Injunctions are harder to get than ever
Traditionally, injunctive relief was obtained as a matter of right in a patent infringement case. The courts reasoned that since the patent gives the owner a right to exclude others, the patent would be rendered useless if it was not able to stop or exclude others from engaging in the infringing activity. Then, in eBay, the U.S. Supreme Court held that injunctive relief in patent cases must be based on the four traditional factors that are evaluated to determine whether an injunction should issue, just as in any other non-patent case. Injunctions are no longer granted as a matter of right to a patent owner.
One of the four traditional factors required the party seeking the injunction to prove irreparable harm. This means that the patent owner would have to show that monetary compensation would not be enough to make the patent owner whole.
In Apple v. Samsung (Fed. Cir. November 18, 2013), to prove irreparable harm, Apple (the patent owner) must show that there is a causal nexus between the infringement and the irreparable harm. Apple cannot merely show some generalized connection between the infringing activity and the claimed irreparable harm. Apple must show a direct connection between the two.
Apple attempted to show that there was a causal nexus by showing that consumers looked to the design of a product in making its decision. Apple presented evidence that consumers purchased its product because of the patented design feature as well as unpatented and unprotectable design features. The Federal Circuit indicated that Apple failed to show that consumers purchased Apple’s products because of its design. At most, Apple showed that consumers based its buying decision on, among other things, design considerations. The Federal Circuit said that Apple did not begin to prove that the patented features drove consumer demand in any more than an anecdotal way.
Apple also attempted to show a causal nexus in relation to its utility patents by showing that consumers based their buying decisions based on ease of use and that Samsung deliberately copied the patented ease of use features. The Federal Circuit held that the ease of use evidence was too general. Also, the Federal Circuit held that Samsung’s deliberate copying does not show the causal nexus because Samsung’s impressions of what might lure customers, while relevant, are not dispositive that those features drove consumer demand.
However, the Federal Circuit disagreed with the lower court’s dismissal of evidence that Samsung’s consumers would be willing to pay a fairly significant price premium for features claimed in the Apple’s utility patents. Evidence of the price premium over the base price that Samsung’s 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. The Federal Circuit vacated this portion of the lower court’s decision and remanded the case for further consideration. The issue for further consideration is whether these patented features drove consumer demand.
Contrasting and comparing the design and the ease of use arguments with the price premium argument illustrates that the Federal Circuit wants more than mere argumentation. Throughout the opinion, the Federal Circuit repeatedly used the phrase that the patent owner must show that the patented feature drove consumer demand.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected] Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.