There are a variety of legal remedies that inventors can use to protect their creations, but a patent injunction is one of the most effective. Such an order given by a judge carries the weight of the law, and the violation of an injunction can result in both civil and criminal penalties.
The goal of any injunction is to immediately stop a specified behavior. Unfortunately, securing a patent infringement injunction isn’t as simple as it used to be. Case law has removed certain assumptions that once worked to the benefit of patent owners, and this means plaintiffs must be diligent in proving an injunction should issue.
What is a Patent Injunction?
A patent injunction is a court order issued by a judge that instructs a party to end all allegedly infringing activities immediately. Any additional breach once this order has been issued is considered contempt of court.
The following are the two forms of patent injunctions:
- Preliminary: This is a temporary order that a patent owner can request at the beginning of a trial. It serves to protect the status quo and prevent further potentially infringing actions. If patent infringement is occurring, this will avert further loss on the part of the plaintiff until the case’s final disposition.
- Permanent: A judge can convert a preliminary patent injunction into a permanent injunction or issue one later in the case.
Patent litigation can be a time-consuming process. This means it could take years before an infringer is ordered to end their behavior. In the world of patent infringement – where protection only lasts 15-20 years – this can result in significant financial loss. Fortunately, it is possible to seek a temporary remedy – a preliminary injunction – prior to trial. A permanent patent injunction can only come at the summary judgment phase or at trial after more evidence has come to light.
There are several requirements for a preliminary patent injunction to be issued, but one of the most important is a plaintiff’s likelihood of success based on the merits of their case. This is also typically one of the most fiercely contested issues at the initial hearing. The same requirement must be met for copyright and trademark injunctions, but due to a patent’s claims, the issues are a bit more complex. Federal courts see around 3,000 lawsuits related to patent infringement every year, and many of the cases either begin or end with an injunction.
To prove they’re likely to succeed in court, a judge must determine the scope of the patent’s claims. If a defendant asserts that it has not utilized every aspect of at least one claim, then success on the merits is not likely and no injunction should issue. Defendants can also contend that the patent in question is invalid and should not have been granted in the first place. In either of these situations, a plaintiff’s ability to get a preliminary injunction could be diminished.
Several outcomes may occur after the issuance of a preliminary injunction:
- Plaintiff wins the case and the preliminary injunction becomes permanent.
- Defendant wins and the temporary injunction is dissolved.
- The defendant can seek monetary recovery in many cases.
- Plaintiff wins the case, but the preliminary injunction is dissolved.
- Courts may feel that other legal remedies are better suited.
In most cases when a temporary injunction is issued, the plaintiff must post a bond for potential damages that the defendant may encounter. This bond is the monetary recovery the alleged infringer may be eligible for if they’re not found liable. The bond is meant to ensure the accused party is made whole if it’s proven that their actions weren’t infringing.
In addition to stopping infringement immediately, there are other benefits to securing preliminary injunctions. One advantage is that the plaintiff is in a better position to negotiate a consent judgment that ends the case in their favor. Costs may also be reduced if the defendant doesn’t continue with the trial after such an order. For interested patent owners, this can also secure a better licensing agreement.
Patent owners should also consider the potential disadvantages of their request being denied:
- Defendant may feel justified and fight harder in court.
- Premature impressions may be formed by the denying judge.
- Time and resources will have been wasted seeking the injunction.
The potential also exists that a plaintiff may not be able to afford the bond set by the ruling judge if their patent injunction is granted. If you’re facing substantial loss due to infringement, though, none of these issues should be deterring. A permanent injunction can take months – or even years – to be issued. Seeking a temporary solution may be the only way to immediately protect your rights.
Patent Injunction Elements
Filing a lawsuit claiming infringement has occurred isn’t enough to secure an injunction. There are several patent injunction elements that must be met before a judge will issue such a ruling. While these components are similar for temporary and permanent orders, there are some variations.
Preliminary Injunction Elements
- Has a reasonable likelihood that the plaintiff will succeed based on the merits of the case been established (i.e. is the patent valid and being infringed)?
- Could the plaintiff face irreparable harm without the injunction being issued?
- Is the potential harm to the plaintiff outweighed by the defendant’s harm if an injunction is issued?
- Would the issuance of an injunction serve the public interest?
The public interest element is often overlooked – unless the defendant attempts to assert it – since upholding valid patents is typically weighed to be more crucial than other factors. The most important element is typically whether the plaintiff is likely to succeed on the merits. In fact, courts will often presume that a showing of probable success is enough to prove potentially irreparable harm.
The presumption of irreparable harm isn’t guaranteed, though, since the Federal Circuit found that plaintiffs must have a “strong showing” that their claim is likely to succeed. The court in question will have to consider whether your proof is “strong.” This means it’s important that you prepare evidence showing the potential for irreparable harm even if you have a solid case.
Permanent Injunction Elements
- Irreparable injury has occurred.
- Monetary damages are inadequate for remedying this harm.
- The balance of hardships weighs in favor of the patent registration
- The permanent order wouldn’t disservice the public interest.
If a permanent patent injunction is issued, the defendant is forever enjoined from further infringing actions.
Other Patent Infringement Remedies
Patent injunctions are powerful tools for protecting intellectual property rights, but they’re far from the only legal remedy available. An injunction isn’t enough to make a plaintiff whole in all cases, and in some instances, the court may not even grant one. Patent litigation is all about putting the patent owner where they’d be had infringement not occurred. This makes the following remedies possible.
Seizure, Impounding and Destruction of Goods
In many cases, infringers have an inventory of infringing products on hand when they’re given an injunction. The existence of these goods creates the potential that they’ll be used illegally. Fortunately, a court can require that any remaining goods be destroyed, seized or impounded. This typically results in only the patent owner’s products remaining available.
Financial compensation is a common legal remedy for those who have experienced patent infringement. This helps the patent owner recoup some of the money they lost due to the unauthorized use of the invention. The amount of this award can be decided in two ways, and the eventual method will be based largely on the amount of available evidence.
- Reasonable royalties: Courts can calculate an award based on a fictional licensing agreement between the plaintiff and defendant. By taking evidence such as prior licensing agreements, value of assets and other factors into account, they can decide what an appropriate amount would’ve been had the infringer been licensed to use a product or process.
- Lost profits: Courts may also grant compensation based on the actual profits the plaintiff lost. While this will typically result in higher awards, it’s also a more difficult ruling to secure. This is because it’s necessary to show a direct causal link between lost profits and the infringing activities.
Regardless of the method used to determine compensation, the plaintiff may be eligible for increased damages if patent infringement is shown to be willful. This is a high evidentiary standard to meet, but if it’s done, the defendant may have to pay up to three times the initial award. The courts aren’t required to use enhanced damages, but they have the option to.
Infringers who knowingly use a design patent in order to profit can also face increased damages. Courts may require them to pay all their profits to the plaintiff.
Temporary Restraining Order
Preliminary patent injunctions offer a way to end infringement before the time-consuming litigation process. Unfortunately, it can still take a few weeks before an order issues. This is because a defendant must be informed of the request and then given the opportunity to contest the injunction in court. One temporary stopgap measure is seeking a temporary restraining order (TRO) before the hearing.
A TRO does not last very long. It’s only meant to stop potentially infringing activities until a proper hearing regarding a preliminary injunction can take place. The average temporary restraining order will expire within two weeks.
Cease and Desist Letter
Prior to going the litigation route, it may be beneficial for a patent owner to consider sending a patent cease and desist letter. While this may seem like a less effective option, these legal notices have been partially credited with more than 97 percent of these cases staying out of courtrooms.
For a cease and desist letter to be effective, though, it’s important that it come from a law firm that litigates patent infringement cases. That way the defendant must take the letter seriously since it will know that litigation is very likely in the event of non-compliance.
By constructing an appropriate cease and desist, the defendant will find it difficult to claim that they were unaware that their actions may have been infringing. In many cases, this results in the cessation of the activities. A patent injunction can be a powerful weapon, but achieving the same result without stepping into a courtroom is often preferable.
If you are involved in a patent infringement issue that may involve a patent injunction, please contact as soon as possible so that we can help.