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By Tony Dutra
May 18 — Samsung Electronics Co. asked the U.S. Supreme Court to vacate an injunction for infringing patented features of Apple Inc.'s iPhone and iPad.
The Federal Circuit's ruling for the injunction is likely irrelevant to Samsung's patent war with Apple Inc., since the court held two months later that Samsung wasn't liable for infringing any valid Apple utility patent. However, at issue here is how the Federal Circuit rules on injunctions for infringing patented features of multi-function devices like smartphones.
“The Federal Circuit's decision is not simply incorrect, but potentially harmful to patent law nationwide,” Samsung said in its May 13 petition.
Samsung asked the court to grant the petition and vacate the injunction ruling. It also asked the court to remand the appeal as moot in light of the non-infringement ruling.Source Material:
Cert. Petition:No. 15-1386 (May 13, 2016)
Opinion Below:809 F.3d 633 (Fed. Cir. Dec. 16, 2015)
This is the second petition involving the two firms, related to separate cases. The Supreme Court has already granted review of their fight over Apple's patents on smartphone and tablet designs, worth about $400 million in damages (55 PTD, 3/22/16). The court will hear arguments in that case in the fall, focused solely on the issue of how to calculate damages for design patent infringement.
The new petition involves Apple's patent claims on device functionality: making “quick links” such as from phone numbers, “slide to unlock” and a “word recommendations” feature. A jury found in favor of Apple on infringement and validity and awarded $120 million. But Judge Lucy H. Koh of the U.S. District Court for the Northern District of California denied Apple's injunction request. Before the case was wrapped up, Apple appealed the injunction ruling.
In a split decision, the U.S. Court of Appeals for the Federal Circuit reversed.
The majority held that Apple showed a causal relationship between the patented feature and downstream sales by showing that the patented features “were important to customers when they were examining their phone choices.”Apple Inc. v. Samsung Elecs. Co., 809 F.3d 633, 117 U.S.P.Q.2d 1469 (Fed. Cir. 2015) (242 PTD, 12/17/15). On remand, Koh issued an injunction.
Meanwhile, the district court finalized its opinion on post-verdict motions on the merits of validity and infringement, and Samsung appealed that judgment. Again, the appeals court reversed, now in favor of Samsung. Apple Inc. v. Samsung Elecs. Co., 816 F.3d 788, 118 U.S.P.Q.2d 1168 (Fed. Cir. 2016) (39 PTD, 2/29/16).
Samsung's petition indicates that it would be satisfied if the case simply ended now. But Apple is likely to file a petition asking the high court to overturn the merits decision. Samsung presented arguments for why it believed the injunction decision was wrong, in case the court decides to review Apple's appeal.
“In sum, the panel majority's decision plainly attempts to undermine eBay,” the petition said, referring to eBay Inc. v. MercExchange LLC, 547 U.S. 388, 78 U.S.P.Q.2d 1577 (2006) (94 PTD, 5/16/06).
In eBay, the Supreme Court criticized the Federal Circuit for presuming all patent infringement judgments should lead to injunctions. It set out a four-factor test used in other areas of law, including the requirement to show “irreparable harm.”
Samsung argues that causation is key to showing irreparable harm, while the Federal Circuit majority opinion was satisfied by the existence of “some connection” between infringement of the three patented features and Apple's lost sales. Samsung specifically called out Judge Kimberly A. Moore, author of the opinion, for saying during oral argument, “I think eBay was wrongly decided by the Supreme Court. I think it's wrong. I think patentees should get injunctions.”
“Given the conflict with eBay and the exceptional importance of these issues, the decision should not be allowed to stand simply because the controversy underlying it will very likely become moot before this Court can act on this petition,” Samsung said.
Quinn Emanuel Urquhart & Sullivan LLP filed the petition. A response is due June 13. Wilmer Cutler Pickering Hale & Dorr LLP represented Apple before the Federal Circuit.
Apple's petition contesting the Federal Circuit's merits decision is due May 26. Counsel did not respond immediately to a request for whether Apple was planning to file or had any comment on Samsung's filing.
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Text of petition at http://src.bna.com/e6A
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