Prof. Doug Lichtman, UCLA School of Law
July 30, 2012

Apple and Samsung have dozens of patent claims pending against one another worldwide, but this week one of the biggest patent trials begins: a case that will be heard in the Northern District of California and could ultimately implicate as many as 27 patents.  Here is a quick primer about that fight.

1.  Apple filed the case in April 2011, asserting 15 patents overall.  Eight of the patents are utility patents, which means that they cover functional technologies like how a touch screen works.  Seven of the patents are design patents, which means they cover non-functional, expressive features like the shape of a device.  Apple also alleged some non-patent theories, including unfair competition and unfair copying of Apple’s “trade dress” or style.  The complaint combined all of these allegations to tell a story of pervasive, unnecessary copying by Samsung.  And, as early rulings in the case make clear, Judge Koh has thus far found Apple’s story convincing.

2.  In that initial complaint, Apple did not accuse specific Samsung products in isolation.  Instead, the complaint attacked the entire Samsung Galaxy line, referencing it as a product line that includes both phones and tablets.  In later filings, Apple has made more specific allegations.  For instance, as discussed more fully below, Apple filed a request for a preliminary injunction in the case, and that request focused specifically on the Samsung Galaxy Tab 10.1 tablet.  Apple has similarly sharpened its attack with respect to its other patents over the last many days, and all of that detail will become fully public as the trial launches.

3.  That said, remember that, if Apple wins, any injunctions that issue will be broader than merely being injunctions against the specific products being accused.  The preliminary injunction against the Tab 10.1, for instance, already covers that Tab plus any product that is “no more than colorably different” from it.  This is a general feature of modern patent law.  When an injunction issues, courts typically ban not only the infringing products themselves, but also any other products that are “no more than colorably different” from the banned products.  Judge Koh has used that language in the preliminary injunctions that she has already issued in this and a related Apple case, and it is more generally a conventional way to make sure that injunctions aren’t so narrow as to be meaningless.  After all, if an injunction just knocked out one version of one phone, Samsung could evade injunctive relief by constantly rolling out new phones that are trivially different.  (Lose on the old one, and nothing changes, because a virtually identical new one has already replaced it.)  Apple would in that world be playing an endless game of legal catch-up; hence, injunctions typically include vague, sweeping “colorably different” language.

4.  Samsung responded to the April 2011 filing by asserting 12 patents in response.  Seven of those patents are tied to technical standards and hence might fall under special rules that limit how aggressively Samsung can enforce “standards-essential” patents.  Simplifying a bit, a patent that is essential to a standard has to be licensed to everyone who wants to implement the standard, and has to be licensed at a “reasonable” fee.  Thus, there is likely a limit on how aggressively Samsung can wield those seven patents.  The five other patents are on a mix of functional technologies, including, for instance, methods for viewing images and playing music.

5.  Although the case is being tried starting this week, this litigation has already grabbed national headlines because, as noted above, early in the case Apple filed what turned out to be a successful request for a preliminary injunction.  In the request, Apple asked the court to immediately intervene with respect to three design patents and one utility (functional) patent.  The functional patent covers Apple’s bounce-back feature: When a user scrolls to the end of a document, the document bounces and then settles to the correct final position.  Two of the design patents covered the basic Apple iPhone shape, and the third design patent covers the basic iPad shape.

6.  The district court ruled on that motion for preliminary relief; that ruling was appealed to the Federal Circuit; and the district court then ruled again, adjusting its earlier ruling in light of the Federal Circuit’s opinion.  The upshot was as follows:

6a.  For both of the design patents that relate to the iPhone, the request for an injunction was denied because the Federal Circuit and the district court did not believe that the specific designs at issue truly drive consumer decision-making in this space.  Without that evidence, preliminary relief was deemed to be inappropriate.  A court is supposed to intervene early in the case only if the designs at issue have been shown to be important to market decision-making.  If not, it is better to wait, evaluate the merits after a full trial, and only then shape appropriate relief.

6b.  On validity, if it mattered, the district court thought one of these design patents was valid and one was obvious, but the Federal Circuit questioned the obviousness analysis.  Again, though, these issues were not resolved, because they were rendered moot by the fact that shape does not drive consumer demand and hence an injunction was not justified no matter what the validity decisions would turn out to be.

6c.  For the design patent related to the iPad, the district court initially thought the design was obvious and hence not patent-eligible, but the Federal Circuit questioned that conclusion and the district court ultimately reversed its view.  The district court thought that the shape drove demand.  There is therefore currently an injunction in effect against that design as it applies to at least one Samsung tablet.

6d.  For the patent on bounce-back, the district court has indicated that the patent is likely valid and infringed, but the court denied the injunction request because bounce-back likely does not drive consumer demand.

7.  Now that the case is heading to trial, all of the above decisions will be revisited, and many of the other patents will be brought into the conversation.  (The court has pressured both Apple and Samsung to drop some claims, but a lot of the patent claims survive.)  Two things to note about the new trial: First, Samsung will re-argue all of the merits issues noted above and likely with additional evidence at its disposal.  The preliminary injunction was argued early in the case and before most of the evidence was available.  Now, at trial, a great deal of additional information will be presented.  Moreover, Samsung will target the new evidence with the above opinion in mind.  That is, Samsung now knows what Judge Koh thinks about these four patents and can plan accordingly.  Second, that question of whether a given feature drives market demand is less important now than it was for the preliminary injunction.  For preliminary injunctions, courts worry about whether some little feature is being allowed to disrupt a market even before all the evidence is in.  For real trials and regular injunctions, however, courts are more willing to issue injunctions against small features, reasoning that, after a full trial, the relevant patent right should be respected, and a little feature can always be dropped or modified.

8.  That might sound like a lot of patent activity, but remember that the patents here represent only a tiny fraction of the patents at issue between Samsung and Apple worldwide.  Indeed, Judge Koh herself is overseeing yet another blockbuster patent case between these two firms, and that one is set for trial early next year.  Courts in Germany, Australia, and beyond are similarly queued up to look at patent disputes between these two giants both this year and next.

9.  So will Samsung and Apple settle?  The truth is that it is impossible to know when two firms will bury the hatchet.  But the important thing is to realize that this fight is not just about some licensing fee.  Apple might want a licensing fee, sure; indeed Microsoft is rumored to currently earn roughly $5 in patent licensing revenue every time that Samsung sells an Android phone.  But I think Apple rightly is playing for something more.  In my view, Apple will settle only when Samsung is ready to broadly commit to abandon its copycat strategy.  And Samsung can make that commitment only after it has in mind some distinctive user experience that clearly is not derivative of the Apple experience.  If Samsung already has something like that in its pipeline, then settlement is a real possibility.  If not, though, then I suspect that the litigation here will persist, with Apple taking shots one feature at a time, until Samsung is ready to step up and cut a broader, experience-wide deal.