Apple Inc. v. Samsung Electronics Co., Ltd. , 735 F.3d 1352 ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC.,
Plaintiff-Appellant,
v.
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC., AND SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC,
Defendants-Appellees.
______________________
2013-1129
______________________
Appeal from the United States District Court for the
Northern District of California in No. 11-CV-1846, Judge
Lucy H. Koh.
______________________
Decided: November 18, 2013
______________________
WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
Dorr LLP, of Boston, Massachusetts, argued for plaintiff-
appellant. With him on the brief were MARK C. FLEMING,
JOSEPH J. MUELLER and LAUREN B. FLETCHER; and
JONATHAN G. CEDARBAUM, of Washington, DC. Of counsel
on the brief were MICHAEL A. JACOBS, RACHEL KREVANS,
ERIK J. OLSON, RICHARD S.J. HUNG and GRANT L. KIM,
Morrison & Foerster LLP, of San Francisco, California.
Of counsel were ANDREW J. DANFORD, Wilmer Cutler
Pickering Hale and Dorr LLP, of Boston, Massachusetts;
2 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
MARK D. SELWYN, of Palo Alto, California; and RACHEL
WEINER, of Washington, DC.
KATHLEEN M. SULLIVAN, Quinn Emanuel Urquhart &
Sullivan, LLP, of New York, New York, argued for de-
fendants-appellees. With her on the brief were WILLIAM
B. ADAMS; and KEVIN A. SMITH, of San Francisco, Califor-
nia. Of counsel were JOHN B. QUINN, of Los Angeles,
California and DEREK SHAFFER, of Washington, DC.
PATRICK J. FLINN, Alston and Bird LLP, of Atlanta,
Georgia, for amici curiae Nokia Corporation, et al. With
him on the brief was KEITH E. BROYLES.
KEVIN X. MCGANN, White & Case LLP, of New York,
New York, for amici curiae Google, Inc., et al. With him
on the brief were CHRISTOPHER J. GLANCY, and WARREN S.
HEIT, of Palo Alto, California.
______________________
Before PROST, BRYSON, and O’MALLEY, Circuit Judges.
PROST, Circuit Judge.
Apple Inc. appeals from an order of the U.S. District
Court for the Northern District of California denying
Apple’s request for a permanent injunction against Sam-
sung Electronics Company, Ltd., Samsung Electronics
America, Inc., and Samsung Telecommunications Ameri-
ca, LLC (collectively, “Samsung”). See Apple Inc. v. Sam-
sung Elecs. Co., 909 F. Supp. 2d 1147 (N.D. Cal. 2012)
(“Injunction Order”). Apple sought to enjoin Samsung’s
infringement of several of Apple’s design and utility
patents, as well as Samsung’s dilution of Apple’s iPhone
trade dress. We affirm the denial of injunctive relief with
respect to Apple’s design patents and trade dress. How-
ever, we vacate the denial of injunctive relief with respect
to Apple’s utility patents and remand for further proceed-
ings.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 3
BACKGROUND
A. Proceedings Below
Apple sued Samsung in April 2011, alleging infringe-
ment of several Apple patents and dilution of Apple’s
trade dress. Samsung filed counterclaims, alleging in-
fringement of several of its own patents. The case was
tried to a jury beginning on July 30, 2012, and on August
24, 2012, the jury returned a verdict substantially in
Apple’s favor. The jury found that twenty-six Samsung
smartphones and tablets infringed one or more of six
Apple patents. The jury also found that six Samsung
smartphones diluted Apple’s registered iPhone trade
dress and unregistered iPhone 3G trade dress. In addi-
tion, the jury rejected Samsung’s infringement counter-
claims and awarded Apple more than $1 billion in
damages. The district court later set aside a portion of
the damages award for certain products and scheduled a
partial new trial on damages, but it affirmed the jury’s
liability findings.
After trial, Apple moved for a permanent injunction to
enjoin Samsung from importing or selling any of its
twenty-six infringing smartphones and tablets1 “or any
other product not more than colorably different from an
Infringing Product as to a feature or design found to
infringe.” Injunction Order, 909 F. Supp. 2d at 1149.
1 The twenty-six products found to infringe Apple’s
patents are Samsung’s Captivate, Continuum, Droid
Charge, Epic 4G, Exhibit 4G, Fascinate, Galaxy Ace,
Galaxy Prevail, Galaxy S, Galaxy S 4G, Galaxy S II
(AT&T), Galaxy S II (i9000), Galaxy Tab, Galaxy Tab 10.1
(Wi-fi), Gem, Indulge, Infuse, Mesmerize, Nexus S 4G,
Replenish, Vibrant, Galaxy S II (T-Mobile), Transform,
Galaxy S Showcase, Galaxy S II (Epic 4G Touch), and
Galaxy S II (Skyrocket).
4 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
Apple also sought to enjoin Samsung from selling any of
its six smartphones found to dilute Apple’s trade dress. 2
On December 17, 2012, the district court denied Ap-
ple’s request for a permanent injunction. See id. at 1149-
50. Apple appealed, and we have jurisdiction under 28
U.S.C. §§ 1292(c)(1) and 1295(a)(1).
B. Prior Appeals
This court has previously issued two opinions in ap-
peals involving these particular parties and the issue of
injunctive relief. 3 In Apple Inc. v. Samsung Electronics
Co., 678 F.3d 1314 (Fed. Cir. 2012), referred to here as
Apple I, we resolved an appeal in this case arising from
the district court’s denial of a preliminary injunction with
respect to four Apple patents, including three patents that
are at issue in the current appeal. We affirmed the dis-
trict court’s denial of injunctive relief with respect to
those three patents but vacated the denial of injunctive
relief with respect to the fourth patent on the ground that
the patent was likely not invalid. See id. at 1333. On
remand, the district court entered a preliminary injunc-
tion against Samsung’s Galaxy Tab 10.1 tablet, but the
injunction was lifted after the jury found the Tab 10.1 not
to infringe.
In Apple Inc. v. Samsung Electronics Co., 695 F.3d
1370 (Fed. Cir. 2012), referred to here as Apple II, we
resolved an appeal in a separate case that Apple filed in
2 The six products found to dilute Apple’s trade
dress are Samsung’s Galaxy S 4G, Galaxy S Showcase,
Fascinate, Mesmerize, Vibrant, and Galaxy S (i9000).
3 In addition, we recently issued an opinion in an-
other appeal in this case regarding requests by Apple and
Samsung to seal certain confidential information. See
Apple Inc. v. Samsung Elecs. Co., 727 F.3d 1214 (Fed. Cir.
2013).
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 5
2012, involving different patents but some of the same
products. In Apple II, we reversed the district court’s
grant of a preliminary injunction against Samsung’s
Galaxy Nexus smartphone. See id. at 1372.
There is some overlap between the issues raised in
Apple I and Apple II and the present appeal. However,
whereas in our prior opinions we addressed Apple’s re-
quests for preliminary injunctive relief, in the present
appeal we are asked to address Apple’s request for per-
manent injunctive relief.
C. Apple’s Patents and Trade Dress
Apple is seeking a permanent injunction against
Samsung’s infringement of six patents—three design
patents and three utility patents. The design patents are
U.S. Design Patent Nos. 618,677 (“D’677 patent”), 593,087
(“D’087 patent”), and 604,305 (“D’305 patent”). We previ-
ously discussed the D’677 and D’087 patents in Apple I,
where we explained:
Both patents claim a minimalist design for a rec-
tangular smartphone consisting of a large rectan-
gular display occupying most of the phone’s front
face. The corners of the phone are rounded. Aside
from a rectangular speaker slot above the display
and a circular button below the display claimed in
several figures of the patent, the design contains
no ornamentation. The D’087 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. 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. The D’677 pa-
tent does not claim a bezel but instead shows a
black, highly polished, reflective surface over the
entire front face of the phone. The D’677 patent
disclaims the sides and back of the device.
6 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
Apple I, 678 F.3d at 1317. Representative figures from
the D’087 and D’677 patents are shown below.
D’087 Patent, Fig. 1.
D’677 Patent, Fig. 1.
The D’305 patent claims the ornamental design of the
iPhone’s graphical user interface, including the arrange-
ment of rows of square icons with rounded corners. A
representative figure from the D’305 patent is shown
below.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 7
D’305 Patent, Fig. 1.
The three utility patents at issue in this appeal are
U.S. Patent Nos. 7,469,381 (“’381 patent”), 7,844,915
(“’915 patent”), and 7,864,163 (“’163 patent”). We dis-
cussed the ’381 patent in Apple I. As we explained there:
[T]he ’381 patent . . . claims a software feature
known as the “bounce-back” feature, which is
found on Apple’s smartphones and tablets, such as
the iPhone and the iPad. The bounce-back feature
is activated when the user is scrolling through a
document displayed on the device. If the user at-
tempts 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 docu-
ment’s end. Once the user input ceases (i.e., when
the user lifts up the finger that is used for scroll-
ing), the previously visible part of the document
“bounces back” into view.
8 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
Apple I, 678 F.3d at 1318.
The ’915 patent claims a type of “multi-touch display”
functionality, which allows a touchscreen device to distin-
guish between single-touch commands for scrolling
through documents and multi-touch gestures for manipu-
lating a document, such as a two-fingered “pinch-to-zoom”
gesture.
The ’163 patent claims a “double-tap-to-zoom” func-
tionality, which allows a touchscreen device to enlarge
and center the text of an electronic document when a user
taps twice on a portion of the document, and in response
to a second user gesture on another portion of the docu-
ment, recenters the screen over that portion of the docu-
ment.
Apple is also seeking a permanent injunction against
Samsung’s dilution of its registered iPhone trade dress
and its unregistered iPhone 3G trade dress. These two
trade dresses protect the overall visual impression of the
non-functional elements of the iPhone’s front face, includ-
ing: (i) a rectangular product with four evenly rounded
corners; (ii) a flat clear surface covering the front of the
product; (iii) the appearance of a metallic bezel around
the flat clear surface; (iv) a display screen under the clear
surface; (v) under the clear surface, substantial black
borders above and below the display screen and narrower
black borders on either side of the screen; (vi) when the
device is on, a row of small dots on the display screen;
(vii) when the device is on, a matrix of colorful square
icons with evenly rounded corners within the display
screen; and (viii) when the device is on, a bottom dock of
colorful square icons with evenly rounded corners set off
from the other icons on the display, which does not change
as other pages of the user interface are viewed.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 9
DISCUSSION
In accordance with the principles of equity, a plaintiff
seeking a permanent injunction “must demonstrate:
(1) that it has suffered an irreparable injury; (2) that
remedies available at law, such as monetary damages, are
inadequate to compensate for that injury; (3) that, consid-
ering the balance of hardships between the plaintiff and
defendant, a remedy in equity is warranted; and (4) that
the public interest would not be disserved by a permanent
injunction.” eBay Inc. v. MercExchange, L.L.C., 547 U.S.
388, 391 (2006). The Supreme Court has cautioned that
“[a]n injunction is a drastic and extraordinary remedy,
which should not be granted as a matter of course.”
Monsanto Co. v. Geertson Seed Farms, 130 S. Ct. 2743,
2761 (2010) (citing Weinberger v. Romero-Barcelo, 456
U.S. 305, 311-12 (1982)). Rather, “[i]f a less drastic
remedy . . . [is] sufficient to redress [a plaintiff’s] injury,
no recourse to the additional and extraordinary relief of
an injunction [is] warranted.” Id.
“The decision to grant or deny permanent injunctive
relief is an act of equitable discretion by the district court,
reviewable on appeal for abuse of discretion.” eBay, 547
U.S. at 391. “We may find an abuse of discretion on a
showing that the court made a clear error of judgment in
weighing relevant factors or exercised its discretion based
upon an error of law or clearly erroneous factual find-
ings.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363,
1379 (Fed. Cir. 2008) (internal quotation marks omitted).
“To the extent the court’s decision is based upon an issue
of law, we review that issue de novo.” Sanofi-Synthelabo
v. Apotex, Inc., 470 F.3d 1368, 1374 (Fed. Cir. 2006).
On appeal, Apple challenges the district court’s denial
of its request for a permanent injunction against Sam-
sung’s infringement of its patents and dilution of its trade
dress. We first address the denial of an injunction against
10 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
Samsung’s patent infringement, followed by the denial of
an injunction against Samsung’s trade dress dilution.
A. Apple’s Request to Enjoin Samsung’s
Patent Infringement
The district court analyzed the four principles of equi-
ty enumerated in eBay and then, weighing the factors,
concluded that they did not support the issuance of an
injunction against Samsung’s infringement of Apple’s
patents. We find no reason to dislodge the district court’s
conclusion that Apple failed to demonstrate irreparable
harm from Samsung’s infringement of its design patents.
Accordingly, we affirm the denial of injunctive relief with
respect to those patents. However, with respect to Apple’s
utility patents, we conclude that the district court abused
its discretion in its analysis and consequently remand for
further proceedings. As discussed below, we reach our
conclusion by applying the eBay factors.
1. Irreparable Harm
The district court found that the irreparable harm
factor weighed in favor of Samsung. The court began by
acknowledging our precedent establishing that there is no
presumption of irreparable harm upon a finding of patent
infringement. Robert Bosch LLC v. Pylon Mfg. Corp., 659
F.3d 1142, 1148 (Fed. Cir. 2011). The court also cited our
statement in Apple II that “to satisfy the irreparable
harm factor in a patent infringement suit, a patentee
must establish both of the following requirements: 1) that
absent an injunction, it will suffer irreparable harm, and
2) that a sufficiently strong causal nexus relates the
alleged harm to the alleged infringement.” Apple II, 695
F.3d at 1374.
The district court then turned to Apple’s claim that it
has suffered three types of irreparable harm as a result of
Samsung’s patent infringement: (1) lost market share;
(2) lost downstream and future sales; and (3) injury to
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 11
Apple’s “ecosystem.” As an initial matter, the court found
that “Apple and Samsung are direct competitors” that
“compete for first-time smartphone buyers.” Injunction
Order, 909 F. Supp. 2d at 1151. Regarding market share,
Apple introduced unrefuted evidence that Samsung’s
market share had grown substantially from 2010 to 2012,
and that Samsung had an explicit strategy to increase its
market share at Apple’s expense. Based on this evidence,
the court found that “Apple has continued to lose market
share to Samsung,” which it recognized “can support a
finding of irreparable harm.” Id. at 1152. As for down-
stream sales, Apple introduced evidence regarding net-
work compatibility and brand loyalty, from which the
court concluded that “there were potentially long-term
implications of an initial purchase, in the form of lost
future sales of both future phone models and tag-along
products like apps, desktop computers, laptops, and
iPods.” Id. Accordingly, the court found that “Apple has
suffered some irreparable harm in the form of loss of
downstream sales.” Id. Finally, with respect to harm to
Apple’s ecosystem, the court concluded that any such
harm would be included in lost downstream sales. These
findings are not disputed on appeal.
After making its initial findings that Apple has suf-
fered harm as a result of Samsung’s sales of smartphones
and tablets, the district court considered whether Apple
could demonstrate a causal nexus between that harm and
Samsung’s patent infringement. As will be discussed in
more detail below, the district court concluded that Ap-
ple’s evidence did not establish the requisite nexus for
either its design patents or its utility patents. As a result,
the court concluded that the irreparable harm factor did
not support entry of an injunction.
On appeal, Apple challenges the district court’s irrep-
arable harm analysis on two main grounds. First, Apple
argues that the court erroneously adopted a causal nexus
requirement in the permanent injunction context. Sec-
12 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
ond, Apple argues, in the alternative, that it satisfied any
reasonable causal nexus requirement with respect to both
the design patents and the utility patents.
We begin with Apple’s challenge to the causal nexus
requirement. As in the preliminary injunction context,
“[w]e hold that the district court was correct to require a
showing of some causal nexus between Samsung’s in-
fringement and the alleged harm to Apple as part of the
showing of irreparable harm.” Apple I, 678 F.3d at 1324.
In Apple I, we explained the reasoning behind the causal
nexus requirement as follows:
To show irreparable harm, it is necessary to show
that the infringement caused harm in the first
place. Sales lost to an infringing product cannot
irreparably harm a patentee if consumers buy
that product for reasons other than the patented
feature. If the patented feature does not drive the
demand for the product, sales would be lost even if
the offending feature were absent from the ac-
cused product. Thus, a likelihood of irreparable
harm cannot be shown if sales would be lost re-
gardless of the infringing conduct.
Id. Similarly, in Apple II, we explained:
[I]t may very well be that the accused product
would sell almost as well without incorporating
the patented feature. And in that case, even if the
competitive injury that results from selling the
accused device is substantial, the harm that flows
from the alleged infringement (the only harm that
should count) is not. Thus, the causal nexus in-
quiry is indeed part of the irreparable harm calcu-
lus: it informs whether the patentee’s allegations
of irreparable harm are pertinent to the injunctive
relief analysis, or whether the patentee seeks to
leverage its patent for competitive gain beyond
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 13
that which the inventive contribution and value of
the patent warrant.
Apple II, 695 F.3d at 1374-75.
The reasoning in Apple I and Apple II reflects general
tort principles of causation and applies equally to the
preliminary and permanent injunction contexts. Indeed,
as the district court noted, we cited a permanent injunc-
tion case in Apple I to support the requirement of a causal
nexus in the preliminary injunction context. See Apple I,
678 F.3d at 1324 (citing Voda v. Cordis Corp., 536 F.3d
1311 (Fed. Cir. 2008)). Moreover, the Supreme Court has
explained that “[t]he standard for a preliminary injunc-
tion is essentially the same as for a permanent injunction
with the exception that the plaintiff must show a likeli-
hood of success on the merits rather than actual success.”
Amoco Prod. Co. v. Vill. of Gambell, AK, 480 U.S. 531, 546
(1987); see also eBay, 547 U.S. at 391 (citing Amoco, a
preliminary injunction case, in support of the four-factor
test for permanent injunctive relief). These considera-
tions counsel us to treat the irreparable harm factor the
same in both the preliminary and permanent injunction
contexts.
Apple makes several arguments why it believes there
should be no causal nexus requirement in the permanent
injunction context. 4 First, Apple argues that the causal
nexus requirement is an “unprecedented fifth require-
ment” beyond the traditional four factors for obtaining
injunctive relief. Apple Br. 49. This assertion, however,
is based on a misunderstanding of the causal nexus
4 Some of Apple’s arguments against the causal
nexus requirement are really criticisms of how the district
court applied the requirement in this case. We address
the court’s fact-specific application of the causal nexus
requirement later in our opinion.
14 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
requirement. In Apple II, we explained that “the causal
nexus inquiry is . . . part of the irreparable harm calcu-
lus,” and that “although the irreparable harm and the
causal nexus inquiries may be separated for the ease of
analysis, they are inextricably related concepts.” Apple II,
695 F.3d at 1374-75. Put another way, the causal nexus
requirement is simply a way of distinguishing between
irreparable harm caused by patent infringement and
irreparable harm caused by otherwise lawful competi-
tion—e.g., “sales [that] would be lost even if the offending
feature were absent from the accused product.” Apple I,
678 F.3d at 1324. The former type of harm may weigh in
favor of an injunction, whereas the latter does not.
Apple also argues that the district court’s application
of the causal nexus requirement conflicts with this court’s
post-eBay rulings on permanent injunctions in cases such
as Bosch, 659 F.3d 1142; Broadcom Corp. v. Qualcomm
Inc., 543 F.3d 683 (Fed. Cir. 2008); Acumed LLC v.
Stryker Corp., 551 F.3d 1323 (Fed. Cir. 2008); Presidio
Components, Inc. v. American Technical Ceramics Corp.,
702 F.3d 1351 (Fed. Cir. 2012); and Douglas Dynamics,
LLC v. Buyers Products Co., 717 F.3d 1336 (Fed. Cir.
2013). 5 According to Apple, these cases demonstrate that
5 Apple also cites Edwards Lifesciences AG v.
CoreValve, Inc., 699 F.3d 1305 (Fed. Cir. 2012), for the
proposition that “[a]bsent adverse equitable considera-
tions, the winner of a judgment of validity and infringe-
ment may normally expect to regain the exclusivity that
was lost with the infringement.” Id. at 1314. While Apple
seeks to rely on this statement to suggest that there is a
presumption in favor of injunctions, that is not what the
Edwards court said, and it is not the law. The Edwards
court expressly noted that the right of an injunction as a
remedy to “regain . . . exclusivity” is subject to “equitable
considerations.” And we have recognized that, in eBay,
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 15
there is no causal nexus requirement in the permanent
injunction context because they upheld (or, in some cases,
even reversed the denial of) permanent injunctive relief
without discussing any causal nexus requirement.
Apple’s reliance on those cases is misplaced. For one
thing, there is no indication that any of the infringers in
those cases challenged the existence of a causal nexus
between their infringement and the patentees’ alleged
harm, so this court did not have occasion to address the
issue. Moreover, some of the cases involved relatively
simple products—at least in the sense that they had a
small number of features when compared to the complex,
multi-featured smartphones and tablets at issue in this
case. Those products included windshield wiper blades
(Bosch), orthopedic nails used to treat fractures of the
upper arm bone (Acumed), and broadband capacitors used
in electrical systems (Presidio). In those cases, the impact
that the infringing features had on demand for the prod-
ucts may never have been in doubt. Apple contends that
this “understanding of the causal nexus requirement . . .
would make the standard for injunctive relief turn on a
determination whether the products involved are ‘simple’
or ‘complex.’” Apple Reply Br. 6. Contrary to Apple’s
suggestion, however, the causal nexus requirement ap-
plies regardless of the complexity of the products. It just
may be more easily satisfied (indeed, perhaps even con-
ceded) for relatively “simple” products.
The cases cited by Apple are distinguishable on other
grounds as well. For example, in Douglas Dynamics, this
court found that the evidence showed the patentee had
suffered irreparable “erosion in reputation and brand
the Supreme Court “jettisoned the presumption of irrepa-
rable harm” and “abolishe[d] our general rule that an
injunction normally will issue when a patent is found to
have been valid and infringed.” Bosch, 659 F.3d at 1149.
16 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
distinction” as a result of the defendant’s infringement—a
type of harm not asserted by Apple. Douglas Dynamics,
717 F.3d at 1344. And in Broadcom, the evidence at trial
showed that the market for baseband chips was very
different from the consumer goods market in which Apple
and Samsung compete. Specifically, as the district court
in Broadcom explained:
The market for baseband chips is unlike the typi-
cal market for consumer goods where competitors
compete for each consumer sale, and the competi-
tion is instantaneous and on-going. . . . Competi-
tion for sales is not on a unit-by-unit basis, but
rather competition is characterized by competing
for “design wins” for the development and produc-
tion of cell phones which will embody the proposed
chip.
543 F.3d at 702; accord Broadcom Corp. v. Emulex Corp.,
732 F.3d 1325, 1337 (Fed. Cir. 2013) (affirming district
court’s finding of irreparable harm in part because
“Emulex and Broadcom were competitors in a ‘design
wins’ market, which is fundamentally different from the
market in Apple” and “the undisputed evidence at trial
linked the claimed invention of the ’150 patent to the
success of the products incorporating it”). Accordingly, we
reject Apple’s contention that the causal nexus require-
ment conflicts with this court’s post-eBay permanent
injunction cases.
Apple also argues that there are significant differ-
ences between preliminary and permanent injunctions
that make the causal nexus unjustified and unnecessary
for permanent injunctions. We disagree. For example,
Apple argues that whereas a preliminary injunction is an
“extraordinary remedy never awarded as of right,” “the
liability determination—provided in this case by a jury
verdict that Samsung infringed numerous valid Apple
patents—is a finding that the plaintiff has a ‘property
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 17
right granting the plaintiff the right to exclude’ the de-
fendant from practicing the patent.” Apple Br. 51-52
(quoting Bosch, 549 F.3d at 1149 (alterations omitted)).
However, as the Supreme Court made clear in eBay, “the
creation of a right is distinct from the provision of reme-
dies for violations of that right.” 547 U.S. at 392. The
fact that the jury’s infringement verdict established
Apple’s “right[s] secured by [its] patents” does not neces-
sarily say anything about the appropriate remedy other
than that a court “may grant [an] injunction[] in accord-
ance with the principles of equity.” 35 U.S.C. § 283
(emphasis added).
In addition, Apple argues that the concern that gave
rise to the causal nexus requirement in the preliminary
injunction context can be eliminated in the permanent
injunction context through delayed enforcement of an
injunction. In Apple II, we stated that the causal nexus
requirement “informs whether the patentee’s allegations
of irreparable harm are pertinent to the injunctive relief
analysis, or whether the patentee seeks to leverage its
patent for competitive gain beyond that which the in-
ventive contribution and value of the patent warrant.”
Apple II, 695 F.3d at 1375 (emphasis added). Apple
asserts that in situations where it would be inequitable to
require immediate compliance with a permanent injunc-
tion, a district court can exercise its discretion to delay
enforcement of the injunction until the defendant has
time to design around the patent. According to Apple,
this delayed enforcement would prevent the patentee
from leveraging its patent beyond its inventive contribu-
tion. We agree with Apple that a delayed injunction may
be more likely to prevent only infringing features rather
than the sale of entire products, because the defendant
would have time to implement a noninfringing alterna-
tive. For that reason, a delay in enforcement may make
an injunction more equitable and, thus, more justifiable
in any given case. However, it is unclear why such de-
18 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
layed enforcement would not also be available in the
preliminary injunction context. More fundamentally, the
purpose of the causal nexus requirement is to show that
the patentee is irreparably harmed by the infringement.
Without such a showing, it is reasonable to conclude that
a patentee will suffer the same harm with or without an
injunction, thus undermining the need for injunctive
relief in the first place.
Finally, Apple argues that the causal nexus require-
ment is a bright-line rule that is inconsistent with eBay’s
rejection of categorical rules in the injunction context.
Apple proposes that because no single equitable factor in
the injunction analysis is dispositive, “[a] strong showing
of irreparable harm should offset comparatively weak
evidence of causal nexus, and vice-versa.” Apple Br. 60.
Like Apple’s first argument, this argument seems to be
premised on the mistaken notion that the causal nexus is
a separate factor from irreparable harm. As we have
explained, however, the causal nexus requirement is part
of the irreparable harm factor. Without a showing of
causal nexus, there is no relevant irreparable harm. In
other words, there cannot be one without the other.
Therefore, it would be illogical to say that a weak showing
of causal nexus could be offset by a strong showing of
irreparable harm.
Accordingly, we reject Apple’s arguments and confirm
that the district court was correct to require a showing of
some causal nexus between Samsung’s infringing conduct
and Apple’s alleged harm. That said, we agree with Apple
that certain of the standards arguably articulated by the
district court go too far.
First, the district court appears to have required Ap-
ple to show that one of the patented features is the sole
reason consumers purchased Samsung’s products. This is
reflected in certain statements in the district court’s
opinion indicating, for example, that Apple must “show
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 19
that consumers buy the infringing product specifically
because it is equipped with the patented feature,” or must
provide “evidence that consumers will buy a Samsung
phone instead of an Apple phone because it contains [the
infringing] feature.” Injunction Order, 909 F. Supp. 2d at
1154, 1156. To the extent these statements reflect the
view that Apple was necessarily required to show that a
patented feature is the sole reason for consumers’ pur-
chases, the court erred.
It is true that Apple must “show that the infringing
feature drives consumer demand for the accused product.”
Apple II, 695 F.3d at 1375. It is also true that this inquiry
should focus on the importance of the claimed invention in
the context of the accused product, and not just the im-
portance, in general, of features of the same type as the
claimed invention. See id. at 1376 (“To establish a suffi-
ciently strong causal nexus, Apple must show that con-
sumers buy the Galaxy Nexus because it is equipped with
the apparatus claimed in the ’604 patent—not because it
can search in general, and not even because it has unified
search.”). However, these principles do not mean Apple
must show that a patented feature is the one and only
reason for consumer demand. Consumer preferences are
too complex—and the principles of equity are too flexi-
ble—for that to be the correct standard. Indeed, such a
rigid standard could, in practice, amount to a categorical
rule barring injunctive relief in most cases involving
multi-function products, in contravention of eBay. See
eBay, 547 U.S. at 393 (rejecting “expansive principles
suggesting that injunctive relief could not issue in a broad
swath of cases”).
Thus, rather than show that a patented feature is the
exclusive reason for consumer demand, Apple must show
some connection between the patented feature and de-
mand for Samsung’s products. There might be a variety
of ways to make this required showing, for example, with
evidence that a patented feature is one of several features
20 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
that cause consumers to make their purchasing decisions.
It might also be shown with evidence that the inclusion of
a patented feature makes a product significantly more
desirable. Conversely, it might be shown with evidence
that the absence of a patented feature would make a
product significantly less desirable.
To illustrate these points, it may be helpful to return
to an example discussed in Apple II. There, we explained
that a battery does not necessarily drive demand for a
laptop computer simply because its removal would render
the laptop ineffective as a portable computer. See Apple
II, 695 F.3d at 1376. That is because consumers often do
not choose a laptop based on its battery, and presumably
at this point, no inventor has a patent covering all laptop
batteries. Nevertheless, it is indisputable that the ability
to carry around a computer without having to plug it in is
one of the reasons people buy laptops. Thus, if the first
person to invent a laptop battery had obtained a patent
covering all laptop batteries, then it would be reasonable
to say that the patented invention was a driver of demand
for laptops. And if a particular patented laptop battery
lasts significantly longer than any other battery on the
market, then the replacement of that battery with a
noninfringing battery might make a laptop less desirable.
In that case, it might be reasonable to conclude that the
patented battery is a driver of consumer demand for the
laptop.
The second principle on which we disagree with the
district court is its wholesale rejection of Apple’s attempt
to aggregate patents for purposes of analyzing irreparable
harm. Specifically, the district court stated:
Apple has not analyzed its alleged harm on a pa-
tent-by-patent basis, but rather has argued for
harm from each group of intellectual property
rights: design patents, utility patents, and trade
dress. Apple has also argued that the combined
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 21
harm from the patents and trade dress combined
justifies an injunction. However, Apple has iden-
tified no law supporting its position that an in-
junction could issue on a finding of harm caused
by Samsung in the aggregate. Rather, injunctions
are authorized by statute for specific acts of in-
fringement and dilution.
Injunction Order, 909 F. Supp. 2d at 1153.
While it is true that this court analyzed causal nexus
on a patent-by-patent basis in Apple I, we did not mean to
foreclose viewing patents in the aggregate. Rather, we
believe there may be circumstances where it is logical and
equitable to view patents in the aggregate. For example,
it may make sense to view patents in the aggregate where
they all relate to the same technology or where they
combine to make a product significantly more valuable.
To hold otherwise could lead to perverse situations such
as a patentee being unable to obtain an injunction against
the infringement of multiple patents covering different—
but when combined, all—aspects of the same technology,
even though the technology as a whole drives demand for
the infringing product. We leave it to the district court,
however, to address this issue in the first instance on
remand.
With these principles in mind, we turn to Apple’s al-
ternative argument that even if some showing of a causal
nexus is required, it made such a showing. We begin with
Apple’s design patents and conclude with its utility pa-
tents.
a. Apple’s Design Patents
At the district court, Apple attempted to show a caus-
al nexus for its design patents with evidence of the im-
portance of smartphone design. For instance, Apple
contended that its design patents “cover the iPhone’s most
prominent design elements,” and it “presented significant
22 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
evidence that design, as a general matter, is important in
consumer choice” of smartphones. Id. at 1154. Apple also
introduced evidence of quotations from Samsung consum-
er surveys and from an industry review praising specific
elements of both Apple’s and Samsung’s phone designs,
including some elements of Apple’s patented designs. See
id.
The district court found Apple’s evidence inadequate.
With respect to the evidence that design is important in
consumer choice, the court noted that “the design of the
phones includes elements of all three design patents, as
well as a whole host of unprotectable, unpatented fea-
tures,” and that Apple had “ma[de] no attempt to prove
that any more specific element of the iPhone’s design, let
alone one covered by one of Apple’s design patents, actual-
ly drives consumer demand.” Id. The court concluded
that “even if design was clearly a driving factor,” and
“[e]ven if the Court accepted as true Apple’s contentions
that the patents cover the most central design features, it
would not establish that any specific patented design is
an important driver of consumer demand.” Id. In other
words, the court found this evidence too “general” to
establish a nexus. Id.
With respect to Apple’s evidence in the form of quota-
tions, the district court found that they “refer[red] to such
isolated characteristics as glossiness, reinforced glass,
black color, metal edges, and reflective screen,” some of
which (e.g., glossiness) are not even incorporated into the
patented designs. Id. The court concluded that “[n]one of
the consumer quotations considers more than one charac-
teristic or discusses the way the characteristics are com-
bined into a complete, patentable design.” Id. In
addition, the court stated that “even if these quotations
did specifically reference the precise designs covered by
Apple’s patents, they do not begin to prove that those
particular features drive consumer demand in any more
than an anecdotal way.” Id. In sum, the court concluded
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 23
that “while Apple has presented evidence that design, as
a general matter, is important to consumers more broad-
ly, Apple simply has not established a sufficient causal
nexus between infringement of its design patents and
irreparable harm.” Id. at 1154-55.
On appeal, Apple contends that its evidence shows
that its patented designs drive consumer demand. The
district court correctly noted, however, that evidence
showing the importance of a general feature of the type
covered by a patent is typically insufficient to establish a
causal nexus. The district court was also correct that
isolated, anecdotal statements about single design ele-
ments do not establish that Apple’s broader patented
designs are drivers of consumer demand. Having re-
viewed the evidence cited by Apple, we find no abuse of
discretion in the court’s conclusion that Apple failed to
establish a causal nexus. 6
Apple contends that the district court’s opinion con-
flicts with Apple I, in which we affirmed the district
court’s conclusion that Apple had established the requi-
site nexus for one of its design patents based on evidence
6 In the previous section, we concluded that the dis-
trict court arguably articulated two erroneous legal prin-
ciples—i.e., that a patented feature must be the sole
driver of demand to establish a causal nexus between
Samsung’s infringement and Apple’s harm, and that
irreparable harm must always be analyzed on a patent-
by-patent basis. Nevertheless, having reviewed the
district court’s discussion of irreparable harm and the
evidence cited by Apple, we are satisfied that these erro-
neous principles did not affect the court’s analysis with
respect to Apple’s design patents. Therefore, we can
affirm the district court’s conclusion on irreparable harm
with respect to the design patents, notwithstanding the
errors identified above.
24 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
showing that “design mattered . . . to customers in making
tablet purchases.” Apple I, 678 F.3d at 1328 (emphasis
added). However, as Samsung notes, we also relied on
“[t]he fact that Apple had claimed all views of the patent-
ed device.” Id. Moreover, we are reviewing the district
court for an abuse of discretion. While we might not
reverse the entry of an injunction based on this evidence,
under that deferential standard of review, we cannot say
that the district court abused its discretion when it found
that Apple failed to demonstrate a causal nexus between
Samsung’s infringement of its design patents and Apple’s
lost market share and downstream sales.
b. Apple’s Utility Patents
After rejecting Apple’s evidence of a causal nexus with
respect to its design patents, the district court addressed
Apple’s utility patents. Apple attempted to prove causal
nexus for these patents with “three types of evidence:
(1) documents and testimony showing the importance of
ease of use as a factor in phone choice; (2) evidence that
Samsung deliberately copied the patented features; and
(3) a conjoint survey performed by Apple’s expert, Dr.
Hauser.” Injunction Order, 909 F. Supp. 2d at 1155. Dr.
Hauser’s survey purported to show the “price premium”
that Samsung customers would pay for smartphones and
tablets with Apple’s patented features. J.A. 30488. In
particular, the survey showed that Samsung consumers
were willing to pay $39 more for a smartphone and $45
more for a tablet that included the ’915 patent’s claimed
feature and $100 more for a smartphone and $90 more for
a tablet that included all three utility patents’ claimed
features. See id.
The district court again found Apple’s evidence inade-
quate. With respect to Apple’s evidence concerning the
importance of ease of use, the court concluded that—like
Apple’s evidence on the importance of design—the evi-
dence was “simply too general.” Injunction Order, 909 F.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 25
Supp. 2d at 1155. As for the evidence of copying by Sam-
sung, the court concluded that “Samsung’s impressions of
what might lure customers, while relevant, are not dis-
positive,” and that although such evidence “may offer
some limited support for Apple’s theory, it does not estab-
lish that those features actually drove demand.” Id. at
1156. Finally, the court rejected Dr. Hauser’s survey
evidence for failing to “measure willingness to pay for
products” as opposed to features, and for failing to “ad-
dress the relationship between demand for a feature and
demand for a complex product incorporating that feature
and many other features.” Id.
On appeal, Apple cites surveys “identify[ing] Apple’s
easy-to-use user interface as critical to the success of
Apple’s products,” consumer reviews praising Apple’s
“multi-touch user interface,” and “unrebutted testimony
at trial” describing ease of use as among the reasons for
the success of the iPhone. Apple Br. 64-65. However, this
evidence simply shows that ease of use, in general, is
important to the iPhone. It does not prove that Sam-
sung’s incorporation of the patented features influenced
demand for its products. See Apple II, 695 F.3d at 1376.
The district court was thus correct in concluding that
Apple’s evidence of ease of use, although relevant, was too
general, standing alone, to establish a causal nexus.
With respect to copying, Apple cites evidence purport-
edly showing that “Samsung and its consultants praised
Apple’s patented ‘pinch-to-zoom,’ ‘double-tap-to-zoom,’ and
‘bounce-back’ features, and recommended that Samsung
copy them in order to compete with Apple.” Apple Br. 64.
But as we explained in Apple I, although “evidence that
Samsung’s employees believed it to be important to incor-
porate the patented feature into Samsung’s products is
certainly relevant to the issue of nexus between the
patent and market harm, it is not dispositive.” Apple I,
678 F.3d at 1327-28. Thus, as the district court properly
recognized, Apple’s evidence of copying by Samsung may
26 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
be relevant, but it is insufficient by itself to establish the
requisite causal nexus.
The district court did err, however, in its treatment of
Dr. Hauser’s survey evidence. Dr. Hauser’s survey pur-
ports to show that consumers would be willing to pay
fairly significant price premiums for the features claimed
in Apple’s utility patents. In rejecting Dr. Hauser’s
survey evidence, the district court stated that “evidence of
the price premium over the base price Samsung consum-
ers are willing to pay for the patented features is not the
same as evidence that consumers will buy a Samsung
phone instead of an Apple phone because it contains the
feature.” Id. (emphasis added) (internal quotation marks
omitted). As we have already discussed above, however, a
showing of causal nexus does not require this level of
proof. Rather, there may be a variety of ways to show
that a feature drives demand, including with evidence
that a feature significantly increases the desirability of a
product incorporating that feature. Moreover, we see no
reason why, as a general matter of economics, evidence
that a patented feature significantly increases the price of
a product cannot be used to show that the feature drives
demand for the product. This is not to suggest that
consumers’ willingness to pay a nominal amount for an
infringing feature will establish a causal nexus. For
example, consumers’ willingness to pay an additional $10
for an infringing cup holder in a $20,000 car does not
demonstrate that the cup holder drives demand for the
car. The question becomes one of degree, to be evaluated
by the district court. Here, the district court never
reached that inquiry because it viewed Dr. Hauser’s
survey evidence as irrelevant. That was an abuse of
discretion.
As an alternative ground for affirmance, Samsung ar-
gues that there are other methodological flaws with Dr.
Hauser’s survey. However, the district court did not base
its decision on any such alleged flaws, and we believe it is
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 27
more appropriate for the district court to address these
arguments in the first instance. For these reasons, we
vacate the district court’s determination that Apple failed
to show a causal nexus with respect to its utility patents
and remand for further proceedings.
In conclusion, we find no abuse of discretion in the
district court’s determination that Apple failed to demon-
strate irreparable harm as a result of Samsung’s in-
fringement of its design patents. As a result, we affirm
the court’s denial of a permanent injunction with respect
to the design patents, and we will not address those
patents in our discussion of the remaining permanent
injunction factors.
With respect to Apple’s utility patents, however, addi-
tional analysis is required. We therefore vacate that
portion of the district court’s irreparable harm findings
and remand for further proceedings. On remand, the
court must assess whether Apple’s other evidence, includ-
ing its ease-of-use evidence and evidence of copying, in
combination with Dr. Hauser’s survey evidence, suffices to
establish irreparable injury. We will now address the
remaining injunction factors as they relate to Apple’s
utility patents.
2. Inadequacy of Legal Remedies
This factor requires a patentee to demonstrate that
“remedies available at law, such as monetary damages,
are inadequate to compensate” the patentee for the irrep-
arable harm it has suffered. eBay, 547 U.S. at 391. At
the district court, Apple argued that its lost downstream
sales could not be calculated to a reasonable certainty,
and thus money damages could not provide full compen-
sation for the harm it suffered. The district court seemed
to agree. In particular, the court found that “Apple has
likely suffered, and will continue to suffer, the loss of
some downstream sales,” which “does provide some evi-
dence that Apple may not be fully compensated by the
28 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
[jury’s] damages award.” Injunction Order, 909 F. Supp.
2d at 1160; see also Apple I, 678 F.3d at 1337 (“Because
the loss of customers and the loss of future downstream
purchases are difficult to quantify, these considerations
support a finding that monetary damages would be insuf-
ficient to compensate Apple.”).
Nevertheless, the court determined that this factor
favored Samsung based on Apple’s past licensing behavior
and Samsung’s undisputed ability to pay any monetary
judgment. With respect to Apple’s licensing history, the
court noted that Apple has licensed the asserted utility
patents to other manufacturers (including licensing the
’381 patent to Nokia, the ’915 and ’163 patents to IBM,
and the ’381, ’915, and ’163 patents to HTC), suggesting
that these patents are not “priceless.” Injunction Order,
909 F. Supp. 2d at 1160. In addition, the court noted that
Apple offered to license “some of [its] patents” to Sam-
sung, suggesting that Samsung is not “off limits” as a
licensing partner. Id. (citing October 2010 Apple presen-
tation describing licensing offer to Samsung). As a result,
the court rejected Apple’s argument that it would not
have licensed the patents-in-suit to Samsung “for use in
iPhone knockoffs.” Id. The court concluded:
In sum, the difficulty in calculating the cost of
lost downstream sales does suggest that money
damages may not provide a full compensation for
every element of Apple’s loss, but Apple’s licensing
activity makes clear that these patents and trade
dresses are not priceless, and there is no sugges-
tion that Samsung will be unable to pay the mon-
etary judgment against it. Accordingly, the Court
finds that this factor favors Samsung.
Id.
Apple argues on appeal that the district court erred in
several respects. First, Apple submits that regardless of
whether its patents are “priceless” or “off limits,” money
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 29
damages are inadequate in this case due to the difficulty
of quantifying the damages attributable to the market
share and downstream sales it has lost as a result of
Samsung’s infringing conduct. Second, Apple asserts that
the district court’s analysis is contrary to eBay, where the
Supreme Court rejected a rule that a patentee’s willing-
ness to license its patents could suffice by itself to demon-
strate a lack of irreparable harm. Third, Apple contends
that it would not have licensed the asserted patents to
Samsung for use in competing products, and that the
district court clearly erred in finding that Apple’s past
licensing practices suggested otherwise. In support of this
last point, Apple identifies several factors that it believes
distinguish its prior licenses from its current injunction
request.
We agree with Apple that the district court erred in
its analysis of this factor. As an initial matter, we note
that one of the two reasons the district court found this
factor to weigh in favor of Samsung was Samsung’s ability
to pay any monetary judgment. However, unlike an
infringer’s inability to pay a judgment, which may demon-
strate the inadequacy of damages, see Bosch, 659 F.3d at
1155-56, a defendant’s ability to pay a judgment does not
defeat a claim that an award of damages would be an
inadequate remedy. Rather, a defendant’s ability to pay
merely indicates that a court should look to other consid-
erations to determine whether a damages award will
adequately compensate the patentee for the harm caused
by continuing infringement. Cf. Roper Corp. v. Litton
Sys., Inc., 757 F.2d 1266, 1269 n.2 (Fed. Cir. 1985) (reject-
ing the view that an alleged infringer’s “ability to com-
pensate” ends the court’s inquiry).
We therefore turn to the district court’s other reason
for finding that this factor weighed in favor of Samsung—
Apple’s past licensing behavior. We have previously
explained that:
30 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
While the fact that a patentee has previously cho-
sen to license the patent may indicate that a rea-
sonable royalty does compensate for an
infringement, that is but one factor for the district
court to consider. The fact of the grant of previous
licenses, the identity of the past licensees, the ex-
perience in the market since the licenses were
granted, and the identity of the new infringer all
may affect the district court’s discretionary deci-
sion concerning whether a reasonable royalty
from an infringer constitutes damages adequate to
compensate for the infringement.
Acumed, 551 F.3d at 1328. Consistent with Acumed, we
find no error in the district court’s decision to consider
evidence of Apple’s past licensing behavior. However, the
court erred by ending its analysis upon concluding that
the asserted patents are not “priceless” and that Samsung
is not “off limits” as a licensing partner. While perhaps
relevant, these findings, by themselves, do not fully
answer the question at hand—i.e., whether monetary
damages will adequately compensate Apple for Samsung’s
infringement of the particular patents at issue in this
lawsuit. Rather, they merely show that Apple is willing
to license the asserted utility patents in some circum-
stances, and that Apple is willing to license some patents
to Samsung.
The district court’s exclusive focus on whether Apple’s
patents are “priceless” and whether Samsung is “off
limits” led it to disregard Apple’s evidence that Samsung’s
use of these patents is different. Apple points to numerous
factors that the district court failed to consider in deter-
mining the relevance of Apple’s past licensing behavior.
For example, Apple notes that IBM is not a competitor in
the smartphone market, and that the license was entered
into five years before Apple launched the iPhone. Apple
further notes that it entered into the HTC and Nokia
agreements to settle pending litigation. In addition, the
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 31
Nokia agreement was a “provisional license” for a limited
“standstill” period, J.A. 4076 ¶ 6, and the HTC agreement
excluded HTC products that were “clones” of Apple’s
products, J.A. 4792 ¶ 5.1, 4811. Moreover, although the
evidence shows that Apple offered Samsung a license to
some of its patents, Apple is adamant that it never offered
to license the asserted patents to Samsung, its primary
competitor. 7 We agree with Apple that these factors are
relevant to whether monetary damages will adequately
compensate Apple for Samsung’s infringement of the
asserted patents, and the district court erred by failing to
consider them. Indeed, the district court’s focus on Ap-
ple’s past licensing practices, without exploring any
relevant differences from the current situation, hints at a
7 The parties dispute the scope of Apple’s October
2010 licensing offer to Samsung. Samsung claims that
Apple’s offer included the asserted patents and trade
dress. Apple strenuously objects to this assertion, citing
the testimony of its director of patents and licensing, who
testified that Apple was “very clear” that any license
would not include “Apple’s user experience patents,”
which include the patents-in-suit. J.A. 22013-22014
(2013:9-2104:6). We cannot tell if the district court
reached a conclusion on this issue. Instead, it merely
noted that Apple offered Samsung a license to “some of
[its] patents.” Injunction Order, 909 F. Supp. 2d at 1160.
The answer may be quite relevant to the injunction anal-
ysis. See ActiveVideo Networks, Inc. v. Verizon Commc’ns,
Inc., 694 F.3d 1312, 1339-40 (Fed. Cir. 2012) (finding clear
error in the district court’s determination that money
damages would not provide adequate compensation based
in part on the patentee’s attempts to license the asserted
patents to the defendant). Thus, before relying on Apple’s
licensing offer as evidence of the adequacy of damages,
the court should have resolved whether Apple’s offer
included the asserted patents and trade dress.
32 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
categorical rule that Apple’s willingness to license its
patents precludes the issuance of an injunction. “To the
extent that the District Court adopted such a categorical
rule, . . . its analysis cannot be squared with the princi-
ples of equity adopted by Congress.” eBay, 547 U.S. at
393; see also Acumed, 551 F.3d at 1328 (“A plaintiff’s past
willingness to license its patent is not sufficient per se to
establish lack of irreparable harm if a new infringer were
licensed.”).
In sum, the district court abused its discretion by fail-
ing to properly analyze whether damages would ade-
quately compensate Apple for Samsung’s infringement of
these patents. Accordingly, we vacate the district court’s
finding with respect to this factor and remand for further
consideration. Of course, if, on remand, Apple cannot
demonstrate that demand for Samsung’s products is
driven by the infringing features, then Apple’s reliance on
lost market share and downstream sales to demonstrate
the inadequacy of damages will be substantially under-
mined.
3. Balance of Hardships
The balance of hardships factor “assesses the relative
effect of granting or denying an injunction on the parties.”
i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 862 (Fed.
Cir. 2010). The district court found that neither party
would be particularly harmed by either outcome and that
this factor was therefore neutral. With respect to Apple,
the court noted that “Apple’s only argument” on this issue
was that “Samsung’s conduct was willful,” which the court
rejected as an appropriate rationale because “[a]n injunc-
tion . . . may not be used as a punishment.” Injunction
Order, 909 F. Supp. 2d at 1161. As for Samsung, the
district court noted Samsung’s representation that it had
already stopped selling twenty-three of the twenty-six
infringing products and had begun to implement design-
arounds for the remaining three products. The court
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 33
concluded that “[h]aving made this argument in the hopes
of establishing that Apple cannot be harmed, Samsung
cannot now turn around and claim that Samsung will be
burdened by an injunction that prevents sale of these
same products.” Id. The court also rejected Samsung’s
argument that an injunction would disrupt its relation-
ships with carriers and customers, noting that “Samsung
has not explained how an injunction would cause the
asserted disruptions” and that “[h]arm to consumers is
more appropriately considered under the fourth factor.”
Id.
On appeal, each party argues that this factor weighs
in its favor. Apple argues that Samsung would not be
harmed by an injunction if, as Samsung claims, it has
designed around Apple’s patents, but that, absent an
injunction, Apple would be harmed by the risk of Sam-
sung’s continued infringement. According to Apple, “an
injunction is essential to providing Apple the swift relief
needed to combat any future infringement by Samsung
through products not more than colorably different from
those already found to infringe.” Apple Br. 42. Samsung
responds that Apple would not benefit from an injunction
because Samsung is no longer selling the accused prod-
ucts, but that “Samsung and others would be harmed” by
an injunction because it would “create fear, doubt and
uncertainty in the market as to what other products Apple
might later claim are covered by its sweeping injunction.”
Samsung Br. 45.
In essence, each party asks us to reweigh the various
factors that go into the balance of hardships. However,
we discern no clear error of judgment or error of law in
the district court’s analysis. Therefore, we conclude that
the district court did not abuse its discretion in determin-
ing that this factor was neutral.
4. Public Interest
This factor requires a plaintiff to demonstrate that
34 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
“the public interest would not be disserved by a perma-
nent injunction.” eBay, 547 U.S. at 391. In analyzing this
factor, the district court agreed with Apple that “the
public interest does favor the enforcement of patent rights
to promote the ‘encouragement of investment-based risk.’”
Injunction Order, 909 F. Supp. 2d at 1162 (quoting Sano-
fi-Synthelabo, 470 F.3d at 1383). The court also rejected
Samsung’s argument that an injunction would be disrup-
tive to suppliers, retailers, carriers, and customers be-
cause Samsung claimed to have stopped manufacturing or
selling any infringing phones. In addition, the court
rejected Samsung’s argument that an injunction would
cause great harm to the public, concluding that
“[c]onsumers will have substantial choice of products,
even if an injunction were to issue.” Id. On the other
hand, the court found that an injunction was less likely to
be in the public interest because “the injunction Apple has
sought is extremely broad, and would prevent the sale of
26 specific products, as well as other potential future
products incorporating the protected features.” Id. In
addition, the court found that “[t]he public interest does
not support removing phones from the market when the
infringing components constitute such limited parts of
complex, multi-featured products.” Id. at 1163. Ultimate-
ly, the court concluded that this factor weighed in favor of
Samsung because “while the public interest does favor the
protection of patent rights, it would not be in the public
interest to deprive consumers of phones that infringe
limited non-core features, or to risk disruption to consum-
ers without clear legal authority.” Id.
Apple argues on appeal that an injunction would
promote the public interest in patent enforcement against
a direct competitor. However, the public’s interest in
enforcing patent rights must also be weighed with other
aspects of the public interest. See ActiveVideo, 694 F.3d
at 1341 (“Although enforcing the right to exclude serves
the public interest, the public interest factor requires
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 35
consideration of other aspects of the public interest.”).
Here, the district court properly recognized the public’s
interest in enforcing patent rights but determined that it
was outweighed by other considerations.
Apple criticizes the district court for relying on the
breadth of its requested injunction as a reason to deny
injunctive relief. Apple argues that—consistent with this
court’s injunction precedent—it properly requested an
injunction limited to the infringing products and products
not more than colorably different. See Int’l Rectifier Corp.
v. IXYS Corp., 383 F.3d 1312, 1317 (Fed. Cir. 2004) (en-
dorsing an injunction against “infringement of the patent
by the devices adjudged to infringe and infringement by
devices no more than colorably different therefrom”).
According to Apple, it was improper for the district court
to focus on the number of products that would be affected
by an injunction. See Apple Br. 45 (“Samsung cannot
avoid an injunction simply because its infringement
involved many products.”). If this is what the court
meant when it found Apple’s requested injunction contra-
ry to the public’s interest in the enforcement of patent
rights, we would agree with Apple that the trial court’s
analysis was flawed.
We have a different take on the district court’s discus-
sion of the breadth of the requested injunction, however.
We believe the district court’s overarching concern was
not that a large number of products would be enjoined,
but rather that entire products would be enjoined based
on “limited non-core features.” Injunction Order, 909 F.
Supp. 2d at 1163. This is reflected in, for example, the
district court’s explanation that “[t]hough the phones do
contain infringing features, they contain a far greater
number of non-infringing features to which consumers
would no longer have access if this Court were to issue an
injunction.” Id. We see no problem with the district
court’s decision, in determining whether an injunction
would disserve the public interest, to consider the scope of
36 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
Apple’s requested injunction relative to the scope of the
patented features and the prospect that an injunction
would have the effect of depriving the public of access to a
large number of non-infringing features. See eBay, 547
U.S. at 396-97 (Kennedy, J., concurring) (“When the
patented invention is but a small component of the prod-
uct the companies seek to produce and the threat of an
injunction is employed simply for undue leverage in
negotiations, . . . an injunction may not serve the public
interest.”). Accordingly, Apple has failed to show that the
district court abused its discretion in concluding that the
public interest weighs against the grant of an injunction. 8
* * *
In conclusion, we find that the district court abused
its discretion in analyzing Apple’s evidence of irreparable
harm and the inadequacy of legal remedies. We therefore
remand the case to the district court to reconsider, con-
sistent with this opinion, Apple’s request for a permanent
injunction against Samsung’s infringement of its three
utility patents.
B. Apple’s Request to Enjoin Samsung’s
Trade Dress Dilution
Finally, we address Apple’s request for an injunction
against Samsung’s dilution of Apple’s iPhone trade dress.
The Federal Trademark Dilution Act (“FTDA”) provides:
Subject to the principles of equity, the owner of a
famous mark that is distinctive, inherently or
through acquired distinctiveness, shall be entitled
to an injunction against another person who, at
8 If, on remand, the district court modifies its con-
clusion with regard to irreparable harm, it can determine
whether such modification requires any reevaluation of
the public interest factor.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 37
any time after the owner’s mark has become fa-
mous, commences use of a mark or trade name in
commerce that is likely to cause dilution by blur-
ring or dilution by tarnishment of the famous
mark, regardless of the presence or absence of ac-
tual or likely confusion, of competition, or of actu-
al economic injury.
15 U.S.C. § 1125(c)(1). According to Ninth Circuit prece-
dent:
[I]njunctive relief is available under the Federal
Trademark Dilution Act if a plaintiff can establish
that (1) its mark is famous; (2) the defendant is
making commercial use of the mark in commerce;
(3) the defendant’s use began after the plaintiff’s
mark became famous; and (4) the defendant’s use
presents a likelihood of dilution of the distinctive
value of the mark.
Perfumebay.com Inc. v. eBay Inc., 506 F.3d 1165, 1180
(9th Cir. 2007) (internal quotation marks omitted).
As mentioned before, the jury found that six Samsung
smartphones diluted Apple’s trade dress. Based on this
finding, the district court concluded that Apple had estab-
lished the necessary irreparable harm for an injunction
under the FTDA. 9 Nevertheless, the court denied Apple’s
9 The district court interpreted the FTDA as per-
mitting injunctive relief without any additional showing
of irreparable harm beyond the harm of dilution itself.
This interpretation was premised on the language in
§ 1125(c)(1) authorizing injunctions “regardless of the
presence or absence of actual or likely confusion, of com-
petition, or of actual economic injury.” On appeal, Sam-
sung challenges the district court’s interpretation of the
statute, arguing that the principles of equity require a
showing of irreparable harm beyond the harm of dilution.
38 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
request for an injunction because Samsung represented—
and Apple did not dispute—that none of the products
found to dilute Apple’s trade dress were “still on the
market in any form.” Injunction Order, 909 F. Supp. 2d
at 1158. The court noted the absence of any Ninth Circuit
cases discussing the propriety of an injunction under the
FTDA where there is no allegation of continuing dilution.
The court further noted that the Ninth Circuit’s FTDA
injunction test seems to focus on ongoing diluting behav-
ior because it requires that the defendant “is making
commercial use” of a mark. The district court concluded
that under the circumstances, there was no need to issue
an injunction. See id. at 1159 (“Here, there is no ongoing
diluting behavior to enjoin, and Apple cannot credibly
claim to suffer any significant hardship in the absence of
a trade dress injunction.”); see also id. at 1163 (“Regard-
ing trade dress dilution . . . , the case for an injunction is
especially weak, because there are no diluting products
still available, even without an injunction.”).
On appeal, Apple argues that the district court erro-
neously viewed ongoing diluting behavior as a prerequi-
site for obtaining injunctive relief under the FTDA. Apple
notes the “settled” principle that “an action for an injunc-
tion does not become moot merely because the conduct
complained of has terminated, if there is a possibility of
recurrence, since otherwise the defendants would be free
to return to [their] old ways.” Allee v. Medrano, 416 U.S.
802, 810-11 (1974) (internal quotation marks omitted).
Apple also points out that at least two district courts have
issued injunctions despite the defendant’s voluntary
cessation of diluting conduct. See Gucci Am., Inc. v.
Guess?, Inc., 868 F. Supp. 2d 207, 223-24 (S.D.N.Y. 2012);
Because we affirm the district court’s denial of injunctive
relief on other grounds, we need not reach this issue.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 39
OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176,
178 (W.D.N.Y. 2000).
Ninth Circuit precedent indicates that ongoing dilut-
ing behavior is not necessary to obtain an injunction
under the FTDA. See Polo Fashions, Inc. v. Dick Bruhn,
Inc., 793 F.2d 1132 (9th Cir. 1986) (recognizing that there
is no requirement to prove ongoing trademark infringe-
ment to obtain an injunction). To the extent that the
district court interpreted Ninth Circuit precedent differ-
ently, that interpretation was mistaken; the cessation of
diluting activity does not bar entry of an injunction in all
cases. However, it does not follow that a court commits
legal error if, in conducting an injunction analysis, it
considers a defendant’s voluntary cessation of diluting
behavior as a reason to deny injunctive relief. Indeed,
Ninth Circuit precedent indicates the opposite. For
example, in Volkswagenwerk Aktiengesellschaft v. Church,
411 F.2d 350 (9th Cir. 1969), the Ninth Circuit affirmed a
district court’s denial of an injunction against trademark
infringement because there was “little or no evidence in
the record casting doubt on [the defendant’s] good faith
abandonment of this infringement, or indicating that it
will be resumed.” Id. at 352. Polo Fashions is not to the
contrary. In that case, the Ninth Circuit reversed a
district court’s “refus[al] to grant an injunction because
the plaintiffs had not introduced any specific evidence to
demonstrate that the defendants would infringe in the
future.” Polo Fashions, 793 F.2d at 1135 (emphasis
added). The problem in Polo Fashions was that the
district court placed the burden on the wrong party—
requiring the plaintiff to show that the defendants would
likely infringe the plaintiff’s trademark again, instead of
requiring the defendants to show that they would not
infringe. Even in that case, the Ninth Circuit recognized
that a plaintiff might properly be denied injunctive relief
based on a defendant’s voluntary cessation of trademark
infringement if “‘the reform of the defendant [is] irrefuta-
40 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
bly demonstrated and total.’” Id. at 1135 (quoting 2 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 30:6, at 471 (2d ed. 1984)).
Here, the undisputed evidence shows that Samsung
has stopped selling the products found to dilute Apple’s
trade dress, and there is no evidence suggesting that
Samsung will resume selling them. Under these circum-
stances, we cannot say that the district court abused its
discretion in denying Apple’s request for an injunction.
Therefore, we affirm the district court’s denial of an
injunction against Samsung’s trade dress dilution. 10
10 Apple also challenges the district court’s finding
that “there is some evidence that Apple has not always
insisted on the exclusive use of its trade dress.” Injunc-
tion Order, 909 F. Supp. 2d at 1160. The court based this
finding on testimony from Apple’s director of patents and
licensing, Boris Teksler, who identified Apple’s trade
dress as part of Apple’s “unique user experience IP.” Id.
(citing J.A. 21956 (1956:9-12)). But as Apple correctly
notes, the portions of Mr. Teksler’s testimony cited by the
district court indicate only that Apple has licensed some
of the patents included in Apple’s “unique user experience
IP.” See J.A. 21957 (1957:3-5) (“Q. Has Apple ever li-
censed any of the patents within this category? A. Cer-
tainly over time we have . . . .” (emphasis added)). The
cited testimony says nothing about licensing trade dress.
Nevertheless, we believe it is clear from the district
court’s opinion that the decision to deny injunctive relief
was based on Samsung’s cessation of its diluting conduct.
See Injunction Order, 909 F. Supp. 2d at 1159, 1163.
Thus, we conclude that any erroneous findings with
respect to whether Apple has licensed its trade dress did
not materially affect the court’s decision.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 41
CONCLUSION
For the foregoing reasons, we affirm the district
court’s denial of Apple’s request for a permanent injunc-
tion with respect to its design patents and trade dress.
However, we vacate the district court’s denial of Apple’s
request for a permanent injunction with respect to its
utility patents and remand for further proceedings.
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED
COSTS
Each party shall bear its own costs.