Prefacing Note on Intellectual Property Tests and Standards (Part 2 of 4)

As mentioned in the previous post, as part of the reasonable likelihood of success prong, Apple must establish that Samsung is not likely to be able to invalidate the patent at trial.  A patent can be invalidated on a few grounds.  Most relevant for our purposes are the novelty and obviousness grounds for invalidation.  Patent law requires that the claimed subject matter be both novel and non-obvious. Correspondingly, a patent claim is invalid if it is either anticipated (not-novel, lacking novelty) or obvious.

Figuring out the burdens for the validity part of the reasonable likelihood of success prong is slightly tricky.  The party seeking a preliminary injunction bears the burden of establishing all four prongs of the preliminary injunction analysis, including the reasonable likelihood of success.  In patent infringement cases, the reasonable likelihood of success prong involves patent validity.  Demonstrating patent invalidity is the defendant’s task, since patents are presumptively valid.  This presumptive validity is also applicable during the preliminary injunction inquiry.  Thus, at the start of the invalidity arguments, it is Samsung’s burden to present evidence about the patent’s invalidity.  After Samsung raises the question of invalidity, Apple takes the burden of rebutting Samsung’s invalidity challenge.  If the court thinks that Samsung has raised a substantial question about the patent’s validity, then Apple has not met its burden in demonstrating reasonable likelihood of success “on the merits of the validity issue.” Court Order Denying Motion for Preliminary Injunction at 9. The district court summarized, “[u]ltimately, at the preliminary injunction state, Apple bears the burden of persuading the Court that it is more likely than not that Samsung will be unable to prove invalidity by clear and convincing evidence at trial.” Id.

[NOTE:  Apple’s section on the validity of its design patents is rather sparse, which goes along with the procedural nature of validity challenges.  Samsung bears the initial burden to produce the prior art that could challenge the validity of the patent at issue, after which Apple would then respond at length.  Samsung’s actual opposition brief, which would presumably contain the bulk of its invalidity arguments, appears to have been filed under seal (although there were several declarations and accompanying exhibits that were not).  Apple’s reply brief in support of its motion, which followed Samsung’s opposition brief, also appears to have been filed under seal (although several declarations and exhibits were not). In light of these constraints, we focus on the material available in Apple’s brief and the district court’s opinion.]

Prefacing Note on Intellectual Property Tests and Standards (Part 1 of 4)

                Before we further analyze Apple’s motion and the Court’s denial of it, we must first examine some of the tests and standards used in intellectual property law.  These tests and standards are key to understanding the reasonable likelihood of success prong.  For the reasonable likelihood of success on merits prong, Apple must demonstrate that it would be likely to prove infringement at trial and that Samsung would not be likely to prove invalidity at trial.

                With respect to three design patents (D’677, D’087, D’899), the test for infringement asks: “would an ordinary observer perceive the design of the accuse device to be ‘substantially the same’ as the design of the patent?”  This ‘substantially the same’ (or substantial similarities) standard is met when “‘the resemblance [between the accused device’s design and design patent] is such to deceive such an observer, inducing him to purchase one supposing it to be the other.’”  Court Order Denying Motion for Preliminary Injunction at 24. With respect to software patent ‘381, Apple must prove likely infringement of at least one the claims of the ‘381 patent.  A patent claim is infringed if the accused device reads on every element of the claim.

Apple v. Motorola: Injunction Hearing - General Point of Interest for Practitioners

 Another note of interest to IP practitioners also came up during Judge Posner’s questioning of Apple’s argument about Motorola’s infringement causing harm in the form of loss of consumer goodwill.  Apple’s attorneys had sought to bring in multiple news articles and reviews of the iPhone as evidence.  Judge Posner questioned Apple as to the relevance of these articles, because they generally did not relate to the specific features that were the technology of the four patents at issue.  He asked for articles that dealt specifically with the features that were being protected in the patents, because such articles could demonstrate how important those specific features were to consumers and their purchasing decisions.  For example, one of the patents at issue had to do with a feature for a notification bar.  The Judge seemed highly dubious of the value or importance of that feature to consumers, and he indicated that he would have wanted to see some articles about the notification bar feature, which could support Apple’s argument that infringement of that feature harmed its goodwill or market share.

One suggestion is that parties should really focus on providing concrete, direct proof of how the infringement is leading to the harms being asserted.  Especially with patents that deal with one tiny part of a larger machine and/or device; some direct evidence of the importance of the patented technology to consumers would be helpful.  Apple argued that Judge Posner was being too “granular” in his focus.   I am not sure that persuaded him.  

Apple's 1st Motion for a Preliminary Injuction

On July 1, 2011, Apple filed a motion for a preliminary injunction against some of the Samsung’s Galaxy smartphones and tablets at issue in the case.  Apple’s motion for a preliminary injunction was limited to four of the accused Samsung devices (Infuse 4G, Galaxy S 4G, Droid Charge smartphones, and the Galaxy Tab 10.1), which allegedly infringed the following four Apple patents: D’677, D’087, D’889, US Patent No. 7,469,381(one of the utility patents in suit, and it covers software).

For two reasons, the motion is interesting for how it starts.  First, it explained why it limited the motion to four devices and four patents, claiming that the decision would be easy for the court:

“[i]n order to expedite resolution of this motion, Apple has selected intellectual property rights that lend themselves readily to adjudication without trial…Deciding infringement of these design patents is as simple as comparing Apple’s design patents to images of the Samsung products and observing the substantial similarity between the two. The same is true for validity: a visual comparison of prior art designs with Apple’s design patents confirms that Apple’s patented designs are radically different from the prior art...the claims of the ‘381 patent are so clear…[a] simple demonstration proves that Samsung’s products infringe…For even greater simplicity, Apple is limiting this motion to new products that Samsung recently released in the U.S.” Apple’s Motion for a Preliminary Injunction, 2011-07-01, Docket No. 86 at 8-9.

Second, Apple’s motion, after bragging about the “unique and refined” look of its products, explained that it had tried to convince Samsung to abandon this course of copying to no avail.  “[T]hose [Apple’s] pleas fell on deaf ears.”  Attempts to resolve matters outside court are generally welcomed by the courts.