Federal Circuit Holds that Apple May Have the Right to a Preliminary Injunction Against Samsung's Tablet Computers
By Jacob L. Rogers – Edited by Charlie Stiernberg
Apple, Inc. v. Samsung Elecs. Co., No. 2012-1105 (Fed. Cir. May 14, 2012)
The Federal Circuit affirmed in part, reversed in part, and remanded a decision by the Northern District of California, which had denied Apple a preliminary injunction against Samsung’s smartphones and tablet computers.
The Federal Circuit held that the district court did not abuse its discretion in denying a preliminary injunction on three of the four patents in suit—two design patents related to the iPhone and one utility patent related to the “bounce back” feature when scrolling through documents on both iPhone and iPad. However, with respect to the fourth patent (the "D'889 patent") related to the design of the iPad, the court held that the district court erred by using a 1994 prototype design as a primary reference to find that Apple was unlikely to succeed on the merits. The district court had already found that there would be irreparable harm to Apple without an injunction, so the court remanded for a determination on the balance of the equities and the public interest in order to make a final determination as to whether a preliminary injunction should issue against Samsung’s tablet computers.
Rebecca Tushnet’s 43(B)log provides an overview of the case. Sarah Burstein expressed surprise at the decision in a guest post on Patently-O. Burstein expressed concern at the court’s unqualified acceptance of Apple’s theory of brand dilution from design patent infringement, which is normally reserved for Trademark. Ars Technica provides an overview of the stakes for each company, including graphs depicting worldwide share in the mobile and smartphone markets. Ars Technica also reports that following this decision Apple and Samsung attempted to return to the negotiation table per the judge’s orders, but were again unable to reach an agreement.
In affirming the district court's denials of preliminary injunctions, the court focused heavily on the issue of irreparable harm. For example, the court looked closely at whether Apple had delayed in filing suit after learning about Samsung’s various smartphones. It also agreed with the district court that Apple had failed to provide enough evidence to demonstrate that the design contributed significantly to consumer demand for a particular smartphone. In holding as it did, the court reasoned that losing “some insubstantial market share” was not enough to justify a preliminary injunction and that Apple needed “a clear showing” of irreparable harm. Id. at 18. However, the court also noted that customer surveys or similar consumer opinion evidence are not a prerequisite for a finding of irreparable harm in every design patent case. Id. at 18 n.3.
Dissenting in part, Judge O’Malley argued that, with the regard to the D'899 patent, the majority should have granted the preliminary injunction immediately. The dissent argued that although the district court had not made a finding for all preliminary injunction factors regarding the D'899 patent specifically, it analyzed those factors with regard to the other three patents and that analysis was readily applicable to the D'899 patent. Because the majority determined that irreparable harm and likelihood of success on the merits were clearly established for the D'899 patent, the dissent argued that it was detrimental to the purpose of preliminary injunctions to subject Apple to further delays via a remand.
This case is another step in the ongoing worldwide litigation and counter-litigation between Apple and Samsung. Apple has already achieved a partial victory in the ITC, which led to import bans on the HTC One X and the Evo 4G LTE, according to Ars Technica. In addition, this case is notable for potentially expanding the use of design patents in technology litigation. It makes it more difficult to find a primary reference to render such patents obvious and makes it simpler to obtain a preliminary injunction by demonstrating irreparable harm through brand dilution. If the Federal Circuit produces similar rulings, design patents may become a more important method for protecting new products in the future.