`
`No. 18-___
`
`IN THE
`Supreme Court of the United States
`
`IMPERIUM IP HOLDINGS (CAYMAN), LTD.,
`Petitioner,
`
`v.
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., SAMSUNG
`SEMICONDUCTOR, INC.,
`
`Respondents.
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`PETITION FOR A WRIT OF CERTIORARI
`
`
`
`PATRICK STRAWBRIDGE
`CONSOVOY MCCARTHY PLLC
`Ten Post Office Square
`8th Floor South PMB #706
`Boston, MA 02109
`(617) 227-0548
`
`
`JEFFREY M. HARRIS
` Counsel of Record
`CONSOVOY MCCARTHY PLLC
`1600 Wilson Blvd., Ste. 700
`Arlington, VA 22209
`(202) 321-4120
`jeff@consovoymccarthy.com
`
`Counsel for Petitioner
`(Additional Counsel Listed on Inside Cover)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ALAN M. FISCH
`R. WILLIAM SIGLER
`FISCH SIGLER LLP
`5301 Wisconsin Avenue NW, 4th Floor
`Washington, DC 20015
`(202) 362-3500
`
`Counsel for Petitioner
`
`
`
`
`
`
`
`
`
`
`i
`QUESTION PRESENTED
`This case implicates fundamental questions
`about the proper roles of the jury and the court. After
`a six-day trial, a jury found that Respondent Samsung
`willfully
`infringed Petitioner Imperium’s patent
`rights. In reaching that verdict, the jury found that
`Samsung had failed to carry its burden of proving by
`clear and convincing evidence that the relevant patent
`claims were invalid. Following post-trial proceedings,
`including an award of treble damages plus attorney’s
`fees in light of Samsung’s willful infringement and
`litigation misconduct, the district court entered
`judgment for over $22 million on the patent claims at
`issue.
`
`The Federal Circuit reversed, however, holding
`that Samsung was entitled to judgment as a matter of
`law on invalidity because the jury was required to
`accept the purportedly credible, “unrebutted,” and
`“uncontradicted” testimony of Samsung’s paid expert.
`The court of appeals reached that holding only after
`performing its own assessment of Samsung’s expert’s
`credibility and ignoring numerous other facts that
`could have led a reasonable jury to discount the value
`of this witness’s testimony.
`The question presented is whether an appellate
`court may reverse a jury verdict based on its own view
`that expert testimony was credible, “unrebutted,” and
`“uncontradicted,” or instead whether the Seventh
`Amendment requires the jury to make determinations
`about credibility and the weight of the evidence in
`determining whether a party has properly carried its
`burden of proof.
`
`
`
`
`
`
`
`
`ii
`PARTIES TO THE PROCEEDING,
`RULE 29.6 STATEMENT, AND
`STATEMENT OF RELATED CASES
`Petitioner Imperium IP Holdings (Cayman), Ltd.
`was
`the plaintiff
`in
`the district court and
`appellee/cross-appellant
`in the Federal Circuit.
`Petitioner has no parent company, and no publicly
`held company owns 10% or more of its stock.
`Respondents are Samsung Electronics Co., Ltd.,
`Samsung Electronics America, Inc., and Samsung
`Semiconductor, Inc. Respondents were defendants in
`the district court and appellants/cross-appellees in the
`Federal Circuit.
`Pursuant to Rule 14.1(b)(iii), Imperium provides
`the following statement of related cases:
`There is ongoing litigation between Imperium and
`Samsung over whether Samsung’s use of the patented
`technologies at issue here was a289uthorized by a
`separate
`license agreement between Sony and
`Imperium. See Samsung Electronics Co., Ltd. v.
`Imperium IP Holdings (Cayman), Ltd., No. 1:15-cv-
`1059-CFC (D. Del.). Similar issues were litigated in
`this case but are not directly at issue in this petition.
`
`
`
`
`
`
`
`
`
`
`
`
`
`iii
`TABLE OF CONTENTS
`
`Page
`QUESTION PRESENTED .......................................... i
`PARTIES TO THE PROCEEDING, RULE
`29.6 STATEMENT, AND STATEMENT
`OF RELATED CASES .......................................... ii
`TABLE OF APPENDICES ........................................ v
`TABLE OF AUTHORITIES ..................................... vii
`INTRODUCTION ....................................................... 1
`OPINIONS BELOW ................................................... 5
`JURISDICTION ......................................................... 5
`CONSTITUTIONAL PROVISION
`INVOLVED ........................................................... 5
`STATEMENT OF THE CASE ................................... 6
`A. History of the ’884 Patent ............................. 6
`B. District Court Proceedings ........................... 7
`C. The Federal Circuit’s Decision ................... 10
`REASONS FOR GRANTING THE
`PETITION ........................................................... 12
`I. The Federal Circuit’s Decision
`Conflicts With This Court’s
`Precedents And The Decisions Of
`Several Other Circuit Courts ..................... 12
`
`
`
`
`
`
`
`
`
`iv
`A. The Federal Circuit’s decision
`disregards this Court’s
`jurisprudence about the proper
`roles of the jury and the court ............ 12
`B. The Federal Circuit’s decision
`conflicts with the decisions of
`several other circuits .......................... 18
`C. There were abundant grounds
`on which the jury could have
`found Samsung’s testimony to
`be unreliable or not credible ............... 21
`II. The Federal Circuit’s Decision Has
`Significant Implications For Patent
`Rights Nationwide ...................................... 25
`III. If The Court Reverses The
`Judgment Below, It Should
`Reinstate The Award Of Attorney’s
`Fees .............................................................. 31
`CONCLUSION .......................................................... 32
`
`
`
`
`
`
`
`
`v
`TABLE OF APPENDICES
`
`APPENDIX A — OPINION OF THE
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT, FILED
`JANUARY 31, 2019 ........................................................ 1a
`
`Page
`
`APPENDIX B — OPINION OF THE
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT, FILED
`JANUARY 31, 2019 ......................................................16a
`
`APPENDIX C — MEMORANDUM
`OPINION AND ORDER OF THE
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF
`TEXAS, SHERMAN DIVISION, FILED
`APRIL 3, 2018 ...............................................................18a
`
`APPENDIX D — MEMORANDUM
`OPINION AND ORDER OF THE
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF
`TEXAS, SHERMAN DIVISION, FILED
`SEPTEMBER 13, 2017 ...............................................39a
`
`APPENDIX E — MEMORANDUM
`OPINION AND ORDER OF THE
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF
`TEXAS, SHERMAN DIVISION, FILED
`APRIL 27, 2017 .............................................................52a
`
`
`
`
`
`
`
`
`
`
`vi
`APPENDIX F — DENIAL OF REHEARING
`OF THE UNITED STATES COURT OF
`APPEALS FOR THE FEDERAL
`CIRCUIT, FILED APRIL 18, 2019 ....................... 100a
`
`APPENDIX G — DENIAL OF REHEARING
`OF THE UNITED STATES COURT OF
`APPEALS FOR THE FEDERAL
`CIRCUIT, FILED APRIL 18, 2019 ....................... 102a
`
`
`
`
`
`
`
`
`
`vii
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Aetna Life Ins. Co. v. Ward,
`140 U.S. 76 (1891) ........................................... 2, 14
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ....................................... 13, 18
`Apple v. Samsung,
`839 F.3d 1034 (Fed. Cir. 2016) ........................... 22
`Congress & Empire Spring Co. v. Edgar,
`99 U.S. 645 (1878) ............................................... 13
`Davoll v. Brown,
`7 F. Cas. 197 (D. Mass. 1845). ............................ 27
`Dayton Power & Light Co. v.
`Pub. Utils. Comm’n of Ohio,
`292 U.S. 290 (1934) ....................................... 13, 17
`Elzig v. Gudwangen,
`91 F.2d 434 (8th Cir. 1937) ................................. 19
`Festo Corp. v.
`Shoketsu Kinzoku Kogyo Kabushiki Co.,
`535 U.S. 722 (2002) ....................................... 27, 28
`Forsyth v. Doolittle,
`120 U.S. 73 (1887) ............................................... 13
`Guy v. City of San Diego,
`608 F.3d 582 (9th Cir. 2010) ............................... 20
`
`
`
`
`
`
`
`viii
`
`Hassan v. Stafford,
`472 F.2d 88 (3d Cir. 1973) .................................. 20
`Hunter v. Bryant,
`502 U.S. 224 (1991) ............................................. 31
`James v. Campbell,
`104 U.S. 356 (1882) ............................................. 27
`Joseph v. Donover Co.,
`261 F.2d 812 (9th Cir. 1958) ......................... 21, 23
`Kewanee Oil Co. v. Bicron Corp.,
`416 U.S. 470 (1974) ........................................ 27-28
`Mazer v. Stein,
`347 U.S. 201 (1954) ............................................. 26
`Microsoft Corp. v. i4i Ltd. Partnership,
`564 U.S. 91 (2011) ................................... 15, 16, 28
`Mihalchak v. Am. Dredging Co.,
`266 F.2d 875 (3d Cir. 1959) ................................ 20
`NLRB v. Howell Chevrolet Co.,
`204 F.2d 79 (9th Cir. 1953). ............................ 4, 21
`Powers v. Bayliner Marine Corp.,
`83 F.3d 789 (6th Cir. 1996) ............................. 3, 19
`Quock Ting v. United States,
`140 U.S. 417 (1891) ................................... 2, 13, 14
`Radio Corp. of Am. v. Radio Eng’g Labs.,
`293 U.S. 1 (1934) ................................................. 15
`Reeves v. Sanderson Plumbing Prods., Inc.,
`530 U.S. 133 (2000) ....................................... 17, 18
`
`
`
`
`
`
`
`ix
`Sartor v. Arkansas Nat. Gas Corp.,
`321 U.S. 620 (1944) ............................................. 13
`The Conqueror,
`166 U.S. 110 (1897) ....................................... 13, 17
`United States v.
`0.161 Acres of Land in Birmingham, Ala.,
`837 F.2d 1036 (11th Cir. 1988) ........................... 19
`Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,
`520 U.S. 17 (1997) ............................................... 28
`Webster v. Offshore Food Serv.,
`434 F.2d 1191 (5th Cir. 1970) ....................... 17, 22
`Willis v. State Farm Fire and Cas. Co.,
`219 F.3d 715 (8th Cir. 2000) ............................... 19
`
`
`Statutes and other Authorities
`U.S. Const., art. I, § 8, cl. 8 ...................................... 26
`Seventh Amendment to the
`U.S. Constitution ...................................... 5, 12, 18
`28 U.S.C. § 1254(1) ..................................................... 5
`35 U.S.C. § 282(a) ..................................................... 15
`35 U.S.C. § 285 ............................................... 5, 10, 31
`S. Ct. R. 10(a) ............................................... 12, 21, 22
`Abraham Lincoln, Second Lecture on
`Discoveries and Inventions
`(Feb. 11, 1859) ..................................................... 26
`
`
`
`
`
`
`
`
`
`x
`Adam Mossoff, Patents as Constitutional
`Private Property: The Historical
`Protection of Patents Under The Takings
`Clause, 87 B.U. L. Rev. 689 (2007) ..................... 27
`Alan C. Marco & Saurabh Vishnubhakat,
`Certain Patents, 16 Yale J.L. & Tech.
`(2013) ................................................................... 29
`Collected Works of Abraham Lincoln
`(Roy B. Basler ed. 1953) ...................................... 26
`Ex Parte Reexamination Certificate
`(11197th) for U.S. Patent No. 6,271,884
`(Oct. 13, 2017) ..................................................... 30
`Gary Locke, Remarks at World Intellectual
`Property Day Event, 174 Intellectual
`Property Counselor (2011) ............................. 29-30
`Henry Grabowski, Patents, Innovation and
`Access to New Pharmaceuticals, 5 J. Int’l
`Econ. L. 849 (2002) ............................................. 29
`Shapiro et al., Supreme Court Practice
`(10th ed. 2013) ..................................................... 31
`The Federalist No. 43 (James Madison) .................. 26
`
`
`
`
`
`
`
`
`
`
`
`1
`INTRODUCTION
`This case implicates fundamental questions
`about the proper roles of the jury and the court. After
`a six-day trial, the jury found that Respondent
`Samsung not only infringed Petitioner Imperium’s
`patent rights but did so willfully. The jury expressly
`rejected Samsung’s invalidity defenses, finding that
`Samsung had failed to meet its heavy burden of
`showing by clear and convincing evidence that the
`relevant patent claims were invalid. The district court
`then denied Samsung’s post-trial motion for judgment
`as a matter of law and awarded Imperium treble
`damages plus attorney’s fees in light of Samsung’s
`willful
`infringement,
`litigation misconduct, and
`material misrepresentations under oath. The total
`judgment on the patent claims at issue here exceeded
`$22 million.
`The Federal Circuit nonetheless vacated the
`judgment for Imperium and held that Samsung was
`entitled to judgment as a matter of law on its
`invalidity defense. That holding was profoundly
`wrong, disregarded more than a century of this
`Court’s precedents, failed to hold Samsung to its
`burden of proof, conflicts with the decisions of several
`other circuits, and diminishes the value and security
`of patent rights nationwide.
`The core error
`in the Federal Circuit’s
`reasoning was its holding that the jury was required
`to accept what the panel described as the “unrebutted”
`or “uncontradicted” testimony of Samsung’s paid
`expert. To reach that holding, the court necessarily
`
`
`
`
`
`
`
`2
`made its own determinations about the credibility of
`Samsung’s expert, finding based on a post hoc
`assessment of the record that there was no
`“inconsistency or equivocation” in this witness’s
`testimony.
`The Federal Circuit’s decision is flatly contrary
`to this Court’s precedents. It is the jury—not the
`court—that is “the judge[] of the credibility of the
`witnesses … and in weighing their testimony ha[s] the
`right to determine how much dependence was to be
`placed upon it.” Aetna Life Ins. Co. v. Ward, 140 U.S.
`76, 88 (1891). Indeed, this Court has explained at
`length why a jury may choose not to credit even
`“uncontradicted” testimony. Quock Ting v. United
`States, 140 U.S. 417, 420-21 (1891). For example, that
`testimony could have “an inherent improbability,”
`there could be errors or omissions in the witness’s
`testimony that lead the jury to “discredit his whole
`story,” or the witness’s “manner … of testifying may
`give rise to doubts of his sincerity, and create the
`impression that he is giving a wrong coloring to
`material facts.” Id. All of those possibilities “may
`properly be considered in determining the weight
`which should be given to [a witness’s] statements,
`although there be no adverse verbal testimony
`adduced.” Id.
`Under a proper application of those bedrock
`principles, this should have been an easy case. It was
`Samsung’s burden to prove invalidity by clear and
`convincing evidence, and a reasonable jury could have
`readily concluded that Samsung’s testimony did not
`satisfy that demanding burden of proof. In particular,
`
`
`
`
`
`
`
`3
`the jury could have found that Samsung’s witnesses
`were not credible in light of Samsung’s repeated
`misrepresentations to the court (which were so serious
`as to warrant an award of treble damages and
`attorney’s fees) and the fact that Samsung’s testimony
`was repeatedly impeached or discredited. This Court’s
`precedents are clear that any determinations about
`credibility or the strength of the evidence should have
`been made by the jury that actually saw the testimony
`and evidence firsthand, and that the jury was free to
`conclude that Samsung simply had not carried its
`burden of proof. And that is doubly true here given
`that Samsung’s burden of proof was clear-and-
`convincing evidence, not just a mere preponderance.
`The Federal Circuit’s decision also directly
`conflicts with the decisions of at least four other
`circuits that have faithfully applied this Court’s
`jurisprudence. For example, the Sixth Circuit has
`rejected the precise rationale that the Federal Circuit
`embraced in this case. In Powers v. Bayliner Marine
`Corp., 83 F.3d 789 (6th Cir. 1996), the plaintiffs in a
`product liability case argued that they were entitled
`to judgment as a matter of law because the defendant
`“did not offer any evidence to rebut plaintiffs’ evidence
`that the [sailboat] was defectively designed.” Id. at
`795. The Sixth Circuit flatly rejected that theory,
`holding that the jury “‘is completely free to accept or
`reject an expert’s testimony, and to evaluate the
`weight given such testimony in light of the reasons the
`expert supplies for his opinion.’” Id. at 797. There is
`no question Imperium would have prevailed under the
`reasoning of Bayliner and similar decisions in several
`other circuits. Indeed, the Ninth Circuit has described
`
`
`
`
`
`
`
`4
`fact must accept
`the notion that a trier of
`uncontradicted testimony as an “ancient fallacy which
`somehow persists despite the courts’ numerous
`rulings to the contrary.” NLRB v. Howell Chevrolet
`Co., 204 F.2d 79, 86 (9th Cir. 1953). Yet the Federal
`Circuit relied upon that precise “ancient fallacy” in the
`decision below.
`If allowed to stand, the Federal Circuit’s
`decision will nullify years of hard-fought litigation, a
`weeklong trial, and separate determinations by the
`trial judge and jury that Samsung not only infringed
`Imperium’s patent rights but did so willfully (and
`withheld critical evidence of its infringement). The
`jury’s verdict was also entirely consistent with the
`actions of the Patent and Trademark Office, which has
`twice rejected Samsung’s attempts to invalidate the
`relevant patent claims through an inter partes review
`and ex parte reexamination.
`On a more fundamental level, this ruling
`significantly diminishes the value of patent rights
`throughout the United States, as the Federal Circuit
`has exclusive jurisdiction over patent appeals. The
`Federal Circuit’s approach effectively substitutes its
`own judgment for that of both experienced juries and
`the Patent and Trademark Office. The effect will be to
`cast doubt on the enforceability of all patents, thereby
`diminishing the protections for innovation and the
`value of patent rights across the country. Certiorari is
`warranted to correct the Federal Circuit’s marked
`departure
`from this Court’s precedent, restore
`uniformity and predictability to this critical area of
`
`
`
`
`
`
`
`5
`the law, and ensure the protection of patent rights
`throughout the United States.
`OPINIONS BELOW
`The Federal Circuit’s opinion in the principal
`appeal is published at 757 Fed. Appx. 974 and is
`reproduced at App. 1a. The memorandum opinion and
`order of the U.S. District Court for the Eastern
`District of Texas denying Samsung’s post-trial motion
`for judgment as a matter of law is published at 259 F.
`Supp. 3d 530 and is reproduced at App. 52a.
`The district court’s orders awarding Imperium
`attorney’s fees under 35 U.S.C. §285 are unpublished
`and reproduced at App. 18a, 39a. The Federal
`Circuit’s opinion vacating the fee award in light of its
`holding in the principal appeal is unpublished and is
`reproduced at App. 16a.
`JURISDICTION
`The Federal Circuit issued its opinions on
`January 31, 2019. Petitioner filed timely petitions for
`panel rehearing or rehearing en banc of both the
`principal opinion and the attorney’s fees opinion,
`which the court denied on April 18, 2019. This Court
`has jurisdiction under 28 U.S.C. §1254(1).
`
`
`CONSTITUTIONAL PROVISION INVOLVED
`
`the U.S.
`to
`The Seventh Amendment
`Constitution provides: “In Suits at common law,
`where the value in controversy shall exceed twenty
`dollars, the right of trial by jury shall be preserved,
`
`
`
`
`
`
`
`6
`and no fact tried by a jury, shall be otherwise re-
`examined in any Court of the United States, than
`according to the rules of the common law.”
`
`
`STATEMENT OF THE CASE
`
`A. History of the ’884 Patent
`This
`case
`involves
`a multinational
`conglomerate that stole innovative technology from
`the United States. In the late 1980s, Rockwell
`International was working for the United States
`Department of Defense on satellite
`imaging
`technology. Among Rockwell’s innovations was a
`method for enabling proper video imaging under
`fluorescent lighting. Fluorescent lights flicker on and
`off 120 times a second. This “flicker” is undetectable
`to the human eye, but is captured by video recordings,
`which causes gray lines to appear and distort the
`images. U.S. Patent No. 6,271,884 (the ’884 Patent)—
`which came to be known as the “anti-flicker” patent—
`disclosed Rockwell’s systems and methods
`for
`eliminating these gray lines in videos.
`In the early 2000s, the digital imaging division
`of a California corporation called ESS Technology,
`Inc., was a leader in developing and manufacturing
`digital cameras for cellphones. ESS sold its products
`across the globe to companies such as Motorola,
`Ericsson, LG, Nokia, and Samsung (its largest
`customer). In addition to patenting a number of its
`own digital-camera innovations, ESS acquired the
`portfolio of another California corporation called
`
`
`
`
`
`
`
`7
`Pictos Technologies, Inc., which in turn had acquired
`the ’884 Patent from Rockwell.
`Sales to Samsung eventually dried up, and
`ESS’s digital imaging division had to close its doors
`and lay off its employees. In 2008, ESS continued to
`operate as an audio semiconductor company, but spun
`off its imaging intellectual property to a separate
`holding company (Imperium IP Holdings (Cayman),
`Ltd.). Beginning in 2010, Imperium sought to enforce
`its patent rights against a number of multinational
`corporations that had used its technology in video
`recording devices,
`single-lens
`reflex
`cameras,
`automobiles, and cellphones.
`By April 2013, after years of discussions,
`negotiations, and eventually the filing of a lawsuit,
`seven of the eight largest cellphone manufacturers
`(Apple, Kyocera, Nokia, Sony, LG, Motorola and
`Research in Motion) agreed to enter into licensing
`arrangements for the use of Imperium’s imaging
`technology, including the fundamental anti-flicker
`technology of the ’884 Patent. Reflecting the value and
`importance of Imperium’s patent rights, the total
`value of these licenses exceeded $22 million. Only
`Samsung—one of the world’s
`largest cellphone
`manufacturers, which had sold over 121 million
`mobile devices in the United States at that time—
`refused to enter into a licensing arrangement.
`B. District Court Proceedings
`On June 9, 2014, Imperium sued Samsung in
`the Eastern District of Texas, alleging that Samsung
`willfully infringed three patents related to digital-
`
`
`
`
`
`
`
`8
`camera technology, including the ’884 Patent. In its
`responsive pleadings and interrogatories, Samsung
`repeatedly asserted
`that
`it was unaware of
`Imperium’s patents until this suit was filed. See C.A.
`App. 315-24, 13937-39.1 Those representations were
`later shown to be false. Materials produced in
`discovery showed that Samsung knew of Imperium’s
`patents as early as spring of 2011, and that Samsung
`had hired an outside broker to try to purchase those
`patents surreptitiously. See C.A. App. 55-57, 83-84.
`During a six-day jury trial in February 2016,
`Imperium offered extensive evidence showing that
`Samsung had copied its camera technology. One
`witness who had worked at ESS (the predecessor-in-
`interest to Imperium) testified that Samsung—unique
`among ESS’s customers—demanded access to source
`code and other sensitive information. See C.A. App.
`10985-93, 11055-11056. He further testified that
`Samsung had “duplicated” ESS’s camera laboratory at
`its facilities in Korea. C.A. App. 82-83, 10993-93.
`Imperium
`also
`introduced
`expert
`testimony
`explaining how Samsung’s accused products met each
`element of the asserted claims.
`At trial, Samsung initially denied knowledge of
`Imperium’s patents, and told the jury that any efforts
`to buy those patents had ended by 2011. C.A. App. 14,
`83, 11254, 11286. But at 2:19 a.m. on the fourth day
`of trial, after Imperium had finished its case-in-chief,
`Samsung produced, for the first time, additional
`documents
`that
`flatly contradicted
`its earlier
`
`
`1 “C.A. App.” refers to the Appendix in the Federal Circuit.
`
`
`
`
`
`
`
`9
`representations. Those documents showed that
`Samsung had been specifically tracking litigation over
`Imperium’s patents; that discussions about obtaining
`the patents continued into 2012, 2013, and 2014; and
`that Samsung continued to be interested in acquiring
`Imperium’s patents after 2011. C.A. App. 8817-22.
`These
`belatedly-produced documents
`reflected
`Samsung’s knowledge and interest in Imperium’s
`patented technology, and were thus highly relevant to
`willfulness and infringement—and to Samsung’s
`credibility more generally.
`The jury returned a verdict finding that
`Samsung had infringed the ’884 Patent, that the five
`asserted claims of this patent were not invalid as
`anticipated or obvious, and that clear and convincing
`evidence showed Samsung’s infringement was willful.
`C.A. App. 86-94. The jury found Samsung liable for
`$4.84 million for its infringement of the ’884 Patent.2
`After further briefing and argument, the
`district court awarded treble damages in light of
`Samsung’s knowing and willful infringement, its
`discovery misconduct, and
`its repeated
`false
`statements and misrepresentations. See C.A. App. 59-
`60, 82-84. For example, the court found that
`Samsung’s witnesses provided testimony that was
`“demonstrably false and not worth of belief.” C.A. App.
`83. The court further emphasized that Samsung’s
`
`
`2 The jury also returned verdicts on the other two patents-
`in-suit—finding the three asserted claims of the ’029 Patent valid
`and infringed, but finding the sole asserted claim of the ’290
`Patent obvious. See C.A. App. 90-94. Those patents are no longer
`at issue here.
`
`
`
`
`
`
`
`10
`
`material
`multiple
`“made
`witnesses
`misrepresentations under oath” and “gave false
`testimony” at trial,
`including “testimony that
`[Samsung] proffered to the jury.” C.A. App. 83-84. The
`court later awarded Imperium more than $7 million
`in attorney’s fees under 35 U.S.C. §285 due to
`Samsung’s willful
`infringement and
`litigation
`misconduct. App. 18a, 39a.
`After trial, Samsung moved for judgment as a
`matter of law, arguing (as relevant here) that the ’884
`Patent was invalid because it was anticipated by two
`prior art references (“Johnson” and “Hashimoto”). The
`district court denied this motion, explaining that
`Samsung had offered evidence on anticipation at trial,
`but
`that
`Imperium had presented competing
`testimony showing that the cited prior art had “very
`little to do with the ’884 Patent.” App. 81a. The district
`court thus concluded that “substantial evidence
`supports the jury’s findings” and “[i]t was reasonable
`for the jury to find that [Samsung] did not present
`clear and convincing evidence of anticipation.” Id. In
`short, “[a] reasonable
`jury was free to credit
`[Imperium’s] testimony over [Samsung’s], and it is not
`the Court’s role to second guess the credibility
`determinations of the jury.” Id. (emphasis added).
`C. The Federal Circuit’s Decision
`The Federal Circuit reversed. Notwithstanding
`the jury’s verdict rejecting Samsung’s invalidity
`defense—and notwithstanding the fact that it was
`Samsung’s burden to prove invalidity through clear
`and convincing evidence—the panel held that
`
`
`
`
`
`
`
`11
`Samsung was entitled to judgment as a matter of law
`on the ground that the ’884 Patent was invalid for
`anticipation.
`The Federal Circuit “agree[d] with Samsung
`that a reasonable jury was required on the record of
`this case to find the claims of the ’884 Patent at issue
`to be anticipated by the prior art.” App. 8a (emphasis
`added). The court noted that Samsung’s expert
`“provided detailed testimony” about why the claims of
`the ’884 Patent were anticipated by the Johnson
`reference. The court then asserted that Imperium had
`failed to “contradict that testimony on cross
`examination or otherwise,” and that Imperium’s
`expert “did not dispute the substance of [Samsung’s]
`testimony.” App. 9a-10a. While noting in passing that
`“[j]uries have wide leeway to assess evidence and
`credibility,” the court suggested that such “leeway”
`applies only in “cases involving conflicting expert
`testimony.” App. 11a. The court also performed its
`own assessment of the credibility of Samsung’s expert,
`finding
`that
`there was no
`“inconsistency or
`equivocation” in this witness’s testimony. App. 13a. At
`no point in its opinion did the court contemplate the
`possibility that: (1) the jury simply concluded that
`Samsung had not met its heavy burden of proof on
`invalidity; or (2) the jury did not find Samsung’s
`experts to be credible.
`Thus, even though Samsung bore the burden of
`proving invalidity under the extremely demanding
`clear-and-convincing standard, the Federal Circuit
`concluded that “the jury could not properly find that
`the claims of the ’884 Patent at issue here are not
`
`
`
`
`
`
`
`12
`anticipated.” App. 14a (emphasis added). In light of
`that holding on invalidity, the Federal Circuit also
`separately vacated the $7 million award of attorney’s
`fees because “Imperium is no longer the prevailing
`party.” App. 17a.
`REASONS FOR GRANTING THE PETITION
`Certiorari is warranted because the Federal
`Circuit “has entered a decision in conflict with the
`decision of another United States court of appeals on
`the same important matter,” and “has so far departed
`from the accepted and usual course of judicial
`proceedings … as to call for an exercise of this Court’s
`supervisory power.” S. Ct. R. 10(a).
`I.
`The Federal Circuit’s Decision Conflicts
`With This Court’s Precedents And The
`Decisions Of Several Other Circuit
`Courts.
`
`A.
`
`The Federal Circuit’s decision
`disregards
`this
`Court’s
`jurisprudence about the proper
`roles of the jury and the court.
`1. The Seventh Amendment protects “the right
`of trial by jury” and provides that “no fact tried by a
`jury, shall be otherwise re-examined in any Court of
`the United States, than according to the rules of the
`common law.” U.S. Const. amend. VII. Consistent
`with that foundational guarantee, this Court has held
`that “[c]redibility determinations, the weighing of the
`evidence, and the drawing of legitimate inferences
`from the facts are jury functions, not those of a judge,
`
`
`
`
`
`
`
`13
`whether he is ruling on a motion for summary
`judgment or for a directed verdict.” Anderson v.
`Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).
`As the Court recognized nearly a century ago in
`an opinion by Justice Cardozo, expert testimony
`merely involves “expressions of opinion by [witnesses]
`familiar with” the relevant subject matter. Dayton
`Power & Light Co. v. Pub. Utils. Comm’n of Ohio, 292
`U.S. 290, 299 (1934). “But plainly opinions thus
`offered, even if entitled to some weight, have no such
`conclusive force that there is error of law in refusing to
`follow them.” Id. (emphasis added). This principle “is
`true of opinion evidence generally, whether addressed
`to a jury … or to a judge … or to a statutory board.”
`Id.; see also Sartor v. Arkansas Nat. Gas Corp., 321
`U.S. 620, 627-28 (1944) (same).
`Once expert testimony has been admitted,
`“then it is for the jury to decide whether any, and if
`any what, weight is to be given to the testimony.”
`Congress & Empire Spring Co. v. Edgar, 99 U.S. 645,
`658 (1878). Critically, “the jury, even if such testimony
`be uncontradicted, may exercise their independent
`judgment” not to credit it. The Conqueror, 166 U.S.
`110, 131 (1897) (emphasis added); see also Forsyth v.
`Doolittle, 120 U.S. 73, 77
`(1887)
`(approving
`instruction stating that jury was “not bound by the
`estimate” of damages provided by expert witnesses
`and had the “duty” to “settle and determine this
`question of value from all the testimony in the case”).
`There are countless circumstances in which a
`jury may choose not to believe even “uncontradicted”
`testimony. Quock Ting v. United States, 140 U.S. 417,
`420-21 (1891). There may be “such an inherent
`
`
`
`
`
`
`
`14
`improbability in the statements of a witness as to
`induce the court or jury to disregard his evidence,
`even in the absence of any directly conflicting
`testimony.” Id. Or there may be significant errors or
`omissions in the witness’s testimony that “discredit
`his whole story.” Id. Or the witness’s “manner … of
`testifying may give rise to doubts of his sincerity, and
`create the impression that he is giving a wrong
`coloring to material facts.” Id. All of these possibilities
`“may properly be considered in determining the
`weight which should be given to his statements,
`although there be no adverse verbal testimony
`adduced.” Id.
`In short, this Court’s precedents are crystal
`cle
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