Recently, in a non-precedential decision, the United States Court of Appeals for the Federal Circuit remanded Apple, Inc. v. Samsung Electronics Co. back to Judge Lucy Koh (shown left) of the United States Federal District Court for the Northern District of California. In December 2016, the Supreme Court overturned a $400 million damages award for design patent infringement. In its ruling, the Supreme Court explained that damages may be limited to revenues attributable to a component of an article of manufacture and not the entire article itself. See Samsung Electronics Co. v. Apple, Inc.
Apple requested that the Federal Circuit keep the case and the panel review the decision in light of the Supreme Court’s ruling, while Samsung requested that the Federal Circuit remand the matter to the district court for a new trial on damages. The Federal Circuit adopted neither suggestion. Instead, the Federal Circuit chose to remand the case for further proceedings, which the panel explained may or may not include a new trial on damages. Judge Koh will decide whether a new trial on damages is necessary.
The Federal Circuit panel wrote in a per curiam decision:
In short, the parties dispute what jury instructions the current trial record supports. Because the district court is better positioned to parse the record to evaluate the parties’ competing arguments, we remand for the district court to consider these issues in the first instance.
On remand, the trial court should consider the parties’ arguments in light of the trial record and determine what additional proceedings, if any, are needed. If the court determines that a new damages trial is necessary, it will have the opportunity to set forth a test for identifying the relevant article of manufacture for purposes of § 289, and to apply that test to this case. Accordingly, we remand this matter to the district court for further proceedings.
“It’s not surprising that the Federal Circuit decided to give the district court wide latitude to reconsider the merits of the damages case after the Supreme Court’s ruling,” said Christopher Loh, a partner with Fitzpatrick, Cella, Harper & Scinto. “The Supreme Court didn’t provide specific guidance on how to apply its rulings to the facts of the case, so the Federal Circuit wisely determined that the details were best left to the person most familiar with those facts: Judge Koh.”
So now the dispute will return to the Northern District of California.
“It will be interesting to see whether and to what extent Judge Koh allows Samsung to present additional evidence in its favor, and whether Judge Koh will in fact proceed with a new trial,” said Loh.