The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Tuesday, 16 May 2006


Patent injunctions are still discretionary, rules Supreme Court

The IPKat has been treated to lots of excited emails from happy readers who have encountered yesterday's US Supreme Court ruling in eBay Inc. et al v MercExchange, L.L.C. 547 US _(2006). First off the block were Duncan Bucknell (whose take on the case can be read here), C. E. Petit and Neil Wilkof, but thanks to all of you who wrote in.

Essentially, the US Supreme Court has confirmed that injunctive relief for patent infringement is not in any sense an automatic remedy but remains at the discretion of the trial court, which is supposed to exercise its discretion after applying a four-factor equitable test:

(1) has the patent owner suffered an irreparable injury?

(2) are other remedies available at law, such as monetary damages, inadequate to compensate for that injury?

(3) considering the balance of hardships between the parties, is equitable relief justified?

(4) would a permanent injunction damage the public interest?
Says Merpel, this clearly suggests that no permanent injunction would have been issued in the BlackBerry case (see IPKat blog here), where damages would presumably provide adequate recompense and the public would have been distraught at the neutering of their favourite new toys.

See also the coverage of this case in Patently-O ("a landmark unamimous decision"), Business Week ("a tepid triumph for eBay"), Jurist and The Raw Story ("a significant victory").

At the time of posting this, there was nothing on this case from two of the IPKat's favourite sites, Patent Baristas and The Register.

No more sham?

Surtitled "No more sham Chanel, rip-off Rolex, phony Ferragamo or Copied Cartier?", Anne Gilson LaLonde's new publication Anti-Counterfeiting in the Twenty-First Century is a swiftly prepared and skilfully presented exposition of the Stop Counterfeiting in Manufactured Goods Act, which President Bush signed into force on 16 March 2006. This 165 page paperback, published in the US by LexisNexis, fastens on to the provisions of US law which, to a great extent, address the same issues as the IP Enforcement Directive 2004/48 in the EU.

The IPKat found this a convenient, accessible, lively and interesting account of the new US law, the provisions of which are appended.

1 comment:

David said...

I note a comment on the Patently-O site that compares this Supreme Court judgment to the principles of English law, presumably that of American Cyanamid. However, the Supreme Court was ruling on the requirements for granting a permanent injunction after infringement and validity had already been established, while the American Cyanamid tests only apply to interlocutory injunctions. How, I wonder, would an English court approach a similar situation? I suspect that a permanent injunction would be granted, no question.

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