The “Colorable Differences” Road to More Litigation in Apple v. Samsung

Apple“Hooray!” you MIGHT have said when the U.S. District Court for the Northern District of California issued a “permanent” injunction Jan. 18 in Apple v. Samsung. “This (the $120 million patent infringement case, not the $1 billion one) is finally over.” Not so fast.

The court’s ban has multiple parts related to three “Infringing Features”:

  • quick links
  • “slide-to-unlock”
  • autocorrect/word recommendations
  • and “any feature not more than colorably different therefrom.”

The case isn’t over because each party will attach different meaning to the term “colorably different.” That’s not unusual; Federal Circuit law on contempt of injunctions developed by resolving disagreements on that term.  The problem in this particular case is that Judge Lucy H. Koh’s order contains an inner conflict that invites disagreement.

Samsung has already announced that it designed around the patent claims underlying those features, but the order allows “design-around” only for the purposes of developing, testing and demonstrating software or code. 

Conversely, the injunction prohibits the sale of any software or code “capable of implementing” a feature—unless it is colorably different—and doesn’t even allow “advertising, marketing, demonstrating, or otherwise promoting” such a feature.

So how can a Samsung smartphone include a slide-to-unlock or word-recommendation feature, even with design-around code, without violating the sale/advertising parts of the injunction?

It would seem tricky.

For instance, the court found that Samsung infringed claim 18 of the word recommendations patent, which covers inserting the recommended word into a text message “if the user activates a key on the keyboard associated with a delimiter.” So even if Samsung’s design-around solution finds a different trigger for inserting a recommended word—a non-infringement condition—it would still be selling a “word recommendation” feature.

Then there are ambiguities in the order concerning infringed claim 8 of the slide-to-unlock patent. Will Samsung abandon slide-to-unlock or find a way to implement it in a non-infringing way? What about claim 1 of the quick links patent?

As this plays out, Samsung will, no doubt, say its implementation is colorably different—as allowed in terms of what it can develop as a design-around—and Appel will push back, saying it can’t sell what it developed because it’s NOT colorably different from the infringing feature.

Looks like a war on what colorably different means is inevitable. Unless Judge Koh sharpens her pencil.