United States Court of Appeals 

for the Federal Circuit 

__________________________ 

APPLE INC., 

Plaintiff-Appellee, 

v. 

SAMSUNG ELECTRONICS CO., LTD., 

SAMSUNG ELECTRONICS AMERICA, INC., AND

SAMSUNG TELECOMMUNICATIONS AMERICA, 

LLC, 

Defendants-Appellants. 

__________________________ 

2012-1507 

__________________________ 

Appeal from the United States District Court for the 

Northern District of California in case no. 12-CV-0630, 

Judge Lucy H. Koh. 

__________________________ 

Decided: October 11, 2012 

__________________________ 

MARK A. PERRY, Gibson, Dunn & Crutcher LLP, of 

Washington, DC, California, argued for the plaintiffappellee. With him on the brief were, JOSH A. KREVITT 

and H. MARK LYON, of Palo Alto, California. Of counsel on 

the brief were HAROLD J. MCELHINNY, MICHAEL A. JACOBS, 

RICHARD S. J. HUNG and BRIAN R. MATSUI, Morrison & 

Foerster, LLP, of San Francisco, California. 
APPLE INC v. SAMSUNG ELECTRONICS CO 2

JOHN QUINN, Quinn Emanuel Urquhart & Sullivan, 

LLP, of Los Angeles, California, argued for the defendants-appellants. On the brief were WILLIAM C. PRICE, 

PATRICK M. SHIELDS and DEREK L. SHAFFER; and CHARLES 

K. VERHOEVEN, KEVIN P.B. JOHNSON and VICTORIA F.

MAROULIS, of Redwood Shores, California. 

KEVIN X. MCGANN, White & Case, LLP, of New York, 

New York, for amicus curiae, Google Inc. With him on the 

brief was CHRISTOPHER J. GLANCY. 

JONATHAN N. ZERGER, Shook, Hardy & Bacon L.L.P., 

of Kansas City, Missouri, for amicus curiae, Sprint Spectrum, L.P. With him on the brief was ANGEL D.

MITCHELL. 

__________________________ 

Before PROST, MOORE, and REYNA, Circuit Judges. 

PROST, Circuit Judge. 

Samsung Electronics Company, Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications 

America, LLC (collectively, “Samsung”) appeal from the 

district court’s order granting Apple, Inc., a preliminary 

injunction and enjoining Samsung from selling its Galaxy 

Nexus smartphone. Because the district court abused its 

discretion in entering an injunction, we reverse and 

remand. 

BACKGROUND

On February 8, 2012, Apple brought suit against 

Samsung, alleging that Samsung’s Galaxy Nexus smartphone infringes eight patents, including U.S. Patent No. 

8,086,604 (“’604 patent”), which is the only patent at issue 
3 APPLE INC v. SAMSUNG ELECTRONICS CO

in this appeal. Asserted independent claim 6 of the ’604 

patent is directed to an apparatus for “unified search” 

that uses heuristic modules to search multiple data 

storage locations. Unified search refers to the ability to 

access information on more than one data storage location 

through a single interface. For example, a device 

equipped with unified search allows the user to search the 

local memory of the device as well as the Internet by 

entering a single search query. 

The apparatus disclosed in claim 6 recites a specific 

and particular implementation of unified search that uses 

modules to conduct the search. For the purpose of this 

appeal, we assume that a search module is a software 

program or subroutine that employs a particular search 

algorithm. According to claim 6, when the user inputs a 

search query in the unified search interface, the query is 

submitted to different heuristic modules, each of which is 

assigned a predetermined search area. The search results 

that are returned by the search modules are then gathered (and perhaps further filtered) and displayed to the 

user. Claim 6 recites: 

6. An apparatus for locating information in a network, comprising: 

an interface module configured to receive an inputted information descriptor from a user-input 

device; 

a plurality of heuristic modules configured to 

search for information that corresponds to the received information descriptor, wherein: 

each heuristic module corresponds to a respective area of search and employs a different, 
APPLE INC v. SAMSUNG ELECTRONICS CO 4

predetermined heuristic algorithm corresponding to said respective area, and the search areas include storage media accessible by the 

apparatus; and 

a display module configured to display one or 

more candidate items of information located by 

the plurality of heuristic modules on a display device. 

’604 patent col.8 ll.26-41 (emphases added).1 

Apple alleges that the Quick Search Box (“QSB”), 

which is the unified search application of Samsung’s 

Galaxy Nexus, infringes claim 6. QSB is a feature of 

Android, an open-source mobile software platform developed by Google, Inc. Any software developer may use 

Android to create applications for mobile devices, and any 

handset manufacturer can install Android on a device. 

Galaxy Nexus is only one of more than 300 Android 

smartphones available on the market. The release of the 

allegedly infringing version of the Android platform 

predates the release of the Galaxy Nexus, but Google, Inc. 

is not a defendant in this suit. 

Along with the complaint, Apple also filed a motion 

for a preliminary injunction, seeking to enjoin the sales of 

the Galaxy Nexus. Four of the eight asserted patents 

formed the basis of Apple’s request for relief. The district 

court found that Apple’s allegations with regard to three 

of the patents did not justify granting Apple’s motion. It 

determined, however, that an injunction should issue 

based on the alleged infringement of the ’604 patent. 

 1 Apple also asserts claim 19, which depends from 

claim 6. Because the parties do not discuss claim 19 

separately, we too limit our analysis to claim 6. 
5 APPLE INC v. SAMSUNG ELECTRONICS CO

Accordingly, on June 29, 2012, the district court enjoined 

the sales of Galaxy Nexus. Samsung moved the district 

court to stay the injunction pending appeal, but the 

district court denied its request. Samsung appealed. At 

the outset, this court granted Samsung’s motion for a 

temporary stay of the injunction, expedited the appeal, 

and in that light held in abeyance Samsung’s subsequent 

motion for a stay pending appeal. We exercise jurisdiction pursuant to 28 U.S.C. §§ 1292(c)(1) and 1295(a)(1). 

STANDARD OF REVIEW

On an appeal from the grant of a preliminary injunction, we must review the district court’s legal rulings de 

novo and its ultimate decision to grant a preliminary 

injunction for abuse of discretion. Gonzales v. O Centro 

Espirita Beneficente Uniao do Vegetal, 546 U.S. 418, 428 

(2006); McCreary Cnty. v. Am. Civil Liberties Union of 

Ky., 545 U.S. 844, 867 (2005). 

DISCUSSION

“A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he 

is likely to suffer irreparable harm in the absence of 

preliminary relief, that the balance of equities tips in his 

favor, and that an injunction is in the public interest.” 

Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 

(2008) (citation omitted). These traditional four factors 

“apply with equal force to disputes arising under the 

Patent Act.” eBay Inc. v. MercExchange, L.L.C., 547 U.S. 

388, 391 (2006). The parties dispute the district court’s 

decision to grant injunctive relief based on its analysis of 

the likelihood of success and irreparable harm factors. To 

the extent we deem necessary, we address these arguments below. 
APPLE INC v. SAMSUNG ELECTRONICS CO 6

I. Irreparable Harm 

It is well established that as the party seeking emergency relief, Apple “must make a clear showing that it is 

at risk of irreparable harm, which entails showing a 

likelihood of substantial and immediate irreparable 

injury.” Apple, Inc. v. Samsung Electronics Co., 678 F.3d 

1314, 1325 (Fed. Cir. 2012) (hereinafter Apple I) (citing 

Winter, 555 U.S. at 22; Weinberger v. Romero–Barcelo, 

456 U.S. 305, 311 (1982); O'Shea v. Littleton, 414 U.S. 

488, 502 (1974)); see also Beacon Theatres, Inc. v. Westover, 359 U.S. 500, 506–507 (1959) (“The basis of injunctive relief in the federal courts has always been 

irreparable harm and inadequacy of legal remedies.”). 

But in cases such as this—where the accused product 

includes many features of which only one (or a small 

minority) infringe—a finding that the patentee will be at 

risk of irreparable harm does not alone justify injunctive 

relief. Rather, the patentee must also establish that the 

harm is sufficiently related to the infringement. Apple I, 

678 F.3d at 1324. Thus, to satisfy the irreparable harm 

factor in a patent infringement suit, a patentee must 

establish both of the following requirements: 1) that 

absent an injunction, it will suffer irreparable harm, and 

2) that a sufficiently strong causal nexus relates the 

alleged harm to the alleged infringement. 

Here, Samsung challenges the district court’s decision 

on both grounds: it argues that it was abuse of discretion 

for the district court to find that Apple will be irreparably 

harmed in the absence of an injunction, and that Apple 

sufficiently established a causal nexus between the harm 

alleged and the infringing conduct. We hold that the 

district court abused its discretion in determining that 

Apple established a sufficient causal nexus. In that light, 
7 APPLE INC v. SAMSUNG ELECTRONICS CO

we do not address Samsung’s argument with respect to 

the sufficiency of Apple’s allegations of harm. 

We initially point out, however, that although the irreparable harm and the causal nexus inquiries may be 

separated for the ease of analysis, they are inextricably 

related concepts. As this court recently explained: 

To show irreparable harm, it is necessary to show 

that the infringement caused harm in the first 

place. Sales lost to an infringing product cannot 

irreparably harm a patentee if consumers buy 

that product for reasons other than the patented 

feature. If the patented feature does not drive the 

demand for the product, sales would be lost even 

if the offending feature were absent from the accused product. Thus, a likelihood of irreparable 

harm cannot be shown if sales would be lost regardless of the infringing conduct. 

Apple I, 678 F.3d at 1324. In other words, it may very 

well be that the accused product would sell almost as well 

without incorporating the patented feature. And in that 

case, even if the competitive injury that results from 

selling the accused device is substantial, the harm that 

flows from the alleged infringement (the only harm that 

should count) is not. Thus, the causal nexus inquiry is 

indeed part of the irreparable harm calculus: it informs 

whether the patentee’s allegations of irreparable harm 

are pertinent to the injunctive relief analysis, or whether 

the patentee seeks to leverage its patent for competitive 

gain beyond that which the inventive contribution and 

value of the patent warrant. 

It only follows that the causal nexus analysis is not a 

true or false inquiry. The relevant question is not 
APPLE INC v. SAMSUNG ELECTRONICS CO 8

whether there is some causal relationship between the 

asserted injury and the infringing conduct, but to what 

extent the harm resulting from selling the accused product can be ascribed to the infringement. It is not enough 

for the patentee to establish some insubstantial connection between the alleged harm and the infringement and 

check the causal nexus requirement off the list. The 

patentee must rather show that the infringing feature 

drives consumer demand for the accused product. Id. 

Only viewed through the prism of the causal nexus analysis will the irreparable harm allegations reflect a realistic 

sense of what the patentee has at stake. 

Here, Apple’s evidence of causal nexus is limited. Apple has presented no evidence that directly ties consumer 

demand for the Galaxy Nexus to its allegedly infringing 

feature. Apple rather makes a case for nexus circumstantially, based on the popularity of an iPhone 4S application 

called Siri. Advertised by Apple as an “intelligent personal assistant,” Siri enables iPhone 4S users to speak 

their commands to the phone in a natural and conversational tone. There is no dispute that this highly popular 

feature is a significant source of consumer demand for the 

iPhone 4S. There is also no dispute, however, that the 

Galaxy Nexus does not have a feature equivalent to Siri. 

Apple nonetheless argues that establishing a causal 

nexus here is only a matter of connecting the dots. It 

points to evidence showing that the functionality of Siri 

depends in part on unified search, and that consumers 

often use Siri in ways that include looking for information. Apple further asserts that the unified search feature 

in Siri is the one disclosed in the ’604 patent, and that the 

claimed search feature is more comprehensive than the 

prior art. Thus, Apple appears to suggest that consumers 

must be at least in part attracted to the Galaxy Nexus 
9 APPLE INC v. SAMSUNG ELECTRONICS CO

because it too incorporates the unified search feature 

disclosed in the ’604 patent. 

The district court agreed with Apple’s theory and 

found that a sufficient showing of a causal nexus had 

been made. To begin with, the district court correctly 

observed that our case law does not present much guidance on how the causal nexus test should be applied. 

Quite appropriately, before analyzing the evidence, the 

district court first articulated the legal framework that it 

deemed applicable. It stated that “the requisite causal 

nexus . . . can be established by showing either that the 

patented feature is an affirmative driver of consumer 

demand, or that [its] absence would suppress consumer 

demand.” Apple, Inc. v. Samsung Electronics Co., __ 

F. Supp. 2d __, 2012 WL 2572037, *57 (N.D. Cal. 2012). 

The district court also recited Apple’s argument that a 

causal nexus may be established by showing that removing the patented features will diminish the value or 

substantially interfere with the functionality of the accused device. Id. at *54. In determining that Apple’s 

evidence sufficiently satisfied these articulations of the 

causal nexus inquiry, the district court relied on Apple’s 

survey evidence regarding the popularity of Siri and the 

importance of search to its functionality and consumer 

demand. Id. at *55-56. It also took note of the deposition 

testimony of Apple’s expert witness, who stated: 

[A] lot of Siri's value comes from its comprehensiveness and . . . the claimed features of the ’604 

are important to achieving that comprehensiveness. So there may well be other aspects of Siri 

such as its ability to do speaker independent 

speech recognition that's very important or handle 

noisy microphones, but . . . I think comprehensiveness is very . . . important to the . . . success of 
APPLE INC v. SAMSUNG ELECTRONICS CO 10

it as an interface and the ’604 patented features 

are very important to that comprehensiveness. 

Id. Based on that evidence, the district court agreed with 

Apple that “Siri is core to the functioning and sales of the 

iPhone not just because it hears requests, but because it 

delivers search results.” Id. at 56 (citation omitted). 

Because “the ’604 Patented feature is core to Siri’s functionality,” the district court reasoned, it is also “a but-for 

driver of demand.” Id. 

We hold that the district court abused its discretion. 

To begin with, to the extent the district court endorsed 

Apple’s articulation of the causal nexus test, it erred as a 

matter of law. The causal nexus requirement is not 

satisfied simply because removing an allegedly infringing 

component would leave a particular feature, application, 

or device less valued or inoperable. A laptop computer, 

for example, will not work (or work long enough) without 

a battery, cooling fan, or even the screws that may hold 

its frame together, and its value would be accordingly 

depreciated should those components be removed. That 

does not mean, however, that every such component is 

“core” to the operation of the machine, let alone that each 

component is the driver of consumer demand. To establish a sufficiently strong causal nexus, Apple must show 

that consumers buy the Galaxy Nexus because it is 

equipped with the apparatus claimed in the ’604 patent—

not because it can search in general, and not even because 

it has unified search.2 

 2 During oral argument, counsel for Apple stated 

that nothing in the record shows that unified search may 

be implemented in a smartphone without infringing the 

’604 patent. There is no such finding in the district 

court’s opinion, however, and we have no occasion to 

assess Apple’s assertion in the first instance on appeal. 
11 APPLE INC v. SAMSUNG ELECTRONICS CO

The district court made no such determination. At 

best, the district court’s findings indicate that some 

consumers who buy the iPhone 4S like Siri because, 

among other things, its search results are comprehensive. 

That does not sufficiently suggest, however, that consumers would buy the Galaxy Nexus because of its improved 

comprehensiveness in search. More specifically, that an 

application may sell in part because it incorporates a 

feature does not necessarily mean that the feature would 

drive sales if sold by itself. To the contrary, here, the only 

pertinent evidence—Apple’s own survey evidence—shows 

that unified search is not one of the top five reasons 

consumers select Android smartphones. In this light, the 

causal link between the alleged infringement and consumer demand for the Galaxy Nexus is too tenuous to 

support a finding of irreparable harm. 

The district court cited three documents in support of 

its nexus finding, but they do not sufficiently show that 

the patented feature drives consumer demand. The first 

is an Android developer’s guide that states “[unified] 

[s]earch is a core user feature on Android.” J.A. 1555. 

This document is merely intended to inform softwaredevelopers of the usefulness of Android’s search capabilities in programming. That says too little about what 

draws consumers to the Galaxy Nexus. The other two 

documents are articles published in Internet blogs more 

than two years before the Galaxy Nexus even entered the 

market. In one, entitled “Google and Android Search Just 

Became Awesome,” one blogger predicts that the QSB 

“could help [Android phones] win new customers, even 

ones with iPhones.” J.A. 1557-58. That statement by 

itself at best reflects an individual belief that the QSB’s 

 

Nor do we address which party should have the burden of 

proof in this regard. 
APPLE INC v. SAMSUNG ELECTRONICS CO 12

unified search feature is important to Android consumers. 

That does not suffice to establish a causal nexus. And, 

even this inference may read too much into the document 

because the author does not base his prediction on Samsung’s incorporation of a particular iPhone 4S feature into 

an Android phone. Rather, the author appears to believe 

that the allegedly infringing version of the QSB is indeed 

a superior search application compared to iPhones’ search 

functionality.3 The third and last document is an article 

published in a blog that contains “news and notes from 

the Google Mobile team.” J.A. 1621. The article simply 

explains and praises Android’s QSB feature but says 

nothing about consumer demand. 

This record does not permit the inference that the allegedly infringing features of the Galaxy Nexus drive 

consumer demand. There is therefore no need for us to 

review the district court’s assessment of Apple’s allegations of irreparable harm. Regardless of the extent to 

which Apple may be injured by the sales of the Galaxy 

Nexus, there is not a sufficient showing that the harm 

flows from Samsung’s alleged infringement. Thus, the 

district court abused its discretion in determining that 

the irreparable harm factor counsels in favor of entering 

an injunction. 

II. Likelihood of Success 

Having held that the district court’s irreparable harm 

determination was an abuse of discretion, we would 

ordinarily refrain from addressing other issues. Here, 

however, it is in the interest of judicial economy that we 

 3 Interestingly, this article refers to the unified 

search functionality of the iPhone 3, which preceded the 

iPhone 4S and is not equipped with Siri. 
13 APPLE INC v. SAMSUNG ELECTRONICS CO

address a limited aspect of the district court’s likelihood of 

success analysis that may become important on remand—

claim construction. See Aspex Eyewear, Inc. v. Marchon 

Eyewear, Inc., 672 F.3d 1335, 1346-47 (Fed. Cir. 2012) 

(addressing the district court’s claim construction in the 

interest of judicial economy); Advanced Software Design 

Corp. v. Fiserv, Inc., 641 F.3d 1368, 1378 (Fed. Cir. 2011) 

(addressing claim construction because the “issue may 

become important during the proceedings on remand” 

even though it did not form the basis of the district court’s 

decision). 

The parties’ main dispute concerning the likelihood of 

success of Apple’s infringement claim turns on the meaning of a key limitation in claim 6, which recites “a plurality of modules . . . wherein . . . each heuristic module 

corresponds to a respective area of search and employs a 

different, predetermined heuristic algorithm.” Apple 

argued to the district court that this limitation is satisfied 

as long as the QSB contains at least two modules that 

employ different heuristic algorithms, even if there remain other heuristic modules whose heuristic algorithm 

is not unique. And, Apple argued that this limitation is in 

fact satisfied because the QSB contains three heuristic 

modules that are assigned a predetermined search area 

and employ different heuristic algorithms (each compared 

to the other two). Apple identified these three modules as 

(1) Google, which searches the Internet; (2) Browser, 

which searches the Internet browsing history; and (3) 

People, which searches the user’s contacts list.4 Samsung 

counter-argued that the key limitation of claim 6 requires 

that every heuristic module within the accused device use 

 4 To avoid confusion, all instances of “Google” refer 

to the QSB’s search module. We refer to the company as 

“Google, Inc.” 
APPLE INC v. SAMSUNG ELECTRONICS CO 14

a unique heuristic algorithm. It also pointed out that the 

QSB contains other search modules besides the three that 

formed the basis of Apple’s infringement argument. 

Because Apple had only identified three of the QSB’s 

modules, and there is no indication that the heuristic 

algorithms employed by the remaining modules are also 

unique, Samsung argued that Apple could not establish a 

likelihood of success. 

The district court concluded that Apple had the better 

argument. It determined—and indeed the parties seem to 

have agreed—that under this court’s case law, the term 

“plurality” means “at least two,” or “simply the state of 

being plural.” Apple, __ F. Supp. 2d at __, 2012 WL 

2572037, at *8 (citing ResQNet.com, Inc. v. Lansa, Inc., 

346 F.3d 1374, 1382 (Fed. Cir. 2003); York Prods., Inc. v. 

Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1575 

(Fed. Cir. 1996)). It then reasoned: 

Claim 6 imposes a further limitation on the “plurality of heuristic modules,” requiring that “each 

heuristic module . . . employs a different, predetermined heuristic algorithm.” Thus, the claim 

language supports Apple’s argument that the 

“each” requirement modifies “plurality of heuristic 

modules.” Consistent with Federal Circuit precedent, “each” of “a plurality of heuristic modules” 

means “each of at least two modules,” not “each of 

every module.” See ResQNet, 346 F.3d at 1382 

(construing “each of a plurality of fields” to mean 

“each of at least two fields,” not “every field”). 

Apple, __ F. Supp. 2d at __, 2012 WL 2572037, at *8. 

Turning next to Apple’s factual allegations, the district 

court rejected Apple’s contention that Google uses heuristics at all. Nonetheless, it determined that the QSB is 
15 APPLE INC v. SAMSUNG ELECTRONICS CO

still likely to infringe because it contains at least two 

modules (Browser and People) that use different heuristic 

algorithms. 

We hold that the district court’s determination that 

“each” modifies “plurality of heuristic modules” is erroneous because it contravenes the plain terms of the claim. 

The word “each” appears not before “plurality of modules,” but inside the “wherein” clause and before the 

phrase “heuristic modules.” The district court drew 

support for its construction from ResQNet. Apple, __ 

F. Supp. 2d at __, 2012 WL 2572037, at *8. But ResQNet

in fact counsels the opposite conclusion. That case involved two different claims, one of which recited “each 

field,” the other one “each of a plurality of fields.” 

ResQNet, 346 F.3d at 1377. We thought “[t]his difference 

is significant” and thus construed the two claims separately, holding that the first claim meant “all fields,” the 

latter “at least two, but not all.” Id. at 1382. Here, the 

district court eliminated the very distinction that we 

deemed material in ResQNet by plucking “each” from 

where it appears and planting it before the phrase “plurality of modules.” That was error, and Apple’s reliance 

on ResQNet based on the assertion that it “involv[ed] 

almost identical claim language” is—at best—incorrect. 

Appellee’s Br. 46. 

Although Apple defends the district court’s finding 

that “each” modifies “plurality of modules,” it also seems 

to offer a competing construction. The argument is that 

claim 6 requires “a plurality” (just one) in which every 

module has a different heuristic algorithm (compared to 

the other modules within that plurality). Accordingly, as 

long as there is one such “one plurality”—i.e., at least two 

modules with different heuristic algorithms—the key 

limitation is satisfied. As to any remaining modules, 
APPLE INC v. SAMSUNG ELECTRONICS CO 16

Apple points out that claim 6 uses the open-ended term 

“comprising” in listing the limitations and concludes that 

the addition of other modules does not defeat a showing of 

infringement. In sum, since Browser and People are two 

modules with different heuristics, Apple contends that the 

disputed limitation is met, no matter what other modules 

and heuristic algorithms the QSB may include. 

We disagree. Apple’s argument essentially urges us 

to hold that “plurality” refers not to all but a subset of 

modules. As we pointed out, however, the district court 

has construed “plurality” to mean “at least two,” without 

any indication that the term refers to a hand-picked 

selection of a larger set. Nor do the parties seem to 

disagree with that construction, at least at this stage. 

Accordingly, despite the use of “comprising,” claim 6 is not 

amenable to the addition of other modules that do not use 

different heuristic algorithms because such addition 

would impermissibly wipe out the express limitation that 

requires every module to have a unique heuristic algorithm. 

In that light, the specification of the ’604 patent is 

also not helpful to Apple. The district court correctly 

noted that in one instance, the specification provides that 

modules are “associated” with heuristic algorithms, ’604 

patent col.4 l.13, whereas in another it plainly states that 

“[t]he heuristics of each plug-in module is different.” Id.

at col.5 ll.13-14. According to the district court, the 

difference in the choice of words shows that using different heuristic modules is only an option, not a limitation, 

in the claimed invention. We are not convinced that the 

distinction between “associated” and “different” is as 

strongly suggestive as the district court found and compels us to broaden the claim language beyond what its 

plain reading allows. 
17 APPLE INC v. SAMSUNG ELECTRONICS CO

Finally, the prosecution history of the ’604 patent also 

counsels against the district court’s proposed construction. In three sentences, Apple distinguished its invention from a prior art reference, referred to as “Andreoli”: 

[A]s described herein, Andreoli teaches that the 

processor can use the solution to a constraint satisfaction algorithm to formulate a search request 

and employ any appropriate combination of local 

and remote search operations. Andreoli does not 

describe, however, that each of the local and remote search operations employs a different heuristic algorithm to search an associated relevant 

area of search for information that corresponds to 

the search request, in accordance with amended 

claim 1 (emphasis added). That is, the algorithms 

described in Andreoli and referenced by the Office 

go to the formation of the search request and not 

to how the local and remote search operations 

employed by the processor perform a search of the 

repositories on the network. 

J.A. 1403 (emphasis added and citation omitted). The 

second sentence in this passage strongly suggests that 

every module within the claimed apparatus must use a 

different heuristic algorithm. The district court found 

that the rest of the passage gives context to the second 

sentence in a way that favors Apple. Apple accordingly 

argues that one can glean from the first sentence that the 

patent prosecutor distinguished Andreoli because it used 

a “constraint satisfaction algorithm,” not heuristics. We 

disagree. If Apple intended to distinguish Andreoli based 

on its algorithm type, then why did it not stop after the 

first sentence? Apple in effect invites us to hold that 

merely because one could have theoretically distinguished 

Andreoli based on its search algorithm, the prosecutor did 
APPLE INC v. SAMSUNG ELECTRONICS CO 18

not actually limit the claim any further. Apple, however, 

has distinguished Andreoli not just because the apparatus 

uses heuristics, but also because it employs different 

heuristic algorithms in different search areas. Thus, the 

prosecution history similarly does not help Apple show 

that it is likely to succeed in its infringement claim.5 

CONCLUSION

We hold that the district court abused its discretion in 

enjoining the sales of the Galaxy Nexus. 

REVERSED AND REMANDED 

 5 Samsung also argues that People and Browser do 

not alone infringe claim 6 because the preamble of claim 6 

requires that the apparatus search a network, and yet 

these two modules only perform local searches. On this 

record, we do not see error in the district court’s determination, however, that the preamble of claim 6 is nonlimiting. Thus, we reject Samsung’s alternative argument.