

The foreman in the Apple v. Samsung trial has now done an interview with Bloomberg News, giving him an opportunity to answer some of the criticisms of the verdict. It's a video on YouTube, titled "Apple Jury Foreman: Here's How We Reached a Verdict", and while he answers the criticisms, he describes how the jury, under his instructions, decided that the Samsung prior art didn't invalidate an Apple patent. In doing so, I think he has revealed the biggest mistake of all made by the jury, one so large I don't believe it can be ignored. At a minimum, Apple shouldn't want to win like this. His aha moment, as he calls it, and assuming what he says on the video is accurate, was based on a misunderstanding of what constitutes prior art.



In discussing the first patent on the list, he says they got into a discussion about the prior art that was presented at trial. Here's why they discounted it: The software on the Apple side could not be placed into the processor on the prior art and vice versa. That means they are not interchangeable. That changed everything right there. That isn't disqualifying for prior art. It doesn't have to run on the same processor. It doesn't have to run at all. It can be words on a piece of paper. (If you don't believe little old me, here's a lawyer noticing the video too now.) Here is the jury instruction given on what is prior art, on page 44 of the instructions PDF, which you can find here: FINAL JURY INSTRUCTION NO. 31

UTILITY PATENTSANTICIPATION A utility patent claim is invalid if the claimed invention is not new. For the claim to be invalid because it is not new, all of its requirements must have existed in a single device or method that predates the claimed invention, or must have been described in a single previous publication or patent that predates the claimed invention. In patent law, these previous devices, methods, publications or patents are called prior art references. If a patent claim is not new we say it is anticipated by a prior art reference. The description in the written reference does not have to be in the same words as the claim, but all of the requirements of the claim must be there, either stated or necessarily implied, so that someone of ordinary skill in the field looking at that one reference would be able to make and use the claimed invention. Here is a list of the ways that either party can show that a patent claim was not new:  If the claimed invention was already publicly known or publicly used by others in the United States before the date of conception of the claimed invention;  If the claimed invention was already patented or described in a printed publication anywhere in the world before the date of conception of the claimed invention. A reference is a printed publication if it is accessible to those interested in the field, even if it is difficult to find;  If the claimed invention was already made by someone else in the United States before the date of conception of the claimed invention, if that other person had not abandoned the invention or kept it secret; If the patent holder and the alleged infringer dispute who is a first inventor, the person who first conceived of the claimed invention and first reduced it to practice is the first inventor. If one person conceived of the claimed invention first, but reduced to practice second, that person is the first inventor only if that person (a) began to reduce the claimed invention to practice before the other party conceived of it, and (b) continued to work diligently to reduce it to practice. A claimed invention is reduced to practice when it has been tested sufficiently to show that it will work for its intended purpose or when it is fully described in a patent application filed with the PTO.  If the claimed invention was already described in another issued U.S. patent or published U.S. patent application that was based on a patent application filed before the patent holders application filing date or the date of conception of the claimed invention. Since certain of them are in dispute, you must determine dates of conception for the claimed inventions and prior inventions. Conception is the mental part of an inventive act and is proven when the invention is shown in its complete form by drawings, disclosure to another, or other forms of evidence presented at trial. Did you notice that prior art can be a piece of paper describing the invention? It doesn't have to run on *any* processor. It's the claims that have to match, not what it runs on. For example, when Red Hat was accused of patent infringement by IP Innovation, they rolled in a 1985 Amiga computer that a Groklaw reader still have running to demonstrate prior art, and they won. Otherwise, by his logic, Samsung couldn't infringe any of Apple's patents, in that Android and Linux don't run directly on iOS. The foreman, in answering criticisms, says that the jury paid close attention to the jury instructions. But looking at this one, did they? I'm sure they meant to, and I'm also sure they did their best according to what they understood. But this was an error, and it's one I don't think the judge can ignore, if anyone brings it to her attention. Incidentally, just in case he said prior art and he meant obviousness, the jury instruction on that is No. 33. Let's look at some details. The foreman says that the jury started out in a stalemate, because some on the jury were not clear how prior art can invalidate a patent. At that point, he thought it was going Samsung's way. So he went home and had his aha moment. He felt he could defend it if it was his patent. So he explained it all to the jury. And that turned the tide. But if he told them that interchangeability was a requirement for prior art, he goofed big time. A volunteer did a partial transcript of the relevant section, so you can see his quote about the patent in context: Emily Chang: Were you ever confused? Were other people ever confused? Vel Hogan: I wasn't confused but there was a, a few of the jurors that were confused so what we did in the jury room before we did anything after we did the election of who was going to lead the jury I told them let's just lay out on the table any concerns or open questions you may have that's left over and let's just get that out of the way first. Emily Chang: Now when you first got into the jury room initially, this was Wednesday right? Vel Hogan: Yes. Emily Chang: Was? There are reports that you were initially divided but did you, did you have a feeling this was going to sway overwhelmingly in Apples favour? Vel Hogan: No. No. In fact if you'd have asked me at that moment in time, I thought it was gonna ultimately maybe lean the other way. Emily Chang: Why? Vel Hogan: Why? We were at a stalemate but some of the jurors weren't sure of the patent prosecution process. Some weren't sure of how, ah, prior art could either render a patent accept... ah, acceptable or whether it could invalidate it and so what we did is we started talking about one and the day was over. When I was at home thinking about that patent, ah, claim by claim, limit by limit I had what we would call an aha moment. Emily Chang: Um hmmm. Vel Hogan: And I suddenly decided that I could defend this if it was my patent. Emily Chang: Really? Vel Hogan: Really. And with that, I took that story back to the jury, laid it out for 'em, they understood the points that I was talking about and then we meticulous, meticulously went patent by patent claim by claim against the test that the judge had given us because each area, each patent had a different ah legal premise to judge on. We got that all sorted out and decided which ones were valid, which ones weren't valid. Emily Chang: So the initial stalemate that you found yourself in, what was that about? Vel Hogan: It was about a particular, ah, patent, ah, the '460 patent, and whether or not the prior art really did invalidate that pattern, that patent and so with that moment I had, I realized that the software on the Apple side could not be placed into the processor on the prior art and vice versa. Emily Chang: Um hmm. Vel Hogan: And that means that they're not interchangeable and that just cha..., that changed everything right there. Emily Chang: You know it's all obviously extremely technical. there has been a lot of talk since this verdict has come down. How did you guys make this verdict so quickly. There were more than a hundred pages of jury instructions. There are even reports that you didn't read all of those instructions. Vel Hogan: Oh. We read. First off, before closing arguments was given, the judge read to us the final instructions, instruction by instruction. Then she allowed the closing arguments, then she dismissed us. And so we had those closing argue..., those ah, instructions and we had them open there and then we took patent by patent and got hung upon the first one but the day was almost over by then and so I said to the jury, "We're not going to allow ourselves to get hung up. We're going to, if we find a debate like this, we'll move on. We'll do the simplest things first. So then when I came back the next day... This was regarding what the foreman in the video calls the '460 patent, but there was no such Apple patent in the case listed on the verdict form that I could find. That's why I can't be sure what he said on the video was accurately portraying the event. But the other jurors surely could speak to clarify. I would certainly like to hear from the youngest juror, who apparently held out against the tide until the foreman's "explanation" seemed to settle the matter. Here's the Amended Jury Verdict [PDF] form, so you can see for yourself. You'll find the list on page 9. That mistake in speaking makes it impossible to understand what he is referring to, so as to check it with certainty. He also says it was the first one on the list, though, and that would be the '381 patent [PDF], "List Scrolling and Document Translation, Scaling and Rotation on a Touch-Screen Display", or the bounce-back patent. (You can confirm that this is the patent they were arguing about by what another juror said earlier about the dispute. CNET's Greg Sandoval interviewed juror Manuel Ilagan, and he said the argument was over Apple's bounceback and pinch to zoom.) The prior art Samsung listed in its trial brief for bounceback included: the Tablecloth program installed on the DiamondTouch system developed by Mitsubishi Electric Research Laboratory ("MERL"), the LaunchTile and XNav programs developed by Dr. Benjamin Bederson, and International Publication Number WO 03/081458. I don't know about the rest, but the Tablecloth system was demonstrated at trial by Adam Bogue. Another witness, Benjamin Bederson, presented as prior art his Launch Tile invention, a system of icon tiles in an interfact allowing users to zoom in and out. It had a snapback feature too. Please read the patent now, if you are free to do so, and you'll see that there is no limitation in the claims to just Apple software or Apple devices. It's claiming funcionality on "portable multifunction devices". Anybody's. That's the only reason it *could* be infringed by Samsung, despite any differences as to what each runs on. Of course, in a way it doesn't matter which patent they were discussing, because prior art is prior art. What has to match are the claims, not what it runs on. If, for example, Microsoft had invented the bounceback feature for its tablets and phones, it would be prior art for Apple, even though you can't run Apple software directly on Microsoft's operating system. This statement by the foreman is, to me, the biggest goof of them all. And since his story is that this is what he used to persuade the rest, who were otherwise favoring Samsung, it means the entire verdict is now seriously in doubt. My favorite comment on Hacker News about this video, from ktizo: I think he may have a valid point. Perhaps apple have invented some new numbers, like eleventy-four, that don't fit into the old computers properly due to magic and stuff. He's kidding around, of course, with a touch of despair. Software is algorithms, and algorithms are mathematics. That's why they should never be allowed to be patented in the first place, which would have avoided all this Apple v. Samsung trial about bounceback anyway. And by the way, how does the foreman know what processor is being used and what can and can't run? Was that *evidence* at trial, or his personal "expertise" in play? If the latter, are jurors supposed to decide matters based on their own personal evidence offered to the jury without cross examination? And would he qualify as an expert at trial? Is he supposed to play that role in the jury deliberations? See the problem? By the way, for any who might not know, hacker from the beginning usage of the word means something good to programmers. Crackers are the bad guys. The non-technical world gets that mixed up all the time, but programmers know the difference. And it is irresistable to point out that Andrew Orlowski may wish now to edit his paen of praise in The Register to the foreman's "clarity of thinking" and common sense approach and how great patents are for us all and how the verdict is "GOOD for YOU, your KIDS and TECH". He writes that "When ordinary citizens gather to assess an intellectual property decision, they don't let us down." Except sometimes they do. They just did. That's one reason why the new patent rules soon to go into effect give you a choice, a jury trial or a decision by a panel of experts, as Patents Post Grant explains: After September 16th, defendants will have a choice to continue on to roll the dice at the district court with a jury trial of laypeople, or avail themselves of the new USPTO patentability trials of the AIA. The new trial proceedings of the AIA will be completed within 12-18 months of initiation and will be conducted before the USPTOs Patent Trial & Appeal Board (PTAB). Unlike jurors, the decision makers of the PTAB are not laypeople. Rather, PTAB judges are experienced in the application of U.S. patent law and must additionally have an engineering and/or science background. In addition to the established expertise in technology and patent law, unlike the courts, PTAB judges do not accord patents a presumption of validity, nor do they require clear and convincing evidence to invalidate a patent. Indeed, patent claims are accorded a broadest reasonable interpretation at the USPTO, which makes them that much easier to invalidate. Update: Mr. Hogan continues to respond to criticism. And he never makes it better. The BBC has a full transcript of an interview they have done with him. He tries to clarify, but in doing so, it does not fix the legal problems we have identified, although he seems to think it does. He states, for example, that when he said the jury wanted to send a message by their damages figure, he didn't mean a message to Samsung alone. They meant to send a message to the entire industry not to infringe. Again, damages are only to be based on making the victim whole for any actual losses, not to send a message to anyone. This is proof, once again, that this jury didn't follow instructions. If there is a message to be sent, that's up to the judge. The judge can order triple damages if there is a message to be sent. It's outside the jury's authority to do that. And it means that their damages figures is inevitably and demonstrably not the correct figure. The jury took it upon itself to play the judge's role, and that isn't following the jury instructions. It's amazing that after all these days, he apparently has not reread the jury instructions. Or if he has, he still doesn't understand them. As for his aha moment, he adds that he looked at source code and showed it to the rest, to show them that the Samsung prior art was unable to run Apple code. That is NOT the way you decide whether prior art invalidates a patent. He claims that the instructions given were that the prior art and the patent must be "interchangeable". There is no such word in the jury instructions. I don't know why he keeps talking, but I'm sure Samsung hopes he keeps it up. Here, then, are two snippets from a much longer interview, on those two points: BBC: A lot has been made about the original interview you gave to Reuters in which you said you wanted to make the award sufficiently high to be painful to Samsung, but not unreasonable. There has been concern raised by some people that that may have been prejudicial and the awards should have been based on the facts alone. I wonder if you would like to clarify that. Hogan: Yes I would. Bloomberg asked me that question and others that have interviewed me asked that question and I have tried to make it clear that it wasn't an attempt from a punitive standpoint. And it wasn't necessarily focused at Samsung - that is where it had been taken out of context. What was actually meant by that statement when I made it was that what I wanted... the jurors wanted to send a message to the industry at large that no matter who you are - whether you are Apple, whether you are Samsung, or anybody - if you wilfully take the risk to cross the line and start infringing and you get caught, and again I emphasise wilfully, you need to be prepared to pay the cost for that.... BBC: There were two issues, looking at Apple's case: Whether Samsung had infringed their patents and whether the patents were valid. Why weren't you convinced by Samsung's arguments that some of the patents that Apple had put forward shouldn't be allowed to stand? There has been a lot made in the media and elsewhere that Apple wasn't the first with some of the ideas that they had patented. Hogan: To try to make it as easy as possible - I have addressed this in other interviews that I have had - what it amounts to is there has been a big fuss since the deliberation that prior art was not considered. Prior art was considered. When we had to determine the validity of Apple's patent against the charges of Samsung's with the prior art examples, what we had to do - to make it clear - is that not only did we have to validate, if you will, the Apple patent, but in looking at the prior art we had stipulations in the law that tested both sides and if the test wasn't passed then it was clear either the patent was valid or it wasn't. Prior art didn't mean that the prior art wasn't valid. It was valid. But the stipulation under the law is for the prior art to be sufficient to negate or invalidate the Apple patents in this case, it had to be sufficiently similar or, more importantly, it had to be interchangeable. And in example after example, when we put it to the test, the older prior art was just that. Not that there's anything [wrong] with older prior art - but the key was that the hardware was different, the software was an entirely different methodology, and the more modern software could not be loaded onto the older example and be run without error. And vice versa of that was also true. So the point being, at the 40,000 foot-level, even though the outcome of the two seemed similar, the internal methodology of how you got there was entirely different. One could not be exchanged for the other. And that is the thing that most people at large do not understand about the legal system. And as a result of that you have heard a lot of hype in the media about did we turn our back on prior art? No. Did it mean prior art could not have been used to compete against anything any other company had done? No, I'm not saying that. I'm saying both could have existed independently of each other and been used. The thing you have to remember is that the prior art that belonged to Samsung, or belonged to somebody else that they had the ability of using, they had not used for quite some time. And the methodology that they had implemented was just right up against the line of infringement and went beyond it in most cases. And not all cases. Not everything that Apple accused of Samsung was correct and we made those stipulations as we filled out the form, and well, you know how it played out. My point is that there were substantially difference between the prior art and the new method, but the key was you could not replace one for the other. BBC: There had been a lot of speculation that although Apple might get damages, Samsung might get damages as well. Why did Samsung's case fail? Hogan: Whenever we considered the prior art and we looked at those patents, and specifically the claims that were involved, and the claim limitations that were involved, we had the instruction from the judge who had given us the stipulation of the precedent in the law that for the prior art in this case to negate or invalidate the patent on Apple's side - that was being involved in the allegation from Samsung that the patent was invalid because of the prior art - we had to establish that number one, the two methods were substantially similar; that the outcome was the same, in other words the functionality was the same, that would be at the 40,000-foot level. But what was key to us, and it was a very important piece, is that the stipulation in the law, they had to be interchangeable. And so consequently, when we looked at the source code - I was able to read source code - I showed the jurors that the two methods in software were not the same, nor could they be interchangeable because the hardware that was involved between the old processor and the new processor - you couldn't load the new software methodology in the old system and expect that it was going to work, and the converse of that was true. And we're talking about Samsung's patent claim about combining a mobile phone with email [and a camera]? Hogan: Exactly, in fact that is the one issue that we left on Wednesday night, the first day of deliberation, that had hung us up. And I, being the foreman, said because we had ran over and the US marshals had already told us that we could not work past six o'clock, and we were approaching six o'clock. And we had hung up on this for over an hour and 45 minutes. I told them let's leave it, let's come back fresh in the morning and then let's deal with this. And it was that evening that when I was sitting at home relaxing - and I have the type of mind when I'm relaxing doing one thing, my mind is running 90 miles an hour typically thinking about my distraction. In this case, I was thinking about that specific patent and I was thinking of each and every claim and each and every claim limitation. And I know there are people out there that question what I have said and why it was important. But the task that I put it to, for myself, while I was going through this thought process is: let's pretend that this patent is mine. And what I mean by the term "can I defend this patent", there's a process you go through in this country that you go through before a patent issued. When the patent office determines that they are going to reject your patent based on a claim you are making against prior art - and in my case I had several of those - you have to be able to lay the groundwork and defend your claim that in light of the prior art it would not have been obvious to the individual who drafted that prior art that the new methodology could have been accomplished. So that's the comparison and that's what I meant by defending the patent. And I'm going through this thought process of the patent that was involved and the prior art example that was involved, and making that comparison. And when I got through with that comparison and that test, I asked myself the question: could I defend this patent, not in the court, could I defend this patent through that process just like I had to do my own if this were mine? And that's the "aha" moment that you hear talked about out there. The answer to that question for me was yes. And so it just hit me that evening that that process I needed to explain to my fellow jurors because I was the only one that had ever gone through that process among them. And there's a lot of misconception - even in the engineering community today among individuals who have never had to go through that process - of what that process consists of. BBC: Do you think if you hadn't been on the jury then we might have ended up with a very different verdict? Hogan: I think so. But let's not say me specifically. ... And that, ladies and gentlemen, truly says it all.