A federal judge has taken a big bite out of Apple’s $1.05 billion victory in a patent infringement case with Samsung, cutting the award by about 45 percent and ordering a new trial on damages for some Samsung products after finding the jury erred. 

U.S. District Judge Lucy Koh in San Jose, California, today reduced the jury’s damages award by $450.5 million. The jury based its award for 14 Samsung products on an incorrect legal theory, Koh ruled, saying the companies should consider appealing her ruling before any trial begins.

A witness for Apple whose testimony the jury relied on “presented a theory that the court had ruled legally impermissible,” Koh said in her ruling. The judge said that despite her explicit instruction that the theory couldn’t be used, “the amount of the award made plain that the jury had applied the impermissible theory anyway.”
Koh, who had previously rejected Apple’s bid to ban U.S. sales on 26 of the Galaxy maker’s devices, also denied the iPhone maker’s request to enhance the jury’s award, saying the amount Samsung owed was heavily disputed and the jury wasn’t bound to accept either side’s damages estimate. The jury’s award for 14 other products stands at $598.9 million, she said.

The jury appears to have erred by awarding damages on Samsung profit for products that infringed only utility patents, which isn’t legally permitted, Koh said. In addition, portions of the damages awarded for patent infringement were excessive because they may have included compensation for infringement before Samsung was on notice that Apple owned the intellectual property, Koh said.

“This is an extremely careful and thorough opinion on a very difficult and interrelated set of issues,” Stanford Law School professor Mark A. Lemley told Bloomberg News in an e-mail. “Samsung will get some reduction in the award, but almost certainly less than $450 million — we’ll need a new trial to figure that out.”

The two companies have shown “no sign of giving an inch, and I’m not sure that will change now,” Lemley added. “My guess is that you’ll see appeals that will clarify some things, but that just means the trial will be delayed for a while.”

Apple declined to comment on the ruling. Still, the ruling was the second significant setback in Koh’s courtroom since the headline grabbing verdict was announced.

In December, Koh refused to order a sales ban on the products the jury found infringed Apple’s patents. She said Apple failed to prove the purloined technology is what drove consumers to buy a Samsung product instead of an Apple iPhone or iPad. Samsung says that it is continues to sell only three of the two dozen products found to have infringed Apple’s patents.

After a three-week trial closely followed in Silicon Valley, the jury decided that Samsung ripped off the trailblazing technology and sleek designs used by Apple to create its revolutionary iPhone and iPad. Jurors ordered Samsung to pay Apple $1.05 billion.

Apple filed another lawsuit last year accusing Samsung’s newer line of products of continuing to use technology controlled by Apple. Koh has scheduled trial in that case for early next year. She has implored both companies on several occasions to settle their difference with little success.

Apple filed its patent infringement lawsuit in April 2011 and engaged legions of the country’s highest-paid patent lawyers to demand $2.5 billion from its top smartphone competitor. Samsung Electronics Co. fired back with its own lawsuit seeking $399 million.

The jury found that several Samsung products illegally used such Apple creations as the “bounce-back” feature when a user scrolls to an end image, and the ability to zoom text with a tap of a finger.

Samsung has mounted an aggressive post-trial attack on the verdict, raising a number of legal issues that allege the South Korean company was treated unfairly in a federal courtroom a dozen miles from Apple’s Cupertino headquarters. Samsung alleges that some of Apple’s patents shouldn’t have been awarded in the first place and that the jury made mistakes in calculating the damage award.

Samsung has emerged as one of Apple’s biggest rivals and has overtaken it as the leading smartphone maker. Samsung’s Galaxy line of phones run on Android, a mobile operating system that Google Inc. has given out for free to Samsung and other phone makers.

Apple and Samsung have filed similar lawsuits in eight other countries, including South Korea, Germany, Japan, Italy, the Netherlands, Britain, France and Australia.

The 14 products requiring a new damages trial are: the Galaxy Prevail, Gem, Indulge, Infuse 4G, Galaxy SII AT&T, Captivate, Continuum, Droid Charge, Epic 4G, Exhibit 4G, Galaxy Tab, Nexus S 4G, Replenish and Transform, according to the ruling.

(Bloomberg News and The AP contributed to this report)