The Apple Patent Fight Between Apple and Samsung:

Interviews with Korean and Korean-American Attorneys

Apple and Samsung have been embroiled in litigation over their respective intellectual
property for almost ten years, seeking nine figure dollars in damages and injunctions.
Environmental pressures from the world of technology contributed to the outcomes and problems
in these smartphone patent cases. Smartphones’ designs and components allow for frequent
litigation over infringement, and these products are constantly evolving.1 Apple claimed
infringement of the “look and feel” of the iPhone and iPad in Samsung’s Galaxy S line, and
Samsung responded with a countersuit for infringement of wireless networking technology
patents.2 The main subject of this fight was over their patents protecting components of their
smartphones, including design patents. In 2011, Apple first sued Samsung in the Northern
District of California and Samsung countersued. The brunt of the arguments centered around
Apple’s patents. A jury deciding for Apple in 2012 and awarding $1.049 billion in damages, and
Samsung appealed.
In 2012, the U.S. Patent and Trademark Office tentatively invalidated a few of Apple's
patents 7,469,381 (Patent ’381), 7,844,915 (Patent ’915), 7,864,163 (Patent ’163). By the end of
the 2016, the Supreme Court had taken the case and reversed with a standard to define “article of
manufacture.” With subsequent trials, and new lawsuits filed, a trial again began in 2014, where
the jury found in favor of Apple, awarding Apple almost $120 million dollars for patent
violations. However, the jury also found Apple also infringed Samsung’s patents, awarding
$158,400. Samsung appealed to the Federal Circuit, where a panel decided with Samsung and set
aside the jury verdict, deciding there was no infringement because the patents on “slide to
unlock” features were invalid based on prior art.
An en banc hearing reversed the three judge panel decision and restored the $120 million
award in 2016. Although Samsung appealed this decision to the Supreme Court, the court did not
heat the appeal. Overall, the trials between Apple and Samsung have resulted in Apple being
awarded and settlements over $500 million dollars.

The Technology
Apple’s Patents
Utility Patent ’381 protects the iPhone’s scroll-back and bounce design when scrolling a
document, which works like spring-back behavior when a user reaches the edge of a document.
The claims cover when an electronic document reaches the end while translating the electronic
document in one direction by touch input, displays an area beyond the edge of the electronic

1 Ronald A. Cass. Lessons from Smartphone Wars: Patent Litigants, Patent Quality, and Software. 16
Minn. J.L. Sci & Tech. 1
2 Jaemin Lee. A Clash between IT Giants and the Changing Face of International Law: The Samsung vs.

Apple Litigation and Its Jurisdictional Implications. 5 JEAIL 117. Spring 2012.
document, and then translating the electronic document in a second direction when the touch
input is released. However, an ex parte examination was requested in May, 2012, with the U.S.
Patent and Trademark Office (USPTO)’s first office action finding two cases of prior art against
the patent.

Utility Patent ’915 covers the aspect known as the “pinch-to-zoom,” which covers the
ability to distinguish between the scrolling movement of one finger and two-finger gestures like
pinch-to-zoom on a touch-screen to activate certain functions. The claim at issue in Patent ’915
relates to “determining whether the event object invokes a scroll or gesture operation by
distinguishing between a single input point applied to the touch-sensitive display that is
interpreted as the scroll operation and two or more input points applied to the touch-sensitive
display that are interpreted as the gesture operation.” (cite: Patent ‘915, Claim 1). The USPTO
has rejected claims of patent ’915 as they were anticipated by previous patents or unpatentable.

Lastly, Utility Patent ’163 has been referred to as the “touch-to-zoom” patent because it
covers zoom display techniques using gesture input implementation onto an electronic device.
This patent claims the display of an electronic document with multiple boxes of content open,
with the ability to navigate through the boxes through touch.

Apple’s design patents cover the following, shown on the diagram below:

(adapted from Figure 1, D618,677)

D618,677 - Electronic Devices (note: pictures might be better here - one phone with the
patents labelled?)
The ornamental design of an electronic device, as shown and described. - the screen
D593,087 - Electronic Devices
The ornamental design of an electronic device, substantially as shown and described. - the outer
part

D604,305 - Graphical user interface for a display screen or portion thereof

The ornamental design for a graphical user interface for a display screen or portion thereof, as
shown and described. - the screen itself

(adapted from Figure 1, D604,305)

D504,889 - Electronic Devices

We claim the ornamental design for an electronic device, substantially as shown and described. -
looks like the very exterior (the case)?
 (adapted from Figure 1, D504,889)

Design patents under 35 U.S.C. §289 allow for actions involving a low risk and high
reward, but this depends on a balance between the limits and the advantages of the design patent.
Design patents do not have the same protections as a utility patent, both in scope or in length of
time. However, design patents are much less expensive to file then the utility patents and take
less time before issuance.3

Samsung’s Patents
Some of Samsung’s patents were standard essential patents, patent used in a standard.
These standards are important in the world of technology, where there many patents, each
covering a different piece of, for example here, a phone, which then leads to a difficult patent-
licensing problem.4

Utility Patent 7,675,941 (Patent ‘941) is a 3GPP is a standard essential patent, covering
communication technology required to comply with the Universal Mobile Telecommunications
System (UMTS) standard). Utility Patent 7,447,516 (Patent ’516), another standard essential
patent, covers radio channels to transmit data using a set amount of power, one not supporting a
Hybrid Automatic Retransmission Request (HARQ) and a second that does support the HARQ.

Utility Patent 7,698,711 (Patent ’711) covers MP3 playback technology on a mobile
device. This patent covers MP3 playback technology on a mobile device. This patent claims that
playing music in an MP3 mode in response to a user input with respect to an interface, switching

3Timothy Coughlin. Apple, Inc. v. Samsung Electronics Co.: Economics of Design Patent Trolling. 3
Cardozo Arts & Ent. LJ 209.
4Jeffrey I.D. Lewis. WHAT IS “FRAND” ALL ABOUT? THE LICENSING OF PATENTS ESSENTIAL TO

AN ACCEPTED STANDARD
.
the MP3 mode to a standby mode while playing the music, performing at least one function
while playing the music in the standby mode, and displaying an indication that the music is being
played.

Utility Patent 7,577,460 (Patent ‘460) covers a method of transmitting emails with a
message or an image to be captured in a camera mode. This patent claims that transmitting a first
message in a first email transmission mode, and transmitting a second message and an image
selected among images stored in a memory in a second email transmission mode.

Utility Patent 7,456,893 (Patent ‘893) covers switching between photo and image display
modes. When the user switches back to display mode the most recent image viewed before the
mode switch is shown. This patent claims that displaying a single image file in a reproduction
mode, switching from the reproduction mode to a photographing mode, storing a newly
photographed image, switching from the photographing mode to the reproduction mode, and
displaying the single image file again.

Two Interviews
We interviewed two attorneys. One is a Korean-American patent attorney, who grew up
in Korea, had experience practicing law in Korea, and is currently practicing law in America. We
had the opportunity to hear his thoughts on a battle between a large technology company here in
the United States and a large technology company in Korea. The next is a Korean attorney
interviewed via telephone. He was born and raised in Korea and he is working as a patent
attorney in Samsung Electronics. He joined the company after the litigation started, so he was
not directly handling with this case.

Interview with an American patent attorney

The Patent Infringement Case

For the first interview, we wanted to focus on his thoughts of why he thought this case
came about. When we asked why he thought this patent lawsuit went forward with such rigor,
since as mentioned above, the number of infringement opportunities does not equal the number
of cases filed. Our interviewee went through the options a company has to protect their products
against a newcomer or a competitor in its field, so that the company can protect its market share.
To protect the market share, they need to continuously develop the technology. This is even
more relevant in a field that is constantly evolving, and competitors’ products are similar to the
company’s products.
Apple and Samsung have a “literal omnipresence” as two digital giants, spanning across
borders, viewing the globe as one market.5 However, this case is interesting, even more so that

5 Jaemin Lee. 124.

Apple and Samsung are very different companies, although they both produce smartphones. He
explained that while Apple could be considered an “innovation” company, as its focus was with
the design and the user interface, and Samsung could be considered a “manufacture” company.
The two companies have different business models. In addition, Apple was reluctant to license
its technology, as the company “has a reputation for protecting its patents for its own use and
excluding all others.”6
Apple was also based in the United States, already familiar with the legal environment,
where they already had in-house patent attorneys. Samsung’s patent department formed as a
response to these infringement suits. Knowing the legal ins-and-outs of a U.S. based legal
system, Apple could file a lawsuit more easily than a foreign company without the same
knowledge could respond. Apple also was accustomed to the legal expenses a company would
need to expend in the United States. On the other hand, Samsung had a tougher time, with a
Korean to English and back to Korean translation.

The U.S. versus the Korean Legal System

Having worked in both countries, we were intrigued by his thoughts on the Korean legal
system versus the American legal system. He explained that the system and the legal
environment in the United States is different than the general system and legal environment in
South Korea.
We also inquired about the jury presence in America. Attorney sometimes like a jury trial
and sometime not. Every case is different. Sometimes, it is difficult to make juries to understand
the technological background. However, the attorney should have a belief that the jury would
like to help him or her on the case. Therefore, in patent litigation, it is really important to draft
claims and specification clearly. In apple’s patent, you can easily find what the claims mean. On
the other hand, it’s quite difficult to catch the meaning of the claims of Samsung’s patent
regardless of technical level or depth of the patent. It should be readable by a lay person. The
claim should be described the technology in a correct and concise way. The interviewee showed
us the ease with which a person could read a claim on an Apple patent and the technological
difficulty in the claims in a Samsung patent.
Although the litigation spanned over nine countries, the most controversial decision was
the jury decision awarding Apple $1.05 billion in damages.7 The jury had to consider of about
700 discrete points on a set of 84 separate injury instructions spanning over 109 pages. The same
day, a South Korean court also handed down a decision. However the US patent and court
system is different from the system put in place in South Korea. In the United States, patent
infringement is resolved by the jury, and the same court hears the validity case. South Korea has
a bifurcated litigation system, where one system deals with the patent infringement and another

6 Melissa Black. Innovation and Consumers as Casualties of War in Global Technology Patent Battles. 22
Transnat’l L. & Contemp. Probs. 181. Spring, 2013
7 Samuel B. Bordick. Lay Jurors: The True Casualties of the Apple v. Samsung Smartphone Patent

Wars?. 29 Temp. Int’l & Comp. L.J. 239. Fall, 2015.

system has the jurisdiction over the invalidation case. In South Korea, invalidation cases are
heard by the Patent Court, and infringement cases are heard by a district court.

The Outcome
Although Samsung lost in these cases with high damages, the attorney thought Samsung
won too. It won market recognition, coming out of an age when they were really only known
globally for their large panel televisions. In response to this suit, Samsung having implemented
its own in-house intellectual property team and with extensive experience now in the United
States legal system, will now be more prepared for the realities of the United States legal system.

Interview with a Korean patent attorney

The Patent Infringement Case

Apple's strengths and Samsung's strengths are different. When Apple released the iPhone,
the its design and GUI (graphical user interface) were very innovative. It's so intuitive that users
can easily manipulate their smartphones. In other words, Apple has strengths in software.
Samsung, on the other hand, is a manufacturer and has strength in hardware. Samsung may have
realized that there is a software vulnerability. What Apple was worried about was that GUI and
exterior design is relatively easy to follow compared to hardware technology. Therefore, it has
made considerable effort to protect their software. In the UK and Germany, when Samsung
launched the products which Apple argued that it is similar with the products of Apple, Apple
started to file a lawsuit. However, the court ruling did not get much results, and rather it had to
state in the advertisement that the Samsung product did not copy the Apple product. Therefore, I
think that I was focused on lawsuits in the home ground, which is one of the biggest market in
the world and is familiar in terms of legal environment.

Damages should be based on the whole product? versus based on a percentage, dependent
on the infringing portion of the product?
Under the article 289 of the US Patent law, the amount of damages can be calculated
based on the infringer's total profit. However, some of the design patents in technology-intensive
electronic devices, such as smartphones, where about 250,000 patents have been applied to one
product, the infringer has to pay the total in calculating the amount of damages on the basis of
profit, the amount of compensation for damages could be overcompensated. I personally think
that it could hinder industrial development through innovation which the US patent law has been
aimed at.

Does the scientific knowledge of Jury affect the result of a trial?

The Jury Instruction and Verdict Form that were given to the jury after the final argument
are very complex and difficult to understand even for the experts. It takes more than two hours to
read a 100-page verdict, and the 22-page verdict contains a total of 700 questions. I think that the
role of juries composed of lay person such as electrician, social worker, housewife, and
unemployed person is too heavy.

The Outcome
Apple calls Samsung a copycat and it has succeeded to make a perception that Apple is
an innovative company, and Samsung is a fast follower. The final settlement is unofficial. I
cannot tell the exact amount of compensation, but I think Samsung also got a lot of benefit from
the litigation. Samsung was able to increase the brand value, and they gained the image of a
competitor to compete with Apple in the Android camp. In addition, the point of view of patents
has also changed. Samsung used to concern about the number of patents, but they started to focus
on improving the quality of patents after litigation. In the course of the lawsuit, the overall
understanding of the practice in the United States has also improved. In fact, after filing a
lawsuit, the company created a patent development group in the Telecommunication division to
handle the patent issues related to the products manufactured by the division.