Bosch sued Pylon for patent infringement of various patents that cover a "beam-type" windshield wiper. Robert Bosch LLC v. Pylon Mfg. Corp., No. 08-cv-542 (D. Del.). A jury determined that Bosch's patents were valid and infringed. Bosch then sought a permanent injunction that the judge denied on the grounds that Bosch failed to show that it would suffer irreparable harm. In reaching its decision the court noted the difficulty courts face in "struggling to balance the absence of a presumption of irreparable harm with a patentee's right to exclude" and that courts "frequently focus upon the nature of the competition between plaintiff and defendant in the relevant market in the context of evaluating irreparable harm and the adequacy of money damages." Robert Bosch LLC v. Pylon Mfg. Corp., 748 F. Supp. 2d 383, 407 (D. Del. 2010).
The Bosch district court focused on the nature of competition between Bosch and Pylon and identified various perceived deficiencies in Bosch's arguments. Specifically, it concluded: (1) that Bosch "fail[ed] to define a relevant market"; (2) the "existence of additional competitors"; and (3) the "non-core nature of Bosch's wiper blade business in relation to its business as a whole." Id. at 408. Accordingly, the court concluded that Bosch failed to show it would suffer irreparable harm. Bosch appealed this decision.
Most significantly, on appeal the CAFC focused its analysis on the historic "presumption of irreparable harm." Under Supreme Court precedent:
[a] patentee seeking a permanent injunction must make a four-part showing: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and the defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006).
"Prior to the Supreme Court's decision in eBay, [the CAFC had] followed the general rule that a permanent injunction will issue once infringement and validity have been adjudged, absent a sound reason to deny such relief." Bosch Slip Op. at 8 (citations omitted). Under pre-eBay CAFC precedent, there was a presumption of irreparable harm. Id. at 9. But in Bosch, the CAFC unequivocally stated that post-eBay this presumption no longer exists: "We take this opportunity to put the question to rest and confirm that eBay jettisoned the presumption of irreparable harm as it applies to determining the appropriateness of injunctive relief." Id. at 10. In so holding, the CAFC made clear that while eBay did away with this presumption, it should not signify a sea change vis-à-vis the issuance of an injunction:
Although eBay abolishes our general rule that an injunction normally will issue when a patent is found to have been valid and infringed, it does not swing the pendulum in the opposite direction. In other words, even though a successful patent infringement plaintiff can no longer rely on presumptions or other short-cuts to support a request for a permanent injunction, it does not follow we join at that courts should entirely ignore the fundamental nature of patents as property rights granting the owner the right to exclude. Indeed, this right has its roots in the Constitution, as the Intellectual Property Clause of the Constitution itself refers to inventors' "exclusive Right to their respective . . . Discoveries." U.S. Const. art. I, § 8, cl. 8 (emphasis added). Although the Supreme Court disapproved of this court's absolute reliance on the patentee's right to exclude as a basis for our prior rule favoring injunctions, that does not mean that the nature of patent rights has no place in the appropriate equitable analysis. See eBay, 547 U.S. at 392 ("According to the Court of Appeals, this statutory right to exclude alone justifies its general rule in favor of permanent injunctive relief. But the creation of a right is distinct from the provision of remedies for violations of that right."). While the patentee's right to exclude alone cannot justify an injunction, it should not be ignored either. See Acumed LLC v. Stryker Corp., 551 F.3d 1323, 1328 (Fed. Cir. 2008) (finding in a post-eBay decision that, "[i]n view of that right [to exclude], infringement may cause a patentee irreparable harm not remediable by a reasonable royalty").
Bosch Slip Op. at 10-11. As if to emphasize the continued availability of an injunction to a patentee (at least as to one that practices its patent), the CAFC reversed and remanded with instructions to the district court to enter an appropriate permanent injunction. But only time will tell how difficult Bosch and eBay make it for a patentee to obtain a permanent injunction.