Before the patent trial between Apple and Samsung began, the district court issued a preliminary injunction against Samsung from making, using, offering to sell, or selling within the United States, or importing into the United States, Samsung’s Galaxy Tab 10.1 tablet computer. This preliminary injunction issued based on a finding that Apple was likely to prevail on its claim of infringement of Apple’s design patent, U.S. Design Patent No. D504,889 (the “D’889 patent). Samsung immediately filed a notice of appeal of the preliminary injunction motion and the appeal remains pending before the Federal Circuit.
After the jury trial, in which Apple accused many Samsung products, including the Galaxy Tab 10.1, of infringement, the jury found that the Galaxy Tab 10.1 did not infringe the D’889 patent. Samsung then filed a motion to dissolve the preliminary injunction and to retain the $2.6 million bond that Apple had posted pending determination of damages suffered by Samsung as a result of the injunction.
In the briefing on the motions, the parties agreed that because of Samsung’s pending appeal of the June 26th preliminary injunction order, the district court lacked jurisdiction to dissolve the injunction. Accordingly, the district court determined that motion to dismiss the injunction would be denied.
Samsung sought, in the alternative, an indicative ruling pursuant to Fed.R.Civ.P. 62.1. Rule 62.1(a) provides:
If a timely motion is made for relief that the court lacks authority to grant because of an appeal that has been docketed and is pending, the court may:
(1) defer considering the motion;
(2) deny the motion; or
(3) state either that it would grant the motion if the court of appeals remands for that or that the motion raises a substantial issue.
As framed by the district court, “Samsung asks this court to indicate that it would grant the requested relief if the Federal circuit remanded for that purpose, and upon restoration of jurisdiction, to dissolve the injunction and retain Apple’s bond pursuant to Federal Rule for Civil Procedure 62.19c). Reply at 3. Apple opposes this request on grounds that ‘Samsung’s motion cannot fairly be decided without resolving Apple’s motions for JMOL that the Tab 10.1 infringes the D’990 patent and for an injunction based on the verdict that the Tab 10.1 infringes the ‘381, ‘915 and ‘163 patents.’ Opp’n at 4. Apple argues that the parties are currently briefing motions that could entitle Apple to a permanent injunction against the Galaxy Tab 10.1, and that, ‘[i]f the Tab 10.1 injunction were dissolved and then reinstated, this would be confusing to the market and would undermine the orderly administration of justice.’ Opp’n at 5.”
The district court disagreed with Apple’s position regarding the post-trial motions: “Moreover, the Court does not agree with Apple that Samsung’s motion for dissolution of the June 26 Preliminary Injunction cannot be fairly decided without resolving Apple’s post-trial motions. Even if Apple ultimately prevails on its post-trial motions, any permanent injunction would be prospective and not retroactive. Furthermore, the public has no interest in joining a non-infringing product, and thus any market disruption caused by dissolution would be insignificant compared to Samsung’s interest in restoring its product to market.”
But the district court agreed with Apple that the district court could potentially enter a permanent injunction based on Apple’s post-trial motions: “Nonetheless, the Court agrees with Apple that based on the post-trial motions, the Court could, potentially, issue a permanent injunction on the Galaxy Tab 10.1. Thus, whether the Court would dissolve the June 26 Preliminary Injunction on the Galaxy Tab 10.1. Thus, whether the Court would dissolve the June 26 Preliminary Injunction may depend on the timing of when the Federal Circuit issues the mandate restoring jurisdiction to this Court. Accordingly, the court cannot issue an indicative ruling that it would dissolve the June 26 Preliminary Injunction under all circumstances.”
Thus, the district court issued the following indicative ruling: “However, under all circumstances, Samsung’s motion raises a substantial issue, and the Court therefore issues such an indicative ruling. “A statement that the motion raises substantial issues does not tie the district court to a particular ruling on the motion after remand.” In re DirecTV Early Cancellation Fee Mktg. & Sales Practices Litig., 810 F. Supp.2d 1060, 1066 (C.D. Cal. 2011), rejected on other grounds by Kilgore v. KeyBank, Nat’l Ass’n, 673 F.3d 947 (9th Cir. 2012).”
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.