After I discovered (see the end of this November 1 post) that Apple had declared its intent to file a petition for a rehearing en banc (full-bench review) of the Federal Circuit's reversal of the Samsung Galaxy Nexus preliminary injunction, I mentioned that "[s]uch rehearings are rarely granted". Statistically that's true. The Federal Circuit granted only one such petition per year in most of the recent years, occasionally two, and none at all in 2006. But Apple's petition for a rehearing en banc is now more likely to be granted than the average en banc petition.
Today a deputy clerk of the Federal Circuit wrote a letter to Samsung's counsel with the following content:
"This will confirm our telephone call that the court has requested a response from Appellants [Samsung] to Appellee's [Apple's] petition for rehearing en banc.
Please file your response in accordance with Fed. Cir. Rule 35 on or before January 2, 2013."
The relevant Federal Circuit rule says, among other things, that "[n]o response may be filed to a petition for an en banc consideration unless the court orders a response". The fact that it ordered a response here shows that Apple's petition is taken somewhat seriously. Whether that's ultimately enough for a rehearing en banc to be granted is unclear, but it's now considerably more likely than it was before.
Apple's petition, filed on November 26, focused almost entirely on the standard for injunctive relief. It also challenges the claim construction adopted by the original panel, but that's a secondary issue. And at this stage the Galaxy Nexus isn't really important to Apple. What matters to Apple is whether the "causal nexus" requirement -- according to which a patent holder would have to surmount the unbelievably (if not impossibly) high hurdle of proving that the patented feature drives demand for the infringing product in order to establish irreparable harm -- goes too far. Apple's petition argues that this requirement "dramatically reduces the availability of preliminary injunctions, particularly in cases involving multi-featured smartphones, tablets, computers, and other electronic devices".
Apple is concerned that the causal nexus requirement becomes an additional requirement on top of the four traditional preliminary injunction factors (likelihood of success, irreparable injury, balance of hardships, and public interest). I wouldn't agree that its like a fifth factor, but I do agree with Apple that it substantially raises the bar for the irreparable harm factor. Having watched the process so far, I believe Apple had actually gone to extreme lengths to show that Siri-style unified search matters to a significant number of consumers. The question is indeed if anyone is ever going to win an injunction against a smartphone or tablet computer in U.S. federal court as long as the "causal nexus" requirement is applied the way it was in the Galaxy Nexus case.
Regardless of whether one supports or opposes injunctive relief against multifunctional products, there's no denying that Apple has raised an issue of fundamental importance, and that's why the full Federal Circuit may indeed want to look into this matter -- not because of the Galaxy Nexus but because of countless other cases in which the same issue will come up. A balance must be struck between the legitimate interests of right holders to stop infringement and those of the makers (and buyers) of multifunctional, mostly non-infringing products. Apple's argument is (not in those words, but the way I see it) that the decision lifting the Nexus injunction didn't strike a balance but simply raised the bar so high that the net effect would be tantamount to compulsory licensing.
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