Work Around Windows As a Defense to an Injunction
Historically, once a plaintiff showed that it was likely to prevail on the issues of infringement and validity in a patent case, it was almost a sure thing that the Court would grant a preliminary injunction against the infringer. Last year year in Ebay v. MercExchange, the Supreme Court cast some doubt on whether patent owners are entitled to an injunction as a matter of right. (This position is a little odd in that the U.S. Constitution specifically mentions granting inventors exclusive rights to their inventions for a period of time.)
In its decision last week in the Verizon/Vonage litigation, the Court of Appeals for the Federal Circuit appeared to open the door a little wider for exceptions to the general rule regarding preliminary injunctions. The Court of Appeals seemed to indicate that where the injunction could put the defendant out of business, the Court may award a period of time for the defendant to develop or implement a work around that would not infringe. Specifically, the Court noted in a foot note:
"One factor that is relevant to the balance of the hardships required by the Supreme Court's decision in eBay was not considered by the district court, namely whether the district court should have allowed time for Vonage to implement a workaround that would avoid continued infringement of the '711 patents before issuing its injunction. Verizon had a cognizable interest in obtaining an injunction to put an end to infringement of its patents; it did not have a cognizable interest in putting Vonage out of business. However, as Verizon points out, Vonage made no request for a workaround period to the district court, and Vonage has already had several months since the district court's judgment to implement a workaround."
If you are facing a motion for a preliminary injunction, you will probably be arguing that the injunction would be unduly burdensome. Why not throw in a request for a work around period to minimize the harm?
Of greatest concern is that the Courts seem to be killing the former principle that a defendant cannot avoid an injunction due to the harm created by the defendant building its business on an infringing product or process. Ironically, the Courts may actually be rewarding those who intentionally make infringement part of their business model.
In its decision last week in the Verizon/Vonage litigation, the Court of Appeals for the Federal Circuit appeared to open the door a little wider for exceptions to the general rule regarding preliminary injunctions. The Court of Appeals seemed to indicate that where the injunction could put the defendant out of business, the Court may award a period of time for the defendant to develop or implement a work around that would not infringe. Specifically, the Court noted in a foot note:
"One factor that is relevant to the balance of the hardships required by the Supreme Court's decision in eBay was not considered by the district court, namely whether the district court should have allowed time for Vonage to implement a workaround that would avoid continued infringement of the '711 patents before issuing its injunction. Verizon had a cognizable interest in obtaining an injunction to put an end to infringement of its patents; it did not have a cognizable interest in putting Vonage out of business. However, as Verizon points out, Vonage made no request for a workaround period to the district court, and Vonage has already had several months since the district court's judgment to implement a workaround."
If you are facing a motion for a preliminary injunction, you will probably be arguing that the injunction would be unduly burdensome. Why not throw in a request for a work around period to minimize the harm?
Of greatest concern is that the Courts seem to be killing the former principle that a defendant cannot avoid an injunction due to the harm created by the defendant building its business on an infringing product or process. Ironically, the Courts may actually be rewarding those who intentionally make infringement part of their business model.
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