Federal Circuit denies en banc request

by Dennis Crouch

In yet another set of Apple v. Samsung decisions, the Federal Circuit has denied en banc rehearing on the permanent injunction decision with the minor tweaks of the original decision shown in the markup below:

Apple did not establish that these features were the exclusive or significant driver of customer demand, which certainly would have weighed more heavily in its favor. Apple did, however, show that “a patented feature is one of several features that cause consumers to make their purchasing decisions.” Apple III, 735 F.3d at 1364. We conclude that this factor weighs in favor of granting Apple’s injunction.[1]

The amendment of the original amendment was agreed to by the original majority panel (Judges Moore and Reyna).[2]  Chief Judge Prost also substantially amended Part-B of her dissent.

In the panel opinion (whose holding still stands), the Federal Circuit rejected Judge Koh’s opinion that Apple had not shown irreparable harm absent injunctive relief.  In particular, the appellate panel deemed that Judge Koh’s nexus standard was too high.  The court wrote:

Thus, in a case involving phones with hundreds of thousands of available features, it was legal error for the district court to effectively require Apple to prove that the infringement was the sole cause of the lost downstream sales. The district court should have determined whether the record established that a smartphone feature impacts customers’ purchasing decisions. Though the fact that the infringing features are not the only cause of the lost sales may well lessen the weight of any alleged irreparable harm, it does not eliminate it entirely.

Panel opinion.

On remand, Judge Koh will now re-determine whether injunctive relief is proper.

We are all a bit confused about all of the Apple v. Samsung decisions flying around.  This particular opinion stems from N.D. California Docket No 12-cv-0630-LHK and involves a judgment of infringement of U.S. Patent Nos. 5,946,647; 8,046,721; and 8,074,172.  The design patent case petitioned to the Supreme Court is different and stems from N.D. California Docket No 11-cv- 01846 –LHK[3]

= = = =

[1] Apple Inc. v. Samsung Electronics Co., App. No. 14-1802 (Fed. Cir. December 16 2015) (order on petition for rehearing en banc); original decision here; see also Crouch, Federal Circuit Pushes Court to Stop Samsung’s Infringing Sales, Patently-O (September 17, 2015).

[2] Apple Inc. v. Samsung Electronics Co., App. No. 14-1802 (Fed. Cir. December 16 2015) (new panel opinion).

[3] Samsung Electronics Co. v. Apple Inc., No 15-___ (on petition for writ of certiorari).


12 thoughts on “Federal Circuit denies en banc request

  1. 4

    This is a very narrow decision. The panel majority correctly held that the “sole cause” nexus was too high and that the district court should have determined impact on consumers’ purchasing decisions. No one buys a patented feature of a product without the product itself.

    1. 4.1

      How ‘far away’ from a strict “but-for” condition will be the “proper point” to settle at?

      Clearly, a “but-for” has been rejected, but how far away from that “too high” standard will the standard end up at? And perhaps just as importantly, WHY at that place?

      And shall we (again) make the important distinction between common law (and the development of law under that judge made law environment) and statutory law?

      1. 4.1.1

        “Clearly, a “but-for” has been rejected, but how far away from that “too high” standard will the standard end up at? And perhaps just as importantly, WHY at that place?”

        That is properly left up to the conscience of the district court judge it appears. Since this is an equitable determination.

    2. 4.2

      “the district court should have determined impact on consumers’ purchasing decisions”

      They determined before making that sub-determination that there was no evidence to support such a finding even if they went and looked to make that determination. If there is no evidence to support such a finding one need not go through the dog and pony show of then explicitly making such a determination as you have no evidence either way.

      1. 4.2.1

        If no such “finding” is to be hand, then just remove the “offending” item, eh?

        Oh wait, you still want the infringer to be able to infringe….?

  2. 3


    The answer to your last question seems to be no. “Samsung repeatedly told the jury that designing around the asserted claims of the three patents at issue would be easy and fast,” at page 18

    But. “It [Samsung] argues that Apple will not suffer any hardship in the absence of an injunction because the patented features are minor components in a complex device. Samsung argues that it and its carriers, retailers, and customers would suffer substantial hardship if an injunction issued, particularly because the proposed injunction would extend to unadjudicated products with software that is “capable of implementing” the infringing features or other features “not colorably different.” At page 20.

    I understood the injunction to be prospective, so this makes no sense to me, although it might to an Apple-Samsung guru.

    1. 3.2

      Apple is one of the most prolific users of IPRs and reexaminations. Wouldn’t it be interesting if after a jury trial, several trips to the Federal Circuit and perhaps even one to the Supreme Court, that all their efforts could be thrown into the trash if some examiner or three patent attorneys sitting as an Article I court were to hold one or more of the patents involved here invalid?

  3. 1

    Given further time delays for a possible cert attempt, the remand to the D.C., and the D.C. reconsideration, vis a vis the rate at which new model smart phones launch, how likely is it that Samsung can remove the infringing features from its products before it receives an injunction?” Are there any patented features in this suit that are not easily designed out with substitutes?

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