More on post-eBay injunctions

by Dennis Crouch

Earlier this month I highlighted Professor Kesan’s reports on post-eBay injunction jurisprudence. Professor Chris Seaman (W&L) has posted a parallel (draft) report titled Permanent Injunctions in Patent Litigation After eBay: An Empirical Study. The paper provides an in depth analysis of the decisions – below I highlight three of the charts that help to tell the story. In general, Seaman’s results confirm what I see as conventional wisdom regarding the likelihood of obtaining injunctive relief.

The one perhaps-surprising element of Seaman’s report is that he found no correlation between any of the commonly intrinsic patent measures that have previously been correlated with patent value, such as the number of patent claims, higher citation to prior art, higher forward-looking citation counts, and a larger patent family.


37 thoughts on “More on post-eBay injunctions

  1. 7

    Ned says: >Enablement has nothing to do with infringement or scope. One cannot functionally claim everything an then have the courts reduce the scope o the claim to the extent the spec enables something. That is way, way out there Night. Literally way way out there.

    The statute refers to enablement Ned. The proper way to construe the claims is the scope of enablement for a person of ordinary skill in the art in light of specification.

    In fact, I would go further and say that that is the only rational sane way to construe the claims.

    Claim scope is then policed by invalidating the claims if you claims read on something that was not enabled. That is the way it is supposed to work. Functional claiming is directly how people skilled in the art discuss solutions that are known or obvious variants. <—-reality not Lemley garbage.

    This issue by the way is at the front of the judicial activist agenda. That is why we are reading so much nonsense about this issue.

    Try to live in the real world. You know, like what real books say (like functional descriptions are meant to discuss known solutions.)

    By the way, I do real mechanical drafting too with people that are at the top of their profession in drilling and they discuss solutions the same way as information processing / EE. Please try to focus on who "functional" is used by those skilled in the art.

  2. 6

    Dennis, regarding the denials of injunction cases, how many ordered the patent holder to license his patent to the infringer?

      1. 6.1.1

        …and if you want to get Colonial, think of King George mandating that you house his soldiers…

    1. 6.2

      The proper measure for an ongoing royalty that is without the consent of the patentee is treble — to compensate at least for the willfulness of the infringement. There has to be some penalty for willful infringement.

    1. 5.1

      ^^^ and your “point” is…?

      (maybe you have forgotten already about that award winning historical jounalism article on the topic that was first shared by your good friends at PatentDocs…

      …btw, how is your transparencies exchange going there?)

      What a chump.


          That would be an award from a historical society – completely unrelated to the “g-g-grifter” patent community you so evidently despise.

          But hey, feel free to laugh like an arse anytime.

  3. 4

    Not the freshest news but this petition for cert is interesting:

    Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, No. 14-1473

    Questions Presented:

    Whether on a motion to dismiss a party can overcome the statutory presumption of validity of all claims by arguing patent-ineligibility of selected claims and alleging that all the claims are substantially similar to the selected claims.
    Whether a computer technology for processing information is patent-eligible where it performs a task in a manner that is qualitatively different from the way the task is performed by a human; in other words, is it proper to determine patent-eligibility by focusing on the result achieved by an invention rather than on the manner by which the invention accomplishes its task.

    Cert. petition filed 6/10/15.

    What’s interesting is that CE&T LLC bothered to file the petition given that their case has zero chance of being heard by the Supreme Court. Apparently this LLC has money to burn. How wonderful for these super smart patent attorneys out there so anxious to waste the Supreme Court’s time.

    1. 4.1

      Because “ends” versus “means” is such a “waste of time”….

      Do you even think before you post, Malcolm?

      1. 4.1.1

        The “ends” here would appear to be the appellant advertising to the world that they are desperate shmucks who don’t know when they’ve been beaten to a pulp. And the “means” are wasting the Supreme Court’s time with pointless petitions that misrepresent the facts and issues and which have zero chance of being addressed.

    2. 4.2

      MM, what they seem to be complaining about is that 101 can be resolved as a matter of law when there are no facts in dispute.

  4. 3

    What this clearly shows is the thumb of Justices on the scales.

    A teaching moment here is (not that unsurprisingly) NOT being taken.

    That lesson is the properly documented sharing of power between the branches of the government.

    Congress explicitly provides the judicial branch with authority for judgements using notions of equity.

    Thus, even though the patent right – by its very nature aligning with injunctive relief – is not provided that most excellent approximation of “making whole” by the judiciary for clearly looking at not the right transgressed, but the entity that happens at the moment to hold that right, such is in accord with current law.

    Importantly for those who dare to understand statutory law, this facet can be changed by Congress whenever Congress so desires. If tomorrow Congress decides to change the law and prescribe injunctive relief for any right found validated and infringed, it is entirely within the authority given to Congress by the constitution.

    Our congress critters should be reminded of this.

    1. 3.1

      When evaluating the equities, as the statute prescribes, though the Court seem to give NO WEIGHT to the patent owner’s statutorily-mandated right to exclude. In this respect they err.

      1. 3.1.1

        Silly Girl from the valley,

        “[T]he Court explicitly affirmed Continental Paper Bag, the 1908 case which held that courts can grant injunctive relief in favor of patent holders who “unreasonably decline[] to use [their] patent.”123 In short, while technically reversing the Federal Circuit’s opinion in favor of MercExchange, and not taking any “position on whether permanent injunctive relief should or should not issue in this particular case,” 124 the unanimous opinion spoke very kindly of the four-factor equitable test favoring injunctions for non-practicing patent owners.125 Indeed, the affirmed 1908 Continental opinion stated: “Standing alone, non-use is no efficient reason for withholding injunction. There are many reasons for non-use which, upon explanation, are cogent . . . . Anything but prevention takes away the privilege which the law confers upon the patentee.”126” at page 701 of

        Holte, Ryan T., The Misinterpretation of eBay v. MercExchange and Why: An Analysis of the Case History, Precedent, and Parties (February 26, 2015). 18 Chapman Law Review 677 (2015). Available at SSRN: link to


          “From the character of the right of the patentee we may judge of his remedies. It hardly needs to be pointed out that the right can only retain its attribute of exclusiveness by a prevention of its violation. Anything but prevention takes away the privilege which the law confers upon the patentee. If the conception of the law that a judgment in an action at law is reparation for the trespass, it is only for the particular trespass that is the ground of the action. There may be other trespasses and continuing wrongs and the vexation of many actions. These are well-recognized grounds of equity jurisdiction, especially in patent cases, and a citation of cases is unnecessary. Whether, however, a case cannot arise where, regarding the situation of the parties in view of the public interest, a court of equity might be justified in withholding relief by injunction we do not decide.”

          Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 430, 28 S. Ct. 748, 52 L. Ed. 1122 (1908). link to


            From both eBay and from Continental Paper Bag, one sees that a patent owner has a right not to grant licenses. Thus there is no authority for a district court to order a patent owner to grant a license to an infringer. The question of whether there is an adequate remedy at law must be judged in consideration of this right. If an infringer continues to infringe and does not voluntarily cease to infringe, there is no adequate remedy at law as recognized by the Supreme Court in Continental Paper Bag, a case that the Supreme Court in eBay expressly affirmed.


              Except that there IS a remedy at law if an injunction is not granted to an NPE – treble damages for willfully continued infringement after infringement and validity have been adjudicated. If infringement damages are properly assessed, and then trebled, defendants should not be able to continue to profit from the infringement. [There seems to be a need for better Fed. Cir. guidance on this subject.]


                If the defendant did not succeed in invalidating the patent and was found to infringe, then how could continued infringement be anything but willful, knowing infringement warranting treble damages. Jeez, even a Federal Court told him he infringed!

                1. Silly girl, and this is exactly why Continental Paper Bag said that an injunction was warranted.


                This is where the train runs off the rails, Paul. Continental Paper Bag recognized that the reason that a legal remedy was inadequate was precisely because there was continuing infringement and the patent holder had an absolute right to unreasonably not license.

                eBay has been misinterpreted on this point argued in the linked article.

                Thus, if the infringer will not agree to the terms offered by the patent holder, and will not agree to stop infringement, an injunction must issue.

                1. Ned, I think you and I are in agreement one what the law Should be. My concern is that courts are not applying the law as it should be.

                  Yes, I know the tautology that the law is whatever the court says it is, but this is a blog comment, not a Law Review, and even law reviews point out wrong court decisions.

                2. Statutory law and common law differences are directly on point in connection to that notion of “the law is what the Court says it is.”

                  I wonder why this simple concept seems so very difficult for certain advocates to grasp.

                3. Silly, or anyone, has the Federal Circuit ruled on the propriety of court-ordered ongoing royalty at the same rate as everyone else? The problem I see with this is that provides every incentive for anybody to refuse to license, because in the end, all they risk is the same royalty as everyone else gets.

                  As we know, since eBay, the SOP of law firms is to advise clients not to negotiate, not to settle.


                Paul’s bias from being on the infringer’s side is showing through again.

                Lest anyone conveniently forget, Big Corp would like nothing better than making patent infringement into a efficient breach mechanism. Even if penalties are set at merely a high fee, those whom are established can whether the fees (sport of kings, anyone?) and can impugn others rights without caring about being kept out of the stranger’s house.

                They can then play the “you are too small to do anything about it game.” Much like – NOT inconcidentelly – before the “Tr011s” wrecked their nuclear Armageddon strategy (and the propaganda had to be unleashed).

                1. Exactly anon. And Paul is out in the camp of judicial activist that would like to burn the system down.

      2. 3.1.2

        Exactly Silicone Valley Girl. You are exactly right. The problem is that at this point we have a court that was purchased by Google and there is really no hope of them ever practicing the law. Obama picked them based on their ignorance and expressed feelings that patents should be no more.

        Note: three or four years ago I predicted exactly this. I said that Obama would appoint judges just like the police the USSR used to use to beat down revolutions. You pick outsiders that are ignorant and filled with a vehement dislike.

        Each of the dixtbags now known as Fed. Cir. judges between O’Malley and Stoll expressed ignorant psychotic hatred of the patent system before Obama took the money to appoint them.

        Thanks Obama. Third world country here we are.

        This lot cares a less about the statutes or the law. Ignorant beasts is what they are.

        How about, Silicon Valley Woman?

    2. 3.2

      The judiciary is a co-equal branch of government and has inherit power to act in equity. When congress includes some notion of what equity is in the law, they usually take the doctrines that have developed through the common law, because the judiciary is in a better position than the legislature to understand what equity is.

      1. 3.2.1

        Ordinary squirrels might want to have an ordinary understanding of the relation between statutory law and common law before submitting a comment about “co-equal branches.”

        Another nut: our constitution did NOT dole out authority to write patent law equally.

        That’s a rather important thing to keep in mind. Even (or especially) for ordinary squirrels.


          Better pay attention to “anon”. After all, he’s been wrong about pretty much everything important for the past ten years so he’s bound to be right about something eventually.

          You know what they say about squirrels, after all.



            I haven’t been wrong about anything.

            Now if you realized that the Court re-writing patent law is not a sign that I am wrong, you just might make an inte11igent comment.

            (but as you indicate, blind squirrels, while not ordinary, do find nuts and all)

  5. 2

    This is all very true as it applies to eBay, but I am a bit confused about the dingus.

  6. 1

    The correlation between competitors vs non-competitors, and PAEs vs all other patent owners, looks almost perfect? Especially allowing for the few cases categorized as ‘inability to pay” or “other.” Does not that follow nicely the concurring opinion in eBay?

    1. 1.1


      …for those in the thralls of Big Corp and their desire to reduce patent infringement into a game of “efficient breach,” um sure, I suppose that is one way to redefine “perfect.”

      Me, I prefer to maintain what a patent means regardless of who the particular owner is at the moment.

      Just a little (well, not so little) part of making sure the property right that is a patent stays fully alienable as the builders of this great country intended.

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