The law is evolving quickly. Apple has petitioned the Federal Circuit for en banc rehearing of the Apple II case, arguing the decision forecloses injunctive relief "in a broad swathe of cases."
On the day Koh issued her order, the deputy clerk of the appeals court formally requested a response from Samsung. Apple did not respond to a request for comment. The company was represented at trial by Morrison & Foerster and Wilmer Cutler Pickering Hale & Dorr.
Samsung was represented by Quinn Emanuel Urquhart & Sullivan. A Samsung spokeswoman said the company was pleased that the judge denied "Apple's move to limit consumer choice, and restrict fair competition in the marketplace."
Injunctions once issued in patent cases as a matter of course after a finding of infringement. However, that changed with the U.S. Supreme Court's 2006 decision in eBay v. MercExchange, 547 U.S. 388, which applied a four-prong balancing test weighing irreparable harm, alternative remedies, the balance of hardships, and public interest.
Koh's decision not to grant injunctions is a defeat for Apple, which vigorously patented elements of its iPhone technology to leverage against competitors in the lucrative smartphone market.
Though a jury awarded the company a record $1.1 billion in August, the amount has been described as an incidental expense for Samsung, which reaps annual revenues close to $100 billion.
Apple lawyer Harold McElhinny of MoFo told Koh at a hearing this month the damages award was a "slap on the wrist" to Samsung, and he urged Koh to send a strong signal by imposing an injunction.
But Koh wrote in her order that an injunction "may not be used as a punishment." In addition, the fact Samsung will be able to pay a significant monetary judgment weighed against an injunction, Koh wrote, because it means Apple will be compensated for its injuries.
Koh said she would issue a separate order resolving dueling requests from Apple and Samsung for damages enhancements and reductions.
Alston & Bird partner Ryan Koppelman, a patent litigator in the firm's Silicon Valley office, said Apple's main objective was never a financial remedy but to derail Samsung by blocking the sale of its products.
