The Interplay between Preliminary versus Permanent Injunctions

If a patentee plaintiff wins his patent infringement suit, he may not necessarily be awarded a permanent injunction against the defendant.  Of course, this seems somewhat strange, since the whole point of getting a patent (and disclosing the secrets of your patented subject matter) is that the patentee receives the exclusive right to make/use/sell/offer to sell/etc the patented subject matter, which implies that the patentee should be able to permanently enjoin any infringing use of his valid patent.  However, this idea was explicitly rejected in the Supreme Court’s eBay decision “eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).”   Prior to the Supreme Court’s holding in eBay, the Federal Circuit had held that as a “general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances.”  In the eBay holding, the Supreme Court overturned the Federal Circuit’s approach to permanent injunctions in patent cases and rejected the general rule.  The Court held that it did not find any statutory support for the differentiation of patent law cases from other cases.

Thus, after findings of patent infringement, courts analyze permanent injunctions under the rubric of the four factor test re-articulated in eBay, which specified that a plaintiff must establish all of the following: (a) irreparable injury/harm; (b) that the other remedies available (i.e., monetary damages) are inadequate to compensate the plaintiff for the harm he suffered; (c) after balancing the hardships to both parties, equity favors a decision for the plaintiff; and (d) public interest would not be harmed if a permanent injunction issued.  These four factors are similar to the four preliminary injunction factors with two exceptions.   First, the preliminary injunction analysis makes “inadequacy of other remedies” into a component of irreparable harm, whereas “inadequacy of other remedies” is its own requirement, wholly separate from irreparable harm, in the permanent injunction analysis.  The overlap between irreparable harm and (in) adequacy of other remedies makes this a technical distinction.   Second, the preliminary injunction analysis requires considering the plaintiff’s reasonable likelihood of success on the merits, whereas a permanent injunction is not even being considered until the plaintiff has won.

Apple's Motion for Preliminary Injunction Attempts to stop Samsung

Apple’s motion for preliminary injunction sought to prohibit Samsung from “making, using, offering to sell, selling within the US, or importing into the US” the infringing products.   These are the rights that every patentee holds over a valid patent.  In order to protect these rights, which are exclusive to the patentee, the patent must be both infringed and valid.  For example, if the defendant can successfully argue that the patent is invalid with clear and convincing evidence, then the patentee plaintiff has no rights over his patented subject matter, and the defendant’s “infringement” doesn’t matter. 

If the plaintiff has won a preliminary injunction but eventually goes on to lose the case, then the defendant has suffered an inequitable wrong.   One way to attempt to prevent such a wrong from taking place is for the courts to require the movant to show a “reasonable likelihood of success” on the merits.  The “reasonable likelihood of success on the merits” is the first of four requirements for preliminary injunctions, all of which must be proved by the movant in order to win. Correspondingly, “to establish a reasonable likelihood of success” in a patent infringement case, the movant “‘must show that it will likely prove infringement, and that it will likely withstand challenges, if any, to the validity of the patent.’” 

About the author: The Patterson Law Firm is a Chicago Law Firm that handles Business Litigation cases about has over 100 years of combined experience practicing law.