Saturday 27 February 2016

Big Day for Judge Lucy Koh: Federal Circuit Judge Dyk Overturns $119,000,000 judgment and President Obama Nominates Judge Koh to the Ninth Circuit

Wow!  Talk about a big day for U.S. District Court Judge Lucy Koh of the Northern District of California.  First, the Federal Circuit issues an opinion in the famous U.S. Apple v. Samsung case reversing the judgment of infringement of the 647 patent, and the judgment of no invalidity as to the 721 patent and the 172 patent.  That essentially knocks out the over $119,000,000 judgment.  Apple was awarded $98,690,625 for infringement of claim 9 of the 647 patent.  Apple was awarded $2,990,625 for infringement of the 721 patent and $17,943,750 for infringement of the 172 patent.  I found the obviousness discussion of the 721 patent particularly interesting.  I have to say that this is one of the cases where I think hindsight bias can play such a huge role with essentially a combination invention (but is it really a combination invention?).  The 721 patent covers the slide to lock feature of the iPhone.  Yes, it appears that the features in the claim are in the prior art.  However, as with some combination inventions, if this is so “obvious” to do then why didn’t someone else do it.  As a wise person once told me, everything is obvious once someone shows you how to do it.  And, that throws us back into an analysis concerning teaching, suggestion and motivation to combine the references.  Here, there was arguably evidence of a teaching away from combining.  I don’t know if we ever are going to get to a standard that works well; particularly if you take a very stringent approach to secondary considerations of non-obviousness. If you come up with something no one has combined and is so new, how is anyone going to know that there was a problem.  The very lack of knowledge of the existence of the problem demonstrates that this was something radical and nonobvious!  Arguably, this point was not well-developed by Apple's counsel, but c'mon! The analogous art inquiry was also very, very important in this case. I am a fan of the Haberman v. Jackel case—better facts on secondary considerations for sure. 

Second, President Obama announced that he has nominated Judge Koh to the U.S. Court of Appeals for the Ninth Circuit.  A press release from the National Asian Pacific Bar Association states:

Today, President Barack Obama announced the nomination of Judge Lucy H. Koh to serve on the U.S. Courts of Appeals for the Ninth Circuit. If confirmed, Judge Koh would become the first Korean American woman and the second Asian Pacific American (APA) woman to serve on a federal appeals court, and would become the fifth active APA federal appellate judge.

“We applaud the nomination of Judge Koh to serve on the U.S. Courts of Appeals for the Ninth Circuit,” said Jin Y. Hwang, president of the National Asian Pacific American Bar Association (NAPABA). “Judge Koh has demonstrated her ability as a fair and adept jurist in her almost six years on the federal bench, and we strongly encourage the Senate to confirm her to the Ninth Circuit.”

In 2010, Judge Koh was unanimously confirmed to the U.S. District Court for the Northern District of California by a unanimous 90-0 vote. Her nomination received bipartisan support from California Senators Barbara Boxer and Dianne Feinstein, California Governor Arnold Schwarzenegger, former Massachusetts Governor William Weld, and Viet Dinh, former assistant attorney general under President George W. Bush.

Previously, Judge Koh served on the Superior Court of California for Santa Clara County, having been appointed to the bench in 2008 by Governor Arnold Schwarzenegger. She has been a partner at the law firm McDermott Will & Emery in Silicon Valley and an assistant U.S. attorney in the Central District of California. She also has held positions in the U.S. Department of Justice, notably as a special assistant to the U.S. deputy attorney general. Judge Koh is a graduate of Harvard University and Harvard Law School.

I am hopeful that the U.S. Senate decides to hold a hearing to confirm Ms. Koh. She is well-qualified and well-respected.  Another IP-savvy judge on the Ninth Circuit would be welcome; although I’d like to see her on the Federal Circuit.  I have to say that the Obama Administration is shrewdly positioning itself for a Democratic win for the presidency and a takeover of the Senate with judicial appointments (think of the fundraising and getting the base out!).  Winner-take all! [hat tip on the Apple v. Samsung decision to Professor Thomas Cotter's Comparative Patent Remedies Blog]

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