Apple's Argument and the District Court Decision re D'889 Infringement

As with its other infringement arguments, Apple relied on visual images—side-by-side comparisons—to demonstrate the substantial similarities between the D’889 design and the Galaxy Tab 10.1. design. Due to these substantial similarities in appearance, Apple argued that Samsung’s tablet infringed on the D’889 patent. It focused on the D’889’s “mimimalist computer tablet design” (Apple Motion for Preliminary Injunction at 13-14).

 
Moreover, Apple provided side-by-side visual comparisons of the D’889 and Galaxy Tab 10.1 designs against two of the prior art references. Apple argued that its D’889 design departed significantly from the prior art and that Samsung’s tablet followed the changes Apple made from the prior art.
 
Apple’s visual, side-by-side image comparisons were useful in demonstrating its argument. The district court found that Apple would be likely to succeed in proving infringement at trial. The court used these side-by-side comparisons to reach this finding. Per the court’s opinion, despite some minor differences, the Samsung accused tablet was “virtually indistinguishable  from” the D’889 and Apple iPad (embodying the D’889 patent) (Court Order Denying Motion for Preliminary Injunction at 47).
 
The federal circuit did not explicitly discuss the lower court’s D’889 infringement finding. However, it is clear that the court affirmed it since it remanded for findings on balance of hardship and public interest after overturning the lower court’s decision on likely invalidity.
 
Please see the previous post: Transition Between ‘381 and D’889 for more on this topic. For more on emergency business litigation, click here or call 312-223-1699 to speak with one of our Chicago law firm attorneys.

Transition Between '381 and D'889

In the original motion, Apple sought an injunction against Samsung’s Galaxy Tab 10.1 based on the device’s alleged infringement of the D’889 patent. The district court eventually denied this request, finding that the patent would likely be found invalid at trial. However, on appeal, the federal circuit overturned the invalidity finding and remanded the case back to the lower court for further findings. Samsung petitioned for the federal circuit for a rehearing en-banc on this issue, but the federal circuit denied this petition and issued a mandate to the lower court. This mandate required the district court to reach findings on the last two prongs of the preliminary injunction analysis: balance of hardships and public interest.

 
On June 26, 2012, based on the Federal Circuit’s mandate, the district court ultimately granted Apple a preliminary injunction against the Samsung Galaxy 10.1 tablet. Samsung appealed this decision.
 
Please note that our blog entries focus on the first of Apple’s preliminary injunction motions against four particular Samsung devices. Later, Apple followed up with additional preliminary injunction motions against different Samsung devices. We have not touched on any other preliminary injunction motions other than the first.
 
The next few blogs will focus on the D’889 patent. We will discuss Apple’s argument, the district court’s holding and the federal circuit’s appellate opinion. We will also expand on the potential ramifications of the federal circuit’s opinion that may go beyond the case at hand.
 
Please see the previous post: Apple’s Argument and District Court’s Decision re Irreparable Harm from Infringement of ‘381 Patent for more on this topic. For more on emergency business litigation, click here or call 312-223-1699 to speak with one of our Chicago law firm attorneys.

Apple's Argument and District Court's Decision re Irreparable Harm from Infringement of '381 Patent

 Apple’s fatal flaw was that its original motion for a preliminary injunction did not include a specific subsection on the irreparable harm from Samsung’s infringement of the ‘381 patent. As mentioned earlier, there were several declarations, exhibits and replies, so it is certainly possible that those documents expanded on the irreparable harm argument in connection to the ‘381 infringement. However, insofar as the original motion is concerned, Apple did not discuss anything about irreparable harm that was specific to the ‘381 infringement. Apple did not explain how the ‘381 infringement would cause either loss of consumer goodwill or lost market share. 

 
This precise failure doomed Apple’s request for an injunction based on ‘381 infringement. In the district court’s view, “Apple ha[d] failed to establish a relationship between any alleged loss of market share, customers or goodwill and the infringement of the ‘381 patent.” Court Order Denying Motion for Preliminary Injunction at 63. Additionally, the court focused on the nature of the patented technology in connection to the whole product. Was the technology patented in ‘381 essential to carrying out the accused products’ functions? Or was the ‘381 technology a determinative factor in consumers’ purchasing histories? Apple had not proven either. The court stated, “the fact that the ‘381 patent is but one patent utilized in the accused products and does not appear to be either necessary….or a core technology of the product, weighs against a finding of irreparable harm” (Id. at 64). 
 
Furthermore, Apple’s prior licensing of the ‘381 technology also weighed against Apple’s request. The prior licensing indicated that monetary damages could be an adequate remedy to compensate for the infringement.
 
All these factors combined lead the court to its finding against irreparable harm from ‘381 infringement. On the basis of no irreparable harm, the district court denied an injunction against the four accused devices as based on the ‘381 infringement.
 
On appeal, the Federal Circuit affirmed the district court’s irreparable harm finding. Apple needed to prove that the ‘381 patented technology was determinative to consumers’ purchasing decisions.  Without such a causal nexus, Apple could not get injunctive relief.
 
Please see the previous post: District Court’s Finding re Likely Validity of ‘381 Patent for more on this topic. For more on emergency business litigation, click here or call 312-223-1699 to speak with one of our Chicago law firm attorneys.

District Court's Finding re Likely Validity of '381 Patent

The district court agreed with Apple and found that Apple would be likely to withstand Samsung’s validity challenges at trial.
 
Interestingly, the court did not address Apple’s point about the ‘381 successful re-exam. Rather, the district court walked through the prior art references Samsung had presented. Samsung argued that these references anticipated all of the claims in the ‘381 patent; invalidating the patent. Then, the court methodically rejected the references and found that the references were not anticipatory.  On the basis of those prior art references, the court rejected Samsung’s anticipation argument and instead found that Samsung had not raised substantial questions about the validity of the ’381 patent.
 
Accordingly, the district court found that Apple would be likely to succeed on the validity issue. The Federal Circuit’s appellate opinion did not address the district court’s finding of likely validity.
 
Our next blog will discuss Apple’s argument about irreparable harm (the prong upon which the court denied injunctive relief on ‘381 infringement).
 
Please see the previous post Apple's Main Argument in '381 Patent Case for more on this topic. For more on emergency business litigation, click here or call 312-223-1699 to speak with one of our Chicago law firm attorneys.