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 19 Mock WWDC25 Feature

iOS 19 Expected to Run on These iPhones

Monday March 31, 2025 5:28 pm PDT by
iOS 19 will not be available on the iPhone XR, iPhone XS, or the iPhone XS Max, according a private account on social media site X that has accurately provided information on device compatibility in the past. The iPhone XR, iPhone XS, and iPhone XS Max all have an A12 Bionic chip, so it looks like iOS 19 will discontinue support for that chip. All other iPhones that run iOS 18 are expected...
maxresdefault

Apple Releases iOS 18.4 With Priority Notifications, Ambient Music, New Emoji and More

Monday March 31, 2025 10:03 am PDT by
Apple today released iOS 18.4 and iPadOS 18.4, the fourth major updates to the iOS 18 and iPadOS 18 operating system updates that came out last year. iOS 18.4 and iPadOS 18.4 come two months after Apple released iOS 18.3 and iPadOS 18.3. Subscribe to the MacRumors YouTube channel for more videos. The new software can be downloaded on eligible iPhones and iPads over-the-air by going to...
watchOS 11 Thumb 2 1

Apple Releases watchOS 11.4 With Sleep Alarm Update

Tuesday April 1, 2025 10:34 am PDT by
Apple today released watchOS 11.4, the fourth major update to the operating system that runs on the Apple Watch. watchOS 11.4 is compatible with the Apple Watch Series 6 and later, all Apple Watch Ultra models, and the Apple Watch SE 2. watchOS 11.4 can be downloaded on a connected iPhone by opening up the Apple Watch app and going to General > Software Update. To install the new software,...
AirPods Pro Firmware Feature

Apple Releases New Firmware for AirPods Pro 2 and AirPods 4

Monday March 31, 2025 11:27 am PDT by
Apple today released new firmware updates for all AirPods 4 and AirPods Pro 2 models. The new firmware is version 7E93, up from the 7B21 firmware that was installed on the AirPods Pro 2 and the 7B20 firmware available on the AirPods 4 and AirPods 4 with ANC. It is not immediately clear what new features or changes are included in the new firmware, but we'll update this article should we find ...
iPhone 17 Pro 34ths Perspective

iPhone 17 Pro Launching Later This Year With These 10 New Features

Sunday March 23, 2025 10:00 am PDT by
While the iPhone 17 Pro and iPhone 17 Pro Max are not expected to launch until September, there are already plenty of rumors about the devices. Below, we recap key changes rumored for the iPhone 17 Pro models as of March 2025: Aluminum frame: iPhone 17 Pro models are rumored to have an aluminum frame, whereas the iPhone 15 Pro and iPhone 16 Pro models have a titanium frame, and the iPhone ...
macOS Sequoia Feature

Apple Releases macOS Sequoia 15.4 With Mail Categorization and More

Monday March 31, 2025 10:04 am PDT by
Apple today released macOS Sequoia 15.4, the fourth major update to the macOS Sequoia operating system that launched in September. macOS Sequoia 15.4 comes two months after the launch of macOS Sequoia 15.3. Mac users can download the ‌‌macOS Sequoia‌‌ update through the Software Update section of System Settings. It is available for free on all Macs able to run macOS 15. With...

Top Rated Comments

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

What trolls?
Score: 10 Votes (Like | Disagree)
kdarling Avatar
174 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
174 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
174 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
174 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)