On Monday afternoon local time, Apple filed its opposition to Samsung's motion to dissolve the preliminary injunction against the Galaxy Tab 10.1 in light of the jury verdict, which somewhat surprisingly did not find the product to infringe the D'889 design patent. The preliminary injunction was granted in late June following a partly-successful Federal Circuit appeal by Apple. A hearing on Samsung's dissolution request may take place on September 20.
On September 6, Judge Koh ordered the parties to "address, in particular, the following issues: (1) whether the June 26, 2012 Preliminary Injunction order ('PI Order') automatically dissolves upon entry of final judgment [...] (2) whether the fact that the PI Order is on appeal impacts or stays any such dissolution; and (3) whether this Court has jurisdiction to rule on Samsung's dissolution motion while the PI Order is on appeal". Apple's opposition brief focuses mostly on those procedural questions and additionally argues, with a view to the balance-of-hardships question, that the Galaxy Tab 10.1 would have to be banned anyway since the jury found it to infringe three multi-touch software patents.
If Apple can prevent a near-term dissolution of that preliminary injunction, it will be because of the ongoing appeal. Judge Koh previously told Apple that it had to wait for the grant of that injunction while the matter was before the Federal Circuit. At that stage, the appeals court had already issued an opinion in Apple's favor on the D'889 matter, but it had not yet issued a formal mandate to the district court -- and since Samsung requested a rehearing (unsuccessfully in the end), a change of the appeals court's position was still possible. After the mandate was issued, Judge Koh granted the injunction fairly quickly, and then Samsung appealed.
It's still not a foregone conclusion that this works for Apple the way it did for Samsung. Even though the court formally has to treat one party's potential entitlement to the grant of an injunction the same way as some other party's potential entitlement to its dissolution (based only on the merits, not the type of action requested), the hurdle for dissolution may be lower. That's only a psychological issue, but if the court finds any wiggle room, then this can play a role.
If Apple wants to defend the preliminary injunction and have it converted into a permanent one (or reinstated after dissolution, which Apple's brief notes "would cause confusion in the market"), it has to get the jury verdict overturned. For other psychological/political reasons, that will be harder than it would usually be. Judge Koh's original assessment of the merits of the infringement allegations was such that the case was pretty clear for the D'889 but a close call for the smartphone design patents. The jury can only be overruled if it found what no reasonable jury could have found. For the tablet design patent, that may very well have been the case and Apple may be entitled to a Rule 50 decision, while the jury's finding on the smartphone side was probably within its discretion (this would also apply if the jury had decided the smartphone design patent stuff against Apple). But I believe the court will be very, very careful here because of the impression it could make if the court stepped in and completed Apple's victory while throwing out Samsung's Rule 50 motions (except for perhaps some adjustments to some components of the damages award).
If Apple convinces Judge Koh at this stage that she doesn't have jurisdiction over this matter while it's on appeal to the Federal Circuit and that the jury verdict didn't automatically dissolve the preliminary injunction, then it will also hope to dissuade the court from issuing an "indicative ruling" that Samsung would take to the Federal Circuit. The court enjoys a lot of discretion and doesn't have to issue an indicative ruling. Apple is right that the court can't really decide this matter before Apple's Rule 50 motion has been adjudicated. But Judge Koh granted Samsung a faster briefing schedule for its dissolution request than Apple for its push for a new injunction, even though both questions depend on the outcome of the Rule 50 process.
While Samsung would obviously like to get rid of the preliminary injunction sooner rather than later, any prejudice (other than from the injunction itself) can be avoided by delaying Samsung's appeal. Samsung requested a 60-day extension for the filing of its opening brief. Yesterday Apple told the appeals court that it's fine with that. And in the opposition brief filed with the district court, Apple even says that it "will not oppose a further extension, so that Samsung’s appellate brief will not be due until after this Court decides whether to dissolve the Tab 10.1 injunction or to convert it into a permanent injunction".
While Apple's procedural arguments may succeed, I don't think its claim that the Galaxy Tab 10.1 needs to be banned anyway (because of the three software patents the jury found infringed) is a very strong point. Even if one assumed for the sake of the argument that Apple is entitled to an injunction over those three software patents, it would be much easier for Samsung to modify the operating software of the Galaxy Tab 10.1 (which is done very frequently) than to replace the whole thing with a product that has a different physical design. What really matters with these injunctions is not which products are named (that also has some implications, but it's much less important than most people think). It's what must be done to work (or design) around them. In a footnote, Apple's opposition brief also highlights the "colorable difference" standard I've been talking about a lot lately because most analysts who commented on the impact of this case never figured it out. I thought it helpful to quote that entire footnote including all citations:
The jury verdict form for Apple's '381, '915, and '163 utility patents was limited to the "Galaxy Tab 10.1 (Wi-Fi)" and did not explicitly address the "Galaxy Tab 10.1 (4G LTE)," which is the cellular model. (See Dkt. No. 1031 at 1-3.) Even assuming the Court does not grant JMOL on D'889 infringement, an injunction on utility patents against the Galaxy Tab 10.1 (Wi-Fi) would also apply to any product that is "no more than colorably different" as to the claimed features. See Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299-1301 (Fed. Cir. 2012) (injunction applies in contempt proceeding to new product that is not more than colorably different from previously adjudged infringing product and that also infringes patent) (citing TiVo Inc. v. EchoStar Corp., 646 F.3d 869, 882 (Fed. Cir. 2011) (en banc)); nCUBE Corp. v. SeaChange Int'l, Inc., 809 F. Supp. 2d 337, 344-46, 353 (D. Del. 2011) (applying same test and further holding that res judicata did not bar contempt proceeding to enforce injunction because "a contempt proceeding is not a new proceeding, but, rather, a continuation of the same proceeding") (emphasis in original). Thus, unless the relevant software is more than colorably different with regard to the accused features, an injunction against the Galaxy Tab 10.1 (Wi-Fi) would also cover the Galaxy Tab 10.1 (4G LTE).
I also mentioned the TiVo v. EchoStar case (in this recent post).
Keep the above in mind next time some uninformed person, or someone with an intent to disinform, falsely claims that such products as the Galaxy S III won't be affected by an injunction over some or all of the software patents the jury found infringed. Simply put, the specifically-named exemplary infringing products merely provide a pattern that is useful for the analysis of newer products, and the newer products are those that matter commercially. Apart from that, the fact that a court finds an old product to (have) infringe(d) is, of course, an indispensable requirement for collecting damages for past infringement. Apple may very well bring damages claims over non-trial products such as the S III later (it could do this up to six years later and I'm sure this is not a high priority), but it doesn't need to bring a new lawsuit to force Samsung to modify those products.
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