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Apple v. Samsung Worldwide Litigation Overview


Apple v. Samsung Worldwide Litigation Overview Dewayne A Hughes AIPLA-CNCPI Meeting Paris, France March 12, 2013 Agenda Overview of Apple v. Samsung Worldwide ... – PowerPoint PPT presentation

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Title: Apple v. Samsung Worldwide Litigation Overview

Apple v. SamsungWorldwide Litigation Overview
  • Dewayne A HughesAIPLA-CNCPI Meeting
  • Paris, France
  • March 12, 2013

  • Overview of Apple v. Samsung Worldwide Litigation
  • Patent Litigation in the U.S. ITC District
  • Apple v. Samsung in the U.S.
  • Impact on U.S. Injunctive Relief in District
  • Comparison of Decisions with Pending Worldwide
    Apple v. Samsung Litigation

"Patent War"
Apple v. Samsung Worldwide Overview
  • Over fifty pending cases in at least nine
  • Six U.S. Litigations Consolidated to five
  • Litigation in South Korea, Japan, France, Italy,
    United Kingdom, Germany, Netherlands, Australia

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.
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.
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.
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.
U.S. Patent Litigation Paths
District Courts
Federal Circuit
U.S. Supreme Court
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
  • ITC II 337-794 Initial Determination that
    Samsung infringes five of six Apples asserted

Apple v. Samsung Apple I Mobile Phones
Apple v. Samsung Apple I Tablets
  • Utility Patents also asserted against Samsung
  • Apple asserts additional tablet design patent

Apple I - Outcome
  • Jury finds willful infringement by most Samsung
    devices for
  • '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
  • Samsung does not infringe tablet design patents,
    trademarks, or trade dress
  • Damages awarded to Apple Injunction is denied

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
  • 8,014,760 (the "'760 Patent") Missed telephone
    call management for a portable multifunction
  • 5,666,502 (the "'502 Patent") - Graphical user
    interface using historical lists with field
  • 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

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

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
  • 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
  • Germany - Pending

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
  • Commission review decision expected in February
  • 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
  • Commission review decision expected
    February/March 2013

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

United States International Trade Commission
  • Section 337 cases assigned to Administrative Law
  • 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
  • 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
  • ITC Decisions may be appealed to Federal Circuit

Overview of an ITC Patent Case
AdministrativeLaw Judge
Federal AppealsCourt
Initial Decisionon merits
Final Decision
Appellate DecisionDeferential on remedy issues
Orders remedy
  • ITC Remedies
  • Exclusion of products from US. Enforced by US
  • Cease and desist orders. Enforced by ITC with
    civil penalties
  • No money damages

Section 337 Substantive Elements
  • Importation
  • Accused products must be imported or sold
    off-shore 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
  • Economic prong
  • Technical prong

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
  • Directs U.S. Customs Service to deny entry at all
    U.S. ports
  • Framework for Customs Service seizure and
  • 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

Disadvantages of ITC
  • No money damages
  • Speed as a detriment
  • Generally higher expense due to fast-pace of
  • No Jury Trials

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

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,
  • 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
  • Supreme Court decision in eBay v. MercExchange
    and subsequent Federal Circuit decisions are
    controlling precedent

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
  • 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

Increasing ITC Litigation
Estimated for 2013 by USITC
Thanks for your attention! Questions?