- BASICS: No presumption that a permanent injunction should be granted to successful patent owner. “According to well-established principles of equity, a plaintiff seeking a permanent injunction must satisfy a four-factor test before a court may grant such relief. A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.” eBay (U.S. 05/15/2006); cf. Apple IV (Fed. Cir. 12/16/15) (2-1) [modifying and replacing Apple IV (Fed. Cir. 09/17/15) (2-1)] (vacating denial of permanent injunction; “the right to maintain exclusivity—a hallmark and crucial guarantee of patent rights deriving from the Constitution itself—is … important.”; “the public interest nearly always weighs in favor of protecting property rights in the absence of countervailing factors, especially when the patentee practices his inventions”); Trebro (Fed. Cir. 04/09/14) (Rader, J.) (vacating denial of preliminary injunction); Presidio (Fed. Cir 12/19/12) (Rader, J.) (vacating denial of permanent injunction, even though patentee did not practice patent, where patentee and infringer products directly competed and patentee unwilling to license); Celsis in Vitro (Fed. Cir. 01/09/12) (aff’g preliminary injunction). Most injunctions are granted where patent owner practices the patented invention. Celgard (Fed. Cir. 08/12/15) (non-precedential). See Gupta, Kirti and Kesan, Jay P., Studying the Impact of eBay on Injunctive Relief in Patent Cases (July 10, 2015).
- Award Of Damages For Future Infringement May Bar Future Injunction: Where damages theory is based on assumption of future sales, that is strong factor against an injunction. Innogenetics (Fed. Cir. 01/17/08) (“Nowhere did the jury instructions state the reasonable royalty would be limited to a period from the start of infringement to the date of judgment.” “The reasonable royalties awarded to Innogenetics include an upfront entry fee that contemplates or is based upon future sales by Abbott in a long term market. When a patentee requests and receives such compensation, it cannot be heard to complain that it will be irreparably harmed by future sales.”). Seeking reasonable royalty for past damages does not bar entitlement to permanent injunction. Texas Advanced (Fed. Cir. 05/01/18); see Whitserve (Fed. Cir. 08/07/12) (injunctive relief not barred: “Although the jury heard evidence of two lump-sum licenses WhitServe had previously granted, the parties limited their damages arguments to past infringement rather than projected future infringement.”).
- FRAND Obligation Does Not Per Se Bar Injunctive Relief: “An injunction may be justified where an infringer unilaterally refuses a FRAND royalty or unreasonably delays negotiations to the same effect.” Apple (Motorola) (Fed. Cir. 04/25/14) (aff’g denial of an injunction) (2-1).
- Short Remaining Life Of Patent Is Not Factor Against Injunction: “The fact that the patent has only one year to run is not a factor in favor of Ireco in the balance of equities. Patent rights do not peter out as the end of the patent term, usually 17 years, is approached.” Atlas Powder (Fed. Cir. 09/23/85).
- Injunction Should Be Reconsidered On Remand If Fewer Infringed Claims Survive Appeal: Grant of permanent injunction remanded for reconsideration where number of valid and infringed claims is reduced on appeal. Fresenius (Fed. Cir. 09/10/09).
- eBay Does Not Apply In ITC: Spansion (Fed. Cir. 12/21/10) (“eBay does not apply to Commission remedy determinations under Section 337.”)
Damages Theory Inconsistent With Future Injunction: Where damages theory is based on assumption of future sales, that is strong factor against an injunction. Innogenetics (Fed. Cir. 01/17/08).
– Licensing By Practicing Patent Owner Does Not Bar Preliminary Injunction: Although licensing by a non-practicing patent owner weighs against preliminary injunction, a patent owner who is commercializing the invention may be irreparably harmed by infringement despite having licensed others. Abbott Labs. (Fed. Cir. 10/21/08).
– Licensing By Practicing Patent Owner Does Not Bar Permanent Injunction: Just one factor for trial court to consider in its discretion. Acumed (Fed. Cir. 12/30/08) (aff’g injunction despite “close case”).
– Extensive Discussion Of Factors: Apple III (Fed. Cir. 11/18/13) (vacating denial of permanent injunction against Samsung phones and tablets); Broadcom (Fed. Cir. 09/24/08) (aff’g injunction, with sunset provision); see AstraZeneca (Fed. Cir. 11/01/10) (aff’g a preliminary injunction against an ANDA application).
– Irreparable Harm Must To Be Plaintiff: Showing irreparable harm to patent owner’s exclusive licensee is not enough. Voda (Fed. Cir. 08/18/08).
– Reconsider If Fewer Claims Survive Appeal: Grant of permanent injunction remanded for reconsideration where number of valid and infringed claims is reduced on appeal. Fresenius (Fed. Cir. 09/10/09).
– Cited Art May Defeat Preliminary Injunction Especially If Patent Granted Before KSR: Art considered by PTO might raise substantial question of patentability, particularly because patent issued before KSR “changed the state of obviousness law.” Automated Merchandising (Fed. Cir. 12/16/09) (non-precedential).