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A showing of causal nexus is required between infringement and alleged harm to patentee

| May 23, 2012

Apple, Inc. v. Samsung Electronics Co., Ltd., et al.

May 14, 2012

Panel: Bryson, Prost, and O’Malley. Opinion by Bryson. Concurrence-in-part and dissent-in-part by O’Malley.

Summary

Apple filed suit against Samsung alleging infringement of Apple’s U.S. Design Patent Nos. D593,087 (“the D’087 patent”), D618,677 (“the D’677 patent”), D504,889 (“the D’889 patent”), and U.S. Patent No. 7,469,381 (“the ’381 patent”). Apple’s iPhone embodies the design in the D’087 patent and D’677 patent, and Apple’s iPad embodies the design in the D’889 patent. Both iPhone and iPad embody a software feature known as the “bounce-back” feature of the ‘381 patent. The district court denied Apple’s motion for a preliminary injunction with respect to each of the accused devices and all four asserted patents. Apple appealed. The CAFC affirms the denial of a preliminary injunction with respect to the D’087, D’677, and ’381 patents, but vacates and reminds with respect to the D’889 patent.

アップル社は、サムスン社がアップル社の米国意匠特許第D593,087号（D’087特許）、D618,677号（D’677特許）、D504,889号（D’889特許）と米国特許第7,469,381号（’381特許）を侵害しているとして訴えた。D’087特許及びD’677特許は、アップル社のiPhoneに係わる意匠で、D’889特許は、iPadに係わる意匠である。また、’381特許は、iPhone及びiPadに係わるソフトウェアである。アップル社は、サムスン社のイ号製品について仮差し止めの申し立てをしたが、地裁はこれを却下した。控訴審でCAFCは、D’087特許、D’677特許及び’381特許に関しては地裁の判決を支持したものの、D’889特許についての判決は破棄・差し戻しした。

Details

Apple filed suit against Samsung alleging Samsung’s Galaxy S 4G and Infuse 4G smartphones, as well as Galaxy Tab 10.1 tablet infringe Apple’s patents. Specifically, Apple alleged that the smartphones infringed Apple’s D’087, D’677, and ’381 patents, and the tablet infringed D’889 and ’381 patents.

The D’677 Patent

The district court held that the design claimed in the D’677 patent was not anticipated or rendered obvious by the prior art, but the district court denied injunctive relief, finding that Apple had not shown that it was likely to suffer irreparable injury.

The CAFC affirmed, stating that in order to show irreparable harm, Apple needs to provide evidence to show that the infringement caused harm. The CAFC elaborated by stating that there is no irreparable harm to a patentee, if consumers make decisions to purchase the product for reasons other than the patented feature. The CAFC ruled that a mere showing that Apple might lose some insubstantial market share as a result of Samsung’s infringement is not enough to establish the likelihood of irreparable harm.

The D’087 Patent

The district court found that the D’087 patent was likely anticipated by Japanese Patent No. 1,241,638, and therefore, Apple had failed to show that it was likely to succeed on the merits. The CAFC disagreed. The prior art referenced showed an arched, convex front, as opposed to a perfectly flat front face of the D’087 patent. The CAFC therefore rejected the district court’s ruling that the D’087 patent is likely anticipated by the ’638 reference. However, the CAFC still affirmed the district court’s denial of a preliminary injunction, stating that the irreparable harm analysis is identical for both smartphone design patents, and because the CAFC upheld the denial of relief on the D’677 patent, the district court’s denial of a preliminary injunction based on the D’087 patent is also affirmed.

The ’381 Patent

The CAFC also affirmed the district court’s denial of an injunction based on the ’381 patent, for failure to demonstrate that consumer purchasing decisions were based on the presence of the bounce-back feature. The district court required “a nexus between infringement of the patent and some market-based injury, be it as a result of consumer preference or some other kind of causal link,” which the CAFC agreed. While evidence showed that Samsung employees believed the bounce-back feature to be necessary to compete with Apple, the CAFC stated that this evidence alone is not sufficient to establish the requisite nexus.

The D’889 patent

With respect to the D’889 patent, the district court ruled that Apple had failed to establish a likelihood of success on the merits, finding the validity of the D’889 patent was subject to a substantial challenge based on two prior art references: the 1994 Fidler reference and the TC1000 tablet. The CAFC disagreed, and held that the district court erred in finding that the Fidler tablet created the same visual impression as the D’889 patent.

By conducting a side-by-side comparison, the CAFC noted that the Fidler tablet is not symmetrical, the frame of the Fidler tablet creates a very different impression, the Fidler tablet screen appears to sink into the frame, among others. The CAFC found that the Fidler tablet does not give the same visual impression as the D’889 patent, and the district court erred in looking to the Fidler tablet as the primary reference.

The CAFC goes on further to state that even assuming the Fidler tablet qualified as a primary reference, the TC1000 secondary reference could not bridge the gap between Fidler and the D’889 design.

While Samsung argued that the district court properly focused on overall visual appearance rather than on the “design concepts,” the CAFC stated that the district court viewed the various designs from “too high a level of abstraction.”

Because the district court found that there is a substantial question as to the validity of the D’889 patent, it did not make findings with regards to the balance of hardships and the public interest in its analysis of whether to issue a preliminary injunction.

The CAFC therefore remanded the case to the district court for further proceeding with respect to D’889 patent.