By Marc Albert Robinson
| May 15, 2012
In December, 2011, Apple appealed Judge Lucy Koh's denial of a preliminary injunction in the pending lawsuit in the U.S. District Court for the Northern District of California with respect to four Apple patents:

D618,677, which is alleged to be infringed by Samsung's Infuse 4G and Galaxy S 4G smartphones;

D593,087, which is alleged to be infringed by Samsung's Infuse 4G and Galaxy S 4G smartphones;

D504,889, which is alleged to be infringed by Samsung's Galaxy Tab 10.1; and

7,469,381, which is alleged to be infringed by all four products (the three mentioned above and the Droid Charge).

The CAFC ruled on the appeal from the denial of a preliminary injunction on May 14, 2012, providing a mixed bag of results for Apple and Samsung.  This ruling follows oral arguments that took place on April 6, 2012.

As recited in the CAFC ruling on p. 15, “[a] plaintiff seeking a preliminary injunction 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,” citing to Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008).  Also, as stated on pp. 15-16 of the CAFC ruling, "[t]he decision to grant or deny a preliminary injunction lies within the sound discretion of the district court, and we will not reverse its judgment absent an abuse of that discretion," citing to Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375 (Fed. Cir. 2009).

In summary, the CAFC acknowledges the heavy burden on Apple to make the case to convince the district court to grant a preliminary injunction, and the even heavier burden with respect to reversing the district court's decision.

The district court relied on varying rationales for denying a preliminary injunction.  However, a general theme in the opinion was Apple's failure to show irreparable harm (irreparable injury).  In particular, the CAFC affirmed (at least in part) the district court's denial of an injunction based on irreparable harm with respect to the D'667, D'087 and '381 patents. 

However, the CAFC rejected the district court's ruling that D'087 is likely anticipated by JP 1241638 (JP '638).  Specifically, the opinion at p. 22 states, "[w]hen the claimed portion of the side view is taken into account, the differences between the arched, convex front of the ’638 reference distinguish it from the perfectly flat front face of the D’087 patent," providing the following comparison image on p. 23:



Concerning D'889, the district court concluded the irreparable harm requirement had been satisfied, but denied injunctive relief because Apple had failed to establish a likelihood of success on the merits.  The CAFC disagreed with the district court, stating on p. 28 of the ruling that the relied on reference "Fidler" provided "a very different impression from the 'unframed' D'889 design." The following image was provided on p. 28 of the ruling.



Regarding the status of a preliminary injunction based on D'889, a determination as to the balance of hardships and the public interest was remanded to the district court.

There are several important items to take away from the CAFC ruling:

First: The CAFC ruling at pp. 16-17 states: "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." In the context of design patents, where only a portion of a product may be claimed, a nexus may be more difficult to show because consumer demand may be less likely driven by that particular claimed portion of the design, than by the overall design of the product.  Nonetheless, Apple was still able to show the required nexus with respect to the alleged infringement of D'889.

Second: With respect to D'889, the district court may rule in favor of Apple and still grant a preliminary injunction with respect to D'889.  However, this may quickly become a moot issue because Samsung is rolling out the Galaxy Tab 2 10.1, which has a different bezel than the Galaxy Tab 10.1, and appears to be poised as a replacement in the marketplace.

Third: Apple's position concerning patent validity and infringement, at least concerning D'087 and D'889, is stronger.

Fourth: Irreparable harm is a requirement for a preliminary injunction - not for calculating damages and not a clear requirement for an exclusion order from the ITC (see Dennis Crouch's post on this issue at PatentlyO).  Therefore, the lack of irreparable harm (or at least a showing thereof) does not indicate Apple has a weak position for obtaining significant damages or an exclusion order.

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