A Research Pathfinder to Apple Inc. v. Samsung Elecs. Co.
Dan Kleinman
Introduction: A statement of purpose
This pathfinder is a research guide to the case of Apple Inc. v. Samsung Elecs. Co., 678 F.3d 1314 (Fed. Cir. 2012). This pathfinder is designed to be a practical review of applicable patent case law for technology patent advisers, their employers, and those seeking information on current case law with authority over contemporary technology patent suites. Important statutes are described herein, as are important cases with appropriate citations, legal articles, reviews, and other relevant sources. Brief discussion is presented regarding the implications of the ruling in Apple (2012).
Briefing: An overview of the case
Apple Inc. is the holder of intellectual patents describing electronic tablets and smart devices. Apple Inc. brought action against Samsung Elecs. Co., a competitor, for infringement. The United States District Court for the Northern District of California denied the Apple Inc. action for a preliminary injunction. Apple Inc. appealed.
The patents in question described smartphones and tablet computers. In the lower district court, the decision to issue a preliminary injunction was denied, and placed a heavy burden on the patent owner, Apple Inc., to present substantial issues of law and fact to overturn the decision. It was concluded by the court that Apple Inc. failed to satisfy this burden of demonstration for three of the four patents in question. Therefore, the denial of injunctive relief was affirmed. Secondly, the appellate court found that the lower court erred in its injunction over a fourth patent, as the lower court did not properly consider public interest or a balance of hardships in considering its injunction. That portion of the lower court’s decision was vacated.
The Court of Appeals affirmed in part, denying Apple’s preliminary injunction with respect to three of its patents; vacated an order denying injunction with respect to a fourth patent, and remanded the case to the district court for further proceedings on that portion of the patent owner’s motion for preliminary relief.
Applicable Statues: An overview of the laws relevant to the case
Patent and Copyright Clause, USCS Const. Art. I, § 8, Cl 8
The Patent and Copyright Clause to the United States Constitution lays forth the constitutional provision that enables intellectual property definition and protection. This clause acts as the basis for intellectual property and germane suits. As further established by this clause, infringement must satisfy the constitutional requirement that said infringement is done against an original invention, or original element of an invention, such that a work that is copyrighted may still leave such unoriginal elements unprotected.
Chapter 28. Infringement of Patents, 35 U.S.C.S. § 271
Title 35 of the United States Code covers patents. Chapter 28 of this Title describes definitions and procedures related to Patent Infringement. This chapter is divided into two parts. Its first section lays forth the definition of a patent infringer and describes such as liable for patent infringement. The statute outlines that an infringing party is one who, without authorization, makes, uses, offers to sell, or sells a patented invention. Title 35 of the United States Code also establishes a patent holder’s exercisable rights that, through action thereof, are not grounds for denial of relief nor means to deem a patent holder guilty of misusing or extending patent rights, including: (1) deriving revenue related to the invention; (2) licensing or authorizing use of the patent; (3) seek enforcement of patent rights; (4) withhold or refuse licensure of authorization of use of the patent; or (5) establishing conditions of use or sale of licensing of the invention. Subsequent chapters of this title also establish the merits of patentable elements, including the necessity originality.
Applicable Case Law: An overview of holdings relevant to the case
Root v. Ry. Co., 105 U.S. 189 (1881)
This case involved the invention of specific railway brakes used by a railway company without authority. This was an appeal of a decision of the Circuit Court of the United States of the Northern District of Illinois. The district court dismissed claim for relief through profits derived from the infringement. The case leads to the conclusion that if there is a plain, adequate, and complete remedy at law, then equity cannot give relief. In order to sustain an action for such relief, the plaintiff must conclude that the recovery of damages through an action at law would be an inadequate remedy.
Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372 (Fed. Cir. 2009)
A patent owner of a tractor tire sued a tire manufacturer claiming an infringement of design for a tractor tire. Heard in the United States District Court for the Southern District of Iowa, the motion for a preliminary injunction was denied. The grounds for said ruling, the court found, was that the validity of the patent owner’s patent was invalid due to obviousness. The appellate court affirmed the decision, but only after affirming that an alleged infringer arguing invalidity as an affirmative defense has the burden of persuasion to support the argument of invalidity.
i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010)
This appeal from the United States District Court for the Eastern District of Texas, in which the plaintiff was the Appellee and the defendant was the Appellant. The appellee owned a patent for a method of computer coding and alleged that the appellant developer infringed the patent through the application of its software. While the lower court ruled infringement, the decision was appealed based on the grounds of obviousness. The defendant claimed that its computer software made use of the patent of specific computer coding that is obvious and anticipated. Instead, the court upheld the ruling of the lower court’s jury decision which, in upholding the patent as not invalid, the jury by definition found that the patent would not have been obvious. Furthermore, obviousness is a question of law in patent cases. However it is based on matters of fact, and therefore jury decisions on the matter are not subject to debate baring any matters of law.