This article was originally published by The Recorder, an American Lawyer affiliate.
Apple’s lawyers at Morrison & Foerster have another shot at getting a temporary injunction to stop Samsung from selling its Galaxy tablet.
The U.S. Court of Appeals for the Federal Circuit on Monday sided with Apple Inc. on just one of several challenges to U.S. District Judge Lucy Koh’s denial of injunctive relief, sending it back on remand. With a jury trial just 10 weeks away, Koh is to analyze whether the similarities in the design of Apple’s iPad and Samsung’s Galaxy Tab warrant an injunction until the merits of the case are resolved.
The three-judge panel, however, backed up Koh and Samsung’s legal team, led by Quinn Emanuel Urquhart & Sullivan, on design and utility patent claims pertaining to smartphones. Koh had found Apple failed either to prove it was likely to succeed on the merits or that it would suffer irreparable harm.
“On remand, the court should conduct a similar assessment of the balance of hardships” with respect to the design patent that pertains to Apple’s iPad, Judge William Bryson wrote for the panel. “To the extent that the court finds that the public interest factor cuts in favor of either side, it should weigh that factor as well in determining whether to issue a preliminary injunction against Samsung’s Galaxy Tab 10.1 tablet computer.”
He was joined by Judges Sharon Prost and Kathleen O’Malley, who dissented in part. O’Malley wrote that she would have immediately entered a temporary injunction instead of remanding to avoid any further delay.
The panel’s reason for vacating Koh’s ruling on the tablet comes down to a seemingly subjective opinion of how similar Apple’s iPad is in its basic rectangular design to a tablet designed by a man named Roger Fidler. Koh had found they were similar enough that perhaps Apple’s patent on the design of the iPad the rectangular shape with a polished reflective surface and round corners is invalid because of prior art references.
The panel said the district court was wrong to find that the Fidler tablet created the “same visual impression” as the design covered by Apple’s patent, referred to as the D’889 patent.
“A side-by-side comparison of the two designs shows substantial differences in the overall visual appearance between the patented design and the Fidler reference,” Bryson’s majority opinion says.
Samsung attorneys argued Koh properly focused on the overall appearance rather than “design concepts.” “In our assessment, however,” Bryson wrote, “the district court’s error was to view the various designs from too high a level of abstraction.”
The opinion comes as the parties are gearing up for settlement talks. They are set to appear before San Francisco U.S. Magistrate Judge Joseph Spero on May 22. Jury trial in Koh’s San Jose courtroom is set for July 30. MoFo’s Michael Jacobs and Quinn’s Kathleen Sullivan argued the appeal in April.
