Apple has now filed a normal appeal, after being turned down for en banc review by the entire Federal Circuit, regarding Judge Lucy Koh's refusal to order an injunction against Samsung in the first Apple v. Samsung case, no. 11-CV-1846. That's the one where Apple got a jury to order a billion plus in damages. Although I doubt that figure will stand. Anyway, Apple wants an injunction too, and here's the brief [PDF] asking for it. The order [PDF] it's appealing is found
here as text. And I'll work on a text version for you of this appeal brief next.
Meanwhile, here's a taste, the issue as Apple sees it and the Introduction:STATEMENT OF ISSUE
Whether the district court abused its discretion in denying Apple’s motion for a permanent injunction.
INTRODUCTION
Apple brought this lawsuit to halt Samsung’s deliberate copying of Apple’s innovative iPhone and iPad products. After a jury found that Samsung infringed numerous Apple patents and diluted Apple’s protected trade dress, Apple sought a permanent injunction. Apple proved to the district court’s satisfaction that: (1) “Apple has continued to lose market share to Samsung,” which “can support a finding of irreparable harm” (A5); (2) Samsung’s actions took market share from Apple with respect to not only smartphones and tablets, but also substantial downstream sales of other products, such that Apple “may not be fully compensated by the damages award” (A16); (3) Samsung’s arguments concerning the balance of hardships were unavailing because Samsung claimed to have stopped selling or to have developed design-arounds for the infringing products and “cannot now turn around and claim that [it] will be burdened by an injunction that prevents sale of these same products” (A18-19); and (4) “the public interest does favor the enforcement of patent rights” (A20).
Under eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), these findings should have led to a permanent injunction against Apple’s adjudicated infringing competitor. Nevertheless, the district court denied relief because it believed that Apple was required to show “not just that there is demand for the patented features” connecting Apple’s irreparable harm to Samsung’s infringement, “but that the patented features are important drivers of consumer demand for the infringing products.” A12. The district court stated that, “[w]ithout a causal nexus, [the court] cannot conclude that the irreparable harm supports entry of an injunction.” Id.
This additional “causal nexus” requirement—particularly when applied as rigidly as the district court did here—is contrary to the Supreme Court’s and this Court’s permanent injunction precedents. Unless corrected, the district court’s
ruling that a strong showing on the four eBay factors is defeated by a supposed lack of “causal nexus” will create a bright-line rule that precludes injunctive relief even “in traditional cases, such as this, where the patentee and adjudged infringer both practice the patented technology.” Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 1150 (Fed. Cir. 2011). This Court should correct that course by reversing the district court’s order.
Apple repeatedly calls Samsung's infringement willful. But the judge on the case ruled that this was not the case regarding the patents. Samsung had the belief that Apple's patents were invalid, due to prior art. The jury found willfulness regarding trade dress, but Judge Koh wrote that Apple had not "not clearly shown how it has in fact been undercompensated for the losses it has suffered due to Samsung’s dilution of its trade dress." A billion plus dollars ought to cover that. Apple, though, says it lost business, and it wants to prevent future loss. Plus, the judge believed that Apple could license the patents going forward, but Apple asserts that it never would license its design patents to Samsung, has rarely licensed them to anyone, and even its utility patents it wouldn't want to licnese to Samsung without limitations. So it believes the judge erred in believing that mere money could make Apple whole. It doesn't wish to license those design patents to Samsung, not for love or money. And it has never licensed its trade dress to anyone and doesn't want to:
The unrestricted compulsory license to Apple's patents that
Samsung would enjoy absent an injunction is entirely inconsistent with Apple's
"rare" and limited licensing practice for patents covering its unique user
experience.
Nor was the district court correct to conclude that licenses of certain Apple
utility patents to IBM, Nokia, and HTC suggested Apple's willingness to license
its asserted patents to Samsung for use in competing products. Those agreements
provide no basis for concluding that Apple would ever be willing to license its
design patents to Samsung. Indeed, Apple's licenses to IBM, Nokia, and HTC do
not even include any such design patents. A4308(¶1.10) (Nokia license limiting
"Licensed Apple Patents" to certain specific utility patents and patents essential to
comply with industry standards); A4443 (IBM license excluding all Apple design
patents except for fonts); A4783(¶1.11) (HTC license excluding Apple's design
patents from "Covered Patents").
The IBM, Nokia, and HTC licenses also do not suggest any willingness on
Apple's part to license its asserted utility patents--without restriction--to a direct
competitor like Samsung. This is, in my view, Apple's strongest argument. But this is what is driving Apple:A permanent injunction is the only way to vindicate the property rights that Congress and the Patent Office conferred on Apple against the adjudicated trespass by its direct competitor. Vindication is a hard thing to try for in a court of law. I used to work for a lawyer who would never take a client that mentioned wanting it. Because it's an unrealistic goal, most of the time. Money is what court's can give you. And Apple got that at the trial. Vindication is another beast altogether. The problem for Apple is that it's asking the court to put an injunction in place against products that Samsung no longer sells in the US or for which it has come up with workarounds. Here's how Apple answers that: At the same time, Samsung's claim that it has discontinued sales of its
infringing products or designed around Apple's patents in no way diminishes
Apple's need for injunctive relief. Because Samsung frequently brings new
products to market (A20880-20881(880:13-881:7); A23037(3037:2-4)), an
injunction is essential to providing Apple the swift relief needed to combat any
future infringement by Samsung through products not more than colorably
different from those already found to infringe. Apple should not have to bear the
risk that Samsung's supposed design-arounds are insufficient or that Samsung will
not again resume its infringement.
Absent a permanent injunction, Apple would be significantly harmed by the
risk of Samsung's continued infringement. First, the parties have product lines of
vastly different scope. Unlike Apple, which launches only a small number of new
products each year and sells only two or three smartphone products at any given
time, Samsung launches 50 new smartphones each year and has over 100 products
available in the United States at any given time. A20880-20881(880:13-881:7);
A23037(3037:2-4) ("Samsung currently has 103 models in the United States.
They come out with more than one a week."). Even if the infringing products at
issue here were enjoined, Samsung would still have numerous products on the
market. By contrast, Apple's much narrower product line must compete with any
ongoing infringement by Samsung, which as explained above (pp. 17-19) has
already cost Apple significant market share. It wants an injunction just in case?
Causal nexus means that people are buying your product because they want the patented feature, and Judge Koh wrote about Apple's design patents this:
However, Apple’s evidence does not establish that any of Apple’s three design patents covers a particular feature that actually drives consumer demand. ...First, though more specific than the general “design” allegations, they are still not specific enough to clearly identify actual patented designs. Instead, they refer to such isolated characteristics as glossiness, reinforced glass, black color, metal edges, and reflective screen. Id. Apple does not have a patent on, for example, glossiness, or on black color. And then on the rest, the utility patents, she ruled:
The phones at issue in this case contain a broad range of features, only a small fraction of which are covered by Apple’s patents. Though Apple does have some interest in retaining certain features as exclusive to Apple, it does not follow that entire products must be forever banned from the market because they incorporate, among their myriad features, a few narrow protected functions. Especially given the lack of causal nexus, the fact that none of the patented features is core to the functionality of the accused products makes an injunction particularly inappropriate here....
Weighing all of the factors, the Court concludes that the principles of equity do not support the issuance of an injunction here. First and most importantly, Apple has not been able to link the harms it has suffered to Samsung’s infringement of any of Apple’s six utility and design patents that the jury found infringed by Samsung products in this case. It wouldn't be in the public interest, she ruled, to ban entire products due to some minor infringing features nobody even is looking for when buying the products particularly when there are so many other features that are not infringing that the public wants to buy:
It would not be equitable to deprive consumers of Samsung’s infringing phones when, as explained above, only limited features of the phones have been found to infringe any of Apple’s intellectual property. Though the phones do contain infringing features, they contain a far greater number of non-infringing features to which consumers would no longer have access if this Court were to issue an injunction. The public interest does not support removing phones from the market when the infringing components constitute such limited parts of complex, multi-featured products. Apple on the other hand argues that people really do buy their products for their design.
Update: If you thought Oracle had a lot of lawyers for its appeal, wait until you see how many Apple has on board. 62 lawyers are listed. Twenty from Morrison & Foerster, 34 from Wilmer Cutler, 3 from Taylor, 3 from Cooley, and 2 from Bridges. So. Much. Money. Out. The. Window. And you know what happens when you have that many lawyers? They think up more ways to try tricky, inventive new ways to try to get you what you want. Even if you shouldn't want it. Even when you could be spending that money on innovative new products. Because that is what lawyers do. They are wired to try to win. So they tell you to keep going. Just a little bit more and victory will be yours.
Sigh. Sadly Apple doesn't listen to me. But it breaks my heart, to tell you the truth, to see this happening. Count them for yourselves. I'm cross-eyed from doing the text, and I might have missed one or double counted one. Does it matter? It's too many lawyers in any rational system. Here's what Apple wants. An injunction against Samsung. It doesn't like the causal nexus requirement, but if the panel agrees with the district court, Apple wants an en banc review by the entire court. Yes. Still on that. And why wait to ask the way you normally do, after you lose? Maybe to let the panel know that Apple isn't going to be satisfied with their decision unless it matches what Apple wants.
Update 2: Matt Rizzolo at The Essential Patent Blog highlights an interesting subplot: Because the causal nexus requirement cited by the district court came in two Federal Circuit cases evaluating preliminary injunctions, Apple presents an interesting argument where it stresses the difference between preliminary and permanent injunctions. Apple argues that courts have greater latitude and discretion in tailoring permanent injunctions, in order to better balance the patentee’s right to exclude with the injunction’s effect on the infringer (and the public). Thus, according to Apple, there’s less (or no) need to show a causal nexus for permanent injunctions — according to Apple, it’s never been required by the Federal Circuit or Supreme Court. Given that both of these courts have applied basically the same standard for issuing preliminary and permanent injunctions (aside from the requirement of a likelihood of success on the merits for preliminary injunctions), however, this may be an uphill battle. But Apple could have a better chance with its fallback arguments that it did in fact satisfy the causal nexus requirement, particularly for its design patents (and this has the added bonus for the Federal Circuit of continuing to be able to hold patentees to the higher causal nexus standard in the future).
When Samsung responds, we can expect it to say that the causal nexus requirement is nothing new, even for permanent injunctions, and that of course Apple would need to show a link between infringement and irreparable harm — if using the infringing feature or design isn’t irreparably harming Apple, it makes no more sense to enjoin Samsung from implementing these features than it does to prevent Samsung from running commercials or locating an office in California. In Samsung’s eyes, it would all be the same — without some connection, there’s no cause and effect justifying an injunction.
It will be very interesting to see how the Federal Circuit comes out here, both substantively and procedurally. Apple has urged the court to take the case up en banc if necessary, which the court may do in order to provide some clarity regarding the causal nexus requirement. Lastly, let’s tie this back to the blog. If the causal nexus requirement stands, it will be very difficult for standard-essential patent owners — even if they have never promised to license their SEPs on RAND terms — to ever be able to get an injunction in U.S. courts.
Here it is as text:
*******************
2013-1129
___________________
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
APPLE INC.,
Plaintiff-Appellant,
v.
SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC., and
SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
Defendants-Appellees.
_________________
Appeal from the United States District Court for the
Northern District of California in case no. 11-CV-1846, Judge Lucy H. Koh.
_____________
BRIEF FOR PLAINTIFF-APPELLANT APPLE INC.
_______________
MICHAEL A. JACOBS
RACHEL KREVANS
ERIK J. OLSON
RICHARD S.J. HUNG
GRANT L. KIM
MORRISON & FOERSTER LLP
[address, phone]
WILLIAM F. LEE
MARK C. FLEMING
JOSEPH J. MUELLER
LAUREN B. FLETCHER
WILMER CUTLER PICKERING
HALE AND DORR LLP
[address, phone]
JONATHAN G. CEDARBAUM
WILMER CUTLER PICKERING
HALE AND DORR LLP
[address, phone]
Counsel for Plaintiff-Appellant Apple Inc.
February 12, 2013
CERTIFICATE OF INTEREST
Pursuant to Federal Circuit Rule 47.4, counsel of record for Plaintiff-
Appellant Apple Inc. certifies as follows:
1. The full name of every party represented by us is:
Apple Inc.
2. The names of the real parties in interest represented by us are:
Not applicable
3. All parent corporations and any publicly held companies that own 10
percent or more of the stock of the parties represented by us are:
None.
4. The names of all law firms and the partners or associates that
appeared for the parties represented by us in the trial court, or are expected to
appear in this Court, are:
Morrison & Foerster LLP:
Deok K.M. Ahn | Harold J. McElhinny |
Jason R. Bartlett | Andrew E. Monach |
Charles S. Barquist | Erik J. Olson |
Francis Chung-Hoi Ho | Taryn Spelliscy Rawson |
Richard S.J. Hung | Christopher Leonard Robinson |
Michael A. Jacobs | Jennifer L. Taylor |
Esther Kim | Alison M. Tucher |
Grant L. Kim | Patrick J. Zhang |
Rachel Krevans | Nathan Brian Sabri |
Marc J. Pernick | Ruchika Agrawal |
i
Wilmer Cutler Pickering Hale and Dorr LLP:
David B. Bassett | William F. Lee |
James C. Burling | Andrew L. Liao |
Jonathan G. Cedarbaum | Leah Litman |
Robert D. Cultice | Joseph J. Mueller |
Andrew J. Danford | Michael Saji |
Michael A. Diener | Brian Seeve |
Christine E. Duh | Mark D. Selwyn |
Mark D. Flanagan | Ali H. Shah |
Mark C. Fleming | Victor F. Souto |
Lauren B. Fletcher | James L. Quarles III |
Richard Goldenberg | Timothy D. Syrett |
Robert J. Gunther, Jr. | Robert Tannenbaum |
Liv L. Herriot | Louis W. Tompros |
Michael R. Heyison | Samuel Calvin Walden |
Peter J. Kolovos | Rachel L. Weiner |
Derek Lam | Emily R. Whelan |
Brian Larivee | Jeremy Winer |
Taylor & Company Law Offices LLP:
Joshua Ryan Benson Stephen E. Taylor
Stephen M. Bundy
Cooley LLP:
Benjamin George Damstedt
Timothy S. Teter
Jesse L. Dyer
ii
Bridges & Mavrakakis LLP:
Kenneth H. Bridges Michael T. Pieja
Dated: February 12, 2013
Respectfully submitted,
/s/ William F. Lee
WILLIAM F. LEE
WILMER CUTLER PICKERING
HALE AND DORR LLP
[address, phone]
Attorney for Plaintiff-Appellant Apple Inc.
iii
TABLE OF CONTENTS
Page
CERTIFICATE OF INTEREST ..........................................i
TABLE OF AUTHORITIES .......................................... vii
STATEMENT OF RELATED CASES ................................... 1
JURISDICTIONAL STATEMENT ..................................... 2
STATEMENT OF ISSUE....................................... 2
INTRODUCTION ................................................ 2
STATEMENT OF CASE ........................................... 4
STATEMENT OF FACTS ........................................ 5
A. Apple's iPhone And iPad Are Revolutionary Products Whose
Success Is Built On Their Unique Design And User Experience ......... 5
1. Apple's design patents and iPhone trade dress ........................... 7
2. Apple's utility patents ....................................... 10
B. Samsung Deliberately Copied Apple's iPhone And iPad To
Compete Directly With Apple.............................................. 12
C. Through Its Infringement And Dilution, Samsung Took
Significant Market Share From Apple ..................................... 17
D. Apple Lost Substantial Downstream Sales Due To Samsung's
Infringement And Dilution .............................................. 19
E. Design And Ease Of Use Are Important To Smartphone
Purchasers ............................. 20
F. The District Court's Decision .............................. 23
iv
SUMMARY OF ARGUMENT ......................................... 27
STANDARD OF REVIEW ................................... 29
ARGUMENT .............................................. 29
I. THE EQUITIES STRONGLY FAVOR GRANTING INJUNCTIVE RELIEF TO BAR
FURTHER PATENT INFRINGEMENT BY A DIRECT COMPETITOR....................... 30
A. Apple Is Being Irreparably Harmed By The Threat Of Its Direct
Competitor's Continued Infringement ..................................... 32
1. Apple and Samsung compete directly for first-time
smartphone buyers ............................... 32
2. Apple has lost market share due to its direct competitor's
adjudicated infringement ........................................ 33
3. Apple has lost downstream sales due to its direct
competitor's adjudicated infringement .............................. 34
B. Money Damages Are Inadequate To Remedy Apple's Loss Of
Market Share And Downstream Sales To Its Direct Competitor ....... 36
C. The Balance Of Hardships Strongly Favors Enjoining Further
Infringement From Apple's Direct Competitor .................................. 41
D. An Injunction Would Promote The Public Interest In Patent
Enforcement Against A Direct Competitor.................................. 44
II. THE DISTRICT COURT ERRONEOUSLY DENIED APPLE A PERMANENT
INJUNCTION DUE TO AN ALLEGED LACK OF A CAUSAL NEXUS .................... 47
A. The District Court's Adoption Of A Causal Nexus Requirement
In The Permanent Injunction Context Is Contrary To The Patent
Act And The Decisions Of The Supreme Court And This Court ....... 48
B. Importing A Causal Nexus Requirement For Preliminary
Injunctions Into The Permanent Injunction Context Is Unjustified
And Unnecessary ........................................... 51
v
C. The District Court's Rigid Application Of The Causal Nexus
Requirement Is Contrary To Principles Of Equity.............................. 59
D. In The Alternative, Any Reasonable Causal Nexus Requirement
Is Satisfied By Apple's Evidence That Product Design And User
Interface Are Important To Consumers .................................. 61
1. The patented designs drive consumer demand ......................... 62
2. The patented user interface features are important drivers
of consumer demand ......................................... 64
E. If The Panel Believes That Apple I And Apple IIPrevent
Reversal, Hearing En Banc Is Appropriate .............................. 66
III. THE DISTRICT COURT ERRONEOUSLY DENIED APPLE AN INJUNCTION
AGAINST SAMSUNG'S TRADE DRESS DILUTION................................. 68
CONCLUSION ................................ 71
CERTIFICATE OF SERVICE
CERTIFICATE OF COMPLIANCE
vi
TABLE OF AUTHORITIES
Page(s)
CASES
Abbott Laboratories v. Sandoz, Inc.,
544 F.3d 1341 (Fed. Cir. 2008) .......................................... 44
ActiveVideo Networks, Inc. v. Verizon Communications, Inc.,
694 F.3d 1312 (Fed. Cir. 2012) ................................. 37, 48, 52
Acumed LLC v. Stryker Corp.,
551 F.3d 1323 (Fed. Cir. 2008) ................................. 31, 34, 36, 37, 40, 45, 50
Allee v. Medrano,
416 U.S. 802 (1974) ............................................... 69
Apple, Inc. v. Samsung Electronics Co.,
678 F.3d 1314 (Fed. Cir. 2012) ............................. 1, 26, 27, 31, 37, 60, 61
Apple Inc. v. Samsung Electronics Co.,
695 F.3d 1370 (Fed. Cir. 2012) ........................................passim
Broadcom Corp. v. Qualcomm Inc.,
543 F.3d 683 (Fed. Cir. 2008) ................................. 35, 36, 37, 40, 49, 50, 51, 57
eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388 (2006) .......................................passim
Edwards Lifesciences AG v. CoreValve, Inc.,
699 F.3d 1305 (Fed. Cir. 2012) .............................. 52, 67
Garretson v. Clark,
111 U.S. 120 (1884) ........................................ 58
Grupo Mexicano de Desarrollo S.A. v. Alliance Bond Fund, Inc.,
527 U.S. 308 (1999) ..................................... 51
Gucci America, Inc. v. Guess?, Inc.,
868 F. Supp. 2d 207 (S.D.N.Y. 2012).............................. 69
vii
i4i Ltd. Partnership v. Microsoft Corp.,
598 F.3d 831 (Fed. Cir. 2010) ........................... 36, 44, 48, 53
International Rectifier Corp. v. IXYS Corp.,
383 F.3d 1312 (Fed. Cir. 2004) .............................. 46
Jeneric/Pentron, Inc. v. Dillon Co.,
205 F.3d 1377 (Fed. Cir. 2000) ................................ 53
Kewanee Oil Co. v. Bicron Corp.,
415 U.S. 470 (1974) ............................................ 44
LaserDynamics, Inc. v. Quanta Computer, Inc.,
694 F.3d 51 (Fed. Cir. 2012) ................................ 40, 58, 59
Lucent Technologies, Inc. v. Gateway, Inc.,
580 F.3d 1301 (Fed. Cir. 2009) ..................................... 58
Merial Ltd. v. Cipla Ltd.,
681 F.3d 1283 (Fed. Cir. 2012) ........................ 34
Momenta Pharmaceuticals, Inc. v. Amphastar Pharmaceuticals, Inc.,
686 F.3d 1348 (Fed. Cir. 2012) ........................ 52
O2 Micro International Ltd. v. Beyond Innovation Technology Co.,
No. 2011-1054, 2011 WL 5601460 (Fed. Cir. Nov. 18, 2011)
(nonprecedential).................................... 39, 40
OBH, Inc. v. Spotlight Magazine, Inc.,
86 F. Supp. 2d 176 (W.D.N.Y. 2000) ................................... 69
Polo Fashions, Inc. v. Dick Bruhn, Inc.,
793 F.2d 1132 (9th Cir. 1986) ............................. 69
Presidio Components, Inc. v. American Technical Ceramics Corp.,
702 F.3d 1351 (Fed. Cir. 2012) ........................ 31, 34, 48, 59
Robert Bosch LLC v. Pylon Manufacturing Corp.,
659 F.3d 1142 (Fed. Cir. 2011) ........................passim
viii
Sanofi-Synthelabo v. Apotex, Inc.,
470 F.3d 1368 (Fed. Cir. 2006) ........................... 25, 31, 44
TiVo Inc. v. EchoStar Corp.,
646 F.3d 869 (Fed. Cir. 2011) (en banc) .............................. 46
Uniloc USA, Inc. v. Microsoft Corp.,
632 F.3d 1292 (Fed. Cir. 2011) ................................... 58
Verizon Services Corp. v. Vonage Holding Corp.,
503 F.3d 1295 (Fed. Cir. 2007) .................................. 31, 35, 57
Voda v. Cordis Corp.,
536 F.3d 1311 (Fed. Cir. 2008) ...................................... 37
Warner Chilcott Labs Ireland Ltd. v. Mylan Pharmaceuticals Inc.,
451 F. App'x 935 (Fed. Cir. 2011) .................................. 51
Whitserve, LLC v. Computer Packages, Inc.,
694 F.3d 10 (Fed. Cir. 2012) ............................... 53
Winter v. Natural Resources Defense Council, Inc.,
555 U.S. 7 (2008) ...................................... 51
STATUTES
15 U.S.C.
§ 1121 ................................................... 2
§ 1125 ............................................... 68, 69, 70
28 U.S.C.
§ 1292 .................................................2, 5
§ 1331 ................................................. 2
§ 1338............................................. 2
§ 1367................................................. 2
35 U.S.C.
§ 154 ................................................. 52
§ 283 ................................................. 48
ix
OTHER AUTHORITIES
Shaver, Illuminating Innovation, 69 Wash. & Lee L. Rev. 1891 (1943) ................... 56
x
STATEMENT OF RELATED CASES
This appeal arises from the district court's order denying Apple a permanent
injunction following a jury's verdict that Samsung infringed six Apple patents and
diluted Apple's iPhone trade dress. A1-23. Most post-verdict motions have been
resolved, but Samsung's motion for a new trial on damages remains pending
before the district court. Final judgment has not yet been entered.
This Court previously resolved an appeal in this case arising from the district
court's denial of Apple's motion for a preliminary injunction. Apple, Inc. v.
Samsung Elecs. Co., No. 2012-1105, 678 F.3d 1314 (Fed. Cir. May 14, 2012)
(Bryson, J., joined by Prost, J.; opinion concurring in part and dissenting in part by
O'Malley, J.), pet. for reh'g denied (June 19, 2012). On remand from that appeal,
the district court entered a preliminary injunction from which Samsung appealed
(No. 12-1506). That appeal was voluntarily dismissed after the jury's verdict.
This Court previously resolved an appeal in a separate case involving the
same parties and some of the same accused products arising from the district
court's grant of Apple's motion for a preliminary injunction. Apple Inc. v.
Samsung Elecs. Co., No. 2012-1507, 695 F.3d 1370 (Fed. Cir. Oct. 11, 2012)
(Prost, J., joined by Moore & Reyna, JJ.), pet. for reh'g denied (Jan. 31, 2013).
Apple and Samsung have also appealed from several collateral orders in this
case in which the district court denied Apple's and Samsung's requests to seal
-1-
certain confidential record material. Apple Inc. v. Samsung Elecs. Co., Nos. 2012-1600, 2012-1606, 2013-1146 (Fed. Cir.). This Court has scheduled argument in
those appeals for March 26, 2013.
On January 16, 2013, Apple filed a petition for initial hearing en banc in this
appeal, which was denied on February 4, 2013.
JURISDICTIONAL STATEMENT
The district court had jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C.
§§ 1331, 1338, and 1367. The district court denied Apple's motion for a
permanent injunction on December 17, 2012, and Apple timely appealed. A4923.
This Court has jurisdiction under 28 U.S.C. § 1292(c)(1).
STATEMENT OF ISSUE
Whether the district court abused its discretion in denying Apple's motion
for a permanent injunction.
INTRODUCTION
Apple brought this lawsuit to halt Samsung's deliberate copying of Apple's
innovative iPhone and iPad products. After a jury found that Samsung infringed
numerous Apple patents and diluted Apple's protected trade dress, Apple sought a
permanent injunction. Apple proved to the district court's satisfaction that: (1)
"Apple has continued to lose market share to Samsung," which "can support a
finding of irreparable harm" (A5); (2) Samsung's actions took market share from
-2-
Apple with respect to not only smartphones and tablets, but also substantial
downstream sales of other products, such that Apple "may not be fully
compensated by the damages award" (A16); (3) Samsung's arguments concerning
the balance of hardships were unavailing because Samsung claimed to have
stopped selling or to have developed design-arounds for the infringing products
and "cannot now turn around and claim that [it] will be burdened by an injunction
that prevents sale of these same products" (A18-19); and (4) "the public interest
does favor the enforcement of patent rights" (A20).
Under eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), these
findings should have led to a permanent injunction against Apple's adjudicated
infringing competitor. Nevertheless, the district court denied relief because it
believed that Apple was required to show "not just that there is demand for the
patented features" connecting Apple's irreparable harm to Samsung's
infringement, "but that the patented features are important drivers of consumer
demand for the infringing products." A12. The district court stated that,
"[w]ithout a causal nexus, [the court] cannot conclude that the irreparable harm
supports entry of an injunction." Id.
This additional "causal nexus" requirement--particularly when applied as
rigidly as the district court did here--is contrary to the Supreme Court's and this
Court's permanent injunction precedents. Unless corrected, the district court's
-3-
ruling that a strong showing on the four eBay factors is defeated by a supposed
lack of "causal nexus" will create a bright-line rule that precludes injunctive relief
even "in traditional cases, such as this, where the patentee and adjudged infringer
both practice the patented technology." Robert Bosch LLC v. Pylon Mfg. Corp.,
659 F.3d 1142, 1150 (Fed. Cir. 2011). This Court should correct that course by
reversing the district court's order.
STATEMENT OF CASE
After a three-week trial, a jury found that twenty-six Samsung smartphone
and tablet computer products infringed one or more of six Apple patents (A4186-
4192), that Samsung infringed five of the patents willfully (A4193), and that none
of Apple's asserted patents is invalid (id.). The jury also found that Samsung
willfully diluted Apple's iPhone trade dress through sales of six Samsung
smartphones. A4195-4196; A4198. The jury rejected all of Samsung's
infringement counterclaims (A4201-4204) and awarded Apple more than $1 billion
in damages (A4199).
Following the verdict, Apple moved for a permanent injunction prohibiting
Samsung from continuing to infringe Apple's patents and dilute Apple's trade
dress--whether through the twenty-six adjudicated infringing products or products
not more than colorably different from them. A4218-4219; A4251-4252. On
December 17, 2012, the district court denied Apple's motion for a permanent
-4-
injunction. A1-23. On December 20, 2012, Apple timely appealed from that order
pursuant to 28 U.S.C. § 1292. A4923.
On January 29, 2013, the district court decided several of the parties' post-
trial motions. The court did not disturb the jury's finding that Samsung's
infringement satisfied the subjective prong of willful infringement, but concluded
that the objective prong was not satisfied and granted judgment as a matter of law
("JMOL") that Samsung's infringement was not willful on that basis. A116-122.
The district court otherwise denied Samsung's motion for JMOL, concluding that
the jury reasonably found that Apple's patents were infringed and not invalid and
that Apple's iPhone trade dress was protectable and willfully diluted.
A92-116.1
Samsung's motion for a new trial on damages remains pending. Final judgment
has not yet entered.
STATEMENT OF FACTS
A. Apple's iPhone And iPad Are Revolutionary Products Whose
Success Is Built On Their Unique Design And User Experience
When Apple unveiled the iPhone on January 9, 2007, it was unlike any other
smartphone on the market. The iPhone's unique design and user interface were the
result of years of research and development within Apple. A20484-20485(484:24-
485:4); A20750-20751(750:25-751:11). Those attributes of the iPhone received
-5-
immediate critical acclaim. E.g., A32717-32718 (New York Times describing the
iPhone as "gorgeous" with a "shiny black [front face], rimmed by mirror-finish
stainless steel" and a "spectacular and practical" user interface); A32721 (Wall
Street Journal describing the iPhone as "a beautiful and breakthrough handheld
computer," featuring a "clever finger-touch interface"); A32726-32727 (Time
Magazine naming the iPhone "Invention of the Year" and listing the iPhone's
"pretty" design and "whole new kind of [user] interface" as the top two reasons for
the award). The iPhone's unique design and user interface brought Apple huge
success in the smartphone market. A20625-20626(625:1-626:4).
Three years later, Apple's release of the iPad was equally revolutionary--
creating an entire market for tablet computers that others had previously
abandoned as "a dead category and not likely to succeed." A20620-20621(620:12-
621:10). As with the iPhone, the iPad was immediately praised for its
groundbreaking user interface. A32734-32735 (USA Today describing the iPad as
"fun" and "simple" with a touch-controlled user interface that allows users to
"pinch to zoom in or out"); A32737 (Wall Street Journal describing the iPad as a
"beautiful new touch-screen device" with a "finger-driven multitouch user
interface" that could displace "the mouse-driven interface that has prevailed for
decades"). Again, the iPad's easy-to-use interface was critical to its instant
commercial success. A20626(626:7-19).
-6-
1. Apple's design patents and iPhone trade dress
Apple sought and obtained numerous patents to protect its investment in the
innovative designs and functionalities of the iPhone and iPad. The iPhone design
is protected by, among others, U.S. Design Patent Nos. 618,677 ("D'677 patent"),
593,087 ("D'087 patent"), and 604,305 ("D'305 patent").
The D'677 patent claims the distinctive front face of the iPhone, including
its shape, rounded corners, black color, and reflective surface:
-7-
The D'087 patent claims the iPhone's overall distinctive appearance,
including the bezel from the front of the phone to the sides and flat contour of the
front face:
-8-
The D'305 patent claims the ornamental design of the iPhone's unique
graphical user interface, including the arrangement of rows of colorful square icons
with rounded corners:
The distinctive design of the front face of the iPhone is further protected by
Apple's registered and unregistered iPhone trade dress. Apple's iPhone trade dress
protects the overall visual impression of the non-functional elements of the
iPhone's front face, including: (i) a rectangular product with four evenly rounded
corners; (ii) a flat, clear surface covering the front of the product; (iii) a display
screen under the clear surface; (iv) substantial black borders above and below the
-9-
display screen and narrower black borders on either side of the screen; (v) when
the device is on, a row of small dots on the display screen; (vi) when the device is
on, a matrix of colorful square icons with evenly rounded corners within the
display screen; and (vii) when the device is on, a bottom dock of colorful square
icons with evenly rounded corners set off from the other icons on the display,
which does not change as other pages of the user interface are viewed. A20339-
20340(339:21-340:12); A21091-21092(1091:11-1092:23); see also A50104.
2. Apple's utility patents
Along with those protections for the iPhone's design, Apple has numerous
utility patents covering various functions of the unique user experience for the
iPhone and iPad. Among those patents are U.S. Patent Nos. 7,469,381 ("'381
patent"), 7,844,915 ("'915 patent"), and 7,864,163 ("'163 patent").
The '381 patent claims the "bounce-back" feature used by the iPhone and
iPad: when a user of a touchscreen device scrolls beyond the edge of an electronic
document, the device causes the electronic document to bounce back so that no
space beyond the edge of the document is displayed. A36502-36505; A36519-
36520; see also A21736-21739(1736:16-1739:21).
The '915 patent claims the multi-touch display functionality of the iPhone
and iPad, which allows those products to distinguish between single-touch
commands for scrolling through documents and multi-touch gestures to manipulate
-10-
a document (e.g., a two-fingered "pinch-to-zoom" gesture). A36448; A36459; see
also A21817-21818(1817:8-1818:22).
The '163 patent claims the "double-tap-to-zoom" capability of the iPhone
and iPad, which allows a touchscreen device to enlarge and center the text of an
electronic document when a user taps twice on a portion of that document and, in
response to a second user gesture on another portion of the document, recenters the
screen over that portion of the document. A36564; A36568; A36570; see also
A21831-21832(1831:9-1832:21).
*****
Because they protect key designs and functionalities that have fueled the
iPhone's and iPad's overwhelming success, the D'677, D'087, D'305, '381, '915,
and '163 patents as well as Apple's iPhone trade dress are crown jewels of Apple's
"unique user experience" IP portfolio. A21954-21957(1954:19-1957:9); A21963-
21964(1963:23-1964:8); A22010(2010:3-17); A22012(2012:6-16). Apple has only
rarely agreed to license its utility patents falling within this category to other
companies, has agreed to license its design patents even more rarely, and has never
licensed its trade dress. The few instances in which Apple has licensed its patents
covering Apple's unique user experience have occurred under circumstances that
would not "enabl[e] somebody to build a clone product" of the iPhone or iPad.
A21956-21957(1956:21-1957:9); see also A22010-22012(2010:6-2012:16)
-11-
(describing Apple's use of "anti-cloning" provisions in licenses to its unique user
experience patents); A4075-4076(¶¶3-7) (describing unique circumstances of and
restrictions contained in Apple's licenses to IBM and Nokia).
B. Samsung Deliberately Copied Apple's iPhone And iPad To
Compete Directly With Apple
Samsung and Apple compete fiercely for U.S. smartphone customers. But
Samsung has chosen to compete not through innovation, but through calculated
and meticulous copying of Apple's popular iPhone and iPad. After the iPhone
took the market by storm in 2007, Samsung faced, as its executives lamented, "a
crisis of design." A30874. The explosive success of the iPhone re-shaped
consumer expectations and convinced Samsung's executives that "when our [user
interface] is compared to the unexpected competitor Apple's iPhone, the difference
is truly that of Heaven and Earth." Id. As the president of Samsung's mobile
division explained, Samsung resolved to "make something like the iPhone" to
remain competitive in the smartphone market. A30871.
-12-
The transformation in Samsung's products after the iPhone's introduction
shows the results of those efforts. Before the iPhone's introduction, Samsung's
phones and the iPhone differed markedly in their shape, button configuration, and
role of the screen in the overall front of the phone:
-13-
After the iPhone's success, Samsung's phones became iPhone clones:
Samsung's copying was not limited to the iPhone's external appearance.
Samsung also copied Apple's innovative user interface, including the "bounce-back," "pinch-to-zoom," and "double-tap-to-zoom" features covered by Apple's
'381, '915, and '163 patents. Samsung's documents show that this copying was no
accident. Rather, Samsung carefully compared its smartphones and tablets to the
iPhone and iPad so that it could identify and copy the features that Samsung's
products lacked. For example, Samsung concluded from its side-by-side
-14-
comparison that the absence of Apple's "bounce" feature was a "serious" defect
that needed to be added to Samsung's smartphones and tablets:
A31603 (Samsung internal comparison of its Galaxy tablet computer with the iPad
2); A31549 (identifying Samsung's lack of a "bounce effect" in its products as a
"critical" defect); see also> A21763-21764(1763:16-1767:6).
Likewise, Samsung chose to "[a]dopt [d]ouble-[t]ap as a supplementary
zooming method," using the iPhone as a "design benchmark." A30868. Again,
Samsung's implementation of that feature was based on a side-by-side comparison
-15-
with the iPhone with suggested "[i]mprovement[s]" for making Samsung's
products function more like Apple's:
A30948 (Samsung internal comparison of its Galaxy S1 smartphone with the
iPhone); see also A20827-20828(827:3-828:17).
Samsung similarly implemented Apple's "pinch-to-zoom" feature after its
consultants reported that the iPhone's use of that feature allows "more intuitive and
easier browsing" (A4493) and that consumers complained that "the zoom on web
pages and ability to scroll around is very bad and hard to do" on Samsung's prior
phones (A4489).
-16-
C. Through Its Infringement And Dilution, Samsung Took
Significant Market Share From Apple
Samsung's strategy was highly successful. By copying Apple's protected
designs and patented features, Samsung undercut Apple's pricing to "directly go
after ... potential iPhone purchasers." A31976.2
Samsung captured market share from Apple that Samsung's older, non-cloned products were never able to achieve. Before launching its initial infringing
and diluting Galaxy S product line in July 2010, Samsung was losing market share.
A22043-22044(2043:18-2044:23). After launching its infringing and diluting
products, however, Samsung's market share jumped. A22044(2044:20-23)
("Samsung's market share took an abrupt upward swing and has continued today
to advance dramatically in increases in market share."). Indeed, Samsung's launch
of its infringing and diluting products marked a key inflection point in Samsung's
share of the smartphone market, the beginning of a jump from 5% to 20% of the
market in just two years:
-17-
A50105; see also A22043(2043:18-2045:10). By the second quarter of 2012,
Samsung's U.S. smartphone market share had increased further still to over 30%.
A4984(¶25); A4993.
Samsung's significant market growth through its infringing and diluting
products came directly at Apple's expense, as the district court found (A5) and
Samsung's own documents confirm (e.g., A31903 (graph showing Apple's market
share decrease in late 2011 while Samsung's market share grew)). Samsung's
-18-
success in capturing market share from Apple led Samsung to conclude that the
U.S. smartphone market is becoming a "two horse race between Apple and
Samsung." A31903.
In addition to increasing Samsung's market share, Samsung's infringement
and dilution yielded enormous profits for Samsung. Trading on the success of the
iPhone and iPad, sales of Samsung's infringing and diluting smartphones generated
over $7.2 billion in revenue and $2 billion in gross profits. See A40944 (revenues
for accused products); A30475 (profits for accused products); A4186-4196 (verdict
identifying infringing and diluting products).
D. Apple Lost Substantial Downstream Sales Due To Samsung's
Infringement And Dilution
While Samsung's infringing and diluting products caused Apple to lose
smartphone and tablet sales, that is only the beginning of the harm to Apple, as the
district court correctly concluded. A5-6. Customers who purchase an iPhone or
iPad are likely to buy other Apple products and services, including related
products, applications, accessories, and future smartphones and tablets. A20615-
20617(615:14-617:6). Those lost downstream sales extend even beyond the
individual purchaser: the smartphone market is influenced by "network effects,"
meaning that individuals are more likely to buy a particular smartphone if many
others have bought it as well. A20617(617:3-6) (describing how one's smartphone
-19-
purchases directly influence purchases made by "the other people around you, who
you work with or in your family").
Samsung itself has recognized the loyalty (or "stickiness") of smartphone
buyers, such that an initial purchase promotes future sales, and tailored its
marketing strategies to capture those downstream sales. A31913 (Samsung
strategy document describing Apple customers as "very sticky/loyal subscribers").
As Samsung's head of sales and marketing for its mobile division confirmed,
Samsung tries "to get first-time smartphone users before they're locked into the
[Apple] IOS so that Samsung can lock them into the Android [operating system]."
A4070-4071(71:22-72:19).
E. Design And Ease Of Use Are Important To Smartphone
Purchasers
The motivation behind Samsung's decision to copy the iPhone was clear:
Samsung recognized the undeniable importance of design and user interface to
smartphone purchasers. Samsung's and its consultants' market research--based
on interviews of thousands of consumers and dozens of industry experts--
identified those factors as the two key reasons for the iPhone's extraordinary
success. A30528 (identifying "[e]asy and intuitive user interface" and "[b]eautiful
design" as the top two "Factors that Could Make iPhone a Success"); A30680
(identifying "[e]ase of use" as "the major driver" of consumer interest in
touchscreen devices); A30698 (iPhone's "strong, screen-centric design has come to
-20-
equal what's on trend and cool for many consumers"); A4969 (recognizing that
U.S. consumers "have been greatly influenced by the iPhone design," which is
considered "premium"); A4280 ("the iPhone is a delight to the eye" and "the most
inspired mobile handset on the market"). Not surprisingly, Samsung's own
surveys showed that those same factors drove demand for Samsung's infringing
smartphones. Indeed, as the district court observed, Apple presented "significant
evidence" that design is "important in consumer choice," including a "Samsung
study finding exterior design to be an important factor in phone choice." A8; see
also A32004 (March 2011 J.D. Power survey concluding that "[n]early half (45%)
of smartphone owners indicate they chose their model because they liked its
overall design and style .... Simple operation is important, as 36% of owners
report having chosen their handset because it is `generally easy to use.'"); A32050
(same).
For its part, Apple also recognized the importance of design and user
interface to smartphone purchasers, and specifically to Apple's customers. E.g.,
A32770 (Apple customer survey showing that 95% of U.S. respondents considered
"easy to use" to be "very important" or "somewhat important" to their decision to
purchase an iPhone); A50102 (summary of Apple customer survey data showing
that over 80% of respondents considered "attractive appearance and design" to be
-21-
"very important" or "somewhat important" in their decision to purchase an
iPhone).
The touchscreen features claimed by Apple's asserted utility patents are
likewise important to driving consumer demand. Testimony, surveys, and other
documents referred to Apple's "multi-touch experience that makes the iPhone easy
to use" as "a key driver of demand for the iPhone." A4503-4511(509:7-517:8); see
also A4500-4502(487:6-489:15) (describing how Apple's multi-touch user
interface "is probably among the most important of all the elements of how
customers perceive ease of use on an iPhone"); A30677-30683 (Samsung survey
evidence concerning importance of touchscreen capabilities to consumer
purchasing decisions); A32719 (New York Times review praising multi-touch
features of the iPhone); A32723 (Wall Street Journal describing the iPhone's
multi-touch features as "effective, practical and fun"); A32727 (Time Magazine
listing the iPhone's multi-touch features among the top reasons for naming the
iPhone "Invention of the Year"). Moreover, consumer survey evidence
specifically targeted to the three asserted utility patents showed that Samsung
consumers were willing to pay statistically significant price premiums for the
features protected by Apple's patents. A30488 (survey results showing that
consumers are willing to pay $39 more for a smartphone and $45 more for a tablet
computer that includes Apple's patented "pinch-to-zoom" feature and $100 more
-22-
for a smartphone and $90 for a tablet computer that includes all three features
claimed by Apple's asserted utility patents); see also A21915-21916(1915:7-1916:13).
Samsung's copying altered consumer perceptions of Samsung's products.
Consumers previously considered Samsung's design and user interface to be
inferior to Apple's (A4958-4959), found Internet browsing on Samsung's phones
to be "so painful as to be not worth it" (A4488), and did not view Samsung as a
"credible" smartphone manufacturer (A4487). But after Samsung implemented
Apple's protected designs and patented features, consumers ranked Samsung's
infringing smartphones (such as the Galaxy S "Vibrant") as comparable to the
iPhone. E.g., A32077 (collecting consumer satisfaction survey results).
F. The District Court's Decision
After the jury confirmed Samsung's infringement and dilution, Apple sought
a permanent injunction because (among other reasons) Samsung's actions were
irreparably harming Apple in a way that money damages could not cure.
The district court made numerous findings that support entry of an
injunction. The court found "that Apple and Samsung are direct competitors ... for
first-time smartphone buyers" and "that Apple and Samsung continue to compete
directly in the same market," which "increases the likelihood of harm from
continued infringement." A5. The court noted that it was undisputed that
-23-
"Samsung's market share grew substantially from June 2010 through the second
quarter of 2012" and "that Samsung had an explicit strategy to increase its market
share at Apple's expense." Id. Based on that evidence, the district court
determined that "Apple has continued to lose market share to Samsung," which
"can support a finding of irreparable harm." Id.
The district court also concluded that initial lost sales to Samsung could
result in "lost future sales of both future phone models and tag-along products like
apps, desktop computers, laptops, and iPods," which "Samsung ... made no
attempt to refute." A6. As a result, the court found "that Apple has suffered some
irreparable harm in the form of loss of downstream sales." Id.; see also A16
("[T]he Court agrees that Apple has likely suffered, and will continue to suffer, the
loss of some downstream sales."). The court also recognized that the difficulty in
calculating Apple's lost downstream sales suggested the inadequacy of money
damages. A16 ("Apple's evidence of lost downstream sales does provide some
evidence that Apple may not be fully compensated by the damages award.").
Nevertheless, the district court concluded that money damages were
adequate compensation because Apple had not demonstrated that its patents are
"priceless" or "off limits" to licensing. A17. The court relied heavily on Apple's
past offer to license some unasserted patents to Samsung and licenses to the
-24-
asserted utility patents to other companies (IBM, Nokia, and HTC) made in the
context of broad cross-licensing agreements or litigation settlements. A17-18.
The district court rejected Samsung's argument concerning the balance of
hardships because Samsung claimed to have stopped making twenty-three of the
infringing products and to have developed design-arounds for the other infringing
products. A18-19. As the court explained, Samsung "cannot now turn around and
claim that [it] will be burdened by an injunction that prevents sale of these same
products." A19. The court nonetheless determined that "neither party would be
greatly harmed by either outcome" and considered the balance of hardships a
"neutral" factor. A18-19.
Regarding the public interest, the district court recognized that "the public
interest does favor the enforcement of patent rights to promote the `encouragement
of investment-based risk.'" A20 (quoting Sanofi-Synthelabo v. Apotex, Inc., 470
F.3d 1368, 1383 (Fed. Cir. 2006)). Ultimately, however, the court determined that
the patented designs and features were small components of the infringing products
such that "it would not be in the public interest to deprive consumers of phones
that infringe limited non-core features." A21.
Despite Apple's strong showing of irreparable harm (and, indeed, the district
court's own finding that Apple had already suffered irreparable harm), the court
denied Apple's request for an injunction. The court's "first and most important[]"
-25-
reason (A21) for reaching that result was its view that Apple had not satisfied the
"causal nexus" requirement this Court established for preliminary injunctions in
Apple, Inc. v. Samsung Electronics Co., 678 F.3d 1314 (Fed. Cir. 2012) ("Apple
I"), and Apple Inc. v. Samsung Electronics Co., 695 F.3d 1370, 1374 (Fed. Cir.
2012) ("Apple II"). With little analysis, the district court held that the same causal
nexus requirement applies with equal force to permanent injunctions. A3 n.2. The
court then ruled that, to support a permanent injunction, Apple was required to
show that each of the infringing features "drives consumer demand" for the
infringing devices or, in other words, that "consumers buy the infringing product
specifically because it is equipped with the patented feature." A8 (first emphasis
added).
With respect to Samsung's continued dilution of Apple's trade dress, the
district court found that Apple would not be irreparably harmed absent an
injunction because "none of the [diluting] Samsung products ... are still on the
market" (A15), even though the court had earlier recognized that "Samsung's
decision to cease selling its infringing phones does not alter the Court's irreparable
harm analysis." A7; see also id. ("Absent an injunction, Samsung could begin
again to sell infringing products, further exposing Apple to the harms identified
above.").
-26-
SUMMARY OF ARGUMENT
The four traditional equitable factors for injunctive relief overwhelmingly
favor entry of a permanent injunction against Samsung's continued infringement.
Based largely on undisputed evidence, the district court concluded that: (1) Apple
and Samsung are direct competitors, which "increases the likelihood of harm from
continued infringement" (A5); (2) Samsung continues to cause irreparable harm to
Apple through lost market share and lost downstream sales (A5-6), which
"support[s] a finding that monetary damages would be insufficient to compensate
Apple" (A16 (quoting Apple I, 678 F.3d at 1337)); (3) the balance of hardships is
at worst a "neutral" factor (A19); and (4) "the public interest does favor the
enforcement of patent rights" (A20). The court's ruling that monetary damages
would sufficiently compensate Apple was based on the belief that Apple did not
view its patents as "priceless" or "off limits" (A17)--a legally erroneous standard
that this Court has never required--and a misunderstanding of the licensing
evidence, which makes clear that Apple would never license the patents protecting
Apple's unique user experience to its primary competitor. Accordingly, under the
governing eBay test, an injunction should have issued.
The district court further erred by also requiring Apple to prove that each of
the patented features independently drives consumer demand for the infringing
products. A7-12. Neither the Supreme Court nor this Court has ever required a
-27-
patentee to satisfy this additional "causal nexus" requirement at the permanent
injunction stage--after the defendant's infringement has already been adjudicated.
Moreover, the district court's rigid application of the causal nexus requirement--
requiring evidence "not just that there is demand for the patented features, but that
the patented features are important drivers of consumer demand for the infringing
products" (A12)--will all but foreclose the possibility of injunctive relief in cases
that, like this one, involve infringement by complex, multi-featured products. The
district court's reliance on the causal nexus requirement to defeat a strong showing
on the eBay factors conflicts with principles of equity, which traditionally reject
bright-line rules "suggesting that injunctive relief could not issue in a broad swath
of cases." eBay, 547 U.S. at 393. To the extent that any causal nexus requirement
applies at the permanent injunction stage, Apple presented more than sufficient
evidence that its patented designs and features influence consumer demand such
that Apple's irreparable harm can be attributed to Samsung's infringement.
The district court also abused its discretion in denying Apple an injunction
against Samsung's trade dress dilution. The court committed legal error in
concluding that Samsung's statements that it had voluntarily ceased its diluting
activities defeated Apple's right to injunctive relief. A15. Similarly, the court's
conclusion that monetary damages would be adequate compensation for any future
dilution rested on clearly erroneous factual findings. A17.
-28-
Because it would be an abuse of discretion not to enter a permanent
injunction on this record, Apple respectfully requests that this Court reverse the
district court's denial of Apple's motion for a permanent injunction against
Samsung's continued infringement and dilution. At the very least, vacatur and
remand is warranted so that the district court may consider the matter under the
proper legal standard and with a correct understanding of the record.
STANDARD OF REVIEW
This Court reviews the denial of a permanent injunction for abuse of
discretion. Bosch, 659 F.3d at 1147. "A district court abuses its discretion when it
acts `based upon an error of law or clearly erroneous factual findings' or commits
`a clear error of judgment.'" Id. (quoting Ecolab, Inc. v. FMC Corp., 569 F.3d
1335, 1352 (Fed. Cir. 2009)).
ARGUMENT
As the district court's own findings confirm, Apple presented a classic case
for injunctive relief, involving direct competitors and undisputed evidence of
irreparable harm, including lost market share and lost downstream sales that
money damages cannot fully compensate. The district court nevertheless applied a
rigid causal nexus requirement to defeat Apple's strong showing on the four eBay
factors. As explained below, that was error because neither the Supreme Court nor
this Court has ever required evidence of a causal nexus at the permanent injunction
-29-
stage after a finding of infringement, let alone the highly particularized showing
that the district court demanded here.
The inconsistency between eBay and this Court's permanent injunction cases
on the one hand and the causal nexus requirement applied by the district court on
the other becomes most salient in view of the findings the district court actually
made. Those findings--mostly based on undisputed evidence--strongly support
entry of a permanent injunction against a direct competitor's adjudicated
infringement. The district court's application of the causal nexus requirement to
bar permanent injunctive relief--regardless of the strength of the patentee's
showing under the traditional eBay factors--is unprecedented and legally
erroneous. This Court should therefore reverse the district court's order denying
Apple's motion for a permanent injunction.
I. THE EQUITIES STRONGLY FAVOR GRANTING INJUNCTIVE RELIEF TO BAR
FURTHER PATENT INFRINGEMENT BY A DIRECT COMPETITOR
The evidence presented at trial and through post-trial briefing
overwhelmingly favors entry of a permanent injunction to protect Apple from
further irreparable harm caused by Samsung's deliberate and successful strategy of
acquiring customers by copying Apple's products. The district court made a series
of findings suggesting--or even outright concluding--that each equitable factor
under eBay favors entry of a permanent injunction. E.g., A6 ("[T]he Court finds
that Apple has suffered some irreparable harm in the form of loss of downstream
-30-
sales."); A16 ("The Federal Circuit has confirmed that `the loss of customers and
the loss of future downstream purchases are difficult to quantify, [and] these
considerations support a finding that monetary damages would be insufficient to
compensate Apple.'" (quoting Apple I, 678 F.3d at 1337)); A19 (rejecting
Samsung's argument concerning balance of hardships because Samsung claims to
have ceased selling infringing and diluting products and "cannot now turn around
and claim that [it] will be burdened by an injunction that prevents sale of these
same products"); A20 ("As this Court found at the preliminary injunction stage, the
public interest does favor the enforcement of patent rights to promote the
`encouragement of investment-based risk.'" (quoting Sanofi-Synthelabo, 470 F.3d
at 1383)).
In light of those findings, the district court's decision to deny an injunction
cannot be reconciled with this Court's post-eBay permanent injunction cases,
which confirm that permanent injunctive relief should be granted in cases of head-
to-head competition involving lost market share. E.g., Bosch, 659 F.3d at 1150-1151 (concluding that permanent injunction should issue against direct competitor
whose continued infringement caused plaintiff-patentee to lose significant market
share); Acumed LLC v. Stryker Corp., 551 F.3d 1323, 1327-1329 (Fed. Cir. 2008)
(same); Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1310-
1311 (Fed. Cir. 2007) (same); see also Presidio Components, Inc. v. Am. Technical
-31-
Ceramics Corp., 702 F.3d 1351, 1363 (Fed. Cir. 2012) (vacating denial of
permanent injunction due to evidence of "direct and substantial competition
between the parties" and lost sales). Had the district court properly applied eBay,
it would have reached the same conclusion in this case.
A. Apple Is Being Irreparably Harmed By The Threat Of Its Direct
Competitor's Continued Infringement
1. Apple and Samsung compete directly for first-time
smartphone buyers
The district court correctly found that Apple and Samsung are direct
competitors in the market for first-time smartphone buyers. A5 ("[T]he Court
finds that Apple and Samsung continue to compete directly in the same market.").
The court made that finding earlier in the case when considering Apple's motion
for a preliminary injunction (A4114-4115), and "Samsung ... presented no new
evidence to refute that finding" (A5). In fact, this very case arose because of
Samsung's desire to compete (unfairly) with Apple by copying Apple's patented
product designs and features. See supra pp. 12-16.
The direct competition between Apple and Samsung is strong evidence of
irreparable harm to Apple, as the district court recognized. A5 (citing Bosch, 659
F.3d at 1153). If the U.S. smartphone market is truly becoming a "two horse race
between Apple and Samsung," as Samsung admits (A31903), then the harm to
Apple from Samsung's continued infringement is particularly severe, because sales
-32-
lost to Samsung presumably would have otherwise gone to Apple. See Bosch, 659
F.3d at 1151. That is just what Samsung intended, and Samsung should not be
allowed to continue with its strategy after having been adjudicated to infringe
Apple's patents.
2. Apple has lost market share due to its direct competitor's
adjudicated infringement
As the district court concluded and Samsung did not dispute, "Samsung had
an explicit strategy to increase its market share at Apple's expense" through its
deliberate copying of Apple's patented designs and product features. A5. That
strategy was wildly successful and irreparably harmed Apple's competitive
standing. Samsung was losing market share before it started selling its infringing
products in the United States in June 2010. A22043-22044(2043:18-2044:23).
But after launching those products, Samsung's market share grew--and grew
rapidly--increasing from 5% in June 2010 to over 30% by the second quarter of
2012. A4984(¶25); A4993; see also supra p. 18 (reproducing graph showing
Samsung's growth in market share since launching its infringing smartphones
(A50105)).
Samsung's rapid growth in market share undeniably came at Apple's
expense, as the district court correctly found. A5 ("Thus, the cumulative evidence
shows that, consistent with the Court's finding at the preliminary injunction phase,
Apple has continued to lose market share to Samsung."). Indeed, Samsung's own
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documents confirm that Samsung has been taking market share from Apple.
A31903.
Although the overall effect of Apple's lost market share is difficult to
quantify with precision, it is undoubtedly substantial. Sales of Samsung's
infringing and diluting products generated over $7.2 billion in revenue and
$2 billion in gross profits. See A40944; A30475; A4186-4196. Apple is unlikely
to recoup much of that market share because, as Samsung's own witnesses
confirmed, consumers are reluctant to switch between competing smartphone
platforms once they have been "locked into" their initial purchase. A4070-
4071(71:22-72:19) (describing Samsung's strategy "to get first-time smartphone
users before they're locked into the [Apple] IOS so that Samsung can lock them
into the Android [operating system]").
Such evidence of lost market share "squarely supports a finding of
irreparable harm." Presidio, 702 F.3d at 1363; see also Merial Ltd. v. Cipla Ltd.,
681 F.3d 1283, 1307 (Fed. Cir. 2012); Bosch, 659 F.3d at 1151; Acumed, 551 F.3d
at 1329. Indeed, the district court itself recognized that lost market share is
evidence of irreparable harm. A5.
3. Apple has lost downstream sales due to its direct
competitor's adjudicated infringement
As the district court found, Apple's initial lost sales due to Samsung's
infringement cause further downstream lost sales for related products, apps,
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accessories, and future smartphone purchases. A5-6. Apple's lost downstream
sales extend even beyond the individual customer who decides initially to buy a
Samsung product instead of an iPhone or iPad. As the district court acknowledged
when ruling on Apple's motion for a preliminary injunction in Apple II, "network
effects help shape the smartphone market," such that "customer demand for a
given smartphone platform increases as the number of other users on the platform
increases." A50076; see also A20617(617:3-6) (trial testimony that smartphone
sales can influence the purchasing decisions of "the other people around you, who
you work with or in your family").
Given the particular difficulty in ascertaining the full extent of the harm
from lost downstream sales, this Court has consistently recognized that lost
downstream sales demonstrate irreparable harm. See Verizon, 503 F.3d at 1310
(recognizing "lost opportunities to sell other services to the lost customers" as a
form of irreparable harm); see also Broadcom Corp. v. Qualcomm Inc., 543 F.3d
683, 702-703 (Fed. Cir. 2008) (competition for "design wins" that influence future
product development supports a finding of irreparable harm, even where the
patentee and adjudged infringer did not compete for sales on a unit-by-unit basis).
The district court thus correctly found that "Apple has suffered some irreparable
harm in the form of loss of downstream sales." A6.
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B. Money Damages Are Inadequate To Remedy Apple's Loss Of
Market Share And Downstream Sales To Its Direct Competitor
Apple's loss of market share and downstream sales are precisely the type of
damages that cannot be calculated to a reasonable certainty and cannot be fully
compensated with a monetary award, as the district court itself recognized. A18
("[T]he difficulty in calculating the cost of lost downstream sales does suggest that
money damages may not provide a full compensation for every element of Apple's
loss."); see also Broadcom, 543 F.3d at 703-704 ("[D]ifficulty in estimating
monetary damages reinforces the inadequacy of a remedy at law."); i4i Ltd. P'ship
v. Microsoft Corp., 598 F.3d 831, 862 (Fed. Cir. 2010) (concluding that money
damages could not remedy "loss of market share, brand recognition, and customer
goodwill" because "[s]uch losses may frequently defy attempts at valuation");
Acumed, 551 F.3d at 1328 (affirming grant of permanent injunction where patentee
had shown lost market share causing irreparable injury).
Nevertheless, the district court concluded that Apple's past licenses of
certain utility patents and Samsung's ability to pay a judgment showed the
adequacy of money damages. A17-18. That conclusion was erroneous in several
respects.
First, the district court set an impossibly stringent--and legally incorrect--
standard with respect to Apple's past licensing practices, requiring Apple to show
that its patents are "priceless" or wholly "off limits" such that "no fair price" could
-36-
be set for a license in order to demonstrate the inadequacy of money damages.
A17. But regardless of whether Apple's patents are deemed "priceless" or "off
limits," money damages are inadequate due to the difficulty of quantifying
damages attributable to Apple's lost market share and downstream sales. See
Apple I, 678 F.3d at 1337. Indeed, after eBay, this Court has found money
damages adequate only where the patentee--unlike Apple--failed to prove that
damages would be difficult to calculate. See ActiveVideo Networks, Inc. v. Verizon
Commc'ns, Inc., 694 F.3d 1312, 1340 (Fed. Cir. 2012); Voda v. Cordis Corp., 536
F.3d 1311, 1329 (Fed. Cir. 2008).
Second, the district court's analysis is contrary to eBay, where the Supreme
Court explicitly rejected a rule that a patentee's willingness to license its patents
suffices by itself to demonstrate a lack of irreparable harm. 547 U.S. at 393
(explaining that patentees that license, but do not practice, their patents can
nonetheless prove irreparable harm under certain circumstances); see also Acumed,
551 F.3d at 1328 ("A plaintiff's past willingness to license its patent is not
sufficient per se to establish lack of irreparable harm if a new infringer were
licensed."); Broadcom, 543 F.3d at 703 (rejecting argument that prior license
demonstrated adequacy of money damages). Yet in concluding that money
damages were adequate, the district court identified only a single factor aside from
Apple's supposed willingness to license: Samsung's ability to pay a money
-37-
damages award. A18. But unlike a defendant's inability to pay money damages--
which may demonstrate the inadequacy of money damages--the ability to pay
damages has little significance. Indeed, with a steady stream of income from its
continued infringement, a defendant's ability to pay is readily demonstrated in
most cases.
Third, the district court clearly erred in finding that Apple's past licensing
practices suggest Apple's willingness to license the patents-in-suit to Samsung.
Boris Teksler, Apple's director of patents and licensing, testified that Apple never
offered to license the patents-in-suit to Samsung and that Apple was "very clear"
that any license would exclude those patents as "untouchables" that are part of
Apple's "unique user experience." A22013-22014(2013:9-2014:6);
A22022(2022:22-24). The district court cited no contrary evidence, finding only
that Apple had offered to license "some ... patents," not any of the patents-in-suit,
to Samsung. A17. The district court likewise misinterpreted Mr. Teksler's
testimony that Apple had "over time" licensed patents covering its unique user
experience as suggesting Apple's willingness to license those rights more generally
to its competitors. A17. What Mr. Teksler actually said when asked whether
Apple had "ever licensed any of the patents within this category" is:
Certainly over time we have, but I can count those instances on one
hand quite easily. And we do so with rare exception and we do it
consciously knowing that we're not enabling somebody to build a
clone product.
-38-
A21957(1957:3-9). The unrestricted compulsory license to Apple's patents that
Samsung would enjoy absent an injunction is entirely inconsistent with Apple's
"rare" and limited licensing practice for patents covering its unique user
experience.
Nor was the district court correct to conclude that licenses of certain Apple
utility patents to IBM, Nokia, and HTC suggested Apple's willingness to license
its asserted patents to Samsung for use in competing products. Those agreements
provide no basis for concluding that Apple would ever be willing to license its
design patents to Samsung. Indeed, Apple's licenses to IBM, Nokia, and HTC do
not even include any such design patents. A4308(¶1.10) (Nokia license limiting
"Licensed Apple Patents" to certain specific utility patents and patents essential to
comply with industry standards); A4443 (IBM license excluding all Apple design
patents except for fonts); A4783(¶1.11) (HTC license excluding Apple's design
patents from "Covered Patents").
The IBM, Nokia, and HTC licenses also do not suggest any willingness on
Apple's part to license its asserted utility patents--without restriction--to a direct
competitor like Samsung. In concluding otherwise, the district court failed to
consider the unique context of the prior agreements, as it was required to do. See
O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., No. 2011-1054, 2011 WL
5601460, at *9 (Fed. Cir. Nov. 18, 2011) (nonprecedential) (explaining that "the
-39-
identity of the past licensees, the experience in the market since the licenses were
granted, and the identity of the new infringer" are all relevant to determining
adequacy of money damages).
For example, the IBM license--which was signed five years before Apple
launched the iPhone--was part of a broad cross-license with a company that does
not sell smartphones. A4442 ("Patent Cross License Agreement" dated October
25, 2002); see also A4075-4076(¶5) (describing IBM license as a "general cross-license" and noting that "IBM does not compete with Apple in the smartphone and
tablet computer markets"). These are critical differences that the district court
failed to consider. See O2 Micro, 2011 WL 5601460, at *9 (concluding that
patentee's license agreement was irrelevant where licensee, unlike the accused
infringer, was not a direct competitor); Acumed, 551 F.3d at 1328 (similar);
Broadcom, 543 F.3d at 703 (explaining that patentee's prior license to non-
competitor "has little bearing on the effect of a compulsory license to a direct
competitor").
Likewise, the Nokia and HTC agreements were litigation settlements, which
do not imply that monetary damages would be adequate to compensate for another
party's infringement. See Acumed, 551 F.3d at 1328-1329 (holding that district
court properly found money damages inadequate and distinguished a prior license
to the patent-in-suit as a litigation settlement); cf. LaserDynamics, Inc. v. Quanta
-40-
Computer, Inc., 694 F.3d 51, 77-78 (Fed. Cir. 2012) (recognizing the unique
litigation pressures that distort the terms of licensing agreements made for
settlement purposes). And in any event, the Nokia and HTC licenses are quite
limited. The Nokia agreement was merely a "provisional license" for a limited
"standstill" period (A4076(¶6)), and the HTC license barred HTC from making
"clones" of Apple's products (A4792(¶ 5.1); A4803-4804 (¶¶12.1, 12.3, 12.4);
A4811). These limited terms are consistent with Apple's desire to prevent others
from using its unique user experience patents without restriction. A21956-21957(1956:21-1957:2) ("Q And to be clear, what is Apple's position on licensing
this portion of its portfolio? A We strongly desire not to license it. It's not an
area that we license, and our goal in licensing is to enable people to design their
own products, not the ability to just copy our products."); see also A22010-22012(2010:9-2012:16) (describing Apple's use of "anti-cloning" provisions in
licenses to Apple's unique user experience IP). Apple therefore faces no serious
threat of erosion of its unique property right from any of the few entities it has
licensed, and the district court clearly erred in finding any willingness on Apple's
part to license the patents-in-suit to its direct competitors.
C. The Balance Of Hardships Strongly Favors Enjoining Further
Infringement From Apple's Direct Competitor
Although the district court considered the balance of hardships a "neutral"
factor (A19), Samsung's own arguments below confirm that the balance of
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hardships favors granting a permanent injunction. Samsung claimed that it had
discontinued marketing its infringing products and had developed design-arounds
to Apple's patents (A4044-4045 & n.10), and if Samsung's own expert is to be
believed, Samsung was able to implement those design-arounds with minimal
burden and expense (A23036-23038(3036:5-23038:19)). As the district court
correctly recognized, Samsung "cannot now turn around and claim that [it] will be
burdened by an injunction that prevents sale of these same products." A19.
At the same time, Samsung's claim that it has discontinued sales of its
infringing products or designed around Apple's patents in no way diminishes
Apple's need for injunctive relief. Because Samsung frequently brings new
products to market (A20880-20881(880:13-881:7); A23037(3037:2-4)), an
injunction is essential to providing Apple the swift relief needed to combat any
future infringement by Samsung through products not more than colorably
different from those already found to infringe. Apple should not have to bear the
risk that Samsung's supposed design-arounds are insufficient or that Samsung will
not again resume its infringement.
Absent a permanent injunction, Apple would be significantly harmed by the
risk of Samsung's continued infringement. First, the parties have product lines of
vastly different scope. Unlike Apple, which launches only a small number of new
products each year and sells only two or three smartphone products at any given
-42-
time, Samsung launches 50 new smartphones each year and has over 100 products
available in the United States at any given time. A20880-20881(880:13-881:7);
A23037(3037:2-4) ("Samsung currently has 103 models in the United States.
They come out with more than one a week."). Even if the infringing products at
issue here were enjoined, Samsung would still have numerous products on the
market. By contrast, Apple's much narrower product line must compete with any
ongoing infringement by Samsung, which as explained above (pp. 17-19) has
already cost Apple significant market share.
Second, Samsung argued (A4036-4037)--and the district court found (A7-12)--that the infringing features in Samsung's products do not drive market
demand. Although Apple disagrees--and it was error for the district court to deny
Apple's request for an injunction based on such a consideration (see A21; infra
Part II)--that argument concedes that Samsung faces a minimal burden in
removing those features from its products. If Samsung and the district court are
correct, Samsung will suffer no meaningful loss in market share through an
injunction against future infringement. Apple, however, has already suffered
significant loss in market share due to Samsung's sale of infringing and diluting
products. Apple should not have to bear the risk of any further loss in market share
by leaving the door open for Samsung to continue to compete unfairly with Apple
using products that infringe Apple's patents.
-43-
D. An Injunction Would Promote The Public Interest In Patent
Enforcement Against A Direct Competitor
A permanent injunction is the only way to vindicate the property rights that
Congress and the Patent Office conferred on Apple against the adjudicated trespass
by its direct competitor. The public has a strong interest in preserving and
promoting those property rights, as the district court recognized. A20 ("[T]he
public interest ... favor[s] the enforcement of patent rights to promote the
`encouragement of investment-based risk.'" (quoting Sanofi-Synthelabo, 470 F.3d
at 1383)); see also i4i, 598 F.3d at 863 (concluding that public interest was served
by grant of permanent injunction because the "public's general interest in
upholding patent rights favor[s] injunctive relief"); Abbott Labs. v. Sandoz, Inc.,
544 F.3d 1341, 1363 (Fed. Cir. 2008) ("The patent laws promote ... progress by
offering a right of exclusion for a limited period as an incentive to inventors to risk
the often enormous costs in terms of time, research, and development." (quoting
Kewanee Oil Co. v. Bicron Corp., 415 U.S. 470, 480 (1974)).
The public interest in patent enforcement is particularly strong where, as
here, an injunction will not implicate public safety issues, but will only prevent
Samsung from unfairly competing with Apple by selling products that use Apple's
patented designs and features. As the district court correctly recognized, an
injunction will have a minimal effect on the public, because Samsung claims to
have already ceased manufacturing infringing products and only a small stock of
-44-
residual infringing product remains with retailers. A18-20 & n.9. Moreover,
numerous other smartphones are available that will satisfy the public's need for
smartphone technology. A20 ("Consumers will have substantial choice of
products, even if an injunction were to issue."); see also Acumed, 551 F.3d at 1331
(no public interest bar to injunction because non-infringing alternatives exist).
Even Samsung could continue to sell numerous other smartphones, assuming they
are more than colorably different from those found to infringe in this case. If
anything, the public would benefit from the diversity of product offerings that
would result from enjoining further infringement by a direct competitor.
The district court nonetheless believed that the public interest would be
disserved by Apple's purportedly "extremely broad" request for injunctive relief.
A20. But Apple properly requested an injunction limited to the infringing products
and those products "not more than colorably different." A4218-4219; A4251-
4252. Samsung cannot avoid an injunction simply because its infringement
involved many products. To the contrary, the public's interest would be served by
ending such broad-ranging infringement.
Nor was the district court correct to conclude that Apple's requested
injunction was overbroad because it included products that are "not more than
colorably different" from those found to infringe. This Court has endorsed
injunctions against "infringement of the patent by the adjudicated devices and
-45-
infringement by devices not more than colorably different from the adjudicated
devices," Int'l Rectifier Corp. v. IXYS Corp., 383 F.3d 1312, 1316 (Fed. Cir. 2004),
which incorporates the substantive requirement for proving contempt for violations
of injunctions. See TiVo Inc. v. EchoStar Corp., 646 F.3d 869, 882 (Fed. Cir.
2011) (en banc). If injunctions reaching beyond the exact products already on the
market are deemed overly broad, infringing competitors could easily subvert
narrower injunctions by introducing new products containing the same infringing
features. As the electronics industry rapidly introduces new products--including
fifty new phones each year from Samsung alone (A20880-20881(880:13-881:7))--
such a rule would effectively convert permanent injunctions into temporary
injunctions.3
Taken together, the four eBay factors overwhelmingly favor enjoining
Samsung's future infringement. It was an abuse of discretion for the district court
to deny Apple an injunction after the undisputed evidence showed that Apple had
already suffered irreparable harm in the form of lost market share and incalculable
downstream sales from its direct competitor's adjudicated infringement.
-46-
II. THE DISTRICT COURT ERRONEOUSLY DENIED APPLE A PERMANENT
INJUNCTION DUE TO AN ALLEGED LACK OF A CAUSAL NEXUS
Even though the four eBay factors decisively favored a permanent
injunction, the district court refused to enjoin Samsung's continued infringement
because Apple supposedly had not shown that each "infringing feature drives
consumer demand for the accused product." A12 (quoting Apple II, 695 F.3d at
1375); see also id. (requiring that Apple show "not just that there is demand for the
patented features, but that the patented features are important drivers of consumer
demand for the infringing products"). The district court improperly imported this
additional, independent "causal nexus" requirement from this Court's preliminary
injunction analysis in Apple I and Apple II. Neither the Supreme Court nor this
Court has ever required a patentee to make the additional showing of a sufficient
causal nexus to obtain a permanent injunction, much less required a highly-particularized showing of consumer demand driven by each of the patented
features individually as the district court demanded here. The district court's heavy
reliance on the supposed causal nexus requirement, which the court cited as the
"first and most important[]" reason for denying Apple permanent injunctive relief
(A21), was legal error.
-47-
A. The District Court's Adoption Of A Causal Nexus Requirement
In The Permanent Injunction Context Is Contrary To The Patent
Act And The Decisions Of The Supreme Court And This Court
Congress has provided that courts may "grant injunctions in accordance with
the principles of equity to prevent the violation of any right secured by patent." 35
U.S.C. § 283. "[F]amiliar principles" of equity "apply with equal force to disputes
arising under the Patent Act. As [the Supreme Court] has long recognized, `a
major departure from the long tradition of equity practice should not be lightly
implied.'" eBay, 547 U.S. at 391.
Courts sitting in equity have traditionally considered only the four factors
discussed in Part I in determining whether to issue a permanent injunction. eBay,
547 U.S. at 391-392. Indeed, those are the only factors the Supreme Court and this
Court have ever required for a patentee to satisfy in order to obtain a permanent
injunction. See, e.g., eBay, 547 U.S. at 391; Presidio, 702 F.3d at 1362 ("Equity
sets forth the four-factor test for removal of a trespasser from property
infringement."); ActiveVideo, 694 F.3d at 1337 (reciting four factors); i4i, 598 F.3d
at 861 (same). The Supreme Court made clear in eBay that application of the four-factor test would continue to result in permanent injunctions in most traditional
patent suits between direct competitors. eBay, 547 U.S. at 396 (Kennedy, J.,
concurring) ("To the extent earlier cases establish a pattern of granting an
injunction against patent infringers almost as a matter of course, this pattern simply
-48-
illustrates the result of the four-factor test in the contexts then prevalent."); see also
id.at 395 (Roberts, C.J., concurring) (noting that "a page of history is worth a
volume of logic" in reference to the historical practice of "grant[ing] injunctive
relief upon a finding of infringement in the vast majority of patent cases").
The district court added an entirely separate requirement that "consumers
buy the infringing product specifically because" it practices the patented features,
including proof that each infringing feature independently "drives consumer
demand" for the infringing devices. A8; A10. The district court drew this
unprecedented fifth requirement from this Court's Apple II decision, which stated
that "`to satisfy the irreparable harm factor in a patent infringement suit, a patentee
must establish both ... 1) that absent an injunction, it will suffer irreparable harm,
and 2) that a sufficiently strong causal nexus relates the alleged harm to the alleged
infringement.'" A3 (emphasis added) (quoting Apple II, 695 F.3d at 1374); see
also Apple II, 695 F.3d at 1374 ("[I]n cases such as this ... a finding that the
patentee will be at risk of irreparable harm does not alone justify injunctive relief.
Rather, the patentee must also establish that the harm is sufficiently related to the
infringement." (emphasis added)).
The district court's ruling cannot be reconciled with this Court's post-eBay
rulings upholding permanent injunctions without mentioning a causal nexus
requirement or even inquiring into the reasons why consumers may buy products
-49-
covered by the patent, let alone whether the patented feature drove demand for the
infringing product. See, e.g., Bosch, 659 F.3d at 1152-1155 (reversing denial of
permanent injunction where both patentee and infringer sold "beam-type"
windshield wiper blades, without discussing what the patent claimed or whether
the claimed invention drove consumer demand); Broadcom, 543 F.3d at 701-703
(affirming permanent injunction where both parties sold third-generation baseband
processor chips without discussing whether patented features drove demand for
infringing products); Acumed, 551 F.3d at 1329 (affirming permanent injunction
where both patentee and infringer made orthopedic nails used in treatment of upper
arm bones without discussing whether the claimed curvature of those products
drove demand).
Nor can the causal nexus requirement be reconciled with this Court's
affirmance of permanent injunctions covering multiple patented features of the
same product. The district court applied the causal nexus requirement on a
"patent-by-patent basis," demanding proof that each patented feature individually
drove demand. A7. Such proof would be difficult--if not impossible--to show
for products embodying multiple patented features, where it is unlikely that a
patentee could offer proof that each patented feature independently drove demand.
In other cases upholding permanent injunctions based on multiple patents claiming
distinct components of the same accused product, this Court has never even
-50-
discussed whether any of the patented features drove demand for those products,
much less required a particularized showing of that overall demand was driven by
each patented feature. See, e.g., Bosch, 659 F.3d at 1152-1155 (affirming
permanent injunction based on two windshield wiper patents, one of which
covered blade end caps and the other claimed the blade spoiler); Broadcom, 543
F.3d at 687, 701-703 (upholding permanent injunction as to two baseband
processor patents covering two distinct networking features).
B. Importing A Causal Nexus Requirement For Preliminary
Injunctions Into The Permanent Injunction Context Is Unjustified
And Unnecessary
The district court's extension of the causal nexus requirement from the
preliminary injunction context to the permanent injunction context was not only
contrary to the statute and controlling case law, but also failed to account for the
significant differences between the two forms of relief, which dictate a more
flexible approach to permanent injunctions. A preliminary injunction is an
"extraordinary remedy never awarded as of right"; it alters the status quo even
before the defendant has been found to have engaged in wrongful conduct.Winter
v. Natural Res. Def. Council, Inc., 555 U.S. 7, 22, 24 (2008); see also Warner
Chilcott Labs. Ireland Ltd. v. Mylan Pharms. Inc., 451 F. App'x 935, 938-939
(Fed. Cir. 2011) (nonprecedential). Permanent injunctions, by contrast, issue only
after the defendant has been found to have acted unlawfully. See Grupo Mexicano
-51-
de Desarrollo S.A. v. Alliance Bond Fund, Inc., 527 U.S. 308, 315 (1999) ("The
final injunction establishes that the defendant should not have been engaging in the
conduct."). In a patent case, the liability determination--provided in this case by a
jury verdict that Samsung infringed numerous valid Apple patents--is a finding
that the plaintiff has a "property right[] granting the [plaintiff] the right to
exclude" the defendant from practicing the patent. Bosch, 549 F.3d at 1149; see
also eBay, 547 U.S. at 395 (Roberts, C.J., concurring) (noting how remedies in
patent cases should "protect[] a right to exclude" (first emphasis added);
ActiveVideo, 694 F.3d at 1341 ("The heart of the patent grant is the right to
exclude." (emphasis added)); Edwards Lifesciences AG v. CoreValve, Inc., 699
F.3d 1305, 1314 (Fed. Cir. 2012) ("A patentee's right to exclude is a fundamental
tenet of patent law."); Momenta Pharms., Inc. v. Amphastar Pharms., Inc., 686
F.3d 1348, 1361-1362 (Fed. Cir. 2012) (Rader, C.J., dissenting) ("By definition a
patent defines a right to exclude. Consistent with property principles ... [t]he
remedy for trespassing, in this area of property law as well as others, is removal of
the trespasser. Indeed even the Constitution acknowledges the patent owner's right
to exclude trespassers."); 35 U.S.C. § 154(a)(1) (conferring "right to exclude").
A finding of liability thus alters the legal relationship between the parties
and, most importantly, increases a patentee's entitlement to remedies that may not
have been justified prior to the infringement determination. A court denying a
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preliminary injunction has not definitively refused an equitable remedy; it has
simply refused to enjoin conduct that might or might not ultimately prove
unlawful. But once that conduct has been adjudicated as infringing, a permanent
injunction is the plaintiff's only opportunity to stop the infringement, instead of
being forced to tolerate it for a price that (as Apple proved here) is inadequate to
compensate for the full harm.
Thus, this Court has been particularly swayed at the permanent injunction
stage by evidence that the parties compete with each other. While direct
competition between patentee and infringer may not justify a preliminary
injunction when infringement is uncertain, it is a significant factor favoring a
permanent injunction once infringement has been adjudicated. Compare
Jeneric/Pentron, Inc. v. Dillon Co., 205 F.3d 1377, 1379-1380, 1384 (Fed. Cir.
2000) (affirming denial of preliminary injunction against plaintiff's direct
competitor because the issue of infringement required further factual
development), with Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10, 35
(Fed. Cir. 2012) (remanding permanent injunction determination where "trial court
did not address [patentee's] contention that it was a direct competitor"), and Bosch,
659 F.3d at 1150-1151 ("[T]he [district] court committed a clear error of judgment
when it concluded that Bosch failed to demonstrate irreparable harm ... in light of
... evidence of ... the parties' direct competition."), and i4i, 598 F.3d at 861
-53-
(noting approvingly the district court's finding that "Microsoft and i4i were direct
competitors" in awarding a permanent injunction).
The district court's application of the causal nexus requirement makes it
exceedingly difficult for patentees to obtain a permanent injunction against direct
competitors in the increasingly common situation that a single patent does not
cover an entire product, but only an innovative design or feature within a larger
product. Consumer preferences are often not discretely discernible, and the causal
nexus requirement prevents injunctions in cases where a patent covers technology
that unquestionably enhances the value or improves the product even though it
does not form the sole basis for consumer demand. For instance, a patentee who
developed an innovative safety device for cars that dramatically reduces accident
fatalities would be unable to prevent others from copying it, since several other
more prominent features of a car drive consumer demand.
Indeed, the district court required Apple to show not only that a particular
feature drives consumer demand, but insisted that Apple's evidence precisely
match the patented elements of a particular feature. A8 ("[C]ustomer demand for a
general feature of the type covered by a patent [is] not sufficient; Apple must
instead show that consumers buy the infringing product specifically because it is
equipped with the patented feature." (citing Apple II, 695 F.3d at 1376)); A10
(concluding that customer surveys did "not identify features at a level of specificity
-54-
sufficient to determine whether they are actually covered by Apple's patents"); id.
("Apple's evidence ... showing the importance of ease of use ... does not establish
that infringement of any of Apple's patents caused any harm that Apple has
experienced. To establish the required nexus, Apple must make a showing specific
to each patented feature." (citing Apple II, 695 F.3d at 1376)). But no consumer
survey can readily ask consumers about particular patent claims or claim
limitations at that level of specificity. The causal nexus requirement would thus all
but eliminate permanent injunctions to protect patent rights in domains where
complex products employ multiple technologies--even in cases between direct
competitors.
As just one example, the causal nexus requirement as interpreted by the
district court would have severe effects in the electronics industry. Electronic
devices contain many features--many of which are patented--that are not apparent
to consumers and yet unquestionably enhance the utility and value of the product.
A patentee claiming an innovative feature used in a smartphone, computer, or
game system may never be able to satisfy the causal nexus requirement as
articulated by the district court because purchasers usually buy those products for
multiple functions--making phone calls, sending e-mail, browsing the Internet,
playing games--rather than any one particular feature or device that is part of the
larger product. While generally important, individual features in complex products
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will almost never drive consumer demand by themselves. See Shaver, Illuminating
Innovation, 69 Wash. & Lee L. Rev. 1891, 1943 ("Articulated in [Apple II's] way,
the Federal Circuit's `causal nexus' standard seems extremely difficult to satisfy....
This ruling may signal the end of the injunction ... in the smartphone patent
war."). Two of Samsung's experts, when deposed, admitted as much. A4721-
4722(26:8-27:2); A4760-4761(21:22-22:3); A4764(26:7-14). To require proof that
sale of the infringing products is "driven" by the patented elements of specific
features would thus represent "a major departure from the long tradition of equity
practice" that rejected "expansive principles suggesting that injunctive relief could
not issue in a broad swath of cases." eBay, 547 U.S. at 391, 393.
The consequences of applying the causal nexus requirement in the
permanent injunction context as the district court did here are not only dire and
unprecedented, but also entirely avoidable. In fact, the very concern that gave rise
to the causal nexus requirement for preliminary injunctions can be eliminated in
the more flexible permanent injunction context without the addition of a new
stringent causation requirement. As this Court explained in Apple II, the causal
nexus requirement serves to prevent a patentee from unfairly leveraging a patent
for a single feature in a multi-faceted product by seeking an injunction requiring
the defendant to remove the entire product from the market immediately. Apple II,
695 F.3d at 1375 (explaining the causal nexus requirement informs "whether the
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patentee seeks to leverage its patent for competitive gain beyond that which the
inventive contribution and value of the patent warrant"). Of course, an injunction
based on a patent claiming less than the full device would not have this coercive
effect if the defendant could implement design-arounds for the accused feature.
Such design-arounds, however, cannot always be implemented instantly, but since
the extraordinary remedy of a preliminary injunction by its very nature must be
executed swiftly, enjoined defendants may have to withdraw products well before
they can implement measures to avoid infringement.
By contrast, in the permanent injunction context, courts can exercise their
considerable discretion to delay enforcement until the defendant has time to
effectuate the requisite design-arounds in situations where it would be inequitable
to require immediate compliance. E.g., Broadcom, 543 F.3d at 704 (approving the
"carefully constructed" sunset provision in permanent injunction, which would
allow defendant to implement design-arounds for the limited infringing
functionalities in the accused baseband processers); Verizon, 503 F.3d at 1311 n.12
(noting that the defendant could have requested a "workaround period" to
ameliorate any hardship from a permanent injunction). A court may therefore rely
on the flexibility of permanent injunctive relief to strike the proper balance
between the patentee's right to exclude others from implementing and profiting
from the infringing features and the public's interest in the overall device. In this
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case, that balance tips decidedly in favor of an immediate injunction because
Samsung's claim that it has already designed around Apple's patents eliminates
any argument from Samsung that an injunction at this point would allow Apple to
exclude more than its inventive contribution.
This flexible approach to permanent injunctions is entirely consistent with
the closely-related relationship between the entire market value rule and reasonable
royalty damages. To recover a reasonable royalty based on the entire value of an
accused product, the patentee must show--as with the causal nexus requirement--
that the patent either claims the entire product or else a smaller feature that drives
demand for the entire product. See Garretson v. Clark, 111 U.S. 120, 121 (1884);
Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1318 (Fed. Cir. 2011); see
also LaserDynamics, 694 F.3d at 67 ("[T]he entire market value rule allows ...
damages based on the value of an entire apparatus containing several features,
when the patented feature constitutes the basis for customer demand." (emphasis
added) (quoting Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1336 (Fed.
Cir. 2009))). But the failure to prove that the patented feature "drives demand"
does not mean that the patentee gets no damages at all; it simply means that the
patentee must apportion part of the entire product's value to the patented feature,
so that the patentee does not recover more than the value of what has been
invented. Indeed, a patentee still can obtain a reasonable royalty without satisfying
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the entire market value rule, which after all "is a narrow exception" to the general
damages rule. LaserDynamics, 694 F.3d at 67. The same should apply for a
permanent injunction, which neither this Court nor the Supreme Court has
suggested should be a "narrow exception" in a patent case--especially not when
the traditional four-factor test is satisfied. See eBay, 547 U.S. at 395 (Roberts,
C.J., concurring) (noting the "long traditions of equity practice" in which
permanent injunctions were granted upon a finding of patent infringement);
Presidio, 702 F.3d at 1362 (same). Rather, the much simpler solution is to allow
courts to exercise their considerable discretion to sculpt injunctions so as to permit
defendants to implement design-arounds, which would--like the entire market
value rule--prevent the patentee from reaping a windfall without denying relief
entirely.
C. The District Court's Rigid Application Of The Causal Nexus
Requirement Is Contrary To Principles Of Equity
Even if there is a causal nexus requirement to obtain permanent injunctive
relief, it cannot operate as rigidly as the district court applied it here. The district
court treated the causal nexus requirement as a necessary prerequisite to
demonstrating irreparable harm. E.g., A12 ("Without a causal nexus, this Court
cannot conclude that the irreparable harm supports entry of an injunction."); A22
("Without the required causal nexus, the parties' status as direct competitors
simply does not justify an injunction."). eBay, however, expressly rejected such
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categorical rules for obtaining injunctive relief. 547 U.S. at 393 ("To the extent
that the District Court adopted such a categorical rule, then, its analysis cannot be
squared with the principles of equity adopted by Congress."); id. at 394 ("Just as
the District Court erred in its categorical denial of injunctive relief, the Court of
Appeals erred in its categorical grant of such relief."). It was inconsistent with
principles of equity for the district court in this case to adopt a similar bright-line
rule that forecloses injunctive relief entirely in the absence of a sufficient causal
nexus. Id. at 393 (holding that "traditional equitable principles do not permit such
broad classifications" such that "injunctive relief could not issue in a broad swath
of cases").
Because no single equitable factor is dispositive, the causal nexus
requirement can, at most, be one of the many considerations that determine the
strength of the patentee's evidence of irreparable harm. A strong showing of
irreparable harm should offset comparatively weak evidence of causal nexus, and
vice-versa. It was error for the district court to give dispositive weight to the
causal nexus requirement, particularly in a case like this where the court made
findings for each of the four traditional equitable factors that otherwise strongly
supported entry of a permanent injunction.
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D. In The Alternative, Any Reasonable Causal Nexus Requirement
Is Satisfied By Apple's Evidence That Product Design And User
Interface Are Important To Consumers
Even if this Court concludes that a patentee must show a causal nexus in
order to obtain a permanent injunction--though Apple maintains it should not--
Apple has demonstrated the requisite causal connection between Samsung's
infringement and the irreparable harm to Apple under any reasonable
understanding of the causal nexus requirement. In Apple I, this Court held that the
district court "was correct to require a showing of some causal nexus between
Samsung's infringement and the alleged harm to Apple" before granting a
preliminary injunction. 678 F.3d at 1324 (emphasis added). The Court explained
that this standard was satisfied by survey evidence showing "that design mattered
... to customers." Id. at 1328 (emphasis added). That survey evidence spoke only
to the importance of "design" to consumer demand generally, not to the importance
of the specific patented design features.
The district court here, however, concluded that this Court in Apple IIset a
more stringent standard, such that Apple's evidence that consumers view design
and user interface as highly important when selecting smartphones is no longer
sufficient to establish a causal nexus, even where the patents-in-suit claim the most
prominent design features and user interface functions of Samsung's infringing
smartphones. A8 ("Even if the Court accepted as true Apple's contention that the
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patents cover the most central design features, it would not establish that any
specific patented design is an important driver of consumer demand."). This Court
set no such rule in Apple II. Rather, the Court merely concluded that evidence of
the popularity of a feature of the iPhone, the Siri voice-activated personal assistant
application, did not in those circumstances demonstrate that consumers similarly
valued one of the many different elements comprising that feature--the patented
unified search functionality by itself, which Samsung implemented without Siri's
voice-activated interface. See Apple II, 695 F.3d at 1376-1377. Here, by contrast,
Apple's patented designs and features are such large components of the overall
design and ease-of-use of Samsung's infringing smartphones that Apple's
undisputed evidence of the importance of those features to consumers should have
been more than sufficient to demonstrate a causal nexus between Samsung's
infringement and the irreparable harm Apple has suffered.
1. The patented designs drive consumer demand
Samsung copied Apple's patented designs, which are broad in scope and
include the most important elements of the iPhone's design, including the black
reflective front (D'677 patent), the front shape, large screen, and distinctive bezel
(D'087 patent), and the look of the home screen (D'305 patent). The district court
found that "Apple has presented significant evidence that design, as a general
matter, is important in consumer choice," citing a Samsung survey "finding
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exterior design to be an important factor in phone choice" and a J.D. Power study
concluding that "overall design and style" was the most important reason for
buying a smartphone. A8; A32004; A32050; see also A4208 (appearance and
design are important to Apple consumers); A50102 (same). Moreover, Apple
presented undisputed evidence that Samsung, its customers, and industry reviewers
praised specific elements of Apple's patented designs as used in both the iPhone
and Samsung's infringing smartphones. E.g., A32717 (New York Times review
praising the iPhone's "shiny black face," "rimmed by mirror-finish stainless
steel"); A4974 (consumer praise for the "cool," "reflective screen" of Samsung's
infringing smartphones); A4183 ("The menu [of Samsung's infringing Galaxy S
smartphone] looks just like the iPhone. But I like it cause it looks familiar to
me."); A4497 (Samsung's infringing Galaxy S smartphone "[l]ooks exactly like an
iPhone. Looks really nice. Very sleek looking. Rounded good."). That
evidence was reinforced by Apple's consumer research, which showed that design
is important to Apple's brand image and consumer demand. A20634-20637(634:4-637:15); A32749; A32758; A32764; A32771;
see also A50102
(summarizing Apple's survey evidence); A20625-20629(625:1-629:9) (describing
the reasons for the iPhone's success, including first and foremost that "people find
the iPhone designs beautiful"). This undisputed evidence of the importance of the
overall design and the specific patented design features to consumers should have
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been more than sufficient to show a causal nexus between Samsung's infringement
and Apple's irreparable harm.
2. The patented user interface features are important drivers
of consumer demand
Apple likewise presented overwhelming evidence that its innovative user
interface in general, and its patented "double-tap-to-zoom," "pinch-to-zoom," and
"bounce-back" features in particular, are major drivers of consumer demand.
Consumer survey studies--including surveys commissioned by Samsung--
repeatedly identify Apple's easy-to-use user interface as critical to the success of
Apple's products. A30528 ("Easy and intuitive [user interface]" is an iPhone
"success factor"); A30680 ("Ease of use is the major driver of [consumer] interest
in touch"); A50103 ("Ease of Use" is very important or somewhat important to
95% of iPhone buyers). Indeed, Samsung and its consultants praised Apple's
patented "pinch-to-zoom," "double-tap-to-zoom," and "bounce-back" features, and
recommended that Samsung copy them in order to compete with Apple. A30703
(iPhone's "two finger pinch" and "bounce" are "fun" and "add a game-like quality
to interactions"); A4493 (iPhone's "Pinch to zoom" allows "more intuitive and
easier browsing"); A30863, A30868 (iPhone's "Double Tap" zooming is the "most
preferred method" and should be adopted by Samsung); A31219 (iPhone
"[g]enerates fun for the user with a visual element that seems to bounce," which
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Samsung recommended implementing in its own products); A31549 (Samsung's
lack of "bounce" deprives its product of the iPad's "Fun, Wow Effect").
Samsung was not alone in recognizing the importance of those features to
consumers. Consumer reviews immediately praised Apple's patented multi-touch
user interface as "real magic" and "wicked cool" (A32719) because it creates "a
whole new kind of interface" with the illusion of "stretching and shrinking
photographs with [your] fingers" (A32727). And unrebutted testimony at trial
confirmed the importance of those patented features to consumers. A20625-20626(625:4-626:19) (describing the reasons for the success of the iPhone and
iPad, including Apple's software inventions that make those devices "intuitive and
simple").
Consistent with the importance of Apple's patented multi-touch user
interface feature, Apple presented survey evidence at trial showing that consumers
are willing to pay more for smartphones and tablet computers that incorporate
Apple's specific patented features. A30488 (consumers willing to pay $39 more
for a smartphone and $45 more for a tablet computer that includes Apple's
patented "pinch-to-zoom" feature and $100 more for a smartphone and $90 for a
tablet computer that includes all three features claimed by Apple's asserted utility
patents); see also A21929(1929:5-18) (explaining survey results); A21945-
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21947(1945:18-1947:10) (explaining survey methodology); A4514-4519(¶¶1-18);
A4533-4587.
The district court nevertheless rejected Apple's causal nexus evidence based
on an unreasonably high standard of proof. As with the design patents, the district
court erroneously concluded that Apple's evidence of the importance of ease-of-
use to consumers was "simply too general" to show a causal nexus to the patented
features. A10. But the court again incorrectly ignored the centrality of the
patented features to the unique Apple user experience, such that evidence of ease-
of-use strongly correlates with the patented features themselves. Moreover, the
court erroneously disregarded Apple's evidence that consumers, industry analysts,
and the parties themselves widely praised the specific patented features of the
iPhone and iPad's user interface. Had the court properly considered that evidence,
it would have concluded that a causal nexus exists between Samsung's
infringement and Apple's irreparable harm under any reasonable articulation of
such a requirement.
E. If The Panel Believes That Apple I And Apple IIPrevent Reversal,
Hearing En Banc Is Appropriate
As demonstrated above (pp. 48-60), the district court's application of a
causal nexus requirement to Apple's request for a permanent injunction cannot be
reconciled with the Supreme Court's and this Court's precedents. Not only did the
district court wrongly import the causal nexus requirement from this Court's
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preliminary injunction cases to the permanent injunction context, but the court also
applied the causal nexus requirement so rigidly that, without strong proof that each
patented element drives consumer demand, patentees cannot obtain permanent
injunctive relief, regardless of the strength of their showing on the four eBay
factors. Those errors warrant reversal on their own, regardless of the correctness
of the preliminary injunction rulings of Apple I and Apple II.
Nevertheless, to the extent the Panel disagrees and considers this appeal to
be governed by Apple I and Apple II, it should call for an en banc poll so that the
full Court may reconsider Apple I and Apple II. See ECF No. 33, Order (Feb. 4,
2013) (denying initial hearing en banc without prejudice to urging such a
procedure to the Panel). As explained above (pp. 48-59), the causal nexus
requirement of Apple I and Apple II cannot be reconciled with eBay or this Court's
permanent injunction cases, which have consistently awarded permanent injunctive
relief without ever considering the existence of a sufficient causal nexus, let alone
requiring particularized proof that "the infringing feature drives consumer demand
for the accused product." Apple II, 695 F.3d at 1375. Clear guidance on this issue
is particularly important because the availability of permanent injunctive relief
"should not be" an "area of law in which [this Court's] guidance is mixed or
muddled." Edwards, 699 F.3d at 1316 (Prost, J., concurring).
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III. THE DISTRICT COURT ERRONEOUSLY DENIED APPLE AN INJUNCTION
AGAINST SAMSUNG'S TRADE DRESS DILUTION
Traditional principles of equity also favor enjoining Samsung's dilution of
Apple's iPhone trade dress. As with Samsung's patent infringement, Samsung's
trade dress dilution has caused Apple irreparable harm that cannot be fully
compensated with money damages.4 Samsung's launch of the Galaxy S
smartphone in June 2010--one of the six smartphones that the jury found to be
dilutive--began a period of substantial market growth for Samsung at Apple's
expense. See supra pp. 17-19. The balance of hardships again tips in Apple's
favor because Samsung cannot claim to be burdened by an injunction having also
claimed to cease selling its diluting smartphones. A15. And the public interest
favors an injunction to avoid the consumer confusion that would result if Samsung
were allowed to continue to diminish the distinctiveness of Apple's trade dress.
A21695-21696(1695:2-1696:2) (recounting results of study showing "that it is
likely that consumers will associate the look and design of the Samsung [accused
smartphone products] with Apple or with the iPhone.").
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Nevertheless, the district court departed from its statutory obligation to grant
an injunction consistent with the traditional principles of equity (see 15 U.S.C.
§ 1125(c)) because Samsung claimed to have voluntarily ceased its diluting
activities. A15. The court cited no authority for the proposition that an injunction
should not issue in the absence of ongoing diluting conduct. Nor could it, as the
traditional principles of equity clearly recognize that voluntary cessation alone
does not defeat a party's right to injunctive relief. See Allee v. Medrano, 416 U.S.
802, 810-811 (1974) ("It is settled than an action for an injunction does not become
moot merely because the conduct complained of has terminated, if there is a
possibility of recurrence, since otherwise the defendants would be free to return to
[their] old ways." (internal quotation marks omitted)). Courts faced with this very
situation have issued injunctions despite the other party's voluntary cessation of
the diluting conduct. See, e.g., Gucci Am., Inc. v. Guess?, Inc., 868 F. Supp. 2d
207, 223-224 (S.D.N.Y. 2012) (granting trademark dilution injunction for GRG
Stripe trademark even though it appears to have been pulled off the market before
suit was filed); OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 186
(W.D.N.Y. 2000) (granting trademark dilution injunction even though defendant
voluntarily ceased operating a diluting website as a commercial enterprise); see
also Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132, 1135-1136 (9th Cir.
-69-
1986) (recognizing that there is no requirement to prove ongoing trademark
infringement to obtain an injunction).
Moreover, the district court clearly erred in finding that "there is some
evidence that Apple has not always insisted on the exclusive us of its trade dress,"
such that monetary damages would be an adequate remedy for any future dilution.
A17. Contrary to the district's court finding, Apple has never licensed its trade
dress; indeed, such a license would be inconsistent with the source-identifying
function of trade dress. See 15 U.S.C. § 1125(c)(2)(A) (defining protections
against dilution to extend only to trade dress that is "widely recognized by the
general consuming public of the United States as a designation of source of the
goods"). The only evidence that the district court cited in support of that finding
was trial testimony identifying Apple's trade dress as part of Apple's "unique user
experience IP." A17 (citing A21956(1956:9-12)). But there was no evidence at
trial that Apple had licensed the trade dress component of its unique user
experience IP; rather, the only licensing of those IP rights discussed was Apple's
handful of patent licenses. E.g., A21957(1957:3-9).
This Court should reverse the district court's denial of an injunction for trade
dress dilution because that denial rested on the court's legally erroneous view that
ongoing dilution is a prerequisite for obtaining injunctive relief and its clearly
erroneous factual finding that Apple had previously licensed its trade dress to other
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companies. At the very least, vacatur and remand is required to allow the district
court to consider Apple's request for an injunction under the correct legal standard
and with a proper understanding of the record.
CONCLUSION
For the foregoing reasons, the district court's order denying a permanent
injunction should be reversed or, in the alternative, vacated and remanded for
further consideration. To the extent that the Panel determines that the causal nexus
requirement articulated in Apple I and Apple II forecloses reversal or vacatur here,
it should call for a vote for en banc review to reconsider Apple I and Apple II.
Respectfully submitted,
/s/ William F. Lee
MICHAEL A. JACOBS | WILLIAM F. LEE |
RACHEL KREVANS | MARK C. FLEMING
| ERIK J. OLSON | JOSEPH J. MUELLER
| RICHARD S.J. HUNG | LAUREN B. FLETCHER
| GRANT L. KIM | WILMER CUTLER PICKERING
| MORRISON & FOERSTER LLP | HALE AND DORR LLP
| address, phone | address, phone |
JONATHAN G. CEDARBAUM
WILMER CUTLER PICKERING
HALE AND DORR LLP
[address, phone]
Counsel for Plaintiff-Appellant Appel Inc.
February 12, 2013
____________________
1
The court granted Samsung's motion for JMOL that the asserted claims of
Samsung's U.S. Patent No. 7,447,516 were not exhausted, but upheld the jury's
finding that Apple did not infringe those claims. A124-126.
2
A31977 ("Samsung Seine [Galaxy S II (AT&T)] and Celox [Galaxy S II
(Skyrocket)] to `surround' iPhone with $329 an[d] $249 R/P."); A31978
("Samsung Celox [Galaxy S II (Skyrocket)] to undercut iPhone with $249 R/P.");
A31979 ("Samsung Stealth LTE [Droid Charge] at $249 to undercut $299 iPhone5
(no LTE)."); A31980 ("VZW Recommendation: Samsung 4G products to
undercut iPhone across tiers."); A31983 ("Gaudi [Galaxy S II (Epic 4G Touch)] to
undercut iPhone5 (4G) by $50."); A31985 ("Hercules [Galaxy S II (T-Mobile)] to
undercut iPhone5 (4G) by $50.").
3
Even if the district court believed that Apple's requested injunction was
overbroad, that is not a basis for denying injunctive relief entirely. The district
court has discretion to fashion an injunction tailored to the unique needs of the
case. E.g., TiVo, 646 F.3d at 890 n.9 (recognizing that "district courts are in the
best position to fashion an injunction tailored to prevent or remedy infringement").
4
Apple, however, need not have even made that showing to obtain an
injunction for trade dress dilution because, unlike under the Patent Act, the Federal
Trademark Dilution Act presumes harm from the dilution itself and provides that a
plaintiff that proves dilution "shall be entitled to an injunction ... regardless of the
presence of absence of actual or likely confusion, of competition, or of actual
economic injury." 15 U.S.C. § 1125(c) (emphasis added); see also A14
("Congress envisioned a dilution action, unlike a patent or trademark infringement
action, to be an action for an injunction, such that a finding of dilution would
normally result in an injunction.").
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CERTIFICATE OF SERVICE
I hereby certify that I filed the foregoing Brief for Plaintiff-Appellant Apple
Inc. with the Clerk of the United States Court of Appeals for the Federal Circuit via
the CM/ECF system and served a copy on counsel of record, this 12th day of
February, 2013, by the CM/ECF system and by electronic mail to the parties on
service list below.
Derek L. Shaffer
Quinn Emanuel Urquhart
& Sullivan, LLP
[address, phone, email]
Kathleen M. Sullivan
William B. Adams
Quinn Emanuel Urquhart
& Sullivan, LLP
[address, phone, emails]
Kevin A. Smith
Quinn Emanuel Urquhart
& Sullivan LLP
[address, phone, email]
Dated: February 12, 2013
/s/ William F. Lee
William F. Lee
Attorney for Plaintiff-Appellant Apple Inc.
CERTIFICATE OF COMPLIANCE
Counsel for Plaintiff-Appellant hereby certifies that:
1. The brief complies with the type-volume limitation of Federal Rule of
Appellate Procedure 32(a)(7)(B)(i) because exclusive of the exempted portions it
contains 13,954 words as counted by the word processing program used to prepare
the brief; and
2. The brief complies with the typeface requirements of Federal Rule of
Appellate Procedure 32(a)(5) and the type-style requirements of Federal Rule of
Appellate Procedure 32(a)(6) because it has been prepared using Microsoft Office
Word 2010 in a proportionally spaced typeface: Times New Roman, font size 14.
Dated: February 12, 2013
/s/ William F. Lee
William F. Lee
Attorney for Plaintiff-Appellant Apple Inc.
ADDENDUM
[PJ: Pages 85 through 109 is the order denying the motion for permanent injunction, which I've provided in the introduction of the article as PDF, with a link to a text version.]
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