Tuesday, July 5, 2011

August 5 hearing on preliminary injunction against Samsung too early, judge tells Apple

Apple's impressively bold motion for a preliminary injunction against four Samsung products in the U.S. market proposed a hearing in one month from today: on August 5, 2011, at 1:30 PM Pacific Time "or as soon thereafter as the matter may be heard". Judge Lucy Koh has now told Apple that August 5 is too early.

In an order dated July 2, which I discovered only today and uploaded to Docstoc, she recalls that the parties wanted to conduct discovery for this particular purpose and expresses doubts over whether five weeks between the filing of the motion and a hearing would be enough to not only exchange pleadings but also conduct discovery:

"Based on the parties' previous representations, it appeared that the parties intended to conduct discovery pertinent to the preliminary injunction motion following the filing of the opening and opposition briefs. It appears that the schedule proposed by Apple would not provide sufficient time for such discovery."

I'm not sure Apple still sees a need for discovery. It may believe that it has seen enough, especially since Samsung recently had to provide samples of certain products even prior to their release in the U.S. market.

If Apple feels that no more discovery is needed, Samsung may contradict. It's obviously in Samsung's interest to delay this process. Every week can make a tactical difference. This potential disagreement is important with a view to the next step:

"Accordingly, the Court requests input from the parties regarding a reasonable time frame for briefing and hearing Apple’s motion. By July 8, 2011, the parties shall file a joint statement, not to exceed 3 pages, proposing a briefing schedule and hearing date. If the parties are unable to agree upon a proposed schedule, each side may propose a schedule and briefly outline the reasons supporting the requested schedule."

I don't have a crystal ball but I believe Samsung and Apple are more likely to disagree than to agree on a timeline. But come Friday, we'll know.

It's important to understand that this order is purely about schedules. In my view, there's nothing in it that suggests the substance of Apple's motion was premature. It's all about whether there's a need for some more discovery (collection of evidence) -- and if so, how much -- before a decision on the motion can be taken.

Concerning the likelihood of Apple prevailing, I'm still doing some research and may soon present an updated perspective on this. In a previous dispute over Samsung's request for early access to the iPhone 5 and iPad 3, the judge ruled in Apple's favor but gave a sort of hint to Samsung in terms of a possible defense being that future iPhone and iPad product generations may be less likely to be confused with Samsung's products, suggesting between the lines that Apple's refusal to show those future products could result in Samsung getting the benefit of the doubt. But the concept of "likelihood of confusion" may now bear less weight than the judge suggested at that point, the reason being that Apple's motion for a preliminary injunction is based on three design patents and one utility patent, not on trade dresses and trade marks. In its original complaint as well as in its amended complaint, Apple asserted trade dresses and trade marks -- but not in its motion for a preliminary injunction.

I will comment on Apple's motion for a preliminary injunction again soon, once I have been able to conduct further research on different aspects of this. I just wanted to point out that Apple's more focused preliminary injunction motion may render the question of different designs for the iPhone 5 and iPad 3 less critical, or possibly even irrelevant. I venture to guess that Apple will argue that it doesn't matter for patents (only for trade dresses and trademarks), and that Samsung will argue the opposite way. They both have persuasive and imaginative lawyers on their team.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents.

Share with other professionals via LinkedIn: