U.S. District Judge Lucy Koh, Northern District of California. (Jason Doiy)
SAN JOSE — The question of whether Apple’s sweeping 2012 trial victory over Samsung entitles it to block its rivals’ sales of infringing products boomeranged back on Thursday to U.S. District Judge Lucy Koh.
Reconsidering Apple’s bid for a permanent injunction, Koh still seemed to question whether the company’s lawyers at Wilmer Cutler Pickering Hale and Dorr had demonstrated a sufficient connection between patented touchscreen features and consumer demand—an essential finding to issue the injunction.
Koh first rejected Apple’s request for an injunction in December 2012, but the U.S. Court of Appeals for the Federal Circuit sent the issue back to her in November. A three-judge panel concluded that Koh applied its “causal nexus” standard too strictly. The standard requires companies to demonstrate that when a few features in a complex product infringe, those features “drive consumer demand.” Apple swiftly renewed its motion.
At a hearing Thursday afternoon, Koh explored how the company’s evidence measured up under the Federal Circuit’s new instructions. Apple lawyer William Lee of Wilmer pointed to a survey showing Samsung consumers would pay considerably more for smartphones with Apple technology. He stressed that the survey, when viewed with other evidence gathered by Apple, met the bar set by the Federal Circuit that parties seeking injunctions show “some connection between the patented feature and demand.”
“I’m not trying to be difficult or a wordsmith when I focus on the words ‘a connection,’” Lee said. “That’s very much what they said.”
But Koh was skeptical about how much could be inferred from the survey. “It shows demand for the patented feature. I’m with you there,” she said. “I don’t think it necessarily shows that that particular patented feature is driving demand for the product.”
Samsung lawyer Kathleen Sullivan of Quinn Emanuel Urquhart & Sullivan seized on Koh’s hesitancy and insisted that the Federal Circuit’s adjusted standard was stricter than what Lee portrayed.
“What the Circuit told you to do is ask whether the feature significantly increases the price of a product or significantly increases the desirability of a product,” she said. The survey shows neither.”
Sullivan urged Koh not to overestimate the impact of the Federal Circuit’s order, insisting that the higher court’s quibbles with the decision had been minor.
“The Federal Circuit affirmed you on your permanent injunction denial with respect to virtually every single thing you wrote,” Sullivan said.
Sullivan noted that the Samsung products that a 2012 jury found infringed Apple patents are no longer on the market. But she warned that an injunction could cast doubt on the company’s newer products, and suggested that was Apple’s real aim.
“The only purpose of an injunction at this point … would be to stop our new, non-accused products as to which no infringement has ever been shown,” she told Koh. “Your court should not be used for that.”
The Federal Circuit also advised Koh to consider evidence pertaining to Apple’s licensing negotiations. Sullivan pointed to evidence that Apple had offered up licenses for the three utility patents for which it now seeks a permanent injunction against Samsung, arguing that monetary damages are enough to compensate for the infringement.
Lee warned that argument could set a dangerous precedent.
“No plaintiff who was interested in getting injunctive relief would ever go into a settlement discussion,” he said. “The policy effect would be exactly the opposite of what we want to encourage.”
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