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Existence of other licenses under patent does not preclude finding of irreparable harm

By McKee, Voorhees & Sease, P.L.C.

In a decision Tuesday, the Federal Circuit affirmed a district court's grant of a permanent injunction.  The district had previously granted a permanent injunction after a jury found willful infringement.  In a previous appeal, the Federal Circuit affirmed the finding of willful infringement, but vacated the permanent injunction because the district court did not consider the four-factor test mandated by the Supreme Court's decision in eBay v. MercExchange (which was decided while the appeal was pending).

On remand, the district court again granted a permanent injunction.  The Federal Circuit affirmed, holding there was no abuse of discretion, although it was a "close case."  The patentee had previously licensed the patent to two other parties (one as the result of settlement of a previous infringement suit), but the court held the existence of previous licenses did not mean an injunction could not issue.  Instead, it was one factor to consider among others when considering whether there is irreparable harm, including "the identity of the past licensees, the experience in the market since the licenses were granted, and the identity of the new infringer."  Finding no abuse of discretion by the lower court, on this or the other three factors, the Federal Circuit affirmed the injunction.

More detail of Acumed LLC v. Stryker Corp after the jump.

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Full post as published by FileWrapper on January 05, 2009 (boomark / email).