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William F. Lee, Wilmer Cutler Pickering Hale and Dorr LLP, of Boston, MA, argued for plaintiff-appellant. With him on the brief were Mark C. Fleming, Joseph J. Mueller and Lauren B. Fletcher; and Jonathan G. Cedarbaum, of WA, DC. Of counsel on the brief were Michael A. Jacobs, Rachel Krevans, Erik J. Olson, Richard S.J. Hung and Grant L. Kim, Morrison & Foerster LLP, of San Francisco, CA of counsel were Andrew J. Danford, Wilmer Cutler Pickering Hale and Dorr LLP, of Boston, MA; Mark D. Selwyn, of Palo Alto, CA; and Rachel Weiner, of WA, DC.
Kathleen M. Sullivan, Quinn Emanuel Urquhart & Sullivan, LLP, of New York, New York, argued for defendants-appellees. With her on the brief were William B. Adams; and Kevin A. Smith, of San Francisco, CA of counsel were John B. Quinn, of Los Angeles, CA and Derek Shaffer, of WA, DC.
Patrick J. Flinn, Alston and Bird LLP, of Atlanta, GA, for amici curiae Nokia Corporation, et al. With him on the brief was Keith E. Broyles.
Kevin X. McGann, White & Case LLP, of New York, New York, for amici curiae Google, Inc., et al. With him on the brief were Christopher J. Glancy, and Warren S. Heit, of Palo Alto, CA.
Before PROST, BRYSON, and O'MALLEY, Circuit Judges.
PROST, Circuit Judge.
Apple Inc. appeals from an order of the U.S. District Court for the Northern District of California denying Apple's request for a permanent injunction against Samsung Electronics Company, Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, " Samsung" ). See Apple Inc. v. Samsung Elecs. Co., 909 F.Supp.2d 1147 (N.D.Cal.2012) (" Injunction Order " ). Apple sought to enjoin Samsung's infringement of several of Apple's design and utility patents, as well as Samsung's dilution of Apple's iPhone trade dress. We affirm the denial of injunctive relief with respect to Apple's design patents and trade dress. However, we vacate the denial of injunctive relief with respect to Apple's utility patents and remand for further proceedings.
A. Proceedings Below
Apple sued Samsung in April 2011, alleging infringement of several Apple patents and dilution of Apple's trade dress. Samsung filed counterclaims, alleging infringement of several of its own patents. The case was tried to a jury beginning on July 30, 2012, and on August 24, 2012, the jury returned a verdict substantially in Apple's favor. The jury found that twenty-six Samsung smartphones and tablets infringed one or more of six Apple patents. The jury also found that six Samsung smartphones diluted Apple's registered iPhone trade dress and unregistered iPhone 3G trade dress. In addition, the jury rejected Samsung's infringement counterclaims and awarded Apple more than $1 billion in damages. The district court later set aside a portion of the damages award for certain products and scheduled a partial new trial on damages, but it affirmed the jury's liability findings.
After trial, Apple moved for a permanent injunction to enjoin Samsung from importing or selling any of its twenty-six
infringing smartphones and tablets  " or any other product not more than colorably different from an Infringing Product as to a feature or design found to infringe." Injunction Order, 909 F.Supp.2d at 1149. Apple also sought to enjoin Samsung from selling any of its six smartphones found to dilute Apple's trade dress.
On December 17, 2012, the district court denied Apple's request for a permanent injunction. See id. at 1149-50. Apple appealed, and we have jurisdiction under 28 U.S.C. §§ 1292(c)(1) and 1295(a)(1).
B. Prior Appeals
This court has previously issued two opinions in appeals involving these particular parties and the issue of injunctive relief. In Apple Inc. v. Samsung Electronics Co., 678 F.3d 1314 (Fed.Cir.2012), referred to here as Apple I, we resolved an appeal in this case arising from the district court's denial of a preliminary injunction with respect to four Apple patents, including three patents that are at issue in the current appeal. We affirmed the district court's denial of injunctive relief with respect to those three patents but vacated the denial of injunctive relief with respect to the fourth patent on the ground that the patent was likely not invalid. See id. at 1333. On remand, the district court entered a preliminary injunction against Samsung's Galaxy Tab 10.1 tablet, but the injunction was lifted after the jury found the Tab 10.1 not to infringe.
In Apple Inc. v. Samsung Electronics Co., 695 F.3d 1370 (Fed.Cir.2012), referred to here as Apple II, we resolved an appeal in a separate case that Apple filed in 2012, involving different patents but some of the same products. In Apple II, we reversed the district court's grant of a preliminary injunction against Samsung's Galaxy Nexus smartphone. See id. at 1372.
There is some overlap between the issues raised in Apple I and Apple II and the present appeal. However, whereas in our prior opinions we addressed Apple's requests for preliminary injunctive relief, in the present appeal we are asked to address Apple's request for permanent injunctive relief.
C. Apple's Patents and Trade Dress
Apple is seeking a permanent injunction against Samsung's infringement of six patents— three design patents and three utility patents. The design patents are U.S. Design Patent Nos. 618,677 (" D'677 patent" ), 593,087 (" D'087 patent" ), and 604,305 (" D'305 patent" ). We previously discussed the D'677 and D'087 patents in Apple I, where we explained:
Both patents claim a minimalist design for a rectangular smartphone consisting of a large rectangular display occupying most of the phone's front face. The corners of the phone are rounded. Aside from a rectangular speaker slot above the display and a circular button below the display claimed in several figures of the patent, the design contains
no ornamentation. The D'087 patent claims a bezel surrounding the perimeter of the phone's front face and extending from the front of the phone partway down the phone's side. The parts of the side beyond the bezel, as well as the phone's back, are disclaimed, as indicated by the use of broken lines in the patent figures. The D'677 patent does not claim a bezel but instead shows a black, highly polished, reflective surface over the entire front face of the phone. The D' 677 patent disclaims the sides and back of the device.
Apple I, 678 F.3d at 1317. Representative figures from the D'087 and D' 677 patents are shown below.
D'087 Patent, Fig. 1.
D'677 Patent, Fig. 1.
The D'305 patent claims the ornamental design of the iPhone's graphical user interface, including the arrangement of rows of square icons with rounded corners. A representative figure from the D'305 patent is shown below.
D'305 Patent, Fig. 1.
The three utility patents at issue in this appeal are U.S. Patent Nos. 7,469,381 (" '381 patent" ), 7,844,915 (" '915 patent" ), and 7,864,163 (" '163 patent" ). We discussed the '381 patent in Apple I . As we explained there:
[T]he '381 patent ... claims a software feature known as the " bounce-back" feature, which is found on Apple's smartphones and tablets, such as the iPhone and the iPad. The bounce-back feature is activated when the user is scrolling through a document displayed on the device. If the user attempts to scroll past the end of the document, an area beyond the edge of the document is displayed to indicate that the user has reached the document's end. Once the user input ceases (i.e., when the user lifts up the finger that is used for scrolling), the previously visible part of the document " bounces back" into view.
Apple I, 678 F.3d at 1318.
The '915 patent claims a type of " multi-touch display" functionality, which allows a touchscreen device to distinguish between single-touch commands for scrolling through documents and multi-touch gestures for manipulating a document, such as a two-fingered " pinch-to-zoom" gesture.
The '163 patent claims a " double-tap-to-zoom" functionality, which allows a touchscreen device to enlarge and center the text of an electronic document when a user taps twice on a portion of the document, and in response to a second user gesture on another portion of the document, recenters the screen over that portion of the document.
Apple is also seeking a permanent injunction against Samsung's dilution of its registered iPhone trade dress and its unregistered iPhone 3G trade dress. These two trade dresses protect the overall visual impression of the non-functional elements of the iPhone's front face, including: (i) a rectangular product with four evenly rounded corners; (ii) a flat clear surface covering the front of the product; (iii) the appearance of a metallic bezel around the flat clear surface; (iv) a display screen under the clear surface; (v) under the clear surface, substantial black borders above and below the display screen and narrower black borders on either side of the screen; (vi) when the device is on, a row of small dots on the display screen; (vii) when the device is on, a matrix of colorful square icons with evenly rounded corners within the display screen; and (viii) when the device is on, a bottom dock of colorful square icons with evenly rounded corners set off from the other icons on the display, which does not change as other pages of the user interface are viewed.
In accordance with the principles of equity, a plaintiff seeking a permanent injunction " must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction." eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). The Supreme Court has cautioned that " [a]n injunction is a drastic and extraordinary remedy, which should not be granted as a matter of course." Monsanto Co. v. Geertson Seed Farms, 561 U.S. 139, 130 S.Ct. 2743, 2761, 177 L.Ed.2d 461 (2010) (citing Weinberger v. Romero-Barcelo, 456 U.S. 305, 311-12, 102 S.Ct. 1798, 72 L.Ed.2d 91 (1982)). Rather, " [i]f a less drastic remedy ... [is] sufficient to redress [a plaintiff's] injury, no recourse to the additional and extraordinary relief of an injunction [is] warranted." Id.
" The decision to grant or deny permanent injunctive relief is an act of equitable discretion by the district court, reviewable on appeal for abuse of discretion." eBay, 547 U.S. at 391, 126 S.Ct. 1837. " We may find an abuse of discretion on a showing that the court made a clear error of judgment in weighing relevant factors or exercised its discretion based upon an error of law or clearly erroneous factual findings." Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1379 (Fed.Cir.2008) (internal quotation marks omitted). " To the extent the court's decision is based upon an issue of law, we review that issue de novo." Sanofi-Synthelabo v. Apotex, Inc., 470 F.3d 1368, 1374 (Fed.Cir.2006).
On appeal, Apple challenges the district court's denial of its request for a permanent injunction against Samsung's infringement of its patents and dilution of its trade dress. We first address the denial of an injunction against Samsung's patent infringement, followed ...