This presentation on recent developments in U.S. law governing injunctive relief and damages was presented to the Miami IP Summit in 2020, and focuses on federal case law from 2019.

1. DEVELOPMENTS IN
INJUNCTIVE RELIEF AND
DAMAGES (ESP. FOR SMEs)
Remedies Across IP Lines
INJUNCTIVE RELIEF AND
DAMAGES (ESP. FOR SMEs)
M a r c u s E v a n s I P S u m m i t ( 2 0 2 0 )
H a n n i b a l T r a v i s
F I U L a w

2. 1. Irreparable Injury
MercExchange v. eBay
2. No Adeq. Remedy at Law
3. Balance of Hardships Tips
4. Public Interest Support for Inj.

3. MercExchange v. eBay

4.  9th, 11th, and Fed. Cir.: YES
Are the Mercexchange
factors actually elements?
 Harm factor about two different
things:
 “1) that absent an injunction, [P] will suffer
irreparable harm, and 2) that a sufficiently
strong causal nexus relates the alleged harm
to the alleged infringement.” Apple Inc. v.
Samsung Elecs. Co. (Fed. Cir. 2012).

5.  A number of cases reject injunctive relief
based on irreparable injury alone.
MercExchange Elements
based on irreparable injury alone.
 e.g., SoClean Inc v. Sunset Healthcare Solutions (D.
Mass. 2020)
 Are lost sales a form of irreparable injury?
 Douglas Dynamic v. Buyers Prod. Co. (Fed. Cir.
2013) (YES); Canon v. Color Imaging, Inc. (N.D. Ga.
2019) (citing Douglas Dyn.)

6.  It may
 Can a party to an exclusive field of
Does “perceptual harm”
qualify as irreparable?
 Can a party to an exclusive field of
use/patent license enjoin design arounds
that create perception of non-exclusivity?
 Macom Tech. v. Infeon Tech. (Fed. Cir.
2018) (YES)

7.  Apparently not
 Texas Advanced Optoelectronic Solutions
Does pleading reasonable royalty
undermine irreparable injury?
 Texas Advanced Optoelectronic Solutions
v. Renesas Electronics Am. (Fed Cir. 2019)
 May still be "hard-to-measure harms, such
as impaired goodwill and competitive
position, … they are hard to quantify later
citing i4i v. Microsoft Corp. (2011)

8.  Yes, although one might think lost profits
could be shown
Are direct competitors different?
could be shown
 Texas Advanced Optoelectronic Solutions v.
Renesas Electronics Am. (Fed Cir. 2019)
(vacated denial based upon license/royalty
possibility)
 citing Acumed LLC v. Stryker Corp. (Fed. Cir. 2008) (affirming
permanent injunction, desp. Willingness to license other entities,
because “[a]dding a new [direct] competitor to the market may create an
irreparable harm that the prior licenses did not”).

9.  NOT that patentee “will likely need to lower
its prices in order to compete with the
What sort of evidence of irreparable
injury is “well developed”?
its prices in order to compete with the
[infringer]” which is 20% cheaper, if patentee
used to sell at the lower point, unless price
erosion given same sales channels etc. will be
“irreparable price erosion”
 SoClean Inc v. Sunset Healthcare Solutions (D.
Mass. 2020)

10.  NOT always enough
SoClean Inc v. Sunset Healthcare Solutions (D.
What if patentee will feel
pressure to cut advertising
or other investments to
remain profitable
during the fight?
 SoClean Inc v. Sunset Healthcare Solutions (D.
Mass. 2020)


11.  Not necessarily
Should P have to prove that
specific sales were lost?
 i4i (NO); Disney Enters. v. VidAngel,
Inc. (9th Cir. 2019) (NO)
 Perhaps P must, in a trademark case?
 Cloanto Corp. v. Hyperion Entmt. (W.D. Wash.
2019) (hearsay re lost sales insuff.)


12.  Probably
 Eagle View Technologies, Inc. v. Xactware
Is unwillingness to license
a plus factor?
 Eagle View Technologies, Inc. v. Xactware
Solutions, Inc. (D.N.J. 2019)
 What role for “distinctiveness and
market lure” as a result of infringement?
 Id. (part of a “combined effect”)

13.  Maybe
 Chanel, Inc. v. 8creplicachanel.com (S.D. Fla.
Is confusion itself capable of
demonstrating irreparable harm?
 Chanel, Inc. v. 8creplicachanel.com (S.D. Fla.
2019); Chanel, Inc. v. ReplicaChanelBag (S.D. Fla.
2019); Hortons USA, Inc. v. Tims Milner LLC
(S.D. Fla. 2019); Ready for the World Inc. v. Riley
(E.D. Mich. 2019))

14.  Not necessarily
 Canon v. Color Imaging, Inc. (N.D. Ga, 2019)
Does "causal nexus" requirement of Apple v.
Samsung (2015) mean there should be
no injunction when the infringer sells
or uses only a component of invention?
 Canon v. Color Imaging, Inc. (N.D. Ga, 2019)
(“some connection with consumer demand” is
sufficient, e.g. if feature makes D product
“significantly more desirable”); but see Eli Lilly v.
Perrigo (S.D. Ind. 2016)

15.  The “‘loss of market share and price
erosion are economic harms and are
Is direct competition a
red herring in injunction rulings?
erosion are economic harms and are
compensable by money damages’”.
 Sebela Int’l v. Actavis (D.N.J. 2016); Novartis v. Teva (D.N.J.
2007); Presido v. Am. Tech. Ceramics (S.D. Cal 2010)
 “Years after infringement has begun, it may be impossible to
restore a patentee's (or an exclusive licensee's) exclusive
position by an award of damages and a permanent injunction.”
Polymer Techs. v. Bridwell (Fed. Cir. 1996), cited in Presidio

16.  Maybe
 Because “‘any such depressed royalty rates caused
Is direct competition a
red herring in injunction rulings?
 Because “‘any such depressed royalty rates caused
by [D]'s infringement occurred in the past. Were [D]
to continue its operations subject to an ongoing
royalty, its licensed activities would not compel [P] to
grant any additional depressed-royalty licenses.... ”
 Hynix v. Rambus (N.D. Cal. 2009) (emphasis added)
 But see Commonwealth Sci. & Indus. Res. Org. v. Buffalo Tech.,
Inc. (E.D.Tex. 2007) (harm to R&D from others continuing to
infringe after D receives compulsory license via damages award)

17.  Not necessarily
 TEK Global, S.R.L. v. Sealant Systems International, Inc. (Fed.
Can lost profits award from a direct competitor
constitute an adequate remedy at law?
 TEK Global, S.R.L. v. Sealant Systems International, Inc. (Fed.
Cir. 2019) (testimony as to lost market share and patent
covering main product and co's namesake, and same evidence
repeated in balance of hardships); Canon v. Color Imaging (N.D.
Ga. 2018) (losses "not merely financial" suffice even if P licenses
patent to non-direct competitors)
 But see Safi Darrell Dona't v. Amazon.com (D. Colo. 2019)
(sales by competitor of unauthorized copies of book could be
compensable with damages)
 (citing Alpha & Omega Fin. Servs., Inc. v. Kesler, (D. Kan. Nov.
1, 2018) (conclusory damage to goodwill/reputation recited))

18.  not necessarily
Izabella HMC-MF, LLC v. Radisson Hotels (D.
If P is a TM licensee, does harm to goodwill
support an injunction if lost revenue is alleged?
 Izabella HMC-MF, LLC v. Radisson Hotels (D.
Minn, 2019) (citing Twentieth Century Fox
Film Corp. v. Marvel Enters., Inc. (2d Cir.
2002))
 But see Safi Darrell Dona't v. Amazon.com (D. Colo. 2019)
(sales by competitor of unauthorized copies of book could be
compensable with damages)
 citing Alpha & Omega Fin. Servs., Inc. v. Kesler, (D. Kan.
Nov. 1, 2018) (conclusory damage to goodwill/reputation
recited)

19.  not necessarily
 Siemens Postal … Logistics LLC v. Pteris Global (USA)
(W.D.N.C. 2019) ("Such opaque assertions are insufficient
Is a lost profits award less likely to be an
adequate remedy at law if D is foreign?
(W.D.N.C. 2019) ("Such opaque assertions are insufficient
to justify the strong medicine of injunctive relief.")
 But see Las Vegas Sands Corp. v. Fan Yu Ming (D. Nev. 2019)
(“[B]ecause [D] has no presence in the United States, it may be
difficult or impossible for NIKE to recover a money
judgment.…”) (quoting Nike v. Fujian)
 a defaulting or nonparticipating D exacerbates
this concern
 Las Vegas Sands, supra

20.  Well, "the companies’ relative sizes are not
dispositive. Moreover, while emphasizing that
If an SME infringes a giant
MNC's patent, does the balance of
hardships weigh against an injunction?
dispositive. Moreover, while emphasizing that
sales of Zero Gravity cars comprise only 0.5% of
[P]’s annual revenue, [D] has not provided
evidence on what percentage of its revenue is
attributable to the Radical Racers."
 Spin Master, Ltd. v. E. Mishan & Sons, Inc. (S.D.N.Y. 2019)

21.  We can’t “arm squirrels with bazookas”?
“‘A broad, far-reaching injunction barring defendant
If an MNC infringes a TM
of an SME, does the balance of
hardships weigh against an injunction?
 “‘A broad, far-reaching injunction barring defendant
[, a large company,] from selling shoes in any
manner connected to its Esprit mark would cost the
defendant millions. So far as the evidence shows, on
the other hand, plaintiff's business would be
virtually unaffected whether an injunction is granted
or denied.’”
 Uber Promotions v. Uber Technologies, (N.D. Fla. 2016)

22.  Not necessarily
Canon v. Color Imaging, Inc. (N.D. Ga, 2019) (citing
If “an injunction could significantly
impair and possibly destroy
Defendant's business,” should it be denied?
 Canon v. Color Imaging, Inc. (N.D. Ga, 2019) (citing
Whirlpool v. Global Purification, Inc. (E.D. Tex. 2017)

23.  not necessarily
 Canon v. Color Imaging, Inc. (N.D. Ga, 2019) (citing Whirlpool v.
If “an injunction could significantly
impair and possibly destroy
Defendant's business,” should it be denied?
 Canon v. Color Imaging, Inc. (N.D. Ga, 2019) (citing Whirlpool v.
Global Purification, Inc. (E.D. Tex. 2017)

24.  Does PI support a sunset provision to satisfy
existing customers and "customer platforms“, grant
What impact does public interest factor have?
existing customers and "customer platforms“, grant
more time to withdraw the infringing product)?
 Siemens Postal, Parcel and Airport Logistics LLC v. Pteris
Global (USA) Inc. (W.D. N.C. 2019)
 PI in low prices? “Reducing sales of cheaper,
infringing toy automobiles will not harm the public,
and [D] does not suggest that it will.”
 Spin Master, Ltd. v. E. Mishan & Sons, Inc. (S.D.N.Y.
2019)

25.  While “copyright law strives to spur the creation and diffusion
of free expression by granting authors… it hardly follows that
Is copyright different?
of free expression by granting authors… it hardly follows that
the public interest always favors granting injunctive relief or
that, in exercising its remedial discretion, a court must ignore
whether an injunction would indefinitely preclude the public
from accessing a work.”
 TD Bank v. Hill (3d Cir. 2019) (also rejecting presumption of
irreparable injury in case involving right not to publish work)

26. 
Is copyright different?

27.  Maybe not
Is copyright different?
 “The public's interest in having on-
demand transportation would also be
disserved by granting the relief Promotions
requests.”
 Uber Promotions v. Uber Technologies (N.D. Fla. 2019) (TM
case)

28. Is copyright different?

29. • a court may not “enjoin the world at
large”
How easy to enjoin non-parties?
large”
o McGraw-Hill v. Does (S.D.N.Y. 2020); Omega v. 375 Canal
St. (S.D.N.Y. 2019); Righthaven v. Dibiase (D. Nev. 2011)
• domain name registrars frequently
included
• content delivery networks?
• domain names “shall immediately be
de-indexed and/or removed” from
search results and social media?

30. • Mc-Graw Hill titles
How easy to enjoin non-parties?

31. • exclusive distributor may be in privity
Aevoe Corp. v. AE Tech. (Fed. Cir. 2013) (citing FRCP 65(d)
How easy to enjoin non-parties?
o Aevoe Corp. v. AE Tech. (Fed. Cir. 2013) (citing FRCP 65(d)
and Golden State Bottling v. NLRB (1973) on abettors and
privies)
• maybe not a nonexclusive distributor
o U.S. v. Phillip Morris USA (D.C.C. 2019); Paramount Pics.
v. Carol Publishing Gp. (S.D.N.Y. 1998); but see Microsys.
Software v. Scandinavia Online AB (1st Cir. 2000) (mirror
sites who did not acquire named D but continued its
infingement subject to injunction in D's case)

32. • Denials of actual damages where FMV of
images not established
Developments in
Copyright Damages
images not established
• Unconstitutionality of 504© stricken in a
Malibu Media case
• Possibility of a $9 billion trial in Oracle

33. • Failure to apportion as going to weight of testimony
as to royalty base, not its admissibility?
Developments in
Patent Relief
o Speedfit LLC v. Woodway USA (E.D.N.Y. 2019) (citing Power
Integrations v. Fairchild Semi. (Fed. Cir. 2018)
• Damages theories in Samsung wearables cases
stricken: noncomparability and non-apportionment
o Uniloc v. Samsung Elecs. Am. (E.D. Tex. 2019) (citing RoyaltySource)
• Qualcomm did not have to value improved battery
life in iPhone "relative to all unpatented features.“
o Qualcomm v. Apple (S.D. Cal. 2019)

34. • Uniloc v. Samsung Elecs. Am. (E.D. Tex. 2019)
(citing RoyaltySource)
Developments in
Patent Relief

35. • Median damages award has rebounded from five
years ago
Developments in
Patent Relief
years ago
• Median NPE award nearly doubled from 2008-2012
to 2013-2017
• A partially “exceptional” case may not justify fee-
shifting under section 285, but it could
• Do nuisance value offers make a case exceptional?

36. • Denials of actual damages where fair market value
of images not established -- a trend?
Developments in
Copyright Damages
of images not established -- a trend?
• Unconstitutionality of 504(c) defense stricken in a
Malibu Media case
• Circuit split over Rule 68 and 505/1203?
• Possibility of a $9 billion trial in Oracle

37. • Accounting/disgorgement is equitable despite Dairy
Queen (1961)
Developments in
Trademark Relief
Queen (1961)
• Eliminating the willfulness rule for disgorgement of
profits in some circuits?
o Romag Fasteners v. Fossil (2020)
• Counterfeiting canvas shoes etc., without more,
worth $1m in statutory damages, by default?
o Judge Bloom, S.D. Fla., more than once