Apple Inc. v. Samsung Electronics Co. Ltd. et al
Filing
2011
ORDER GRANTING 1936 MOTION To Dissolve the June 26, 2012 Preliminary Injunction. Signed by Judge Lucy H. Koh on 10/1/2012. (lhklc2, COURT STAFF) (Filed on 10/1/2012)
1
2
3
4
5
6
7
UNITED STATES DISTRICT COURT
8
NORTHERN DISTRICT OF CALIFORNIA
9
SAN JOSE DIVISION
United States District Court
For the Northern District of California
10
11
12
13
14
15
16
17
APPLE INC., a California corporation,
)
)
Plaintiff and Counterdefendant,
)
v.
)
)
SAMSUNG ELECTRONICS CO., LTD.,
)
a Korean corporation;
)
SAMSUNG ELECTRONICS AMERICA, INC., )
a New York corporation; and
)
SAMSUNG TELECOMMUNICATIONS
)
AMERICA, LLC,
)
a Delaware limited liability company,
)
)
Defendants and Counterclaimants. )
)
Case No.: 11-CV-01846-LHK
ORDER GRANTING SAMSUNG’S
MOTION TO DISSOLVE THE JUNE 26,
2012 PRELIMINARY INJUNCTION
(re: dkt. #1936)
18
On June 26, 2012, the Court preliminarily enjoined Samsung from “making, using, offering
19
to sell, or selling within the United States, or importing into the United States, Samsung’s Galaxy
20
Tab 10.1 tablet computer, and any product that is no more than colorably different from this
21
specified product and embodies any design contained in U.S. Design Patent No. D504,889.” ECF
22
No. 1135 (“June 26 Preliminary Injunction”) at 7. Samsung timely filed a notice of appeal that
23
same day, and that appeal remains pending before the Federal Circuit. After the conclusion of a
24
three-week trial in this case, the jury returned a verdict finding that the Galaxy Tab 10.1 does not
25
infringe Apple’s D’889 Patent. ECF No. 1930 at 7; ECF No. 1931 at 7. Judgment was entered in
26
favor of Apple and against Samsung on August 24, 2012. ECF No. 1933 (“August 24 Judgment”).
27
28
1
Case No. 5:11-CV-01846-LHK
ORDER GRANTING SAMSUNG’S MOTION TO DISSOLVE THE JUNE 26, 2012 PRELIMINARY INJUNCTION
1
Based on what it claimed to be the Court’s “ent[ry of] final judgment reflecting the jury
2
verdict,” on August 26, 2012, Samsung filed a motion for the Court to dissolve the June 26
3
Preliminary Injunction and to retain the $2.6 million bond posted by Apple pending determination
4
of damages suffered by Samsung as a result of the injunction. ECF No. 1936 (“Mot.”) at 2.
5
Pursuant to the briefing schedule set by the Court, Apple filed an opposition on September 10,
6
2012, see ECF No. 1963 (“Opp’n”), and Samsung filed a reply on September 14, 2012, see ECF
7
No. 1967 (“Reply”). Finding that it had no jurisdiction to dissolve the injunction while the appeal
8
was pending, this Court then denied without prejudice Samsung’s motion to dissolve, and issued an
9
indicative ruling pursuant to Federal Rule of Civil Procedure 62.1 that Samsung’s motion raises a
United States District Court
For the Northern District of California
10
substantial issue. ECF No. 1968. On September 28, 2012, the Federal Circuit issued a limited
11
remand order to permit this Court to rule on the motion to dissolve. ECF No. 2007.
12
First, notwithstanding Samsung’s characterization of the August 24 Judgment as “final” in
13
its opening brief, the parties now agree that, because the August 24 Judgment referred simply to the
14
jury verdict and did not resolve all substantive remedies, including Apple’s requests for injunctive
15
relief and enhanced damages, the judgment is not “final” for purposes of appeal. See Opp’n at 3;
16
Reply at 1; see also Riley v. Kennedy, 553 U.S. 406, 419 (2008) (“[A]n order resolving liability
17
without addressing a plaintiff’s requests for relief is not final.”). Accordingly, the August 24
18
Judgment likewise is not a final judgment as would automatically dissolve the June 26 Preliminary
19
Injunction. Cf. U.S. Philips Corp. v. KBC Bank N.V., 590 F.3d 1091, 1093-94 (9th Cir. 2010) (“A
20
preliminary injunction imposed according to the procedures outlined in Federal Rule of Civil
21
Procedure 65 dissolves ipso facto when a final judgment is entered in the cause.”).
22
Samsung asks this Court to dissolve the injunction and retain Apple’s bond pursuant to
23
Federal Rule of Civil Procedure 62.1(c). Reply at 3. Apple opposes this request on grounds that
24
“Samsung’s motion cannot fairly be decided without resolving Apple’s motions for JMOL that the
25
Tab 10.1 infringes the D’889 patent and for an injunction based on the verdict that the Tab 10.1
26
infringes the ’381, ’915, and ’163 patents.” Opp’n at 4. Apple argues that the parties are currently
27
briefing motions that could entitle Apple to a permanent injunction against the Galaxy Tab 10.1,
28
2
Case No. 5:11-CV-01846-LHK
ORDER GRANTING SAMSUNG’S MOTION TO DISSOLVE THE JUNE 26, 2012 PRELIMINARY INJUNCTION
1
and that, “[i]f the Tab 10.1 injunction were dissolved and then reinstated, this would be confusing
2
to the market and would undermine the orderly administration of justice.” Opp’n at 5.
3
The Court agrees with Samsung that the sole basis for the June 26 Preliminary Injunction
was the Court’s finding that Samsung likely infringed the D’889 Patent. The jury has found
5
otherwise. Thus, the sole basis for the June 26 Preliminary Injunction no longer exists. Based on
6
these facts alone, the Court finds it proper to dissolve the injunction. “Because injunctive relief is
7
drafted in light of what the court believes will be the future course of events, . . . a court must never
8
ignore significant changes in the law or circumstances underlying an injunction lest the decree be
9
turned into an ‘instrument of wrong.’” 1 Salazar v. Buono, 130 S. Ct. 1803, 1816 (2010) (plurality
10
United States District Court
For the Northern District of California
4
opinion) (quoting 11A C. Wright, A. Miller, & M. Kane, Federal Practice and Procedure § 2961, at
11
393-94 (quoting United States v. Swift & Co., 286 U.S. 106, 115 (1932))); see Sys. Fed’n No. 91 v.
12
Wright, 364 U.S. 642, 647-48 (1961) (holding that a district court has “wide discretion” to modify
13
an injunction based on changed circumstances or new facts); A&M Records, Inc. v. Napster, Inc.,
14
284 F.3d 1091, 1098 (9th Cir. 2002) (same). The jury’s finding of non-infringement based on all
15
the evidence presented at trial clearly constitutes such a significant change in circumstances. Cf.
16
Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350-51 (Fed. Cir. 2001) (holding
17
that a preliminary injunction should not issue if the non-moving party “raises a substantial question
18
concerning either infringement or invalidity, i.e., asserts an infringement or invalidity defense that
19
the patentee cannot prove ‘lacks substantial merit’” (quoting Genentech, Inc. v. Novo Nordisk, A/S,
20
108 F.3d 1361, 1364 (Fed. Cir. 1997)).
21
Moreover, the Court does not agree with Apple that Samsung’s motion for dissolution of
22
the June 26 Preliminary Injunction cannot be fairly decided without resolving Apple’s post-trial
23
motions. Even if Apple ultimately prevails on its post-trial motions, any permanent injunction
24
would be prospective and not retroactive. 2 Furthermore, the public has no interest in enjoining a
25
1
26
27
28
As noted by the Ninth Circuit, a party may be “wrongfully enjoined” without a preliminary
injunction having been “wrongfully issued.” See Nintendo of Am., Inc. v. Lewis Galoob Toys, Inc.,
16 F.3d 1032, 1036 n.4 (9th Cir. 1994) (affirming execution of bond upon determining defendant
had been wrongfully enjoined, despite having upheld the district court’s issuance of the preliminary
injunction in an earlier appeal).
2
The Court is not in any way commenting on the merits of any of the parties’ post-trial motions.
3
Case No. 5:11-CV-01846-LHK
ORDER GRANTING SAMSUNG’S MOTION TO DISSOLVE THE JUNE 26, 2012 PRELIMINARY INJUNCTION
1
non-infringing product, and thus any market disruption caused by dissolution would be
2
insignificant compared to Samsung’s interest in restoring its product to market. Accordingly, the
3
Court GRANTS Samsung’s motion to dissolve the June 26 Preliminary Injunction.
4
Finally, Samsung has requested that the Court retain the $2.6 million bond that Apple
5
posted as a condition of obtaining the preliminary injunction. See ECF No. 1135. The purpose of
6
this bond is “to pay the costs and damages sustained by any party found to have been wrongfully
7
enjoined or restrained.” Fed. R. Civ. P. 65(c). The Ninth Circuit 3 has held that “wrongfully
8
enjoined” means that a party “had the right all along to do what it was enjoined from doing.”
9
Nintendo of Am. Inc. v. Lewis Galoob Toys, Inc., 16 F.3d 1032, 1036 (9th Cir. 1994). The question
United States District Court
For the Northern District of California
10
of whether Samsung was wrongfully enjoined is inextricably intertwined with the Court’s
11
resolution of the post-trial motions. Accordingly, the Court will retain the bond pending resolution
12
of the post-trial motions. After the Court issues its Order on those motions, it will invite the parties
13
to submit a proposed briefing schedule on any issues remaining concerning the preliminary
14
injunction.
15
IT IS SO ORDERED.
16
Dated: October 1, 2012
17
_________________________________
LUCY H. KOH
United States District Judge
18
19
20
21
22
23
24
25
26
27
3
28
The law of the regional circuit governs issues relating to injunctions and bonds in patent cases.
See Hupp v. Siroflex of America, Inc., 122 F.3d 1456, 1467 (Fed. Cir. 1997).
4
Case No. 5:11-CV-01846-LHK
ORDER GRANTING SAMSUNG’S MOTION TO DISSOLVE THE JUNE 26, 2012 PRELIMINARY INJUNCTION
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?