Apple v Samsung: Mooting the Injunction

In my recent update on Supreme Court patent cases I skipped over a new Samsung v. Apple petition since one Samsung v. Apple case has already been granted a writ of certiorari.  Although both cases involve smartphone patents, they are entirely separate procedurally.

  • Already PendingSamsung Electronics Co., Ltd. v. Apple Inc., No 15-777 (design patent damages calculation) (certiorari granted, merits briefing ongoing), appeal from Apple, Inc. v. Samsung Electronics Co., Ltd., 786 F.3d 983 (Fed. Cir. 2015)
  • Newly Filed: Samsung Electronics Co., Ltd.  v. Apple Inc., No 15-1386 (vacating injunction mooted by later opinion) (petition filed), appeal from Apple Inc. v. Samsung Electronics Co., Ltd., 809 F.3d 633 (Fed. Cir. 2015).

The new case itself involves a pair of appeals: In a 2015 decision, the Federal Circuit found that an injunction against Samsung to halt infringement was proper under the eBay standards. The first case did not, however, reach the merits issues involving patent validity and infringement. Then, in February 2016, the court reversed the jury verdict and held that all of the asserted claims were either invalid or not infringed.

The decision on appeal here is that first injunction decision that, up to now, the Federal Circuit has not expressly vacated (even though the underlying basis for the injunction has now been proven not to exist).  Thus, in its petition, Samsung asks simply that the Supreme Court vacate the Federal Circuit’s decision. Question presented:

Should the Court grant the petition, vacate the judgment below, and remand to dismiss the appeal as moot, in accordance with United States v. Munsingwear, Inc., 340 U.S. 36 (1950), where the Federal Circuit’s opinion requiring a permanent injunction is mooted by a later Federal Circuit opinion eliminating all basis for liability by holding two of the three patents at issue invalid and the other one not infringed?

The one big caveat here is that an en banc petition is still pending on the merits side and therefore is not moot. The petition merely glosses over this issue without offering any explanation as to why the Supreme Court shouldn’t just wait for the outcome of the en banc petition. Of course, Samsung understands all of this – and likely would have delayed the filing were it not for the looming deadline for its petition filing. [SamsungInjunctPetition]  To me, it seems that the Federal Circuit panel in the still pending validity/infringing case would permit a motion for stay of relief pendant lite. 

Apple’s En Banc request in the merits case (validity/infringement) is in the midst of briefing.  Apple’s basic argument is that the appellate panel unduly substituted its judgment for that of the jury:

After a thirteen-day trial and three-and-a-half days of deliberation, a jury found that Samsung’s smartphones infringed three Apple patents, confirmed the validity of Apple’s asserted patents, and awarded damages of nearly $120 million. The issues on appeal were primarily factual and subject to deferential substantial evidence review. Yet, in an unprecedented decision, the panel reversed nearly every aspect of the verdict that favored Apple. The panel reached that result by deciding the case on a different record than the jury had before it, and by shifting Samsung’s burden to prove invalidity to require instead that Apple prove validity.

[AppleEnBancPetition]

8 thoughts on “Apple v Samsung: Mooting the Injunction

  1. The ultimate solution is for Congress to do away with the CAFC’s exclusive subject matter jurisdiction.

    1. Because that worked so well before the Federal Circuit was created…

      Oh wait – no, no it did not.

      Maybe not the “ultimate solution” then…

    2. I think it would help, H, because the Feds know they are a power that can be second-guessed only by the Supreme Court, and the Supreme Court is hamstrung by the number of cases it can take in a year.

      If the work is spread out, the Feds can be second-guessed by other courts. That would make them a lot more careful in the first place.

      1. Apply that “logic” to the next level Ned (and yes, you may have to put your tendency to place the Supremes above the Constitution in check)

  2. The list of counsel who have appeared in the case is really something. Imagine how much has been spent in fees and costs in the Apple-Samsung battles. This is the list just for Apple:

    WILMER CUTLER PICKERING HALE AND DORR LLP: Thomas E. Anderson,
    Rebecca Bact, Heath A. Brooks, Dana O. Burwell, Anna Bonny Chauvet, Andrew J. Danford, Ronald R. Demsher (former), Mark C. Fleming, Lauren B. Fletcher, Adele R. Frankel, Sarah R. Frazier, Liv L. Herriot, Peter J. Kolovos, Gregory H. Lantier, Anna Tin-Yee Lee (former), William F. Lee, Andrew L. Liao, Cosmin Maier, Joseph J. Mueller, Richard W. O’Neill, John P. Pettit, Kevin S. Prussia, James L. Quarles, III, Katie M. Saxton, Mark D. Selwyn, Peter J. Shen (former), Michael J. Silhasek, Victor F. Souto, Thomas Sprankling, Timothy D. Syrett, Nina S. Tallon, Timothy A. Tatarka, Olga L. Tobin, S. Calvin Walden, David C. Yang, Kathryn D. Zalewski

    GIBSON, DUNN & CRUTCHER LLP: Jordan H. Bekier, Brian M. Buroker, Frederick S. Chung, Emily L. Fedman (former), Megan K. Fluckiger (former), Joshua R. Furman (former), Holly A. Jones, Stephanie J. Kim, Steven S. Kim (former), Josh A. Krevitt, Jeffrey G. Lau, Jason C. Lo, Quincy Lu, H. Mark Lyon, Shannon E. Mader, Timothy W. Malone (former), Casey J. McCracken, Azar Mouzari, Mark Nolan Reiter, Jennifer J. Rho, Sarah J. Sladic (former), Rodney J. Stone, Daniel J. Thomasch, Paul E. Torchia, Michael A. Valek, Robert Vincent, Samuel K. Whitt (former), Minae Yu

    MORRISON & FOERSTER LLP: James P. Bennett, Ruth N. Borenstein, Brittany N. DePuy (former), Efrain Staino Flores, Richard S.J. Hung, Michael A. Jacobs, Esther Kim, Matthew I. Kreeger, Rachel Krevans, Kenneth A. Kuwayti, Scott F. Llewellyn, Jack W. Londen, Harold J. McElhinny, Erik J. Olson, Mary Prendergast, Christopher L. Robinson, Nathaniel B. Sabri, Nicole M. Smith, Christopher J. Wiener

    COOLEY, GODWARD, KRONISH LLP: Benjamin George Damstedt

    SKIERMONT PUCKETT LLP: Sarah Elizabeth Spires

  3. Seems like the proper approach here is not vacating the precedential opinion, but simply remanding for further proceedings (for the district court to terminate the injunction based on the invalidity holding). This isn’t a case where the case was moot at the time of judgment, it has become mooted since.

  4. Apple seems right on all issues in the en banc petition.

    I would like to specifically emphasize they way some on the Federal Circuit, and the PTAB, handle KSR. The infringer produces two references in the same field of endeavor that allegedly show all elements. The PTAB and the Feds then state that this is sufficient to prove obviousness and both require the patent owner to prove some reason as to why the references should not be combined (in the way claimed.)

    But KSR requires a reason to combine references as a part of the proof. Simply showing the references exist in the same field of endeavor is not enough, especially if the way the patentee combined the references is not disclosed or is contrary to a teaching of the reference or references, as the was the case presented in Apple’s petition.

    Now also consider the standard of proof. Reasonable doubts must be resolved in favor of the patentee. But it seems clear to anyone that the Federal Circuit is resolving all doubts, in favor invalidity.

    1. it seems clear to anyone that the Federal Circuit is resolving all doubts, in favor invalidity.

      That’s what happens when the simians are blasted with a fire hose when they reach for bananas.

      You lose a bit of credibility Ned when you celebrate the ones doing the blasting (the Supremes), and then turn around and “wonder” that the Federal Circuit acts in the way that they are being conditioned to act.

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