Apple is bit at CAFC: The Court reversed and remanded a preliminary injunction obtained at the District Court against Samsung’s Galaxy Nexus Smartphone
Michael Caridi | October 17, 2012
Apple Inc. v. Samsung Electronics, Ltd. et al.
Decided: October 11, 2012
Panel: Prost, Moore, and Reyna. Opinion by Prost.
The CAFC reversed the District Court’s finding that there was irreparable harm to Apple by allowing sales of the Galaxy Nexus. The CAFC held that there was an insufficient causal nexus between the claimed invention and the sales of the product. The Court also addressed Apple’s likelihood of success to interject claim construction.
Apple brought suit against Samsung, alleging that Samsung’s Galaxy Nexus smart-phone infringes eight patents, including U.S. Patent No. 8,086,604 (“’604 patent”). Asserted independent claim 6 of the ’604 patent is directed to an apparatus for “unified search” that uses heuristic modules to search multiple data storage locations. Unified search refers to the ability to access information on more than one data storage location through a single interface.
Claim 6 recites:
6. An apparatus for locating information in a net-work, comprising:
an interface module configured to receive an in-putted information descriptor from a user-input device;
a plurality of heuristic modules configured to search for information that corresponds to the received information descriptor, wherein:
each heuristic module corresponds to a respective area of search and employs a different, predetermined heuristic algorithm corresponding to said respective area, and the search areas include storage media accessible by the apparatus; and
a display module configured to display one or more candidate items of information located by the plurality of heuristic modules on a display device.
Apple alleged that the Quick Search Box (“QSB”), which is the unified search application of Samsung’s Galaxy Nexus, infringes claim 6. QSB is a feature of Android, an open-source mobile software platform developed by Google, Inc. The District Court issued a preliminary injunction against the Galaxy Nexus based on claim 6. Samsung appealed the preliminary injunction award.
The CAFC reviews the ultimate decision granting a preliminary injunction for abuse of discretion by the District Court. Preliminary Injunctions require satisfying a four prong test by the plaintiff:
(1) He is likely to succeed on the merits;
(2) He is likely to suffer irreparable harm in the absence of preliminary relief;
(3) That the balance of equities tips in his favor; and
(4) That an injunction is in the public interest.
Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008)
The CAFC addresses only the first two prongs. The “irreparable harm” prong is addressed to reach their finding that the District Court had abused its discretion in granting the injunction. The “likelihood of success” prong was addressed to interject claim construction of claim 6 which the CAFC deemed incorrect at the District Court.
(a) Irreparable Harm
The CAFC noted that to satisfy the irreparable harm factor in a patent infringement suit, a patentee must establish both 1) that absent an injunction, it will suffer irreparable harm, and 2) that a sufficiently strong causal nexus relates the alleged harm to the alleged infringement. They held that Apple had not sufficiently established a causal nexus between the harm alleged and the infringing conduct.
Quoting an earlier Apple v. Samsung decision, 678 F.3d (1314 (Fed. Cir. 2012), the Court noted:
Sales lost to an infringing product cannot irreparably harm a patentee if consumers buy that product for reasons other than the patented feature. If the patented feature does not drive the demand for the product, sales would be lost even if the offending feature were absent from the accused product. Thus, a likelihood of irreparable harm cannot be shown if sales would be lost regardless of the infringing conduct. Id at 1324.
Based thereon, the Court asserts: “The relevant question is not whether there is some causal relationship between the asserted injury and the infringing conduct, but to what extent the harm resulting from selling the accused product can be ascribed to the infringement.”
They then review the causal relationship between the invention of claim 6 of the ‘604 patent to sales of the Galaxy Nexus. They held that Apple had presented no evidence that directly ties consumer demand for the Galaxy Nexus to its allegedly infringing feature. Apple rather made a case for nexus circumstantially, based on the popularity of an iPhone 4S application called Siri. Specifically, Apple pointed to evidence showing that the functionality of Siri depends in part on unified search, and that consumers often use Siri in ways that include looking for information. Thereby Apple asserted that consumers must be at least in part attracted to the Galaxy Nexus because it too incorporates the unified search feature disclosed in the ’604 patent.
The CAFC found that the causal nexus requirement is not satisfied simply because removing an allegedly infringing component would leave a particular feature, application, or device less valued or inoperable.
To establish a sufficiently strong causal nexus, Apple must show that consumers buy the Galaxy Nexus because it is equipped with the apparatus claimed in the ’604 patent—not because it can search in general, and not even because it has unified search.
The CAFC found that the district court made no such determination and “at best” found that some consumers who buy the iPhone 4S like Siri because, among other things, its search results are comprehensive. This does not sufficiently suggest, however, that consumers would buy the Galaxy Nexus because of its improved comprehensiveness in search.
Based thereon, the CAFC found that the District Court had abused its discretion as the causal link between alleged infringement and consumer demand was to tenuous to support a finding of irreparable harm. The reversal of the preliminary injunction by the CAFC is based on Apple’s failure to satisfy this prong of the preliminary injunction test.
(b) Likelihood of Success
The panel further reviewed the “likelihood of success” prong to correct claim construction on the basis that the issue may become important during proceedings on remand. They specifically addressed the aspects of claim 6 as to “a plurality of modules . . . wherein . . . each heuristic module corresponds to a respective area of search and employs a different, predetermined heuristic algorithm.”
Apple’s initial construction was that as long as the QSB contains at least two modules that employ different heuristic algorithms, even if there remain other heuristic modules whose heuristic algorithm is not unique the limitation is satisfied. Apple argued that this limitation is in fact satisfied because the QSB contains three heuristic modules that are assigned a predetermined search area and employ different heuristic algorithms (each compared to the other two).
Samsung’s construction was that the key limitation of claim 6 requires that every heuristic module within the accused device use a unique heuristic algorithm.
The District Court had found that “each” of “a plurality of heuristic modules” means “each of at least two modules,” not “each of every module.”
The CAFC found that the district court’s determination that “each” modifies “plurality of heuristic modules” is erroneous because it contravenes the plain terms of the claim. Specifically, they noted that the word “each” appears not before “plurality of modules,” but inside the “wherein” clause and before the phrase “heuristic modules.”
Here, the district court eliminated the very distinction that we deemed material in ResQNet by plucking “each” from where it appears and planting it before the phrase “plurality of modules.” That was error, and Apple’s reliance on ResQNet based on the assertion that it “involv[ed] almost identical claim language” is—at best—incorrect.
Apple had offered a second construction that claim 6 requires “a plurality” (just one) in which every module has a different heuristic algorithm (compared to the other modules within that plurality). Accordingly, as long as there is one such “one plurality”—i.e., at least two modules with different heuristic algorithms—the key limitation is satisfied. As to any remaining modules, Apple points out that claim 6 uses the open-ended term “comprising” in listing the limitations and concludes that the addition of other modules does not defeat a showing of infringement.
The CAFC disagreed, noting that despite the use of “comprising,” claim 6 is not amenable to the addition of other modules that do not use different heuristic algorithms because such addition would impermissibly wipe out the express limitation that requires every module to have a unique heuristic algorithm.
In addressing the second construction, the panel referred to the prosecution history of the ‘604 patent. They noted that in distinguishing a reference, Andreoli, the prosecutor had first asserted that Andreoli teaches that the processor can use the solution to a constraint satisfaction algorithm to formulate a search request and employ any appropriate combination of local and remote search operations. Thereafter, the prosecutor additionally asserted that “Andreoli does not describe, however, that each of the local and remote search operations employs a different heuristic algorithm to search an associated relevant area of search for information that corresponds to the search request, in accordance with amended claim 1.”
The CAFC in part relied upon this second assertion of distinction from Andreoli to refute Apple’s alternative claim construction.
Litigation: The irreparable harm prong of the preliminary injunction test requires a clear causal relationship between the claimed invention and sales of a product. This could entail extensive and expensive marketing/sales data to evidence the relationship sufficiently.
Prosecution: The placement of “each” in claim language needs to be precise. The claim language should be as clear as possible as to “each” of what claim aspect. Its positioning can determine whether “each” means all possible or only some (“at least two”).
Arguments during prosecution should be kept as narrow as possible. Expounding arguments can lead to situations such as occurred in this case where the court used a secondary argument advanced during prosecution to justify its construction. The best arguments, if possible, should simply repeat the claim language when referring to aspects of the invention.