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Withdrawn Patents
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Federal Circuit Reverses And Remands
Order Granting Preliminary Injunction
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. |
