Apple Fails to Win U.S. Injunction Against Samsung, Previously Offered 'Scrollback' Patent License

samsung logoLate last week, a U.S. judge declined to award a preliminary injunction that would have blocked Samsung from selling its Galaxy line of smartphones and tablets in the United States, marking a setback for Apple in its effort to take on Samsung for its alleged infringement of Apple's designs and functionality. Judge Lucy Koh did, however, suggest that Samsung was likely to have infringed some of Apple's patents but declined to issue an injunction because of a lack of evidence that Apple would suffer irreparable harm if Samsung were allowed to continue selling the products while the case was being heard.

In her ruling, Koh wrote that for some of the smartphones, "Apple has established a likelihood of success on the merits at trial."

Koh added that Apple would likely prove Samsung infringed one of its tablet patents. However, Apple had not shown that it was likely to overcome Samsung's challenges to the patent's validity, Koh wrote.

Apple must demonstrate both infringement and validity to succeed in its lawsuit.

Interestingly, The Verge notes that the court order declining to issue the injunction reveals that Apple has in fact licensed to third parties one key iOS patent covering the "scrollback" feature displaying the linen texture when elastically scrolling beyond the end of a document or webpage. Licenses for the patent were obtained by Nokia and IBM, and Apple offered a license to Samsung during failed negotiations back in November 2010.

Apple asserted this patent against Samsung as part of its failed attempt to get an injunction against Galaxy devices, and the court order denying the injunction includes general discussion of how past licensing behavior affects the decision of whether or not to grant an injunction. The discussion is nestled among two redacted statements shown to The Verge that confirm the '381 patent was licensed to IBM and Nokia, and that Apple offered a license to Samsung in November of 2010 as part of settlement negotiations.

At first blush, the revelation suggests that because Apple is indeed willing to offer licensing for certain iOS features rather going to the "thermonuclear war" extreme, its case may be strengthened by Samsung's refusal to purchase a license as other companies have done.

But the fact that Apple has been willing to license the feature to other companies for monetary compensation also undermines its argument that it is being irreparably harmed by Samsung's alleged infringement. In Koh's view, if Apple could be adequately compensated for the infringement through a license by Samsung, Apple could be made whole at a later date without the need for a preliminary injunction at this point in the trial.

Popular Stories

hikawa phone grip stand apple%402x

Apple Launches Second Limited-Edition iPhone Accessory in a Month

Friday November 21, 2025 3:53 am PST by
Apple has begun selling the Hikawa Phone Grip and Stand, a new limited-edition iPhone accessory designed with accessibility in mind. Designed by LA-based Bailey Hikawa to celebrate the 40th anniversary of accessibility at Apple, the grip uses magnets to securely snap onto any iPhone with MagSafe. Apple says it can be removed with ease, and doubles as a stand with two different viewing...
iOS 26

iOS 26.2 Adds These New Features to Your iPhone

Thursday November 20, 2025 10:50 am PST by
iOS 26.2 is currently in beta testing. The upcoming update includes a handful of new features and changes on the iPhone, including a new Liquid Glass slider for the Lock Screen's clock, offline lyrics for Apple Music, and more. In a recent press release, Apple confirmed that iOS 26.2 will be released to all users in December, but it did not provide a specific release date. Keep reading...
Apple Shopping Event 2025

Apple Announces 2025 Black Friday Event, Here's What You Can Get

Thursday November 20, 2025 6:28 am PST by
Apple's annual four-day Black Friday through Cyber Monday shopping event is returning on Friday, November 28 through Monday, December 1 in many countries, including the United States, Canada, Australia, New Zealand, France, Germany, Italy, Spain, the United Kingdom, Belgium, the Netherlands, Sweden, Thailand, and others. During the shopping event, customers can get an Apple gift card with...
maxresdefault

The MacRumors Show: iPhone 18 Pro Looks Like a Huge Upgrade

Friday November 21, 2025 9:10 am PST by
On this week's episode of The MacRumors Show, we talk through all of the new features and improvements expected to come to next year's iPhone 18 Pro and iPhone 18 Pro Max models. Subscribe to The MacRumors Show YouTube channel for more videos Apple's next-generation iPhones are less than ten months away and we already have a good idea about what to expect based on corroborated leaks, rumors,...
iOS 26 on Three iPhones

iOS 27 Will Reportedly Have Two Key Upgrades

Sunday November 23, 2025 8:48 am PST by
iOS 27 will reportedly have two major elements: quality improvements and new AI features. In his Power On newsletter today, Bloomberg's Mark Gurman said that iOS 27 will be similar to Mac OS X Snow Leopard, in the sense that Apple is focused on improving "quality and underlying performance" over adding new features. Gurman said there is one exception to this rule, though, as he expects...
Apple Foldable Thumb

Foldable iPhone to Debut These Two Breakthrough Features

Wednesday November 19, 2025 7:26 am PST by
Apple's first foldable iPhone is expected to launch alongside the iPhone 18 Pro models in fall 2026, and it's shaping up to include two standout features that could set it apart from the competition. The book-style foldable will reportedly feature an industry-first 24-megapixel under-display camera built into the inner display, according to a recent JP Morgan equity research report. That...
ipad black friday 2025

The Best Early Black Friday iPad Deals

Thursday November 20, 2025 10:20 am PST by
Black Friday is just over a week away, and iPad deals have finally started to flood in at retailers like Amazon and Best Buy. Below we're tracking discounts on every current generation iPad, including lowest-ever prices on M3 iPad Air and M5 iPad Pro, plus steep markdowns on iPad and iPad mini. Note: MacRumors is an affiliate partner with some of these vendors. When you click a link and make a ...
General Black Friday Deals 25 Red

Apple Black Friday Deals Available Now on AirPods, iPads, Accessories, and More

Friday November 21, 2025 8:48 am PST by
We're officially less than one week away from Black Friday, which will take place on Friday, November 28 in 2025. As always, this will be the best time of the year to shop for great deals, including popular Apple products like AirPods, iPad, Apple Watch, and more. In this article, the majority of the discounts will be found on Amazon. Note: MacRumors is an affiliate partner with some of these...
Low Cost MacBook Feature A18 Pro

Report: Low-Cost iPhone, iPad, MacBook Coming Early 2026

Friday November 21, 2025 2:26 am PST by
Apple is planning to release new entry-level models across its iPhone, iPad, and Mac categories early next year, with an all-new affordable MacBook the most notable addition to the lineup. According to a new research report by Jeff Pu of GF Securities seen by MacRumors, Apple will launch the iPhone 17e – its second iteration of the "e" line – in the spring, likely along with a...

Top Rated Comments

AAPLaday Avatar
182 months ago
Hopefully these guys will call a truce for xmas and have a football match instead
Score: 15 Votes (Like | Disagree)
Oletros Avatar
182 months ago
Well done Samsung keep on fighting the trolls.

What trolls?
Score: 10 Votes (Like | Disagree)
kdarling Avatar
182 months ago
Here is my first reading of the judge's decision (http://docs.justia.com/cases/federal/district-courts/california/candce/5:2011cv01846/239768/452/)to not grant a preliminary injunction at Apple's request, which was based on two iPhone design patents, one iPad design patent, and one utility patent (the snapback one). Corrections welcomed.

---- PHONE DESIGN PATENTS

Apple's lawyers tried to claim that similar designs would have a product dilution affect, an idea which is ripped off from trademark law, and which Koh said is not normally applied to design patents.

Both design patents were limited because Apple had only patented the front, although of course now they were belatedly trying to claim side and back as well.

The first 2007 iPhone design patent ('087) was found to not count, because a 2005 Sharp Japanese design patent proved prior art:



The other one ('677) was challenged on account of functionality. The court noted that a minimalist design is that way specifically because it is all functional, not decorative. (Note: a design patent can ONLY patent decorative items.)

In addition, placement of speaker and screen is obvious. Still, the court felt that the Samsung design might infringe it due to the full sized black screen even though the details were different (home buttons, etc).

However, Apple did not prove that irreparable harm would occur for many reasons, including:

1) Apple's claim that Samsung had been copying them since 2007. Naturally, the fact that Apple waited until 2011 to sue Samsung over the design, didn't convince the court that such copying could cause irreparable harm... since Apple failed to complain during the first four years.

2) Another factor was that the court decided that if Samsung's devices were not sold, the real benefactor of an injunction would not be Apple, but the other manufacturers of smartphones (e.g HTC and LG).

---- TABLET DESIGN PATENT

Again, functionality was a major consideration, just as it was in the Netherlands judgement.

Moreover, the court saw too much prior art (e.g the 1994 Knight-Ridder concept and the TC1000 tablet).

Therefore the court found that Apple had failed to establish that it was likely to be able to prove the iPad's design patent validity in court.

As for irreparable harm, the court said that even if Samsung infringed (the possibly invalid patent), Apple had failed to prove that the iPad's physical design was the deciding factor for buyers... especially with prior art showing that the shape isn't what makes the iPad sell so well; it is the UI, apps and price.

---- SNAPBACK UI PATENT

Again, prior art was introduced, along with a Samsung intimation that perhaps Apple had deliberately withheld some of it from the USPTO. The judge disagreed.

The judge ruled that Apple could probably prove its validity and that Samsung likely infringed on this patent. However, it was not critical enough a smartphone patent to be grounds for an injunction.
Score: 8 Votes (Like | Disagree)
ChazUK Avatar
182 months ago
It's the same thing they did with the photo gallery app and were found in infringement in the Netherlands for. They went back to the stock Android behavior to circumvent the ban in the end.

The fact that they're intentionally changing the way that the stock applications behave to act like iOS counterparts is very discouraging from my perspective.

Hopefully this will lead to Samsung leaving things alone or coming up with alternative methods rather than trying to emulate competitors.
Score: 8 Votes (Like | Disagree)
gnasher729 Avatar
182 months ago
Are we all supposed to be impressed by your amazing command of the English Language and hit the thumbs up button on your post to make you feel superior???

OK, congratulations, you've corrected a grammatical error on an Internet Blog.
All those readers who don't use English as their first language appreciate such corrections very much. It used to be that reading a lot would give you a good command of the English language eventually; on the internet that is unfortunately not so. So _I_ am not impressed, but I appreciate the effort. And every little bit helps.


Overscroll on a washer/dryer or microwave... Intriguing ! :p
The next time you eat tomato soup, try stirring it, then take the spoon out and watch carefully: Just before the soup comes to rest, it actually rotates back a bit. Nowadays this is called "overscroll" :-)
Score: 7 Votes (Like | Disagree)
KnightWRX Avatar
182 months ago
Good, let these things proceed to trial and the parties being found guilty of infringement before any punishements are dished out.

This goes for both sides. All this injunction non-sense only hurts the consumer in the end.

Also good to know Apple is opening up to the idea of licensing their patents instead of hoarding them all and using them as a competitive edge only. Other parties are open to these cross-license agreements and in the end, the consumer wins.
Score: 5 Votes (Like | Disagree)