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Samsung Asks Federal Circuit For Limited Remand so Judge Koh Can Dissolve Preliminary Injunction of Galaxy 10.1 ~pj
Thursday, September 20 2012 @ 06:48 PM EDT

Samsung has filed a request with the US Court of Appeals for the Federal Circuit, asking that there be a limited remand of its appeal so Judge Lucy Koh will have jurisdiction to decide the issue of whether the preliminary injunction on Samsung's Galaxy Tab 10.1 should be dissolved. The jury in the Apple v. Samsung trial ruled that the Galaxy Tab 10.1 did not infringe Apple's rounded corners patent. And Judge Koh just wrote [PDF], in response to a Samsung motion asking that the injunction be lifted, that if she had jurisdiction, she'd dissolve the preliminary injunction. But since Samsung appealed, she felt she lacked the authority. There are other issues, as Mark Webbink's article, linked to above, explains. Samsung therefore asks that authority be given to her for this limited purpose of deciding this issue.

The filing:

09/20/2012 30 - MOTION of Appellants Samsung Electronics America, Inc., Samsung Electronics Co., Ltd. and Samsung Telecommunications America, LLC for limited remand. Response/Opposition due 10/04/2012. [Consent: opposed]. Service: 09/20/2012 by email. [26082]
Apple opposes, and it will be filing an opposition.

I don't know how hard Apple needs to try. Between the Federal Circuit and the US District Court judge, they ought to be able to come up with another excuse.

Here it is as text, minus the header, which I'll plug in later:

***********************

2012-1506

_______________

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

________________

APPLE INC.,

Plaintiff-Appellee,

v.

SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC., AND SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC,

Defendants-Appellants.

________________

Appeal from the United States District Court for the Northern District of California
in case no. 11-CV-01846-LHK, Judge Lucy H. Koh

______________

DEFENDANTS-APPELLANTS’ MOTION FOR LIMITED REMAND
PURSUANT TO FED. R. APP. P. 12.1 AND FOR EXPEDITED
CONSIDERATION

_______________

[lawyers listed]

TABLE OF CONTENTS

Page

PRELIMINARY STATEMENT ............................................1

FACTUAL & PROCEDURAL BACKGROUND..............................2

ARGUMENT ................................................4

CONCLUSION ..........................................6

CERTIFICATE OF INTEREST ..........................7

PROOF OF SERVICE........................................9

PRELIMINARY STATEMENT

Pursuant to Fed. R. App. P. 12.1, Defendants-Appellants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”) respectfully move for a limited remand of this appeal to the U.S. District Court for the Northern District of California (Koh, J.) so that it may decide Samsung’s motion to dissolve the preliminary injunction that is the subject of this appeal. Samsung also seeks expedited consideration of this motion. The district court has ruled that it lacks jurisdiction to resolve the motion to dissolve given this appeal but has issued an indicative ruling pursuant to Fed. R. Civ. P. 62.1(a)(3) that Samsung’s motion raises a substantial issue. (See Addendum (“Add.”) A.) Were the district court to dissolve the preliminary injunction, Samsung would seek to dismiss this appeal as moot. For the reasons discussed below, the motion should be granted and the appeal remanded forthwith so that the district court may consider Samsung’s motion to dissolve.

Samsung sought Apple’s consent to this motion, but Apple indicated that it does not consent at this time and that it expects to file a response. Since, as explained below, the district court has indicated that the passage of time may affect whether it dissolves the preliminary injunction, Samsung respectfully requests that the Court order Apple to submit any response by Tuesday, September 25, 2012.

1

FACTUAL & PROCEDURAL BACKGROUND

Following a remand from this Court, see Apple Inc. v. Samsung Elecs. Co., Ltd., 678 F.3d 1314 (Fed. Cir. 2012) (Bryson, Prost & O’Malley, JJ.), on June 26, 2012, the district court granted a preliminary injunction against Samsung’s sales of the Galaxy Tab 10.1 tablet computer based on a finding that Plaintiff-Appellee Apple, Inc. (“Apple”) was likely to succeed in showing infringement of U.S. Design Patent No. D504,889 (the “D’889”). (See Add. B.) Samsung filed a notice of appeal to this Court that same day (Dkt. No. 1138) and later unsuccessfully sought a stay pending appeal from the district court and this Court (Dkt. Nos. 1147, 1170; Fed. Cir. Dkt. Nos. 2, 23).

While this appeal was pending, the district court conducted a jury trial that resulted, on August 24, 2012, in a jury finding that the Galaxy Tab 10.1 did not infringe Apple’s D’889 patent. (Dkt. No. 1931, at 7.) In light of this verdict, which eliminates the sole basis for the preliminary injunction, on August 26, 2012, Samsung filed a motion to dissolve the preliminary injunction or, in the alternative, for an indicative ruling pursuant to Fed. R. Civ. P. 62.1. (Dkt. No. 1936.) Samsung explained that the jury’s finding of non-infringement as to the D’889 patent meant that Apple no longer had a likelihood of success on the merits. (See id. at 2-3 (citing Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350-51 (Fed. Cir. 2001) (holding that preliminary injunction should not issue if

2

the defendant raises a substantial question concerning infringement)).) Apple opposed the motion, principally relying on the fact that it would be filing post-trial motions with respect to the Galaxy Tab 10.1 (which will not be resolved until at least December) and that it intended to seek an injunction based on the jury’s finding that one version of the Galaxy Tab 10.1 infringed certain utility patents that were not the basis for the preliminary injunction order. (Dkt. No. 1963, at 4-7).

On September 17, 2012, the district court ruled that it did not have jurisdiction to dissolve the injunction but it issued an indicative ruling that Samsung’s motion raises a substantial issue. (See Add. A.) The district court explained that “the sole basis for the June 26 Preliminary Injunction no longer exists” given the jury’s finding of non-infringement as to the D’889 patent, and thus “[b]ased on these facts alone, the Court at this time would dissolve the June 26 Preliminary Injunction if the Court had jurisdiction.” (Add. A at 3 (emphasis added).) The district court, however, stopped short of stating that it would definitely dissolve the motion on remand, explaining that “based on the post-trial motions, the Court could, potentially, issue a permanent injunction on the Galaxy Tab 10.1” and thus “whether the Court would dissolve the June 26 Preliminary Injunction may depend on the timing of when the Federal Circuit issues the mandate restoring jurisdiction to this Court.” (Add. A at 4.)

3

ARGUMENT

Federal Rule of Appellate Procedure 12.1 provides that, where “a timely motion is made in the district court for relief that it lacks authority to grant because of an appeal that has been docketed and is pending” and “the district court states that it would grant the motion or that the motion raises a substantial issue, the court of appeals may remand for further proceedings ....” FED. R. APP. P. 12.1. The prerequisites to remand under Rule 12.1 are satisfied here, as the district court determined that it did not have jurisdiction to rule on Samsung’s timely motion to dissolve the preliminary injunction (Add. A at 2-3) but that the motion raised a substantial issue (Add. A at 5). This Court should exercise its discretion to remand the appeal for three reasons.

First, a limited remand is in the interests of judicial efficiency and economy, as it would permit the district court to consider promptly whether to dissolve the preliminary injunction based on substantial changes in circumstances following the jury’s verdict of non-infringement of the D’889 patent. This Court has previously remanded appeals pursuant to Rule 12.1 in analogous situations where a party sought to have a district court vacate an order that was subject to the appeal. See Karl Storz Imaging, Inc. v. Pointe Conception Med., Inc., 471 Fed. App’x 904 (Fed. Cir. 2012) (remanding following indicative ruling under Fed. R. Civ. P. 62.1 on motion to vacate judgment); Ameranth, Inc. v. Menusoft Sys. Corp., 463 Fed.

4

App’x 920 (Fed. Cir. 2012) (same); Acoustic Techs., Inc. v. Itron, Inc., 428 Fed. App’x 996 (Fed. Cir. 2011) (same); Dicam, Inc. v. Cellco P’ship, 416 Fed. App’x 899, 899 (Fed. Cir. 2011) (Bryson, J.) (remanding so district court could consider motion to vacate certain orders relating to claim construction and summary judgment); Ohio Willow Wood Co. v. Thermo-Ply, Inc., 629 F.3d 1374 (Fed. Cir. 2011) (remanding so district court could consider motion for vacatur).

Second, a limited remand is particularly appropriate here because it would help streamline appellate proceedings. If the preliminary injunction is dissolved on remand, Samsung would seek to dismiss this appeal as moot under Fed. R. App. P. 42(b), thereby reducing the burden on this Court of proceeding with the pending appeal. Apple would not be prejudiced in these circumstances, as the appeal is in its earliest stages (Samsung’s opening brief is not due until November 1), and there is every reason to think that the district court will act expeditiously on remand.

Third, on the other hand, were the district court’s lack of jurisdiction to continue to prevent it from granting Samsung’s motion to dissolve, Samsung would continue to be wrongfully enjoined while its appeal proceeds. Cf. Salazar v. Buono, 130 S. Ct. 1803, 1816 (2010) (reversing district court’s refusal to modify injunction and holding that, “[b]ecause injunctive relief ‘is drafted in light of what the court believes will be the future course of events, ... a court must never ignore significant changes in the law or circumstances underlying an injunction lest the

5

decree be turned into an ‘instrument of wrong’”). As the district court has recognized (Add. A at 3-5), but for the jurisdictional issues created by the pending appeal, there is no basis for Apple to continue to benefit from the windfall associated with the preliminary injunction while post-trial proceedings occur through December. The inefficiency and unfairness of a failure to remand is obvious, and it would serve only to complicate proceedings in this Court and to delay resolution of this dispute.

CONCLUSION

This Court should remand the appeal so that the district court may rule on Samsung’s motion to dissolve the preliminary injunction.

Dated: September 20, 2012

Respectfully submitted,

By: /s/ Kathleen M. Sullivan
Kathleen M. Sullivan
William B. Adams
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
[address, phone, fax, email]

Michael T. Zeller
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
[address, phone, fax]

Charles K. Verhoeven
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
[address, phone, fax]

Kevin P.B. Johnson
Victoria F. Maroulis
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
[address, phone, fax]

6

CERTIFICATE OF INTEREST

Counsel for Defendants-Appellants certifies the following:

1. The full name of every party or amicus represented by me is: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc. and Samsung Telecommunications America, LLC

2. The name of the real party in interest (if the party named in the caption is not the real party in interest) represented by me is: N/A

3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of the party or amicus curiae represented by me are: Samsung Electronics America, Inc. (“SEA”) is a wholly-owned subsidiary of Samsung Electronics Co., Ltd. (“SEC”), a publicly held corporation organized under the laws of the Republic of Korea. SEC is not owned by any parent corporation and no other publicly held corporation owns 10% or more of its stock. No other publicly held corporation owns 10% or more of SEA’s stock. Samsung Telecommunications America, LLC (“STA”) is a wholly-owned subsidiary of SEA. No other publicly held corporation owns 10% or more of STA’s stock.

7

4. The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or are expected to appear in this court are:

Quinn Emanuel Urquhart & Sullivan, LLP: John B. Quinn; Charles K. Verhoeven; Kathleen M. Sullivan; Kevin P.B. Johnson; Victoria F. Maroulis; Michael T. Zeller; Todd M. Briggs; Margret M. Caruso; Rachel Herrick Kassabian; Kevin A. Smith; William B. Adams; Albert P. Bedecarre; Kara M. Borden; Jon C. Cederberg; Melissa N. Chan; Edward J. DeFranco; Susan R. Estrich; Ryan S. Goldstein; Diane Hutnyan; Brian E. Mack; Joseph Milowic; William C. Price; Christopher E. Stretch; Mark Tung; Curran M. Walker; Alan L. Whitehurst; Robert Wilson; B. Dylan Proctor; John M. Pierce

Steptoe & Johnson LLP: John M. Caracappa; Paul A. Gennari; Michael R. Heimbold; Huan-Yi Lin; Kfir B. Levy

Dated: September 20, 2012

Respectfully submitted,

By: /s/ Kathleen M. Sullivan
Kathleen M. Sullivan
QUINN EMANUEL URQUHART & SULLIVAN, LLP
[address, phone, fax, email]

Attorney for Defendants-Cross-
Appellants

8

PROOF OF SERVICE

The undersigned hereby certifies that on September 20, 2012, I electronically filed the foregoing DEFENDANTS-APPELLANTS’ MOTION FOR LIMITED REMAND PURSUANT TO FED. R. APP. P. 12.1 AND FOR EXPEDITED CONSIDERATION with the Clerk of the Court for the United States Court of Appeals for the Federal Circuit by using the appellate CM/ECF system. I certify that all participants in the case are registered CM/ECF users and that service will be accomplished by the CM/ECF system.

/s/ Kathleen M. Sullivan
Kathleen M. Sullivan

9

[PJ: Attached as Addendum A and B, pages 11-26 of the PDF, are the Koh September 17, 2012 ORDER DENYING WITHOUT PREJUDICE SAMSUNG’S MOTION TO DISSOLVE THE JUNE 26, 2012 PRELIMINARY INJUNCTION AND ISSUING INDICATIVE RULING and the June 26th Koh ORDER GRANTING PRELIMINARY INJUNCTION, both also available on our Apple v Samsung and Apple v Samsung page 2 Timeline pages.

Here's the September 17, 2012 order as PDF; and here's the PDF of the June 26, 2012 order.]


  View Printable Version


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