By Dennis Crouch
Apple Inc. v. Samsung Electronics Co., Appeal No. 2013-1129 (Nov. 18, 2013)
In a unanimous opinion, the Federal Circuit has vacated Judge Koh’s decision denying Apple injunctive relief to stop Samsung’s ongoing infringement of Apple’s utility patents. These utility patents cover software features such as the “bounce-back” feature for scrolling; a multi-touch display for distinguishing between single-finger actions and multi-fingered actions such as “pinch-to-zoom”; and a “double-tap-to-zoom” patent. See U.S. Patent Nos. 7,469,381, 7,844,915, and 7,864,163. The appellate panel affirmed the finding of no irreparable harm (and thus no injunctive relief) for Samsung’s adjudged infringement of the related design patents and trade dress.
Injunctive relief requires a showing of irreparable harm due to ongoing infringement. In a prior Apple case (Apple II), the Federal Circuit explained that this showing can be broken-down into a two part requirement of “(1) that absent an injunction, it will suffer irreparable harm, and (2) that a sufficiently strong causal nexus relates the alleged harm to the alleged infringement.” Apple II. Following the jury determination of infringement, District Judge Koh held hearings on injunctive relief and found that Apple failed to prove a causal nexus. On appeal, the Federal Circuit partially rejected Judge Koh’s analysis – finding basically that Judge Koh had set-up the causal nexus test as too-difficult of a hurdle. In particular, the appellate panel determined that (1) ongoing infringement can be seen as the cause of irreparable harm even of not the sole-reason for the harm; (2) in considering irreparable harm a court should consider all of the infringed patents and patent claims rather than looking at each patent or claim one-at-a-time. See also, Apple I.
On remand, the district court will reconsider Apple should now be awarded injunctive relief. The Federal Circuit has been somewhat demanding on Judge Koh. Originally, Judge Koh had granted injunctive relief, but that award was rejected because Koh did not consider the new causal nexus requirement. Now, the her opinion denying injunctive relief has been rejected for placing too much emphasis on the causal nexus requirement.
In general, this case should be seen as relaxing the test of injunctive relief and will have its greatest impact in markets such as the smartphone market where devices include a large number of features and where market players have a large variety of patents covering those features.
- Apple III (This Case): Apple Inc. v. Samsung Elecs. Co., __ F.3d__ (Fed. Cir. 2013)(Prost, J.);
- Judge Koh’s Decision reversed here: Apple Inc. v. Samsung Elecs. Co., 909 F. Supp. 2d 1147 (N.D. Cal. 2012);
- Apple II: Apple Inc. v. Samsung Electronics Co., 695 F.3d 370 (Fed. Cir. 2012); and
- Apple I: Apple Inc. v. Samsung Electronics Co., 678 F.3d 1314 (Fed. Cir. 2012).