U.S. District Judge Lucy Koh, Northern District of California.
U.S. District Judge Lucy Koh, Northern District of California. (Jason Doiy)

SAN FRANCISCO—Apple Inc. may have to settle just for its nearly $1 billion jury verdict.

U.S. District Judge Lucy Koh on Wednesday turned down the company’s bid for an additional $16 million in attorney fees stemming from its 2012 “trial of the century” against Samsung Electronics Co. over smartphone design.

Although Samsung lost at trial, it “raised several reasonable defenses to Apple’s trade dress dilution claims,” making a fee award inappropriate, Koh wrote in a 20-page order.

Morrison & Foerster partner Rachel Krevans argued last month that the jury found Samsung had “willfully” copied Apple’s iPhone and iPad designs. Koh agreed that willfulness “weighed in favor” of fee shifting. But under Ninth Circuit case law, willfulness does not trigger fee shifting automatically without some type of bad faith, she wrote.

Moreover, Koh herself had ruled on summary judgment that the trade dress claims were “a close question” because it was not clear that Apple’s iPhone design was “famous” before Samsung began producing similarly designed phones. “The fact that the court found the famousness of Apple’s trade dresses to be ‘a close question’ is, by itself, sufficient for the court to deny Apple’s motion for attorneys’ fees,” she wrote.

Plus, there was evidence that the iPhone was designed in part for utilitarian purposes, rather than purely for its looks. Apple’s own witnesses acknowledged that the rounded shape helps users pull it from pockets, and that the large display screen is easier to read. “Consequently,” Koh wrote, “Samsung presented sufficient evidence to support reasonable defenses of both utilitarian and aesthetic functionality.”

Quinn Emanuel Urquhart & Sullivan partner Victoria Maroulis argued the motion for Samsung.

Apple had prevailed before the jury on both patent and trade dress claims, but elected to move for fees only under the Lanham Act, even though the Patent Act uses identical language providing for fees in “exceptional cases.”

When Apple brought its motion last year, the Ninth Circuit case law interpreting the Lanham Act was seen as easier to meet than the Federal Circuit case law interpreting the Patent Act. But the Supreme Court in April relaxed the standard for patent cases in Octane Fitness v. ICON Health & Fitness, leading Apple to argue that the Octane Fitness standard should now apply to its Lanham Act claims. Koh agreed to a point in her order, but made clear she was taking guidance primarily from the Ninth Circuit.

Contact the reporter at sgraham@alm.com.