1. 1 1 AIPLA American Intellectual Property Law Association Apple v. Samsung Worldwide Litigation Overview Dewayne A Hughes AIPLA-CNCPI Meeting Paris, France March 12, 2013

2. 2 2 AIPLA Agenda Overview of Apple v. Samsung Worldwide Litigation Patent Litigation in the U.S. – ITC & District Courts Apple v. Samsung in the U.S. –Impact on U.S. Injunctive Relief in District Courts –Comparison of Decisions with Pending Worldwide Apple v. Samsung Litigation

3. 3 3 AIPLA "Patent War" Source: PCMag.com

4. 4 4 AIPLA Apple v. Samsung Worldwide Overview Over fifty pending cases in at least nine countries Six U.S. Litigations – Consolidated to five Litigation in South Korea, Japan, France, Italy, United Kingdom, Germany, Netherlands, Australia

5. 5 5 AIPLA Apple v. Samsung Patent Litigation Germany: Galaxy Tab 10.1 Banned. Netherlands: 3 Samsung Phones banned. US: Apple sues Samsung in US Federal Court - "Apple 1" Netherlands: Ban of Apple products denied; Galaxy Tab 10.1 Infringes. December 2011 US: "Apple 1" - Preliminary Injunction of Samsung products denied. France: Court denies Preliminary Injunction of Apple products.

6. 6 6 AIPLA Apple v. Samsung Patent Litigation US: "Apple II" filed. Main patent is "unified search" used by products featuring Siri. Italy: Court denies Preliminary Injunction of Apple Products. Netherlands: infringement finding for Tab 10.1 overturned Germany: Slide to unlock claims brought by Apple and Samsung dismissed. May 2012 US: "Apple 1" – Federal Circuit affirms Preliminary Injunction denial for Samsung products except Tab 10.1.

7. 7 7 AIPLA Apple v. Samsung Patent Litigation US: Jury Verdict award in Apple I of $1.05B. Japan: Samsung found not to infringe. South Korea: Split decision, both parties infringe some but not all patents. US: "Apple II" – Preliminary Injunction of Galaxy Nexus phone is granted by district court. Germany: Preliminary Injunction of Samsung phones requested by Apple is denied. UK: Court finds no infringement by Samsung Galaxy Tab 10.1. October 2012 U.S. - Apple II – Federal Circuit overturns Preliminary Injunction. Netherlands: Samsung does not infringe touch screen patents. Germany: Samsung does not infringe touch-screen event model patent.

8. 8 8 AIPLA Apple v. Samsung Patent Litigation Netherlands: Samsung Tablets do not infringe Apple design patents. US: "Apple I" – Permanent Inunctions denied. Europe: Samsung withdraws sales ban requests. European commission files Anti-Trust complaint against Samsung. US: Apple appeals preliminary injunction decision in Apple II and permanent injunction decision in Apple I. ???

9. 9 9 AIPLA U.S. Patent Litigation Paths District Courts ITC U.S. Supreme Court Federal Circuit

10. 10 AIPLA Apple v. Samsung : US Cases Summary Apple I – 11-CV-1846 - Status –Jury Verdict award $1.05 B –Injunction denied and pending appeal –Triple damages denied and pending appeal Apple II – 12-CV-0630 - Status –Preliminary Injunction denied – trial pending ITC Cases –ITC I – 337-794 – Initial Determination that Apple does not infringe any of Samsung's asserted patents. –ITC II – 337-794 – Initial Determination that Samsung infringes five of six Apple’s asserted patents

11. 11 AIPLA Apple v. Samsung – Apple I: Mobile Phones Source – Prafulla.net

12. 12 AIPLA Apple v. Samsung – Apple I: Tablets Utility Patents also asserted against Samsung Tablets Apple asserts additional tablet design patent

13. 13 AIPLA Apple I - Outcome Jury finds willful infringement by most Samsung devices for: '381 patent ("bounce-back") '915 patent ("single and multi-touch patent") '163 patent ("enlarging/centering documents") D'677 (iPhone front face design) D'305 (GUI Icons) D'087 (iPhone full front view with casing) Trademark and Trade Dress of iPhone Apple found not to infringe any of Samsung's patents Samsung does not infringe tablet design patents, trademarks, or trade dress Damages awarded to Apple – Injunction is denied

14. 14 AIPLA Apple v. Samsung – Apple II Utility Patents asserted by Apple include:  5,946,647 (the '647 Patent") - System and method for performing an action on a structure in computer-generated data  6,847,959 (the "'959 Patent") - Universal interface for retrieval of information in a computer system  8,046,721 (the '721 Patent") - Unlocking a device by performing gestures on an unlock image (aka "Slide to Unlock" - Subsequently removed in amended complaint)  8,074,172 (the '172 Patent") - Method, system, and graphical user interface for providing word recommendations  8,014,760 (the "'760 Patent") Missed telephone call management for a portable multifunction device  5,666,502 (the "'502 Patent") - Graphical user interface using historical lists with field classes  7,761,414 (the "'414 Patent") - Asynchronous data synchronization amongst devices  8,086,604 (the "'604 Patent") - Universal interface for retrieval of information in a computer system

15. 15 AIPLA Apple II Outcome Preliminary Injunction denied  District Court initially interprets "Nexus" test to require that patented feature is one contributor to consumer demand of product  District Court determined that all patents except the '647 patent ("Unified Search") did not satisfy the "Nexus" test  Federal Circuit overturns  "Nexus" test requires that patented feature is THE driver of consumer demand Trial date set for March 2014

16. 16 AIPLA Comparing Outcomes US Utility patents are difficult to compare with international counterparts due to variation in claim language "Bounce-Back" Utility Patent –U.S./South Korea/Japan/Netherlands – Samsung infringes Tablet Design Patents and Galaxy Tab 10.1 –U.S. – No Infringement by Samsung –U.K./Netherlands – No infringement by Samsung –Germany – No Infringement BUT sales ban based on unfair competition claim iPhone Design Patents –U.S./U.K./Netherlands – No infringement by Samsung –Germany - Pending

17. 17 AIPLA Apple v. Samsung – ITC Cases  ITC I – 337-794:  Initial Determination that Apple does not infringe any of Samsung's four asserted patents  Initial Determination also concludes that there is no domestic industry of Samsung's asserted patents  Commission review decision expected in February 2013  ITC II – 337-794:  Initial Determination that Samsung infringes five of six asserted patents  Initial Determination that Samsung infringes 5 of 6 asserted patents  Patents include two design patents covering cross-section and side-view of iPhone as well as front view (variation of D'677 and D'087 in Apple I)  Commission review decision expected February/March 2013

18. 18 AIPLA U.S. Patent Litigation - ITC ITC – International Trade Commission Independent federal agency Responsible for international trade investigations, Harmonized Tariff Schedule; studies and reports for the President, USTR and the Congress Approximately 420 employees – including 24 Administrative Law Judges Six Commissioners appointed by the President and confirmed by U.S. Senate

19. 19 AIPLA United States International Trade Commission Section 337 cases assigned to Administrative Law Judges Trials similar to District Court bench trials ITC Judges follow but not bound to Federal Rules of Evidence – (e.g., ALJs more likely to admit hearsay) ITC Judges render “Initial Determinations (IDs)” that are subject to review by Commission Exclusion orders may be reviewed by executive branch (through The Office of the U.S. Trade Representative) ITC Decisions may be appealed to Federal Circuit

20. 20 AIPLA Overview of an ITC Patent Case ITC Remedies –Exclusion of products from US. Enforced by US Customs –Cease and desist orders. Enforced by ITC with civil penalties –No money damages Administrative Law Judge Commission Federal Appeals Court Initial Decision on merits Final Decision Orders remedy Appellate Decision Deferential on remedy issues

21. 21 AIPLA Section 337: Substantive Elements Importation Accused products must be imported or sold off- shore for importation into U.S. ITC jurisdiction extends to sales in U.S. of imported products Infringement Direct or indirect infringement Federal Circuit precedent applies Domestic Industry (1) Economic prong (2) Technical prong

22. 22 AIPLA United States International Trade Commission Why the ITC? –Speed Cases generally completed within 15 months Protective Order issues immediately Discovery commences immediately –IP Expertise 9/10 cases are Intellectual Property cases. –Broad Injunctive Remedies Directs U.S. Customs Service to deny entry at all U.S. ports Framework for Customs Service seizure and forfeiture An In Rem Order – Functions without regard to personal jurisdiction Can cover downstream products that contain an infringing component ITC procedures available to Complainant to broaden Customs enforcement (advisory opinion procedures, enforcement procedures, modification procedures)

23. 23 AIPLA Disadvantages of ITC No money damages Speed as a detriment –Generally higher expense due to fast-pace of proceedings No Jury Trials

24. 24 AIPLA ITC and District Court Often a parallel District Court case is filed Defendant can stay case as a matter of right ITC case will proceed to conclusion District Court stay can be lifted and case tried again, for money damages Commission determination on infringement and validity is persuasive but not binding

25. 25 AIPLA Exclusion Order vs. Injunctive Relief ITC Exclusion Order - 19 USC § 1337 (d) (1) If the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States, unless… District Court Injunctive Relief - 35 USC § 283 The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable. Supreme Court decision in eBay v. MercExchange and subsequent Federal Circuit decisions are controlling precedent

26. 26 AIPLA Exclusion Order vs. Injunctive Relief eBay Factors Patent owner has suffered irreparable harm Remedies available at law, such as monetary damages, are inadequate Balance of the hardships are in favor of patent owner Public interest would not be disserved Note: Preliminary Injunction also includes a likelihood of success analysis Apple v. Samsung "Nexus" Test To show irreparable harm, must show a causal nexus between the harm alleged (e.g., loss of sales) and the infringing conduct. Patented feature must be THE driver of consumer demand for the competing product if relying on lost sales to show irreparable harm Exclusion Orders No irreparable harm requirement

27. 27 AIPLA Increasing ITC Litigation * Estimated for 2013 by USITC

28. 28 AIPLA Thanks for your attention! Questions? Dewayne Hughes Sr. IP Counsel North America Dräeger 3135 Quarry Road Telford, PA 18969 USA Tel +1-215-360-5924 dewayne.hughes@draeger.com