United States Court of Appeals 

for the Federal Circuit 

__________________________ 

APPLE, INC., 

Plaintiff-Appellant, 

v. 

SAMSUNG ELECTRONICS CO., LTD., 

SAMSUNG ELECTRONICS AMERICA, INC., AND 

SAMSUNG TELECOMMUNICATIONS AMERICA, 

LLC, 

Defendants-Appellees. 

__________________________ 

2012-1105 

__________________________ 

Appeal from the United States District Court for the 

Northern District of California in Case No. 11-CV-1846, 

Judge Lucy H. Koh. 

___________________________ 

Decided: May 14, 2012 

___________________________ 

MICHAEL A. JACOBS, Morrison & Foerster LLP, of San 

Francisco, California, argued for plaintiff-appellant. With 

him on the brief were HAROLD J. MCELHINNY, GRANT L.

KIM, ALISON M. TUCHER and RICHARD S.J. HUNG; and 

BRIAN R. MATSUI, of Washington DC. 
APPLE v. SAMSUNG ELECTRONICS 2

KATHLEEN M. SULLIVAN, Quinn Emanuel Urquhart & 

Sullivan, LLP, of San Francisco, California, argued for 

defendants-appellees. With her on the brief were 

CHARLES K. VERHOEVEN, KEVIN P.B. JOHNSON, VICTORIA 

F. MAROULIS and MICHAEL T. ZELLER. Of counsel were 

KEVIN ALEXANDER SMITH; and WILLIAM B. ADAMS, of New 

York, New York. 

__________________________ 

Before BRYSON, PROST, and O’MALLEY, Circuit Judges. 

Opinion for the court filed by Circuit Judge BRYSON. 

Concurring in part and dissenting in part opinion filed by 

Circuit Judge O’MALLEY. 

BRYSON, Circuit Judge. 

This is an appeal from the denial of a preliminary injunction. While the appeal presents substantial issues of 

law and fact, the decision whether to issue a preliminary 

injunction is one that is committed to the discretion of the 

district court, which makes the appellant’s task in overturning that decision a difficult one. With respect to 

three of the four patents at issue in this appeal, we conclude that the appellant has not satisfied its burden of 

demonstrating an abuse of discretion, and we therefore 

affirm the denial of preliminary injunctive relief. With 

respect to the fourth patent, we conclude that the district 

court committed legal error in one important respect, so 

we vacate that portion of the court’s order and remand for 

further proceedings in that part of the case. 
3 APPLE v. SAMSUNG ELECTRONICS

I 

A 

Apple, Inc., is the owner of several design and utility 

patents pertaining to smartphones and tablet computers. 

U.S. Design Patent Nos. D593,087 (“the D’087 patent”) 

and D618,677 (“the D’677 patent”) are directed to designs 

that Apple contends are generally embodied in the 

iPhone, Apple’s popular smartphone. Those patents 

issued on May 26, 2009, and June 29, 2010, respectively. 

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. Representative depictions of the designs claimed in the D’087 

and D’677 patents are reproduced below: 
APPLE v. SAMSUNG ELECTRONICS 4

(D’087 Patent, Fig. 1) 

(D’677 Patent, Fig. 1) 

Apple also owns U.S. Design Patent No. D504,889 

(“the D’889 patent”), which is directed to the design of a 

tablet computer. The patent depicts a rectangular tablet 

with a polished reflective surface extending to the edge of 

the front side of the device. Within that surface, broken 

lines delineate a slightly smaller rectangular display 

area. The front face of the patented design has rounded 

corners, and a thin bezel surrounds the front surface 

along its perimeter. The front surface has no ornamenta-
5 APPLE v. SAMSUNG ELECTRONICS

tion, buttons, speaker slots, holes, or raised surfaces. The 

back and sides of the design are also claimed; the figures 

depict a flat, unadorned back transitioning into the sides 

through a rounded-over edge. Apple claims that its iPad 

tablet computer embodies the design of the D’889 patent. 

A figure representing the claimed design shows the 

following: 

(D’889 Patent, Fig. 1) 

Apple has also asserted U.S. Patent No. 7,469,381 

(“the ’381 patent”), a utility patent that 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. Claim 1 of the patent recites: 
APPLE v. SAMSUNG ELECTRONICS 6

A computer-implemented method, comprising: 

at a device with a touch screen display: 

displaying a first portion of an electronic document; 

detecting a movement of an object on or near the 

touch screen display; 

in response to detecting the movement, translating the electronic document displayed on the 

touch screen display in a first direction to display 

a second portion of the electronic document, 

wherein the second portion is different from the 

first portion; 

in response to an edge of the electronic document 

being reached while translating the electronic 

document in the first direction while the object is 

still detected on or near the touch screen display: 

displaying an area beyond the edge of the document, and 

displaying a third portion of the electronic document, wherein the third portion is smaller than 

the first portion; and 

in response to detecting that the object is no 

longer on or near the touch screen display, translating the electronic document in a second direction until the area beyond the edge of the 

electronic document is no longer displayed to display a fourth portion of the electronic document, 

wherein the fourth portion is different from the 

first portion. 
7 APPLE v. SAMSUNG ELECTRONICS

B 

Apple filed suit against Samsung on April 15, 2011, 

alleging, inter alia, infringement of the D’677 and ’381 

patents. Two months later, Apple amended its complaint 

and asserted that Samsung was also infringing the D’087 

and D’889 patents. Specifically, Apple claimed that two of 

Samsung’s smartphones, the Galaxy S 4G and the Infuse 

4G, which were released on February 23, 2011, and May 

15, 2011, respectively, infringed the D’087 and the D’677 

patents. Apple also alleged that Samsung’s Galaxy Tab 

10.1 tablet, which was released in June 2011, infringed 

the D’889 patent, and that all three devices infringed the 

’381 patent.1 On July 1, 2011, Apple moved for a preliminary injunction to block the importation into and sale 

within the United States of the accused Samsung devices. 

The district court denied Apple’s motion with respect 

to each of the accused devices and all four asserted patents. Apple, Inc. v. Samsung Elecs. Co., No. 11-cv-1846 

(N.D. Cal. Dec. 2, 2011). The court noted that four factors 

must be considered in addressing a motion for a preliminary injunction—whether the movant is likely to succeed 

on the merits; whether the movant is likely to suffer 

irreparable harm in the absence of an injunction; whether 

the balance of the equities favors the movant; and 

whether the public interest would be served by the grant 

of injunctive relief. As to the claims based on the D’087 

and D’889 patents, the district court denied relief on the 

ground that Apple had failed to show a likelihood of 

success on the merits. As to the claims based on the 

 1 Apple sought to enjoin the sales of a fourth device, 

the Droid Charge, for infringing the ’381 patent. The 

issues as to that device are the same as for the other 

accused smartphones, so we do not address that device 

separately. 
APPLE v. SAMSUNG ELECTRONICS 8

D’677 and ’381 patents, the court denied relief on the 

ground that Apple had failed to show that it would likely 

suffer irreparable harm from Samsung’s continuing 

infringement while the case was pending before the 

district court. 

C 

The court first examined the D’087 patent and concluded that while the patented design did not cover functional features, substantial questions were raised about 

the patent’s validity, and therefore Apple had failed to 

show that it was likely to succeed on the merits. The 

court held that the patented design claimed only the front 

face of the smartphone and that the front view was likely 

anticipated by Japanese Patent No. 1,241,638 (“the ’638 

patent”). The court found the D’087 design to be substantially similar to the ’638 patent because it has “similar 

edges and rounded corners, a bezel, a similarly shaped 

speaker, and similar proportions of screen and border.” 

The ’638 patent, the court found, “discloses an overall 

simple, minimalist design.” The court rejected Apple’s 

argument that the arched profile of the front of the ’638 

design differed from the flat profile of the D’087 patent; in 

light of the fact that the sides and back of the phone were 

disclaimed in the D’087 patent, the court held that it was 

improper to consider anything other than the front views 

of the two designs. Given its finding that Apple failed to 

establish the first factor needed for a preliminary injunction, the court did not reach the other three preliminary 

injunction factors for the D’087 patent. 

D 

The court then addressed the D’677 patent. The court 

again looked to the ’638 patent as a primary reference but 
9 APPLE v. SAMSUNG ELECTRONICS

concluded that the ’638 design was sufficiently different 

from the D’677 patent that it would not have been obvious 

to a designer to adopt a “flat, black, translucent front 

screen.” The court therefore concluded that Samsung had 

not raised a substantial question regarding the validity of 

the D’677 patent. As to infringement, the court found 

that both the Galaxy S 4G and the Infuse 4G phones had 

an overall design that an ordinary observer would likely 

find substantially the same as the claimed D’677 design 

and that those phones were likely to infringe. 

Despite those findings, the district court denied Apple’s request for a preliminary injunction based on its 

conclusion that Apple had failed to show that it was likely 

to suffer irreparable harm from the importation and sale 

of Samsung’s infringing smartphones while the case was 

pending in the district court. Apple made two arguments 

in support of its claim of irreparable harm. First, it 

argued that Samsung’s sales eroded Apple’s design and 

brand distinctiveness, resulting in a loss of goodwill. 

Second, it argued that Samsung’s sales took sales away 

from Apple and resulted in Apple’s losing market share. 

Apple argued that those losses would be difficult to quantify and that monetary damages thus would not be adequate to compensate it for the injuries caused by 

Samsung’s infringement. The district court rejected both 

contentions. 

The court was unpersuaded by Apple’s first argument 

because “Apple has not articulated a theory as to how 

erosion of ‘design distinctiveness’ leads to irreparable 

harm in this case.” The court also rejected Apple’s related 

assertion that Samsung’s sales of infringing phones 

diluted Apple’s brand value, because “even assuming that 

brand dilution could arise from design patent infringement, Apple has not met its burden to provide evidence 
APPLE v. SAMSUNG ELECTRONICS 10

that such brand dilution is likely to occur in this case.” 

The court held that “[w]ithout more evidence . . . Apple 

has not demonstrated that brand dilution is likely to 

occur.”

With respect to the claim of market share loss, the 

court noted that Apple and Samsung were directly competing “for new consumers [who] are looking to make 

first-time smartphone purchases [and] thus the potential 

for harm from infringing conduct is strong.” The court 

added that the initial decision regarding which product to 

buy can have long-term effects on items such as downstream purchases.2 The court also observed that there 

may be “network compatibility” effects that stem from a 

particular purchasing decision: a purchaser of one phone 

system may be reluctant to switch to a competing phone 

for fear of incompatibility with previous digital purchases. 

The court concluded that the economic effect of such 

losses of customers and future downstream purchases 

would be difficult to calculate and could support a finding 

of irreparable harm. 

The district court nonetheless declined to issue an injunction with respect to the D’677 patent because it 

concluded that Apple had failed to establish a “nexus 

between Apple’s harm of lost customers and loss in market share and Samsung’s allegedly infringing conduct.” 

The court found that despite Apple’s evidence that “product design generally is at least one factor, and for some 

people may be the primary factor, influencing a person’s 

decision to purchase a smartphone,” other evidence indi-

 2 Those downstream purchases include not only 

sales of later versions of the smartphones, but also products and accessories associated with the devices, such as 

digital media and software applications designed to be 

downloaded to a smartphone or tablet. 
11 APPLE v. SAMSUNG ELECTRONICS

cated that the “driver in consumer demand may be the 

novelty of the product, and not necessarily the design,” 

and that “smartphone buyers are motivated to purchase 

products for a whole host of reasons.” That evidence 

included exhibits showing that only a small percentage of 

all smartphone purchasers bought the device because of 

its design. The court concluded that the evidence was 

“even more ambiguous in light of the fact that Apple’s 

patents do not claim the entire article of manufacture.” 

The court concluded that the absence of a nexus between 

the claimed design and the loss of market share, coupled 

with Apple’s delay in seeking an injunction, undercut 

Apple’s claim of irreparable harm. 

With respect to delay, the district court found that 

Apple’s failure to seek an injunction sooner and its failure 

to seek to enjoin two other allegedly infringing phones 

undercut Apple’s claim of urgency and favored Samsung 

in the irreparable harm calculus. The court noted that 

Apple had alleged in its complaint that Samsung had 

been copying its designs and trade dress since 2007; the 

court found that Apple’s failure to file suit until April 

2011 and to seek an injunction until July 2011 undermined its claim of irreparable harm. The court rejected 

Apple’s argument that its delay should be excused on the 

ground that the parties were engaged in negotiations, 

because the negotiations only covered part of the period of 

delay. In light of the delay and the lack of nexus between 

the infringement and the loss of market share, the court 

concluded that “Apple has not met its burden of establishing that Samsung’s allegedly infringing products will 

likely cause Apple irreparable harm.” 

 The court held that the balance of hardships favored 

Samsung. The court found that in light of the presence of 

other smartphone manufacturers in the market, it was 
APPLE v. SAMSUNG ELECTRONICS 12

unclear that an injunction against Samsung’s devices 

would significantly benefit Apple, even though it would 

substantially injure Samsung. Finally, the court found 

the public interest factor to be neutral. Based on its fourfactor analysis, the court refused to enjoin sales of the 

Galaxy S 4G and Infuse 4G smartphones. 

E 

The court conducted a similar irreparable harm 

analysis for the D’889 patent and the Samsung Galaxy 

Tab 10.1 tablet. With respect to the tablet patent and 

product, however, the court found that Apple had shown a 

likelihood of irreparable harm. The court reached that 

conclusion for several reasons. First, the tablet market 

appeared to be dominated by only two manufacturers, 

Apple and Samsung, who together controlled a substantial share of the market. The evidence suggested that 

Apple’s market share decreased in accordance with the 

increase in Samsung’s market share after the introduction of the Galaxy Tab. Second, the court concluded that 

design mattered more to consumers in tablets than in 

smartphones. Finally, the court found that delay was not 

an issue in the case of the request for preliminary relief 

against Samsung’s tablet. 

The court nonetheless concluded that a preliminary 

injunction should be denied because there were substantial questions about the validity of the D’889 patent, and 

therefore Apple was unable to show that it would likely 

succeed on the merits. Although the court found that the 

design claimed by the D’889 patents was not dictated by 

functionality, it concluded that Samsung had raised a 

substantial question about whether the patented design 

would have been obvious in light of a combination of 

several prior art references. 
13 APPLE v. SAMSUNG ELECTRONICS

At the outset of its obviousness analysis, the court 

characterized the visual impression of the patented 

design as a “broad, simple design that gives the overall 

visual impression of a rectangular shape with four evenly 

rounded corners, a flat glass-like surface without any 

ornamentation[,] a rim surrounding the front surface, . . . 

[a] flat [back] panel that rounds up near the edges[, and 

an] overall design [that] creates a thin form factor.” 

According to the court, the design created basically the 

same visual impression as a prototype tablet developed in 

1994 by Roger Fidler. Although the Fidler tablet lacked a 

“flat glass-like surface,” the court found that difference 

not to “detract from the fact that the ‘overall visual impression’ created by the D’889 patent is the same as the 

1994 Fidler[] tablet.” Accordingly, the court used Fidler 

as a primary reference in its obviousness analysis. For 

the flat glass screen, the court turned to the 2002 Hewlett-Packard Compaq Tablet TC1000, which “contains a 

flat glass screen that covers the top surface of the tablet 

and a thin rim that surrounds the front face of the device.” 

The court found that the combination of Fidler and 

the TC1000 would likely render the D’889 patent obvious. 

The court rejected Apple’s secondary consideration evidence, including evidence of industry skepticism and the 

unexpected commercial success of the iPad, because the 

court found the evidence of skepticism to be inconclusive 

and the evidence of commercial success not to show “the 

requisite nexus between the patented design and the 

success of the iPad.” Accordingly, the court concluded 

that Apple’s secondary consideration evidence failed to 

overcome the substantial questions of invalidity and that 

Apple had not established that it is “likely to succeed at 

trial against Samsung’s challenge to the validity of the 

D’889 patent.” 
APPLE v. SAMSUNG ELECTRONICS 14

With respect to the issue of infringement, the court 

found that the design of the Galaxy Tab 10.1 would appear substantially the same as the D’889 patent in the 

eyes of an ordinary observer. Nonetheless, the court 

concluded that “because Samsung has raised a substantial question regarding the validity of the D’889 patent, 

Apple has not met its overall burden of establishing a 

likelihood of success on the merits.” The court thus 

denied Apple’s request for injunctive relief with respect to 

the D’889 patent. 

F 

The court next turned to the ’381 patent. Samsung 

claimed that the patent was anticipated by two prior art 

references, International Publication No. WO 03/081458 

(“the Lira reference”) and the LaunchTile and XNAV 

computer programs. The court found that Apple’s patent 

was not anticipated by those references because in those 

devices the “bounce-back” feature was activated for only 

some user inputs, and it served principally as an alignment control technique to align the display window following user input. The court explained that the Lira 

reference did one of two things in response to a user’s 

scrolling past the document’s edge: “if the user has 

scrolled less than the threshold amount past the edge, the 

screen will snap back to the original column, but . . . if the 

user has scrolled past this threshold amount, the screen 

will either stay put or snap to the next column, depending 

on the settings used.” The court found that functionality 

to differ from the functionality claimed in the ’381 patent, 

which contained “no second behavior when a user scrolls 

past a certain threshold; the screen will always snap 

back.” For similar reasons, the court found the 

LaunchTile/XNAV software to practice a function different from the function claimed in the ’381 patent. 
15 APPLE v. SAMSUNG ELECTRONICS

Because the court found that Apple had made a 

strong showing that Samsung was infringing the “bounceback” feature of the ’381 patent and that Samsung had 

not shown that there was a substantial question of validity as to that patent, the court held that Apple was likely 

to succeed on the merits of its ’381 patent claims at trial. 

Nonetheless, the court declined to issue a preliminary 

injunction based on the ’381 patent. The court concluded 

that Apple had failed to show a likelihood of irreparable 

harm as to those claims because it “failed to establish a 

relationship between any alleged loss of market share, 

customers, or goodwill, and the infringement of the ’381 

patent.” Moreover, the court found that Apple’s history of 

licensing the ’381 patent weighed in favor of Samsung. 

Turning to the remaining factors, the court concluded 

that the balance of hardships favored Apple because 

“Apple’s interest in enforcing its patent rights is strong 

particularly because it has so far presented a strong case 

on the merits,” and that the public’s interest in the protection of patent rights favored Apple on the fourth factor. 

Given the lack of a showing of a likelihood of irreparable 

harm, however, the court declined to enjoin the accused 

products. 

II 

“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). The decision to grant or deny a preliminary 

injunction lies within the sound discretion of the district 

court, and we will not reverse its judgment absent an 
APPLE v. SAMSUNG ELECTRONICS 16

abuse of that discretion. Titan Tire Corp. v. Case New 

Holland, Inc., 566 F.3d 1372, 1375 (Fed. Cir. 2009). 

In its comprehensive opinion, the district court addressed a large number of legal and factual issues; we 

have no reason to disagree with the district court on many 

of those issues, on which the court applied the law correctly or made findings that are not subject to serious 

challenge, particularly in light of the exacting standard of 

review that applies to this appeal. We focus our discussion on those aspects of the district court’s decision that 

present close questions or as to which the court committed error that could affect the outcome of this appeal. 

The D’677 Patent

The district court held that the design claimed in the 

D’677 patent was not anticipated or rendered obvious by 

the prior art. On appeal, Samsung has not made a persuasive case that the district court’s conclusion was 

incorrect. With respect to irreparable harm, however, the 

district court found that Apple had not shown that it was 

likely to suffer irreparable injury in the absence of an 

injunction. The court based its ruling mainly on Apple’s 

failure to show that there was a nexus between the likely 

infringement of the patented design and Apple’s claims of 

lost market share and brand dilution. On appeal, Apple 

challenges that ruling on two grounds. First, it contends 

that it need not show a nexus in order to establish irreparable injury. Second, it contends that even if consumer 

motives are relevant to the irreparable harm inquiry, the 

evidence shows that there was a nexus between the 

asserted infringement and the market injury to Apple. 

We hold that the district court was correct to require 

a showing of some causal nexus between Samsung’s 
17 APPLE v. SAMSUNG ELECTRONICS

infringement and the alleged harm to Apple as part of the 

showing of irreparable harm. 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. See Voda v. Cordis 

Corp., 536 F.3d 1311, 1329 (Fed. Cir. 2008) (explaining 

that “the district court did not clearly err in finding that 

[the plaintiff] failed to show that [defendant’s] infringement caused him irreparable injury” (emphasis in original)); Procter & Gamble Co. v. Ultreo, Inc., 574 F. Supp. 

2d 339, 349 (S.D.N.Y. 2008) (in trademark context, finding no “nexus between allegedly false advertising and lost 

sales” and concluding that “[s]uch a loss, absent a nexus 

or a logical connection to false advertising, is insufficient 

to demonstrate the irreparable harm required to issue a 

preliminary injunction”). 

In arguing that no nexus is required for a preliminary 

injunction to issue, Apple relies on our decision in i4i 

Limited Partnership v. Microsoft Corp., 598 F.3d 831 

(Fed. Cir. 2010), aff’d, 131 S. Ct. 2238 (2011). That reliance is misplaced. It is true that in i4i, purchasers of the 

infringing Microsoft Word word-processing software were 

not motivated to buy it solely because of (or even partly 

because of) the inclusion of i4i’s patented custom XML 

editor. The editor, however, was sold as an add-on to 

Word, and Microsoft’s incorporation of that function into 

Word would have completely eradicated the market for 

the add-on. 598 F.3d at 839. The narrow injunction 

upheld by this court served only to protect the patented 
APPLE v. SAMSUNG ELECTRONICS 18

product from obsolescence by its inclusion within Word. 

Id. at 862. Here, in contrast, the district court found that 

the alleged acts of infringement do not threaten to have 

any such dramatic effects on the market generally or on 

Apple’s share of that market. 

Apple contends that even if some showing of nexus is 

required between the infringing conduct and the alleged 

harm, it made such a showing. The district court, however, considered the evidence presented by both parties, 

including survey evidence, and found that while there was 

evidence that design had some effect on smartphone sales, 

there was considerable countervailing evidence indicating 

that it was not a determinative factor in consumer decisionmaking.3 Weighing the evidence, the district court 

concluded that it did not clearly show that Samsung’s 

allegedly infringing design was responsible for Apple’s 

lost sales; at most, it showed that the alleged infringement caused an insignificant amount of lost sales. 

A mere showing that Apple might lose some insubstantial market share as a result of Samsung’s infringement is not enough. As the Supreme Court has pointed 

out, a party seeking injunctive relief must make “a clear 

showing” that it is at risk of irreparable harm, Winter, 

555 U.S. at 22, which entails showing “a likelihood of 

substantial and immediate irreparable injury,” O’Shea v. 

 3 We do not hold that customer survey evidence or 

other proof of what Apple calls “consumer motivation” is a 

prerequisite to a finding of irreparable harm in every 

design patent case. On the record before us, however, we 

conclude that the district court did not abuse its discretion in concluding that Apple failed to submit sufficient 

evidence of the very harm it claimed—lost sales (both 

immediate and downstream) attributable to Samsung’s 

sale of allegedly infringing phones. 
19 APPLE v. SAMSUNG ELECTRONICS

Littleton, 414 U.S. 488, 502 (1974). See Weinberger v. 

Romero-Barcelo, 456 U.S. 305, 311 (1982) (holding that an 

injunction should not issue as a matter of course for 

irreparable harm that is “merely trifling”). Given our 

deferential standard of review, we are not prepared to 

overturn the district court’s finding that Apple failed to 

satisfy its burden of establishing the likelihood of irreparable harm. 

Apple argues that the district court erroneously ruled 

that erosion of a distinctive design could never serve as 

the basis for a finding of irreparable harm. The district 

court remarked that “if the introduction of a designpatent-infringing product were sufficient to establish the 

erosion of design ‘distinctiveness,’ and therefore irreparable harm, an injunction would presumably issue in every 

case in which a defendant introduced an infringing product into the market.” Contrary to Apple’s contention, 

however, that observation does not reflect a wholesale 

rejection of design dilution as a theory of irreparable 

harm, which we agree would have been improper. Instead, the district court went on to note that “Apple has 

not articulated a theory as to how erosion of ‘design 

distinctiveness’ leads to irreparable harm in this case,” 

and that Apple had offered only “conclusory statements 

and theoretical arguments” in support of its theory. 

Without “concrete evidence to support its argument,” the 

district court ruled, “Apple has not yet established that 

this harm to its reputation for innovation is likely to 

occur.” As to Apple’s “brand dilution” argument, the 

district court found that, even assuming “brand dilution” 

could arise from design patent infringement, “Apple has 

not demonstrated that brand dilution is likely to occur.” 

The district court’s opinion thus makes clear that it did 

not categorically reject Apple’s “design erosion” and 

“brand dilution” theories, but instead rejected those 
APPLE v. SAMSUNG ELECTRONICS 20

theories for lack of evidence at this stage of the proceedings. 

The district court based its finding as to irreparable 

harm in part on Apple’s delay in seeking preliminary 

injunctive relief against Samsung’s smartphones. Apple 

objects—and we agree—that the district court should not 

have faulted Apple for not filing suit as early as 2007, 

since Apple’s design patents had not issued as of that 

date. Nonetheless, it was reasonable for the district court 

to consider the issue of delay and to find that Apple had 

not proceeded as quickly as it could have in seeking 

preliminary injunctive relief.4 The district court correctly 

noted that delay in bringing an infringement action and 

seeking a preliminary injunction are factors that could 

suggest that the patentee is not irreparably harmed by 

the infringement. See Nutrition 21 v. United States, 930 

F.2d 867, 872 (Fed. Cir. 1991). While the district court 

rejected the “extreme” position that Apple’s failure to seek 

a preliminary injunction against Samsung’s first generation of infringing products precludes it from ever seeking 

preliminary injunctive relief, the court looked to Apple’s 

“overall diligence in seeking a preliminary injunction,” 

and concluded that, on balance, Apple’s “delay in diligently pursuing its infringement claim against Samsung 

tips in Samsung’s favor.” We decline Apple’s invitation to 

reject the district court’s “delay” analysis altogether, and 

based on the district court’s conclusions as to the nexus 

 4 Although Samsung did not release the Galaxy S 

4G and Infuse 4G smartphones until early 2011, it had 

previously released the similar Galaxy Vibrant and 

Galaxy i9000, which Apple alleges infringed the D’087 

and D’677 patents. It was reasonable for the district 

court to place weight on Apple’s delay in seeking preliminary injunctive relief until after Samsung’s release of the 

later versions of those phones. 
21 APPLE v. SAMSUNG ELECTRONICS

and delay factors, we uphold the court’s finding that 

Apple failed to show that it was likely to suffer irreparable harm in the absence of a preliminary injunction. 

The D’087 Patent

The district court concluded that the D’087 patent 

was likely anticipated by the Japanese ’638 patent and 

that Apple had therefore failed to establish a likelihood of 

success on the merits. The court based its ruling on its 

conclusion that “the front view of the D’087 patent appears to be substantially similar to the front view of the 

’638 reference.” The court refused to consider any other 

views of the ’638 reference because it found that Apple 

“never claimed all views of the D’087 patent.” That 

finding was erroneous. 

The D’087 patent claims a partial view of the side of 

the smartphone. The bezel encircling the front face of the 

patented design extends from the front of the phone to its 

sides. It is also prominently displayed with solid lines in 

each figure of the D’087 patent that shows the profile of 

the device: 

In that respect, the D’087 patent differs from the D’677 

patent, which did not claim a bezel and did not claim any 

elements of the side view other than the flat front surface 

(i.e., the side view in the D’677 patent consisted entirely 

of broken lines). Therefore, the district court erred when 
APPLE v. SAMSUNG ELECTRONICS 22

it refused to consider the partial side view of the D’087 

patent and the resultant flat contour of the front face that 

the patent disclosed. 

Based only on the front view of the patented design, 

the district court found that the ’638 reference raised 

substantial questions regarding the validity of the D’087 

patent. Given our holding that the court misconstrued 

the full scope of the D’087 patent, that finding cannot 

stand. Samsung’s assertion—that even if the patent 

claims a portion of the side view, the district court “properly found no material differences between the designs”—

finds no support in the record, as the court expressly 

refused to compare anything more than the front views of 

the patent in question and the prior art reference. When 

the claimed portion of the side view is taken into account, 

the differences between the arched, convex front of the 

’638 reference distinguish it from the perfectly flat front 

face of the D’087 patent: 
23 APPLE v. SAMSUNG ELECTRONICS

We therefore reject the district court’s ruling that the 

D’087 patent is likely anticipated by the ’638 reference. 

Notwithstanding our disagreement with the district 

court on the issue of validity, we uphold the court’s order 

denying relief on the D’087 patent. Because the irreparable harm analysis is identical for both smartphone design 

patents, and because we have affirmed the district court’s 

finding of no irreparable harm with respect to the D’677 

patent, we cannot say that the court abused its discretion 

when it refused to enjoin Samsung smartphones for 

infringing the D’087 patent. Consequently, we affirm the 

court’s denial of a preliminary injunction based on the 

D’087 patent. 
APPLE v. SAMSUNG ELECTRONICS 24

The ’381 Patent

We also affirm the district court’s denial of an injunction based on the ’381 patent. The court denied the 

injunction on the ground that Apple failed to show that it 

would likely be irreparably harmed by the infringement 

because it failed to demonstrate that consumer purchasing decisions were based on the presence of the bounceback feature. Apple again challenges this “consumer 

motive” requirement. As explained above, we conclude 

that the district court was correct to require a nexus 

between infringement of the patent and some marketbased injury, be it as a result of consumer preference or 

some other kind of causal link. Absent such a showing, 

Apple cannot establish a likelihood of irreparable harm 

necessary for a preliminary injunction. 

Apple relies on evidence that Samsung employees 

themselves believed that Samsung needed the bounceback feature to compete with Apple. According to Apple, 

that internal Samsung evidence is sufficient to establish 

the requisite nexus. While the evidence that Samsung’s 

employees believed it to be important to incorporate the 

patented feature into Samsung’s products is certainly 

relevant to the issue of nexus between the patent and 

market harm, it is not dispositive. That is because the 

relevant inquiry focuses on the objective reasons as to 

why the patentee lost sales, not on the infringer’s subjective beliefs as to why it gained them (or would be likely to 

gain them). In light of the deference to which its decision 

is entitled, we cannot say that the district court erred in 

refusing to enjoin Samsung’s infringement of the ’381 

patent. 
25 APPLE v. SAMSUNG ELECTRONICS

The D’889 Patent 

In addressing the D’889 patent, the tablet computer 

design patent, the district court concluded that Apple had 

shown that it was likely to suffer irreparable harm from 

Samsung’s alleged infringement. However, the court 

denied injunctive relief because it found that Apple had 

failed to establish a likelihood of success on the merits. In 

particular, it found that Samsung had raised a substantial question as to the validity of the D’889 patent. We 

sustain the court’s finding of a likelihood of irreparable 

harm, but we hold that the court erred in its analysis of 

the validity issue. 

With respect to irreparable harm, the district court 

considered the relevant factors, properly weighed them, 

and concluded that Apple had shown that it was likely to 

suffer irreparable harm from the sales of Samsung’s 

infringing tablets. The factors included the relative 

market share of Apple and Samsung and the absence of 

other competitors in the relevant market. The court also 

determined, based on evidence submitted by the parties, 

that design mattered more to customers in making tablet 

purchases, which helped Apple establish the requisite 

nexus. The fact that Apple had claimed all views of the 

patented device and the fact that it was prompt in asserting its patent rights were also properly accorded weight 

by the court. Given our deferential standard of review, 

we cannot say that the court abused its discretion when it 

found that Apple demonstrated a likelihood of irreparable 

harm. 

We disagree with the district court, however, in its 

conclusion that Apple had failed to show that it was likely 

to succeed on the merits. The district court concluded 

that the validity of the D’889 patent was subject to a 
APPLE v. SAMSUNG ELECTRONICS 26

substantial challenge based on two prior art references: 

the 1994 Fidler reference and the TC1000 tablet. 

(1994 Fidler Tablet) 

(Hewlett-Packard Compaq Tablet TC1000) 

In addressing a claim of obviousness in a design patent, “the ultimate inquiry . . . is whether the claimed 
27 APPLE v. SAMSUNG ELECTRONICS

design would have been obvious to a designer of ordinary 

skill who designs articles of the type involved.” Titan 

Tire, 566 F.3d at 1375, quoting Durling v. Spectrum 

Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996). To 

determine whether “one of ordinary skill would have 

combined teachings of the prior art to create the same 

overall visual appearance as the claimed design,” id. at 

1381, the finder of fact must employ a two-step process. 

First, “one must find a single reference, ‘a something in 

existence, the design characteristics of which are basically 

the same as the claimed design.’” Durling, 101 F.3d at 

103, quoting In re Rosen, 673 F.2d 388, 391 (CCPA 1982). 

Second, “other references may be used to modify [the 

primary reference] to create a design that has the same 

overall visual appearance as the claimed design.” Id. 

However, the “secondary references may only be used to 

modify the primary reference if they are ‘so related to the 

primary reference that the appearance of certain ornamental features in one would suggest the application of 

those features to the other.’” Id., quoting In re Borden, 90 

F.3d 1570, 1575 (Fed. Cir. 1996). 

The district court began its obviousness analysis by 

finding that the Fidler reference “creates basically the 

same visual impression as the D’889 patent” because both 

are rectangular tablets with four evenly rounded corners 

and a flat reflective surface for the front screen surrounded by a rim on all four sides. The court characterized the back of the Fidler reference as being “essentially 

flat.” It then concluded that although the Fidler reference 

did not have a flat glass surface, that did not prevent it 

from creating the same overall visual impression as the 

D’889 design. The court looked to the TC1000 tablet to 

supply the missing flat glass screen and the thin rim that 

surrounds the front face of the device. The court also 

relied on the testimony of Samsung’s expert, who con-
APPLE v. SAMSUNG ELECTRONICS 28

cluded that “a designer of ordinary skill . . . would have 

found it obvious to create the D’889 tablet consisting of a 

rectangular design with four evenly rounded corners, a 

relatively thin depth, a smooth back that curves up . . . 

and a flat, clear front surface that extended beyond the 

edges of the display.” 

We hold that the district court erred in finding that 

the Fidler tablet created the same visual impression as 

the D’889 patent. A side-by-side comparison of the two 

designs shows substantial differences in the overall visual 

appearance between the patented design and the Fidler 

reference: 

First, the Fidler tablet is not symmetrical: The bottom 

edge is noticeably wider than the others. More importantly, the frame of the Fidler tablet creates a very different impression from the “unframed” D’889 design. In the 
29 APPLE v. SAMSUNG ELECTRONICS

Fidler tablet, the frame surrounding the screen contrasts 

sharply with the screen itself. The Fidler screen appears 

to sink into the frame, creating a “picture frame” effect 

and breaking the continuity between the frame and the 

screen embedded within it. The transparent glass-like 

front surface of the D’889 patent, however, covers essentially the entire front face of the patented design without 

any breaks or interruptions. As a result, the D’889 design 

creates the visual impression of an unbroken slab of glass 

extending from edge to edge on the front side of the tablet. 

The Fidler reference does not create such an impression.5

There are other noticeable differences between the 

Fidler tablet and the D’889 patent that contribute to the 

distinct visual appearance of the two designs. Unlike the 

D’889 patent, the Fidler reference contains no thin bezel 

surrounding the edge of the front side. Additionally, one 

corner of the frame in the Fidler reference contains multiple perforations. Also in contrast to the D’889 patent, 

the sides of the Fidler reference are neither smooth nor 

symmetrical; it has two card-like projections extending 

out from its top edge and an indentation in one of its 

sides. And the back of the Fidler reference also conveys a 

visual impression different from that of the D’889 design. 

In design patent obviousness analysis, a primary reference must be “something in existence, the design characteristics of which are basically the same as the claimed 

design in order to support a holding of obviousness.” In re 

Rosen, 673 F.2d at 391 (concluding that two glass coffee 

 5 By its use of oblique lines, the D’889 patent indicates that the front surface of the device is reflective and 

glass-like. See Manual of Patent Examining Procedure 

§ 1503.02 (8th ed. 2006) (“Oblique line shading must be 

used to show transparent, translucent and highly polished or reflective surfaces . . . .”). 
APPLE v. SAMSUNG ELECTRONICS 30

tables were “significantly different in concept” because 

the primary reference “does not give the same visual 

impression of lightness and suspension in space conveyed 

by appellant's table”). Based on the differences between 

the Fidler tablet and the D’889 design, we hold that the 

Fidler tablet does not give the same visual impression as 

the D’889 patent, and therefore the district court erred in 

looking to Fidler as the primary reference against the 

D’889 patent. 

Even assuming that Fidler qualified as a primary reference, the TC1000 secondary reference could not bridge 

the gap between Fidler and the D’889 design. First, while 

the TC1000 has a flat glass front, the screen area of that 

device is surrounded by a gray area that frames the 

screen. In addition, the perimeter of the TC1000 is encircled by a wide rounded-over metallic rim. And the screen 

area contains indicator lights in several places, unlike the 

minimalist design claimed in the D’889 patent. “[T]he 

teachings of prior art designs may be combined only when 

the designs are ‘so related that the appearance of certain 

ornamental features in one [design] would suggest the 

application of those features to the other.’” In re Borden, 

90 F.3d at 1575, quoting In re Glavas, 230 F.2d 447, 450 

(CCPA 1956). The TC1000 is so different in visual appearance from the Fidler reference that it does not qualify 

as a comparison reference under that standard. See In re 

Rosen, 673 F.2d at 391 (rejecting the primary reference 

where “modifications of [it] necessary to achieve [the 

patented] design would destroy the fundamental characteristics” of that reference). 

Samsung contends that the district court properly focused on overall visual appearance rather than on the 

“design concepts” highlighted by Apple. In our assessment, however, the district court’s error was to view the 
31 APPLE v. SAMSUNG ELECTRONICS

various designs from too high a level of abstraction. 

Fidler does not qualify as a primary reference simply by 

disclosing a rectangular tablet with four evenly rounded 

corners and a flat back. See Durling, 101 F.3d at 104 

(“The error in the district court’s approach is that it 

construed [the] claimed design too broadly.”). Rather 

than looking to the “general concept” of a tablet, the 

district court should have focused on the distinctive 

“visual appearances” of the reference and the claimed 

design. Id. When those visual impressions are compared, 

it becomes apparent that the Fidler reference, with or 

without the TC1000, cannot serve to render the D’889 

patent invalid for obviousness. 

In the alternative, Samsung urges us to consider several other tablet and tablet-like designs as suitable primary references. All of those references consist of 

rectangular designs with rounded corners dominated by a 

display area. But those designs all suffer from the same 

problems as the Fidler reference, because all of them 

show either a thick surrounding frame in which a display 

is embedded or contain extensive ornamentation on the 

front of the tablet. The offered designs do not create the 

same visual impression as Apple’s claimed design and 

thus do not qualify as primary references. In the absence 

of a qualifying primary reference, we hold that the district 

court erred in concluding that there is likely to be a 

substantial question as to the validity of the D’889 patent.6 See Durling, 101 F.3d at 105. 

Because the district court found that there is a substantial question as to the validity of the D’889 patent, it 

 6 Our holding that the alternative prior art references do not invalidate the D’889 patent is limited to our 

evaluation of the record at this preliminary stage of the 

litigation. 
APPLE v. SAMSUNG ELECTRONICS 32

did not make any findings with regard to the remaining 

two questions bearing on whether to issue a preliminary 

injunction—the balance of hardships and the public 

interest. The court conducted a detailed assessment of 

the balance of hardships with respect to the D’677 and 

’381 patents after finding that they were likely to survive 

a validity challenge. With respect to the D’889 patent, 

however, the district court has not determined the extent 

to which Samsung would be harmed if the sales of Galaxy 

Tab 10.1 were enjoined, and how the potential harm to 

Samsung resulting from entering an injunction compares 

to the potential harm to Apple should the district court 

deny interim relief. Nor has the district court evaluated 

the public interest at stake with respect to the sales of 

Samsung’s Galaxy Tab 10.1. Because the district court 

has not yet weighed the balance of hardships to the 

parties and the public interest factors, we do not have a 

sufficient basis for concluding that the failure to enter an 

injunction was an abuse of discretion. It is normally not 

appropriate for this court to make such highly factual 

inquiries for the first time on appeal. See eBay Inc. v. 

MercExchange, L.L.C., 547 U.S. 388, 394 (2006) (remanding for the district court to apply the preliminary injunction factors “in the first instance”); Acumed LLC v. 

Stryker Corp., 483 F.3d 800, 811 (Fed. Cir. 2007) (“If we 

were to weigh the evidence ourselves to reach a conclusion on injunctive relief, we would effectively be exercising our own discretion as if we were the first-line court of 

equity. That role belongs exclusively to the district court. 

Our task is solely to review the district court’s decisions 

for an abuse of discretion.”); Jack Guttman, Inc. v. 

Kopykake Enters., Inc., 302 F.3d 1352, 1362-63 (Fed. Cir. 

2002) (Factual determinations in preliminary injunction 

cases, including the balancing of the four factors, “rest 

within the province of the trial court, not the appellate 

court. . . . Thus, the appropriate remedy is not to reverse 
33 APPLE v. SAMSUNG ELECTRONICS

with instructions to enter the injunction . . . but rather to 

vacate the trial court’s previous order and remand for 

further proceedings in light of this opinion.”); Tex. Instruments Inc. v. Tessera, Inc., 231 F.3d 1325, 1329 (Fed. 

Cir. 2000) (“This court prefers that a district court make 

findings regarding each of the four factors before granting 

or denying a preliminary injunction.”). That is particularly true for an order granting preliminary relief, as a 

district court order denying relief can be upheld based on 

negative findings on fewer than all of the four factors. See

Reebok Int’l Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1555-56 

(Fed. Cir. 1994). 

The dissent contends that remanding this case to the 

district court will necessarily result in unjustifiable delay. 

We see no reason to believe that there will necessarily be 

delay, or if there is delay that it will be unjustifiable. If 

the dissent is correct that the findings the district court 

made in the smartphone part of this case regarding the 

balance of hardships and the public interest are readily 

transferable to the tablet part of the case, the district 

court should be able to make that determination in short 

order, thus minimizing the amount of delay. On the other 

hand, if those findings are not readily transferable to the 

tablet part of the case, then that is exactly the situation 

in which we would benefit from findings by the district 

court and in which the district court’s greater familiarity 

with the record will be an important safeguard against 

precipitous action. 

Because we have found the district court’s reasons for 

denying an injunction on the D’889 patent to be erroneous, we remand the matter to the district court for further 

proceedings. On remand, the court should conduct a 

similar assessment of the balance of hardships with 

respect to the D’889 patent. To the extent that the court 
APPLE v. SAMSUNG ELECTRONICS 34

finds that the public interest factor cuts in favor of either 

side, it should weigh that factor as well in determining 

whether to issue a preliminary injunction against Samsung’s Galaxy Tab 10.1 tablet computer. 

In sum, we affirm the denial of a preliminary injunction with respect to the D’087, D’677, and ’381 patents. 

We vacate the order denying an injunction with respect to 

the D’889 patent and remand the case to the district court 

for further proceedings on that portion of Apple’s motion 

for preliminary relief. 

Each party shall bear its own costs for this appeal. 

AFFIRMED IN PART, VACATED IN PART, and 

REMANDED
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

APPLE, INC., 

Plaintiff-Appellant, 

v. 

SAMSUNG ELECTRONICS CO., LTD., 

SAMSUNG ELECTRONICS AMERICA, INC., AND 

SAMSUNG TELECOMMUNICATIONS AMERICA, 

LLC, 

Defendants-Appellees. 

__________________________ 

2012-1105 

__________________________ 

Appeal from the United States District Court for the 

Northern District of California in Case No. 11-CV-1846, 

Judge Lucy H. Koh. 

__________________________ 

O’MALLEY, Circuit Judge, concurring-in-part, dissentingin-part. 

I concur in the majority’s decision to affirm the denial 

of preliminary injunctive relief with respect to Apple’s two 

smartphone design patents and its utility patent. Although I might have weighted Apple’s evidence of irreparable harm regarding its smartphones differently had I 

been considering it in the first instance, I agree that we 

should defer to the district court’s findings on that issue. 

I also agree with the majority that the district court erred 
APPLE v. SAMSUNG ELECTRONICS 2

in its analysis of the validity of Apple’s tablet computer 

design patent – U.S. Design Patent No. D504,889 (“the 

D’889 Patent”). I disagree, however, with the majority’s 

decision to remand that portion of the case for further 

proceedings; on that point, I respectfully dissent. 

Specifically, as explained below, the majority’s decision to remand this matter for further proceedings relating to the D’889 Patent is unwarranted because: 

(1) remand will cause unnecessary delay, which is inconsistent with the very purpose of preliminary injunctive 

relief; and (2) once we reject its validity analysis, the 

district court’s decision, taken in its entirety, reveals that 

all of the prerequisites for preliminary injunctive relief 

are satisfied. Remand is particularly inappropriate 

where, as here, both this court and the district court agree 

that Apple will suffer irreparable harm absent injunctive 

relief. The majority’s decision to remand for further 

proceedings will only exacerbate that harm. 

Based on the record at this stage of the proceedings, 

the only remand appropriate in this case is for entry of a 

preliminary injunction with respect to the D’889 Patent 

and for consideration of an appropriate security bond. 

Accordingly, I dissent from the portion of the majority’s 

decision remanding the D’889 Patent for further proceedings. 

I. Preliminary Injunctions Are Designed to Provide 

Expedited Relief. 

Rule 65 of the Federal Rules of Civil Procedure governs the entry of a preliminary injunction. Under this 

Rule, district courts have discretion to provide expedited 

relief where certain criteria are satisfied. It is wellestablished that a preliminary injunction is an extraordi-
3 APPLE v. SAMSUNG ELECTRONICS

nary remedy reserved only for those cases where it is 

clearly warranted. See Atari Games Corp. v. Nintendo of 

Am., Inc., 897 F.2d 1572, 1578 (Fed. Cir. 1990) (“The 

granting of a preliminary injunction is an extraordinary 

remedy.”); see also Leary v. Daeschner, 228 F.3d 729, 739 

(6th Cir. 2000) (noting that a “preliminary injunction is 

an extraordinary remedy involving the exercise of a very 

far-reaching power, which is to be applied only in [the] 

limited circumstances which clearly demand it” (internal 

citation and quotation omitted)). 

Although it is a drastic remedy, preliminary injunctive relief exists for a reason: to provide “speedy relief 

from irreparable injury.” Ross-Whitney Corp. v. Smith 

Kline & French Labs., 207 F.2d 190, 198 (9th Cir. 1953) 

(“one of the purposes of a preliminary injunction . . . is to 

give speedy relief from irreparable injury”). Consistent 

with this purpose, “[p]reliminary injunctions are generally granted under the theory that there is an urgent need 

for speedy action to protect the plaintiffs’ rights.” Citibank, N.A. v. Citytrust, 756 F.2d 273, 276 (2d Cir. 1985). 

Indeed, the text of Rule 65 explains that proceedings 

initiated under the Rule are to be expedited. Simply, a 

preliminary injunction is an important vehicle through 

which a court can prohibit a party’s alleged wrongful or 

illegal conduct prior to a final determination on the 

merits in order to prevent harm that cannot be compensated by monetary damages. See 13 James Wm. Moore, 

Moore’s Federal Practice § 65.02[2] (3d ed. 2011) (“The 

purpose of injunctive relief is to prevent future harm.”). 

The majority’s decision today effectively eviscerates 

the purpose of Rule 65 by causing unwarranted delay and 

thus contributing to Apple’s irreparable harm. While we, 

of course, must be cautious about granting the extraordinary relief that a preliminary injunction represents, 
APPLE v. SAMSUNG ELECTRONICS 4

where, as here, the record fully supports such a remedy, 

we must not hesitate to do so. The availability of injunctive relief is particularly important in the patent context, 

where patent holders undoubtedly have the right to 

exclude others from using their intellectual property 

without permission. See 35 U.S.C. § 154(a)(1) (“Every 

patent shall contain . . . a grant to the patentee . . . of the 

right to exclude others from making, using, offering for 

sale, or selling the invention throughout the United 

States . . .”). Indeed, courts have an obligation to grant 

injunctive relief to protect against theft of property – 

including intellectual property – where the moving party 

has demonstrated that all of the predicates for that relief 

exist. As discussed below, on this record, further delay is 

neither necessary nor appropriate. 

II. Injunctive Relief as to the D’889 Patent is Warranted 

on this Record. 

When ruling on a motion for a preliminary injunction, 

a district court must consider and analyze four factors: 

(1) whether the movant is likely to succeed on the merits; 

(2) whether the movant is likely to suffer irreparable 

harm in the absence of injunctive relief; (3) the balance of 

hardships; and (4) whether issuance of an injunction is in 

the public interest. Celsis in Vitro, Inc. v. Cellzdirect, 

Inc., 664 F.3d 922, 926 (Fed. Cir. 2012) (citing Abbott 

Labs. v. Sandoz, Inc., 544 F.3d 1341, 1344 (Fed. Cir. 

2008)). Where the movant carries its burden as to each of 

the four prerequisites, a preliminary injunction should 

issue. See AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 

1049 (Fed. Cir. 2010). 

As the majority acknowledges, because the district 

court found a substantial question as to the validity of the 

D’889 patent, it did not make any findings with regard to 
5 APPLE v. SAMSUNG ELECTRONICS

the balance of hardships and the public interest. Given 

this apparent deficiency, the majority argues that remand 

is necessary because it generally is inappropriate for this 

court to conduct these factual inquiries for the first time 

on appeal. In support of this proposition, the majority 

relies on two cases – eBay Inc. v. MercExchange, LLC, 547 

U.S. 388 (2006) and Acumed LLC v. Stryker Corp., 483 

F.3d 800 (Fed. Cir. 2007) – both of which are factually 

distinguishable because the lower courts were applying 

something other than the traditional four-factor test for 

preliminary injunctive relief. 

For example, in eBay, the Supreme Court rejected this 

court’s “general rule . . . that a permanent injunction will 

issue once infringement and validity have been adjudged” 

and remanded the case for the district court to apply the 

four-factor framework “in the first instance.” eBay, 547 

U.S. at 393-94.1 Likewise, in Acumed, we noted that the 

district court applied the pre-eBay presumption that, in 

patent cases, “an injunction will issue, once infringement 

and validity have been adjudged . . . unless there are 

some exceptional circumstances that justify denying 

 1 The Supreme Court in eBay separately rejected 

the district court’s approach, which “appeared to adopt 

certain expansive principles suggesting that injunctive 

relief could not issue in a broad swath of cases.” 547 U.S. 

at 393 (emphasis added). For example, the district court 

concluded that a “plaintiff’s willingness to license its 

patents and its lack of commercial activity in practicing 

the patents would be sufficient to establish that the 

patent holder would not suffer irreparable harm if an 

injunction did not issue.” Id. (internal citations and 

quotations omitted). The Supreme Court found that 

“traditional equitable principles do not permit such broad 

classifications” and that the district court’s categorical 

rule “cannot be squared with the principles of equity 

adopted by Congress.” Id. 
APPLE v. SAMSUNG ELECTRONICS 6

injunctive relief” and remanded the case for the district 

court to apply the four-factor test. Acumed, 483 F.3d at 

811 (quotations and citation omitted). These cases support the proposition that remand is necessary where the 

district court applied the incorrect preliminary injunction 

framework and, consequently, the record was not developed as to each of the relevant factors. In those circumstances, the parties had no incentive to develop a proper 

record to which the correct framework could be applied, 

and the court had no reason to reflect its views on them. 

Unlike the lower courts in eBay and Acumed, here, 

the district court fully understood the proper four-factor 

framework and discussed its views of those factors repeatedly. While it did not expressly address the balance 

of hardships and public interest when discussing the 

D’889 Patent, the district court’s discussion of those 

factors elsewhere in its decision applies with equal force 

to the D’889 Patent. Those findings, when coupled with 

the district court’s conclusions that: (1) Apple is highly 

likely to establish infringement of the D’889 Patent at 

trial; and (2) Apple has a strong argument that it will 

suffer irreparable harm absent an injunction against the 

Galaxy Tab 10.1, warrant an order from this court directing entry of an injunction as to further sales of Samsung’s 

tablets. In other words, in this case, there is a complete 

record from which we can review the district court’s 

analysis as to each of the four factors, and that review 

leads to one firm conclusion – that an injunction as to the 

D’889 Patent should be entered, and should be entered 

now.2 

 2 Although district court judges are given discretion 

in determining whether to grant injunctive relief – and 

they certainly prefer that we defer to their discretion in 

appropriate circumstances – district judges do not prefer 
7 APPLE v. SAMSUNG ELECTRONICS

A. Likelihood of Success 

As to Apple’s likelihood of success on the merits, the 

district court found that Samsung raised a substantial 

question as to the validity of the D’889 Patent on obviousness grounds. For the reasons stated in the majority 

opinion, I agree that this finding was in error. Despite 

this error with respect to validity, the district court conducted an infringement analysis and found that Apple is 

likely to establish that the Galaxy Tab 10.1 is substantially similar to Apple’s D’889 Patent in the eyes of an 

ordinary observer. Specifically, the court compared the 

Galaxy Tab 10.1 to Apple’s iPad and iPad 2, and concluded that the Galaxy Tab is “virtually indistinguishable” from Apple’s iPad products. Apple, Inc. v. Samsung 

Elecs. Co., No. 11-cv-1846, 2011 U.S. Dist. LEXIS 139049, 

*90-91 (N.D. Cal. Dec. 2, 2011). Because Samsung created a device that is likely to deceive an ordinary observer 

making purchasing decisions, the district court expressed 

little doubt that Apple likely would succeed on its infringement claim. 

B. Irreparable Harm 

As to irreparable harm, the district court considered 

Samsung and Apple’s respective market shares and found 

that “there appear to be fewer players in the tablet market.” Apple, 2011 U.S. Dist. LEXIS 139049, at *93-94. 

This factor is significant because, as the district court 

noted, we recently indicated that “the existence of a twoplayer market may well serve as a substantial ground for 

 

remands that unnecessarily multiply the proceedings. 

This is especially true where, as here, the record is sufficient to inform us as to how the district court would 

exercise its discretion given the current state of the law. 
APPLE v. SAMSUNG ELECTRONICS 8

granting an injunction . . . because it creates an inference 

that an infringing sale amounts to a lost sale for the 

patentee.” Robert Bosch LLC v. Pylon Mfg. Corp., 659 

F.3d 1142, 1151 (Fed. Cir. 2011) (emphasis in original). 

Indeed, the district court pointed to evidence that Apple’s 

tablet sales decreased while Samsung’s newly-introduced 

tablet gained market share. Thus, the court concluded 

that a sale to Samsung translates to a lost sale to Apple. 

The district court also found – and Samsung conceded 

– that there is a “high degree of brand loyalty to Apple, 

which discourages Apple purchasers from switching to 

other brands.” Apple, 2011 U.S. Dist. LEXIS 139049, at 

*64. This high level of loyalty has serious implications for 

downstream purchases and “makes the initial decision 

regarding which product to purchase even more important because the potential customers that Apple loses to 

Samsung may have long-term effects that are difficult to 

calculate and may not be recaptured.” Id. As the district 

court correctly noted, Apple could lose sales of tag-along 

products including apps, other Apple devices, and future 

models of its products. Although the district court discussed downstream implications in the context of the 

smartphone patents, these concerns apply to all of Apple’s 

iconic products, including the iPad. Because the loss of 

customers and the loss of future downstream purchases 

are difficult to quantify, these considerations support a 

finding that monetary damages would be insufficient to 

compensate Apple. 

Continuing its irreparable harm analysis, the district 

court also found that “Apple has established that design is 

an important driver in demand for tablets.” Apple, 2011 

U.S. Dist. LEXIS 139049, at *94. Given the substantial 

similarities between the parties’ products, the court 

concluded that this evidence supports Apple’s argument 
9 APPLE v. SAMSUNG ELECTRONICS

that consumers are likely to be induced to purchase the 

Galaxy Tab 10.1 instead of the iPad. 

Based on these factors, the district court found that 

Apple established a strong likelihood of irreparable harm 

absent injunctive relief. I agree with the majority that 

the district court did not abuse its discretion in reaching 

this conclusion.3 

C. Balance of Hardships 

Although the district court did not address the balance of hardships and public interest in conjunction with 

the D’889 Patent, its discussion of those factors in relation 

to Apple’s other patents supports entry of an injunction as 

to Samsung’s tablet.4 Specifically, with respect to the 

smartphone patents, the district court found that the 

balance of hardships favored Samsung because: (1) the 

court considered infringement of the D’677 Patent to be a 

“close question”; and (2) it was not clear that an injunction against Samsung’s accused devices would prevent 

Apple from suffering irreparable harm. Apple, 2011 U.S. 

Dist. LEXIS 139049, at *74. This indicates that where, as 

with the D’889 Patent, the issue of infringement is not

 3 As the district court and the majority agree, delay 

was not an issue with respect to the D’889 Patent. Indeed, the Galaxy Tab 10.1 was released in June 2011, less 

than one month before Apple filed its motion for a preliminary injunction. 

4 It is unwise for a district court to render a decision on a motion for preliminary injunction before completing its assessment of each of the four relevant factors. 

Indeed, this case evidences how a failure to undertake 

this basic and important exercise can itself cause unwarranted delay in the proceedings and harm to one or more 

of the parties. 
APPLE v. SAMSUNG ELECTRONICS 10

close, and there is evidence of irreparable harm which 

would necessarily cease with an injunction, the district 

court would find the balance favors Apple. 

Likewise, as to Apple’s utility patent, the district 

court concluded that Apple was likely to withstand a 

validity challenge but that it offered no evidence of irreparable harm. Despite the lack of irreparable harm, the 

trial court still found that the balance of hardships factor 

would favor Apple because Apple had successfully shown 

that its patent was likely valid and infringed and, thus, 

had an interest in enforcing its patent. Again, this makes 

clear that where, as here, Apple has not only shown that 

its patent is likely valid and infringed, but has established likelihood of irreparable harm, the balance of 

hardships would surely weigh in Apple’s favor. 

Given our conclusion that the district court erred in 

finding a substantial question as to the validity of the 

D’889 Patent, we are left with evidence that the D’889 

Patent is likely valid and infringed, and with clear evidence of irreparable harm. Drawing from the district 

court’s analysis with respect to Apple’s utility patent, the 

balance of hardships weighs in Apple’s favor because it 

has an interest in enforcing its patent rights. And, the 

district court’s conclusion that the Galaxy Tab 10.1 

clearly infringes the D’889 Patent, coupled with some 

evidence that Samsung altered its design to make it look 

like Apple’s, further tips the balance of hardships against 

Samsung. See Sunburst Prods., Inc. v. Derrick Law Co., 

922 F.2d 845, 1991 U.S. App. LEXIS 352, *16-17 (9th Cir. 

Jan. 9, 1991) (noting that, “in issuing the injunction, the 

court held that Advance had intentionally copied the 

SHARK watch” and that, although there was no direct 

evidence of copying, “similarity can be probative of intentional copying” such that the court “did not abuse its 
11 APPLE v. SAMSUNG ELECTRONICS

discretion in making the inference and asking Advance to 

rebut it”). This is particularly true given evidence that 

Apple spent significant sums to develop and promote its 

iPad design, promotion activities which will continue to 

inure to Samsung’s benefit given the identity of the 

products. 

D. Public Interest 

With respect to the smartphone patents, because it 

found the question of infringement to be a close one, the 

district court found that the public’s interest in the protection of patent rights “is counterbalanced by Samsung’s 

continuing right to compete, which must be viewed as 

legitimate at this stage in the process.” Apple, 2011 U.S. 

Dist. LEXIS 139049, at *76. Accordingly, the court held 

that the public interest did not weigh strongly in either 

party’s favor. In contrast, as to Apple’s utility patent – 

which the district court found likely valid and very likely 

infringed – the court concluded that the public interest 

favors Apple because the public has an interest in protecting patent rights. Applying those conclusions to the 

D’889 Patent is simple: where the infringement question 

is not close and likely validity has been shown, the public 

interest weighs in favor of the patent holder. 

As this court has recognized, “[a]lthough the public 

interest inquiry is not necessarily or always bound to the 

likelihood of success o[n] the merits, . . . absent any other 

relevant concerns . . . the public is best served by enforcing patents that are likely valid and infringed.” Abbott 

Labs. v. Andrx Pharm., Inc., 452 F.3d 1331, 1348 (Fed. 

Cir. 2006). So too here, because the record at this stage 

shows that the D’889 Patent is likely valid and infringed, 

and there are no other relevant concerns, the public 
APPLE v. SAMSUNG ELECTRONICS 12

interest is best served by granting a preliminary injunction. 

III. Conclusion 

For the foregoing reasons, although I agree with the 

majority as to resolution of Apple’s appeal from the district court’s refusal to enter an injunction relating to 

Apple’s smartphone patents and utility patent, I would 

remand for entry of a preliminary injunction with respect 

to the D’889 Patent. Given the record in this case, when 

balancing which of the two parties should be left with the 

prospect of only receiving money damages (however 

insufficient such damages might be) – the patent holder 

or the alleged infringer – it is clear that the answer 

should be Samsung. 

Under this approach, Samsung would, of course, be 

protected by the entry of a substantial bond. Indeed, Rule 

65(c) provides that a court can issue a preliminary injunction “only if the movant gives security in an amount that 

the court considers proper to pay the costs and damages 

sustained by any party found to have been wrongfully 

enjoined or restrained.” This bond requirement is designed to protect the enjoined party’s interests in the 

event that future proceedings show the injunction issued 

wrongfully. See Edgar v. Mite Corp., 457 U.S. 624, 649 

(1982) (Stevens, J., concurring) (“Since a preliminary 

injunction may be granted on a mere probability of success on the merits, generally the moving party must 

demonstrate confidence in his legal position by posting 

bond in an amount sufficient to protect his adversary 

from loss in the event that future proceedings prove that 

the injunction issued wrongfully.”); see also Piambino v. 

Bailey, 757 F.2d 1112, 1143 (11th Cir. 1985) (noting that 

“Rule 65(c)’s bond requirement . . . was intended by 
13 APPLE v. SAMSUNG ELECTRONICS

Congress to protect enjoined parties from the losses that 

result from improvidently granted injunctions” (citation 

omitted)). Because the district court has broad discretion 

to determine the amount of the bond, I would remand for 

the district court to consider an appropriate amount to 

protect Samsung’s interests, but order entry of an injunction without any further proceedings. See Gateway E. Ry. 

Co. v. Terminal R.R. Ass’n, 35 F.3d 1134, 1141 (7th Cir. 

1994) (stating that Rule 65(c) “makes security mandatory 

. . . but also anticipates the exercise of discretion in determining the amount of the bond to be posted” (citations 

omitted)). 

Because the majority’s decision to remand the D’889 

Patent for further proceedings will cause unnecessary 

delay and will only contribute to the irreparable harm 

that both the district court and this court agree Apple will 

suffer absent injunctive relief, I dissent from that portion 

of the opinion.