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IP News

By Howard J. Shire and Joseph Mercadante
October 28, 2011

Federal Circuit Confirms That the Presumption of Irreparable Harm Has Been Cast Aside, Still Directs Entry of Injunction

On Oct. 13, 2011, the Federal Circuit issued its opinion in Robert Bosch LLC v. Pylon Manufacturing Corp., Case No. 2011-1096. In the underlying lawsuit concerning wiper blade technology, a jury found that Pylon infringed several valid claims of the Bosch patents-in-suit. Despite the jury's infringement finding, the district court denied Bosch's motion for a permanent injunction against Pylon, a Bosch competitor in the wiper blade market, concluding that Bosch failed to show it would suffer irreparable harm if Pylon was not enjoined. Slip Op. at 4.

On appeal, the Federal Circuit reversed, holding that the district court “made a clear error in judgment in its analysis of the irreparable harm factor.” Id. at 13. The district court erred by denying the injunction based on the fact that there were more than two competitors in the relevant market and that windshield wipers are a non-core business for Bosch. The Federal Circuit found that even though there were multiple competitors in the market, Bosch provided overwhelming evidence that parties were in direct competition with one another, that Bosch had lost market share as a result of such competition, and that Pylon lacked the ability to satisfy a large money judgment. Id. at 13-14.

In articulating the standard of review, the court took the opportunity to clarify the law of injunctive relief, which had been in a state of flux since the Supreme Court's decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006). Since that decision, district courts have been confused as to whether a presumption of irreparable harm attaches when a party shows a likelihood of success on the merits. The Federal Circuit held that “eBay jettisoned the presumption of irreparable harm as it applies to determining the appropriateness of injunctive relief.” Slip Op. at 10. However, the opinion makes clear that, even absent the presumption of irreparable harm, when a plaintiff actually works its patents and competes with the infringer, an injunction should typically issue.

Judge William C. Bryson filed a partial dissent, agreeing that the district court had erred in its injunction analysis, but stating that he would have remanded the case to the district court to evaluate factual issues relating to competition between the parties.

Howard J. Shire is a partner and Joseph Mercadante is an associate in the New York office of Kenyon & Kenyon LLP.

Federal Circuit Confirms That the Presumption of Irreparable Harm Has Been Cast Aside, Still Directs Entry of Injunction

On Oct. 13, 2011, the Federal Circuit issued its opinion in Robert Bosch LLC v. Pylon Manufacturing Corp., Case No. 2011-1096. In the underlying lawsuit concerning wiper blade technology, a jury found that Pylon infringed several valid claims of the Bosch patents-in-suit. Despite the jury's infringement finding, the district court denied Bosch's motion for a permanent injunction against Pylon, a Bosch competitor in the wiper blade market, concluding that Bosch failed to show it would suffer irreparable harm if Pylon was not enjoined. Slip Op. at 4.

On appeal, the Federal Circuit reversed, holding that the district court “made a clear error in judgment in its analysis of the irreparable harm factor.” Id. at 13. The district court erred by denying the injunction based on the fact that there were more than two competitors in the relevant market and that windshield wipers are a non-core business for Bosch. The Federal Circuit found that even though there were multiple competitors in the market, Bosch provided overwhelming evidence that parties were in direct competition with one another, that Bosch had lost market share as a result of such competition, and that Pylon lacked the ability to satisfy a large money judgment. Id. at 13-14.

In articulating the standard of review, the court took the opportunity to clarify the law of injunctive relief, which had been in a state of flux since the Supreme Court's decision in eBay Inc. v. MercExchange, L.L.C. , 547 U.S. 388, 391 (2006). Since that decision, district courts have been confused as to whether a presumption of irreparable harm attaches when a party shows a likelihood of success on the merits. The Federal Circuit held that “eBay jettisoned the presumption of irreparable harm as it applies to determining the appropriateness of injunctive relief.” Slip Op. at 10. However, the opinion makes clear that, even absent the presumption of irreparable harm, when a plaintiff actually works its patents and competes with the infringer, an injunction should typically issue.

Judge William C. Bryson filed a partial dissent, agreeing that the district court had erred in its injunction analysis, but stating that he would have remanded the case to the district court to evaluate factual issues relating to competition between the parties.

Howard J. Shire is a partner and Joseph Mercadante is an associate in the New York office of Kenyon & Kenyon LLP.

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