Written by Chitakone Arounlangsy
On January 2007, Apple Inc. patented the iPhone design which set forth subsequent litigation based on alleged utility and design patent infringement. http://fortune.com/2015/12/05/samsung-apple-timeline-settlement/. Apple Inc. sued Samsung Electronics Co., on April 2011, for alleged infringement of patents based on user interface, and the Galaxy S and Infuse phones’ similarity in appearance to Apple’s iPhone line. Id. Apple Inc.’s lawsuit has caught the attention of the United States Supreme Court, and the appeal from Samsung has been officially put on hold while SCOTUS examines the merits of the case. http://www.macobserver.com/tmo/article/apple-v-samsung-damages-retrial-officially-on-hold Samsung was ordered to pay $548 million in damages last year, which was the basis of the appeal. http://www.macobserver.com/tmo/article/apple-v-samsung-damages-retrial-officially-on-hold.
Apple Inc. filed suit on April 2011, alleging that Samsung infringed upon its D618,677, D593,087, D504,889, and US 7,469,381 patents. Apple, Inc. v. Samsung Elecs. Co., No. 11-cv-1846, 2011 U.S. Dist. LEXIS 139049 (N.D. Cal. Dec. 2, 2011). Apple Inc. requested a preliminary injunction against Samsung’s Galaxy S 4G and Infuse 4G smartphones. Id. The district court used four factors in determining whether an injunction would be appropriate. The factors were: 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. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1319 (Fed. Cir. 2012). The design and utility patents that Apple alleged Samsung infringed upon are as follows:
The D593,087 design 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. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1317 (Fed. Cir. 2012). 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. Id.
The D618,677 design patent is substantially the same as the D593,087 patent, and discloses an additional element of a transparent and glass-like front surface. Apple, Inc. v. Samsung Elecs. Co., No. 11-cv-1846, 2011 U.S. Dist. LEXIS 139049 (N.D. Cal. Dec. 2, 2011). The D618,677 patent disclaims the sides and back of the device. Id.
The D504,889 design patent is directed towards the design of a tablet computer. The patent depicts a rectangular tablet with a surface extending to the edge of the front side of the device. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1318 (Fed. Cir. 2012). Within that surface, broken lines delineate a slightly smaller rectangular display area. Id. The front face of the patented design has rounded corners, and a thin bezel surrounds the front surface along its perimeter. Id. The front surface has no ornamentation, buttons, speaker slots, holes, or raised surfaces. Id. 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. Id. Apple contends that the design patent is embodied by its iPad tablet line. Id.
US 7,469,381 is a utility patent that claims a software feature known as the “bounce-back” feature, which is found on Apple’s smartphones and tablets. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1318 (Fed. Cir. 2012). The bounce-back feature is activated when the user is scrolling through a document displayed on the device. Id. 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. Id. Once the user input ceases, the previously visible part of the document “bounces back” into view. Id.
On the D593,087 patent, the court ruled that it was unlikely to succeed on the merits because questions were raised about the patent’s validity, in it being similar and anticipated by a similar Japanese patent. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1319 (Fed. Cir. 2012).
Samsung’s Galaxy S 4G and Infuse 4G smartphones were found to be substantially similar to the claimed D618,677 patent. However, Apple was unable to show that it was likely to suffer irreparable harm from the importation and sale of Samsung’s infringing smartphones while the case was pending in the district court. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1320 (Fed. Cir. 2012).
The same was said about the D504,889 patent for lack of showing irreparable harm, and the court declined to issue an injunction with respect to the D504,889 patent. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1321 (Fed. Cir. 2012). The court also declined to issue an injunction with respect to the US 7,469,381 patent. Id. The court ruled that it failed to establish a relationship between any alleged loss of market share, customers, or goodwill between the Samsung phones and the claimed design. Id.
Apple appealed the denial of a preliminary injunction, and the Federal Circuit Court affirmed the denial based upon the D593,087, D618,677, and US 7,469,381 patents. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1328 (Fed. Cir. 2012). As for the D504,889 patent, the circuit court vacated and remanded the lower court’s decision for further review because it incorrectly determined the validity of the claimed patent. Id.
The basis of SCOTUS’s decision to grant Certiorari is based on Samsung’s appeal of requiring to pay $548 million in damages. http://www.marinij.com/general-news/20160321/us-supreme-court-to-hear-apple-v-samsung-patent-feud/9. SCOTUS will be answering the question of how damages should be assessed for patent violations when the technology involved is just one of many ingredients that go into a device like an iPhone. SCOTUS will hear the case on its next term beginning in October.