In the ongoing smartphone/tablet patent litigation between Apple and Samsung, the Federal Circuit has agreed with Samsung on almost every dispositive issue related to Apple’s request for preliminary injunctive relief, but “almost” may not be enough to save Samsung from a preliminary injunction concerning at least one product. Apple, Inc. v. Samsung Electronics Co. Ltd., No. 2012-1105 (Fed. Cir. May 14, 2012). With respect to three of Apple’s four patents-in-suit, the Federal Circuit affirmed the District Court’s denial of a preliminary injunction. With respect to Apple’s fourth patent, the Federal Circuit vacated the District Court’s denial of preliminary injunctive relief because the District Court erroneously concluded that the patent claims were obvious over prior art, and that Apple was therefore unlikely to succeed on the merits. The Federal Circuit remanded the case for a consideration of factors that the District Court had previously not reached governing preliminary injunctive relief and the fourth patent.
Apple accused several Samsung smartphones, and Samsung’s Galaxy Tab 10.1 tablet, of infringing various of the four patents-in-suit. Apple then moved for a preliminary injunction, which the District Court denied with respect to each accused device and asserted patent, blocking the importation of Samsung’s devices into the United States. Apple’s patents, and the District Court’s analysis with respect to each, are as follows :
- D593,087 is directed to a smart phone design including “a bezel surrounding the perimeter of the phone’s front face and extending from the front of the phone partway down the phone’s side.” The District Court denied a preliminary injunction concerning the D’087 patent based on a finding that prior art rendered Apple unlikely to succeed on the merits of its infringement claim.
- D618,677 is directed to a smart phone design including “a black, highly polished, reflective surface over the entire front face of the phone.” Even after finding the patents likely valid and infringed, the District Court denied a preliminary injunction concerning the D’677 patent because Apple had not shown it was likely to suffer irreparable harm either by way of brand dilution or loss of market share.
- D504,889 is “directed to the design of a tablet computer,” i.e., the iPad. The District Court thought that “substantial questions about the validity of the D’889 patent” meant that Apple would be “unable to show that it would likely succeed on the merits,” justifying a denial of a preliminary injunction with respect to the D’889 patent.
- U.S. 7,469,381 is directed to the “bounce-back” scroll feature of Apple’s iPhone’s and iPads. The ’381 patent was found likely valid and infringed, but the District Court declined to enter a preliminary injunction because Apple “failed to establish a relationship between any alleged loss of market share, customers, or goodwill, and the infringement of the ’381 patent.”
The Federal Circuit began its analysis by stating the burden to be met by a plaintiff seeking a preliminary injunction: he “must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.” Further, granting injunctive relief lay within the discretion of the trial court, and the trial court’s decision would not be disturbed absent an abuse of discretion. The Federal Circuit explained that it would focus on areas where questions were close, or where the District Court had committed error. The Court then analyzed the District Court’s decision with respect to each of the four patents in turn.
Regarding the D’677 patent, the Court agreed “that the district court was correct to require a showing of some causal nexus between Samsung’s infringement and the alleged harm to Apple as part of the showing of irreparable harm.” The Court distinguished i4i Limited Partnership v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010), aff’d, 131 S. Ct. 2238 (2011), because in that case the product at issue, an add-on to Microsoft Word, required an injunction to be protected from obsolescence, a dramatic effect not threatened on Apple’s smart phones here. Further, it was not enough for Apple to show that it might lose some insubstantial market share, especially given the applicable deferential abuse of discretion standard of review. And even if brand dilution could arise from design patent infringement, Apple had not shown that brand dilution was likely to occur. Finally, although the District Court had perhaps not properly measured the time of Apple’s delay, the Federal Circuit was unwilling to disregard the District Court’s conclusion that Apple’s delay in seeking relief weighed against a preliminary injunction.
Concerning the D’087 patent, the District Court misconstrued the scope of its claims, and therefore the finding that there were substantial questions concerning the validity of that patent could not stand. However, the irreparable harm analysis for the D’087 patent was the same as for the D’677 patent, and therefore the Court upheld the District Court’s denial of a preliminary injunction.
Turning next to the ’381 patent, the Federal Circuit agreed with the District Court’s denial of a preliminary “injunction on the ground that Apple failed to show that it would likely be irreparably harmed by the infringement because it failed to demonstrate that consumer purchasing decisions were based on the presence of the bounce-back feature.” The fact that Samsung’s employees thought that the bounce-back feature was crucial to competing with Apple was important, but not dispositive, in showing irreparable harm. Rather, “the relevant inquiry focuses on the objective reasons as to why the patentee lost sales, not on the infringer’s subjective beliefs as to why it gained them (or would be likely to gain them).” Showing deference to the District Court, the Federal Circuit agreed that Apple had not shown this causal nexus between infringement and lost sales.
Finally, addressing the D’889 patent, directed to tablet (i.e., iPad) design, the Federal Circuit agreed with the District Court’s conclusion that Apple was likely to suffer irreparable harm, but held that the District Court erred in finding that there was a substantial question of validity concerning the patent. You might want to look at the photos of the prior art reproduced in the Court’s opinion because they are helpful to understanding its analysis; in essence, the Federal Circuit thought that the primary reference cited against the D’889 patent could not be used because it gave a different visual impression than the design claimed. Further, the secondary reference “could not bridge the gap.”
Having found a substantial question of validity concerning the D’889 patent, the District Court “did not make any findings with regard to the remaining two questions bearing on whether to issue a preliminary injunction—the balance of hardships and the public interest.” Therefore, the Federal Circuit remanded for the District Court to consider whether a preliminary injunction should issue based on the D’889 patent.
Judge O’Malley dissented in part, finding a remand unnecessary. In his view, “the only remand appropriate in this case is for entry of a preliminary injunction with respect to the D’889 Patent . . . .” According to Judge O’Malley, the Court’s decision was “unwarranted because: (1) remand will cause unnecessary delay, which is inconsistent with the very purpose of preliminary injunctive relief; and (2) once we reject its validity analysis, the district court’s decision, taken in its entirety, reveals that all of the prerequisites for preliminary injunctive relief are satisfied.”