Imperium Ip Holdings (Cayman), Ltd. v. Samsung Elecs. Co., 2017-2107

IMPERIUM IP HOLDINGS (CAYMAN), LTD., Plaintiff-Cross-Appellant v. SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC.,SAMSUNG SEMICONDUCTOR, INC., Defendants-Appellants

2017-2107

2017-2133

United States Court of Appeals for the Federal Circuit

January 31, 2019

NOTE: This disposition is nonprecedential.

Appeals from the United States District Court for the Eastern District of Texas in No. 4:14-cv-00371-ALM, Judge Amos L. Mazzant, III.

ALAN M. FISCH, Fisch Sigler, LLP, Washington, DC, argued for plaintiff-cross-appellant. Also represented by JOHN T. BATTAGLIA, MATTHEW R. BENNER, JEFFREY MATTHEW SALTMAN, ROY WILLIAM SIGLER.

DOUGLAS HALLWARD-DRIEMEIER, Ropes & Gray LLP, Washington, DC, argued for defendants-appellants. Also represented by SAMUEL LAWRENCE BRENNER, COURTNEY M. COX, Boston, MA; REBECCA R. CARRIZOSA, East Palo Alto, CA; JESSE J. JENNER, STEVEN PEPE, KEVIN JOHN POST, New York, NY.

Before DYK, O'MALLEY, and TARANTO, Circuit Judges.

TARANTO, Circuit Judge.

Imperium IP Holdings (Cayman), Ltd. brought this action in 2014 against Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Semiconductor, Inc. (plus another Samsung entity that has since merged into one of those just named), which we refer to collectively as "Samsung." Imperium alleged that Samsung had infringed and was infringing three Imperium-owned patents: U.S. Patent Nos. 6,271,884; 7,092,029; and 6,836,290. When the case went to trial, the jury found infringement of claims 1, 5, 14, and 17 of the '884 patent and of claims 1, 6, and 7 of the '029 patent, rejected Samsung's invalidity challenges to the claims at issue from those patents, found claim 10 of the '290 patent infringed but invalid, and awarded damages for infringing the '884 and '029 patents.

In post-trial rulings, the district court let the jury's determinations on infringement and invalidity stand. Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., 259 F. Supp. 3d 530, 537-49 (E.D. Tex. 2017) (Imperium). The court also enhanced damages, Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., 203 F. Supp. 3d 755, 761-64 (E.D. Tex. 2016) (Enhancement Op.), amended in part, No. 4:14-CV-371, 2017 WL 1716589 (E.D. Tex. Apr. 27, 2017); granted Imperium an ongoing royalty, Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., No. 4:14-CV-371, 2017 WL 4038884, at *1 (E.D. Tex. Sept. 13, 2017); and awarded Imperium attorney's fees, Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., No. 4:14-CV-371, 2018 WL 1602460, at *1 (E.D. Tex. Apr. 3, 2018); Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., No. 4:14-CV-371, 2017 WL 4038883, at *1 (E.D. Tex. Sept. 13, 2017). Samsung appeals on numerous grounds, principally concerning the jury's finding of no anticipation of the claims of the '884 patent found infringed. Imperium cross-appeals to seek, among other things, judgment as a matter of law of non-anticipation of claim 10 of the '290 patent.

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. As for the at-issue claims of the '029 and '290 patents, liability is barred by our separate affirmance of the unpatentability rulings of the Patent and Trademark Office's Patent Trial and Appeal Board regarding those claims. We therefore reverse the judgment of liability against Samsung on the '884 and '029 patents and affirm the judgment against Imperium on the '290 patent.

I

A

The three patents at issue relate to components in digital cameras. The '884 patent is entitled "Image Flicker Reduction with Fluorescent Lighting." The patent claims a method of lighting photographs to reduce the impact of flickering fluorescent lights. '884 patent, col. 6, line 63, through col. 7, line 6. Claim 1 claims:

1. A method of reducing flicker caused by lighting having a periodic intensity using an imager having a pixel integration time, the method comprising the steps of:

setting the integration time to an integral multiple of the period of the periodic intensity of the lighting; determining an amount to vary an overall system gain; and

adjusting the overall system gain by adjusting the integration time while maintaining the integration time at an integral multiple of the period of the periodic intensity.

Id. Dependent claim 5 claims "[t]he method of claim 1, wherein the lighting is 60 Hz lighting, and wherein the period of the periodic intensity of the lighting is 8 1/3 ms." Id., col. 7, lines 16-18.

Asserted independent claim 14 is an apparatus claim related to the claim 1 method claim. Claim 14 claims:

14. An imager for a digital camera with reduced flicker caused by lighting having a periodic intensity, the imager providing data for a plurality of pixels, the imager comprising:

programmable integration time circuitry that controls an integration time of the plurality of pixels;

an integration time adjustment block coupled to the programmable integration time circuitry, the integration time adjustment block setting the integration time to an integral multiple of the period of the periodic intensity of the lighting; and

an overall gain control block that adjusts an overall system gain by adjusting the integration time while maintaining the integration time at an integral multiple of the period of the periodic intensity.

Id., col. 7, line 47, through col. 8, line 4. Dependent claim 17 claims

[t]he imager of claim 14, further comprising: an analog, variable gain stage receiving the data for the plurality of pixels and providing amplified analog pixel data; an analog to digital converter receiving the amplified analog pixel data and providing digitized pixel data; and a gamma correction stage receiving the data, and providing scaled pixel data.

Id., col. 8, lines 11-20.

The '029 patent describes and claims methods of adjusting the intensity and duration of the flash used in taking a photograph based on information gathered in a preparatory or preflash stage. '029 patent, col. 11, lines 40-57. The '290 patent describes and claims a data interface circuit that contains, and allows selection between, a single-ended and a differential interface. '290 patent, col. 5, lines 6-18. We need not set out details of those patents here.

B

We have already described the jury verdict and the district court's post-trial rulings.¹ After the jury rendered its verdict, but before the district court's rulings on thelast of Samsung's post-trial motions, the Board determined that the claims of the '290 and the '029 patents asserted in this case by Imperium are unpatentable for obviousness over prior art. Samsung Elecs. Co. v. Imperium (IP) Holdings, No. 2015-01232 (PTAB Dec. 1, 2016) (finding the '029 patent obvious over the prior art); Samsung Elecs. Co. v. Imperium (IP) Holdings, No. 2015-01233 (PTAB Nov. 30, 2016) (finding the '290 patent obvious over the prior art). We have affirmed both Board decisions. Imperium (IP) Holdings v. Samsung Elecs. Co., No. 2017-1570, 2019 WL 140857 (Fed. Cir. Jan. 9, 2019); Imperium (IP) Holdings v. Samsung Elecs. Co., No. 2017-1571, 2019 WL 140950 (Fed. Cir. Jan. 9, 2019).

Samsung appeals on a number of grounds, among them that the record establishes as a matter of law (contrary to the jury verdict) that the infringed claims of the '884 patent are anticipated. Imperium cross-appeals, seeking additional monetary relief and arguing that the record establishes as a matter of law (contrary to the jury verdict) that claim 10 of the '290 patent is not anticipated. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

II

A

We review the denial of judgment as a matter of law de novo and the underlying jury findings for substantial evidence. Bear Ranch, L.L.C. v. Heartbrand Beef, Inc., 885 F.3d 794, 801 (5th Cir. 2018); i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831, 841 (Fed. Cir. 2010) (following Fifth Circuit law), aff'd on other issues, 564 U.S. 91 (2011); Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1300 (Fed. Cir. 2002). Judgment as a matter of law rejecting the jury's verdict on a specific issue is justified if the evidence is such that a reasonable jury could not decide that issue as it did. See Fed. R. Civ. P. 50(a); Reeves v. Sanderson Plumbing Prod., Inc., 530 U.S. 133, 149-50 (2000); Raytheon Co. v. Indigo Sys. Corp., 895 F.3d 1333, 1338 (Fed. Cir. 2018) (explaining that, under Fifth Circuit law, judgment is appropriate "where the facts and inferences point so strongly and overwhelmingly in favor of one party that the court concludes that reasonable jurors could not arrive at a contrary verdict") (internal quotation marks omitted).

Here, the dispositive issue is whether, on this record, claims 1, 5, 14, and 17 of the '884 patent must be held invalid for anticipation as a matter of law. We agree 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 prior art.

The prior-art Johnson patent, U.S. Patent No. 7,289,145, teaches a circuit for processing image data in a digital camera. Johnson, col. 2, lines 3-10. In the specification, Johnson discloses "flickerless modes . . . to enable indoor operation with fluorescent lights." Id., col. 16, lines 44-46. It also provides a technical description of how the flickerless setting adjusts to operate under flickering fluorescent lighting. Id., col. 16, lines 42-61. That description, together with Johnson's figures, especially Figure 13, teaches altering exposure time by an integral multiple of the cycle of the fluorescent light, changing the time from one cycle to two cycles.

At trial, as Imperium does not dispute, Samsung's expert, Dr. Neikirk provided detailed testimony about how Johnson discloses each of the limitations of claims 1, 5, 14, and 17 of the '884 patent. In particular, he explained that Johnson, including its Figure 13, teaches the "setting the integration time" and "maintaining the...