Authored by Scott A. Allen, John A. Morrissett, and P. Andrew Riley
When considering whether to grant a patentee's motion for a permanent injunction, judges increasingly rely on the public-interest factor—the last of a four-factor test established by the U.S. Supreme Court in eBay Inc. v. MercExchange LLC.1 Historically the least discussed and weighted of the four eBay factors outside of cases dealing with lifesaving technologies, the public-interest factor has played a significant role in some recent cases that show how courts will consider the overall impact of an injunction on the public at large.
In fact, with the help of creative arguments, the public-interest factor can play a decisive role in determining whether an injunction will issue, as shown in Johnson & Johnson Vision Care Inc. v. Ciba Vision Corp. ("JJVC"),2 z4 Technologies Inc. v. Microsoft Corp.3 and, most recently, WBIP LLC v. Kohler Co.4
In JJVC, the court denied Ciba's motion for a permanent injunction after finding Ciba's patent for silicone hydrogel contact lenses valid and infringed.5 While the court examined all of the eBay factors, its decision turned primarily on public-interest considerations. In its brief, Ciba argued that its case fell outside the typical health-related scenarios, where the public interest has previously resulted in a denial of permanent injunctions.
It argued that its case against JJVC exclusively involved nonlifesaving technology for contact lenses, which are often worn in lieu of eyeglasses simply at a patient's discretion. Ciba contended that "[a]n injunction covering [JJVC's] Acuvue Oasys does not implicate public health" and that contact lenses are "not a medical necessity, only a convenience."6
Ciba argued that patients could simply be refitted for a different brand of contacts if Acuvue was taken off the market. And, if unsatisfied with an alternative brand, patients could wear glasses or could even elect to have corrective eye surgery.7 Ciba likely expected the court to enter an injunction because contacts were not critical lifesaving technology.
JJVC, however, aggressively opposed the motion and was able to inject the use of contact lenses back into the realm of public health, writ large. It argued that patient health is affected by a doctor's option to choose from a diversity of products depending on patient anatomy.8 It also asserted that its contact lenses have special UV protection that is unmatched and "statistically equivalent to an opaque eye patch," which it argued translated into a reduction of ocular diseases like cataracts, pterygia, macular degeneration and keratitis.9
Those assertions, however, were not scientifically proven at the time and, in fact, JJVC's products were required by the U.S. Food and Drug Administration to include a disclaimer that stated as much.10 Undaunted, JJVC also creatively argued that its Acuvue lenses are the only lenses that dry-eye patients can tolerate, even stating that dry eye is a problem of "epidemic" proportions.11
Mostly, JJVC was successful in making arguments about "comfort" sound more related to health than to convenience. It also created the appearance that an injunction would immediately force patients into a "deluge" of contact-refitting sessions,12 while common sense might otherwise dictate that such refittings would be staggered out over a long period of time as different patients ran out of their supply of lenses at different intervals.
The court found JJVC's arguments persuasive, finding that "millions of contact lens wearers will suffer real adverse consequences if sale of Acuvue Oasys is enjoined."13 In denying the injunction, the court purported to focus on "not just issues of comfort or cosmetics" but the patients' "proper vision and eye care."14 Yet it failed to specify any particular vision or eye-care issues. Ultimately, its focus was mostly drawn to the speculated "significant disruption, confusion and cost" of patients being abruptly told that the JJVC contacts were no longer available.
The court admitted that contacts were not the sort of "potentially life saving technologies" usually at issue in public-interest arguments but nevertheless found the "practical and economic issues" to warrant a denial.15 The court's reasoning shows that opportunities to overcome seemingly surefire permanent injunctions are available to creative and observant litigants.
Z4 Technologies provides another example of a district court denying a motion for a permanent injunction in the name of the public interest. Without the benefit of being able to study the permanent-injunction briefing in this case, as it was filed under seal with no accompanying redacted versions, it is difficult to see how Microsoft shaped its arguments to convince the court to deny z4's motion. From the court's public opinion, however, it is apparent that it was swayed against enjoining Microsoft in this nonlifesaving-technology scenario for many similar reasons as espoused by the court in JJVC.
The specific products implicated by z4's product-activation software patents were Microsoft's Windows and Office programs—arguably the two most-used personal-computer programs in the world. The court recognized that any potential harm to users of Microsoft Windows and Office was "speculative," but found that implementing any product redesign would have some negative consequences given the "enormous [public] reliance on these products" and the fact that a redesign could result in the products being taken off the market.16
The court also balked at enjoining Microsoft in light of Microsoft's assertions that if its servers were deactivated, even for a short time, "the market would be flooded with illegal, pirated copies" of the software—copies that Microsoft would be unable to later detect.17 The court reasoned that "[a]s a result [of the pirated copies entering the market], unsuspecting public consumers would undoubtedly suffer some negative consequences."18
Thus, as in JJVC, considering the scale of the reliance on the infringing products (i.e., the sheer number of consumers who use the products), coupled with potentially negative economic consequences, confusion among consumers, and inconveniences, the court found that the "public interest is likely to be disserved if a permanent injunction were entered against Microsoft."19 This decision reinforces the notion that the public-interest consideration can trump a permanent injunction even for nonmedical-related technologies, given the correct argumentation.
Most recently, in a case involving low-CO marine gas generators typically used on recreational watercraft, a district court denied a motion for a permanent injunction solely because of eBay's public-interest factor.20 Despite the jury's finding that the defendant, Kohler Co., willfully infringed WBIP's patent and the court's denying a renewed motion for JMOL, the court refused to enter an injunction.
In WBIP's brief in support of its motion, in an attempt to avoid entanglement with public-interest concerns, it conservatively asked "only to preclude Kohler from selling new generators," not to "enjoin users of low-CO gas generators already in the field" or to enjoin 'users from purchasing replacement parts."21 And it stated that it would be amenable to "a reasonable phase out period to minimize market disruptions."22
While Kohler's opposition brief was filed under seal with no accompanying redacted version, it is evident from the court's short, three-page opinion that WBIP's relatively modest demands were of no moment in the decision. Rather, after first stating that "the Court finds that a permanent injunction would be contrary to the public interest," and that the "Court need not address the remaining three [eBay] factors," it swiftly outlined its view of the pivotal public-interest issues.23
In particular, it found that since Kohler had 14 times the manufacturing capacity as WBIP, an injunction might deprive the "consuming public of access to a potentially life saving product."24 It made that decision despite Kohler's argument in its memorandum in support of its motion for a new trial that WBIP's invention was not necessarily saving lives from CO poisoning since leaking generator exhaust pipes were the true cause of several generator-related fatalities.25
As such, the court's decision was unique. Not only did it not address three of the four required eBay factors in complete favor of the typically neglected public-interest factor, but it also denied an injunction for nonmedical technology that affects the potential health of only a minimal slice of the consuming population, if any real percentage at all. It did so ostensibly due to manufacturing capacity, yet never even addressed the manufacturing demand for the products at issue.
These three decisions illustrate how public-interest considerations can play a significant and increasingly decisive role in opposing motions for permanent injunctions. The key to successfully fending off an injunction with a persuasive public-interest argument involves highlighting the impact on the public's health or the public's widespread or significant reliance on a product, even if affecting only a minority, as opposed to focusing on convenience or general public-service arguments.
As medical well-being, economic efficiencies and environmental health take on a bigger role in the definition of public health (rather than simply protecting lives), the public-interest factor is poised to take on a more prominent role in whether injunctions issue against patent infringers.
1 547 U.S. 388, 391 (2006) ("[In order to obtain an injunction,] [a] plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.").
2 712 F. Supp. 2d 1285 (M.D. Fla. 2010).
3 434 F. Supp. 2d 437 (E.D. Tex. 2006).
4 CA 11-10374-NMG (D. Mass. Aug. 12, 2013). Note that WBIP filed a Motion to Reconsider the
Court's Order Denying A Permanent Injunction on August 22, 2013, and a decision based on this
motion and an anticipated response from Kohler is pending as of this writing.
5 JJVC, 712 F. Supp. 2d at 1286, 1293.
6 Case No. 3:05-cv-00135-TJC-TEM (D. Mass. Oct. 14, 2009), ECF No. 319 at 16-17.
7 Id. at 17.
8 Case No. 3:05-cv-00135-TJC-TEM (D. Mass. Feb. 23, 2010), ECF No. 347 at 24.
9 Id. at 25.
10 Case No. 3:05-cv-00135-TJC-TEM (D. Mass. Mar. 10, 2010), ECF No. 364 at 2.
11 Case No. 3:05-cv-00135-TJC-TEM (D. Mass. Feb. 23, 2010), ECF No. 347 at 26.
12 Id. at 28.
13 JJVC, 712 F. Supp. at 1292.
15 Id. at 1293.
16 z4 Techs, 434 F. Supp. 2d at 443-44.
18 Id. at 444.
20 WBIP, Inc., CA 11-10374-NMG (D. Mass. Aug. 12, 2013).
21 CA 11-10374-NMG (D. Mass. June. 18, 2013), ECF No. 224 at 11.
23 WBIP, Inc., CA 11-10374-NMG, slip op. at 1-2 (D. Mass. Aug. 12, 2013).
24 Id. at 2.
25 CA 11-10374-NMG (D. Mass. June. 18, 2013), ECF No. 226 at 13.
Originally printed in Law360 (www.law360.com). Reprinted with permission. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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