Apple Scores a Big Jury Verdict Against Samsung, But What About an Injunction?

There are some very good summaries of the Jury verdict, and there is also a lot of speculation about what happens now that the jury found various Samsung patents infringe Apples patents and trade dress. The jury’s verdict form shows how they answered the various IP claims. In summary, all of Apple’s and Samsung’s patents (utility and design) were found valid. However, none of Samsung’s patents were infringed and the vast majority of Apples were. However, the jury form also gives a some indications of what may happen next in this case.

While a lot will be written in the next week on pending appeals and cross appeals, motions for judgement notwithstanding the verdict (JNOV), and other post trial maneuvers, Judge Koh will also have to decide if she will award an injunction preventing future sales and imports of the infringing products. Injunctions are imposed as an equitable remedy by the judge, not the jury. In deciding whether or not to grant an injunction in patent cases, federal judges must apply the eBay factors, named for the 2006 eBay v. MercExchange case in which the Supreme Court clarified the factors that must be weighed. Those factors that a plaintiff must demonstrate include:

(1) that it has suffered an irreparable injury;

(2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury;

(3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and

(4) that the public interest would not be disserved by a permanent injunction.

Since that case, courts have been more reluctant to grant permanent injunctions at the end of a patent trial. One reason cited for the decline in injunctions is that the presumption of irreparable harm is dead. This case is a bit different though.

In addition to the patents infringed, Samsung was found to both infringe and dilute Apples iPhone trade dress (both registered and unregistered). The strength of Apple’s trade dress is in its distinctiveness and Apple’s continued use of it. Trade dress protection is only available so long as the trade dress serves as a source identifier for the product. If another manufacturer can sell goods that infringe or dilute Apple’s trade dress going forward, that would likely do irreparable harm to Apples trade dress rights against other parties.

In this case, there is significant overlap between the design patents and Apple’s trade dress. There is even an arguable overlap between the utility patents and trade dress as the rebounding scroll lists covered by some of the utility patents are part of the look and fee of the various iOS devices. In this unique case, Apple is in a position to argue that failing to provide a permanent injunction would pose an irreparable harm to Apples other intellectual property, namely it’s trade dress.

My personal feeling is that Apple has a better than average chance of obtaining a permanent injunction. Whether the rationale behind it will be based solely on the patents, trade dress, or a combination where the various forms of intellectual property reinforce a showing of irreparable harm will be interesting to see. Keep in mind, that while it isn’t a slam dunk, Judge Koh did show a willingness to impose a preliminary injunction early in the case.

As it stands now, Apple will file its motion and brief on August 29, Samsung will reply on or before September 12 (the rumored launch date of the iPhone 5), and a hearing before Judge Koh will be held on September 20.

UPDATED: Judge Koh, has scheduled the hearing for Decmeber 6.

A Review of the Legal Claims in Apple v. Samsung: Trade Dress Infringement

Two weeks into the Apple v. Samsung trial, there have been some very interesting stories to come out. From lawyers being scolded for making press releases and not having their court admission ducks in a row to evidentiary rulings on the admissibility of evidence of independent development. These stories are interesting in their own right, but I think it would be helpful to see how they relate to the endgame of the litigation. That endgame is actually spelled out, from Apple’s point of view, in the first document filed in the case: the complaint.

Complaints are the legal pleadings that start the ball rolling in a case and can provide a basis for understanding why the parties do what they do. For example, in an earlier post I wrote why certain evidence of independent development was not admitted, much to the chagrin of some tech bloggers and the general public. Unfortunately, I haven’t see a simple dissection of the claims in the complaint.

With that in mind, I’m going to go through the claims in the complaint that relate to IP issues. I’ll leave the other state claims, like unjust enrichment, aside as the facts needed to prove them are similar to the IP issues, but they are likely being plead to provide different damages theories. In this post, I’ll focus on trade dress infringement.

Trade Dress Infringement

There are two types of protectable trade dress: product configuration (which protects the product itself), and product packaging. Apple describes it’s iPhone product configuration as it’s “distinctive shape and appearance — a flat rectangular shape with rounded corners, a metallic edge, a large display screen bordered at the top and bottom with substantial black segments, and a selection of colorful square icons with rounded corners that mirror the rounded corners of the iPhone itself, and which are the embodiment of Apple’s innovative iPhone user interface.”

Apple also alleges that the product packaging of the Samsung GalaxyS infringes the packaging trade dress of the iPhone. Below are the images provided in the complaint.

Product packaging is generally more susceptible to trade dress protection than product configuration. This is because physical attributes of a product are often functional and functional aspects are not protectable as trade dress. To limit the scope of product configuration trade dress protection, it is only available for product designs that have become become distinctive as a result of an acquired secondary meaning. That is, the design must evoke, in the mind of the consumer, a particular source of the product.

There are also two statutory mechanisms for recover for trade dress infringement. The Lanham act codified common law principles of trademark and unfair competition and allows for federal suits in cases involving unregistered trade dress. The Act also allows for registered trade dress. The legal difference is that a registered trade dress is likely entitled to some presumption of protectability, but the damages and equitable relief available are roughly the same.

However, having a protectable trade dress isn’t enough. Apple will have to show that Samsung’s product configuration and/or packaging are confusingly similar to Apple’s. It’s important to note that the gauge for confusion is the relevant consumer. While tech bloggers may not confuse the two, the question really is if a typical consumer would.

Next up, I will provide a little background for the utility and design patent infringement allegations in Apple’s complaint.