1. Permanent Injunctions

For over a century prior to the US Supreme Court’s 2006 decision in eBay, US courts were described as issuing permanent injunctions “as a matter of course” upon making a final judgment of patent infringement.Footnote ¹⁶ This practice tracked a more general presumption in favor of granting injunctions in cases involving “continual infringement” of a right,Footnote ¹⁷ circumstances in which an injunction might be thought particularly helpful in preventing later relitigation of substantially the same dispute.Footnote ¹⁸ But the practice and presumption were not absolute: consistent with general equitable principles, there was a general sense that a court would decline to grant an injunction that would inflict “grossly disproportionate hardship on the defendant”Footnote ¹⁹ or would conflict with a substantial public interest.Footnote ²⁰

The US Court of Appeals for the Federal Circuit reformulated this practice and presumption as amounting to a “general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances.”Footnote ²¹ In stating this rule, the Federal Circuit repeatedly acknowledged that a court might nonetheless deny an injunction to protect the public interest.Footnote ²² The Federal Circuit has also clarified that, where an award of damages compensates a patent holder for use of the invention during the full patent term, a trial court would not abuse its discretion by denying an injunction.Footnote ²³ But the Federal Circuit was not so active in acknowledging discretion to deny an injunction that would inflict disproportionate hardship on an adjudged infringer.Footnote ²⁴ Indeed, within a few years of the Federal Circuit’s creation in 1982,Footnote ²⁵ the court signaled a lack of sympathy with such a potential basis for denying an injunction by declaring that the fact that an injunction might put a particular infringer out of business “cannot justify denial of [a permanent] injunction”: “One who elects to build a business on a product found to infringe cannot be heard to complain if an injunction against continuing infringement destroys the business so elected.”Footnote ²⁶

The Federal Circuit’s “general rule” language and practice stood out against a historical background in which the US Supreme Court had said many times “that equitable remedies are exceptional and available only where there is no adequate remedy at law.”Footnote ²⁷ Hence, in eBay the Supreme Court granted certiorari to review the Federal Circuit’s “general rule.”Footnote ²⁸

This review did not favor the general rule. The Supreme Court emphasized the discretion of trial courts in deciding whether to grant injunctive relief.Footnote ²⁹ At the same time, however, the court held that, in determining whether to issue a permanent injunction against an adjudged infringer, courts must apply a four-pronged test. Under this test, the party moving for an injunction “must demonstrate”:

The first two prongs of this test are somewhat awkward at best. Regarding the first prong, the court presumably meant to indicate that the movant for an injunction must show that it will suffer irreparable injury if an injunction does not issue, rather than that it “has suffered irreparable injury” in the past.Footnote ³¹ Moreover, the first and second prongs are fundamentally redundant.Footnote ³² These prongs essentially just state and restate the general, threshold requirement that a court find legal remedies such as compensatory damagesFootnote ³³ inadequate before turning to equitable relief such as an injunction.Footnote ³⁴

The Supreme Court did not explicitly say that no presumptions in favor of the movant for an injunction can apply to analysis of any of these factors.Footnote ³⁵ But lower courts, including the Federal Circuit, have commonly taken this to be the case, holding that eBay required them to drop, for example, presumptions regarding irreparable injury that their preexisting precedent had prescribed.Footnote ³⁶

Further, the Federal Circuit has added a significant, albeit largely commonsense, gloss to the understanding of the irreparable injury factor. It has held that the patentee must also show a “causal nexus” between the irreparable injury and the infringement – i.e., “that the infringement causes the harm.”Footnote ³⁷ In short, to obtain an injunction against patent infringement, a patentee needs to show not just that the patentee will suffer irreparable injury in the absence of an injunction, but that the patentee will suffer irreparable injury caused by the infringement in the absence of an injunction.Footnote ³⁸ The Federal Circuit has explained that “[t]he causal nexus requirement ensures that an injunction is only entered against a defendant on account of harm resulting from the defendant’s wrongful conduct, not some other reason” – such as the defendant’s competitive success relative to the patentee based on noninfringing features of the defendant’s products or processes.Footnote ³⁹

On the other hand, the Federal Circuit has emphasized that the causal nexus requirement is not to be overly demanding. Determination of whether there is an adequate causal nexus entails “a flexible analysis” of whether there is “‘some connection’ between the patented features and demand for the infringing products.”Footnote ⁴⁰ If irreparable injury in the form of lost sales is alleged, infringing features need not be “the only cause of the lost sales”Footnote ⁴¹ or even the “predominant” cause.Footnote ⁴² Instead, the key question is whether an infringing feature “impacts customers’ purchasing decisions.”Footnote ⁴³ The Federal Circuit has indicated that evidence of deliberate copying, criticism of non-infringing alternatives to a patented feature, and expert testimony about the value of such a feature can serve as evidence of the requisite causal nexus.Footnote ⁴⁴

In any event, the first two prongs of the eBay test might not be of great interest in jurisdictions that are not rooted in the Anglo-American legal tradition and its historical demand for special justification of equitable as opposed to legal remedies. Thus, for general international purposes, the aspects of the eBay test of most significant interest might very well be the third, “balance of hardships,” prong and the fourth, “public interest,” prong. These prongs embody a court’s discretion to deny injunctive relief even when traditional threshold requirements for obtaining a permanent injunction – success on the merits and inadequacy of legal remedies – are met.

The “balance of hardships” prong effectively requires courts to consider the proportionality of an injunction’s impact on the defendant to the rightsholder interests that the injunction is meant to vindicate. If the patented invention only constitutes a minor part of an infringing product or process but an injunction against infringement will cause major disruption to an adjudged infringer’s business, a court is substantially likely to find that the “balance of hardships” weighs against an injunction as a result of such disproportionate effect and therefore to deny such relief.Footnote ⁴⁵ On the other hand, the Federal Circuit has instructed that “expenses … incurred in creating the infringing products” and “the cost of redesigning the infringing products” are “irrelevant” to the balance-of-hardships analysis: the focus here is apparently on whether the injunction enables a patent holder substantially to tax value that is not causally related to the infringement itself, rather than to be on relieving an adjudged infringer of more direct “consequences … of its infringement.”Footnote ⁴⁶ Although in principle a patent owner might seek to mitigate the disproportionate effect by making a payment to the adjudged infringer as a condition of injunctive relief,Footnote ⁴⁷ the author is not aware of a patent case in which such a payment has been offered by a party or demanded by a court.

The “public interest” prong of the eBay test can also provide a basis for denying injunctive relief. Traditionally, US courts had tended to focus on public health or safety concerns in relation to this prong.Footnote ⁴⁸ But a district court held in the wake of eBay that a permanent injunction against “Microsoft’s Windows and Office software products” would likely disserve the public interest because of a risk of a substantial negative “effect on the public due to the public’s undisputed and enormous reliance on these products.”Footnote ⁴⁹

Under some selection or combination of the first three prongs of the eBay test, courts have also considered the extent to which a patent owner’s interests will be satisfactorily protected through monetary remedies, such as a backward-looking reward of damages or a forward-looking award of a royalty for any ongoing infringement. US courts have frequently found that such monetary remedies are sufficient for patent owners who are “non-practicing entities” (NPEs) in the sense that they do not engage in substantial activities to commercialize the patented invention and, instead of looking to exclude others from such activities, primarily look to license their patent rights to others for monetary compensation.Footnote ⁵⁰ The category of NPEs encompasses a wide variety of entities, from universities and other research-oriented institutions to patent assertion entities (PAEs), often called “patent trolls,” a derogatory moniker for entities that specialize in acquiring and asserting patent rights.Footnote ⁵¹ Empirical studies indicate that, even though the US Supreme Court prohibited adoption of a general rule disabling a general category of patent owners such as nonpracticing entities from obtaining injunctive relief,Footnote ⁵² NPEs are especially unlikely to satisfy the eBay criteria for obtaining injunctive relief for patent infringement.Footnote ⁵³ In contrast, direct competition between an infringer and patent owner appears to be positively associated with grants of injunctive relief.Footnote ⁵⁴

The Federal Circuit has heldFootnote ⁵⁵ that the International Trade Commission (ITC), an administrative body, is not subject to the eBay test in determining when to issue “(1) an exclusion order prohibiting entry of certain articles [associated with patent infringement] into the United States [or] (2) a ‘cease and desist’ order that might, for example, prohibit the sale of infringing matter that has been imported.”Footnote ⁵⁶ But statutory law instructs the ITC that it may decline to issue an exclusion order and is barred from issuing a cease-and-desist order if, “after considering the effect of such [an order] upon the public health and welfare, competitive conditions in the United States economy, the production of like or directly competitive articles in the United States, and United States consumers, it finds that such order should not be issued.”Footnote ⁵⁷ Moreover, Congress has empowered the President of the United States to negate such ITC orders “for policy reasons.”Footnote ⁵⁸ In 2013, the US Trade Representative (USTR), to whom the president has assigned the exercise of this authority, abrogated the ITC’s exclusion and cease-and-desist orders directed at Apple Inc. in light of a determination that certain Apple tablets and smartphones infringed a patent owned by Samsung Electronics Co.Footnote ⁵⁹ Apparently key concerns for the USTR were that Samsung itself had characterized the relevant patent as standard-essential and had committed to licensing the patent on FRAND terms.Footnote ⁶⁰ More generally, over the past decade, the ITC itself has appeared more willing to take public interest concerns into active account.Footnote ⁶¹

Typically, US courts do not invoke general interests in follow-on innovation as a basis for denying an injunction. On the other hand, if an adjudged infringer has engaged in follow-on innovation and thereby generated an infringing product or process whose value is substantially attributable to such follow-on innovation, injunctive relief could be deemed unwarranted due to the balance of hardships, which will potentially entail a disproportionate burden on the infringer given its separate contributions to overall value. Further, the Federal Circuit has indicated that it believes there is commonly a public interest in granting injunctions against infringement to support the research and development that the patent system is generally thought to promote.Footnote ⁶²

2. Preliminary Injunctions

US courts similarly consider four factors in deciding whether to issue a preliminary injunction against allegedly infringing activity – i.e., an injunction to prohibit engagement in certain activities that have not yet been adjudged to be infringing.Footnote ⁶³ To obtain a preliminary injunction, a patentee must generally show:

1. (1) a likelihood of success on the merits – i.e., that there is no substantial question about either the validity of a relevant patent claim and that there is no substantial question that this claim is infringed by an accused product or process;

2. (2) a likelihood of “suffer[ing] irreparable injury in the absence of preliminary relief” (e.g., because of competitive harm that will be difficult to unwind after litigation has run its course);

3. (3) “that the balance of equities tips in his favor”; and

4. (4) “that an injunction is in the public interest.”Footnote ⁶⁴

The likelihood-of-success factor calls for courts to consider the possibility that the accused infringer will prevail in challenging the validity of one or more patent claims. There also might be a failure of likelihood of success on grounds of obstacles to the patent owner’s proving infringement or the possibility that a court will find a patent unenforceable on grounds such as patent misuse or inequitable conduct in proceedings before the Patent and Trademark Office.Footnote ⁶⁵ The Federal Circuit has held that a patent owner has failed to show a likelihood of success if “an accused infringer … demonstrate[es] a substantial question of validity or infringement” – i.e., about whether the patent owner will prevail with respect to such issues.Footnote ⁶⁶ Thus, despite the presumption of validity of issued patent claims,Footnote ⁶⁷ any substantial question about “validity, enforceability, or infringement” can bar the granting of a preliminary injunction.Footnote ⁶⁸ Unsurprisingly, therefore, preliminary injunctions are generally difficult to obtain under US patent law.Footnote ⁶⁹

Even if a patent owner succeeds in establishing a likelihood of success on the merits of its infringement case, the owner will still need to address any concerns with respect to the balance of hardships and the public interest. Here, US courts will generally consider the same sorts of circumstances that inform decisions about these factors in the context of a permanent injunction. On the other hand, the Federal Circuit has indicated that the patent holder’s likelihood of success on the merits should inform the weight given to the patent holder’s interest in relief under the balance-of-hardships analysis,Footnote ⁷⁰ with the result that uncertainty about infringement, patent validity, or patent enforceability can contribute secondarily through the balance-of-hardships analysis to the difficulty in obtaining a preliminary injunction. The Supreme Court has not explicitly said that courts may not take such a “sliding scale” approach to satisfaction of one or more of the four preliminary-injunction factors.Footnote ⁷¹ Under a “sliding scale” approach, a very strong showing on one factor can lead to a court awarding a preliminary injunction based on “a lesser showing” on another factor than the court would otherwise demand.Footnote ⁷²

Preliminary injunctions bring with them an additional wrinkle regarding requirements for bonds that the four-part test does not explicitly reflect. In case the movant for a preliminary injunction later loses on the merits, the Federal Rules of Civil Procedure require that a successful applicant for a preliminary injunction “give … security[, commonly in the form of an injunction ‘bond,’] in an amount that the court considers proper to pay the costs and damages sustained by any party found to have been wrongfully enjoined or restrained.”Footnote ⁷³ Likewise, if a court grants a stay of injunctive relief at a preliminary or later stage – for example, because of an anticipated appeal – the court may demand a bond of the accused or adjudged infringer to help ensure compensation of the patent holder for any infringement during the period of the stay.Footnote ⁷⁴ The possibility of such bonds and the sense of their likely effectiveness in securing the interests of one party or another could affect a court’s assessment of the balance of hardships associated with granting or denying early injunctive relief.

1. Sovereign Immunity

Under US law, both federal and state governments of the United States generally enjoy sovereign immunity from suit in US courts.Footnote ⁷⁵ The US federal government has waived such immunity for suits for patent infringement, but only for purposes of permitting reasonable royalties, not injunctions against the government.Footnote ⁷⁶ State governments also enjoy sovereign immunity with respect to allegations of patent infringement, but a suit against individual state government actors may be brought to seek an injunction against their continued violation of the federal patent laws.Footnote ⁷⁷

2. Additional Grounds for Patent Unenforceability or Denial of Injunctive Relief

US patents are sometimes held to be unenforceable, with the result that no relief, injunctive or otherwise, is available for infringement.Footnote ⁷⁸ For example, a US patent may be held unenforceable due to patent misuse, which can result from behavior in the nature of an antitrust violation or from behavior otherwise seeking to leverage patent rights beyond what courts have held to be the proper reachFootnote ⁷⁹ – for example, certain activities involving “(1) requiring the purchase of unpatented goods for use with patented apparatus or processes, (2) prohibiting production or sale of competing goods, and (3) conditioning the granting of a license under one patent upon the acceptance of another and different license.”Footnote ⁸⁰ But as a practical matter, patent misuse is rarely found in the application of US patent law,Footnote ⁸¹ the Federal Circuit having emphasized that the conduct has “narrow scope” and “is not available to a presumptive infringer simply because a patentee engages in some kind of wrongful commercial conduct, even conduct that may have anticompetitive effects” or in fact is proven to involve “an antitrust violation.”Footnote ⁸²

Another basis for declaring a patent unenforceable is a finding of inequitable conduct in proceedings before the US Patent and Trademark Office.Footnote ⁸³ Inequitable conduct can come in the form of affirmative misrepresentations but can also come from silence in the form of failures to disclose material prior art.Footnote ⁸⁴ Relatedly, but distinctly, a patent may also be found unenforceable for “prosecution laches” – i.e., for “an unreasonable and unexplained delay in prosecution [of a patent application before the US Patent and Trademark Office (PTO)] even though the applicant complied with pertinent statutes and rules.”Footnote ⁸⁵

Beyond bases for declaring a patent unenforceable, there are a variety of additional equitable grounds for denying injunctive relief or blocking suit by a patentee altogether. These include laches in the form of undue delay in bringing an assertion of patent infringement to the courts;Footnote ⁸⁶ equitable estoppel from effectively inviting another party’s reliance on nonassertion of patent rights;Footnote ⁸⁷ and unclean hands,Footnote ⁸⁸ which blocks access to equitable relief in situations “where some unconscionable act of one coming for relief has immediate and necessary relation to the equity that he seeks in respect of the matter in litigation.”Footnote ⁸⁹ On the other hand, parties are not generally restricted to relief specified in their pleadings.Footnote ⁹⁰

3. Parallel Proceedings and Appeals

Courts may also choose to stay injunctive relief in light of relevant parallel proceedings, such as reexamination, other post-grant proceedings at the PTO, or an appeal, when such proceedings may result in a pertinent holding that, for example, relevant patent claims are invalid, unenforceable, or of insufficient scope to encompass an accused product or process.Footnote ⁹¹ In deciding whether to grant a stay pending appeal, courts apply a four-factor balancing test under which courts consider:

1. “ ‘(1) whether the stay applicant has made a strong showing that [it] is likely to succeed on the merits;

2. (2) whether the applicant will be irreparably injured absent a stay;

3. (3) whether issuance of the stay will substantially injure the other parties interested in the proceeding; and

4. (4) where the public interest lies.’ ”Footnote ⁹²

Sliding-scale analysis applies to consideration of these factors: “When harm to applicant is great enough, a court will not require ‘a strong showing’ that applicant is ‘likely to succeed on the merits.’”Footnote ⁹³ More specifically, the Federal Circuit has indicated: “To obtain a stay, pending appeal, a movant must establish a strong likelihood of success on the merits or, failing that, nonetheless demonstrate a substantial case on the merits provided that the harm factors militate in its favor.”Footnote ⁹⁴ Instead of staying an injunction for the entire pendency of an appeal, a district court may delay the effective date of the injunction for a set time period – for example, “two weeks … to give the Court of Appeals an opportunity to consider any expedited appeal relating to the denial of the stay”Footnote ⁹⁵ or ninety days so that an infringer’s merchant-clients have time to adapt their conduct in conformity with the injunction.Footnote ⁹⁶

Under longstanding precedent, if the PTO cancels a patent claim, a court should refuse any injunctive relief based on that patent claim or dissolve an injunction previously based on that patent claim.Footnote ⁹⁷ As the Federal Circuit has observed, “[i]t is well established that an injunction must be set aside when the legal basis for it has ceased to exist.”Footnote ⁹⁸ The Federal Circuit has also held that, once a nonfinal injunction, whose validity was still pending, is set aside, civil contempt sanctions for violating that injunction must also be vacated.Footnote ⁹⁹ In contrast, criminal contempt sanctions would remain enforceable despite the later setting aside of an injunction.Footnote ¹⁰⁰

1. Timing

Consistent with restriction to the purpose of preventing infringement,Footnote ¹⁰⁸ US injunctions based on patent infringement generally are available, and extend, only until a patent expires.Footnote ¹⁰⁹ On the other hand, as noted above, US courts have discretion to stay injunctions when parallel or appellate proceedings might undercut the basis for the injunction.Footnote ¹¹⁰ A court might also stay an injunction or otherwise delay relief when such a delay will help prevent an injunction from imposing an undue burden on its target or from substantially harming the public interest.Footnote ¹¹¹ Thus, for example, a US court might stay an injunction to permit an adjudged infringer or its customers time to implement a redesign for an infringing product or otherwise to alter course to avoid further infringement.Footnote ¹¹² As when a permanent injunction is denied or an injunction is stayed pending appeal, the district court may order payment of a royalty for infringing activities for the remainder of the patent term or during the intervening time period, respectively.Footnote ¹¹³

2. Tailoring of Scope

The classic form for a patent-infringement injunction issued by a US district court is that of an order specifically enjoining an adjudged or accused infringer from continuing to engage in statutorily specified activities (e.g., making, using, or selling) with one or more particular products or processes that the court has determined to be infringing or with respect to which, in the preliminary injunction context, the court has found there to be no substantial question as to infringement.Footnote ¹¹⁴ According to Federal Circuit precedent, a patent-infringement injunction is generally not supposed to be an “obey the law” injunction, in this case a bare order that its target not violate the patent laws, not infringe one or more specified patents, or not infringe specified patent claims.Footnote ¹¹⁵ On the other hand, even an order that specifically forbids only activities involving a particular product or process is generally read to encompass activities involving products or processes no more than colorably different from that specified, and many injunctions explicitly extend their reach to this extent.Footnote ¹¹⁶ Moreover, where the trial record supports finding an injunction to be directed at particular products or processes, the courts may read a technically deficient “obey the law” injunction to have the classic scope, tying the injunction to particular products or processes reflected in the record.Footnote ¹¹⁷

Trial courts have discretion to tailor injunctive relief in ways that differ from the classic form. One catalog classifies various injunction variants as “(i) correlated-activity injunctions (type-C); (ii) destruction, disablement, or delivery injunctions (type-D); (iii) ‘reformulated-bounds’ injunctions (type-B); and (iv) moderated injunctions (type-M).”Footnote ¹¹⁸ A study of patent-infringement injunctions issued by US district courts in 2010 found that, among the over 140 injunctions identified, about 20 percent had a type-C aspect, about 5 percent had a type-D aspect, about 5 percent featured type-B tailoring, and about 3 percent had a type-M aspect.Footnote ¹¹⁹

A correlated-activity (type-C) injunction forbids “activities that overlap significantly, but not entirely, with activities that by themselves can constitute infringement.”Footnote ¹²⁰ For example, some patent-infringement injunctions in the United States have prohibited the transport of infringing items or the display of images of infringing items even though these activities do not by themselves infringe patent rights.Footnote ¹²¹ Although technically reaching beyond the scope of patent rights to correlated activities, such “prophylactic” injunctions might advance interests in clarity and enforceability by encompassing activities that are commonly correlated with infringement.Footnote ¹²²

A “destruction, disablement, or delivery” (type-D) injunction also technically reaches beyond patent scope by “requiring the destruction, disablement, or delivery [to another entity] of specified material.” Compliance with such an order necessarily eliminates a capacity to engage in further activities with such material that are noninfringing in themselves but that are often correlated with infringement. Thus, like an injunction forbidding correlated activities, an injunction ordering destruction, disablement, or delivery acts as a form of prophylactic order, promoting clarity and enforceability by technically demanding more than general background patent law requires. A court can, however, narrowly tailor a type-D injunction to focus its prophylactic effect: the court might issue an injunction that requires only the disablement or removal of a specified part or aspect of a particular product or process that the court has found to fall within a patent’s scope.Footnote ¹²³

For a reformulated-bounds injunction, a district court may specify an injunction’s scope by defining the scope of products or processes implicated by an injunction in much the same way that a patent claim seeks to delineate a patent’s scope – i.e., by delineating technological specifications or features of the products or processes falling within the injunction’s scope.Footnote ¹²⁴ For purposes of clarity, enforceability, protective effect, or equitable balance, these reformulated bounds might be broader or narrower than associated patent claims, and they might be broader on one dimension but narrower on another.Footnote ¹²⁵ For example, an injunction issued by a US district court in 2010 prohibited standard forms of infringing activity (e.g., making or using in the United States) involving “a precast concrete block” that had “a recess or notch” satisfying a dimensional requirement – an explicit restriction on width – that did not appear in associated patent claim language and that presumably helped clarify the resulting injunction’s scope.Footnote ¹²⁶

Finally, there are a variety of ways in which a court might design a moderated (type-M) injunction, one “that includes an explicit carve out for [a subset of] infringing (or likely infringing) behavior.”Footnote ¹²⁷ A district court might “grandfather” certain already manufactured or already sold products, at least temporarily enabling their distribution, use, or support in order to protect the public interest or to prevent an injunction from imposing a disproportionate impact on an adjudged or accused infringer.Footnote ¹²⁸ Likewise, a district court could limit an injunction so that it permits an infringer, upon paying a court-determined royalty, to continue to provide support, including replacement parts or other “consumables,” for systems already sold to customers.Footnote ¹²⁹ Such a limitation could help protect a public interest in avoiding excessive disruption to the customers’ work or other activities.Footnote ¹³⁰

3. Ongoing Royalties

Except in certain situations involving federally funded inventions, the United States Patent Act does not make general provision for compulsory licensing of patent rights.Footnote ¹³¹ Nonetheless, in lieu of an injunction forbidding specified activities or in association with the stay of such an injunction, a district court may provide a remedy that can operate as a sort of case-specific compulsory license: specifically, the court may order the payment of “ongoing royalties” for continuing activity that would otherwise constitute infringement involving products or processes adjudged to infringe or to be no more than colorably different from those adjudged to infringe.Footnote ¹³² Indeed, the availability of such relief may support a court’s holding that an injunction forbidding continued infringement is unwarranted because the patent owner’s interests may be adequately protected through a combination of backward-looking damages and forward-looking ongoing royalties.Footnote ¹³³ The Federal Circuit has indicated that, before ordering a court-set ongoing royalty, a trial judge should first “instruct the parties to try to negotiate” one.Footnote ¹³⁴ Further, an ongoing royalty should not be awarded if already-provided monetary relief covers all found or expected “damages for past, present, and future infringement,” as when a jury calculates a lump-sum royalty for all activities involving infringing subject matter for the duration of the patent term.Footnote ¹³⁵

There has been some question in the United States of whether a court should specify a rate for an ongoing royalty that is higher than necessary to compensate the patent owner, presumably on grounds that continuing infringement by an adjudged infringer is necessarily willful and therefore properly subject to enhanced damages.Footnote ¹³⁶ This reasoning and the associated practice have been criticized on grounds that the adjudged infringer might, through sunk investments, have become effectively “locked into” a course of infringing conduct and thus have become unable to avoid continuing infringement without undertaking undue costs that might have been part of the very reason for denying an injunction against infringement itself.Footnote ¹³⁷

On more solid ground, the Federal Circuit has indicated that “changed economic circumstances” might mean that the rate for an ongoing royalty should differ from the royalty rate that was the basis for a jury award of past damages.Footnote ¹³⁸ For example, the post-verdict development of a “non-infringing alternative [that] takes market share from the patented products” might “justify the imposition of rates that were lower than the jury’s.”Footnote ¹³⁹ Alternatively, analysis of standard factors for determining a reasonable royalty could justify “an ongoing royalty amount higher than the jury rate.”Footnote ¹⁴⁰