Permanent Injunctions: the Federal Circuit’s Causal Nexus Swing
| December 11, 2013
Apple, Inc. v. Samsung Electronics – CAFC Opinion
Decided November 18, 2013
Panel: Judges Prost, Bryson and O’Malley, Opinion by Judge Prost
Summary
The Federal Circuit vacated the California District Court’s denial of permanent injunctive relief against Samsung for its infringement of Apple, Inc.’s smart phone utility patents on the basis of the District Court having abused its discretion by failing to properly analyze evidence of causal nexus pertaining to irreparable harm and the inadequacy of legal remedies. This case is the third appeal to the Federal Circuit in this matter between Apple and Samsung. In 2011, in Apple’s initial infringement suit against Samsung, the jury found that twenty-six (26) Samsung smart phones infringed on six (6) Apple patents, and awarded Apple more than $1 billion in damages. Prior appeals to the Federal Circuit involved appeals related to preliminary injunctive relief (Apple I and II). While the Federal Circuit in prior appeal (Apple II) had rejected the District Court’s award of a preliminary injunction for not having considered the causal nexus requirement, the Federal Circuit now vacates the District Court’s award of permanent injunctive relief for having placed too much emphasis on the causal nexus requirement.
Details
Background:
Upon obtaining the District Court decision, Apple moved for a permanent injunction to enjoin Samsung from importing or selling any of its twenty-six (26) infringing products or any other product not more than colorably different. Apple’s appeal is based on infringement of Apple’s 1) utility patents, 2) design patents and 3) trade dress. On December 12, 2012, the District Court denied the request for a permanent injunction. Here, the Federal Circuit affirmed the denial of permanent injunction for infringement of the design patents and trade dress, but vacated and remanded the denial of permanent injunction for infringement of the utility patents.
There were three (3) utility patents at issue: (1) U.S. Pat. No. 7,469,381 which claims a “bounce back” feature in that is activated when a user scrolls past the end of a document, whereby when one lifts a finger, the previously visible part bounces back into view; (2) U.S. Pat. No. 7,844,915 which claims a “multi-touch display” feature related to single touch commands and two touch commands such as “pinch to zoom;” and (3) U.S. Pat. No. 7,864,163 which claims a “double-tap to zoom” feature.
Injunction Standards:
To obtain a permanent injunction, a plaintiff must prove:
(1) That it suffered an irreparable injury;
(2) That remedies available at law, such as, e.g., monetary damages, are inadequate to compensate for the injury;
(3) That, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and
(4) That the public interest would not be disserved by a permanent injunction.
The Federal Circuit reiterated that “an injunction is a drastic and extraordinary remedy, which should not be granted as a matter of course.” The Federal Circuit further expressed that “the standard for a preliminary injunction is essentially the same as for a permanent injunction with the exception that [for a preliminary injunction] the plaintiff must show a likelihood of success.”
Irreparable Harm Factor:
The Federal Circuit explained that to solve the “irreparable harm” factor, 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.
Here, the Federal Circuit held that the District Court erred by requiring for causal nexus that Apple show that “one of the patented features is the sole reason consumers purchased Samsung’s products.” The Court explained that it is not necessary to prove that “the patented feature is the one and only reason for consumer demand.” The Federal Circuit concluded that “rather than show that a patented feature is the exclusive reason for consumer demand, Apple must show some connection between the patented feature and the demand for Samsung’s products;” explaining that “[t]here might be a variety of ways to make this required showing, for example, with evidence that a patented feature is one of several features that cause consumers to make their purchasing decisions” and that “[i]t might also be shown with evidence that the inclusion of a patented feature makes a product significantly more desirable.”
Moreover, the Federal Circuit added that the causal nexus requirement is required in all injunction matters, but explained that while for simple cases with relatively non-complex technology (such as, e.g., prior cases related to windshield wiper blades, orthopedic nails, etc.) such a nexus can be so intuitively apparent as to be a non-issue, the causal nexus in significantly more complex cases, such as, e.g., with smart phones, may be correspondingly more difficult to prove.
With respect to the utility patents, in its point-by-point evaluation of the District Court’s decision, the Federal Circuit agreed with the District Court having disregarded as relevant, but independently too general or insufficient to establish a causal nexus, Apple’s survey evidence showing 1) Apple’s “easy-to-use user interface as critical to the success of Apple’s products,” and 2) evidence of copying of the patented features recommended by Samsung employees. However, the Court did find error on the part of the District Court in having dismissed as irrelevant consumer survey evidence of the economic impact of the features claimed in Apple’s patents, explaining that “we see no reason why, as a general matter of economics, evidence that a patented feature significantly increases the price of a product cannot be used to show that the feature drives demand for the product.” The Court additionally clarified that the amount that consumers would pay for the patented feature is important, stating that “[t]his is not to say that consumers’ willingness to pay a nominal amount for an infringing feature will establish a casual nexus [such as a $10 cup holder in a $20,000 car].” Ultimately, the Federal Circuit concluded that the survey evidence was not properly considered altogether, vacated the District Court’s irreparable harm findings, remanded the issue, and ordered the Court to “assess whether Apple’s other evidence, including its ease-of-use evidence and evidence of copying, in combination with Dr. Hauser’s survey evidence, suffices to establish irreparable injury.”
In addition, the Federal Circuit also noted in the opinion that where there are many patents covering a product, “there may be circumstances where it is logical and equitable to view patents in the aggregate” such as “where they combine to make a product significantly more valuable.”
Inadequacy of Legal Remedies:
The Federal Circuit held that the District Court erred in its analysis of this factor. Specifically, the District Court found this factor weighed in favor of Samsung based on 1) Apple’s prior licensing activities and 2) Samsung’s ability to pay to pay monetary damages.
However, the Federal Circuit explained that in contrast to a defendant’s inability to pay potentially demonstrating the inadequacy of awarded damages, an infringing party’s ability to pay does not defeat a claim that damages would not be an adequate remedy.
In addition, the Federal Circuit explained that the District Court erred in its evaluation of Apple’s past licensing behavior and its erroneous conclusion that “the asserted patents are not ‘priceless’ and that Samsung is not ‘off limits’ as a licensing partner.” The Federal Circuit explained that the District Court’s focus on Apple’s past licensing practices, without exploring any relevant differences from the current situation, was an abuse of discretion that “hints at a categorical rule that Apple’s willingness to license its patents precludes issuance of an injunction.”
Public Interest:
In considering the Public’s Interest factor, the Federal Circuit noted that in determining whether an injunction would disserve the public interest, it is appropriate to consider the scope of the injunction requested relative to the patented features and the prospect that the injunction would have the effect of depriving the public of access to a large number of non-infringing features – such as, e.g., the context of a complex device such as, e.g., a smart phone in which the product has numerous features, and the patent(s) covers only a smaller number of the features.
Takeaway
- This case may potentially increase the availability of preliminary or permanent injunctive relief in patent litigation, as the case helps to highlight that the causal nexus does not require the patented feature to be the sole reason for the purchase.
- This case also highlights that survey evidence is very helpful in proving a causal nexus of irreparable harm; thus, we should expect to see an increased reliance on such survey evidence in patent litigation.
- This case also illustrates the differences in seeking injunctions in simple verses complex cases. For example, that 1) the causal nexus can be easy to see in simple cases, but may be more difficult to prove in complex cases and 2) in complex cases in which products may have many non-infringing features, the balance of harms may weigh towards denying an injunction in the favor of protecting public interest.
Tags: Causal Nexus > injunction > irreparable harm > permanent injunction
