Apple v. Samsung: Significance of Demonstrating a Causal Nexus when Establishing a Permanent Injunction

Category: Injunctions
 By: Jesus Hernandez, Blog Editor/Contributor  
[1-2: Irreparable Harm] On appeal, Apple challenges the district court’s irreparable harm analysis on two main grounds. [1] First, Apple argues that the court erroneously adopted a causal nexus requirement in the permanent injunction context. [2] Second, Apple argues, in the alternative, that it satisfied any reasonable causal nexus requirement with respect to both the design patents and the utility patents.
Apple at *11-12 (text added).
[3: Inadequacy of Legal Remedies] Apple argues on appeal that the district court erred in several respects [, which include (i) that money damages are inadequate in this case due to the difficulty of quantifying the damages attributable to the market share and downstream sales, even if Samsung is able to pay it, and (ii) Apple’s past licensing practices does not suggest that it would have licensed the asserted patents to Samsung, a competitor.]
Id. at *28-29 (text added).
[1: Irreparable Harm] [W]e 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 [because causal nexus is an necessary part of the irreparable harm inquiry that must be satisfied, irrespective of the type of product encompassed by the patent]. That said, we agree with Apple that certain of the standards arguably articulated by the district court go too far [, such as (i) requiring the patentee to show that one of the patented features is THE SOLE reason consumers purchased an infringer's products, and (ii) not permitting the patentee to aggregate patents in order to show harm].
Id. at *18 (text added).
[2: Irreparable Harm] 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 [because anecdotal evidence is insufficient to support causal nexus finding]. 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 [because it failed to consider survey testimony during its analysis of the irreparable harm inquiry,] and consequently remand for further proceedings.
Id. at *10 (text added).
[3: Inadequacy of Legal Remedies] [T]he district court abused its discretion by failing to properly analyze whether damages would adequately compensate Apple for Samsung’s infringement of these patents [because (i) Samsung’s ability to pay a judgment does not defeat a claim that an award of damages would be an inadequate remedy; and (ii) Applie's licensing history shows that it would not have licensed its patents to a direct competitor].
Id. at *32 (text added).
Procedural HistoryApple 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 America, LLC (collectively, “Samsung”). See Apple Inc. v. Samsung 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.
Apple at *2.
Legal Reasoning (Prost, Bryson, O'Malley)
Legal Standard: Permanent InjunctionIn 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, considering 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.
Apple at *9.
Inquiry #1: Irreperable Harm (Causal Nexus is a part of the Irreparable Harm Inquiry)
Causal Nexus - generallyTo 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 accused product. Thus, a likelihood of irreparable harm cannot be shown if sales would be lost regardless of the infringing conduct.
Apple at *12.
Causal Nexus is NOT an additional Permanent Injunction Inquiry, but rather part of the Irreparable Harm Inquiry[W]e 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 competition—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.
Id. at *14.
District Court Erred in Requiring Patentee to show that patented feature is the SOLE reason for consumer demand.[R]ather than show that a patented feature is the exclusive reason for consumer demand, Apple must show some connection between the patented feature and demand 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 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.
Id. at *19-20.
District Court Erred in Barring Patentee from Showing Harm by Aggregating PatentsWhile 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. Id. at *21.
Inquiry #1: Irreperable Harm (Satisfaction of Causal Nexus Inquiry)
Anecdotal Evidence insufficient to Support Causal Nexus Inquiry as to Design PatentsApple attempted to show a causal nexus for its design patents with evidence of the importance of smartphone design. For instance, Apple contended that its design patents “cover the iPhone’s most prominent design elements,” and it “presented significant evidence that design, as a general matter, is important in consumer choice” of smartphones. [...] Apple also introduced evidence of quotations from Samsung consumer 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.  […] 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 elements 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. Apple at *22-23 (internal citations omitted).
Survey Testimony may be Introduced to show Irreperable Harm[T]he district court did err, however, in its treatment of Dr. Hauser’s survey evidence. Dr. Hauser’s survey purports 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 consumers 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. […] Here, the district court never reached that inquiry because it viewed Dr. Hauser’s survey evidence as irrelevant. That was an abuse of discretion.
Id. at *26.
Inquiry #2: Inadequacy of Legal Remedies
Ability to pay a judgment does not defeat a claim of inadequate remedyWe 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 demonstrate 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.
Apple at *29.
Entirety of Licensing History of Patentee Probative in Determining Adequacy of Legal Remedies Apple points to numerous factors that the district court failed to consider in determining 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 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. 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. […] In sum, the district court abused its discretion by fail- ing to properly analyze whether damages would adequately compensate Apple for Samsung’s infringement of these patents.
Id. at *30-32.
Inquiry #3: Balance of Hardships
Balance of Hardships does not favor either partyThe 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 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. […] [W]e discern no clear error of judgment or error of law in the district court’s analysis.
Apple at *32-33.
Inquiry #4: Public Interest
It would be a Disservice to the Public Interest to Grant a Apple's Injunction due to its Broad TermsWe 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 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.
Apple at *35-36.
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, consistent with this opinion, Apple’s request for a permanent injunction against Samsung’s infringement of its three utility patents.
Apple at *36.

Editor Note
This case also discussed an Injunction for Trade Dress Dilution. To read more, click here.

Image Attribution Statement: Jeremy Keith, "Cuddling with multiple devices,"  available under Creative Commons Attribution 2.0 Generic license, http://commons.wikimedia.org/wiki/File:Cuddling_with_multiple_devices.jpg (last visited Nov. 19, 2013). 


© 2000-2022, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy