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Parkervision Inc. Message Board

  • overbrook10 overbrook10 Oct 26, 2013 6:26 PM Flag

    Injunction in this Case

    Seems like the next step here is post-verdict royalties with the possibility with an injunction. I am not a patent law attorney - just a trial attorney. So I did some research on this issue, and here is what I found:
    1) Prior to 2006, a injunction issued as a matter of course in patent suits where infringement was found because it was assumed that continued sale of infringing products constituted' irreparable harm"(one of the requirements for an injunction)

    2) That changed in 2006, in eBay v. MercExchange, 547 U.S. 388 (2006), where the Supreme Court held, among other things that irreparable harm could not be presumed in patent cases and had to be established. The result was that it became. much more difficult, although not impossible, to obtain an injunction.

    3) What to do, then, about post-verdict infringement? The court introduced the concept of "ongoing royalties." "While not an entirely new idea, many courts have awarded ongoing royalties since eBay. When infringement is found, and the court does not find an injunction appropriate, the defendant is permitted to practice the claimed invention. But district courts are setting an ongoing royalty rate to compensate for what amounts to a compulsory license to an infringer.

    4) Post-eBay, the Federal District has given a significant amount of discretion as to how and by whom the ongoing royalty rate will be determined - although the judge appears to be preferred.

    5) Post-verdict royalties are considered fundamentally different from pre-verdict royalties. Some District Courts have considered post-verdict infringement to be intentional, this permitting enhancement (doubling or tripling) post-verdict royalties

    6) The Federal Circuit has suggested giving the parties some time to negotiate a royalty, and if no agreement, then the District Court can impose a royalty.

    Sentiment: Strong Buy

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    • Overbrook -
      A very nice synopsis of the current state of the law. eBay has always bothered me because it turns on whether there is or is not irreparable injury. That follows the common law of the equitable remedy of injunction - if money damages are adequate to repair the injury no injunction issues. However, the injunction in patent cases does not rest on the common law of equitable remedies. The Constitution says (Article 1, Section 8) the Congress can pass laws "To promote the Progress of Science and useful Arts by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Inventions."
      So, did the Congress enact such a law? It did. 35 USC 154 (a) (1) states:
      "(1) CONTENTS.-Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof."
      The authority for an injunction in a patent case is not the common law of equity - it is Constitutional and statutory.
      Nonetheless, I think you described the context in which PRKR is asking for an injunction exactly right. I would be surprised to see an injunction.

    • Thanks for working on this.

      In the communications field injunctions that stop trade have become rare. A prime determinant is whether the sales compete directly with the infringed company. The principle is the 'irreparable harm' that can be caused because 'marketshare is king' to not just the sales of infringed products but sales in general.

      Recently Samsung sought a trade sanction/injunction against Apple. Apple was granted a stay. Then Apple sought a trade sanction against a few Samsung devices and S has requested a stay but I don't think the ITC granted it (yet).

      The principle of requiring payment of court determined ongoing royalties is well established... without stoppage of trade. The court can require the party to disclose their sales, sometimes to an outside accounting firm, and the company to make payments on a scheduled basis. This can be subject to review: for instance if the party produced a new design that they claim does not infringe, the court could be requested to hold a hearing on the merits, usully as refined in the prior rulings.

      What licensors often strive for is collaboration on future designs so they don't get designed out or get usd in additional products. The licensee has to see that as a benefit.

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