Earlier this summer, the district court enjoined Samsung from
"making, using, offering to sell, or selling within the United
States, or importing into the United States, Samsung's Galaxy
Tab 10.1 tablet computer, and any product that is no more than
colorably different from this specified product and embodies any
design contained in U.S. Design Patent No. D504,889." After
the injunction issued, Samsung filed a notice of appeal to the
Federal Circuit. The appeal remained pending as the case proceeded
After the trial, the jury found that the Galaxy Tab 10.1 did not
infringe Apple's design patent. The district court subsequently
entered a judgment in favor of Apple on the jury verdict. Based on
the judgment, Samsung filed a motion for the district court to
dissolve the injunction and to retain the $2.6 million bond posted
for the injunction. The district court denied the motion due to the
pending appeal but issued an indicative ruling pursuant to
Fed.R.Civ.P. 62.1 that Samsung's motion raised a substantial
issue. The Federal Circuit subsequently issued a limited remand
order to permit the district court to rule on the motion to
After the remand, Samsung again asked the district court to
dissolve the injunction and retain Apple's bond. Apple opposed
the motion on the ground that it was premature because Apple's
post-trial motions were still pending and Apple's post-trial
briefs could demonstrate that Apple would be entitled to a
permanent injunction against the Galaxy Tab 10.1.
The district court disagreed and sided with Samsung. "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
otherwise. Thus, the sole basis for the June 26 Preliminary
Injunction no longer exists. Based on these facts alone, the Court
finds it proper to dissolve the injunction. 'Because injunctive
relief is drafted in light of what the court believes will be the
future course of events, . .. a court must never ignore significant
changes in the law or circumstances underlying an injunction lest
the decree be turned into an 'instrument of wrong.'
Salazar v. Buono, 130 S. Ct. 1803, 1816 (2010) (plurality
Based on the jury's verdict of non-infringement, the
district court found there was a significant change in
circumstance. "The jury's finding of non-infringement
based on all the evidence presented at trial clearly constitutes
such a significant change in circumstances. Cf. Amazon.com,
Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350-51 (Fed.
Cir. 2001) (holding that a preliminary injunction should not issue
if the non-moving party 'raises a substantial question
concerning either infringement or invalidity, i.e., asserts an
infringement or invalidity defense that the patentee cannot prove
'lacks substantial merit'' (quoting Genentech, Inc.
v. Novo Nordisk, A/S, 108 F.3d 1361, 1364 (Fed. Cir.
In addition, the district court also disagreed that the
dissolution of the injunction did not need to await Apple's
post-trial motions. "Moreover, the Court does not agree with
Apple that Samsung's motion for dissolution of the June 26
Preliminary Injunction cannot be fairly decided without resolving
Apple's post-trial motions. Even if Apple ultimately prevails
on its post-trial motions, any permanent injunction would be
prospective and not retroactive. Furthermore, the public has no
interest in enjoining a non-infringing product, and thus any market
disruption caused by dissolution would be u, insignificant compared
to Samsung's interest in restoring its product to market
Accordingly, the Court GRANTS Samsung's motion to dissolve the
June 26 Preliminary Injunction."
Finally, the district court determined it should retain
Apple's bond as the purpose of the bond is "to pay the
costs and damages sustained by any party found to have been
wrongfully enjoined or restrained." Fed. R. Civ. P. 65(c). . .
. The question of whether Samsung was wrongfully enjoined is
inextricably intertwined with the Court's resolution of the
Apple Inc. v. Samsung Electronics Co., LTD, Case No.
11-CV-01846-LHK (N.D. Cal. Oct. 1, 2012)
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On May 19, 2016, Robert Bahr, Deputy Commissioner for Patent Examination Policy of the U.S. PTO sent a memorandum to the Patent Examining Corps that discusses the recent decisions issued by the U.S. Court of Appeals for the Federal Circuit.
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