Apple, Inc. v. Samsung Elecs. Co.

• Decision Date: 19 June 2012
• Docket Number: No. 2012–1105.,2012–1105.
• Citation: 102 U.S.P.Q.2d 1633,678 F.3d 1314
• Parties: APPLE, INC., Plaintiff–Appellant, v. SAMSUNG ELECTRONICS CO., LTD., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC, Defendants–Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

678 F.3d 1314

102 U.S.P.Q.2d 1633

APPLE, INC., Plaintiff–Appellant,

v.SAMSUNG ELECTRONICS CO., LTD., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC, Defendants–Appellees.

No. 2012–1105.

United States Court of Appeals, Federal Circuit.

May 14, 2012.

Rehearing and Rehearing En Banc Denied June 19, 2012.

7,469,381. Cited.Michael A. Jacobs, Morrison & Foerster LLP, of San Francisco, CA, argued for plaintiff-appellant. With him on the brief were Harold J. McElhinny, Grant L. Kim, Alison M. Tucher and Richard S.J. Hung; and Brian R. Matsui, of Washington DC.

Kathleen M. Sullivan, Quinn Emanuel Urquhart & Sullivan, LLP, of San Francisco, CA, argued for defendants-appellees. With her on the brief were Charles K. Verhoeven, Kevin P.B. Johnson, Victoria F. Maroulis and Michael T. Zeller. Of counsel were Kevin Alexander Smith; and William B. Adams, of New York, NY.

Before BRYSON, PROST, and O'MALLEY, Circuit Judges.

Opinion for the court filed by Circuit Judge BRYSON. Concurring in part and dissenting in part opinion filed by Circuit Judge O'MALLEY.

BRYSON, Circuit Judge.

This is an appeal from the denial of a preliminary injunction. While the appeal presents substantial issues of law and fact, the decision whether to issue a preliminary injunction is one that is committed to the discretion of the district court, which makes the appellant's task in overturning that decision a difficult one. With respect to three of the four patents at issue in this appeal, we conclude that the appellant has not satisfied its burden of demonstrating an abuse of discretion, and we therefore affirm the denial of preliminary injunctive relief. With respect to the fourth patent, we conclude that the district court committed legal error in one important respect, so we vacate that portion of the court's order and remand for further proceedings in that part of the case.

I

A

Apple, Inc., is the owner of several design and utility patents pertaining to smartphones and tablet computers. U.S. Design Patent Nos. D593,087 (“the D' 087 patent”) and D618,677 (“the D'677 patent”) are directed to designs that Apple contends are generally embodied in the iPhone, Apple's popular smartphone. Those patents issued on May 26, 2009, and June 29, 2010, respectively. Both patents claim a minimalist design for a rectangular smartphone consisting of a large rectangular display occupying most of the phone's front face. The corners of the phone are rounded. Aside from a rectangular speaker slot above the display and a circular button below the display claimed in several figures of the patent, the design contains no ornamentation. The D'087 patent claims a bezel surrounding the perimeter of the phone's front face and extending from the front of the phone partway down the phone's side. The parts of the side beyond the bezel, as well as the phone's back, are disclaimed, as indicated by the use of broken lines in the patent figures. The D'677 patent does not claim a bezel but instead shows a black, highly polished, reflective surface over the entire front face of the phone. The D'677 patent disclaims the sides and back of the device. Representative depictions of the designs claimed in the D'087 and D'677 patents are reproduced below:

Image 1 (3.69" X 2.06") Available for Offline Print

(D'087 Patent, Fig. 1)

Image 2 (3.85" X 2.17") Available for Offline Print

(D'677 Patent, Fig. 1)

Apple also owns U.S. Design Patent No. D504,889 (“the D'889 patent”), which is directed to the design of a tablet computer. The patent depicts a rectangular tablet with a polished reflective surface extending to the edge of the front side of the device. Within that surface, broken lines delineate a slightly smaller rectangular display area. The front face of the patented design has rounded corners, and a thin bezel surrounds the front surface along its perimeter. The front surface has no ornamentation, buttons, speaker slots, holes, or raised surfaces. The back and sides of the design are also claimed; the figures depict a flat, unadorned back transitioning into the sides through a rounded-over edge. Apple claims that its iPad tablet computer embodies the design of the D'889 patent. A figure representing the claimed design shows the following:

Image 3 (2.89" X 2.45") Available for Offline Print

(D'889 Patent, Fig. 1)

Apple has also asserted U.S. Patent No. 7,469,381 (“the '381 patent”), a utility patent that claims a software feature known as the “bounce-back” feature, which is found on Apple's smartphones and tablets, such as the iPhone and the iPad. The bounce-back feature is activated when the user is scrolling through a document displayed on the device. If the user attempts to scroll past the end of the document, an area beyond the edge of the document is displayed to indicate that the user has reached the document's end. Once the user input ceases (i.e., when the user lifts up the finger that is used for scrolling), the previously visible part of the document “bounces back” into view. Claim 1 of the patent recites:

A computer-implemented method, comprising:

at a device with a touch screen display:

displaying a first portion of an electronic document;

detecting a movement of an object on or near the touch screen display;

in response to detecting the movement, translating the electronic document displayed on the touch screen display in a first direction to display a second portion of the electronic document, wherein the second portion is different from the first portion;

in response to an edge of the electronic document being reached while translating the electronic document in the first direction while the object is still detected on or near the touch screen display:

displaying an area beyond the edge of the document, and

displaying a third portion of the electronic document, wherein the third portion is smaller than the first portion; and

in response to detecting that the object is no longer on or near the touch screen display, translating the electronic document in a second direction until the area beyond the edge of the electronic document is no longer displayed to display a fourth portion of the electronic document, wherein the fourth portion is different from the first portion.

B

Apple filed suit against Samsung on April 15, 2011, alleging, inter alia, infringement of the D'677 and '381 patents. Two months later, Apple amended its complaint and asserted that Samsung was also infringing the D'087 and D' 889 patents. Specifically, Apple claimed that two of Samsung's smartphones, the Galaxy S 4G and the Infuse 4G, which were released on February 23, 2011, and May 15, 2011, respectively, infringed the D'087 and the D'677 patents. Apple also alleged that Samsung's Galaxy Tab 10.1 tablet, which was released in June 2011, infringed the D'889 patent, and that all three devices infringed the '381 patent.¹ On July 1, 2011, Apple moved for a preliminary injunction to block the importation into and sale within the United States of the accused Samsung devices.

The district court denied Apple's motion with respect to each of the accused devices and all four asserted patents. Apple, Inc. v. Samsung Elecs. Co., No. 11–cv–1846, 2011 WL 7036077 (N.D.Cal. Dec. 2, 2011). The court noted that four factors must be considered in addressing a motion for a preliminary injunction—whether the movant is likely to succeed on the merits; whether the movant is likely to suffer irreparable harm in the absence of an injunction; whether the balance of the equities favors the movant; and whether the public interest would be served by the grant of injunctive relief. As to the claims based on the D'087 and D'889 patents, the district court denied relief on the ground that Apple had failed to show a likelihood of success on the merits. As to the claims based on the D'677 and '381 patents, the court denied relief on the ground that Apple had failed to show that it would likely suffer irreparable harm from Samsung's continuing infringement while the case was pending before the district court.

C

The court first examined the D'087 patent and concluded that while the patented design did not cover functional features, substantial questions were raised about the patent's validity, and therefore Apple had failed to show that it was likely to succeed on the merits. The court held that the patented design claimed only the front face of the smartphone and that the front view was likely anticipated by Japanese Patent No. 1,241,638 (“the '638 patent”). The court found the D'087 design to be substantially similar to the '638 patent because it has “similar edges and rounded corners, a bezel, a similarly shaped speaker, and similar proportions of screen and border.” The '638 patent, the court found, “discloses an overall simple, minimalist design.” The court rejected Apple's argument that the arched profile of the front of the ' 638 design differed from the flat profile of the D'087 patent; in light of the fact that the sides and back of the phone were disclaimed in the D'087 patent, the court held that it was improper to consider anything other than the front views of the two designs. Given its finding that Apple failed to establish the first factor needed for a preliminary injunction, the court did not reach the other three preliminary injunction factors for the D'087 patent.

D

The court then addressed the D'677 patent. The court again looked to the ' 638 patent as a primary reference but concluded that the '638 design was sufficiently different from the D'677 patent that it would not have been obvious to a designer to adopt a “flat, black, translucent front screen.” The court therefore concluded that Samsung had not raised a substantial question regarding the validity of the D'677 patent. As to infringement, the court found that both the Galaxy S 4G and the Infuse 4G phones had an overall design that an ordinary observer would likely find substantially the same as the claimed D'677 design and...