[This is the sixth in a series of postings regarding the various proposals in the Patent Act of 2005.]


And we’re back to the original law in this match of patent reform ping-pong. (35 U.S.C. § 283 mandates that the courts 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). The pro-defendant proposal, which was removed in the latest round of amendments, would have required a court to consider the fairness of an injunction in light of all the facts and the relevant interest of the parties by codifying that “an injunction may be stayed pending appeal upon … showing that the stay would not result in irreparable harm to the patent owner.” It sought to overturn a recent ruling by the Court of Appeals for the Federal Circuit (CAFC). (MercExchange, L.L.C. v. eBay, Inc. et al., (CAFC – Docket No. 03-1600, March 16, 2005)).

In that case, MercExchange challenged the district court’s refusal to enter an injunction against the defendant. Courts may decline to enter an injunction when such a refusal may serve the public interest, such as the need to use an invention to protect the public health. But the CAFC did not feel that sufficient public interest was served by the “growing concern over the issuance of business method patents.” Neither was the CAFC persuaded by the District Court’s fear that an injunction would result in continuing disputes over whether the defendants’ subsequent actions would also violate MercExchange’s rights – that is, create more work for them.

Injunctions are further not reserved for patentees who intend to practice their patents, as opposed to those who choose to license (not so affectionately called patent trolls). The statutory right to exclude is equally available to both groups. The CAFC ruled that courts should issue permanent injunctions against patent infringement absent exceptional circumstances.

Stay tuned, the Supreme Court may beat the legislature to a decision on this issue as they just granted cert for this case. (MercExchange, L.L.C. v. eBay, Inc. et al., (CAFC – Docket No. 03-1600, March 16, 2005), cert granted, (No. 05-130), November 28, 2005.)

Previous: Part 5. Apportionment of Damages for Infringement in the Case of a Combination.
Next Up: Part 7. Continuation Applications.

Today’s post comes from Guest Barista Ria Schalnat, a registered patent attorney in Frost Brown Todd’s Cincinnati office.

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