Apple Inc. v. Samsung Electronics Co., Ltd.
735 F.3d 1352
| Fed. Cir. | 2013Background
- Apple sued Samsung in 2011 alleging infringement of six Apple patents and trade dress dilution; trial from July 2012 with a jury verdict largely in Apple’s favor.
- Jury found Samsung infringed 26 Samsung smartphones/tablets and diluted Apple’s trade dress; damages awarded exceeded $1 billion.
- District court later narrowed damages and scheduled a partial new trial on damages but upheld liability findings.
- Apple sought a permanent injunction against Samsung’s infringing devices and against trade-dress dilution; district court denied injunctive relief on all claims.
- This appeal concerns whether permanent injunctions should issue for design patents, utility patents, and trade-dress dilution, with remand for utility patents.
- The court affirms denial of injunctive relief for design patents and trade dress, but vacates denial and remands for further proceedings on the utility patents.
- The opinion discusses the proper standards for irreparable harm, adequacy of legal remedies, balance of hardships, and public interest under eBay and related precedents.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether irreparable harm supports a permanent injunction for Samsung’s patent infringement | Apple argues causal nexus shows irreparable harm for utility patents and design patents | Samsung contends lack of nexus defeats irreparable harm for both | Irreparable harm found for design patents insufficient; remand for utility patents on nexus and evidence |
| Whether a causal nexus is required in permanent injunction analysis | Apple maintains nexus is necessary to prove irreparable harm | Samsung asserts nexus not required beyond traditional four-factor test | Causal nexus required as part of irreparable harm, and Apple’s nexus evidence must be re-evaluated for utility patents |
| Whether Dr. Hauser’s price-premium survey supports nexus for utility patents | Hauser survey shows willingness to pay for patented features | Survey lacks measurement of feature-driven demand in a multi-feature product | District court erred byexcluding Hauser survey; remand to assess nexus with additional evidence |
| Whether damages alone can remedy harms from Samsung’s infringement of utility patents | monetary damages may be insufficient due to lost downstream sales | Samsung’s licensing history suggests damages may suffice | District court erred; remand to reassess adequacy of damages considering product demand drivers and licensing context |
| Whether injunction for trade-dress dilution was proper given cessation of dilution | FTDA injunction should issue regardless of ongoing dilution risk | No ongoing dilution; injunction not warranted | affirmed denial of injunction for trade-dress dilution given Samsung’s cessation of diluting products |
Key Cases Cited
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (U.S. 2006) (four-factor test for permanent injunction; injunction is drastic remedy)
- Apple Inc. v. Samsung Elecs. Co., 678 F.3d 1314 (Fed. Cir. 2012) (Apple I; nexus and irreparable harm in preliminary injunction context; some relevant principles carry to permanent injunction)
- Apple Inc. v. Samsung Elecs. Co., 695 F.3d 1370 (Fed. Cir. 2012) (Apple II; nexus concept for irreparable harm; causation tied to patented feature’s impact on demand)
- Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142 (Fed. Cir. 2011) (no presumption of irreparable harm from mere infringement finding)
- Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683 (Fed. Cir. 2008) (design-wins / market dynamics differ from consumer goods)
- Acumed LLC v. Stryker Corp., 551 F.3d 1323 (Fed. Cir. 2008) (past licensing evidence considered in damages inquiry)
- Presidio Components, Inc. v. American Technical Ceramics Corp., 702 F.3d 1351 (Fed. Cir. 2012) (post-eBay permanent injunction considerations)
- Douglas Dynamics, LLC v. Buyers Products Co., 717 F.3d 1336 (Fed. Cir. 2013) (injunction analysis in complex markets; irreparable harm)
- Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132 (9th Cir. 1986) (non-ongoing dilution and reinvigorating effects of cessation on injunctive relief)
- Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969) (voluntary cessation considerations in injunction rulings)