Case: 15-2088

Document: 30 Page: 1 Filed: 10/19/2015

Appeal No. 2015-2088

United States Court of Appeals

for the

Federal Circuit
APPLE INC., a California corporation,
Plaintiff-Appellee,
v.
SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG ELECTRONICS CO.,
LTD., SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
Defendants-Appellants,
INTERNATIONAL BUSINESS MACHINES CORPORATION, RESEARCH IN
MOTION CORPORATION, RESEARCH IN MOTION, LTD.,
REUTERS AMERICA, LLC,
Defendants.
APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE
NORTHERN DISTRICT OF CALIFORNIA IN CASE NO. 11-CV-01846-LHK
JUDGE LUCY H. KOH

DEFENDANTS-APPELLANTS PETITION FOR

REHEARING EN BANC
VICTORIA F. MAROULIS
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, California 94065
(650) 801-5000

KATHLEEN M. SULLIVAN
WILLIAM B. ADAMS
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010
(212) 849-7000
MICHAEL T. ZELLER
B. DYLAN PROCTOR
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
865 South Figueroa Street, 10th Floor
Los Angeles, California 90017
(213) 443-3000

Attorneys for Defendants-Appellants

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CERTIFICATE OF INTEREST
Counsel for Defendants-Appellants certifies the following:
1.

The full name of every party or amicus represented by me is:

Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. Effective
January 1, 2015, Samsung Telecommunications America, LLC (STA) merged
with and into Samsung Electronics America, Inc., and therefore STA no longer
exists as a separate corporate entity.
2.

The name of the real party in interest (if the party named in the caption

is not the real party in interest) represented by me is:

N/A
3.

All parent corporations and any publicly held companies that own 10

percent or more of the stock of the party or amicus curiae represented by me

are:
Samsung Electronics America, Inc. (SEA) is a wholly-owned subsidiary of
Samsung Electronics Co., Ltd. (SEC), a publicly held corporation organized
under the laws of the Republic of Korea. SEC is not owned by any parent
corporation and no other publicly held corporation owns 10% or more of its stock.
No other publicly held corporation owns 10% or more of SEAs stock.

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4.

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The names of all law firms and the partners or associates that appeared

for the party or amicus now represented by me in the trial court or are
expected to appear in this court are:
Quinn Emanuel Urquhart & Sullivan, LLP: Anne E. Abramowitz; William B.
Adams; Anthony P. Alden; Carl G. Anderson; Brett J. Arnold; Katharine F.
Barach; Robert J. Becher; Albert P. Bedecarre; Heather E. Belville; Kara M.
Borden; Todd M. Briggs; Margret M. Caruso; Jon C. Cederberg; Melissa N. Chan;
Prashanth Chennakesavan, Kenneth R. Chiate; Edward J. DeFranco; Susan R.
Estrich; Michael L. Fazio; Ryan S. Goldstein; John S. Gordon; Diane Hutnyan;
Kevin P.B. Johnson; Rachel H. Kassabian; Scott B. Kidman; Brian E. Mack;
Victoria F. Maroulis; Joseph B. Martin; Joseph Milowic; Melissa Chan OSullivan;
Thomas D. Pease; John M. Pierce; William C. Price; B. Dylan Proctor; John B.
Quinn; Carey R. Ramos; Kevin A. Smith; Christopher E. Stretch; Robert W. Stone;
Kathleen M. Sullivan; Bill Trac; Mark Tung; Charles K. Verhoeven; Curran M.
Walker; Scott L. Watson; Thomas R. Watson; Alan L. Whitehurst; Robert Wilson;
Michael T. Zeller
Colt / Singer / Bea LLP: Benjamin L. Singer
Crone Hawxhurst LLP: Daryl M. Crone
DLA Piper US LLP: Thomas G. Pasternak

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Hopenfeld Singer Rice & Saito: James E. Hopenfeld; Edward H. Rice; Marina N.
Saito
Sheppard Mullin Richter & Hampton LLP : Gary L. Halling; Mona Solouki
Steptoe & Johnson LLP:

John M. Caracappa; Paul A. Gennari; Michael R.

Heimbold; Huan-Yi Lin; Kfir B. Levy; Dylan Ruga

Dated: October 19, 2015

Respectfully submitted,
By: /s/ Kathleen M. Sullivan
Kathleen M. Sullivan
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
Telephone: (212) 849-7000
Facsimile: (212) 849-7100
kathleensullivan@quinnemanuel.com
Attorney for Defendants-Appellants

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TABLE OF CONTENTS
Page
CERTIFICATE OF INTEREST .................................................................................i
TABLE OF AUTHORITIES ..................................................................................... v
STATEMENT OF COUNSEL PURSUANT TO FED. CIR. R. 35(B)(2) ............... 1
PRELIMINARY STATEMENT ............................................................................... 1
FACTUAL STATEMENT ........................................................................................ 2
ARGUMENT ............................................................................................................. 5
I.

II.

THE PANELS SUMMARY ORDER CONFLICTS WITH

DECISIONS OF THE SUPREME COURT AND OTHER CIRCUITS ........ 5
A.

The Panels Decision On The Collateral Estoppel Effect Of A

Final PTAB Decision Conflicts With The Supreme Courts
Decision In B&B Hardware And Other Authorities ............................. 5

B.

The Panels Decision Allowing Entry of Partial Final Judgment

Despite Noncompliance With Rule 54(b) Conflicts With The
Supreme Courts Decision In Unitherm And Deepens A Circuit
Split...................................................................................................... 10

THE
ISSUES
PRESENTED
HAVE
EXCEPTIONAL
IMPORTANCE TO PATENT LITIGATION AS A PRACTICAL
MATTER ....................................................................................................... 14

CONCLUSION ........................................................................................................ 15
ADDENDUM
PROOF OF SERVICE

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TABLE OF AUTHORITIES
Page(s)
Cases
AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc.,
759 F.3d 1285 (Fed. Cir. 2014) ................................................................9, 10, 14
Apple Inc. v. Samsung Electronics Co.,
786 F.3d 983 (Fed. Cir. 2015) .......................................................................... 1, 3
Aspex Eyewear, Inc. v. Concepts in Optics, Inc.,
153 F. Appx 730 (Fed. Cir. 2005) ..................................................................... 12
B&B Hardware, Inc. v. Hargis Indus., Inc.,
135 S. Ct. 1293 (2015) ........................................................................1, 5, 6, 8, 10
Bank of Nova Scotia v. United States,
487 U.S. 250 (1988) ............................................................................................ 11
Barnes v. United States,
678 F.2d 10 (3d Cir. 1982) ................................................................................. 13
Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found.,
402 U.S. 313 (1971) .............................................................................................. 7
Carter v. United States,
333 F.3d 791 (7th Cir. 2003) .............................................................................. 13
Clark v. United States,
656 F.3d 1317 (Fed. Cir. 2011) .......................................................................... 10
Dana Corp. v. NOK, Inc.,
882 F.2d 505 (Fed. Cir. 1989) .............................................................................. 7
Dempsey v. United States,
32 F.3d 1490 (11th Cir. 1994) ............................................................................ 13
Deposit Bank v. Bd. of Councilmen of City of Frankfort,
191 U.S. 499 (1903) .............................................................................................. 7
DietGoal Innovations LLC v. Chipotle Mexican Grill, Inc.,
70 F. Supp. 3d 808 (E.D. Tex. 2014) .................................................................... 7
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Engel Indus., Inc. v. Lockformer Co.,

166 F.3d 1379 (Fed. Cir. 1999) .......................................................................... 10
ePlus, Inc. v. Lawson Software, Inc.,
789 F.3d 1349 (Fed. Cir. 2015) .......................................................................... 14
ePlus, Inc. v. Lawson Software, Inc.,
790 F.3d 1307 (Fed. Cir. 2015) ............................................................................ 6
Fadhl v. City & Cnty. of San Francisco,
804 F.2d 1097 (9th Cir. 1986) ............................................................................ 13
Fresenius USA, Inc. v. Baxter Intl, Inc.,
721 F.3d 1330 (Fed. Cir. 2013) ................................................................9, 10, 14
Jalapeno Property Management, LLC v. Dukas,
265 F.3d 506 (6th Cir. 2001) .............................................................................. 12
In re Katz Interactive Call Processing Patent Litig.,
2013 WL 3223382 (C.D. Cal. June 12, 2013) ...................................................... 8
King Instrument Corp. v. Otari Corp.,
814 F.2d 1560 (Fed. Cir. 1987) ....................................................................12, 13
Mendenhall v. BarberGreene Co.,
26 F.3d 1573 (Fed. Cir. 1994) .......................................................................... 6, 7
Pharmacia & Upjohn Co. v. Mylan Pharms., Inc.,
170 F.3d 1373 (Fed. Cir. 1999) ............................................................................ 7
Ruyle v. Contl Oil Co.,
44 F.3d 837 (10th Cir. 1994) ................................................................................ 8
SEC v. Frohling,
__ F. Appx __, 2015 WL 3556267 (2d Cir. June 9, 2015) ............................... 15
SSIH Equip. S.A. v. U.S. Intl Trade Commn,
718 F.2d 365 (Fed. Cir. 1983) .............................................................................. 7
Sears, Roebuck & Co. v. Mackey,
351 U.S. 427 (1956) ............................................................................................ 11

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Tan v. Integrated Silicon Solutions, Inc.,

2008 WL 2340217 (N.D. Cal. June 5, 2008) ........................................................ 8
Taylor v. U.S. PTO,
385 F. Appx 980 (Fed. Cir. 2010) ..................................................................... 13
Thompson-Hayward Chem. Co. v. Rohm & Haas Co.,
745 F.2d 27 (Fed. Cir. 1984) ................................................................................ 7
Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc.,
546 U.S. 394 (2006) ......................................................................1, 10, 11, 12, 13
Statutes & Rules
28 U.S.C. 2106 ............................................................................3, 4, 10, 11, 12, 13
35 U.S.C. 141 ..................................................................................................7, 8, 9
35 U.S.C. 146 .......................................................................................................... 9
35 U.S.C. 307 .......................................................................................................... 9
Fed. R. App. P. 28(j)

............................................................................................. 4

Fed. R. Civ. P. 54(b) ................................................... 1, 2, 3, 4, 5, 10, 11, 12, 13, 15

Fed. R. Civ. P. 50(b) ................................................................................................ 11
Miscellaneous Authorities
Grantland G. Drutchas & James L. Lovsin, Preclusive Effect of PTAB
Decisions Gets A Fresh Look, Law360 (June 19, 2015) ...................................... 9
Restatement (2d) of Judgments 13 cmt. f (1982) ................................................... 9
Restatement (2d) of Judgments 83(1) (1982) ........................................................ 8
Restatement (2d) of Judgments 83 cmt. a (1982) .................................................. 8

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STATEMENT OF COUNSEL PURSUANT TO FED. CIR. R. 35(b)(2)

Based on my professional judgment, I believe the panel decision is contrary
to the following decisions of the Supreme Court: B&B Hardware, Inc. v. Hargis
Indus., Inc., 135 S. Ct. 1293 (2015); Unitherm Food Systems, Inc. v. Swift-Eckrich,
Inc., 546 U.S. 394 (2006).
Based on my professional judgment, I believe this appeal requires an answer
to these precedent-setting questions of exceptional importance: (a) Whether
traditional principles of collateral estoppel apply to final decisions of the U.S.
Patent and Trademark Office invalidating patents on ex parte reexamination, such
that those decisions have preclusive effect in pending federal court cases; and (b)
Whether, on remand following an appeal, a district court may enter partial final
judgment only if it complies with Fed. R. Civ. P. 54(b), an issue that divides the
courts of appeals.
/s/ Kathleen M. Sullivan
PRELIMINARY STATEMENT
This is an appeal by Defendants-Appellants Samsung Electronics Co., Ltd.,
Samsung Electronics America, Inc., and Samsung Telecommunications America,
LLC (collectively, Samsung) of a $548 million partial final judgment entered by
the U.S. District Court for the Northern District of California (Koh, J.) in favor of
Plaintiff-Appellee Apple Inc. (Apple) following a partial reversal and remand by
this Court in Apple Inc. v. Samsung Electronics Co., 786 F.3d 983 (Fed. Cir. 2015).
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Without the benefit of normal briefing or oral argument, a panel of this Court
(Prost, C.J., joined by OMalley & Chen, JJ.) summarily affirmed that judgment.
It did so even though much remains unresolved in this case. The $399 million of
that judgment awarded for design-patent infringement is the subject of a
forthcoming petition for a writ of certiorari. The $114 million of that judgment
awarded for infringement of Apples 915 patent is subject to collateral estoppel
now that the U.S. Patent and Trademark Office has invalidated that patent in a final
decision. And every one of Apples patents-in-suit is subject to an upcoming
retrial on damages in light of this Courts reversal of Apples trade-dress judgment,
making entry of partial final judgment indisputably improper under Fed. R. Civ. P.
54(b).
While a judicial interest in bringing this case to an end is certainly
understandable, that interest cannot override the need to conform decisions with
Supreme Court precedent, the Federal Rules of Civil Procedure, and established
principles of collateral estoppel.

Rehearing en banc is warranted to ensure

adherence to this authority and to avoid the inequity of forcing Samsung to pay
damages on a finally invalidated patent.
FACTUAL STATEMENT
Following two jury trials, in March 2014 the district court entered a $929
million judgment against Samsung for infringement of Apples D677, D087 and

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D305 design patents and Apples 381, 915 and 163 utility patents, and for
dilution of Apples iPhone-related trade dresses. Dkt. 3017. Samsung appealed,
and in May 2015, this Court reversed the judgment of trade-dress dilution, holding
Apples asserted trade dresses are functional, and otherwise affirmed. Apple, 786
F.3d 983. This Court remanded for immediate entry of final judgment on all
damages awards not predicated on Apples trade dress claims and for any further
proceedings necessitated by our decision to vacate the jurys verdicts on the
unregistered and registered trade dress claims. Id. at 1005.
On remand, Apple submitted a proposed partial final judgment for more than
$548 million, reflecting patent-infringement damages for the Samsung products
not found to dilute Apples trade dresses. Samsung objected that the proposed
judgment was barred by Fed. R. Civ. P. 54(b)the only provision in the Federal
Rules authorizing entry of a partial final judgmentbecause each of Apples
infringement claims remains subject to a damages retrial (scheduled for March
2016) as to some accused products, and a claim can be the subject of a partial final
judgment only if it has been completely and finally resolved. Dkt. 3269. Without
disputing this, Apple responded that this Courts authority to fashion appropriate
relief on appeal, granted by 28 U.S.C. 2106, vitiated the need to comply with
Rule 54(b) on remand. Dkt. 3276 at 6-8. The district court agreed and entered a
partial final judgment awarding Apple $548,176,477 on September 18, 2015 (Dkt.

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3290), stating that it was doing so under this Courts prior mandate and Section
2106 and not under Rule 54(b). Add. 92-93.1
This partial final judgment includes at least $114 million in damages for ten
products found to infringe Apples 915 patent. See Dkt. 2822 at 1-2; Dkt. 2947 at
3-9. Parallel ex parte reexamination proceedings regarding the validity of that
patent have been occurring for several years. On December 9, 2014, after the
original final judgment was entered in this case and after oral argument in the prior
appeal, the PTAB affirmed the examiners rejection of all claims of the 915
patent. Dkt. 3267-19.2 Apple petitioned the PTAB for rehearing (Dkt. 3267-20),
which the PTAB denied on September 24, 2015 (Samsung Add. 1-8).

The

invalidation of Apples 915 patent is now subject to further review only by this
Court on appeal.
On remand, Samsung moved the district court for judgment based on the
PTAB invalidity decision under principles of collateral estoppel, or for a stay. Dkt.
3267. The district court denied that motion on September 18, 2015, ruling that
Add. __ refers to the addendum Apple submitted with its motion for
summary affirmance. See Fed. Cir. Dkt. 17. Samsung Add. __ refers to the
addendum Samsung submitted with its opposition to Apples motion. See Fed. Cir.
Dkt. 27. Dkt. __ refers to the district court docket in this case, N.D. Cal. Case
No. 11-cv-01846. Fed. Cir. Dkt. __ refers to the docket in this appeal.
1

Samsung notified the panel of that decision in a Rule 28(j) letter, and
Apple responded with a letter of its own stating that it intended to seek rehearing
from the PTAB. See Fed. Cir. Case No. 14-1335, Dkts. 152, 153. This Court did
not invite briefing on the subject or address the ruling in its decision.
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collateral estoppel does not apply to a final PTAB decision invalidating a patent.
Add. 80-83, Add. 90-96.
Samsung noticed its appeal of the partial final judgment on September 21,
2015. Dkt. 3292. On September 30, 2015, Apple moved for summary affirmance.
Fed. Cir. Dkt. No. 17. Samsung opposed, arguing that the district courts entry of a
partial final judgment that deviates from the requirements of Rule 54(b), and that
awards Apple more than $100 million on a patent that has been finally invalidated
by the PTAB, presents substantial issues of law warranting full briefing. Fed. Cir.
Dkt. No. 27. On October 13, 2015, the panel summarily affirmed the partial final
judgment without opinion. See Pet. Addendum.
ARGUMENT
I.

THE PANELS SUMMARY ORDER CONFLICTS WITH

DECISIONS OF THE SUPREME COURT AND OTHER CIRCUITS
A.

The Panels Decision On The Collateral Estoppel Effect Of A

Final PTAB Decision Conflicts With The Supreme Courts
Decision In B&B Hardware And Other Authorities

En banc review is appropriate first because, in conflict with B&B Hardware,

the panels summary order denies collateral estoppel effect to the PTABs final
decision invalidating Apples 915 patent. In B&B Hardware, the Supreme Court
held that a final decision by an administrative agency ordinarily merits collateral
estoppel effect to the same extent as a final decision of a federal district court. 135
S. Ct. at 1303, 1310. There, the Eighth Circuit had refused to apply collateral

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estoppel to a final decision of the Trademark Trial and Appeal Board (TTAB)
the trademark analogue of the PTABfor reasons that would make it difficult for
the doctrine ever to apply in trademark disputes. Id. at 1299. Rejecting that
narrow understanding of issue preclusion, id., the Supreme Court explained:
Both this Courts cases and the Restatement make clear that issue
preclusion is not limited to those situations in which the same issue is
before two courts. Rather, where a single issue is before a court and
an administrative agency, preclusion also often applies. Indeed, this
Court has explained that because the principle of issue preclusion was
so well established at common law, in those situations in which
Congress has authorized agencies to resolve disputes, courts may
take it as given that Congress has legislated with the expectation that
the principle [of issue preclusion] will apply except when a statutory
purpose to the contrary is evident. This reflects the Courts
longstanding view that [w]hen an administrative agency is acting in
a judicial capacity and resolves disputed issues of fact properly before
it which the parties have had an adequate opportunity to litigate, the
courts have not hesitated to apply res judicata to enforce repose.
Id. at 1303 (citations omitted). The Supreme Court thus adopted the rule that, [s]o
long as the other ordinary elements of issue preclusion are met, when the usages
adjudicated by the TTAB are materially the same as those before the district court,
issue preclusion should apply. Id. at 1310.
The panels summary order offers no reason why the same should not be
true here with respect to the PTABs final invalidity decision on the 915 patent
even though the order creates the manifestly unjust circumstance, ePlus, Inc. v.
Lawson Software, Inc., 790 F.3d 1307, 1309 (Fed. Cir. 2015) (Dyk, J., concurring
in denial of rehearing en banc) (quoting Mendenhall v. BarberGreene Co., 26
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F.3d 1573, 1583 (Fed. Cir. 1994)), in which Samsung must pay damages on an
invalid patent.
The fact that Apple may still appeal the PTAB ruling to this Court (but
cannot otherwise contest it, see 35 U.S.C. 141) offers no ground for distinction,
for that is equally true of a federal district courts judgment of invaliditywhich
indisputably would have immediate collateral estoppel effect despite the potential
for an appeal to this Court. Once a court enters a final judgment invalidating
claims of a patent in one case, defendants in other cases involving the same
patentee and patent may invoke that decision as preclusive3even if a judgment of
infringement has already been entered,4 and even if there is a pending (or possible)
appeal seeking to reverse the invalidity judgment. 5 Thus, the pendency of an
appeal has no effect on the finality or binding effect of a trial courts holding.
Pharmacia & Upjohn, 170 F.3d at 1381 (emphasis added) (citing Deposit Bank v.
Bd. of Councilmen of City of Frankfort, 191 U.S. 499 (1903)).

Mendenhall, 26 F.3d at 1577-79, 1584; see also BlonderTongue Labs.,

Inc. v. Univ. of Ill. Found., 402 U.S. 313, 349-50 (1971); Pharmacia & Upjohn Co.
v. Mylan Pharms., Inc., 170 F.3d 1373, 1379-82 (Fed. Cir. 1999); ThompsonHayward Chem. Co. v. Rohm & Haas Co., 745 F.2d 27, 34 (Fed. Cir. 1984).
4

See Mendenhall, 26 F.3d at 1576-78; Dana Corp. v. NOK, Inc., 882 F.2d
505, 507 (Fed. Cir. 1989).
5

See, e.g., Pharmacia & Upjohn, 170 F.3d at 1379; SSIH Equip. S.A. v.
U.S. Intl Trade Commn, 718 F.2d 365, 370 (Fed. Cir. 1983); DietGoal
Innovations LLC v. Chipotle Mexican Grill, Inc., 70 F. Supp. 3d 808, 812-14 (E.D.
Tex. 2014) (Bryson, J.).
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The panels summary order conflicts not only with B&B Hardware by
failing to apply collateral estoppel despite these settled authorities, but also with
the Restatement (Second) of Judgments, which makes clear that [a]n
administrative adjudication becomes preclusive when it has become final in
accordance with the rules stated in 13 and 14which set forth the ordinary
rules of finality for court decisionsand that [i]t is not necessary that the
administrative adjudication have been reviewed and affirmed by a court.
Restatement (2d) of Judgments 83 cmt. a (1982); see also id. 83(1) (a valid
and final adjudicative determination by an administrative tribunal has the same
effects under the rules of res judicata, subject to the same exceptions and
qualifications, as a judgment of a court). Following these principles, several
district courts have ruled that PTAB decisions are final for purposes of collateral
estoppel despite the pendency of an appeal. E.g., In re Katz Interactive Call
Processing Patent Litig., 2013 WL 3223382, *1-2 (C.D. Cal. June 12, 2013); Tan
v. Integrated Silicon Solutions, Inc., 2008 WL 2340217, *3-4 (N.D. Cal. June 5,
2008). And other courts of appeals apply collateral estoppel similarly. See, e.g.,
Ruyle v. Contl Oil Co., 44 F.3d 837, 845-46 (10th Cir. 1994) (holding agency
decision preclusive despite pending appeal).
While this Court has left open whether a PTAB decision that is on appeal
[to this Court] under 141 can have collateral estoppel effect on issues raised in a

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co-pending litigation prior to resolution of that appeal, AbbVie Deutschland

GmbH & Co. v. Janssen Biotech, Inc., 759 F.3d 1285, 1296-97 (Fed. Cir. 2014),
Samsung respectfully submits that that question should be resolved now by
granting en banc review in this case. In AbbVie, this Court declined to apply
collateral estoppel to a PTAB patent interference decision that was subject to a
district courts de novo review under 35 U.S.C. 146, explaining that a Board
decision that is reviewed under 146 is not a binding final judgment because a
district court can make a de novo determination of facts upon the submission of
new evidence. 759 F.3d at 1296-97. That holding rested on the established rule
that estoppel does not apply if an appeal would involve a full trial de novo. See
Restatement (2d) of Judgments 13 cmt. f. But this Court made clear that its
holding did not apply where, as here, the only available appeal is to this Court
under Section 141, which is more akin to a traditional appeal from a district court
decision. 759 F.3d at 1296.
Apple has argued that, because a patent is cancelled under 35 U.S.C. 307
only following an unsuccessful appeal of a PTAB invalidity ruling to this Court,
collateral estoppel cannot apply prior to such an appeal. But collateral estoppel is
governed by finality, not cancellation, and the PTABs invalidation of Apples
915 patent is indisputably final. Compare Abbvie, 759 F.3d at 1296-97 (collateral
estoppel), with Fresenius USA, Inc. v. Baxter Intl, Inc., 721 F.3d 1330, 1339-40

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(Fed. Cir. 2013) (cancellation). As Fresenius explains, a patent is cancelled once

this Court affirms a PTAB invalidity ruling, and that cancellation extinguishes the
underlying basis for suits based on the patent. 721 F.3d at 1344. But after
Fresenius was decided, AbbVie left open the applicability of collateral estoppel
prior to cancellation, recognizing the distinctness of the two concepts.
Until the panels summary order, this Court had never held that PTAB
invalidity decisions are not entitled to collateral estoppel effect. This blanket
rejection of collateral estoppel conflicts with B&B Hardware and the Restatement
(Second) of Judgments, among other authorities, creates a manifestly unjust result,
and warrants rehearing en banc.6
B.

The Panels Decision Allowing Entry of Partial Final Judgment

Despite Noncompliance With Rule 54(b) Conflicts With The
Supreme Courts Decision In Unitherm And Deepens A Circuit
Split

In Unitherm, the Supreme Court explained that the broad grant of authority
to the courts of appeals in 2106 must be exercised consistent with the
requirements of the Federal Rules of Civil Procedure . 546 U.S. at 402 n.4
6

This Court did not address collateral estoppel in its May 18, 2015 opinion
and judgment in this case, and its August 25, 2015 issuance of the mandate plainly
could not have encompassed the preclusive effect of the PTABs denial of
rehearing, which rendered the proceedings in the PTO final only later, on
September 24, 2015. See, e.g., Clark v. United States, 656 F.3d 1317, 1320-21
(Fed. Cir. 2011) (appellate mandate encompasses issues actually decided on
appeal); Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1382 (Fed. Cir.
1999) (mandate rule covers only matters within scope of the judgment appealed
from).
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(emphasis added). The Supreme Court thus held that this Court had erred in
directing entry of judgment based on insufficient evidence without complying with
Rule 50(b). Id. at 407. While Unitherm arose in the context of Rule 50(b), its
reasoning that the Federal Rules limit an appellate courts authority under
Section 2106 has general applicability. That reasoning is also consistent with other
Supreme Court precedent confirming that the Federal Rules are as binding as any
statute duly enacted by Congress, and federal courts have no more discretion to
disregard [a Rules] mandate than they do to disregard constitutional or statutory
provisions. Bank of Nova Scotia v. United States, 487 U.S. 250, 255 (1988)
(addressing Federal Rules of Criminal Procedure).
The panels summary order conflicts with these precedents in authorizing
this Courts mandate to trump the Federal Rules of Civil Procedure, upholding the
district courts entry of a partial final judgment not compliant with Rule 54(b). It
is undisputed that that partial final judgment does not satisfy the requirements of
Rule 54(b) because that Rule requires the resolution of claims and Apples
patent-infringement claims, which were pleaded patent-by-patent, remain non-final
because each of Apples patents is subject to the upcoming damages retrial on the
products that were the subject of this Courts partial reversal. See, e.g., Sears,
Roebuck & Co. v. Mackey, 351 U.S. 427, 436 (1956) (entry of partial final
judgment permitted only if there has been an ultimate disposition of an individual

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claim entered in the course of a multiple claims action) (emphasis added); Aspex
Eyewear, Inc. v. Concepts in Optics, Inc., 153 F. Appx 730, 731 (Fed. Cir. 2005)
(Rule 54(b) requires that the district court must have decided all pertinent issues
regarding the claim, and not just liability).
The district court did not suggest that Rule 54(b) permitted entry of its
partial final judgment, but rather concluded (Add. 92-93) that the Rule is overcome
by this Courts authority under 28 U.S.C. 2106 to remand the cause and direct
the entry of such appropriate judgment, decree, or order, or require such further
proceedings to be had as may be just under the circumstances. The district court
relied (Add. 91-95) on this Courts decision in King Instrument Corp. v. Otari
Corp., 814 F.2d 1560 (Fed. Cir. 1987), which stated that Rule 54(b) does not
constrain an appellate courts authority under Section 2106 because it only
concerns the power of the trial court before appeal. Id. at 1563.
But that ruling, summarily affirmed by this Court, not only conflicts with
Unitherm and related Supreme Court precedent, it also deepens a circuit split as to
the interplay between Rule 54(b) and Section 2106.

In Jalapeno Property

Management, LLC v. Dukas, 265 F.3d 506 (6th Cir. 2001), the Sixth Circuit
explicitly rejected King in ruling that Rule 54(b) must be complied with during all
stages of litigation in the district court, not just the period before a first appeal.
Id. at 513.

The purposes of Rule 54(b), the Sixth Circuit reasoned, are not

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diminished by the circumstances that a case has already been heard once on
appeal. Id. And neither the language of the Rule nor precedent suggests that the
Rule is any less applicable after the case has been heard in a first appeal. Id.
Apple incorrectly argued in its motion for summary affirmance (Fed. Cir.
Dkt. 17 at 12) that [t]he rule discussed in King has been followed by the Third,
Seventh, Ninth, and Eleventh Circuits. In fact, only the Third Circuit, in Barnes
v. United States, 678 F.2d 10 (3d Cir. 1982), has joined King in stating (before
Unitherm) that a court of appeals discretion under Section 2106 is not subject to
the Federal Rules. Id. at 12-13. None of Apples other authorities addresses Rule
54(b) or Section 2106 at all. See Carter v. United States, 333 F.3d 791, 793 (7th
Cir. 2003); Dempsey v. United States, 32 F.3d 1490, 1498 (11th Cir. 1994)
(Carnes, J., concurring); Fadhl v. City & Cnty. of San Francisco, 804 F.2d 1097,
1099 (9th Cir. 1986) (per curiam).
Rehearing en banc is thus warranted to resolve conflicts with Unitherm,
Jalapeno Property, and other authorities.7

Relying on Taylor v. U.S. PTO, 385 F. Appx 980 (Fed. Cir. 2010), Apple
argued previously (Fed. Cir. Dkt. 17 at 17) that Samsung was required to pursue its
Rule 54(b) arguments on rehearing in its prior appeal. But Samsung could not
have speculated then that the district court would interpret the mandate to require
entry of a judgment prohibited by the Federal Rules. Moreover, the authority on
which Taylor relied confirms that even a facially-erroneous mandate may be
challenged in a subsequent appeal. See 18 James Wm. Moore et al., Moores
Federal Practice 134.23[3] (3d ed. 2015) (If a party feels that the mandate is
incorrect, the party may apply to the appellate court to depart from the mandate by
7

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THE ISSUES PRESENTED HAVE EXCEPTIONAL IMPORTANCE

TO PATENT LITIGATION AS A PRACTICAL MATTER
Rehearing en banc is further warranted because Samsungs appeal presents

two issues of exceptional practical importance to patent law. First, whether a final
invalidity decision of the PTAB subject only to an appeal to this Court is entitled to
preclusive effect is exceptionally important to the orderly litigation of patent cases.
This Court expressly left this issue open last year, see AbbVie, 759 F.3d at 129697, and it has addressed the interplay between parallel agency and federal court
proceedings on several recent occasions, see, e.g., ePlus, Inc. v. Lawson Software,
Inc., 789 F.3d 1349 (Fed. Cir. 2015); Fresenius, 721 F.3d at 1342. The patent bar
has a keen interest in these issues, which have practical consequences for litigants.8
The public likewise has a profound interest, for the specter of being required to pay
for infringement of a patent invalidated by the patent-granting agency casts doubts
on the system as a whole. Rehearing en banc would allow this Court to harmonize
the law on these important issues, and prevent windfall damages based on
invalidated patents.

a petition for rehearing, by a motion for recall of the mandate, or on appeal from
the judgment rendered after completion of the proceedings for which the case was
remanded.) (emphasis added).
8

See, e.g., Grantland G. Drutchas & James L. Lovsin, Preclusive Effect of

PTAB Decisions Gets A Fresh Look, Law360 (June 19, 2015),
http://www.law360.com/articles/664945/preclusive-effect-of-ptab-decisions-getsa-fresh-look.
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Second, whether an appellate court may direct entry of a judgment that does
not comply with the Federal Rules is also an exceptionally important question.
Rule 54(b)s requirements are not advisoryadhering to those requirements avoids
the risk of inconsistent judgments, while dispensing with them creates such risk, as
this case demonstrates. Absent rehearing, Apple stands to collect more than $100
million in damages for infringement of its 915 patent by ten accused products.
But following affirmance of the PTABs invalidity decision, Samsung indisputably
will be entitled to judgment in its favor as to Apples claims of 915 patent
infringement by four other, similarly-situated products subject to the retrial.
Observing the requirement that only a completely resolved claim may be the
subject of a partial final judgment would avoid this untenable risk of inconsistent
judgments as to the same patent within the same case. See, e.g., SEC v. Frohling,
__ F. Appx __, 2015 WL 3556267, *4 (2d Cir. June 9, 2015) (questioning entry of
partial final judgment where single final judgment would avoid what could
otherwise conceivably be inconsistent outcomes).
CONCLUSION
For these reasons, the petition for rehearing en banc should be granted.

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Dated: October 19, 2015

Respectfully submitted,

Victoria F. Maroulis
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
Telephone: (650) 801-5000
Facsimile: (650) 801-5100

By: /s/ Kathleen M. Sullivan

Kathleen M. Sullivan
William B. Adams
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
Telephone: (212) 849-7000
Facsimile: (212) 849-7100
kathleensullivan@quinnemanuel.com
Michael T. Zeller
B. Dylan Proctor
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
865 S. Figueroa St., 10th Floor
Los Angeles, CA 90017
Telephone: (213) 443-3000
Facsimile: (213) 443-3100

Attorneys for Defendants-Appellants

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ADDENDUM

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NOTE: This order is nonprecedential.

United States Court of Appeals

for the Federal Circuit
______________________

APPLE INC., a California corporation,

Plaintiff-Appellee
v.
SAMSUNG ELECTRONICS AMERICA, INC.,
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC,
Defendants-Appellants
INTERNATIONAL BUSINESS MACHINES
CORPORATION, RESEARCH IN MOTION
CORPORATION, RESEARCH IN MOTION, LTD.,
REUTERS AMERICA, LLC,
Defendants
______________________
2015-2088
______________________
Appeal from the United States District Court for the
Northern District of California in No. 5:11-cv-01846-LHK,
Judge Lucy H. Koh.
______________________
ON MOTION
______________________

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v. SAMSUNG ELECTRONICS CO., LTD.

Before PROST, Chief Judge, O'MALLEY and CHEN, Circuit

Judges.
PROST, Chief Judge.
ORDER
Samsung Electronics America Inc. et al. (Samsung)
move to stay enforcement of the district court's judgment,
pending appeal, and for approval of the supersedeas bond.
Apple Inc. opposes. Samsung replies. Apple moves for
summary affirmance of the district court's judgment
entered upon remand from this court. Samsung opposes.
Apple replies.
Summary affirmance is appropriate when the position of one party is so clearly correct as a matter of law
that no substantial question regarding the outcome of the
appeal exists. Joshua v. United States, 17 F.3d 378, 380
(Fed. Cir. 1994). We have reviewed the parties arguments and conclude that summary affirmance is appropriate.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The motion for summary affirmance is granted.
The district courts judgment is AFFIRMED and this
courts clerk of court is directed to enter judgment accordingly.
(2) The motion to stay is granted to the extent that
enforcement of the district courts judgment is stayed
pending issuance of this courts mandate. This courts
temporary stay is therefore lifted. Absent a petition for
rehearing, this courts mandate will issue in seven days.

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v. SAMSUNG ELECTRONICS CO., LTD.

FOR THE COURT

/s/ Daniel E. OToole
Daniel E. OToole
Clerk of Court

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PROOF OF SERVICE
The undersigned hereby certifies that on October 19, 2015, I electronically
filed the foregoing PETITION FOR REHEARING EN BANC with the Clerk of
the Court for the United States Court of Appeals for the Federal Circuit by using
the appellate CM/ECF system.

I certify that all participants in the case are

registered CM/ECF users and that service will be accomplished by the CM/ECF
system.

/s/ Kathleen M. Sullivan__________

Kathleen M. Sullivan