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.]

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