Apple Fails to Win U.S. Injunction Against Samsung, Previously Offered 'Scrollback' Patent License
Late 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.
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---- 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.
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.
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" :-)
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.