Apple V. Samsung: CAFC Appeal Decision - The Dissent

Further to our prior post concerning the recent CAFC Appeal Decision, on May 14, 2012, the Federal Circuit reversed and remanded the district court’s decision to deny a preliminary injunction to plaintiff Apple for its design patent D504,889 for a tablet.  The Federal Circuit affirmed the district court's decision denying a preliminary injunction with regard to two other design patents and a utility patent drawn to smartphones.

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.

Apple v. Samsung: Summary Update - January 2012

Engadget has started a "Follow the Saga" feature concerning the ongoing Apple v. Samsung feud, including the most recent announcement that the ban on the original Galaxy Tab 10.1 has been upheld in Germany.  The "Follow the Saga" coverage at Engadget also includes Samsung's 3G lawsuits.

Of note, Apple filed another suit against Samsung in Germany on January 17, 2012, asserting Registered Community Design Nos. 000748280-0006 and 000888920-0018 against 15 Samsung phones between the two designs, as reported by FOSS Patents.  There is an invalidity proceeding pending in both, each initiated by Samsung on August 9, 2011.

Registered Community Design No. 000748280-0006

Registered Community Design No. 000888920-0018

Apple v. Samsung: Update October 17, 2011

As reported by Reuters, U.S. District Judge Lucy Koh has commented on the case in a court hearing on Thursday, October 13, 2011, but has not yet ruled on a pending motion for a preliminary injunction to bar some of the Samsung Galaxy products from being sold in the U.S.

Reportedly, Judge Koh frequently remarked on similarities between the Samsung Galaxy Tab 10.1 and the Apple iPad, and even questioned Samsung's attorneys as whether they could identify Samsung's tablet between the two.

Nonetheless, Judge Koh indicated the utility patent asserted by Apple would not be sufficient to support an injunction, and has not yet determined whether any of the design patents asserted by Apple would be sufficient to support an injunction.  However, Judge Koh indicated a formal order would follow promptly.

Apple v. Samsung: Update August 26, 2011

Since our last update, Apple has succeeded in obtaining a trial date of July 30, 2012, in the Northern District of California (this relates to Apple's U.S. federal claim against Samsung).

Also, a Dutch court ordered an injunction against Samsung's Galaxy smartphones (but not the tablet) based on a software-related patent.  Samsung stated it would modify the software in its phones to work around the patent.

Lastly, Florian Mueller at FOSS Patents has translated the official court statement from the Regional Court of Dusseldorf (Germany) which granted Apple a preliminary injunction on August 9, 2011.  As we previously posted, the Regional Court of Dusseldorf scheduled a hearing for August 25, 2011.  In summary, the injunction remains effective at least until a ruling scheduled for September 9, 2011.

Returning back to the design aspects at issue, Samsung has raised an interesting argument against Apple's asserted design patent.  Samsung argues that "tablets" used in Stanley Kubrick's 2001: A Space Odyssey (1968) are prior art against Apple.  Florian Mueller posted on this on August 23, 2011.

[Exemplary image from 2001: A Space Odyssey; Also see the corresponding YouTube clip]

Samsung argues the devices shown on the table above have "an overall rectangular shape with a dominant display screen, narrow borders, a predominately flat front surface, a flat back surface (which is evident because the tablets are lying flat on the table's surface), and a thin form factor." Samsung may be taking a bit of liberty here - this movie dates back to 1968, which means the devices are probably nothing more than a shell to look like a slim device, with CRT televisions below the table.  On the other hand, the devices may have images projected thereon.  Either way, it should be appreciated that the devices are not tablet-functional devices as we are accustomed to, but rather movie props.

However, while this distinction may be important when considering the teachings of a utility patent, Samsung's arguments are specifically directed to a design patent.

"The scope of the relevant prior art for purposes of evaluating obviousness under 35 U.S.C. 103(a) extends to all "analogous arts." While the determination of whether arts are analogous is basically the same for both design and utility inventions (see MPEP § 904.01(c) and § 2141.01(a)), In re Glavas, 230 F.2d 447, 450 109 USPQ 50, 52 (CCPA 1956) provides specific guidance for evaluating analogous arts in the design context, which should be used to supplement the general requirements for analogous art as follows:

The question in design cases is not whether the references sought to be combined are in analogous arts in the mechanical sense, but whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.
...
Therefore, where the differences between the claimed design and the prior art are limited to the application of ornamentation to the surface of an article, any prior art reference which discloses substantially the same surface ornamentation would be considered analogous art. Where the differences are in the shape or form of the article, the nature of the articles involved must also be considered." [MPEP 1504.03.I.A]

Additionally, in determining whether a design is obvious (i.e. not patentable), "the proper standard is whether the design would have been obvious to a designer of ordinary skill with the claimed type of article. ... As a whole, a design must be compared with something in existence, and not something brought into existence by selecting and combining features from prior art references." [MPEP 1504.03]

Does a movie prop, which is arguably non-functional, constitute something in existence?

A design patent only protects the appearance of an article - not its structural or utilitarian features.  Accordingly, it may be irrelevant that the tablets shown in 2001: A Space Odyssey are arguably non-functional.  If the court agrees with Samsung that these tablets constitute a prior art design, then it will be interesting to see whether designs from other science fiction works appear in the litigation. 

Apple v. Samsung: Showdown at the ITC

As reported in the ITC Blog, on August 2, 2011, the ITC instituted an investigation concerning Samsung's alleged infringement of U.S. Patent Nos. 7,479,949, RE 41,922, 7,863,533, 7,789,697, 7,912,501, D558,757 and D618,678.  This investigation is the result of a complaint filed on July 5, 2011, and a supplemental letter filed on July 22, 2011, by Apple.

Figs. 1 and 2 of U.S. D558,757 (left) and D618,678 (right) are reproduced below.

This follows the ITC instituting an investigation on July 27, 2011, concerning Apple's alleged infringement of U.S. Patent Nos. 7,706,348, 7,486,644, 6,771,980, 6,879,843 and 7,450,114.  This investigation is also reported in the ITC Blog, and is the result of a complaint filed on June 27, 2011, and supplemental letters filed on July 7 and 15, 2011, by Samsung.