Friday, September 28, 2012

Samsung wins remand of Galaxy Tab 10.1 ban to Judge Koh's court

The United States Court of Appeals for the Federal Circuit just granted Samsung's motion for a limited remand of its appeal of the design-patent-based preliminary injunction against the Galaxy Tab 10.1. Apple had opposed this request. This means that Judge Koh will now have to weigh the harm Samsung is allegedly suffering from further enforcement of the injunction against the likelihood of success of the D'889-related part of Apple's Rule 50 ("overrule-the-jury") motion. The D'889 patent is the tablet design patent on which this preliminary injunction is based. On August 24, a jury did not deem it infringed, contrary to previous assessments by Judge Koh and the Federal Circuit.

Samsung's preference would have been for Judge Koh to declare the injunction automatically dissolved (by the August 24 jury verdict) or to dissolve it directly, or as Samsung's third choice, to issue an indicative ruling that she would dissolve it after a remand (by the Federal Circuit) of Samsung's appeal of that preliminary injunction to the district court. Judge Koh didn't support the first three proposals but nevertheless helped Samsung to some degree by issuing an indicative ruling that the recent jury verdict, which involved a finding of non-infringement of the D'889 design patent, raised a substantial issue that she would evaluate after a remand. Judge Koh steered clear of indicating that a remand would result in dissolution. Apple's Rule 50 motion is not as steep a challenge in this particular case (in light of the previous findings, including the position taken by the appeals court) as an attempt to get a jury's liability finding overruled is in most other cases. But what Judge Koh did indicate is that the sooner the remand happens (i.e., the more time will pass between her reevaluation of the preliminary injunction and her decision on the parties' Rule 50 motions, which will come down some time after a December 6 hearing), the more likely Samsung is to win a dissolution of this preliminary sales ban. It could nevertheless be reinstated in or after December, but in the form of a permanent and not a preliminary injunction.

Judge Koh now faces a probabilistic challenge. Without actually ruling on the D'889-related part of Apple's Rule 50 motion, she has to assess its chances of success. She will still be free to decide differently after the December 6 hearing, after reading and hearing more argument from the parties. But if she then does decide differently, she has to admit that she may have misassessed the chances of success of the parties on this item at this stage. Given that Samsung itself denied publicly that there is any serious harm from the current enforcement of this preliminary injunction, its argument just boils down to principle: a baseless injunction is an "instrument of wrong". That is an important argument. And Judge Koh may indeed dissolve the preliminary injunction now simply by pointing to the fact that Rule 50 motions are hard to win since juries get a lot of deference, even if in this case Apple's motion has better prospects than the vast majority of overrule-the-jury requests.

In today's ruling, the appeals court also clarifies that its decision to grant a limited remand does not imply anything for the decision Judge Koh will have to make now. Here's the full text of the remand order:


Samsung Electronics Co., Ltd. et al. move for a limited remand for the purpose of permitting the United States District Court for the Northern District of California to consider Samsung's motion to dissolve the preliminary injunction. Apple Inc. opposes the motion.

We grant the motion and remand for the purpose of allowing the trial court to consider Samsung's motion and Apple's arguments in opposition thereto. The appeal is held in abeyance pending further ruling from the trial court. The parties are to inform this court promptly of the trial court's ruling on the motion and propose how they believe the appeal should proceed in light of such ruling.

In granting the motion, the Federal Circuit takes no position on the proceedings the trial court should employ in considering the motion to dissolve the preliminary injunction or on the merits of the motion.



The motion to remand is granted. The court retains jurisdiction over the appeal at this time.

Presumably there will now be an expedited briefing process (unless Judge Koh feels the parties have already written enough about this matter) and, if necessary, a hearing in the very near term.

I think Samsung has pretty good chances of winning a dissolution of the preliminary injunction at this stage, but even if it does, Apple could still win a permanent injunction against further infringement of the D'889 patent later. An "on again, off again" injunction would be odd, but it's procedurally possible.

Near-term sales of the Galaxy Tab 10.1 are a non-issue. But Apple certainly doesn't want to see Samsung launch future iPad lookalikes in the U.S. market, and it needs a permanent injunction for that purpose. Should Apple win a permanent injunction in or shortly after December, it won't have much of a problem with the temporary dissolution of the preliminary injunction. But fighting against the dissolution of the preliminary injunction is a matter of principle and, more importantly, an opportunity for Apple to make its case against the D'889 infringement-related part of the jury verdict.

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