Scope Of Injunction

  • BASICS: Court “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.” 35 U.S.C. § 283. Improper to enjoin foreign sales of infringing units already exported, where little risk they will be imported. Spine Solutions (Fed. Cir. 09/09/10). Where infringement caused by one add-in module of larger software offering, defendant should not be enjoined from activities as to non-accused parts of the offering. Versata I (Fed. Cir. 05/01/13).
  • May Prohibit Infringement By Devices “Not More Than Colorably Different” From Adjudicated Devices: Patent infringement injunctions may prohibit “‘infringement of the patent by the adjudicated devices and infringement by devices not more than colorably different from the adjudicated devices.’” United Construction (Fed. Cir. 12/15/16) (aff’g default judgment and scope of injunction).
  • Must Be More Specific Than Prohibiting Infringement: “Injunctions simply prohibiting future infringement of a patent do not meet the specificity requirements of Rule 65(d).” Macom Tech. (Fed. Cir. 02/07/18) (contractual claim context but citing patent infringement cases).
  • May Enjoin Sale Of Product Where Use Likely To Infringe Method-Of-Use Claim: Blephex (Fed. Cir. 02/02/22) (aff’g preliminary injunction against use of product where product designed for infringing use and asserted non-infringing uses not sufficiently supported by evidence).
  • Related Or Abetting Party May Be Enjoined Also: A party not adjudged to be liable may be enjoined if it “either abet the [liable party], or [] be legally identified with him.” Asetek I (Fed. Cir. 12/06/16) (2-1), modified on other grounds, Asetek II (Fed. Cir. 04/03/17) (3-0) (vacating injunction and remanding for fact-intensive inquiry into whether supplier sufficiently “legally identified” with adjudicated infringer, including “the nature of the exclusivity relationship between the firms (g., its scope, its terminability); trademarks and other aspects of the two companies’ relations at relevant times; the origins of CMI and its relationship to Cooler Master; the details of and intent behind changes in the companies’ relations, particularly since liability was found in this case; and the companies’ relationship in the conduct of this litigation, in which products made by Cooler Master and carrying its brand name are at stake, both before and after Cooler Master was dismissed”).

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