Apple Fails to Win U.S. Injunction Against Samsung, Previously Offered 'Scrollback' Patent License

samsung logoLate last week, a U.S. judge declined to award a preliminary injunction that would have blocked Samsung from selling its Galaxy line of smartphones and tablets in the United States, marking a setback for Apple in its effort to take on Samsung for its alleged infringement of Apple's designs and functionality. Judge Lucy Koh did, however, suggest that Samsung was likely to have infringed some of Apple's patents but declined to issue an injunction because of a lack of evidence that Apple would suffer irreparable harm if Samsung were allowed to continue selling the products while the case was being heard.

In her ruling, Koh wrote that for some of the smartphones, "Apple has established a likelihood of success on the merits at trial."

Koh added that Apple would likely prove Samsung infringed one of its tablet patents. However, Apple had not shown that it was likely to overcome Samsung's challenges to the patent's validity, Koh wrote.

Apple must demonstrate both infringement and validity to succeed in its lawsuit.

Interestingly, The Verge notes that the court order declining to issue the injunction reveals that Apple has in fact licensed to third parties one key iOS patent covering the "scrollback" feature displaying the linen texture when elastically scrolling beyond the end of a document or webpage. Licenses for the patent were obtained by Nokia and IBM, and Apple offered a license to Samsung during failed negotiations back in November 2010.

Apple asserted this patent against Samsung as part of its failed attempt to get an injunction against Galaxy devices, and the court order denying the injunction includes general discussion of how past licensing behavior affects the decision of whether or not to grant an injunction. The discussion is nestled among two redacted statements shown to The Verge that confirm the '381 patent was licensed to IBM and Nokia, and that Apple offered a license to Samsung in November of 2010 as part of settlement negotiations.

At first blush, the revelation suggests that because Apple is indeed willing to offer licensing for certain iOS features rather going to the "thermonuclear war" extreme, its case may be strengthened by Samsung's refusal to purchase a license as other companies have done.

But the fact that Apple has been willing to license the feature to other companies for monetary compensation also undermines its argument that it is being irreparably harmed by Samsung's alleged infringement. In Koh's view, if Apple could be adequately compensated for the infringement through a license by Samsung, Apple could be made whole at a later date without the need for a preliminary injunction at this point in the trial.

Popular Stories

iOS 26

When Will Apple Release iOS 26.2?

Monday December 1, 2025 4:37 pm PST by
We're getting closer to the launch of the final major iOS update of the year, with Apple set to release iOS 26.2 in December. We've had three betas so far and are expecting a fourth beta or a release candidate this week, so a launch could follow as soon as next week. Past Launch Dates Apple's past iOS x.2 updates from the last few years have all happened right around the middle of the...
iPhone Pocket Short

iPhone Pocket is Now Completely Sold Out Worldwide

Tuesday November 25, 2025 7:16 am PST by
Apple recently teamed up with Japanese fashion brand ISSEY MIYAKE to create the iPhone Pocket, a limited-edition knitted accessory designed to carry an iPhone. However, it is now completely sold out in all countries where it was released. iPhone Pocket became available to order on Apple's online store starting Friday, November 14, in the United States, France, China, Italy, Japan, Singapore, ...
Sad Siri Feature

Apple AI Chief John Giannandrea Retiring After Siri Delays

Monday December 1, 2025 2:16 pm PST by
Apple AI chief John Giannandrea is stepping down from his position and retiring in spring 2026, Apple announced today. Giannandrea will serve as an advisor between now and 2026, with former Microsoft AI researcher Amar Subramanya set to take over as vice president of AI. Subramanya will report to Apple engineering chief Craig Federighi, and will lead Apple Foundation Models, ML research, and ...
Netflix Smaller 4

Netflix Kills Casting From Its Mobile App to Most Modern TVs

Monday December 1, 2025 4:36 am PST by
Netflix has quietly removed the ability to cast content from its mobile apps to most modern TVs and streaming devices, including newer Chromecast models and the Google TV Streamer. The change was first spotted by users on Reddit and confirmed in an updated Netflix support page (via Android Authority), which now states that the streaming service no longer supports casting from mobile devices...
Cyber Week Deals 2025

Best Cyber Week Apple Deals Include Big Discounts on AirPods, Apple Watch, and More

Sunday November 30, 2025 7:33 am PST by
Cyber Week is here, and you can find popular Apple products like AirPods, iPad, Apple Watch, and more at all-time low prices. In this article, the majority of the discounts will be found on Amazon. Note: MacRumors is an affiliate partner with some of these vendors. When you click a link and make a purchase, we may receive a small payment, which helps us keep the site running. Specifically,...
maxresdefault

iPhone Fold: Launch, Pricing, and What to Expect From Apple's Foldable

Monday December 1, 2025 3:00 am PST by
Apple is expected to launch a new foldable iPhone next year, based on multiple rumors and credible sources. The long-awaited device has been rumored for years now, but signs increasingly suggest that 2026 could indeed be the year that Apple releases its first foldable device. Subscribe to the MacRumors YouTube channel for more videos. Below, we've collated an updated set of key details that ...
studio display purple february

M5 iPad Pro Could Hint at New Studio Display Feature

Sunday November 30, 2025 10:30 am PST by
The updated specs of the M5 iPad Pro may point toward a major new feature for Apple's next-generation Studio Display expected in early 2026. Apple's latest iPad Pro debuted last month and contains one display-related change that stands out: it can now drive external monitors at up to 120Hz with Adaptive Sync. The feature should deliver lower latency, smoother motion, and fewer visual...
Touchscreen MacBook Feature

Here Are the Four MacBooks Apple Is Expected to Launch Next Year

Monday December 1, 2025 5:00 am PST by
2026 could be a bumper year for Apple's Mac lineup, with the company expected to announce as many as four separate MacBook launches. Rumors suggest Apple will court both ends of the consumer spectrum, with more affordable options for students and feature-rich premium lines for users that seek the highest specifications from a laptop. Below is a breakdown of what we're expecting over the next ...
New Intel Logo

Apple and Intel Rumored to Partner on Mac Chips Again in a New Way

Friday November 28, 2025 7:33 am PST by
While all Macs are now powered by Apple's custom-designed chips, a new rumor claims that Apple may rekindle its partnership with Intel, albeit in a new and limited way. Apple supply chain analyst Ming-Chi Kuo today said Intel is expected to begin shipping Apple's lowest-end M-series chip as early as mid-2027. Kuo said Apple plans to utilize Intel's 18A process, which is the "earliest...
iphone black friday gold

The Best Black Friday iPhone Deals Still Available

Friday November 28, 2025 6:24 am PST by
Cellular carriers have always offered big savings on the newest iPhone models during the holidays, and Black Friday 2025 sales have kicked off at AT&T, Verizon, T-Mobile, and more. Right now we're tracking notable offers on the iPhone 17, iPhone 17 Pro, iPhone 17 Pro Max, and iPhone Air. For even more savings, keep an eye on older models during the holiday shopping season. Note: MacRumors is...

Top Rated Comments

AAPLaday Avatar
183 months ago
Hopefully these guys will call a truce for xmas and have a football match instead
Score: 15 Votes (Like | Disagree)
Oletros Avatar
183 months ago
Well done Samsung keep on fighting the trolls.

What trolls?
Score: 10 Votes (Like | Disagree)
kdarling Avatar
183 months ago
Here is my first reading of the judge's decision (http://docs.justia.com/cases/federal/district-courts/california/candce/5:2011cv01846/239768/452/)to not grant a preliminary injunction at Apple's request, which was based on two iPhone design patents, one iPad design patent, and one utility patent (the snapback one). Corrections welcomed.

---- PHONE DESIGN PATENTS

Apple's lawyers tried to claim that similar designs would have a product dilution affect, an idea which is ripped off from trademark law, and which Koh said is not normally applied to design patents.

Both design patents were limited because Apple had only patented the front, although of course now they were belatedly trying to claim side and back as well.

The first 2007 iPhone design patent ('087) was found to not count, because a 2005 Sharp Japanese design patent proved prior art:



The other one ('677) was challenged on account of functionality. The court noted that a minimalist design is that way specifically because it is all functional, not decorative. (Note: a design patent can ONLY patent decorative items.)

In addition, placement of speaker and screen is obvious. Still, the court felt that the Samsung design might infringe it due to the full sized black screen even though the details were different (home buttons, etc).

However, Apple did not prove that irreparable harm would occur for many reasons, including:

1) Apple's claim that Samsung had been copying them since 2007. Naturally, the fact that Apple waited until 2011 to sue Samsung over the design, didn't convince the court that such copying could cause irreparable harm... since Apple failed to complain during the first four years.

2) Another factor was that the court decided that if Samsung's devices were not sold, the real benefactor of an injunction would not be Apple, but the other manufacturers of smartphones (e.g HTC and LG).

---- TABLET DESIGN PATENT

Again, functionality was a major consideration, just as it was in the Netherlands judgement.

Moreover, the court saw too much prior art (e.g the 1994 Knight-Ridder concept and the TC1000 tablet).

Therefore the court found that Apple had failed to establish that it was likely to be able to prove the iPad's design patent validity in court.

As for irreparable harm, the court said that even if Samsung infringed (the possibly invalid patent), Apple had failed to prove that the iPad's physical design was the deciding factor for buyers... especially with prior art showing that the shape isn't what makes the iPad sell so well; it is the UI, apps and price.

---- SNAPBACK UI PATENT

Again, prior art was introduced, along with a Samsung intimation that perhaps Apple had deliberately withheld some of it from the USPTO. The judge disagreed.

The judge ruled that Apple could probably prove its validity and that Samsung likely infringed on this patent. However, it was not critical enough a smartphone patent to be grounds for an injunction.
Score: 8 Votes (Like | Disagree)
ChazUK Avatar
183 months ago
It's the same thing they did with the photo gallery app and were found in infringement in the Netherlands for. They went back to the stock Android behavior to circumvent the ban in the end.

The fact that they're intentionally changing the way that the stock applications behave to act like iOS counterparts is very discouraging from my perspective.

Hopefully this will lead to Samsung leaving things alone or coming up with alternative methods rather than trying to emulate competitors.
Score: 8 Votes (Like | Disagree)
gnasher729 Avatar
183 months ago
Are we all supposed to be impressed by your amazing command of the English Language and hit the thumbs up button on your post to make you feel superior???

OK, congratulations, you've corrected a grammatical error on an Internet Blog.
All those readers who don't use English as their first language appreciate such corrections very much. It used to be that reading a lot would give you a good command of the English language eventually; on the internet that is unfortunately not so. So _I_ am not impressed, but I appreciate the effort. And every little bit helps.


Overscroll on a washer/dryer or microwave... Intriguing ! :p
The next time you eat tomato soup, try stirring it, then take the spoon out and watch carefully: Just before the soup comes to rest, it actually rotates back a bit. Nowadays this is called "overscroll" :-)
Score: 7 Votes (Like | Disagree)
KnightWRX Avatar
183 months ago
Good, let these things proceed to trial and the parties being found guilty of infringement before any punishements are dished out.

This goes for both sides. All this injunction non-sense only hurts the consumer in the end.

Also good to know Apple is opening up to the idea of licensing their patents instead of hoarding them all and using them as a competitive edge only. Other parties are open to these cross-license agreements and in the end, the consumer wins.
Score: 5 Votes (Like | Disagree)