Fifteen months ago, U.S. District Judge Mark Kearney of Pennsylvania criticized Samsung Electronics Co. for trying to get around Texas federal court proceedings that had resulted in a $21 million verdict.
“We are not the court of appeals for the Texas district court. Samsung cannot argue here what it already lost in Texas,” Kearney wrote at the time.
Well, now the U.S. Court of Appeals for the Federal Circuit has spoken, and the $21 million verdict—plus a $7 million fee award added by U.S. District Judge Amos Mazzant—has been wiped from the books.
Last month the Federal Circuit affirmed Patent Trial and Appeal Board proceedings that had invalidated claims from two of the three patents that relate to digital photography. On Thursday, the court set aside the jury’s verdict on the third. “We agree with Samsung that the only reasonable finding on this record is that the ’884 patent claims at issue here are invalid for anticipation,” Judge Richard Taranto wrote for a unanimous panel.
With all of the asserted claims extinguished, that left Samsung the prevailing party, so the fee award was reversed as well.
Imperium IP Holdings v. Samsung marks a nice turnaround for Ropes & Gray, which handled all four appeals. Partner Douglas Hallward-Driemeier argued the appeal of the verdict and fee award, while partners Steven Pepe and Kevin Post argued the PTAB appeals.
Mazzant had made a series of harsh findings against Samsung both during and after the trial. He found Samsung executives falsely testified that they weren’t interested in Imperium’s patents and hadn’t paid attention to them for years. Documents produced after the trial was underway showed that Samsung had tried to obtain the patents through a broker without revealing Samsung’s identity, Mazzant had found.
Hallward-Driemeier had argued to the Federal Circuit that some of Mazzant’s findings were “demonstrably untrue” and that Samsung had been unfairly penalized.
Aside from a few pointed questions at argument, the Federal Circuit didn’t address that controversy. Taranto instead wrote for the panel that Samsung had presented unrebutted expert testimony showing the 6,271,884 patent, which is for a method of image flicker reduction, was anticipated.
“In this case, the jury’s finding lacks any reasonable basis,” Taranto wrote. Samsung’s expert “gave straightforward, detailed testimony” about invalidity that “is on its face strong. This testimony was not contradicted.”
Imperium was represented by a team of attorneys from Fisch & Sigler. “We intend to petition for panel rehearing or a rehearing en banc,” said the firm in a statement.
Imperium settled previous claims over some of the same patents with Apple, LG Electronics, Motorola Mobility and others.