Courts

Courts recognize that injunctions are rarely appropriate.

  • Judge Rodney Gilstrap in the E.D. Texas recently addressed a prayer for an injunction in the context of FRAND negotiations.  Ericsson had proposed a license to HTC for cellular SEPs, but the parties couldn’t agree on terms.  The jury found that Ericsson had complied with its FRAND obligation but failed to negotiate a FRAND license in good faith.  Judge Gilstrap declined to grant Ericsson an injunction on the basis that (i) damages were an available remedy and (ii) Ericsson’s bad faith in the negotiations precluded equitable relief. HTC Corp. v. Telefonaktiebolaget LM Ericsson, et al., Civ. No. 6:18-CV-00243 (E.D. Tex., May 22, 2019).

  • Judge Joseph Bataillon in the D. Delaware addressed relief for post-judgment sales of infringing products.  There, the plaintiff’s patent was deemed to be essential to the LTE standard.  Because the defendant’s non-accused LTE products were “not colorably different” from the accused products, the court determined that those products would also infringe.  The court recognized that plaintiff “would ordinarily be entitled to an injunction against continued infringement,” but, “[b]ecause an injunction is not generally appropriate in an action involving a SEP, the patentee is instead entitled to an ongoing royalty.”  Godo Kaisha IP Bridge 1 v. TCL Communication Tech., et al., 2019 WL 1877189 (D. Del., Aril 26, 2019).

  • Judge Susan Illston in the N.D. California recently issued a detailed opinion addressing a permanent injunction request after a finding of patent infringement. The plaintiff licensed its patent to third parties who competed with the defendant.  The court denied the plaintiff’s request for a permanent injunction based on its findings that (i) the plaintiff did not compete with the defendant, (ii) royalties were an adequate form of compensation, (iii) an injunction would decimate the defendant’s business, and (iv) the public interest might be disserved by enjoining the defendant.  Verinata Health, Inc., et al. v. Ariosa Diagnostics, Inc., et al., 329 F. Supp. 3d 1070 (N.D. Cal. 2018).