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Apple, Inc. v. Samsung Electronics Co., Ltd.
678 F.3d 1314
| Fed. Cir. | 2012
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Background

  • Apple owns D'087 and D'677 design patents and D'889 tablet design, plus the '381 utility patent on bounce-back; Apple sues Samsung for infringement of these patents.
  • Samsung smartphones Galaxy S 4G and Infuse 4G, and Galaxy Tab 10.1 are accused devices; Apple seeks a preliminary injunction blocking importation and sale.
  • District court denies preliminary injunction for all four patents after applying the four-factor test (likelihood of success, irreparable harm, balance of hardships, public interest).
  • D'087 front-face design deemed likely anticipated by the '638 patent; district court refused to consider other views, affecting validity analysis; on appeal, the court repudiates this scope limitation.
  • D'677 findings include likely infringement and potential irreparable harm from market effects, but require a nexus between alleged harm and infringement; district court found no such nexus.
  • Tablet case (D'889) found irreparable harm but substantial questions about validity; court remanded for further proceedings on validity and related balance/public interest factors.

Issues

Issue Plaintiff's Argument Defendant's Argument Held
Irreparable harm nexus for design patents Apple argues no nexus requirement; infringement alone suffices for irreparable harm. Samsung argues nexus is required to show irreparable harm. Nexus required; irreparable harm cannot be shown from mere lost sales.
Validity analysis for D'087 based on full scope of claim D'087 should be analyzed with its full side-view scope, not just the front view. Front view suffices for validity. District court erred by ignoring the partial side-view; D'087 not anticipated as a matter of law.
Irreparable harm for D'677 and overall injunction Apple's design harms include erosion of distinctiveness and brand, plus market-share effects. Brand dilution and market-share loss are insufficient without concrete nexus. Appellate court affirms denial of injunction for D'677 due to lack of irreparable harm nexus.
Remand or entry of injunction for D'889 tablet D'889 likely valid and infringed; irreparable harm shown; injunction appropriate. Validity in doubt; balance/public interest need full district-court weighing. Majority remands for further district-court proceedings on D'889; dissent would enter injunction with bond.
Injunction as to D'381 bounce-back patent Bounce-back feature drives demand; irreparable harm shown. No clear nexus between market harm and the bounce-back feature. Injunction denied due to lack of sufficient nexus; no irreparable harm shown.

Key Cases Cited

  • Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (U.S. 2008) (four-factor test for preliminary injunctions; likelihood of irreparable harm required)
  • eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (U.S. 2006) (remanded to apply four-factor framework in first instance)
  • Acumed LLC v. Stryker Corp., 483 F.3d 800 (Fed. Cir. 2007) (remand when district court applied incorrect preliminary-injunction framework)
  • Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372 (Fed. Cir. 2009) (framework for determining obviousness in design patents requires primary reference)
  • i4i Limited Partnership v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) (distinguishes need for nexus between alleged infringing use and market harm)
  • Nutrition 21 v. United States, 930 F.2d 867 (Fed. Cir. 1991) (delay can undermine claims of irreparable harm)
  • O'Shea v. Littleton, 414 U.S. 488 (U.S. 1974) (irreparable harm requires likelihood of substantial and immediate injury)
  • Weinberger v. Romero-Barcelo, 456 U.S. 305 (U.S. 1982) (injunctions must not be issued for merely trifling irreparable harm)
  • In re Rosen, 673 F.2d 391 (CCPA 1982) (primary reference must give the same visual impression in design-patent obviousness)
  • In re Borden, 90 F.3d 1570 (Fed. Cir. 1996) (modifications to a primary reference must be related to appearance)
Read the full case

Case Details

Case Name: Apple, Inc. v. Samsung Electronics Co., Ltd.
Court Name: Court of Appeals for the Federal Circuit
Date Published: May 14, 2012
Citation: 678 F.3d 1314
Docket Number: 2012-1105
Court Abbreviation: Fed. Cir.