The dissent by circuit Judge O'Malley urged the majority to immediately enter a preliminary injunction for design patent D504,889.  The majority remanded the decision to the district court to complete the analysis of the balance of the hardship factors and the public interest factors, which were only performed for the smartphone patents by the district court.  The dissent argues that these factors favor Apple with respect to the tablet patent D504,889, and that this analysis should not be remanded to the district court, as the delay would further prejudice Apple.  In particular, Judge O'Malley stated on p. 2 of the dissent that:

the majority’s decision to remand this matter for further proceedings relating to the D’889 Patent is unwarranted because: (1) remand will cause unnecessary delay, which is inconsistent with the very purpose of preliminary injunctive relief; and (2) once we reject its validity analysis, the district court’s decision, taken in its entirety, reveals that all of the prerequisites for preliminary injunctive relief are satisfied. Remand is particularly inappropriate where, as here, both this court and the district court agree that Apple will suffer irreparable harm absent injunctive relief. The majority’s decision to remand for further proceedings will only exacerbate that harm.

Judge O'Malley emphasizes that injunctive relief is a "drastic remedy" and "exists for a reason to provide speedy relief from irreparable injury." Although Judge O'Malley acknowledges that the district court did not make any findings with regard to the balance of hardships and the public interest with respect to the tablet patent D504,889, Judge O'Malley argues that the record from the district court is complete and sufficient for determining that an injunction should be entered.  Of note, Judge O'Malley at pp. 11-12 of the dissent states:

As this court has recognized, “[a]lthough the public interest inquiry is not necessarily or always bound to the likelihood of success o[n] the merits, . . . absent any other relevant concerns . . . the public is best served by enforcing patents that are likely valid and infringed.” Abbott Labs. v. Andrx Pharm., Inc., 452 F.3d 1331, 1348 (Fed. Cir. 2006). So too here, because the record at this stage shows that the D’889 Patent is likely valid and infringed, and there are no other relevant concerns, the public interest is best served by granting a preliminary injunction.

Concerning the balance of hardships requirement, Judge O'Malley states at p. 10 of the dissent that the balance of hardships weighs in Apple's favor because it has an interest in enforcing its patent rights.  As we previously noted in our prior post, 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.  Below is an image from Samsung's product page for the Galaxy Tab 2 10.1.

The design of the Samsung Galaxy Tab 2 10.1 is not identical to the Samsung Galaxy Tab 10.1N (see our prior post concerning the "Design Around" in Germany last year).  Since the Samsung Galaxy Tab 2 10.1 appears to be poised as a replacement in the marketplace, the court may view the balance of hardships as weighing further in Apple's favor because Samsung has already "designed around" the tablet patent D504,889 (presuming the Samsung Galaxy Tab 2 10.1 does not infringe the tablet patent D504,889).

Edward Tracy contributed to this post.

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.

Dyson, Inc. filed suit against Cornucopia Products in the District of Arizona to enforce design and utility patents directed to a bladeless fan.  The design patents at issue, D602,143 and D605,748, both claim the ornamental design for a fan, as shown to the right.  The D142 patent claim includes a cylindrical base, whereas the D748 claim is not limited by a base.

The utility patents at issue, 8,052,379 and 8,092,166, claim fan assemblies.

An image of Dyson's 12 inch fan is shown below alongside an image of the alleged infringing product.

Dyson's complaint alleges that 

The copying of Dyson’s fan is so pervasive that many parts of Cornucopia’s fan are interchangeable with the corresponding parts of Dyson’s fan.  For example, Cornucopia’s cylindrical air nozzle fits perfectly and locks into Dyson’s base.  And Dyson’s cylindrical air nozzle fits perfectly and locks into Cornucopia’s base.

Dyson's complaint further alleges that "Cornucopia’s copying of Dyson’s fan even extends to the number and position of screws for various parts, . . . the precise shapes of intricate internal components, which were designed by Dyson engineers," and "the figures of Dyson’s operating manual and assembly guide."

Oakley, Inc. filed suit against Great L&H Trading, Inc. in the Central District of California alleging infringement of eyewear design and utility patents.  On the same day, Great L&H Trading filed a corresponding declaratory judgment action in the Southern District of New York.  This new case follows other Oakley eyewear design infringement suits that we previously reported on 02/10/12, 02/16/12, and 03/12/12.  Links to the patents at issue in this case are listed below.

D420,036        D622,755        D581,443

D581,444        D397,350        D399,866

D554,689        D404,754       

5,387,949       5,638,145 

Vinum Corp. and Oenaphilla, Inc. settled a lawsuit involving a combined bottle "aerator, filter, pourer, re-corker and stopper, all designed into one unit," as shown to the left.  Vinum's complaint alleged that Oenaphilla's Tappo Pour product infringed Vinum's D437,782 patent claiming a design for a bottle stopper. 

Sheng Yang Metal Co. and Wal-Mart Stores settled a lawsuit involving tool handle designs, shown below.  Shen Yang Metal's complaint alleged that Wal-Mart infringed two of its patents, D483644 and D486717, claiming designs for tool handles.

Some cases that we found particularly interesting are mentioned below.

The footwear design patent infringement suit, Skechers USA v. Children’s Place, which we previously reported, was dismissed without prejudice on March 28, 2012, following a settlement agreement.

Littel Fuse, Inc. filed suit in the Eastern District of Michigan alleging infringement of utility and design patents for electrical fuses.  Links to the patents at issue are included below.

D575,746 Blade Fuse and Fuse Element therefor

D584,239 Blade Fuse Element

8,077,007 Blade Fuse

7,928,827 Blade Fuse

Frito-Lay filed suit in the Eastern District of Texas alleging infringement of utility and design patents for apparatus and methods directed to making bowl-shaped tortilla chips.  The Eastern District of Arkansas dismissed the defendants’ declaratory judgment action against Frito-Lay after the Eastern District of Texas ruled that the defendants were subject to its jurisdiction and that venue was proper in Texas.  Links to the patents at issue are included below.

D459,853 Snack Piece Mold

6,610,344 Process for making a shaped snack chip

6,592,923 System and method for molding a snack chip

6,638,553 System and method for monolayer alignment snack chip transfer

www.protectingdesigns.com

During this six week period, we identified 15 newly filed cases and 20 closed cases that assert a cause of action involving a design patent.  Of the closed cases identified, the average pendency of the litigation was 0.6 years, where the maximum and minimum pendencies were 1.6 years and 4 days, respectively.

As we previously reported, Oakley originally alleged infringement of both the ‘949 patent and the U.S. design patent D523,461 (“the D461 patent”).  However, as a result of the covenant not to sue under the utility patent, the D461 patent is currently the only remaining patent at issue in this case. 

The D461 patent claims “the ornamental design for an eyeglass component, as shown and described,” below.

Figure 1 of the D461 patent

In his March 7, 2012, Claim Construction Order (hereinafter “Order”), District Judge James Selna provided detailed reasoning for his decision not to construe the D461 patent claim, separately addressing issues of ambiguity, sufficiency of the description, and functionality.

First, the court addressed the defendants’ argument that the D461 patent is invalid because it is indefinite.  In particular, the defendants alleged that discrepancies in the number of control buttons on each ear stem rendered the D461 patent indefinite.  Order, page 3.  Relying on the Federal Circuit’s opinion in Antonious v. Spalding & Evenflo Co., No. 98-1478, 1999 WL 777450, at *8 (Fed. Cir. Aug. 31, 1999), the court concluded that “the inconsistencies in the drawings are minor,” and “[do] not rise to the level required to render the design indefinite.” Order, page 3.

Second, as to sufficiency of the description, the court recognized that the defendants’ proposed verbal construction of the D461 drawings were “thoughtful and accurate,” but concluded that “the depictions speak for themselves.”  Order, page 4.  The court relied on the Federal Circuit’s opinion in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc), in reasoning that “it has long been observed, and continues to be proven by examples such as the present one, that a design is better represented by an illustration than it could be by any description and a description would probably not be intelligible without the illustration.”  Order, page 4 (internal quotes omitted). 

Finally, the court provided a detailed discussion regarding the defendants’ arguments that certain features of the D461 patent were functional in nature and therefore not eligible for design patent protection.  In particular, the defendants alleged that “the enlarged rectangular portions of the left and right earstems (that are meant to contain . . . electronics) and the nose bridge (which is required to hold the eyeglasses on the wearer’s face) are functional.”  Order, page 4.

At the outset, the court stated that “[t]he conclusion that these features serve a defined utilitarian purpose is not dispositive as to whether the features are functional in the sense that they are not entitled to design patent protection.”  Order, page 5.  Instead, the court clarified that “the design of a useful article is deemed to be functional when the appearance of the claimed design is dictated by the use or purpose of the article.  Order, page 5 (quoting L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993)). 

Interestingly, in dismissing the defendants’ functionality arguments, the court pointed to the defendants’ own utility patent applications to demonstrate “alternatives for accomplishing the functions of storing electronic components in eyewear and providing nose support for eyewear.”  Order, page 5.  Further, in concluding that no claim construction was necessary due to functionality, the court analogized the features in the D461 patent to those found not strictly functional in L.A. Gear and Rosco, Inc. v. Mirror Lite Co., 304 f.3d 1373, 1378-79 (Fed. Cir. 2002), and distinguished the facts of Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010), where the Federal Circuit concluded that design features were “purely functional elements.”  Order, page 6.

Concerning Design Patents, the proposal sets several modest fee increases, while others are quite substantial.  Namely, the proposed Design Patent Examination and Search Fees would each increase by several hundred dollars.  The following table compares current and proposed large entity fees.  The proposed small and micro entities fees are, respectively, 50% and 25% of the large entity fees.

Full listing of proposed fee increases (pdf)

Obviously, the proposed fee increases will cause a substantial increase in Design Patent filing costs.  The current Filing, Examination and Search fees total $ 530, whereas the proposed fees total $ 1,180, more than twice the current fees.

The D142 patent claims “the ornamental design for the combined engine guard and highway peg” for motorcycles, shown below.

In its Default Judgment order, the court ordered AMI to pay Lindby Custom compensatory damages of $285,000, and attorneys’ fees and costs of $9,800, in addition to ordering a permanent injunction against continued infringement.

The court’s ruling follows less than two weeks after introduction of a bill in Congress, H.R. 3889, intended to create exceptions to acts of design patent infringement under 35 USC § 271 for certain component parts of motor vehicles, as we previously reported.  In turn, we thought it would be interesting to consider whether the proposed legislation could have affected the Lindby Custom v. AMI Group ruling, had the legislation been in effect.

As a threshold question we considered whether the Lindby case involves:

"a design patent that claims a component part of a motor vehicle as originally manufactured." 

H.R. 3889 (emphasis added).  The answer to this question may depend on an issue of statutory construction. 

First, if the clause "as originally manufactured" modifies only the term "a motor vehicle," then the proposed legislation might only apply to design patents that claim parts installed on a motor vehicle as it leaves the manufacturer's assembly line.  Accordingly, under this first interpretation, the proposed legislation might not apply to the D142 patent because there is no evidence that Lindby Custom provided engine guards for "motor vehicle[s] as originally manufactured."

However, in the alternative, if the clause "as originally manufactured" modifies the term "a component part," then the proposed legislation might apply to all motor vehicle component parts, as the component parts themselves are originally manufactured.  Under this second interpretation, the proposed legislation would likely apply more broadly to include design patents for aftermarket parts, such as the D142 patent, even if those parts were never installed on a motor vehicle as part of that motor vehicle's original manufacture.  Thus, under this second interpretation, the proposed legislation may have acted to diminish the damages award in the Lindby case by providing an exception to infringement for acts intended "for the repair of a motor vehicle so as to restore such vehicle to its appearance as originally manufactured."  H.R. 3889.