Court of Appeals for the Federal Circuit: 12-1506 (Samsung’s Appeal of Preliminary Injunction); 12-1600 (Apple and Samsung appeal of Judge Koh’s Order of Public Disclosure); 13-1129 (Apple’s Appeal of Final Judgment) – (consolidated with 13-1146 – Samsung’s Appeal of Final Judgment).
Next Event: Trial concluded
Summary: Apple-Samsung is the first of the smart phone wars patent litigation cases to reach a jury verdict in federal district court. Apple asserted that Samsung infringed a total of fifteen Apple patents (eight utility patents and seven design patents) and Samsung counterclaimed by alleging that Apple has infringed upon twelve Samsung patents. The case included many procedural steps, including two remands by the Court of Appeals for the Federal Circuit. Ultimately the jury determined that Samsung infringed three Apple utility patents and four Apple design patents. The court denied Apple’s Motion for a Permanent Injunction, reasoning that Apple failed to show irreparable harm and that the public interest weighed against an injunction as that would deprive consumers of products.
Timeline of Important Events:
- April 15, 2011 – Apple files its initial complaint (Filing #1).
- June 16, 2011 – Apple files an amended complaint alleging, among other things, patent infringement and trade dress dilution on eight utility patents and seven design patents (Filing #75). Apple requested the court grant preliminary and permanent injunctions against Samsung’s alleged infringement, damages for any past infringement, and treble damages for any infringement deemed to be willful. Apple also requested disgorgement of all Samsung profits stemming from the alleged infringement.
- June 30, 2011 – Samsung files an answer and counterclaim asserting Apple infringement of twelve Samsung patents (Filing #80). Samsung’s answer denied the distinctiveness of Apple’s asserted trade dress claims, denied infringement, and asserted affirmative defenses of patent non-infringement and patent invalidity.
- July 1, 2011 – Apple files a motion for preliminary injunction. Apple’s motion incorporated three design patents (D’677, D’087, and D’889) and one utility patent (7,469,381 – List Scrolling and Document Translation, Scaling and Rotation on a Touch-Screen Display) (Filing #86).
- October 18, 2011 – The Court grants in part and denies in part Samsung’s Motion to Dismiss (Filing #153).
- October 20, 2011 – Apple files its counterclaim defenses and asserted several counterclaims against Samsung stemming from Apple’s allegations that Samsung has abused its FRAND commitments to the European Telecommunications Standards Institute (ETSI) (Filing #381). Apple’s defenses included breach of contract and promissory estoppel, and Apple requested declaratory judgment that Apple has a right to a license for all Samsung patents that fall under a FRAND commitment. Apple’s counterclaims included an allegation that Samsung violated the federal antitrust laws, specifically Section 2 of the Sherman Act, by failing to license patents incorporated in an international standard and subject to FRAND commitment. Samsung sought to dismiss these counterclaims on the grounds that Apple failed to state a legal claim, and pointed out that Apple rejected Samsung’s licensing offer. (Filing #405).
- December 2, 2011 – Judge Koh denies Apple’s request for preliminary injunction (Filing #452). Judge Koh highlighted the four factors under consideration when assessing a motion for preliminary injunction: the likelihood of success on the merits; whether the there is likely to be irreparable harm in the absence of an injunction; whether the balance of the equities favors the party seeking an injunction; and whether the public interest would be served by the grant of injunctive relief. The ruling broke down as follows:
- D’087 – Samsung met its burden and raised substantial questions regarding the validity of this patent, and Apple did not convince the court that it was likely to succeed.
- D’677 – Apple demonstrated that Samsung infringes this patent, and that Apple was likely to succeed in demonstrating the validity and infringement in question. The court also determined that the balance of hardships favored Samsung, as forcing a manufacturer to remove its product from the market can be devastating. As a result, the court determined it was in the public interest to deny an injunction.
- D’889 – Apple was not able to demonstrate that it was likely to succeed at trial against Samsung challenges of validity regarding the D’889 patent. Although the court agreed with Apple that it would suffer irreparable harm, Judge Koh determined that Samsung was likely to ultimately prevail in invalidating the patent based on available prior art and a demonstration of obviousness.
- 381 Utility Patent – Apple did not demonstrate that it would be irreparably harmed by Samsung’s infringement, although the court concluded that Samsung likely infringed on this patent.
- Apple appealed this ruling to the Court of Appeals for the Federal Circuit (CAFC) (Filing #460).
- May 1, 2012 – Apple and Samsung file Joint Case Management Statement in which each “is willing to dismiss certain claims and counterclaims in the interests of streamlining and simplifying the issues in this case.” (Filing #893). The court approved this proposed order on May 29, 2012.
- May 14, 2012 – The CAFC rules on Apple’s appeal on injunctive relief and remanded the case, concluding that Judge Koh committed legal error by denying injunctive relief for the D’889 patent (Docket #2012-1105). The CAFC engaged in the same comparison of prior art as the district court had, but concluded that there are “noticeable differences” between the prior art and the Apple product, and remanded the case to the district court to conduct an analysis of the hardships and the public interest. This Order was filed with the district court on June 25, 2012. Judge Koh instructs both parties to address the balance of hardships and the public interest pursuant to the directions of the CAFC (Filing #1131).
- May 14, 2012 – Judge Koh rules on Samsung’s motions to dismiss Apple’s counterclaims (Filing #920). The court dismissed Apple’s claims relating to promissory estoppel, and dismissed the breach of contract and declaratory judgment claims to the extent they relied on a finding that Apple had an existing license to Samsung’s SEPs. The court did not dismiss claims relating to anticompetitive conduct.
- May 17, 2012 – Samsung files Motion for Summary Judgment (Filing #930). Samsung contends that Apple’s trade dress is invalid because it is functional; Apple cannot prove that its asserted trade dress is famous; Apple’s design patents are invalid due to obviousness or subject to the on-sale bar; and Apple’s utility patents are invalid or Samsung does not infringe upon them. Finally Samsung contends that Apple’s antitrust counterclaims fail for an inability to articulate damages.
- May 18, 2012 – Apple submits Motion for Preliminary Injunction without Further Hearing concerning the D’889 patent (Filing #951), which the court denied in June of 2012 (Filing #1032).
- June 26, 2012 – Court grants preliminary injunction for Apple against the Samsung Galaxy Tab 10.1 (Filing #1135). The court concluded that Apple was likely to show infringement and validity at trial, Apple’s harm barring an injunction is greater, and that the public interest is served by enforcing patent rights.
- July 3, 2012 – Apple and Samsung file Joint Case Management Statement to further narrow the claims addressed at trial.
- July 25, 2012 – Samsung Trial Brief filed (Filing #1322).
- July 25, 2012 – Apple Trial Brief filed (Filing #1323).
- July 30, 2012 – Trial begins.
- August 24, 2012 – Jury Verdict Returned (Filing #1930). The jury found that Samsung had infringed upon various Apple patents, and returned a damages award of $1.051 billion. Notably the jury found that the Samsung Galaxy Tab 10.1 does not infringe upon the Apple’s D’889 patent.
- September 21, 2012 – Apple files brief on non-jury claims. This brief focuses on Apple’s SEP and FRAND arguments, and contends that the court should find Samsung equitably estopped from asserting its FRAND encumbered patents (Filing #1981).
- September 21, 2012 – Samsung files its brief on non-jury claims. Samsung asserts that Apple’s patents are invalid because they are indefinite (Filing #1988).
- September 21, 2012 – Apple Files Judgment as a Matter of Law for the claims it lost at trial, primarily for the D’889 patent (Filing #1989). Apple seeks an injunction against the Galaxy Tab 10.1 and supplemental damages for its other patents.
- September 28, 2012 – CAFC remanded Apple’s preliminary injunction with respect to Design Patent D504, 889 entitled “Electronic Device” (Docket No. 12-1506) as it relates to the Galaxy Tab 10.1.
- October 1, 2012 – Court dissolves preliminary injunction against Samsung Galaxy Tab 10.1 (Filing #2011).
- October 2, 2012 – Samsung files for Judgment as a Matter of Law, or in the alternative, a New Trial (Filing #2013). Samsung argues patent invalidity, non-infringement, lack of willfulness, and interests of justice. Samsung also asserts juror misconduct as basis for the granting of a new trial.
- October 3, 2012 – Court of Appeals for the Federal Circuit dismisses Samsung’s appeal pursuant to Samsung’s motion to terminate appeal through voluntary dismissal with prejudice.
- October 18, 2012 – Samsung voluntarily dismisses its appeal at the Federal Circuit without prejudice. The court grants the motion.
- October 19, 2012 – Samsung files its brief in opposition to Apple’s Motion for Permanent Injunction (Filing #2054). Samsung contends that Apple has failed to show that it will suffer irreparable harm Samsung’s infringement of Apple’s patents, Apple has failed to show that monetary damages would be inadequate, and an injunction would be against the public interest because the harm to consumers is greater in quantum than the need to preserve the rights of patent holders.
- October 23, 2012 – Samsung notifies the court that, pursuant to an ex parte reexamation request, the United States Patent and Trademark Office has issued a non-final office action invalidating all claims of Apple’s patent number 7,469,381.
- December 17, 2012 – Court issues Order denying Apple’s Motion for Permanent Injunction (Filing #2197). The court reiterated its analysis that Apple failed to demonstrate irreparable harm, and commented that “a showing of harm is not enough.” The court also explained that Apple failed to demonstrate the “causal nexus” between consumer demand and the patented features. Concerning the design patent, the Order relies on the CAFC opinion in Apple-Samsung II in explaining “The Federal Circuit made clear in Apple II that customer demand for a general feature of the type covered by a patent was not sufficient; Apple must instead show that consumers buy the infringing product specifically because it is equipped with the patented feature.” The court also explains that Apple failed to show that any of the utility patents covered a feature that drove consumer demand. Judge Koh opines on the dilemma of issuing an injunction for patent covering a small component of a multi-component product, stating “Many factors go into making a product easy to use, but the features for which Apple is asserting patent protection are very specific… Apple’s evidence of a survey showing the importance of ease of use as a general matter,  does not establish that infringement of any of Apple’s patents caused any harm that Apple has experienced. To establish the required nexus, Apple must make a showing specific to each patented feature.” The court also commented on Apple’ evidence and made clear that singular comments from individual users and circumstantial evidence relating to alleged cloning does not amount to a showing of irreparable harm. Given this analysis, the court rules that the public interest does not favor an injunction: “while the public interest does favor the protection of patent rights, it would not be in the public interest to deprive consumers of phones that infringe limited non-core features, or to risk disruption to consumers without clear legal authority.”
- December 21, 2012 – Apple files Reply in support of motion for a permanent injunction and for damages enhancement (Filing #2206). Apple asserts that Samsung causes irreparable harm to Apple through infringement, that Apple’s designs drive the demand for their products, and that the court should enhance the damages award by $535 million.
- December 28, 2012 – Apple files Notice of Appeal to the Federal Circuit (Filing #2209). Appeal is docketed as 13-1129.
- January 16, 2013 – Apple files petition for an initial hearing en banc in its appeal of the final judgment in CAFC 13-1129 (Filing #29).
- January 29, 2013 – Judge Koh enters three judgments. Judge Koh orders that Apple is entitled to judgment as a matter of law that two of Samsung’s claims are invalid. Judge grants Samsung’s motion for an order determining that Samsung did not willfully infringe and that certain of Samsung’s infringement claims are not exhausted. Judge Koh denied both parties’ motions for a new trial. (Filings #2219, 2220, and 2221). Finally, Judge Koh denied Apple’s motion for damages enhancement.
- February 4, 2013 – CAFC denies Apple’s petition for an initial hearing en banc.
- February 12, 2013 – Apple files merits brief for its appeal to the Federal Circuit (Filing #35 in CAFC Docket 13-1129). Apple seeks injunctive relief and a determination that the district court erroneously applied the eBay injunction test and erred by applying the causal nexus test to Apple’s patented features and consumer demand.