## Facts

- Apple sued Samsung in the Northern District of California, alleging infringement of three design patents and one utility patent covering smartphone and tablet designs and a touch-screen “bounce-back” feature.
- The asserted design patents were D593,087 (D’087) and D618,677 (D’677) relating to iPhone-like smartphone designs, and D504,889 (D’889) relating to an iPad-like tablet design.
- The asserted utility patent was U.S. Patent No. 7,469,381 (’381), directed to a touch-screen scrolling “rubber-banding” visual effect.
- Apple sought a preliminary injunction to stop sales of certain accused Samsung smartphones and tablets in the United States during the litigation.
- The district court denied preliminary injunctive relief as to all four patents, finding (i) no irreparable harm for D’677 and ’381 and (ii) no likelihood of success on the merits for D’087 (anticipation concerns) and D’889 (obviousness).
- Apple appealed the denial of preliminary injunction to the Federal Circuit.

## Issues

1. Whether the district court abused its discretion in denying a preliminary injunction as to D’677 and ’381 based on a failure to prove irreparable harm, including whether Apple had to show a causal nexus between infringement and the alleged harm.
2. Whether the district court abused its discretion in denying a preliminary injunction as to D’087 based on lack of likelihood of success due to anticipation by prior art.
3. Whether the district court applied the correct legal standard for design-patent obviousness when denying a preliminary injunction as to D’889, including the “basically the same” primary-reference requirement and overall-visual-impression analysis.

## Decision

- Affirmed denial of a preliminary injunction as to D’677 because Apple did not show irreparable harm causally linked to the patented design.
- Affirmed denial as to ’381 because Apple did not show irreparable harm tied to the patented “bounce-back” feature.
- Affirmed denial as to D’087 because Apple did not establish likelihood of success on the merits in light of anticipation concerns on the preliminary-injunction record.
- Vacated and remanded as to D’889 because the district court committed legal error in its design-patent obviousness analysis, including its use of an improper primary reference and an overly element-by-element approach.

## Legal Principles

- A preliminary injunction requires proof of (1) likelihood of success on the merits, (2) likely irreparable harm absent relief, (3) balance of hardships, and (4) public interest; denial is reviewed for abuse of discretion.
- For irreparable harm, it is insufficient to show mere competition and lost sales; the patentee must show a causal nexus between the infringement of the specific patented feature and the claimed irreparable harm.
- In design-patent obviousness analysis, a primary reference must be “basically the same” as the claimed design in overall visual impression before secondary references may be considered.
- Design-patent validity analysis must focus on the overall appearance of the design rather than parsing the claimed design into isolated features.

## Conclusion

The Federal Circuit largely upheld the denial of preliminary relief because Apple did not establish irreparable harm tied to the specific patented features and did not show likelihood of success on D’087, but it required reconsideration of D’889 because the district court misapplied design-patent obviousness rules governing primary references and overall visual impression.


Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314 (Fed. Cir. 2012)