The U.S. Court of Appeals for the Federal Circuit continues to soften up its standard for granting injunctions in patent cases involving multi-featured technology devices.
The court on Monday clarified that a patent owner need only show “some connection” between its patent and sales of infringing products to demonstrate the irreparable harm necessary for an injunction. The appeals court has been under some pressure from the technology industry to tighten the standard. The U.S. Supreme Court last month asked for the solicitor general’s views on a case raising the same issue.
Instead, the Federal Circuit in Genband US v. Metaswitch Networks asked U.S. District Judge Rodney Gilstrap of the Eastern District of Texas to reconsider blocking sales of voice-over-IP products and services following an $8 million jury verdict for Genband US LLC.
Gilstrap had ruled that Genband failed to demonstrate irreparable harm because the company didn’t show that its patented technology “drives demand” for its rival’s products.
The Federal Circuit didn’t blame Gilstrap as much as point to a subtle evolution in the Apple-Samung smartphone cases that describe the “causal nexus” requirement between infringement and sales. A panel led by Judge Richard Taranto said proving that infringement “drives demand” might represent “too stringent an interpretation of the causal-nexus requirement.”
The later Apple-Samsung opinions clarified that the patented features do not have to be the exclusive or predominant features driving demand. Instead, the patentee only has to show “some connection” between the patented features and the demand for the infringing products.
This issue is pending before the U.S. Supreme Court in the most recent Apple-Samsung case. Samsung’s cert petition covers three issues, including the “some connection” standard for granting an injunction. A group of intellectual property law professors has filed an amicus curiae brief challenging the standard as too lax.
Baker Botts’ Douglas Kubehl had the winning argument for Genband. Quinn Emanuel Urquhart & Sullivan partner Charles Verhoeven, who has been a key player on a lot of Samsung’s smartphone litigation, represented Metaswitch Networks.