We're just days away from yet another Apple v. Samsung trial in the Northern District of California. IT's a re-retrial over damages, following a trial, a retrial, Samsung's successful appeal to the Supreme Court and various other procedural steps on the way back to where we are. By the way, the dispute started more than seven years ago (mid-April 2011).
Judge Koh's final jury instructions will inform the jury of the relevant factors for the article-of-manufacture determination. If the jury determines the relevant AoM is an entire smartphone, Apple gets a huge damages award. If the jury concludes the casing/screen is more reasonable, then the amount will be less extreme amount, but still a chunk of money.
This is what Judge Koh's tentative final jury instructions would say about the relevant factors and how to consider them:
"The scope of the design claimed in Apple's patent, including the drawing and written description;
2. The relative prominence of the design within the product as a whole;
3. Whether the design is conceptually distinct from the product as a whole; and
4. The physical relationship between the patented design and the rest of the product, including whether the design pertains to a component that a user or seller can physically separate from the product as a whole, and whether the design is embodied in a component that is manufactured separately from the rest of the product, or if the component can be sold separately.
In weighing these factors, your objective should be to identify the articles of manufacture that most fairly can be said to embody Samsung's appropriation of Apple's patented designs."
The jury will be free to attach to each of these factors whatever weight it deems reasonable. Based on what jurors told the media after multifactorial "weighting exercises," some juries spent a lot of time evaluating each factor and even more time thinking about how much weight each of them should have, while other juries focused on what they felt would be a reasonable result.
In a pretrial order, Judge Lucy Koh ordered the parties to "develop a joint proposed limiting instruction related to the use of the phrase 'article of manufacture' in the claim constructions and patents" and to "specify when they would like the limiting instruction to be given." Apple will not be allowed to tell the jury that the design patent claims-in-suit resolve the article-of-manufacture question because of a determination by a patent examiner who decided to issue a patent. But Apple will obviously seek to convince the jury to attach tremendous weight to the claims. The message from Apple's lawyers is going to be the next best thing to "the name of the game is the claim." Therefore, Samsung proposes--in response to Judge Koh's order--the following limiting instruction:
"Neither the Court nor the Patent and Trademark Office has determined the relevant articles of manufacture in this case. The words in the design patents and in the Court’s claim constructions do not determine the relevant articles of manufacture. That is a question for you to decide."
Apple's lawyers disagree, particularly on the second sentence:
"It is extremely prejudicial to Apple and improperly suggests to the jury that the words in the design patents and the Court's claim constructions are not relevant to identifying the articles of manufacture."
Samsung's first footnote stresses that its proposed instruction "does not say that the words in the patents and constructions are 'not relevant.' It says only that those words are not determinative." (emphasis in original)
Apple's objection makes clear that Apple is not just concerned about the jury potentially misinterpreting "determinative," but about the jury potentially giving less weight to the claim language than Apple would like.
"Determinative" is not part of everyday language, but it isn't too uncommon either. Reasonably educated people should figure out what it does mean and what it doesn't. Numerous other passages of the preliminary and final jury instructions contain words that jurors may misunderstand in similar ways as Apple fears.
The parties couldn't agree, so Judge Koh will have to decide. Technically, "not determinative" is simply accurate. In colloquial language, one could add a few words like "in their own right," though one could also argue that any additional words could create confusion, too.
Generally speaking, Judge Koh's proposed preliminary and final jury instructions combined don't really tell the jury much about how to make the article-of-manufacture determination. For an example, the amicus curiae brief filed by the Obama Administration with the Supreme Court contains additional helpful guidance that Judge Koh could, but apparently won't, provide to the jury.
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