Addressing whether a district court had properly applied the traditional four-factor test for injunctive relief, the U.S. Court of Appeals for the Federal Circuit affirmed the grant of an injunction even in the face of past licenses and testimony that the accused product was medically superior. Acumed L.L.C. v. Stryker Corp., Case No. 04-CV-513 (Fed. Cir., Dec. 30, 2008) (Lourie, J.).
In 2004 Acumed sued Stryker for infringing a patent covering orthopedic nails. In September 2005, a jury found Stryker had willfully infringed Acumed’s patent and granted Acumed a permanent injunction. Stryker appealed to the Federal Circuit, which affirmed the finding of willful infringement but remanded the case for determination of the injunction in view of the Supreme Court’s Ebay decision, requiring the traditional four-factor test be applied to patent cases.
Following Ebay, the district court determined Acumed was entitled to a permanent injunction because it suffered irreparable harm, no other remedy available at law was adequate, the balance of the hardships favored it and public interest was not disserved by an injunction.
Stryker appealed the injunction to the Federal Circuit, arguing that the district court had incorrectly decided each factor. First, the Federal Circuit considered whether, given Acumed’s past willingness to grant a license, could Acumed show it suffered irreparable injury and had no adequate remedy at law. The Federal Circuit explained past willingness to grant a license is only one factor. Courts can also consider “the identity of the past licensees, the experience in the market since the licenses were granted and the identity of the new infringer.” Here the district court did not abuse its discretion because it had considered the past licenses.
Next, the Federal Circuit reviewed whether the balance of hardships favored Acumed in spite of Stryker’s argument that it undertook considerable expense to design its product. The Federal Circuit determined the court did not abuse its discretion in refusing to consider Stryker’s expenses because those expenses related to an infringing product.
Finally, the Federal Circuit explained the court “was within its discretion to conclude that the public interest was not disserved by an injunction” despite testimony that the infringing product was medically superior. The Federal Circuit reasoned the district court “was in the best position to assess the credibility of the witnesses and affiants and to weigh the evidence to determine whether enjoining Stryker would cause a public health problem.”
The Federal Circuit concluded this was a close case but ultimately found the district court had not abused its discretion because it “had performed the required analysis” for each factor. The Court noted that the mere fact that the district court was not persuaded by any of Stryker’s arguments is not enough to overturn a decision.