15-11-02 Apple Opposition to Samsung Petition for Rehearing

8/20/2019 15-11-02 Apple Opposition to Samsung Petition for Rehearing

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No. 2015-2088

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

APPLE I NC., a California corporation,

Plaintiff-Appellee,

v.

SAMSUNG ELECTRONICS AMERICA, I NC., SAMSUNG ELECTRONICS CO., LTD.,SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,

Defendants-Appellants,

I NTERNATIONAL BUSINESS MACHINES CORPORATION, R ESEARCH I N MOTION

CORPORATION, R ESEARCH I N MOTION, LTD., R EUTERS AMERICA, LLC, Defendants.

Appeal from the United States District Court for the Northern District of California in case no. 11-CV-1846, Judge Lucy H. Koh.

PLAINTIFF-APPELLEE APPLE INC.’S RESPONSE TO DEFENDANTS-

APPELLANTS’ PETITION FOR REHEARING EN BANC

HAROLD J. MCELHINNY R ACHEL K REVANS ERIK J. OLSON

NATHAN B. SABRI MORRISON & FOERSTER LLP425 Market StreetSan Francisco, CA 94105(415) 268-7000

MARK D. SELWYN

WILMER CUTLER PICKERING HALE AND DORR LLP

950 Page Mill RoadPalo Alto, CA 94304(650) 858-6000

November 2, 2015

WILLIAM F. LEE MARK C. FLEMING LAUREN B. FLETCHER SARAH R. FRAZIER WILMER CUTLER PICKERING

HALE AND DORR LLP 60 State StreetBoston, MA 02109(617) 526-6000

THOMAS G. SPRANKLING WILMER CUTLER PICKERING

HALE AND DORR LLP 1875 Pennsylvania Avenue, N.W.Washington, DC 20006(202) 663-6000

Counsel for Plaintiff-Appellee Apple Inc.

Case: 15-2088 Document: 33 Page: 1 Filed: 11/02/2015


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CERTIFICATE OF INTEREST

Counsel for Plaintiff-Appellee Apple Inc. certifies the following:

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

Apple Inc.

2. The name of the real party in interest represented by us is:

Not applicable.

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:

None.

4. The names of all law firms and the partners or associates thatappeared for the party or amicus now represented by me in the trial court or agencyor are expected to appear in this court are:

MORRISON & FOERSTER LLP: Ruchika Agrawal (former), Deok KeunMatthew Ahn (former), Charles S. Barquist, Jason R. Bartlett (former), Ruth

N. Borenstein, Brittany N. DePuy (former), Francis Chung-Hoi Ho (former),Richard S.J. Hung, Michael A. Jacobs, Esther Kim, Grant L. Kim, AlexeiKlestoff (former), Rachel Krevans, Kenneth Alexander Kuwayti, JackWilliford Londen, Harold J. McElhinny, Andrew Ellis Monach, Erik J.Olson, Marc J. Pernick (former), Taryn Spelliscy Rawson (former),Christopher Leonard Robinson, Nathaniel Bryan Sabri, Jennifer Lee Taylor,Alison Margaret Tucher (former), Christopher James Wiener, Patrick J.Zhang (former)

WILMER CUTLER PICKERING HALE AND DORR LLP: David B. Bassett, JamesC. Burling, Robert Donald Cultice, Andrew J. Danford, Michael A. Diener,

Christine E. Duh, Mark D. Flanagan, Mark C. Fleming, Eric Fletcher,Lauren B. Fletcher, Sarah R. Frazier, Richard Goldenberg, Robert J.Gunther, Jr., Liv Leila Herriot, Michael R. Heyison, Peter James Kolovos,Derek Lam, Gregory H. Lantier, Brian Larivee, William F. Lee, Andrew L.Liao, Joseph J. Mueller, Kevin Scott Prussia, James L. Quarles, III, MichaelSaji (former), Brian Seeve, Mark Daniel Selwyn, Ali H. Shah (former),



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Victor F. Souto, Thomas G. Sprankling, Timothy Davis Syrett, Nina S.Tallon, Samuel Calvin Walden, Emily R. Whelan, Jeremy S. Winer

COOLEY LLP: Benjamin George Damstedt, Jesse L. Dyer (former), TimothyS. Teter

TAYLOR & COMPANY LAW OFFICES, LLP: Joshua Ryan Benson, StephenMcGeorge Bundy, Stephen E. Taylor

MAVRAKAKIS LAW GROUP LLP: Kenneth H. Bridges (former), Michael T.Pieja

Dated: November 2, 2015 /s/ William F. LeeWILLIAM F. LEE WILMER CUTLER PICKERING




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TABLE OF CONTENTS

Page

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

TABLE OF AUTHORITIES ....................................................................................iv

INTRODUCTION ..................................................................................................... 1

ARGUMENT ............................................................................................................. 4

THE SUMMARY AFFIRMANCE ORDER DOES NOT WARRANT R EHEARING. .................. 4

A. Samsung Shows No Reason For Rehearing En Banc Of

The Panel’s Nonprecedential Summary AffirmanceOrder. ..................................................................................................... 4

B. Samsung’s “Collateral Estoppel” Argument Is ForeclosedBy The Mandate Rule And, In Any Event, Incorrect. .......................... 5

C. Samsung’s “Rule 54(b)” Argument Is LikewiseForeclosed By The Mandate Rule And, In Any Event,Meritless. ............................................................................................... 9

D. Samsung’s Policy-Based Arguments Do Not WarrantRehearing En Banc. ............................................................................. 15

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

CERTIFICATE OF SERVICE

CERTIFICATE OF COMPLIANCE



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TABLE OF AUTHORITIES

CASES

Page(s)

AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc., 759 F.3d1285 (Fed. Cir. 2014)....................................................................................... 8

Amado v. Microsoft Corp., 517 F.3d 1353 (Fed. Cir. 2008) ..................................... 5

Apple Inc. v. Samsung Electronics Co., 786 F.3d 983 (Fed. Cir. 2015) .......... 1, 2, 10

B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293(2015) ....................................................................................................... 6, 7, 8

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

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

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

e.Digital Corp. v. Futurewei Technologies, Inc., 772 F.3d 723 (Fed.Cir. 2014) ......................................................................................................... 7

ePlus, Inc., v. Lawson Software, Inc., 790 F.3d 1307 (Fed. Cir. 2015) ..................... 8

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

Fresenius USA, Inc. v. Baxter International, Inc., 721 F.3d 1330 (Fed.Cir. 2013) ..................................................................................................... 6, 7

Gould, Inc. v. United States, 67 F.3d 925 (Fed. Cir. 1995) ..................................... 10

Greenlaw v. United States, 554 U.S. 237 (2008) ..................................................... 15

International Rectifier Corp. v. IXYS Corp., 515 F.3d 1353 (Fed. Cir.2008) ................................................................................................................ 9

Jalapeno Property Management, LLC v. Dukas, 265 F.3d 506 (6thCir. 2001) ....................................................................................................... 13

Joshua v. United States, 17 F.3d 378 (Fed. Cir. 1994) .............................................. 4



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King Instrument Corp. v. Otari Corp., 814 F.2d 1560 (Fed. Cir. 1987) ..... 10, 11, 12

Samsung Electronics Co. v. Apple Inc. (U.S. Oct. 20, 2015) (No.15A421) ........................................................................................................... 2

Taylor v. USPTO, 385 F. App’x 980 (Fed. Cir. 2010) ............................................ 10

TecSec, Inc. v. International Business Machines Corp., 731 F.3d 1336(Fed. Cir. 2013) .............................................................................................. 12

Tronzo v. Biomet, Inc., 236 F.3d 1342 (Fed. Cir. 2001) ............................................ 5

Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc., 546 U.S. 394(2006) ............................................................................................................. 14

STATUTES AND RULES

28 U.S.C. § 2106 .......................................................................................... 11, 13, 15

35 U.S.C. § 307(a) ..................................................................................................... 8

Fed. R. Civ. P.50(b) ............................................................................................................... 1454(b) ................................................................................................. 3, 9, 11, 13

Fed. Cir. R. 35 Practice Note ..................................................................................... 4



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INTRODUCTION

Samsung’s petition for rehearing is the latest attempt in Samsung’s strategy

of delaying the day when Samsung will have to pay the damages awarded—and

previously affirmed by this Court—for its widespread infringement of Apple’s

patents as determined by a jury in August 2012. Samsung’s appeal presents

nothing resembling a close question of “exceptional importance.” To the contrary,

Samsung’s appeal presents issues that the panel concluded were “so clearly” one-

sided that “as a matter of law … no substantial question regarding the outcome []

exists.” Dkt. 29 (internal quotation marks omitted).1

Samsung already sought review from this Court of a jury’s finding that

multiple Samsung products violated Apple’s intellectual property rights relating to

its iconic iPhone and iPad products. Apple Inc. v. Samsung Elecs. Co., 786 F.3d

983, 989-990 (Fed. Cir. 2015). In that previous appeal, Samsung raised a number

of design and utility patent issues; the panel unanimously rejected every one and

affirmed $548 million in damages awarded for Samsung’s infringement of Apple’s

patents. Id. at 996-1005. And although the Court remanded part of the judgment

that rested on Apple’s trade dress claims, the Court recognized the need to bring

the affirmed portion of this more than four-year-old litigation to a close. The panel

1 “Dkt.” refers to docket entries in this appeal, while “No. 14-1335 Dkt.”refers to docket entries in Samsung’s prior appeal, Apple Inc. v. Samsung Elecs.Co., No. 14-1335, 786 F.3d 983 (Fed. Cir. 2015).



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thus ordered “immediate entry of final judgment on all damages awards not

predicated on Apple’s trade dress claims.” Id. at 1005 (emphasis added).

Samsung petitioned for rehearing en banc in its prior appeal, but notably did

not argue that this Court’s instruction that the trial court “immediate[ly]” enter

“final judgment” on the affirmed damages award was in any way problematic or

improper. Samsung also did not allege, as it does now, that the panel erred by

failing to give collateral estoppel effect to the decision of the Patent Trial and

Appeal Board (“PTAB”) in parallel reexamination proceedings regarding one of

the patents-in-suit. The Court denied Samsung’s petition without dissent. No. 14-

1335 Dkt. 207 at 2. Samsung then asked this Court to stay issuance of its mandate

pending Samsung’s filing of a petition for certiorari. No. 14-1335 Dkt. 208. But

again, Samsung neither denied that the Court’s mandate, once issued, would

require the district court to enter judgment on the affirmed damages award

immediately, nor did it argue that the panel’s order of immediate entry of final

judgment on the affirmed amount was improper. Id. The Court denied Samsung’s

motion, and the mandate issued on August 25, 2015. No. 14-1335 Dkts. 211, 212.2

2 Consistent with its strategy of delay, Samsung sought and was granted anextension of 32 days in which to file its petition for certiorari. See Samsung Elecs.Co. v. Apple Inc., No. 15A421 (U.S. Oct. 20, 2015).



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On remand, Apple sought “immediate entry of final judgment” of the

affirmed damages, the undisputed amount of which is $548 million. Add. 1-2.3 In

response, Samsung argued for the first time that the direction in this Court’s

mandate that final judgment be entered “immediate[ly]” was somehow contrary to

Federal Rule of Civil Procedure 54(b). Add. 34-44. Samsung also moved for

judgment as a matter of law, arguing that the PTAB’s decision in a parallel

reexamination proceeding was entitled to collateral estoppel effect. The district

court correctly rejected both arguments, noting that it was “not entering partial

final judgment pursuant to Rule 54(b), so the requirements of Rule 54(b) need not

be satisfied” (Add. 92), and that collateral estoppel did not apply because the

PTAB’s decision did not “qualify as a final judgment on the merits” (Add. 80-81).

Recognizing that “[u]nder the Federal Circuit’s mandate rule” it was “bound

to follow the Federal Circuit’s decree as law of the case” (Add. 92), the district

court entered judgment in the affirmed damages amount (Add. 60). Despite the

district court’s warning that doing so would be “frivolous” (Add. 106), Samsung

filed the present appeal. Apple moved for summary affirmance, Samsung filed an

opposition, and Apple replied. In a nonprecedential order, the panel summarily

affirmed the district court’s entry of partial final judgment. The Court noted that

3 “Add.” refers to the addendum submitted with Apple’s motion for summaryaffirmance and reply in support thereof in this proceeding. See Dkts. 17, 28.



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summary affirmance is appropriate when “‘the position of one party is so clearly

correct as a matter of law that no substantial question regarding the outcome of the

appeal exists’” and that, having “reviewed the parties’ arguments,” the Court

“conclude[d] that summary affirmance is appropriate.” Dkt. 29 (quoting Joshua v.

United States, 17 F.3d 378, 380 (Fed. Cir. 1994)).

Samsung now asks the en banc Court to rehear that nonprecedential order to

address issues not relevant to the facts of this case. Rehearing is not warranted,

and the petition should be denied.

ARGUMENT

THE SUMMARY AFFIRMANCE ORDER DOES NOT WARRANT REHEARING.

A. Samsung Shows No Reason For Rehearing En Banc Of The

Panel’s Nonprecedential Summary Affirmance Order.

The panel’s summary affirmance order did not establish any Circuit

precedent that could bind this Court or any district court. Thus, Samsung is

incorrect to suggest that its petition raises “precedent-setting questions of

exceptional importance” (Pet. 1); the panel’s order set no precedent, and any

“questions” Samsung presents remain open to consideration in future cases.

Samsung does not even attempt to show that this is one of the rare situations

warranting rehearing of a nonprecedential summary order. See Fed. Cir. R. 35

Practice Note (“A petition for rehearing en banc is rarely appropriate if the appeal

was the subject of a nonprecedential opinion by the panel of judges that heard it.”).



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Moreover, rehearing in this case would be futile, because the panel was correct to

affirm the district court’s judgment, as the balance of this response shows.

B. Samsung’s “Collateral Estoppel” Argument Is Foreclosed By TheMandate Rule And, In Any Event, Incorrect.

1. Samsung asserts that the panel “held that PTAB invalidity decisions

are not entitled to collateral estoppel effect.” Pet. 10. But the panel’s order

includes no statement suggesting that is the basis of its affirmance, and certainly

not in a way that would bind future panels. Indeed, Apple offered a

straightforward means to avoid deciding that issue in this appeal: Samsung’s

argument was made and lost in its prior appeal, and thus is clearly foreclosed as a

matter of law by the mandate rule. Indeed, that was the primary basis invoked by

the district court in rejecting Samsung’s attempt to re-raise this issue. Add. 82-83.

Samsung erroneously suggests (Pet. 10 n.6) that the mandate rule is

inapplicable because the panel’s prior decision did not explicitly discuss

Samsung’s collateral estoppel argument. But the mandate rule “precludes

reconsideration of any issue within the scope of the judgment appealed from—not

merely those issues actually raised.” Amado v. Microsoft Corp., 517 F.3d 1353,

1360 (Fed. Cir. 2008) (emphasis added); see also Tronzo v. Biomet, Inc., 236 F.3d

1342, 1348 (Fed. Cir. 2001) (refusing to revisit punitive damages on re-appeal

where the issue “was necessarily incorporated within the scope of our mandate in

[the first appeal] and foreclosed from further review”). Here, Samsung actually



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did raise the same collateral estoppel issue in its prior appeal: Samsung filed a

Rule 28(j) letter notifying the panel of the PTAB’s decision and, citing many of the

same cases it cites now, argued that Apple could not prevail on its ’915 patent

because the PTAB’s December 2014 decision rejecting the claims of that patent

was “[a] final decision by an administrative body [that] has collateral estoppel

effect.” No. 14-1335 Dkt. 152-1. As the district court correctly ruled, because

Samsung raised the collateral estoppel issue and this Court “still affirmed the

validity of the ’915 patent, denied rehearing en banc, and issued the mandate … ,

the mandate rule forecloses … applying collateral estoppel.” Add. 82-83.

In an effort to sidestep the mandate rule—and contrary to its argument in the

prior appeal—Samsung now suggests (Pet. 10 n.6) that the PTAB’s decision was

not “rendered … final” for collateral estoppel purposes until after this Court’s

mandate issued in the prior appeal and the PTAB denied Apple’s request for

rehearing. But only “a final PTO decision affirmed by this court [is] given effect

in pending infringement cases.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d

1330, 1346 (Fed. Cir. 2013) (emphasis added).

2. Even if one were to assume that the panel’s summary order rejected

the substance of Samsung’s arguments (rather than relying on the fact that they are

barred by the mandate rule), Samsung’s arguments would still not warrant

rehearing. Samsung suggests that the panel’s result conflicts with B&B Hardware,



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Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015), and other authorities

governing collateral estoppel. It does not. Unlike the determinations at issue in

those cases, a final reexamination decision is “binding not because of collateral

estoppel , but because Congress has expressly delegated reexamination authority to

the PTO under a statute requiring the PTO to cancel rejected claims, and

cancellation extinguishes the underlying basis for suits based on the patent.”

Fresenius, 721 F.3d at 1344 (emphasis added). And even if collateral estoppel did

apply, B&B Hardware makes clear that an agency decision may only be given

preclusive effect “ [s]o long as the other ordinary elements of issue preclusion are

met.” 135. S. Ct. at 1310 (emphasis added).4 In other words, there must be a

“final judgment on the merits” before a decision can have collateral estoppel effect.

See e.Digital Corp. v. Futurewei Techs., Inc., 772 F.3d 723, 726 (Fed. Cir. 2014);

see also Fresenius, 721 F.3d at 1347 (“Even if collateral estoppel were implicated,

both the Restatement and numerous cases have held that an interim decision in one

suit … cannot prevail over a final judgment on the same issue in another suit … .”).

Under the plain terms of 35 U.S.C. § 307(a), a claim in reexamination is “ finally

determined to be unpatentable” only “when the time for appeal has expired or any

4 B&B Hardware was decided in March of this year, before the panel issuedits opinion in Samsung’s prior appeal. Samsung did not consider the decision

pertinent enough to bring to the Court’s attention at that time or in its petition forrehearing, despite having already raised for the Court the question whethercollateral estoppel should apply to the PTAB’s decision.



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appeal proceeding has terminated.” 35 U.S.C. § 307(a) (emphasis added). Unlike

in B&B Hardware, where the time to seek review of the agency’s decision had

expired, 135 S. Ct. at 1302, the time for Apple to appeal the PTAB’s decision has

not passed. The PTAB’s decision is therefore not final for purposes of preclusion.

This answers Samsung’s reliance on Judge Dyk’s concurrence in the denial of

rehearing en banc in ePlus, Inc., v. Lawson Software, Inc., 790 F.3d 1307 (Fed. Cir.

2015), which relied not only on the fact that the PTO had cancelled the patent-at-

issue, but also on the fact that “[t]he cancellation at the PTO was finally affirmed

by this court .” Id. at 1309.

Samsung also argues (Pet. 8-9) that en banc review is warranted to decide a

question left open in AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc.,

759 F.3d 1285 (Fed. Cir. 2014). Samsung did not raise AbbVie when it argued in

the prior appeal that collateral estoppel should apply to the PTAB’s reexamination

decision. See No. 14-1335 Dkt. 152-1. And for good reason— AbbVie has nothing

to do with reexamination decisions. The question unanswered by AbbVie was

“[w]hether a Board’s interference decision that is on appeal under § 141 can have

collateral estoppel effect on issues raised in a co-pending litigation,” not whether a

reexamination decision is entitled to such effect. 759 F.3d at 1297 (emphasis



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added). The latter question was asked, and answered, by this Court’s Fresenius

decision.5

C. Samsung’s “Rule 54(b)” Argument Is Likewise Foreclosed By TheMandate Rule And, In Any Event, Meritless.

1. Like its collateral estoppel argument, Samsung’s argument that “[t]he

panel’s summary order conflicts with … precedents in authorizing this Court’s

mandate to trump the Federal Rules of Civil Procedure” (Pet. 11) assumes that the

panel reached and rejected the substance of Samsung’s argument. But once again,

the district court ruled in a manner that made it unnecessary to reach that point:

because Samsung failed to make its Rule 54(b) argument in the prior appeal, its

assertion now is barred by the mandate rule. Add. 93. “Once a case has been

decided on appeal, the rule adopted is to be applied … absent exceptional

circumstances, in the disposition of the lawsuit.” International Rectifier Corp. v.

IXYS Corp., 515 F.3d 1353, 1360 (Fed. Cir. 2008). Samsung has identified no

such exceptional circumstance here, nor does it argue that the en banc Court

should reconsider whether such an exceptional circumstance existed.

As the district court correctly observed, “[t]o the extent Samsung believe[d]

that directing the entry of partial final judgment was improper under 28 U.S.C. [§]

5 Even if some unresolved question from AbbVie were left open afterFresenius, Samsung shows no reason why the en banc Court should stretch todecide it now, given that the panel’s nonprecedential order does not change thestate of the law in any respect.



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2106, Samsung ought to have raised that argument with the Federal Circuit,”

namely, when it filed its petition for rehearing in the prior appeal. Add. 93; see,

e.g., Taylor v. USPTO, 385 F. App’x 980, 983 (Fed. Cir. 2010) (per curiam) (“If

Mr. Taylor was dissatisfied with the relief accorded by this court’s earlier opinion,

he could have petitioned for rehearing or moved to recall the mandate. Because he

failed to seek any such relief in this court at the time of the initial appeal, he cannot

now challenge the district court’s compliance with our instructions on remand.”).

Samsung did not seek rehearing of the Court’s mandate—despite petitioning for

rehearing on other grounds—and, accordingly, “[u]nder the law of the case

doctrine, th[e district] court was absolutely bound” by the mandate to enter partial

final judgment of the design and utility patent damages. King Instrument Corp. v.

Otari Corp., 814 F.2d 1560, 1563 (Fed. Cir. 1987). Any result other than an

affirmance of that judgment would undercut the very purpose of the law of the case

doctrine: “to prevent the relitigation of issues that have been decided and to ensure

that trial courts follow the decisions of appellate courts.” Gould, Inc. v. United

States, 67 F.3d 925, 930 (Fed. Cir. 1995).6

6 Samsung claims that it “could not have speculated then that the district courtwould interpret the mandate to require entry” of final judgment on the design andutility patent damages. Pet. 13 n.7. But Samsung did not need to “speculate”about how the district court would interpret the mandate. This Court directed“immediate entry of final judgment on all damages awards not predicated onApple’s trade dress claims” ( Apple, 786 F.3d at 1005), so the precise action thedistrict court took on remand was entirely foreseeable.



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2. Even if the en banc Court were to reach Samsung’s Rule 54(b)

argument—though it need not and should not—the panel’s affirmance of the

district court’s conclusion is correct. As the district court made clear, it was “not

entering partial final judgment pursuant to Rule 54(b),” but rather “pursuant to the

Federal Circuit’s authority under 28 U.S.C. [§] 2106, which gives the court of

appellate jurisdiction the authority to remand the case and direct the entry of such

appropriate judgment, decree, or order … as may be just under the circumstances.”

Add. 92-93. Under this Court’s precedent, Rule 54(b) “is not applicable in these

circumstances.” King, 814 F.2d at 1563 (emphasis added); see also id. (Rule 54(b)

“concerns the power of the trial court before appeal”).

In King, this Court affirmed (1) the district court’s findings that King’s

patent was valid and infringed and (2) a portion of the district court’s damages

award, but vacated and remanded another portion of the damages award. 814 F.2d

at 1561. On remand, the district court entered partial final judgment on the portion

of the damages award that this Court had affirmed. Id. Although the infringer

argued that final judgment was improper because the district court did not follow

the dictates of Rule 54(b), this Court affirmed the partial judgment ruling because

“[c]learly it was within this court’s power under 28 U.S.C. § 2106” to order the

district court to enter partial final judgment, and “Rule 54(b)[] is not applicable”

when the district court is fulfilling its obligations under the mandate. Id. at 1563.



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Thus, “[u]nder the law of the case doctrine, [the district] court was absolutely

bound by [this Court’s] affirmance” of a portion of the damages award and

therefore acted properly by “order[ing] execution on that portion of the [damages]

judgment which was final.” Id.

As the district court correctly observed here, “[t]he instant case presents

exactly the scenario contemplated by King.” Add. 91. This Court affirmed the

findings that Apple’s patents were valid and infringed, as well as a portion of the

damages award, and ordered immediate entry of final judgment on those affirmed

damages. The district court was accordingly “absolutely bound” on remand to

enter a final judgment that reflected that decision. King, 814 F.2d at 1563.

Samsung asserts an alleged circuit split, but the law of this Court applies to

mandate rule questions. See TecSec, Inc. v. International Bus. Machs. Corp., 731

F.3d 1336, 1341-1342 (Fed. Cir. 2013). And for nearly thirty years, this Court has

expressly endorsed the application of the mandate rule to cases where, as here, the

district court enters partial judgment on remand following an “explicit[]

[instruction] that final judgment be entered” on a subset of damages. King, 814

F.2d at 1563.

Even among other circuits, the weight of authority strongly reinforces the

correctness of King. The Sixth Circuit is the only court to have concluded

otherwise, and its decision arose on a very different set of facts, including that the



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remand order apparently did not expressly instruct the district court to enter partial

final judgment. See Jalapeno Prop. Mgmt., LLC v. Dukas, 265 F.3d 506, 511-513

(6th Cir. 2001). By contrast, this Court’s approach is consistent with that of at

least four other circuits. The Third Circuit adopted the same rule as King in

Barnes v. United States, 678 F.2d 10, 11-13 (3d Cir. 1982), where it held that

“once an appeal is properly before this court, there is no reason why our powers

under Section 2106 should be deemed to be as circumscribed as those of a trial

court acting on a Rule 54(b) application.” The Seventh, Ninth, and Eleventh

Circuits have likewise concluded that partial final judgment can be appropriately

entered when part of a damages award is finally resolved on appeal. See Carter v.

United States, 333 F.3d 791, 793 (7th Cir. 2003) (entering “partial final judgment

in the plaintiff’s favor” where “[n]either she nor the government challenge[d an]

award of $3.4 million in economic damages”); Dempsey v. United States, 32 F.3d

1490, 1497-1498 (11th Cir. 1994) (Carnes, J., concurring) (discussing panel’s

order of partial final judgment “to the extent of the uncontested part of the

damages award”); Fadhl v. City & Cty. of San Francisco, 804 F.2d 1097, 1099 (9th

Cir. 1986) (per curiam) (affirming the “portion of the judgment” representing

undisputed attorneys’ fees, because “[t]here is no reason to delay receipt of these

undisputed fees,” while maintaining jurisdiction over the question whether

additional amounts were properly awarded); see also Add. 94-95 (district court



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noting that “the Third, Seventh, Ninth, and Eleventh Circuits all apply the same

rule as King”).

This case is on all fours with King, Barnes, Carter , Dempsey, and Fadhl:

The panel’s decision in the prior appeal affirmed the damages award in the

undisputed amount of $548 million for 18 products found to infringe Apple’s

design and utility patents. Add. 60. While other products are subject to a retrial on

damages, that retrial will not implicate the damages award for any of the products

encompassed by the partial final judgment, nor will it revisit questions of patent

infringement or validity—those issues were entirely resolved by the prior appeal.

Finally, Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc., 546 U.S. 394

(2006), has no bearing on this case. Unitherm dealt with the narrow question

whether a court of appeals can order a new trial when the losing party below failed

to make a post-verdict motion for a new trial under Federal Rule of Civil

Procedure 50(b). Even Samsung recognizes this basic distinction. Pet. 11

(“Unitherm arose in the context of Rule 50(b).”). Because Rule 50 is not at issue

in this case, Unitherm is—as the district court found—“inapplicable.” Add. 95;

see also Add. 96 (“Unitherm does not apply in the instant case because all of the

issues encompassed by the Federal Circuit’s remand for immediate partial final

judgment … were the subject of a 50(b) motion in this case and, thus, were

properly before the Federal Circuit on appeal.”). Neither the Supreme Court nor



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this Court has ever applied Unitherm in a civil litigation involving anything other

than a party’s failure to file a Rule 50 motion, and Samsung provides no reason to

do so for the first time now.7

D. Samsung’s Policy-Based Arguments Do Not Warrant Rehearing

En Banc.

Samsung finally asserts that the issues it raises are “of exceptional practical

importance.” Pet. 14. But even if Samsung were correct, nothing in the panel’s

summary affirmance alters the law of the Circuit on either issue; it is a

commonplace application of the mandate rule. Samsung shows no reason for the

Court to reach out and decide those issues now, rather than in another case where

they are raised without that procedural bar.

CONCLUSION

Samsung’s petition for rehearing en banc should be denied.

7

In Greenlaw v. United States, 554 U.S. 237 (2008), the Supreme Court citedUnitherm as support for the proposition that § 2106 does not permit a court ofappeals to increase a criminal defendant’s sentence when the government fails tofile a cross-appeal. Id . at 249. Greenlaw focused on the special context of thecross-appeal rule. Id . (§ 2106 applies “to all cases, civil and criminal, and to allerrors” and, if read to abrogate the cross-appeal rule in the criminal plain-errorcontext, “would displace the cross-appeal rule cross the board”).



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Respectfully submitted,

/s/ William F. LeeHAROLD J. MCELHINNY

R ACHEL K REVANS ERIK J. OLSON

NATHAN B. SABRIMORRISON & FOERSTER LLP425 Market StreetSan Francisco, CA 94105(415) 268-7000

MARK D. SELWYN WILMER CUTLER PICKERING

HALE A ND DORR LLP 950 Page Mill RoadPalo Alto, CA 94304

November 2, 2015

WILLIAM F. LEE

MARK C. FLEMING LAUREN B. FLETCHER SARAH R. FRAZIER WILMER CUTLER PICKERING


THOMAS G. SPRANKLING WILMER CUTLER PICKERING

HALE A ND DORR LLP 1875 Pennsylvania Avenue, NWWashington, DC 20006

Counsel for Plaintiff-Appellee Apple Inc.



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CERTIFICATE OF SERVICE

I hereby certify that, on this 2nd

day of November, 2015 I filed the foregoing

Plaintiff-Appellee Apple Inc.’s Response to Defendants-Appellants’ Petition for

Rehearing En Banc with the Clerk of the United States Court of Appeals for the

Federal Circuit via the CM/ECF system, which will send notice of such filing to all

registered CM/ECF users.

/s/ William F. LeeWILLIAM F. LEE WILMER CUTLER PICKERING




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CERTIFICATE OF COMPLIANCE

Counsel for Plaintiff-Appellee Apple, Inc. certifies that:

1. The brief complies with the type-volume limitations of Federal Rule

of Appellate Procedure 40(b) because exclusive of the exempted portions it does

not exceed 15 double-spaced pages.

2. The brief complies with the typeface requirements of Federal Rule of

Appellate Procedure 32(a)(5) and the type-style requirements of Federal Rule of

Appellate Procedure 32(a)(6) because it has been prepared using Microsoft Word

2010 in a proportionally spaced typeface: Times New Roman, font size 14 point.

/s/ William F. LeeWILLIAM F. LEE WILMER CUTLER PICKERING


November 2, 2015


Documents

15-11-02 Apple Opposition to Samsung Petition for Rehearing