted). The proponent of such evidence of secondary considerations, in this case Apple, “bears the burden of showing that a nexus exists between the claimed features of the invention and the objective evidence offered to show non-obviousness.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). Though the existence of such a nexus is a question of fact, which we review for substantial evidence, the consideration of objective indicia is part of the ultimate determination of obviousness which we review de novo. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“Even when we presume the jury found that the objective evidence of nonobviousness favored [the patentee], this evidence is insufficient to overcome the overwhelming strength of [the alleged infringer’s] prima facie case of obviousness.”); Leapfrog Enters., Inc. v. Fisher–Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (agreeing with the district court’s conclusion that even substantial evidence of various secondary considerations was “inadequate to overcome” obviousness as a matter of law). The mere existence of evidence of secondary considerations does not control the obviousness determination. Richardson–Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997).

In this case, Apple presented evidence that it contends shows there was commercial success, long-felt need, industry praise, and copying. However, Apple’s evidence of commercial success does not establish a nexus with the patented feature, and the remaining evidence, even if a nexus is assumed, is not sufficient to “tip the scales of patentability.” Graham v. John Deere Co., 383 U.S. 1, 36, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

1

To argue commercial success on appeal, Apple only relies on a portion of a survey introduced to establish the value of the “patent-related” slide-to-unlock feature on tablets with screens larger than 7 inches, J.A. 21066, 21108, coupled with Dr. Greenberg’s statement that “there’s no question that the Apple iPhone was a commercial success.” J.A. 11984; see Apple Br. 29. This evidence does not establish a nexus for commercial success. ^[10]

With respect to the survey, it did not ask about the slide-to-unlock feature on smartphones, which in the survey had screens no larger than 5.5 inches (smaller than the surveyed tablet screens). J.A. 21076, 21108. Apple does not point to any separate evidence regarding the sales of those tablets. As for the success of the iPhone device, there is no evidence tying that success specifically to the features embodied in the claimed invention. To establish the requisite nexus, there needs to be some record evidence to tie the commercial success of a product to the slide-to-unlock feature of that product embodying the claimed invention. Here, there is none.

In addition, although Dr. Greenberg testified that the iPhone was commercially successful, he continued: “[b]ut I’ve seen no evidence that says that that commercial success was due to the lock screen.” J.A. 11985. No reasonable juror could conclude that Dr. Greenberg’s statement that he had seen no evidence of a nexus was somehow evidence of a nexus. ^[11]

2

The remainder of Apple’s secondary consideration arguments consists of long-felt need, industry praise, and copying. To show long-felt need, Apple relies on the testimony of Dr. Cockburn, who provided a single example of a portable phone that he characterized as “entirely unintuitive.” J.A. 10638–39. For industry praise, Apple relies upon the audience reaction at the first public unveiling of the iPhone. J.A. 12879–80. Finally, Apple relies on internal Samsung documents that it argues show both copying and industry praise. See, e.g., J.A. 51289.157

Even assuming that the jury implicitly found a nexus between Apple’s evidence and the claimed invention, this evidence is insufficient in the face of the strong evidence of obviousness. The testimony of an expert testifying as to a single example of unsatisfactory prior art is, at best, weak. Cf. Cyclobenzaprine, 676 F.3d at 1083 (testimony regarding an expert’s experience over ten years). Similarly, Apple’s evidence of applause at its own press event is also weak evidence of nonobviousness. See In re Cree, 818 F.3d 694, 702 (Fed. Cir. 2016) (finding a company’s press release unpersuasive evidence of nonobviousness). Finally, though Samsung’s internal documents are probative of copying (and industry praise), they do not move the needle in this case. See Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1370 (Fed. Cir. 2011) (finding evidence of copying unpersuasive evidence of nonobviousness).

Considering the totality of the evidence, Apple’s evidence relating to secondary considerations does not “tip the scales of patentability.” Graham, 383 U.S. at 36, 86 S.Ct. 684; see also Leapfrog Enters., 485 F.3d at 1162 (finding substantial evidence of commercial success, industry praise, and long-felt need insufficient to overcome strong evidence of obviousness); Richardson–Vicks, 122 F.3d at 1483 (“Evidence of secondary considerations … are but a part of the ‘totality of the evidence’ that is used to reach the ultimate conclusion of obviousness.”). The asserted claim of the ′721 patent is therefore obvious as a matter of law. ^[12]

[Text omitted]

CONCLUSION

For the foregoing reasons, no jury could rationally conclude that the ′721 and ′172 patents were not obvious, or that Samsung infringed the ′647 patent. Therefore, I respectfully dissent.

[Dissents by Judge Dyk and Judge Reyna omitted]