United States courts take a context-sensitive approach to the grant of injunctive relief for US patent infringement. Such context-sensitivity is consistent with the US Patent Act, which indicates that courts “may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”Footnote 1 In common law jurisdictions, “equity” is generally viewed as resistant to strict rules and willing to make exceptions in light of particular circumstances.Footnote 2 In accordance with this vision of equity, the generalist trial judges of US district courtsFootnote 3 consider various factors in determining whether injunctive relief is justified and have great discretion to tailor injunctions in a particular case.Footnote 4 On the other hand, US courts have continued to grant injunctive relief in most infringement cases in which a patent owner prevails, particularly when the patent owner is in direct competition with the adjudged infringer.Footnote 5 In contrast, US courts commonly deny injunctive relief for patent owners who are “nonpracticing entities” or “patent trolls” – forms of patent-owning entities that do not engage in substantial commercialization or use of the patented invention or variants of it.Footnote 6 Further, the US Court of Appeals for the Federal Circuit has held that the US Patent Act does not authorize injunctions to correct past patent infringement.Footnote 7 Instead, injunctions are to be granted only as a means to prevent future infringement.Footnote 8
A. Basic Standards with Respect to Preliminary and Permanent Injunctions
In Anglo-American law, injunctions are equitable remedies, traditionally “to be granted only where law damages [and other remedies available at law] were inadequate and, even then, only in the discretion of the court.”Footnote 9 The requirement of inadequate legal remedies helped justify common statements that an “injunction is an exceptional remedy.”Footnote 10 But the traditional limitations on injunctive relief left substantial questions of what constitutes inadequacy of legal remedies and how much discretion trial judges retain. In 2006, the Supreme Court of the United States reshuffled understandings on these matters through its decision in eBay Inc. v. MercExchange, LLC,Footnote 11 effectively giving trial judges greater discretion to deny injunctive relief after a judgment of patent infringement.Footnote 12 This section discusses the courts’ basic tests for whether to grant injunctive relief in the wake of the Supreme Court’s eBay decision.
A key distinction in US remedies law is that between permanent and preliminary injunctions. A permanent injunction is a court order pursuant to a final judgment.Footnote 13 In a patent infringement suit, a court that renders a final judgment in favor of the patent holder may issue a permanent injunction forbidding the adjudged infringer from engaging in specified infringing activities, typically activities involving the particular products or processes that are the basis for the court’s infringement judgment.Footnote 14 A preliminary injunction comes before a final judgment: its purpose is to prevent irreparable injury to the plaintiff before the court can issue a final judgment and, relatedly, “to preserve the court’s power to render a meaningful decision” on the fully presented merits.Footnote 15 There is substantial overlap between how US courts assess whether to issue a permanent injunction and how they assess whether to issue a preliminary injunction. But because a court must generally decide whether to issue a preliminary injunction at a time when the outcome of the case is uncertain, there is necessary difference as well. Thus, these two main types of injunctions are discussed separately in the subsections that follow.
1. Permanent Injunctions
For over a century prior to the US Supreme Court’s 2006 decision in eBay, US courts were described as issuing permanent injunctions “as a matter of course” upon making a final judgment of patent infringement.Footnote 16 This practice tracked a more general presumption in favor of granting injunctions in cases involving “continual infringement” of a right,Footnote 17 circumstances in which an injunction might be thought particularly helpful in preventing later relitigation of substantially the same dispute.Footnote 18 But the practice and presumption were not absolute: consistent with general equitable principles, there was a general sense that a court would decline to grant an injunction that would inflict “grossly disproportionate hardship on the defendant”Footnote 19 or would conflict with a substantial public interest.Footnote 20
The US Court of Appeals for the Federal Circuit reformulated this practice and presumption as amounting to a “general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances.”Footnote 21 In stating this rule, the Federal Circuit repeatedly acknowledged that a court might nonetheless deny an injunction to protect the public interest.Footnote 22 The Federal Circuit has also clarified that, where an award of damages compensates a patent holder for use of the invention during the full patent term, a trial court would not abuse its discretion by denying an injunction.Footnote 23 But the Federal Circuit was not so active in acknowledging discretion to deny an injunction that would inflict disproportionate hardship on an adjudged infringer.Footnote 24 Indeed, within a few years of the Federal Circuit’s creation in 1982,Footnote 25 the court signaled a lack of sympathy with such a potential basis for denying an injunction by declaring that the fact that an injunction might put a particular infringer out of business “cannot justify denial of [a permanent] injunction”: “One who elects to build a business on a product found to infringe cannot be heard to complain if an injunction against continuing infringement destroys the business so elected.”Footnote 26
The Federal Circuit’s “general rule” language and practice stood out against a historical background in which the US Supreme Court had said many times “that equitable remedies are exceptional and available only where there is no adequate remedy at law.”Footnote 27 Hence, in eBay the Supreme Court granted certiorari to review the Federal Circuit’s “general rule.”Footnote 28
This review did not favor the general rule. The Supreme Court emphasized the discretion of trial courts in deciding whether to grant injunctive relief.Footnote 29 At the same time, however, the court held that, in determining whether to issue a permanent injunction against an adjudged infringer, courts must apply a four-pronged test. Under this test, the party moving for an injunction “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 the 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.”Footnote 30
The first two prongs of this test are somewhat awkward at best. Regarding the first prong, the court presumably meant to indicate that the movant for an injunction must show that it will suffer irreparable injury if an injunction does not issue, rather than that it “has suffered irreparable injury” in the past.Footnote 31 Moreover, the first and second prongs are fundamentally redundant.Footnote 32 These prongs essentially just state and restate the general, threshold requirement that a court find legal remedies such as compensatory damagesFootnote 33 inadequate before turning to equitable relief such as an injunction.Footnote 34
The Supreme Court did not explicitly say that no presumptions in favor of the movant for an injunction can apply to analysis of any of these factors.Footnote 35 But lower courts, including the Federal Circuit, have commonly taken this to be the case, holding that eBay required them to drop, for example, presumptions regarding irreparable injury that their preexisting precedent had prescribed.Footnote 36
Further, the Federal Circuit has added a significant, albeit largely commonsense, gloss to the understanding of the irreparable injury factor. It has held that the patentee must also show a “causal nexus” between the irreparable injury and the infringement – i.e., “that the infringement causes the harm.”Footnote 37 In short, to obtain an injunction against patent infringement, a patentee needs to show not just that the patentee will suffer irreparable injury in the absence of an injunction, but that the patentee will suffer irreparable injury caused by the infringement in the absence of an injunction.Footnote 38 The Federal Circuit has explained that “[t]he causal nexus requirement ensures that an injunction is only entered against a defendant on account of harm resulting from the defendant’s wrongful conduct, not some other reason” – such as the defendant’s competitive success relative to the patentee based on noninfringing features of the defendant’s products or processes.Footnote 39
On the other hand, the Federal Circuit has emphasized that the causal nexus requirement is not to be overly demanding. Determination of whether there is an adequate causal nexus entails “a flexible analysis” of whether there is “‘some connection’ between the patented features and demand for the infringing products.”Footnote 40 If irreparable injury in the form of lost sales is alleged, infringing features need not be “the only cause of the lost sales”Footnote 41 or even the “predominant” cause.Footnote 42 Instead, the key question is whether an infringing feature “impacts customers’ purchasing decisions.”Footnote 43 The Federal Circuit has indicated that evidence of deliberate copying, criticism of non-infringing alternatives to a patented feature, and expert testimony about the value of such a feature can serve as evidence of the requisite causal nexus.Footnote 44
In any event, the first two prongs of the eBay test might not be of great interest in jurisdictions that are not rooted in the Anglo-American legal tradition and its historical demand for special justification of equitable as opposed to legal remedies. Thus, for general international purposes, the aspects of the eBay test of most significant interest might very well be the third, “balance of hardships,” prong and the fourth, “public interest,” prong. These prongs embody a court’s discretion to deny injunctive relief even when traditional threshold requirements for obtaining a permanent injunction – success on the merits and inadequacy of legal remedies – are met.
The “balance of hardships” prong effectively requires courts to consider the proportionality of an injunction’s impact on the defendant to the rightsholder interests that the injunction is meant to vindicate. If the patented invention only constitutes a minor part of an infringing product or process but an injunction against infringement will cause major disruption to an adjudged infringer’s business, a court is substantially likely to find that the “balance of hardships” weighs against an injunction as a result of such disproportionate effect and therefore to deny such relief.Footnote 45 On the other hand, the Federal Circuit has instructed that “expenses … incurred in creating the infringing products” and “the cost of redesigning the infringing products” are “irrelevant” to the balance-of-hardships analysis: the focus here is apparently on whether the injunction enables a patent holder substantially to tax value that is not causally related to the infringement itself, rather than to be on relieving an adjudged infringer of more direct “consequences … of its infringement.”Footnote 46 Although in principle a patent owner might seek to mitigate the disproportionate effect by making a payment to the adjudged infringer as a condition of injunctive relief,Footnote 47 the author is not aware of a patent case in which such a payment has been offered by a party or demanded by a court.
The “public interest” prong of the eBay test can also provide a basis for denying injunctive relief. Traditionally, US courts had tended to focus on public health or safety concerns in relation to this prong.Footnote 48 But a district court held in the wake of eBay that a permanent injunction against “Microsoft’s Windows and Office software products” would likely disserve the public interest because of a risk of a substantial negative “effect on the public due to the public’s undisputed and enormous reliance on these products.”Footnote 49
Under some selection or combination of the first three prongs of the eBay test, courts have also considered the extent to which a patent owner’s interests will be satisfactorily protected through monetary remedies, such as a backward-looking reward of damages or a forward-looking award of a royalty for any ongoing infringement. US courts have frequently found that such monetary remedies are sufficient for patent owners who are “non-practicing entities” (NPEs) in the sense that they do not engage in substantial activities to commercialize the patented invention and, instead of looking to exclude others from such activities, primarily look to license their patent rights to others for monetary compensation.Footnote 50 The category of NPEs encompasses a wide variety of entities, from universities and other research-oriented institutions to patent assertion entities (PAEs), often called “patent trolls,” a derogatory moniker for entities that specialize in acquiring and asserting patent rights.Footnote 51 Empirical studies indicate that, even though the US Supreme Court prohibited adoption of a general rule disabling a general category of patent owners such as nonpracticing entities from obtaining injunctive relief,Footnote 52 NPEs are especially unlikely to satisfy the eBay criteria for obtaining injunctive relief for patent infringement.Footnote 53 In contrast, direct competition between an infringer and patent owner appears to be positively associated with grants of injunctive relief.Footnote 54
The Federal Circuit has heldFootnote 55 that the International Trade Commission (ITC), an administrative body, is not subject to the eBay test in determining when to issue “(1) an exclusion order prohibiting entry of certain articles [associated with patent infringement] into the United States [or] (2) a ‘cease and desist’ order that might, for example, prohibit the sale of infringing matter that has been imported.”Footnote 56 But statutory law instructs the ITC that it may decline to issue an exclusion order and is barred from issuing a cease-and-desist order if, “after considering the effect of such [an order] upon the public health and welfare, competitive conditions in the United States economy, the production of like or directly competitive articles in the United States, and United States consumers, it finds that such order should not be issued.”Footnote 57 Moreover, Congress has empowered the President of the United States to negate such ITC orders “for policy reasons.”Footnote 58 In 2013, the US Trade Representative (USTR), to whom the president has assigned the exercise of this authority, abrogated the ITC’s exclusion and cease-and-desist orders directed at Apple Inc. in light of a determination that certain Apple tablets and smartphones infringed a patent owned by Samsung Electronics Co.Footnote 59 Apparently key concerns for the USTR were that Samsung itself had characterized the relevant patent as standard-essential and had committed to licensing the patent on FRAND terms.Footnote 60 More generally, over the past decade, the ITC itself has appeared more willing to take public interest concerns into active account.Footnote 61
Typically, US courts do not invoke general interests in follow-on innovation as a basis for denying an injunction. On the other hand, if an adjudged infringer has engaged in follow-on innovation and thereby generated an infringing product or process whose value is substantially attributable to such follow-on innovation, injunctive relief could be deemed unwarranted due to the balance of hardships, which will potentially entail a disproportionate burden on the infringer given its separate contributions to overall value. Further, the Federal Circuit has indicated that it believes there is commonly a public interest in granting injunctions against infringement to support the research and development that the patent system is generally thought to promote.Footnote 62
2. Preliminary Injunctions
US courts similarly consider four factors in deciding whether to issue a preliminary injunction against allegedly infringing activity – i.e., an injunction to prohibit engagement in certain activities that have not yet been adjudged to be infringing.Footnote 63 To obtain a preliminary injunction, a patentee must generally show:
(1) a likelihood of success on the merits – i.e., that there is no substantial question about either the validity of a relevant patent claim and that there is no substantial question that this claim is infringed by an accused product or process;
(2) a likelihood of “suffer[ing] irreparable injury in the absence of preliminary relief” (e.g., because of competitive harm that will be difficult to unwind after litigation has run its course);
(3) “that the balance of equities tips in his favor”; and
(4) “that an injunction is in the public interest.”Footnote 64
The likelihood-of-success factor calls for courts to consider the possibility that the accused infringer will prevail in challenging the validity of one or more patent claims. There also might be a failure of likelihood of success on grounds of obstacles to the patent owner’s proving infringement or the possibility that a court will find a patent unenforceable on grounds such as patent misuse or inequitable conduct in proceedings before the Patent and Trademark Office.Footnote 65 The Federal Circuit has held that a patent owner has failed to show a likelihood of success if “an accused infringer … demonstrate[es] a substantial question of validity or infringement” – i.e., about whether the patent owner will prevail with respect to such issues.Footnote 66 Thus, despite the presumption of validity of issued patent claims,Footnote 67 any substantial question about “validity, enforceability, or infringement” can bar the granting of a preliminary injunction.Footnote 68 Unsurprisingly, therefore, preliminary injunctions are generally difficult to obtain under US patent law.Footnote 69
Even if a patent owner succeeds in establishing a likelihood of success on the merits of its infringement case, the owner will still need to address any concerns with respect to the balance of hardships and the public interest. Here, US courts will generally consider the same sorts of circumstances that inform decisions about these factors in the context of a permanent injunction. On the other hand, the Federal Circuit has indicated that the patent holder’s likelihood of success on the merits should inform the weight given to the patent holder’s interest in relief under the balance-of-hardships analysis,Footnote 70 with the result that uncertainty about infringement, patent validity, or patent enforceability can contribute secondarily through the balance-of-hardships analysis to the difficulty in obtaining a preliminary injunction. The Supreme Court has not explicitly said that courts may not take such a “sliding scale” approach to satisfaction of one or more of the four preliminary-injunction factors.Footnote 71 Under a “sliding scale” approach, a very strong showing on one factor can lead to a court awarding a preliminary injunction based on “a lesser showing” on another factor than the court would otherwise demand.Footnote 72
Preliminary injunctions bring with them an additional wrinkle regarding requirements for bonds that the four-part test does not explicitly reflect. In case the movant for a preliminary injunction later loses on the merits, the Federal Rules of Civil Procedure require that a successful applicant for a preliminary injunction “give … security[, commonly in the form of an injunction ‘bond,’] in an amount that the court considers proper to pay the costs and damages sustained by any party found to have been wrongfully enjoined or restrained.”Footnote 73 Likewise, if a court grants a stay of injunctive relief at a preliminary or later stage – for example, because of an anticipated appeal – the court may demand a bond of the accused or adjudged infringer to help ensure compensation of the patent holder for any infringement during the period of the stay.Footnote 74 The possibility of such bonds and the sense of their likely effectiveness in securing the interests of one party or another could affect a court’s assessment of the balance of hardships associated with granting or denying early injunctive relief.
B. Other Factors in the Availability of Injunctive Relief
1. Sovereign Immunity
Under US law, both federal and state governments of the United States generally enjoy sovereign immunity from suit in US courts.Footnote 75 The US federal government has waived such immunity for suits for patent infringement, but only for purposes of permitting reasonable royalties, not injunctions against the government.Footnote 76 State governments also enjoy sovereign immunity with respect to allegations of patent infringement, but a suit against individual state government actors may be brought to seek an injunction against their continued violation of the federal patent laws.Footnote 77
2. Additional Grounds for Patent Unenforceability or Denial of Injunctive Relief
US patents are sometimes held to be unenforceable, with the result that no relief, injunctive or otherwise, is available for infringement.Footnote 78 For example, a US patent may be held unenforceable due to patent misuse, which can result from behavior in the nature of an antitrust violation or from behavior otherwise seeking to leverage patent rights beyond what courts have held to be the proper reachFootnote 79 – for example, certain activities involving “(1) requiring the purchase of unpatented goods for use with patented apparatus or processes, (2) prohibiting production or sale of competing goods, and (3) conditioning the granting of a license under one patent upon the acceptance of another and different license.”Footnote 80 But as a practical matter, patent misuse is rarely found in the application of US patent law,Footnote 81 the Federal Circuit having emphasized that the conduct has “narrow scope” and “is not available to a presumptive infringer simply because a patentee engages in some kind of wrongful commercial conduct, even conduct that may have anticompetitive effects” or in fact is proven to involve “an antitrust violation.”Footnote 82
Another basis for declaring a patent unenforceable is a finding of inequitable conduct in proceedings before the US Patent and Trademark Office.Footnote 83 Inequitable conduct can come in the form of affirmative misrepresentations but can also come from silence in the form of failures to disclose material prior art.Footnote 84 Relatedly, but distinctly, a patent may also be found unenforceable for “prosecution laches” – i.e., for “an unreasonable and unexplained delay in prosecution [of a patent application before the US Patent and Trademark Office (PTO)] even though the applicant complied with pertinent statutes and rules.”Footnote 85
Beyond bases for declaring a patent unenforceable, there are a variety of additional equitable grounds for denying injunctive relief or blocking suit by a patentee altogether. These include laches in the form of undue delay in bringing an assertion of patent infringement to the courts;Footnote 86 equitable estoppel from effectively inviting another party’s reliance on nonassertion of patent rights;Footnote 87 and unclean hands,Footnote 88 which blocks access to equitable relief in situations “where some unconscionable act of one coming for relief has immediate and necessary relation to the equity that he seeks in respect of the matter in litigation.”Footnote 89 On the other hand, parties are not generally restricted to relief specified in their pleadings.Footnote 90
3. Parallel Proceedings and Appeals
Courts may also choose to stay injunctive relief in light of relevant parallel proceedings, such as reexamination, other post-grant proceedings at the PTO, or an appeal, when such proceedings may result in a pertinent holding that, for example, relevant patent claims are invalid, unenforceable, or of insufficient scope to encompass an accused product or process.Footnote 91 In deciding whether to grant a stay pending appeal, courts apply a four-factor balancing test under which courts consider:
“ ‘(1) whether the stay applicant has made a strong showing that [it] is likely to succeed on the merits;
(2) whether the applicant will be irreparably injured absent a stay;
(3) whether issuance of the stay will substantially injure the other parties interested in the proceeding; and
(4) where the public interest lies.’ ”Footnote 92
Sliding-scale analysis applies to consideration of these factors: “When harm to applicant is great enough, a court will not require ‘a strong showing’ that applicant is ‘likely to succeed on the merits.’”Footnote 93 More specifically, the Federal Circuit has indicated: “To obtain a stay, pending appeal, a movant must establish a strong likelihood of success on the merits or, failing that, nonetheless demonstrate a substantial case on the merits provided that the harm factors militate in its favor.”Footnote 94 Instead of staying an injunction for the entire pendency of an appeal, a district court may delay the effective date of the injunction for a set time period – for example, “two weeks … to give the Court of Appeals an opportunity to consider any expedited appeal relating to the denial of the stay”Footnote 95 or ninety days so that an infringer’s merchant-clients have time to adapt their conduct in conformity with the injunction.Footnote 96
Under longstanding precedent, if the PTO cancels a patent claim, a court should refuse any injunctive relief based on that patent claim or dissolve an injunction previously based on that patent claim.Footnote 97 As the Federal Circuit has observed, “[i]t is well established that an injunction must be set aside when the legal basis for it has ceased to exist.”Footnote 98 The Federal Circuit has also held that, once a nonfinal injunction, whose validity was still pending, is set aside, civil contempt sanctions for violating that injunction must also be vacated.Footnote 99 In contrast, criminal contempt sanctions would remain enforceable despite the later setting aside of an injunction.Footnote 100
C. General Judicial Discretion to Tailor Injunctive Relief
United States patent law does not provide for automated compliance fines for patent infringement, and the Federal Circuit has held that courts are not authorized to provide backward-looking, reparative injunctions to remedy or mitigate past harms from patent infringement,Footnote 101 such as an injunction to destroy material originally manufactured in the United States in contravention of US patent rights but now only existing abroad with no prospect of future involvement in activity contrary to those same US patent rights.Footnote 102 Instead, patent-infringement injunctions are limited to serving the purpose of preventing future infringement.Footnote 103 But subject to these limitations and a procedural requirement that the scope of an order of injunctive relief be clear,Footnote 104 US trial courts generally have substantial discretion in crafting the details of injunctive relief, including the specific time at which an injunction will become effective.Footnote 105 The clarity requirement means, however, that courts are generally forbidden from issuing simple “do not infringe” orders.Footnote 106 Instead, injunctions must generally target specific products or processes plus variations no more than “colorably different” from them.Footnote 107
1. Timing
Consistent with restriction to the purpose of preventing infringement,Footnote 108 US injunctions based on patent infringement generally are available, and extend, only until a patent expires.Footnote 109 On the other hand, as noted above, US courts have discretion to stay injunctions when parallel or appellate proceedings might undercut the basis for the injunction.Footnote 110 A court might also stay an injunction or otherwise delay relief when such a delay will help prevent an injunction from imposing an undue burden on its target or from substantially harming the public interest.Footnote 111 Thus, for example, a US court might stay an injunction to permit an adjudged infringer or its customers time to implement a redesign for an infringing product or otherwise to alter course to avoid further infringement.Footnote 112 As when a permanent injunction is denied or an injunction is stayed pending appeal, the district court may order payment of a royalty for infringing activities for the remainder of the patent term or during the intervening time period, respectively.Footnote 113
2. Tailoring of Scope
The classic form for a patent-infringement injunction issued by a US district court is that of an order specifically enjoining an adjudged or accused infringer from continuing to engage in statutorily specified activities (e.g., making, using, or selling) with one or more particular products or processes that the court has determined to be infringing or with respect to which, in the preliminary injunction context, the court has found there to be no substantial question as to infringement.Footnote 114 According to Federal Circuit precedent, a patent-infringement injunction is generally not supposed to be an “obey the law” injunction, in this case a bare order that its target not violate the patent laws, not infringe one or more specified patents, or not infringe specified patent claims.Footnote 115 On the other hand, even an order that specifically forbids only activities involving a particular product or process is generally read to encompass activities involving products or processes no more than colorably different from that specified, and many injunctions explicitly extend their reach to this extent.Footnote 116 Moreover, where the trial record supports finding an injunction to be directed at particular products or processes, the courts may read a technically deficient “obey the law” injunction to have the classic scope, tying the injunction to particular products or processes reflected in the record.Footnote 117
Trial courts have discretion to tailor injunctive relief in ways that differ from the classic form. One catalog classifies various injunction variants as “(i) correlated-activity injunctions (type-C); (ii) destruction, disablement, or delivery injunctions (type-D); (iii) ‘reformulated-bounds’ injunctions (type-B); and (iv) moderated injunctions (type-M).”Footnote 118 A study of patent-infringement injunctions issued by US district courts in 2010 found that, among the over 140 injunctions identified, about 20 percent had a type-C aspect, about 5 percent had a type-D aspect, about 5 percent featured type-B tailoring, and about 3 percent had a type-M aspect.Footnote 119
A correlated-activity (type-C) injunction forbids “activities that overlap significantly, but not entirely, with activities that by themselves can constitute infringement.”Footnote 120 For example, some patent-infringement injunctions in the United States have prohibited the transport of infringing items or the display of images of infringing items even though these activities do not by themselves infringe patent rights.Footnote 121 Although technically reaching beyond the scope of patent rights to correlated activities, such “prophylactic” injunctions might advance interests in clarity and enforceability by encompassing activities that are commonly correlated with infringement.Footnote 122
A “destruction, disablement, or delivery” (type-D) injunction also technically reaches beyond patent scope by “requiring the destruction, disablement, or delivery [to another entity] of specified material.” Compliance with such an order necessarily eliminates a capacity to engage in further activities with such material that are noninfringing in themselves but that are often correlated with infringement. Thus, like an injunction forbidding correlated activities, an injunction ordering destruction, disablement, or delivery acts as a form of prophylactic order, promoting clarity and enforceability by technically demanding more than general background patent law requires. A court can, however, narrowly tailor a type-D injunction to focus its prophylactic effect: the court might issue an injunction that requires only the disablement or removal of a specified part or aspect of a particular product or process that the court has found to fall within a patent’s scope.Footnote 123
For a reformulated-bounds injunction, a district court may specify an injunction’s scope by defining the scope of products or processes implicated by an injunction in much the same way that a patent claim seeks to delineate a patent’s scope – i.e., by delineating technological specifications or features of the products or processes falling within the injunction’s scope.Footnote 124 For purposes of clarity, enforceability, protective effect, or equitable balance, these reformulated bounds might be broader or narrower than associated patent claims, and they might be broader on one dimension but narrower on another.Footnote 125 For example, an injunction issued by a US district court in 2010 prohibited standard forms of infringing activity (e.g., making or using in the United States) involving “a precast concrete block” that had “a recess or notch” satisfying a dimensional requirement – an explicit restriction on width – that did not appear in associated patent claim language and that presumably helped clarify the resulting injunction’s scope.Footnote 126
Finally, there are a variety of ways in which a court might design a moderated (type-M) injunction, one “that includes an explicit carve out for [a subset of] infringing (or likely infringing) behavior.”Footnote 127 A district court might “grandfather” certain already manufactured or already sold products, at least temporarily enabling their distribution, use, or support in order to protect the public interest or to prevent an injunction from imposing a disproportionate impact on an adjudged or accused infringer.Footnote 128 Likewise, a district court could limit an injunction so that it permits an infringer, upon paying a court-determined royalty, to continue to provide support, including replacement parts or other “consumables,” for systems already sold to customers.Footnote 129 Such a limitation could help protect a public interest in avoiding excessive disruption to the customers’ work or other activities.Footnote 130
3. Ongoing Royalties
Except in certain situations involving federally funded inventions, the United States Patent Act does not make general provision for compulsory licensing of patent rights.Footnote 131 Nonetheless, in lieu of an injunction forbidding specified activities or in association with the stay of such an injunction, a district court may provide a remedy that can operate as a sort of case-specific compulsory license: specifically, the court may order the payment of “ongoing royalties” for continuing activity that would otherwise constitute infringement involving products or processes adjudged to infringe or to be no more than colorably different from those adjudged to infringe.Footnote 132 Indeed, the availability of such relief may support a court’s holding that an injunction forbidding continued infringement is unwarranted because the patent owner’s interests may be adequately protected through a combination of backward-looking damages and forward-looking ongoing royalties.Footnote 133 The Federal Circuit has indicated that, before ordering a court-set ongoing royalty, a trial judge should first “instruct the parties to try to negotiate” one.Footnote 134 Further, an ongoing royalty should not be awarded if already-provided monetary relief covers all found or expected “damages for past, present, and future infringement,” as when a jury calculates a lump-sum royalty for all activities involving infringing subject matter for the duration of the patent term.Footnote 135
There has been some question in the United States of whether a court should specify a rate for an ongoing royalty that is higher than necessary to compensate the patent owner, presumably on grounds that continuing infringement by an adjudged infringer is necessarily willful and therefore properly subject to enhanced damages.Footnote 136 This reasoning and the associated practice have been criticized on grounds that the adjudged infringer might, through sunk investments, have become effectively “locked into” a course of infringing conduct and thus have become unable to avoid continuing infringement without undertaking undue costs that might have been part of the very reason for denying an injunction against infringement itself.Footnote 137
On more solid ground, the Federal Circuit has indicated that “changed economic circumstances” might mean that the rate for an ongoing royalty should differ from the royalty rate that was the basis for a jury award of past damages.Footnote 138 For example, the post-verdict development of a “non-infringing alternative [that] takes market share from the patented products” might “justify the imposition of rates that were lower than the jury’s.”Footnote 139 Alternatively, analysis of standard factors for determining a reasonable royalty could justify “an ongoing royalty amount higher than the jury rate.”Footnote 140
D. Enforcement of Injunctions through Contempt Proceedings
In the United States, a party may be found in contempt of court for an “act which is calculated to embarrass, hinder, or obstruct [a] court in administration of justice, or which is calculated to lessen its authority or its dignity.”Footnote 141 Contempt may be civil or criminal, with civil contempts including “failure to do something which a party is ordered by the court to do for the benefit or advantage of another party to the proceeding before the court,” whereas a criminal contempt is “an offense against the dignity of the court” itself, “such as willful disobedience of a lawful writ, process, order, rule, or command of court.”Footnote 142 Hence, if violation of a court’s injunction is willful, it could be a basis for both civil and criminal contempt proceedings. In patent-infringement cases, US district courts have authority to enforce injunctions through contempt proceedings in which they may impose monetary sanctions, more burdensome injunctions, coercive imprisonment to bring about compliance, and even punitive criminal penalties.Footnote 143 Criminal penalties are rarely imposed, however, perhaps in large part because of the added costs of criminal procedure.Footnote 144 Moreover, even civil contempt proceedings appear to be relatively rare.Footnote 145
E. Conclusion
The United States’ context-sensitive approach to injunctive relief leaves trial judges with substantial discretion but also demands certain findings relating to inadequacy of legal remedies, the balance of hardships between the plaintiff and defendant, and the public interest before such relief is awarded. The courts enforce a demanding requirement of likelihood of success before a preliminary injunction may issue. Trial judges appear to have especially wide discretion in tailoring the timing and scope of injunctive relief, and such tailoring can mitigate potentially disproportionate effects or other negative social impacts from a court’s injunction against further infringement. Although the eBay decision’s disruption of courts’ prior approaches to injunctive relief has invited criticism, the resulting rearticulation of the law on injunctive relief has highlighted how many doctrinal tools can be used to guide the deployment of this remedial option – from the substantive showings demanded of proponents or opponents of such relief, to presumptions and burdens of proof associated with those required showings, to the room for structuring a specific injunction so that it better serves the ends that patent law is meant to advance. Even if a jurisdiction rejects use of one of these tools – for example, by choosing to issue injunctions essentially automatically after a final judgment of patent infringement – that jurisdiction might still improve its performance through wise deployment of another – such as the judicious use of stays to prevent disproportionate hardship to the infringer or even widespread social harm from a more immediately effective order.
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