After Losing Injunction Bid, Apple Tries to Leapfrog Panel Review

Vanessa Blum

The Recorder

01-17-2013

SAN FRANCISCO — Lawyers for Apple are pursuing an aggressive appellate strategy after losing their bid for sweeping permanent injunctions against Samsung devices a federal jury found violated Apple patents.

In an unusual move, Apple Inc.'s lawyers are asking the U.S. Court of Appeals for the Federal Circuit to bypass review by a three-judge panel and instead have the larger en banc court review the district court's ruling to clarify what they consider an impossible new standard for obtaining permanent sales bans in patent cases.

The case warrants extraordinary treatment because it raises a "precedent-setting question of exceptional importance," the company's attorneys from Morrison & Foerster and Wilmer Cutler Pickering Hale & Dorr told the appeals court in a brief Wednesday.

The question is one that has been flummoxing IP lawyers since San Jose U.S. District Judge Lucy Koh rejected Apple’s request for sales bans against Samsung Electronics Co. after it obtained a $1 billion verdict at trial: Does obtaining a permanent injunction require proof that customers buy a product specifically for its copied features?

Koh — who had for a short time granted preliminary injunctions against certain Samsung devices — denied permanent injunctions, finding Apple had not shown a direct link or “causal nexus” between its lost sales and Samsung’s infringement of particular patents.

U.S. Magistrate Judge Paul Grewal, a judge on the same bench who presided over another high-stakes IP case last summer, addressed the confusion in an order last week granting a permanent injunction sought by Brocade Communications Systems Inc. against rival A10 Networks Inc. Grewal noted a "curious absence of references to the causal nexus standard" in recent Federal Circuit rulings.

In light of uncertainty in the lower courts, Apple's lawyers suggest the Federal Circuit should consider the appeal in conjunction with en banc review of a panel decision in a related patent fight between Apple and Samsung.

That decision in Apple v. Samsung, 12-1507, known as Apple II, addressed the standard for a preliminary injunction. Koh's ruling relied heavily on Apple II and its "causal nexus" standard in weighing Apple's request for permanent injunctions.

"The two cases would present an ideal vehicle for eliminating the uncertainty regarding when a patentee can prevent a competitor from trespassing on its patented innovations," Apple's lawyers wrote.

Resolving the two cases in a coordinated proceeding "would present a unique opportunity to consider the preliminary injunction and permanent injunction standards at the same time," they wrote.

Last week, Samsung's lawyers at Quinn Emanuel Urquhart & Sullivan filed an brief in opposition to en banc review of Apple II, saying nothing in the ruling creates a new standard or warrants review by the larger panel.

"To the contrary, the panel merely applied the settled rule that irreparable harm requires 'a causal nexus between the harm alleged and the infringing conduct," the Quinn team wrote.

Editor's note: Due to a technical error, some of the text was missing from an earlier version of this story.