Causal-nexus for a permanent injunction only requires ‘some connection’ to infringement

Federal CircuitGenband US LLC v. Metaswitch Networks Corp., No. 2017-1148, 2017 U.S. App. LEXIS 12233 (Fed. Cir. July 10, 2017) (Before Lourie, Taranto, and Chen, J.) (Opinion for the court, Taranto, J.).

Genband US LLC sued Metaswitch Networks Corp. and Metaswitch Networks Ltd. for patent infringement. A jury found that Metaswitch infringed various claims of several of Genband’s patents, and that the claims at issue had not been proven invalid. Thereafter Genband sought a permanent injunction, which the district court denied based on the determination that Genband had not established irreparable harm from the infringing activities. That conclusion by the district court, according to the Federal Circuit, may have relied on too stringent an interpretation of the requirement for an injunction that the allegedly irreparable harm is being caused by the infringement.

The district court denied a request for a permanent injunction against Metaswitch after a jury found infringement because Genband failed to establish irreparable harm. More specifically, the court found that Genband failed to establish a causal-nexus between infringement and irreparable harm, i.e. that “the patent features drive demand for the product.” The Federal Circuit remanded because this causal-nexus requirement was too stringent. The Federal Circuit explained that the court could not have confidence as to the answer to the causation question under the standard properly governing the inquiry or whether there is any independent ground for the district court finding no irreparable harm or otherwise denying an injunction.

To define the causal-nexus requirement, the Court examined its precedents in the numerous “Apple Cases.” The “drive demand” formula applied by the district court “is susceptible to importantly different interpretations, some stricter, some more flexible.” Instead, the Court found that the standards elucidated in “Apple III and Apple IV” govern the inquiry, “at least in a multi-purchaser, multi-component situation.” That standard requires “some connection” and it “just means that there must be proof that the infringement causes the harm.” The Court went on to elucidate that the correct standard reflects “general tort principles of causation” and makes the production of proof “practical.” The Court remanded to the district court so that it could evaluate the merits of a permanent injunction, including the application of the correct causal-nexus standard.

In a multi-purchaser, multicomponent situation, establishing a causal-nexus for a permanent injunction requires some connection between the infringement and harm to the patentee, which can be less demanding than showing that the infringement drove demand for the infringing product.



The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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