Greenblum & Bernstein, P.L.C.
Recent Litigation News in Intellectual Property
In This Issue
· Federal Circuit Reverses And Remands Order Granting Preliminary Injunction
· Federal Circuit Affirms District Court On All Counts
· Federal Circuit Lacked Jurisdiction Over Withdrawn Patents
In Apple Inc. v. Samsung Electronics Co., LTD (Appeal No. 2012-1507), the Federal Circuit reversed and remanded the district court order issuing a preliminary injunction enjoining Samsung from selling its Galaxy Nexus smartphone.
Apple filed a motion for a preliminary injunction seeking to enjoin the sales of the Galaxy Nexus smartphone. Four of the eight patents asserted in the complaint formed the basis of Apple’s request for relief. The district court found that Apple’s allegations with regard to three of the patents did not justify granting Apple’s motion, however, the court found that an injunction should issue based on the alleged infringement of the fourth patent, the ’604 patent.
In reviewing the grant of the preliminary injunction, the Federal Circuit noted that a plaintiff seeking a preliminary injunction must establish that (i) it is likely to succeed on the merits; (ii) it is likely to suffer irreparable harm in the absence of preliminary relief; (iii) the balance of equities tips in its favor; and (iv) an injunction is in the public interest. The parties disputed the district court’s decision to grant injunctive relief based on the analysis of the likelihood of success and irreparable harm factors.
With respect to irreparable harm, the Federal Circuit held that the district court abused its discretion in determining that Apple established a sufficient causal nexus between the harm alleged and the infringing conduct. To establish a sufficiently strong causal nexus, the Federal Circuit stated that Apple must show that consumers buy the Galaxy Nexus because it is equipped with the apparatus claimed in the ’604 patent—not because the Samsung device can search in general, and not even because the device has unified search. The Federal Circuit stated that the record did not permit the inference that the allegedly infringing features of the Galaxy Nexus drive consumer demand. “Regardless of the extent to which Apple may be injured by the sales of the Galaxy Nexus, there was not a sufficient showing that the harm flows from Samsung’s alleged infringement.” Thus, the Federal Circuit concluded that the district court abused its discretion in determining that the irreparable harm factor favored entry of an injunction.
The Federal Circuit also held that the district court had erred in its claim construction, such that Apple was not likely to succeed on the merits. Accordingly, the Federal Circuit reversed and remanded, holding that the district court abused its discretion in enjoining the sales of the Galaxy Nexus.
Federal Circuit Affirms District Court On All Counts
In Energy Transportation Group, Inc. v. William Dement Holding A/S (Appeal Nos. 2011-1487, 1488, 1489), the Federal Circuit affirmed the district court’s judgment of infringement and no invalidity.
The patents-in-suit relate to technology for reducing acoustic feedback in a programmable digital hearing aid.
The Federal Circuit first reviewed and affirmed the district court’s claim construction and finding of infringement. The Federal Circuit also held that the patents-in-suit were not invalid for failure to comply with the written description requirement because the record contained substantial evidence from which the jury could conclude that the patents-in-suit convey to one skilled in the art that the inventors were in possession of a programmable hearing aid that could use adaptive filtering for feedback cancellation at the time of filing.
On the issue of anticipation, the Federal Circuit determined that the jury had assessed the credibility of both sides’ experts, and was entitled to credit plaintiff’s experts’ testimony that the prior art did not disclose the claimed invention, and as such, affirmed the district court’s denial of JMOL on anticipation.
The Federal Circuit also affirmed the damages award, even though the damages expert referred to the 25% rule of thumb, which the Federal Circuit has previously held is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation. The Federal Circuit also affirmed the finding of no willfulness. Costs were awarded to the plaintiff.
Federal Circuit Lacked Jurisdiction Over Withdrawn Patents
In SanDisk Corp. v. Kingston Technology Co., Inc. et al. (Appeal No. 2011-1346), the Federal Circuit held that it lacked jurisdiction to review issues concerning patents which were withdrawn by the plaintiff.
SanDisk sued Kingston for infringement of U.S. Patent Nos. 5,719,808, 6,149,316, 6,426,893, 6,757,842, and 6,763,424. After the district court issued its claim construction opinion, SanDisk withdrew its infringement claims with respect to the ’808 and ’893 patents and claims 1, 6, 7, 10, 12, 15, 18, and 20 of the ’842 patent. The district court granted Kingston’s motion for summary judgment of non-infringement with respect to the asserted claims of the ’842, ’316, and ’424 patents. SanDisk dismissed its remaining infringement claims and appealed the district court’s judgment.
The Federal Circuit noted that when SanDisk informed Kingston that it was no longer pursuing certain claims, the district court did not enter a separate order dismissing those claims, but acknowledged in its summary judgment opinion that SanDisk had withdrawn them. The Federal Circuit treated SanDisk’s withdrawal of the claims as being akin to either a Rule 15 amendment to the complaint or a Rule 41(a) voluntary dismissal of claims without prejudice. The Federal Circuit reasoned, in either case, there was no final judgment before the Court with respect to those claims to review. Accordingly, the Federal Circuit held that it lacked jurisdiction over the withdrawn patents and patent claims, and limited its review to the patents addressed in the district court’s summary judgment decision of noninfringement.