American Intellectual Property Law Association
Apple v. Samsung
Worldwide Litigation Overview
Dewayne A Hughes
AIPLA-CNCPI Meeting
Paris, France
March 12, 2013
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Agenda
• Overview of Apple v. Samsung Worldwide Litigation
• Patent Litigation in the U.S. – ITC & District Courts
• Apple v. Samsung in the U.S.
– Impact on U.S. Injunctive Relief in District Courts
– Comparison of Decisions with Pending Worldwide
Apple v. Samsung Litigation
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"Patent War"
Source: PCMag.com
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Apple v. Samsung Worldwide Overview
• Over fifty pending cases in at least nine countries
• Six U.S. Litigations – Consolidated to five
• Litigation in South Korea, Japan, France, Italy,
United Kingdom, Germany, Netherlands, Australia
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Apple v. Samsung Patent Litigation
US:
Apple sues Samsung in US
Federal Court - "Apple 1"
Netherlands:
Ban of Apple products denied;
Galaxy Tab 10.1 Infringes.
December 2011
Germany:
Galaxy Tab 10.1 Banned.
Netherlands:
3 Samsung Phones banned.
US: "Apple 1" - Preliminary
Injunction of Samsung products
denied.
France: Court denies Preliminary
Injunction of Apple products.
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Apple v. Samsung Patent Litigation
Italy: Court denies
Preliminary Injunction of
Apple Products.
Netherlands: infringement
finding for Tab 10.1
overturned
Germany:
Slide to unlock claims
brought by Apple and
Samsung dismissed.
May 2012
US:
"Apple II" filed. Main patent
is "unified search" used by
products featuring Siri.
US:
"Apple 1" – Federal Circuit affirms
Preliminary Injunction denial for
Samsung products except Tab 10.1.
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Apple v. Samsung Patent Litigation
US: "Apple II" – Preliminary
Injunction of Galaxy Nexus phone
is granted by district court.
Germany: Preliminary Injunction
of Samsung phones requested by
Apple is denied.
UK: Court finds no infringement
by Samsung Galaxy Tab 10.1.
Germany: Samsung does
not infringe touch-screen
event model patent.
October 2012
US: Jury Verdict award in Apple I of $1.05B.
Japan: Samsung found not to infringe.
South Korea: Split decision, both parties
infringe some but not all patents.
U.S. - Apple II – Federal Circuit
overturns Preliminary Injunction.
Netherlands: Samsung does not
infringe touch screen patents.
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Apple v. Samsung Patent Litigation
US: "Apple I" – Permanent
Inunctions denied.
Europe: Samsung withdraws
sales ban requests. European
commission files Anti-Trust
complaint against Samsung.
US: Apple appeals preliminary
injunction decision in Apple II
and permanent injunction
decision in Apple I.
Netherlands: Samsung
Tablets do not infringe Apple
design patents.
???
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U.S. Patent Litigation Paths
District Courts
Federal Circuit
ITC
U.S. Supreme Court
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Apple v. Samsung : US Cases Summary
• Apple I – 11-CV-1846 - Status
– Jury Verdict award $1.05 B
– Injunction denied and pending appeal
– Triple damages denied and pending appeal
• Apple II – 12-CV-0630 - Status
– Preliminary Injunction denied – trial pending
• ITC Cases
– ITC I – 337-794 – Initial Determination that Apple does
not infringe any of Samsung's asserted patents.
– ITC II – 337-794 – Initial Determination that Samsung
infringes five of six Apple’s asserted patents
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Apple v. Samsung – Apple I: Mobile Phones
Source – Prafulla.net
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Apple v. Samsung – Apple I: Tablets
• Utility Patents also asserted against Samsung Tablets
• Apple asserts additional tablet design patent
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Apple I - Outcome
• Jury finds willful infringement by most Samsung devices for:
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'381 patent ("bounce-back")
'915 patent ("single and multi-touch patent")
'163 patent ("enlarging/centering documents")
D'677 (iPhone front face design)
D'305 (GUI Icons)
D'087 (iPhone full front view with casing)
Trademark and Trade Dress of iPhone
• Apple found not to infringe any of Samsung's patents
• Samsung does not infringe tablet design patents,
trademarks, or trade dress
• Damages awarded to Apple – Injunction is denied
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Apple v. Samsung – Apple II
• Utility Patents asserted by Apple include:
 5,946,647 (the '647 Patent") - System and method for performing an action on
a structure in computer-generated data
 6,847,959 (the "'959 Patent") - Universal interface for retrieval of information in
a computer system
 8,046,721 (the '721 Patent") - Unlocking a device by performing gestures on an
unlock image (aka "Slide to Unlock" - Subsequently removed in amended
complaint)
 8,074,172 (the '172 Patent") - Method, system, and graphical user interface for
providing word recommendations
 8,014,760 (the "'760 Patent") Missed telephone call management for a portable
multifunction device
 5,666,502 (the "'502 Patent") - Graphical user interface using historical lists with
field classes
 7,761,414 (the "'414 Patent") - Asynchronous data synchronization amongst
devices
 8,086,604 (the "'604 Patent") - Universal interface for retrieval of information in
a computer system
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Apple II Outcome
• Preliminary Injunction denied
 District Court initially interprets "Nexus" test to require
that patented feature is one contributor to consumer
demand of product
 District Court determined that all patents except the '647
patent ("Unified Search") did not satisfy the "Nexus" test
 Federal Circuit overturns
 "Nexus" test requires that patented feature is THE driver of
consumer demand
• Trial date set for March 2014
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Comparing Outcomes
• US Utility patents are difficult to compare with international
counterparts due to variation in claim language
• "Bounce-Back" Utility Patent
– U.S./South Korea/Japan/Netherlands – Samsung infringes
• Tablet Design Patents and Galaxy Tab 10.1
– U.S. – No Infringement by Samsung
– U.K./Netherlands – No infringement by Samsung
– Germany – No Infringement BUT sales ban based on unfair
competition claim
• iPhone Design Patents
– U.S./U.K./Netherlands – No infringement by Samsung
– Germany - Pending
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Apple v. Samsung – ITC Cases
 ITC I – 337-794:
 Initial Determination that Apple does not infringe any of
Samsung's four asserted patents
 Initial Determination also concludes that there is no domestic
industry of Samsung's asserted patents
 Commission review decision expected in February 2013
 ITC II – 337-794:
 Initial Determination that Samsung infringes five of six asserted
patents
 Initial Determination that Samsung infringes 5 of 6 asserted
patents
 Patents include two design patents covering cross-section and
side-view of iPhone as well as front view (variation of D'677 and
D'087 in Apple I)
 Commission review decision expected February/March 2013
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U.S. Patent Litigation - ITC
ITC – International Trade Commission
•Independent federal agency
•Responsible for international trade
investigations, Harmonized Tariff
Schedule; studies and reports for the
President, USTR and the Congress
•Approximately 420 employees –
including 24 Administrative Law
Judges
•Six Commissioners appointed by the
President and confirmed by U.S.
Senate
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United States International Trade Commission
• Section 337 cases assigned to Administrative Law Judges
• Trials similar to District Court bench trials
• ITC Judges follow but not bound to Federal Rules of
Evidence – (e.g., ALJs more likely to admit hearsay)
• ITC Judges render “Initial Determinations (IDs)” that are
subject to review by Commission
• Exclusion orders may be reviewed by executive branch
(through The Office of the U.S. Trade Representative)
• ITC Decisions may be appealed to Federal Circuit
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Overview of an ITC Patent Case
Administrative
Law Judge
Initial Decision
on merits
Commission
Final Decision
Federal Appeals
Court
Appellate Decision
Deferential on remedy issues
Orders remedy
ITC Remedies
– Exclusion of products from US. Enforced by US Customs
– Cease and desist orders. Enforced by ITC with civil penalties
– No money damages
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Section 337: Substantive Elements
• Importation
• Accused products must be imported or sold offshore for importation into U.S.
• ITC jurisdiction extends to sales in U.S. of imported
products
• Infringement
• Direct or indirect infringement
• Federal Circuit precedent applies
• Domestic Industry
(1) Economic prong
(2) Technical prong
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United States International Trade Commission
• Why the ITC?
– Speed
• Cases generally completed within 15 months
• Protective Order issues immediately
• Discovery commences immediately
– IP Expertise
• 9/10 cases are Intellectual Property cases.
– Broad Injunctive Remedies
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Directs U.S. Customs Service to deny entry at all U.S. ports
Framework for Customs Service seizure and forfeiture
An In Rem Order – Functions without regard to personal jurisdiction
Can cover downstream products that contain an infringing component
ITC procedures available to Complainant to broaden Customs enforcement
(advisory opinion procedures, enforcement procedures, modification
procedures)
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Disadvantages of ITC
• No money damages
• Speed as a detriment
– Generally higher expense due to fast-pace of
proceedings
• No Jury Trials
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ITC and District Court
• Often a parallel District Court case is filed
• Defendant can stay case as a matter of right
• ITC case will proceed to conclusion
• District Court stay can be lifted and case tried
again, for money damages
• Commission determination on infringement and
validity is persuasive but not binding
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Exclusion Order vs. Injunctive Relief
ITC Exclusion Order - 19 USC § 1337 (d) (1)
• If the Commission determines, as a result of an investigation under
this section, that there is a violation of this section, it shall direct
that the articles concerned, imported by any person violating the
provision of this section, be excluded from entry into the United
States, unless…
District Court Injunctive Relief - 35 USC § 283
• The several courts having jurisdiction of cases under this title may
grant injunctions in accordance with the principles of equity to
prevent the violation of any right secured by patent, on such terms
as the court deems reasonable.
• Supreme Court decision in eBay v. MercExchange and subsequent
Federal Circuit decisions are controlling precedent
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Exclusion Order vs. Injunctive Relief
eBay Factors
• Patent owner has suffered irreparable harm
• Remedies available at law, such as monetary damages, are
inadequate
• Balance of the hardships are in favor of patent owner
• Public interest would not be disserved
• Note: Preliminary Injunction also includes a likelihood of success
analysis
Apple v. Samsung "Nexus" Test
• To show irreparable harm, must show a causal nexus between the
harm alleged (e.g., loss of sales) and the infringing conduct.
• Patented feature must be THE driver of consumer demand for the
competing product if relying on lost sales to show irreparable harm
Exclusion Orders
• No irreparable harm requirement
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Increasing ITC Litigation
Instituted Intellectual Property ITC Litigations
90
85
80
75
70
65
60
55
50
45
40
35
30
25
20
15
10
5
0
85
78
80
58
50
40
35
32
27
37
29
21
16
12
12
1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013*
* Estimated for 2013 by USITC
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Thanks for your attention! Questions?
Dewayne Hughes
Sr. IP Counsel
North America
Dräeger
3135 Quarry Road
Telford, PA 18969 USA
Tel +1-215-360-5924
dewayne.hughes@draeger.com
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