David Boies Argues for a Second Bite of Apple


Written by Brandon Baum,  of Agility IP Law and Practice Center Contributor.

Readers of this blog will recall that Mirror Worlds won a $625 million jury verdict against Apple, only to have it taken away in post-trial motions.  The trial judge found that Mirror Worlds had neglected to introduce evidence of direct infringement of the asserted claim by any end-user, observing “Mirror Worlds may have painted an appealing picture for the jury, but it failed to lay a solid foundation sufficient to support important elements it was required to establish under the law.”  Therefore, the damage award could not be sustained and Mirror Worlds was left with nothing.

Mirror Worlds retained David Boies of Boies, Schiller, who argued for reversal before the Federal Circuit on March 8, 2012.  Boies was somewhat hamstrung, however, because the record is the record and good oral advocacy cannot overcome an absence of evidence that end-users of Apple products actually used the patented invention. So Boies took a clever tack—combing the record for evidence that Apple itself had infringed, and therefore the trial court was in error, at least to the extent that it concluded that there was no evidence of infringement by any end-user.

The evidence on which Boies relied had been introduced at trial for a different purpose — to show Apple had induced end-users to infringe—and consisted of screen shots showing how to use the allegedly infringing functionality.  It also included video of Steve Jobs touting that functionality—known as “Spotlight”—when introducing the latest version of Mac OS X Tiger in 2005. Finally, Boies pointed to third party reviews of Mac OS X Tiger describing the Spotlight feature, which he argued proved that the reviewers had used the infringing feature. All of this, argued Boies, constituted circumstantial evidence that someone (the Apple employee pictured in the screen shots, Steve Jobs, the 3rd party reviewers) used the infringing Spotlight functionality and therefore directly infringed.

Bill Lee, of WilmerHale, argued on behalf of Apple.  His argument was straightforward:  the accused system can be used in several ways, only one of which infringes.  Although the circumstantial evidence that Boies/Mirror Worlds pointed to might show the overall system being used, it is not granular enough to show that the system was configured in the infringing manner.    Finally, Lee argued that the reason that Mirror Worlds found itself in this predicament is because it sought to include the entire Mac OS X operating system in the reasonable royalty base, and thus, did not want to focus on the specific infringing feature.  According to Lee, Mirror Worlds’ predicament is self-made and the consequence of overreaching.

The panel, consisting of Judges Prost, Newman and Lourie, expressed concern that Boies was seeking to reinstate such a large jury award based on these few, incidental acts of infringement that were proven only circumstantially.  Boies made clear, however, that he was primarily seeking a new trial on indirect infringement, and another chance to provide the missing proof.  It will be interesting to see whether the Federal Circuit reinstates the massive verdict on such slim circumstantial evidence of infringement.

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