(CN) - Apple should get a second chance to permanently ban the sales of 26 Samsung smartphones and tablets - assuming it can prove "some connection" that demand led to infringement, the Federal Circuit ruled.
The Tuesday ruling partially vacates U.S. District Judge Lucy Koh's denial of the sales ban a year ago, despite a $1 billion jury award that found Samsung had "slavishly copied" the iPhone and iPad to produce its products. Koh said Apple failed to explain how it had been damaged and why an injunction was necessary.
Apple had appealed Koh's denial to the Federal Circuit within days.
In a 41-page opinion, the Washington-based appellate panel agreed that Koh correctly refused to order a ban over Apple's design patents and trade dress. The panel said Koh set the bar too high, however, over three utility patents, including the famed "bounceback" feature, the two-fingered "pinch to zoom" element and the "double-tap to zoom" action now synonymous with Apple's iDevices.
"We find no reason to dislodge the district court's conclusion that Apple failed to demonstrate irreparable harm from Samsung's infringement of its design patents," Judge Sharon Prost wrote for the three-judge panel. "Accordingly, we affirm the denial of injunctive relief with respect to those patents. However, with respect to Apple's utility patents, we conclude that the district court abused its discretion in its analysis."
Specifically, Koh went too far in requiring Apple to show that "one of the patented features is the sole reason consumers purchased Samsung products," according to the ruling.
"It is true that Apple must 'show that the infringing feature drives consumer demand for the accused product,'" Prost wrote, citing a prior decision by the Federal Circuit denying Apple's request for a preliminary injunction. "It is also true that this inquiry should focus on the importance of the claimed invention in the context of the accused product and not just the importance, in general, of features of the same type as the claimed invention. However, these principles do not mean Apple must show that a patented feature is the one and only reason for consumer demand. Consumer preferences are too complex - and the principles of equity are too flexible - for that to be the correct standard. Indeed, such a rigid standard could, in practice, amount to a categorical rule barring injunctive relief in most cases involving multi-function products, in contravention of EBay v. MercExchange, LLC."
Prost added: "Thus, rather than show that a patented feature is the exclusive reason for consumer demand, Apple must show some connection between the patented feature and demand for Samsung's products. There might be a variety of ways to make this required showing, for example, with evidence that a patented feature is one of several features that cause consumers to make their purchasing decisions. It might also be shown with evidence that the inclusion of a patented feature makes a product significantly more desirable. Conversely, it might be shown with evidence that the absence of a patented feature would make a product significantly less desirable."
