Earlier this summer, the district court enjoined 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, and any product that is no more than colorably different from this specified product and embodies any design contained in U.S. Design Patent No. D504,889.” After the injunction issued, Samsung filed a notice of appeal to the Federal Circuit. The appeal remained pending as the case proceeded to trial.
After the trial, the jury found that the Galaxy Tab 10.1 did not infringe Apple’s design patent. The district court subsequently entered a judgment in favor of Apple on the jury verdict. Based on the judgment, Samsung filed a motion for the district court to dissolve the injunction and to retain the $2.6 million bond posted for the injunction. The district court denied the motion due to the pending appeal but issued an indicative ruling pursuant to Fed.R.Civ.P. 62.1 that Samsung’s motion raised a substantial issue. The Federal Circuit subsequently issued a limited remand order to permit the district court to rule on the motion to dissolve.
After the remand, Samsung again asked the district court to dissolve the injunction and retain Apple’s bond. Apple opposed the motion on the ground that it was premature because Apple’s post-trial motions were still pending and Apple’s post-trial briefs could demonstrate that Apple would be entitled to a permanent injunction against the Galaxy Tab 10.1.
The district court disagreed and sided with Samsung. “The Court agrees with Samsung that the sole basis for the June 26 Preliminary Injunction was the Court’s finding that Samsung likely infringed the D’889 Patent. The jury has found otherwise. Thus, the sole basis for the June 26 Preliminary Injunction no longer exists. Based on these facts alone, the Court finds it proper to dissolve the injunction. ‘Because injunctive relief is drafted in light of what the court believes will be the future course of events, . .. a court must never ignore significant changes in the law or circumstances underlying an injunction lest the decree be turned into an ‘instrument of wrong.’ Salazar v. Buono, 130 S. Ct. 1803, 1816 (2010) (plurality opinion).”
Based on the jury’s verdict of non-infringement, the district court found there was a significant change in circumstance. “The jury’s finding of non-infringement based on all the evidence presented at trial clearly constitutes such a significant change in circumstances. Cf. Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350-51 (Fed. Cir. 2001) (holding that a preliminary injunction should not issue if the non-moving party ‘raises a substantial question concerning either infringement or invalidity, i.e., asserts an infringement or invalidity defense that the patentee cannot prove ‘lacks substantial merit” (quoting Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1997)).”
In addition, the district court also disagreed that the dissolution of the injunction did not need to await Apple’s 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 enjoining a non-infringing product, and thus any market disruption caused by dissolution would be u, insignificant compared to Samsung’s interest in restoring its product to market Accordingly, the Court GRANTS Samsung’s motion to dissolve the June 26 Preliminary Injunction.”
Finally, the district court determined it should retain Apple’s bond as the purpose of the bond is “to pay the costs and damages sustained by any party found to have been wrongfully enjoined or restrained.” Fed. R. Civ. P. 65(c). . . . The question of whether Samsung was wrongfully enjoined is inextricably intertwined with the Court’s resolution of the post-trial motions.”
Apple Inc. v. Samsung Electronics Co., LTD, Case No. 11-CV-01846-LHK (N.D. Cal. Oct. 1, 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.