15-10-19 samsung petition for en banc rehearing

8/20/2019 15-10-19 Samsung Petition for en Banc Rehearing

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Appeal No. 2015-2088

United States Court of Appeals for the

Federal Circuit

APPLE INC., a California corporation,

Plaintiff-Appellee,

– v. –

SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG ELECTRONICS CO.,

LTD., SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,

Defendants-Appellants,

INTERNATIONAL BUSINESS MACHINES CORPORATION, RESEARCH IN

MOTION CORPORATION, RESEARCH IN MOTION, LTD.,REUTERS AMERICA, LLC,

Defendants.

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF CALIFORNIA IN CASE NO. 11-CV-01846-LHK

JUDGE LUCY H. KOH

DEFENDANTS-APPELLANTS’ PETITION FOR

REHEARING EN BANC

VICTORIA F. MAROULIS

QUINN EMANUEL URQUHART

& SULLIVAN, LLP555 Twin Dolphin Drive, 5

th Floor

Redwood Shores, California 94065

(650) 801-5000

K ATHLEEN M. SULLIVAN

WILLIAM B. ADAMS

QUINN EMANUEL URQUHART & SULLIVAN, LLP

51 Madison Avenue, 22nd

Floor

New York, New York 10010(212) 849-7000

MICHAEL T. ZELLER

B. DYLAN PROCTOR

QUINN EMANUEL URQUHART

& SULLIVAN, LLP865 South Figueroa Street, 10

th Floor

Los Angeles, California 90017

(213) 443-3000

Attorneys for Defendants-Appellants

Case: 15-2088 Document: 30 Page: 1 Filed: 10/19/2015


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CERTIFICATE OF INTEREST

Counsel for Defendants-Appellants certifies the following:

1. The full name of every party or amicus represented by me is:

Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. Effective

January 1, 2015, Samsung Telecommunications America, LLC (“STA”) merged

with and into Samsung Electronics America, Inc., and therefore STA no longer

exists as a separate corporate entity.

2. The name of the real party in interest (if the party named in the caption

is not the real party in interest) represented by me is:

N/A

3. All parent corporations and any publicly held companies that own 10

percent or more of the stock of the party or amicus curiae represented by me

are:

Samsung Electronics America, Inc. (“SEA”) is a wholly-owned subsidiary of

Samsung Electronics Co., Ltd. (“SEC”), a publicly held corporation organized

under the laws of the Republic of Korea. SEC is not owned by any parent

corporation and no other publicly held corporation owns 10% or more of its stock.

No other publicly held corporation owns 10% or more of SEA’s stock.



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4. The names of all law firms and the partners or associates that appeared

for the party or amicus now represented by me in the trial court or are

expected to appear in this court are:

Quinn Emanuel Urquhart & Sullivan, LLP: Anne E. Abramowitz; William B.

Adams; Anthony P. Alden; Carl G. Anderson; Brett J. Arnold; Katharine F.

Barach; Robert J. Becher; Albert P. Bedecarre; Heather E. Belville; Kara M.

Borden; Todd M. Briggs; Margret M. Caruso; Jon C. Cederberg; Melissa N. Chan;

Prashanth Chennakesavan, Kenneth R. Chiate; Edward J. DeFranco; Susan R.

Estrich; Michael L. Fazio; Ryan S. Goldstein; John S. Gordon; Diane Hutnyan;

Kevin P.B. Johnson; Rachel H. Kassabian; Scott B. Kidman; Brian E. Mack;

Victoria F. Maroulis; Joseph B. Martin; Joseph Milowic; Melissa Chan O’Sullivan;

Thomas D. Pease; John M. Pierce; William C. Price; B. Dylan Proctor; John B.

Quinn; Carey R. Ramos; Kevin A. Smith; Christopher E. Stretch; Robert W. Stone;

Kathleen M. Sullivan; Bill Trac; Mark Tung; Charles K. Verhoeven; Curran M.

Walker; Scott L. Watson; Thomas R. Watson; Alan L. Whitehurst; Robert Wilson;

Michael T. Zeller

Colt / Singer / Bea LLP: Benjamin L. Singer

Crone Hawxhurst LLP: Daryl M. Crone

DLA Piper US LLP: Thomas G. Pasternak



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Hopenfeld Singer Rice & Saito: James E. Hopenfeld; Edward H. Rice; Marina N.

Saito

Sheppard Mullin Richter & Hampton LLP : Gary L. Halling; Mona Solouki

Steptoe & Johnson LLP: John M. Caracappa; Paul A. Gennari; Michael R.

Heimbold; Huan-Yi Lin; Kfir B. Levy; Dylan Ruga

Dated: October 19, 2015 Respectfully submitted,

By: /s/ Kathleen M. Sullivan

Kathleen M. SullivanQUINN EMANUEL URQUHART& SULLIVAN, LLP

51 Madison Avenue, 22nd Floor New York, NY 10010Telephone: (212) 849-7000Facsimile: (212) [email protected]

Attorney for Defendants-Appellants



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TABLE OF CONTENTS

Page

CERTIFICATE OF INTEREST ................................................................................. i

TABLE OF AUTHORITIES ..................................................................................... v

STATEMENT OF COUNSEL PURSUANT TO FED. CIR. R. 35(B)(2) ............... 1

PRELIMINARY STATEMENT ............................................................................... 1

FACTUAL STATEMENT ........................................................................................ 2

ARGUMENT ............................................................................................................. 5

I. THE PANEL’S SUMMARY ORDER CONFLICTS WITHDECISIONS OF THE SUPREME COURT AND OTHER CIRCUITS ........ 5

A.

The Panel’s Decision On The Collateral Estoppel Effect Of AFinal PTAB Decision Conflicts With The Supreme Court’sDecision In B&B Hardware And Other Authorities ............................. 5

B. The Panel’s Decision Allowing Entry of Partial Final JudgmentDespite Noncompliance With Rule 54(b) Conflicts With TheSupreme Court’s Decision In Unitherm And Deepens A CircuitSplit ...................................................................................................... 10

II. THE ISSUES PRESENTED HAVE EXCEPTIONALIMPORTANCE TO PATENT LITIGATION AS A PRACTICAL

MATTER ....................................................................................................... 14

CONCLUSION ........................................................................................................ 15

ADDENDUM

PROOF OF SERVICE



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TABLE OF AUTHORITIES

Page(s)

Cases

AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc.,759 F.3d 1285 (Fed. Cir. 2014) ................................................................ 9, 10, 14

Apple Inc. v. Samsung Electronics Co.,786 F.3d 983 (Fed. Cir. 2015) .......................................................................... 1, 3

Aspex Eyewear, Inc. v. Concepts in Optics, Inc.,153 F. App’x 730 (Fed. Cir. 2005) ..................................................................... 12

B&B Hardware, Inc. v. Hargis Indus., Inc.,

135 S. Ct. 1293 (2015) ........................................................................ 1, 5, 6, 8, 10

Bank of Nova Scotia v. United States,487 U.S. 250 (1988) ............................................................................................ 11

Barnes v. United States,678 F.2d 10 (3d Cir. 1982) ................................................................................. 13

Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found.,402 U.S. 313 (1971) .............................................................................................. 7

Carter v. United States,333 F.3d 791 (7th Cir . 2003) .............................................................................. 13

Clark v. United States,656 F.3d 1317 (Fed. Cir. 2011) .......................................................................... 10

Dana Corp. v. NOK, Inc.,882 F.2d 505 (Fed. Cir. 1989) .............................................................................. 7

Dempsey v. United States,32 F.3d 1490 (11th Cir. 1994) ............................................................................ 13

Deposit Bank v. Bd. of Councilmen of City of Frankfort ,191 U.S. 499 (1903) .............................................................................................. 7

DietGoal Innovations LLC v. Chipotle Mexican Grill, Inc.,70 F. Supp. 3d 808 (E.D. Tex. 2014) .................................................................... 7



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Engel Indus., Inc. v. Lockformer Co.,166 F.3d 1379 (Fed. Cir. 1999) .......................................................................... 10

ePlus, Inc. v. Lawson Software, Inc.,789 F.3d 1349 (Fed. Cir. 2015) .......................................................................... 14

ePlus, Inc. v. Lawson Software, Inc.,790 F.3d 1307 (Fed. Cir. 2015) ............................................................................ 6

Fadhl v. City & Cnty. of San Francisco,804 F.2d 1097 (9th Cir. 1986) ............................................................................ 13

Fresenius USA, Inc. v. Baxter Int ’ l, Inc.,721 F.3d 1330 (Fed. Cir. 2013) ................................................................ 9, 10, 14

Jalapeno Property Management, LLC v. Dukas,265 F.3d 506 (6th Cir. 2001) .............................................................................. 12

In re Katz Interactive Call Processing Patent Litig.,2013 WL 3223382 (C.D. Cal. June 12, 2013) ...................................................... 8

King Instrument Corp. v. Otari Corp.,814 F.2d 1560 (Fed. Cir. 1987) .................................................................... 12, 13

Mendenhall v. Barber – Greene Co.,26 F.3d 1573 (Fed. Cir. 1994) .......................................................................... 6, 7

Pharmacia & Upjohn Co. v. Mylan Pharms., Inc.,170 F.3d 1373 (Fed. Cir. 1999) ............................................................................ 7

Ruyle v. Cont ’ l Oil Co.,44 F.3d 837 (10th Cir. 1994) ................................................................................ 8

SEC v. Frohling , __ F. App’x __ , 2015 WL 3556267 (2d Cir. June 9, 2015) ............................... 15

SSIH Equip. S.A. v. U.S. Int ’ l Trade Comm’ n,718 F.2d 365 (Fed. Cir. 1983) .............................................................................. 7

Sears, Roebuck & Co. v. Mackey,351 U.S. 427 (1956) ............................................................................................ 11



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Tan v. Integrated Silicon Solutions, Inc.,2008 WL 2340217 (N.D. Cal. June 5, 2008) ........................................................ 8

Taylor v. U.S. PTO,385 F. App’x 980 (Fed. Cir. 2010) ..................................................................... 13

Thompson-Hayward Chem. Co. v. Rohm & Haas Co.,745 F.2d 27 (Fed. Cir. 1984) ................................................................................ 7

Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc.,546 U.S. 394 (2006) ...................................................................... 1, 10, 11, 12, 13

Statutes & Rules

28 U.S.C. § 2106 ............................................................................3, 4, 10, 11, 12, 13

35 U.S.C. § 141 .................................................................................................. 7, 8, 9

35 U.S.C. § 146 .......................................................................................................... 9

35 U.S.C. § 307 .......................................................................................................... 9

Fed. R. App. P. 28(j) ............................................................................................. 4

Fed. R. Civ. P. 54(b) ................................................... 1, 2, 3, 4, 5, 10, 11, 12, 13, 15

Fed. R. Civ. P. 50(b) ................................................................................................ 11

Miscellaneous Authorities

Grantland G. Drutchas & James L. Lovsin, Preclusive Effect of PTAB Decisions Gets A Fresh Look , Law360 (June 19, 2015) ...................................... 9

Restatement (2d) of Judgments § 13 cmt. f (1982) ................................................... 9

Restatement (2d) of Judgments § 83(1) (1982) ........................................................ 8

Restatement (2d) of Judgments § 83 cmt. a (1982) .................................................. 8



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STATEMENT OF COUNSEL PURSUANT TO FED. CIR. R. 35(b)(2)

Based on my professional judgment, I believe the panel decision is contrary

to the following decisions of the Supreme Court: B&B Hardware, Inc. v. Hargis

Indus., Inc., 135 S. Ct. 1293 (2015); Unitherm Food Systems, Inc. v. Swift-Eckrich,

Inc., 546 U.S. 394 (2006).

Based on my professional judgment, I believe this appeal requires an answer

to these precedent-setting questions of exceptional importance: (a) Whether

traditional principles of collateral estoppel apply to final decisions of the U.S.

Patent and Trademark Office invalidating patents on ex parte reexamination, such

that those decisions have preclusive effect in pending federal court cases; and (b)

Whether, on remand following an appeal, a district court may enter partial final

judgment only if it complies with Fed. R. Civ. P. 54(b), an issue that divides the

courts of appeals.

/s/ Kathleen M. Sullivan

PRELIMINARY STATEMENT

This is an appeal by Defendants-Appellants Samsung Electronics Co., Ltd.,

Samsung Electronics America, Inc., and Samsung Telecommunications America,

LLC (collectively, “Samsung”) of a $548 million partial final judgment entered by

the U.S. District Court for the Northern District of California (Koh, J.) in favor of

Plaintiff-Appellee Apple Inc. (“Apple”) following a partial reversal and remand by

this Court in Apple Inc. v. Samsung Electronics Co., 786 F.3d 983 (Fed. Cir. 2015).



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Without the benefit of normal briefing or oral argument, a panel of this Court

(Prost, C.J., joined by O’Malley & Chen, JJ.) summarily affirmed that judgment.

It did so even though much remains unresolved in this case. The $399 million of

that judgment awarded for design-patent infringement is the subject of a

forthcoming petition for a writ of certiorari. The $114 million of that judgment

awarded for infringement of Apple’s ’915 patent is subject to collateral estoppel

now that the U.S. Patent and Trademark Office has invalidated that patent in a final

decision. And every one of Apple’s patents-in-suit is subject to an upcoming

retrial on damages in light of this Court’s reversal of Apple’s trade-dress judgment,

making entry of partial final judgment indisputably improper under Fed. R. Civ. P.

54(b).

While a judicial interest in bringing this case to an end is certainly

understandable, that interest cannot override the need to conform decisions with

Supreme Court precedent, the Federal Rules of Civil Procedure, and established

principles of collateral estoppel. Rehearing en banc is warranted to ensure

adherence to this authority and to avoid the inequity of forcing Samsung to pay

damages on a finally invalidated patent.

FACTUAL STATEMENT

Following two jury trials, in March 2014 the district court entered a $929

million judgment against Samsung for infringement of Apple’s D’677, D’087 and



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D’305 design patents and Apple’s ’381, ’915 and ’163 utility patents, and for

dilution of Apple’s iPhone-related trade dresses. Dkt. 3017. Samsung appealed,

and in May 2015, this Court reversed the judgment of trade-dress dilution, holding

Apple’s asserted trade dresses are functional, and otherwise affirmed. Apple, 786

F.3d 983. This Court remanded “for immediate entry of final judgment on all

damages awards not predicated on Apple’s trade dress claims and for any further

proceedings necessitated by our decision to vacate the jury’s verdicts on the

unregistered and registered trade dress claims.” Id. at 1005.

On remand, Apple submitted a proposed partial final judgment for more than

$548 million, reflecting patent-infringement damages for the Samsung products

not found to dilute Apple’s trade dresses. Samsung objected that the proposed

judgment was barred by Fed. R. Civ. P. 54(b) — the only provision in the Federal

Rules authorizing entry of a partial final judgment — because each of Apple’s

infringement claims remains subject to a damages retrial (scheduled for March

2016) as to some accused products, and a claim can be the subject of a partial final

judgment only if it has been completely and finally resolved. Dkt. 3269. Without

disputing this, Apple responded that this Court’s authority to fashion appropriate

relief on appeal, granted by 28 U.S.C. § 2106, vitiated the need to comply with

Rule 54(b) on remand. Dkt. 3276 at 6-8. The district court agreed and entered a

partial final judgment awarding Apple $548,176,477 on September 18, 2015 (Dkt.



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3290), stating that it was doing so under this Court’s prior mandate and Section

2106 and not under Rule 54(b). Add. 92-93.1

This partial final judgment includes at least $114 million in damages for ten

products found to infringe Apple’s ’915 patent. See Dkt. 2822 at 1-2; Dkt. 2947 at

3-9. Parallel ex parte reexamination proceedings regarding the validity of that

patent have been occurring for several years. On December 9, 2014, after the

original final judgment was entered in this case and after oral argument in the prior

appeal, the PTAB affirmed the examiner’s rejection of all claims of the ’915

patent. Dkt. 3267-19.2 Apple petitioned the PTAB for rehearing (Dkt. 3267-20),

which the PTAB denied on September 24, 2015 (Samsung Add. 1-8). The

invalidation of A pple’s ’915 patent is now subject to further review only by this

Court on appeal.

On remand, Samsung moved the district court for judgment based on the

PTAB invalidity decision under principles of collateral estoppel, or for a stay. Dkt.

3267. The district court denied that motion on September 18, 2015, ruling that

1 “Add. __” refers to the addendum Apple submitted with its motion forsummary affirmance. See Fed. Cir. Dkt. 17. “Samsung Add. __” refers to theaddendum Samsung submitted with its opposition to Apple’s motion. See Fed. Cir.Dkt. 27. “Dkt. __” refers to the district court docket in this case, N.D. Cal. Case

No. 11-cv-01846. “Fed. Cir. Dkt. __” refers to the docket in this appeal.

2 Samsung notified the panel of that decision in a Rule 28(j) letter, and Apple responded with a letter of its own stating that it intended to seek rehearingfrom the PTAB. See Fed. Cir. Case No. 14-1335, Dkts. 152, 153. This Court didnot invite briefing on the subject or address the ruling in its decision.



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collateral estoppel does not apply to a final PTAB decision invalidating a patent.

Add. 80-83, Add. 90-96.

Samsung noticed its appeal of the partial final judgment on September 21,

2015. Dkt. 3292. On September 30, 2015, Apple moved for summary affirmance.

Fed. Cir. Dkt. No. 17. Samsung opposed, arguing that the district court’s entry of a

partial final judgment that deviates from the requirements of Rule 54(b), and that

awards Apple more than $100 million on a patent that has been finally invalidated

by the PTAB, presents substantial issues of law warranting full briefing. Fed. Cir.

Dkt. No. 27. On October 13, 2015, the panel summarily affirmed the partial final

judgment without opinion. See Pet. Addendum.

ARGUMENT

I. THE PANEL’S SUMMARY ORDER CONFLICTS WITH

DECISIONS OF THE SUPREME COURT AND OTHER CIRCUITS

A.

The Panel’s Decision On The Collateral Estoppel Effect Of A

Final PTAB Decision Conflicts With The Supreme Court’s

Decision In B& B Hardware And Other Authorities

En banc review is appropriate first because, in conflict with B&B Hardware,

the panel’s summary order denies collateral estoppel effect to the PTAB’s final

decision invalidating Apple’s ’915 patent. In B&B Hardware, the Supreme Court

held that a final decision by an administrative agency ordinarily merits collateral

estoppel effect to the same extent as a final decision of a federal district court. 135

S. Ct. at 1303, 1310. There, the Eighth Circuit had refused to apply collateral



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estoppel to a final decision of the Trademark Trial and Appeal Board (“TTAB”) —

the trademark analogue of the PTAB —“for reasons that would make it difficult for

the doctrine ever to apply in trademark disputes .” Id. at 1299. Rejecting “that

narrow understanding of issue preclusion,” id., the Supreme Court explained:

Both this Court’s cases and the Restatement make clear that issue preclusion is not limited to those situations in which the same issue is before two courts. Rather, where a single issue is before a court andan administrative agency, preclusion also often applies. Indeed, thisCourt has explained that because the principle of issue preclusion wasso “well established” at common law, in those situations in which

Congress has authorized agencies to resolve disputes, “courts maytake it as given that Congress has legislated with the expectation thatthe principle [of issue preclusion] will apply except when a statutory

purpose to the contrary is evident.” … This reflects the Court’slongstanding view that “‘[w]hen an administrative agency is acting ina judicial capacity and resolves disputed issues of fact properly beforeit which the parties have had an adequate opportunity to litigate, thecourts have not hesitated to apply res judicata to enforce repose.’”

Id . at 1303 (citations omitted). The Supreme Court thus adopted the rule that, “[s]o

long as the other ordinary elements of issue preclusion are met, when the usages

adjudicated by the TTAB are materially the same as those before the district court,

issue preclusion should apply.” Id. at 1310.

The panel’s summary order offers no reason why the same should not be

true here with respect to the PTAB’s final invalidity decision on the ’915 patent—

even though the order creates the “‘manifestly unjust’” circumstance, ePlus, Inc. v.

Lawson Software, Inc., 790 F.3d 1307, 1309 (Fed. Cir. 2015) (Dyk, J., concurring

in denial of rehearing en banc) (quoting Mendenhall v. Barber – Greene Co., 26



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The panel’s summary order conflicts not only with B&B Hardware by

failing to apply collateral estoppel despite these settled authorities, but also with

the Restatement (Second) of Judgments, which makes clear that “[a]n

administrative adjudication becomes preclusive when it has become final in

accordance with the rules stated in §§ 13 and 14”— which set forth the ordinary

rules of finality for court decisions — and that “[i]t is not necessary that the

administrative adjudication have been reviewed and affirmed by a court.”

Restatement (2d) of Judgments § 83 cmt. a (1982); see also id. § 83(1) (“a valid

and final adjudicative determination by an administrative tribunal has the same

effects under the rules of res judicata, subject to the same exceptions and

qualifications, as a judgment of a court”). Following these principles, several

district courts have ruled that PTAB decisions are final for purposes of collateral

estoppel despite the pendency of an appeal. E.g., In re Katz Interactive Call

Processing Patent Litig., 2013 WL 3223382, *1-2 (C.D. Cal. June 12, 2013); Tan

v. Integrated Silicon Solutions, Inc., 2008 WL 2340217, *3-4 (N.D. Cal. June 5,

2008). And other courts of appeals apply collateral estoppel similarly. See, e.g.,

Ruyle v. Cont’ l Oil Co., 44 F.3d 837, 845-46 (10th Cir. 1994) (holding agency

decision preclusive despite pending appeal).

While this Court has left open whether a PTAB decision “that is on appeal

[to this Court] under § 141 can have collateral estoppel effect on issues raised in a



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co- pending litigation” prior to resolution of that appeal, AbbVie Deutschland

GmbH & Co. v. Janssen Biotech, Inc., 759 F.3d 1285, 1296-97 (Fed. Cir. 2014),

Samsung respectfully submits that that question should be resolved now by

granting en banc review in this case. In AbbVie, this Court declined to apply

collateral estoppel to a PTAB patent interference decision that was subject to a

district court’s de novo review under 35 U.S.C. § 146, explaining that a “Board

decision that is reviewed under § 146 is not a ‘ binding final judgment’” because “a

district court can make a de novo determination of facts upon the submission of

new evidence.” 759 F.3d at 1296-97. That holding rested on the established rule

that estoppel does not apply if an appeal would involve a full trial de novo. See

Restatement (2d) of Judgments § 13 cmt. f. But this Court made clear that its

holding did not apply where, as here, the only available appeal is to this Court

under Section 141, which is “more akin to a traditional appeal from a district court

decision.” 759 F.3d at 1296.

Apple has argued that, because a patent is cancelled under 35 U.S.C. § 307

only following an unsuccessful appeal of a PTAB invalidity ruling to this Court,

collateral estoppel cannot apply prior to such an appeal. But collateral estoppel is

governed by finality, not cancellation, and the PTAB’s invalidation of Apple’s

’915 patent is indisputably final. Compare Abbvie, 759 F.3d at 1296-97 (collateral

estoppel), with Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330, 1339-40



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(Fed. Cir. 2013) (cancellation). As Fresenius explains, a patent is cancelled once

this Court affirms a PTAB invalidity ruling, and that “cancellation extinguishes the

underlying basis for suits based on the patent.” 721 F.3d at 1344. But after

Fresenius was decided, AbbVie left open the applicability of collateral estoppel

prior to cancellation, recognizing the distinctness of the two concepts.

Until the panel’s summary order, this Court had never held that PTAB

invalidity decisions are not entitled to collateral estoppel effect. This blanket

rejection of collateral estoppel conflicts with B&B Hardware and the Restatement

(Second) of Judgments, among other authorities, creates a manifestly unjust result,

and warrants rehearing en banc.6

B. The Panel’s Decision Allowing Entry of Partial Final Judgment

Despite Noncompliance With Rule 54(b) Conflicts With The

Supreme Court’s Decision In Unitherm And Deepens A Circuit

Split

In Unitherm, the Supreme Court explained that “the broad grant of authority

to the courts of appeals in § 2106 must be exercised consistent with the

requirements of the Federal Rules of Civil Procedure ….” 546 U.S. at 402 n.4

6 This Court did not address collateral estoppel in its May 18, 2015 opinionand judgment in this case, and its August 25, 2015 issuance of the mandate plainly

could not have encompassed the preclusive effect of the PTAB’s denial ofrehearing, which rendered the proceedings in the PTO final only later, onSeptember 24, 2015. See, e.g., Clark v. United States, 656 F.3d 1317, 1320-21(Fed. Cir. 2011) (appellate mandate encompasses issues “actually decided” onappeal); Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1382 (Fed. Cir.1999) (mandate rule covers only matters within “scope of the judgment appealedfrom”).



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(emphasis added). The Supreme Court thus held that this Court had erred in

directing entry of judgment based on insufficient evidence without complying with

Rule 50(b). Id . at 407. While Unitherm arose in the context of Rule 50(b), its

reasoning that the Federal Rules limit an appellate court’s authority under

Section 2106 has general applicability. That reasoning is also consistent with other

Supreme Court precedent confirming that the Federal Rules are “as binding as any

statute duly enacted by Congress, and federal courts have no more discretion to

disregard [a Rule’s] mandate than they do to disregard constitutional or statutory

provisions.” Bank of Nova Scotia v. United States, 487 U.S. 250, 255 (1988)

(addressing Federal Rules of Criminal Procedure).

The panel’s summary order conflicts with these precedents in authorizing

this Court’s mandate to trump the Federal Rules of Civil Procedure, upholding the

district court’s entry of a partial final judgment not compliant with Rule 54(b). It

is undisputed that that partial final judgment does not satisfy the requirements of

Rule 54(b) because that Rule requires the resolution of “claims” and Ap ple’s

patent-infringement claims, which were pleaded patent-by-patent, remain non-final

because each of Apple’s patents is subject to the upcoming damages retrial on the

products that were the subject of this Court’s partial reversal. See, e.g., Sears,

Roebuck & Co. v. Mackey, 351 U.S. 427, 436 (1956) (entry of partial final

judgment permitted only if there has been “an ultimate disposition of an individual



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claim entered in the course of a multiple claims action”) (emphasis added); Aspex

Eyewear, Inc. v. Concepts in Optics, Inc., 153 F. App’x 730, 731 (Fed. Cir. 2005)

(Rule 54(b) requires that “the district court must have decided all pertinent issues

regarding the claim, and not just liability”).

The district court did not suggest that Rule 54(b) permitted entry of its

partial final judgment, but rather concluded (Add. 92-93) that the Rule is overcome

by this Court’s authority under 28 U.S.C. § 2106 to “remand the cause and direct

the entry of such appropriate judgment, decree, or order, or require such further

proceedings to be had as may be just under the circumstances.” The district court

relied (Add. 91-95) on this Court’s decision in King Instrument Corp. v. Otari

Corp., 814 F.2d 1560 (Fed. Cir. 1987), which stated that Rule 54(b) does not

constrain an appellate court’s authority under Section 2106 because it only

“concerns the power of the trial court before appeal.” Id. at 1563.

But that ruling, summarily affirmed by this Court, not only conflicts with

Unitherm and related Supreme Court precedent, it also deepens a circuit split as to

the interplay between Rule 54(b) and Section 2106. In Jalapeno Property

Management, LLC v. Dukas, 265 F.3d 506 (6th Cir. 2001), the Sixth Circuit

explicitly rejected King in ruling that Rule 54(b) “must be complied with during all

stages of litigation in the district court, not just the period before a first appeal.”

Id. at 513. The purposes of Rule 54(b), the Sixth Circuit reasoned, are not



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“diminished by the circumstances that a case has already been heard once on

appeal.” Id. And neither the language of the Rule nor precedent suggests “that the

Rule is any less applicable … after the case has been heard in a first appeal.” Id.

Apple incorrectly argued in its motion for summary affirmance (Fed. Cir.

Dkt. 17 at 12) that “[t]he rule discussed in King has been followed by the Third,

Seventh, Ninth, and Eleventh Circuits.” In fact, only the Third Circuit, in Barnes

v. United States, 678 F.2d 10 (3d Cir. 1982), has joined King in stating (before

Unitherm) that a court of appeals’ discretion under Section 2106 is not subject to

the Federal Rules. Id. at 12-13. None of Apple’s other authorities addresses Rule

54(b) or Section 2106 at all. See Carter v. United States, 333 F.3d 791, 793 (7th

Cir . 2003); Dempsey v. United States, 32 F.3d 1490, 1498 (11th Cir. 1994)

(Carnes, J., concurring); Fadhl v. City & Cnty. of San Francisco, 804 F.2d 1097,

1099 (9th Cir. 1986) (per curiam).

Rehearing en banc is thus warranted to resolve conflicts with Unitherm,

Jalapeno Property, and other authorities.7

7 Relying on Taylor v. U.S. PTO, 385 F. App’x 980 (Fed. Cir. 2010), Appleargued previously (Fed. Cir. Dkt. 17 at 17) that Samsung was required to pursue its

Rule 54(b) arguments on rehearing in its prior appeal. But Samsung could nothave speculated then that the district court would interpret the mandate to requireentry of a judgment prohibited by the Federal Rules. Moreover, the authority onwhich Taylor relied confirms that even a facially-erroneous mandate may bechallenged in a subsequent appeal. See 18 James Wm. Moore et al., Moore’sFederal Practice § 134.23[3] (3d ed. 2015) (“If a party feels that the mandate isincorrect, the party may apply to the appellate court to depart from the mandate by



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II.

THE ISSUES PRESENTED HAVE EXCEPTIONAL IMPORTANCE

TO PATENT LITIGATION AS A PRACTICAL MATTER

Rehearing en banc is further warranted because Samsung’s appeal presents

two issues of exceptional practical importance to patent law. First, whether a final

invalidity decision of the PTAB subject only to an appeal to this Court is entitled to

preclusive effect is exceptionally important to the orderly litigation of patent cases.

This Court expressly left this issue open last year, see AbbVie, 759 F.3d at 1296-

97, and it has addressed the interplay between parallel agency and federal court

proceedings on several recent occasions, see, e.g., ePlus, Inc. v. Lawson Software,

Inc., 789 F.3d 1349 (Fed. Cir. 2015); Fresenius, 721 F.3d at 1342. The patent bar

has a keen interest in these issues, which have practical consequences for litigants.8

The public likewise has a profound interest, for the specter of being required to pay

for infringement of a patent invalidated by the patent-granting agency casts doubts

on the system as a whole. Rehearing en banc would allow this Court to harmonize

the law on these important issues, and prevent windfall damages based on

invalidated patents.

a petition for rehearing, by a motion for recall of the mandate, or on appeal fromthe judgment rendered after completion of the proceedings for which the case wasremanded .”) (emphasis added).

8 See, e.g., Grantland G. Drutchas & James L. Lovsin, Preclusive Effect of PTAB Decisions Gets A Fresh Look , Law360 (June 19, 2015),http://www.law360.com/articles/664945/preclusive-effect-of-ptab-decisions-gets-a-fresh-look.



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Second , whether an appellate court may direct entry of a judgment that does

not comply with the Federal Rules is also an exceptionally important question.

Rule 54(b)’s requirements are not advisory — adhering to those requirements avoids

the risk of inconsistent judgments, while dispensing with them creates such risk, as

this case demonstrates. Absent rehearing, Apple stands to collect more than $100

million in damages for infringement of its ’915 patent by ten accused products.

But following affirmance of the PTAB’s invalidity decision, Samsung indisputably

will be entitled to judgment in its favor as to Apple’s claims of ’915 patent

infringement by four other, similarly-situated products subject to the retrial.

Observing the requirement that only a completely resolved claim may be the

subject of a partial final judgment would avoid this untenable risk of inconsistent

judgments as to the same patent within the same case. See, e.g., SEC v. Frohling ,

__ F. App’x __, 2015 WL 3556267, *4 (2d Cir. June 9, 2015) (questioning entry of

partial final judgment where single final judgment “would avoid … what could

otherwise conceivably be inconsistent outcomes”).

CONCLUSION

For these reasons, the petition for rehearing en banc should be granted.



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Attorneys for Defendants-Appellants

Dated: October 19, 2015 Respectfully submitted,

By: /s/ Kathleen M. SullivanVictoria F. MaroulisQUINN EMANUEL URQUHART

& SULLIVAN, LLP555 Twin Dolphin Drive, 5th FloorRedwood Shores, CA 94065Telephone: (650) 801-5000Facsimile: (650) 801-5100

Kathleen M. SullivanWilliam B. AdamsQUINN EMANUEL URQUHART

& SULLIVAN, LLP51 Madison Avenue, 22nd Floor

New York, NY 10010Telephone: (212) 849-7000Facsimile: (212) [email protected]

Michael T. ZellerB. Dylan ProctorQUINN EMANUEL URQUHART& SULLIVAN, LLP

865 S. Figueroa St., 10th FloorLos Angeles, CA 90017Telephone: (213) 443-3000Facsimile: (213) 443-3100



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ADDENDUM



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NOTE: This order is nonprecedential.

United States Court of Appeals

for the Federal Circuit ______________________

APPLE INC., a California corporation,

Plaintiff-Appellee

v.

SAMSUNG ELECTRONICS AMERICA, INC.,SAMSUNG ELECTRONICS CO., LTD., SAMSUNG

TELECOMMUNICATIONS AMERICA, LLC,

Defendants-Appellants

INTERNATIONAL BUSINESS MACHINESCORPORATION, RESEARCH IN MOTION

CORPORATION, RESEARCH IN MOTION, LTD.,

REUTERS AMERICA, LLC,

Defendants

______________________

2015-2088 ______________________

Appeal from the United States District Court for theNorthern District of California in No. 5:11-cv-01846-LHK,

Judge Lucy H. Koh.

______________________

ON MOTION

______________________

Case: 15-2088 Document: 29 Page: 1 Filed: 10/13/2015Case: 15-2088 Document: 30 Page: 26 Filed: 10/19/2015


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APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.2

Before PROST, Chief Judge, O'M ALLEY and CHEN, Circuit

Judges.

PROST, Chief Judge.

O R D E R

Samsung Electronics America Inc. et al. (Samsung)move to stay enforcement of the district court's judgment,pending appeal, and for approval of the supersedeas bond.

Apple Inc. opposes. Samsung replies. Apple moves forsummary affirmance of the district court's judgment

entered upon remand from this court. Samsung opposes.

Apple replies.

Summary affirmance is appropriate when “the posi-tion of one party is so clearly correct as a matter of lawthat no substantial question regarding the outcome of the

appeal exists.” Joshua v. United States, 17 F.3d 378, 380(Fed. Cir. 1994). We have reviewed the parties’ argu-

ments and conclude that summary affirmance is appro-

priate.

Upon consideration thereof,

IT IS ORDERED THAT:

(1) The motion for summary affirmance is granted.The district court’s judgment is AFFIRMED and thiscourt’s clerk of court is directed to enter judgment accord-

ingly.

(2) The motion to stay is granted to the extent thatenforcement of the district court’s judgment is stayed

pending issuance of this court’s mandate. This court’stemporary stay is therefore lifted. Absent a petition for

rehearing, this court’s mandate will issue in seven days.



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APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 3

FOR THE COURT

/s/ Daniel E. O’TooleDaniel E. O’Toole

Clerk of Court



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15-10-19 samsung petition for en banc rehearing

Documents