When will a Federal court order a patent infringer to stop infringing?

Apple and Samsung have been fighting for years over copying by Samsung of patented features of Apple’s iPhone and iPad.  The features at issue in a recent Apple v Samsung case before the Federal Circuit Court were swipe-to-unlock, telephone number recognition, and spelling correction.  A jury found that Samsung actively copied these features and infringed the patents and awarded Apple $119 million in damages for the infringement.

Apple then asked the trial court to issue an injunction (court order) directing Samsung to stop infringing.   Apple did not ask that Samsung stop selling phones and tablet computers, only that Samsung remove the infringing features from its phones and tablets.  Prior to 2006, such a request almost certainly would have been granted; however, in that year the Supreme Court decided eBay v MercExchange.  In eBay, the Supreme Court determined that a patent owner is entitled to a court order stopping infringement only if the patent owner can show ‘irreparable injury’ from the infringement, among other things. The trial court found that the features at issue were important to Apple’s high-risk development and launch of the iPhone and the iPad, but nonetheless denied Apple’s request.  The trial court concluded that Apple did not show ‘irreparable injury’ because Apple did not show that the patented features were the sole cause of Apple’s loss of sales to Samsung.  The Federal Circuit Court reversed, holding that showing that a single feature is the sole reason that someone buys a smartphone or tablet computer is impossible where the smartphone or tablet may have hundreds of thousands of features.  The Federal Circuit said that the patent owner need only demonstrate the infringing feature ‘impacts customer’s purchasing decisions’ and that Apple demonstrated through surveys and other evidence that customers did base purchasing decisions on the patented features.  The two-judge majority remanded to the trial court to issue the injunction, over a spirited dissent. We have not seen the last of this case

— Robert Yarbrough, Esq.

February 3, 2016