holding that a plaintiff seeking a permanent injunction in a patent action must show: "(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetaiy damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction”
How later courts described this case
- holding that a plaintiff seeking a permanent injunction in a patent action must show: "(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetaiy damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction”
- explaining that, to obtain a permanent injunction, a “plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction”
- holding in a patent case that district courts may not “replace traditional equitable considerations with a rule that an injunction automatically follows a determination that a copyright has been infringed,” and requiring courts to exercise their discretion "consistent with traditional principles of equity, in patent disputes no less than in other cases governed by such standards”
- finding that equitable principles require a showing of (1) “irreparable injury”, (2) “remedies available at law, such as monetary damages, are inadequate to compensate for that injury”, (3) a “balance of hardships between plaintiff and defendant” justify a remedy in equity, and (4) “public interest would not be disserved”
Written by the judges who cited it.
Later courts went against this
Questioned by Solmetex, LLC v. Dentalez, Inc., 150 F. Supp. 3d 100 (2015)
However, the validity of this rule was called into question by the Supreme Court’s decision in eBay Inc. v. MercEx-change, L.L.C., 547 U.S. 388, 393-94, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006);; see Voice of the Arab World, Inc., 645 F.3d at 32.
Questioned by Dalkita, Inc. v. Distilling Craft, LLC, 356 F. Supp. 3d 1125 (2018)
As plaintiff acknowledges, however, the U.S. Supreme Court in eBay Inc. v. MercExchange, L.L.C. , 547 U.S. 388, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006), called into doubt the continued validity of a presumption of irreparable harm in intellectual property cases.
Questioned by Tillery v. Leonard & Sciolla, LLP, 437 F. Supp. 2d 312 (2006)
L.L.C., - U.S. -, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006), casts doubt on the continued validity of this principle.
The opinion
Chief Justice Roberts,
with whom
Justice Scalia and Justice Ginsburg join, concurring.
I agree with the Court’s holding that “the decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that such discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases *395 governed by such standards,” ante, at 394, and I join the opinion of the Court. That opinion rightly rests on the proposition that “a major departure from the long tradition of equity practice should not be lightly implied.” Weinberger v. Romero-Barcelo, 456 U. S. 305, 320 (1982); see ante, at 391.
From at least the early 19th century, courts have granted injunctive relief upon a finding of infringement in the vast majority of patent cases. This “long tradition of equity practice” is not surprising, given the difficulty of protecting a right to exclude through monetary remedies that allow an infringer to use an invention against the patentee’s wishes— a difficulty that often implicates the first two factors of the traditional four-factor test. This historical practice, as the Court holds, does not entitle a patentee to a permanent injunction or justify a general rule that such injunctions should issue. The Federal Circuit itself so recognized in Roche Products, Inc. v. Bolar Pharmaceutical Co., 733 F. 2d 858, 865-867 (1984). At the same time, there is a difference between exercising equitable discretion pursuant to the established four-factor test and writing on an entirely clean slate. “Discretion is not whim, and limiting discretion according to legal standards helps promote the basic principle of justice that like cases should be decided alike.” Martin v. Franklin Capital Corp., 546 U. S. 132, 139 (2005). When it comes to discerning and applying those standards, in this area as others, “a page of history is worth a volume of logic.” New York Trust Co. v. Eisner, 256 U. S. 345, 349 (1921) (opinion for the Court by Holmes, J.).