On October 7, 2016, the Federal Circuit issued another decision in the ongoing patent litigations between Apple and Samsung that began in the Northern District of California. The district court had found at summary judgment that Samsung infringed one of Apple’s patents. The jury subsequently determined that Samsung infringed two others, and that the asserted claims were not invalid. The district court then denied Samsung’s motions for judgment as a matter of law (“JMOL”) and entered judgment accordingly. In the subsequent appeals (2015-1171, 2015-1195, 2015-1994) a panel of the Federal Circuit (Chief Judge Prost, Judge Dyk, and Judge Reyna) reversed the district judge’s denial of JMOL with regard to the jury’s verdict of infringement of one patent and non-obviousness of two others.
Apple sought rehearing en banc, arguing that the panel had erred by relying upon “extra record evidence” to modify one of the parties’ agreed-upon claim constructions – evidence that the panel had located through its own independent research. According to Judge Dyk’s dissent from the opinion of the en banc majority, for the first time in 26 years the Court granted en banc review in an obviousness case. And the Court did so without further briefing from the parties, amici, or the government.
The en banc majority opinion and three dissents (authored by, not surprisingly, the members of the original panel) stretch more than one hundred pages and include a fascinating obviousness analysis focusing on, in particular, motivation to combine and the role of secondary considerations. The decision is, in this author’s opinion, a “must read” for that reason alone. This article, however, concerns the Court’s grant of en banc review in the first place, which all three dissenting Judges condemned in their opinions.