The Supreme Court’s 2006 decision in eBay, Inc. v. MercExchange, LLC, 126 S. Ct. 1837 (2006), continues to reverberate, with the Federal Circuit applying it just last month to vacate and remand a permanent injunction granted under the previous “general rule” of patent cases. Under that rule, courts would issue injunctions against patent infringement absent circumstances justifying the denial of injunctive relief. In eBay, the Supreme Court held that it is inappropriate to automatically issue an injunction following a finding of patent infringement. Instead, the Supreme Court held that a request for injunctive relief in patent cases is only available if the elements of the traditional four-factor test for injunctive relief are established. In Acumed, LLC v. Stryker Corp., 483 F.3d 800 (Fed. Cir. 2007), after affirming findings of infringement, and willfulness, the Federal Circuit reversed the district court’s decision to grant a permanent injunction. The district court’s decision to issue a permanent injunction had been made before the Supreme Court articulated its new standard for injunctive relief in patent cases. The Federal Circuit rejected Acumed’s argument that the facts underlying the district court’s finding of infringement and willfulness could serve as independent support for the injunction, concluding that making such a determination on appeal would require the appellate court to “weigh the evidence ourselves to reach a conclusion on injunctive relief.”
Acumed is only the latest case to demonstrate the wide-reaching effect that the eBay decision continues to have on patent infringement jurisprudence. Those who have injunctions in place should be wary of challenges under eBay, as Acumed signals the unwillingness of the Federal Circuit to affirm the granting of injunctions by applying the Supreme Court’s rule during an appeal. Moreover, it makes every injunction issued under the previously-existing “general rule” of patent cases vulnerable to reconsideration, and clarifies that evidence separate and independent from that supporting the infringement will be necessary to support the injunction. The resonating message sent by Acumed is that the appellate courts will not only apply eBay to require that there be evidence on the four factors before an injunction issued pre-eBay will be affirmed, but more importantly that the appellate court will not conduct an eBay analysis on appeal. The Federal Circuit’s conclusion in Acumed that evaluating the eBay factors in light of the evidence would be tantamount to weighing the evidence dictates that it cannot affirm any injunction issued prior to eBay, as no district court could have known to conduct the four-factor analysis prior to that time, and the Federal Circuit’s decision precludes it from doing so on appeal. Acumed signals that if injunctions granted in patent infringement cases under the former general rule are challenged on appeal, remand will be necessary for reconsideration of the issues by district courts.