Court Vacates Overbroad Injunction
September 13, 2004
Last Month at the Federal Circuit - October 2004
Judges: Plager (author), Lourie, and Prost
In International Rectifier Corp. v. IXYS Corp., No. 04-1014 (Fed. Cir. Sept. 13, 2004), the Federal Circuit vacated a permanent injunction prohibiting infringement of U.S. Patent No. 6,476,481 (“the ‘481 patent”) by any IXYS Corporation (“IXYS”) device covered by one or more claims of the ‘481 patent, and remanded the case back to the district court for an injunction satisfying the specific requirements of Fed. R. Civ. P. 65(d). The Court also vacated the portion of the district court judgment, holding that the ‘481 patent was neither invalid nor unenforceable because those issues had not been adjudicated.
International Rectifier Corporation (“IR”) owns the ‘481 patent, which relates to semiconductor-device packages. On the day the patent issued, IR sued IXYS for infringement. Within two weeks, IXYS had modified the design of its accused semiconductor products. IR chose not to supplement its complaint to allege infringement by the modified products. When IR filed a motion for SJ, IXYS did not oppose the motion on the merits in view of IXYS’s admission that its original product contained all the limitations of claims 1-5 of IR’s patent. But IXYS opposed the permanent injunction proposed by IR, arguing that a broad injunction prohibiting any future infringement of IR’s patent would violate Fed. R. Civ. P. 65(d). IXYS also proposed to include language in the judgment expressly reserving its right to assert noninfringement, invalidity, and unenforceability defenses in the event IR asserts the ‘481 patent against the IXYS modified design. The district court disagreed with IXYS and entered final judgment using the language proposed by IR. On the issue of validity and enforceability, the district court also agreed with IR, declaring the ‘481 patent not invalid and not unenforceable.
According to the Federal Circuit, a permanent injunction lacking specific terms and reasonably detailed description of the acts sought to be restrained does not meet specificity requirements of Rule 65(d) and increases the likelihood of unwarranted contempt proceedings for acts unlike or unrelated to those originally judged unlawful. The districtcourt injunctive language prohibiting infringement by “any device covered by one or more of claims 1 through 5 of the ‘481 patent” represented an example of such an overly broad injunction, the Court concluded.
The Court explained that the failure to incorporate into the injunction a list of the devices found to infringe during the initial two-week period after the patent issued resulted in a defective injunction.
Concerning the invalidity and unenforceability judgment, the Federal Circuit concluded that IXYS’s withdrawal of its affirmative defenses during discovery and prior to the date on which IR filed its motion for SJ, had the same effect as if IXYS had never asserted its defenses at all. The Federal Circuit, however, refused to make a decision as to whether IXYS has a right to assert all affirmative defenses in any future IR patent infringement or contempt proceedings against IXYS’s modified devices. According to the Court, application of rules of claim preclusion and issue preclusion in later proceedings should determine IXYS’s ability to raise an affirmative defense at that time.