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