As a result of 的Supreme Court’s decision 易趣 Inc.诉MercExchange,L.L.C., a patentee no longer can expect an automatic grant of a permanent injunction after patent infringement and validity is established. Instead, 的patentee must satisfy a four-factor test by demonstrating that (1) it has suffered an irreparable injury; (2) remedies available at law (例如。, money damages) are inadequate to compensate for 的injury; (3) 的balance of hardships between 的plaintiff and 的defendant warrants a remedy; and (4) 的public interest would not be harmed by a permanent injunction.

Though this test makes it more difficult for 的patentee to get relief, 的Federal Circuit’s 2008年12月30日, 敏锐的 LLC v. Striker Corp. et al,2008 WL 5397567证明,即使在相对较近的情况下,专利权人将专利许可给其他主要竞争者,专利权人也可以获得永久禁令。 2004年,总部位于新泽西州的小型骨科技术公司Acumed向美国俄勒冈州地方法院提起诉讼,起诉Stryker(世界上最大的骨科医疗技术公司之一)侵犯了美国专利5,462,444 ("the ‘444 patent"), which is directed to a type of orthopedic nail used to treat upper arm bone fractures. A jury ruled in favor of 敏锐的, and 的Court granted a permanent injunction. During Stryker’s appeal to 的Federal Circuit, 的Supreme Court issued 的易趣 decision. In view of this decision, 的Federal Circuit remanded 的permanent injunction issue to 的District Court for reconsideration.

After hearing additional evidence and applying 的易趣 test, 的District Court granted 敏锐的’s motion for permanent injunction, and Stryker again appealed to 的Federal Circuit. 联邦巡回赛 reviewed 的lower court’s decision for abuse of discretion and affirmed for 的following reasons:

1) 敏锐的’s prior licenses of 的‘444项专利与声称存在不可弥补的损害并且在法律上缺乏适当补救的主张没有矛盾。 联邦巡回赛 found that 的District Court did not abuse its discretion by finding that 敏锐的 suffered irreparable harm from lost market share, and further that 敏锐的’s previous decisions to license 的‘444 patent to two large competitors did not necessarily mean that an adequate remedy at law existed. Indeed, 的Federal Circuit noted that 的"essential attribute of a patent grant is that it provides a right to exclude competitors from infringing 的patent," and "adding a new competitor to 的market may create an irreparable harm that 的prior licenses did not." 2008 WL 5397567, at *3.

2) 艰辛的平衡s tips in favor of 敏锐的 due, in large part, to 的relative sizes of 的parties and 的importance of 的patented product to 敏锐的. Stryker argued that a non-commercial straight nail proffered by 敏锐的 as an alternative to 的patented product was not an acceptable alternative, and noted that a permanent injunction enjoining Stryker’s use of 的patented product would create a hardship for its customers and patients. 联邦巡回赛 agreed with 的District Court’但是,请注意"the effect 上 customers and patients . . . is irrelevant under this prong of 的injunction test." ID。 at *4. 联邦巡回赛 approved of 的District Court’s analysis, which focused 上 的facts that (1) 敏锐的 is much smaller than Stryker, and (2) 敏锐的’的专利指甲是它的"flagship product."联邦巡回赛打折史赛克’s arguments regarding 的expenses incurred in designing and marketing 的infringing product, and 的feasibility of marketing 的alternative product.

3) 没有足够的证据表明史赛克’侵权产品比Acumed更安全’s patented product, so 的public interest would not be harmed by enjoining Stryker from selling its product. 联邦巡回赛 noted that 的District Court found that "Acumed初步显示出他们的螺丝钉工作正常。" ID。 在5。地方法院未找到Stryker’s public health argument persuasive, and 的Federal Circuit agreed.

联邦巡回赛 further found that 的District Court did not abuse its discretion by allowing 敏锐的 to present new evidence and arguments in its reply memorandum in support of its motion for a permanent injunction. These arguments and evidence were presented in response to new evidence presented by Stryker, and Stryker was given 的chance to respond at oral argument.

联邦巡回赛’s decision in 敏锐的 LLC v. Stryker Corp. et al. 结束时确认这是一个"close case, especially with regard to 的irreparable harm and lack of adequate remedy at law prongs of 的four-factor test, in view of past licenses having been granted, and 的public interest prong, in light of testimony that 的accused product was a medically superior 上 e." ID。 at *6. Nevertheless, 的敏锐的 该决定表明,基于这些事实,可以实现永久性禁令。


作者:

丽贝卡·汉诺维斯(Rebecca L.

(858)720-7413

[email protected]