*1 LLC, ROBERT BOSCH
Plaintiff-Appellant, CORP.,
PYLON MANUFACTURING
Defendant-Appellee.
No. 2011-1096. of Appeals,
United States Court
Federal Circuit. 13, 2011.
Oct. *3 Hannemann, A. Kenyon Kenyon
Mark & LLP, York, NY, argued plain- of New tiff-appellant. himWith on the brief were Jeffrey Michael J. Lennon and S. Gins- berg. Of counsel was Susan A. Smith. Gregory Hillyer, Gale, P.A., L. Feldman PA, Philadelphia, argued for defendant- appellee. himWith on the brief were Ni- Galli; Gale, cole D. A. James of Mia- mi, FL. BRYSON, O’MALLEY,
Before
REYNA,
Judges.
Circuit
Opinion
by
for the court filed Circuit
Judge
Dissenting opinion
O’MALLEY.
Judge
filed Circuit
BRYSON.
O’MALLEY,
may
parties’ discovery
nism
address the
Judge.
Circuit
dispute.
response, Pylon
moved to bi
(“Bosch”) appeals
Bosch LLC
Robert
damages
furcate the issues of
and willful
Dis-
the order of the United States
from
ness,
request
opposed.
that Bosch
Delaware,
for the District of
Court
trict
motion,
granted Pylon’s
district court
not
post-trial
Bosch’s
motion for
denying
ing its
“determin[ation]
bifurcation is
injunction. Because the
permanent
aof
if
appropriate,
necessary,
in all but
its discretion when
district court abused
patent
exceptional
cases.” Memorandum
rec-
on this
denied
Order,
Pylon Mfg.
Robert Bosch LLC v.
ord,
with instruc-
we reverse
remand
08-542,
Corp., No.
balance order, patentee’s right interlocutory asserting juris- harm with a court’s exclude,” §§ and observed that other courts diction under 28 1291 and 1292. U.S.C. upon focused the nature of “frequently had plaintiff and de- competition between Jurisdiction in the market in the con- fendant relevant jurisdic this court has Whether evaluating irreparable harm and text of appeal tion over an taken from a district money damages.” adequacy Robert judgment question court of “Federal Pylon Mfg. Corp., v.
Bosch LLC
law,
regional
not that of the
circuit
Circuit
(D.Del.2010).
383, 407
F.Supp.2d
from which the case arose.” Pause Tech.
tendency
among
court also discerned
TiVo, Inc.,
LLC v.
injunc-
courts to award
district
(Fed.Cir.2005) (citing
Sage
Woodard
(1) “under circumstances in which
tions:
Prods., Inc.,
(Fed.Cir.
F.2d
plaintiff practices
its invention and is a 1987) (en banc)).
1292(a)(1) pro
Section
competitor”;
direct market
where
appeals
vides that “the courts of
shall have
plaintiffs “patented technology
jurisdiction
appeals”
from “[interlocu
*5
Id. at
the core of its business....”
407-08.
tory orders of the district courts of the
granting, continuing,
United States
...
mind,
With these factors
the court
modifying, refusing
dissolving injunc
or
proceeded
assess the nature
the com-
1292(a)(1).
§
tions. ...” 28 U.S.C.
Section
petition
Pylon.
between Bosch and
In do-
moreover,
1292(c)(1),
upon
confers
so,
ing
identified
court
deficiencies it
jurisdiction
ap
court exclusive
such
over
perceived
presentation
in Bosch’s
jurisdic
if
peals we would otherwise have
competitive landscape, including a failure
Thus,
face,
§
tion under
on its
clear,
“provide[
summary-level
a]
over-
denying
district court’s order
Bosсh’s re
view of the relevant market” and
break-
“a
quest
permanent injunction
for a
in a pat
illuminating
parties’]
[the
down
relative
scope
ent
case- falls within the
percentages.”
market
Id. at 408. The
(c)(1).
1292(a)(1),
§
See Cross Med.
court also focused on the fact that “[t]his is
Danek, Inc.,
Prods. v. Medtronic Sofamor
a two-supplier
not a clear case of
market
(Fed.Cir.2005) (“Med
1293,
a
necessarily repre-
wherein
sale to
tronic appeals
permanently
from an order
sents the loss of
sale to Bosch” and
enjoining
infringing
Medtronic from
“wiper blades alone are not at the core of
face,
patent.
'555
On its
the order falls
business.” Id. at 408. Based on:
[Bosch’s]
(c)(1).”).
1292(a)(1),
§
scope
within the
(1) its conclusion that Bosch
“fail[ed]
(2)
market”;
1292(a)(1)
§
define a relevant
provides
the “exis-
admits that
tence of additional competitors”;
jurisdiction,
a sound basis for
but contends
the “non-core nature
jurisdiction
of Bosch’s
under that section “has
blade business
relation to its business
Appelleе’s
as
been established.”
Br. 1.
whole,”
the court concluded that
According
Pylon,
required
Bosch was
serious,
failed to show it would suffer
show
the order will have “a
Finding
irrepara-
perhaps irreparable
harm. Id.
the absence of
consequence” and that
motion,
harm fatal
“effectually
ble
to Bosch’s
the court
the order can
challenged”
request
injunction
denied the
for an
only “by
appeal.”
with-
immediate
at 20
Id.
addressing
remaining equitable
out
(quoting Stringfellow
Neigh-
v. Concerned
Action,
370, 379,
permanent
factors of the
inqui- bors in
480 U.S.
107 S.Ct.
1177,
ry.
which the district court could 1281 at judiсial if preliminary injunc- have made its decision or least in the context of arbitrary, clearly relief, fanciful or un- applied express presump- action is tive we SMEC, Datascope Corp. v. irreparable upon finding reasonable.” tion of harm that (Fed.Cir.1989) Inc., 820, 879 F.2d 828 plaintiff likely a was to succeed on the Indus., (quoting PPG Inc. v. Celanese patent infringement merits of a claim. See Co., 1565, Polymer 840 F.2d Specialties Int’l, Co., Hughes Smith Inc. v. Tool 718 (Fed.Cir.1988) (Bissel, J., (Fed.Cir.1983) (“We 1572 concur- 1573, F.2d 1581 hold ring)). “To the extent the court’s decision validity that continuing where in- law, upon is based an issue of we review established, have fringement clearly been Ecolab, at issue de novo.” 569 F.3d case, irreparable as in this immediate Sanofi-Synthelabo (quoting Apo- (footnotes 1352 omitted)). presumed.” harm is (Fed.Cir. tex, Inc., 1368, law, on our Based case district courts also 2006)). applied presumption irreparable have following judgment infringement
harm
Discussion
validity
support
the issuance of
See,
permanent
injunctions.
e.g., Fisher-
equita
Consistent with traditional
Price,
1st,
Inc.,
Safety
Inc. v.
principles, patentee seeking perma
ble
(D.Del.2003) (enter-
F.Supp.2d
528-29
four-part
nent
must make a
ing
noting
after
showing:
presumed
harm is
in pat-
(1) that
has suffered an
cases); Boehringer
ent
Ingelheim Vetmed-
injury;
that remedies available at
ica, Inc. v. Schering-Plough Corp., 106
law,
monetary
such
damages,
as
are in-
(D.N.J.2000)
(same).3
F.Supp.2d
adequate
compensate
injury;
for that
(3) that, considering the balance of hard-
In eBay,
Supreme
Court made clear
ships
plaintiff
between the
and the de-
“categori-
“broad classifications” and
fendant,
remedy
equity
is warrant-
cal
place
have no
inquiry.
rule[s]”
ed;
public
interest
Instead,
U.S.
1149
omitted)).4
Constitution,
in
right
on this
this
has its roots
the
Our statements
tion
judge
Property
court
as the Intellectual
Clause of the
have led one district
topic
irrepa-
presumption
“the
of
itself refers to inventors’ “ex
Constitution
conclude
support.”
on life
...
Right
respective
harm is at best
clusive
to their
Dis
rable
Bend,
Inc.,
Google,
I,
8,§
2011 WL
Ltd. v.
coveries.” U.S. Const. art.
cl.
Red
8
2011)
(D.Mass. Mar.31,
added).
1288503, at
(emphasis
Although
Supreme
*18
the
omitted).
(citations
opportu-
take this
We
of
court’s
disapproved
Court
this
absolute
to rest and con-
nity
put
question
the
patentee’s right
reliance on the
exclude
jettisoned
presumption
the
eBay
firm that
in
prior
favoring
as a basis for our
rule
applies
harm as it
to deter-
of
junctions,
that does not mean that
the
injunctive
of
mining
appropriateness
the
rights
place
of
no
in the
patent
nature
has
join at least two
holding,
In so
we
relief.
analysis.
appropriate equitable
eBay,
See
that have reached the
sister circuits
of our
392, 126
(“According
S.Ct. 1837
U.S.
to a
as it relates
similar
same conclusion
Appeals,
statutory
Court
copyright
infringemеnt
in
presumption
justifies
general
exclude
right to
alone
10,
Google,
Inc. v.
matters. See
injunctive
in
rule
favor of
relief.
Perfect
(9th Cir.2011)
Inc, 653 F.3d
right
But the creation of a
is distinct from
(“[W]e
longstanding rule
conclude that our
provision
the
of remedies for violations of
likelihood of
showing
that a
reasonable
right.”).
patentee’s right
While
copyright
in a
in-
on the merits
success
justify
injunction,
exclude alone cannot
presumption
claim raises a
fringement
ignored
either.
should
See
clearly irreconcilable
irreparable harm is
Stryker Corp.,
Acumed LLC v.
reasoning
decision
(Fed.Cir.2008)
with the
Court’s
in
(finding
effectively
been
eBay
and has therefore
of that
post-eBay
“[i]n
decision
view
(internal quotation marks and
overruled.”
exclude], infringement may
right
cause
[to
omitted)); Salinger
Colting,
citations
harm
patentee irreparable
not remedia
Cir.2010)
(2d
(finding
F.3d
76-78
royalty”).
ble
a reasonable
abrogated
presumption
eBay
rules and the
categorical
The abolition of
cases).
copyright
irreparable harm
to fash-
district court’s inherent discretion
relief, moreover, also do not
eBay
gen
equitable
abolishes our
ion
Although
normally
courts must act on a
will mandate
district
eral rule that
whim,
is not
is found to have been
clean slate. “Discretion
patent
issue when
limiting
according
legal
discretion
stan-
infringed,
swing
it does not
valid and
principle
helps promote
direction.
dards
basic
pendulum
opposite
*8
words,
justice that
like cases should be decided
though
pat
a successful
other
even
395,
longer
eBay,
no
Over quarter-century, trict court never concluded that “there had many court has encountered cases involv- a two-supplier market” or that “the ing a practicing patentee seeking per- wiper blade business had to be at the core manently enjoin competitor upon an ad- of Bosch’s in injunc- business order for an judication infringement. deciding Appellee’s tion to be warranted.” Br. 27 cases, these we have developed сertain Instead, in (emphases original). legal standards that contends, inform the four-factor the district court applied the and, inquiry particular, in question “proper legal standard to pre- the evidence irreparable harm. While none of these concluded, matter, sented and as a factual may justify general standards alone rule presented was inade- effectively or an presumption irrebuttable quate to establish harm.” Id. issue, that an should a proper at 28. application of the standards to the facts of agree While we that the district court this case compels the conclusion that rules, categorical did not establish we nev- Bosch is entitled to the it seeks. ertheless conclude that the district court standards, It in ignoring these sup- legal committed error by weight given planting own, them with its that the dis- cited, to the factors amade clear error
trict court abused its discretion. judgment analysis irrepara- each component
We address of the four- Specifically, ble harm factor. while facts factor test turn. relating to the competition nature of the parties undoubtedly between are rele-
I. irreparable vant to the harm inquiry, the argues Bosch the district court court erred in relying exclusively on the legal by establishing committed error presence cate- of additional competitors and on gorical in irreparable rules injury anal- the non-core nature of Bosch’s blade ysis. Specifically, addition, Bosch contends business. the court commit- district court adopted per se rules that a judgment ted clear error of when it weigh against does not a supplier market that Bosch failed to demonstrate concluded irreparable harm. finding in the face of overwhelm- of harm irreparable contrary. par- This is ing evidence moreover, incompa- not principle, This light in of Bosch’s ticularly true by the district tible with the cases cited (2) competition; parties’ direct of: court, irreparable in courts which found poten- share and access in market loss based, in of part, harm on the absence resulting from intro- tial customers competitors. additional While the exis- blades; and infringing of beam duction may two-player tence of a market well financial wherewithal Pylon’s lack of ground granting serve as a substantial for facts, these judgment. Given satisfy it an injunction e.g., an because creates — district “no basis on which the there is infringing that an amounts inference sale rationally could have” concluded that court patentee for the con- to a lost sale —the irreparable harm. failed to show Bosch true, automatically especially verse is not first Datascope, 879 F.2d 828. We See where, here, it undisputed as and then legal the court’s errors address patentee sought rights has to enforce its judgment. clear error of turn to the in against infringers other the market. diligent- reveals that Bosch The record has A. ly pursued infringers since the time it first legаl court’s first error Pylon’s infringing learned of beam blades. presence that the of lies in its conclusion infringement, aware of the Once became more, cuts competitors, additional without immediately Pylon’s suppli- notified It finding irreparable harm. against that it requesting production er cease “fact that other that the is well-established blades, infringing agreed. to which La- may marketplace be in the does infringers ter, in October Bosch sued Jamak Pfizer, harm.” Inc. negate irreparable in Fabrication-Tex Ltd. the District of De- USA, Inc., Teva Pharms. v. laware, alleging infringement of its beam (Fed.Cir.2005). explained in As we patents. See Robert Bosch blade LLC infring all Pfizer, patentee need not sue Ltd., Jamak Fabrication-Tex No. 07-cv- infringer “Picking at once. Id. off one ers (D.Del.). being at a time is not inconsistent against During pendency its suit we to con irreparably harmed.” Id. Were Jamak, Bosch learned that had otherwise, effectively es we would clude selling infringing product. started a new presumption against tablish a August in three months Accordingly, plu market contains a harm whenever the Jamak, resolving against its suit after rality players. Under such circum against Pylon. Bosch filed this action stances, could al infringer the first sued subsequently sued an additional ways point to the existence of additional Industries, Inc., in competitor, Old World And, in perversely, if that competitors. March 2010 in the United States District defeating to succeed fringer were the Northern District of Illinois. Court for subsequent adjudged infringers injunction, In Robert Bosch LLC v. Old World See presence to the market point could (N.D.Ill.). dus., For these No. 10-cv-1437 request infringer opposing first when reasons, concluding the court erred Consequently, without ad injunction. two-player of a market effec absence showing presence facts that the ditional tively prohibits finding infring competitors renders additional a two- harm this case. reparable, harm the absence of er’s *10 1152
B. It is true some courts have refer- patented product enced the fact that the rеlying The court also erred party’s at the core of a business when wiper nature of Bosch’s the “non-core” explaining their bases for an in- granting in relation to its business as blade business junction. TruePosition Inc. v. Andrew concluded, a other courts have whole. As (D.Del.2008) 500, Corp., F.Supp.2d infringer’s fact that an harm the affects (granting a after only portion patentee’s says of a business finding “[p]laintiffs are frequently also that harm can nothing about whether patented technology successful when their See, e.g., Hoffmann-LaRoche, rectified. ”). is at the core of its business.... Inc., Inc. v. Cobalt Pharma. No. 07-cv- trial in relying court’s error on these cases 4687839, *12, at WL U.S. again arises if from its conclusion (D.N.J. LEXIS Dist. *36-37 supports granting injunction, fact the of an 2010) (“Cobalt points Nov. to Roche’s likely compels its absence denial of one. profitability, impact size and and the small law, That is not the however. likely harms would on Roche’s have profitability. says overall That nothing about whether such are irrepara harms C.
ble.”). Injuries that affect a “non-core” aspect patentee’s business are equally errors, In legal addition to these capable being irreparable as ones that the district court committed a clear error significant affect operations. more in judgment when it concluded irreparable failed to demonstrate harm. approach, Under the district court’s The record here undisputed contains evi example, a large corporation industrial competition dence of direct in each of the such as Bosch would find it easier to ob segments parties. market identified tain an if it opera subdivided its Bosch also introduced unrebutted evidence companies, tions into child with each focus of loss of market po share and access to ing on a particular product line. Under customers, Pylon’s tential as well as inabil circumstances, Pylon’s infringement such ity satisfy judgment. The district go would to the core of the business of court, however, any did not address of this LLC,” “Bosch Beam Blades which would (1) evidence, but, instead, focused on: increase the likelihood market; absence of a two-player seriously contend, harm. No one could wiper non-core nature of Bosch’s blade however, irreparability any that the par business; alleged Bosch’s failure to ticular injury should turn on incidental define a relevant market. view of the patentee’s corporate details such as a record, entirety of the we are left with the injury structure. An irrep is either of the firm conviction that there is no sort, basis on arable or it not. Consequently, which the court rationally district could district court in attributing weight erred have concluded Bosch failed to dem the non-core nature of Bosch’s blade (cid:127) Praxair, ATMI, Inc., onstrate begin business. harm. We See Inc. v. 1306, 1330(Fed.Cir.2008) (Lourie, an overview of the competition nature of J., (“[A] concurring) parties patent provides turning a between before right parties’ infringing compеtitors, arguments regarding exclude re harms aris gardless proportion ing Pylon’s that the from infring competition with Bosch ing goods patentee’s bear to a total apparent inability satisfy busi ness.”). judgment. *11 Pylon approached Both Bosch finer whole. dispute the parties
Although attempt to secure in 2006 in an extent of their nature and Wal-Mart details business, that the and Wal-Mart with Bosch blade agree we its beam competition, competes it ICON facts show to distribute Bosch’s undisputed initially agreed segments the market in all of in 2007. Pylon beginning April with blades beam Bosch Neither by parties. however, timely Bosch, identified failed to make In- directly to consumers. Pylon sells and, nor delivery requested when it initial to interme- stead, blades offer their refused, both extension, to choosing Wal-Mart diaries, the same to consum- then sell who product instead. Pylon’s infringing sell court, Bosch Before ers. account, has made losing the Since in channels of distribution three identified regain Wal-Mart’s numerous efforts (1) mass merchаndi- market: the relevant new, and has even offered business (2) Wal-Mart; automotive sers, such as compete attempt in an cheaper blade (3) retailers; original equip- specialty Thus, while it is prices. lower (“OEMs”). Pylon ment manufacturers in sell- true that Bosch has not succeeded these dis- existence of dispute did blades the mass-merchan- ing beam channels, identify it nor did tribution channel, that it the evidence shows diser within the of additional channels existence Pylon for business with the competes with Rather, disputed market. relevant largest participant the aftermarket. of these competition in each extent of record, likewise, direct com- The shows ar- Specifically, Pylon markets. three specialty in the aftermarket store petition (1) now, that: Bosch sells it does gued, as beam segment. parties Both have sold in- wiping systems OEMs original AutoZone, and, although Pylon blades vehicles, Pylon while on new stallation securing busi- has had limited success not; concen- great Bosch has does stores, it has specialty from other ness special- in automotive tration of customers from against Bosch for business competed retailers, signifi- lacks “a ty while competitors. at least five of AutoZone’s market; in this presence” cant beam blade any not sell beam “Bosch does OEMs, Bosch sells its respect to With Ap- Joint to mass merchandisers.” blades major manufac- most of the car blades to (“JA”) Thus, par- while the pendix Ford, turers, BMW, including Chrysler, competition disputed the extent ties Benz, Motors, Hyundai, Mercedes General channel, there each distribution within Pylon ad- Volkswagen, and Volvo. Toyota, contours of dispute regarding no was type wiper it has sold beam mits that market. now the relevant While OEM, and has at- to at least one blades agree “that these that it does not asserts to at least two tempted sell beam blades market,” comprise the relevant channels undisputed additional manufacturers. identify fails to Appellee’s Br. still evidеnce, thus, par- that the demonstrates channels, and any additional distribution in each directly compete for customers ties to create a reject attempt its belated we distribution channels. of the relevant as to this issue. dispute that the harm caused argues the mass-merchandiser respect to With because it competition channel, parties that both undisputed it is erosion, price loss business, irreversible has suffered competed for Wal-Mart’s have share, customers, and loss of of market por- represents a substantial which alone It potential customers. loss of access only the mass-merchandiser of not tion Pylon’s inability to sat- contends that channel, as a also also the aftermarket but *12 isfy judgment injury likewise, renders irrepa- Pylon, failed to rebut the notes, rable. As Bosch the district court testimony of Bosch’s Director of Product any did not address of factors when these Management, Kashnowski, Martin regard injunction concluding that an should not ing pоtential its loss of access to custom issue. (“[N]ot ers. See JA 954 securing an ac count with Wal-Mart response, Pylon contends has made it much while preliminarily has “Bosch established that more for difficult Bosch to secure accounts Pylon allegedly sells infringing beam mass-merchandisers, with other including blades, Pylon’s has not [it] established that Sears, Target and If K-Mart. Wal-Mart any sales have impact had definable blades, carrying was Bosch’s beam then its Bosch’s sales of its own beam blades.” competitors would want to sell Bosch’s Br. Appellee’s According Pylon, 37. beam blades as well to maintain a competi prove Bosch failed to that it was Pylon’s tive position.”). respect With to evidence competition, rather than that of other com- erosion, price although Bosch could have petitors, which caused to suffer lost mar- developed Pylon’s the effects of conduct price Pylon ket share and erosion. further from that of other competitors morе clear argues that Bosch’s Pylon’s evidence of ly, Mr. testimony Kashnowski’s on this inability pay unsupported specu- and issue also stands unrebutted. Conse disagree. lative. We quently, Pylon’s arguments respect sufficiency it is While true that at least of Bosch’s some evidence of lost share, Bosch’s loss of market share is attribut market poten the loss of access to competitors, able to other undisputed it is customers, tial price and irreversible ero that it Pylon was that secured the Wal sion are not well-taken.5 account, Mart which alone accounts for a As additional evidence of substantial portion of the entire market. harm, Bosch introduced evidence showing Pylon argues that presumes “that that the financial Pylon condition of both Wal-Mart would turn Pylon to Bosch if corporate and its parent questions raised enjoined.” were Appellee’s Br. 39. Pylon’s ability about satisfy judgment. Bosch, however, makes no presump such Specifically, Bosch submitted: a Risk Rather, tion. Bosch relies on the fact that Management Report indicating it previously secured the Wal-Mart ac posed a risk of “[m]oderate severe finan- count as circumstantial evidence that stress, cial such a bankruptcy, over the would reclaim Wal-Mart’s business were next 12 months” and fell within the 49th Pylon enjoined. While party seeking percentile nationally in category bears the showing burden of Stress,” 677; “Financial share, JA a pub- lost market this showing need not filing Inc., lic showing Qualitor be made Here, with direct which evidence. stock, a prima made facie holds 100% of showing of lost obtained a share, market Pylon proffered 8.46%, no evi five million dollar loan at a rate of dence to showing. rebut that response, JA827. In Pylon did not dispute raises, ap- also for the accept first time on Pylon’s arguments. we do not See peal, challenges admissibility various Passaic, City Failla v. 159-60 testimony of Bosch's officers under Rules (3d Cir.1998) (an evidentiary objection not 701 and evidentiary objections 702. Because waived, raised before the district court is not raised before the trial court are deemed only admission of evidence is reversible waived, and we any otherwise do not discern error). plain plain error in the testimony, admission of this irrepara- submissions, failed to demonstrate did that Bosch nor these accuracy of remedy abili- that a other than demonstrating its harm or ble it submit award, past either harm. damages sufficient to address its ty pay Instead, Pylon re- damages. a clear or future the court committed Consequently, *13 ar- attorney speculation sponded factor. analyzing in this judgment error of if, Pylon sells that, alleges, “as gued blades, little then there is many beam so II. not have Pylon will suspect that
reason to
royalty to
pay a
resources to
remaining equitable fac-
Turning
sufficient
to the
893.
that,
balance,
Bosch.” JA
tors,
they
conclude
we
injunction.
of a
also favor
irreparable
proving
the burden
While
Bosch’s, Pylon’s failure
of course
harm was
adеquacy
respect
With
its
regarding
evidence
rebuttal
to submit
that it
money damages,
argues
money dam-
an award of
ability
satisfy
to
harm
will continue to suffer
procedural
given the
troublesome
ages is
share,
lost business
due to lost market
case. Because
history of this
Py
price erosion unless
opportunities, and
motion to bifurcate
Pylon’s
granted
court
enjoined. According to
permanently
lon is
to
opportunity
no
ob-
Bosch had
damages,
Bosch,
fully
cannot
money damages alone
Pylon’s financial
discovery relating to
tain
harms.
Bosch for these
We
compensate
condition,
corporate parent
its
that of
or
There is no reason to believe
agree.
request
its
court considered
before
that the ir
stop infringing, or
Pylon will
facts rele-
Consequently,
relief.
injunctive
its in
resulting
harms
from
satisfy
judg-
reparable
ability to
Pylon’s
to
vant
cease,
its control.
absent
fringement
within
will otherwise
uniquely
were
ment
Int’l,
inability
Pylon’s
Ltd. v. J.
injunction.
evidence
Reebok
Bosch’s
While
Cf.
(Fed.Cir.
overwhelming gleaned
Baker, Inc.,
as
pay
is not
32 F.3d
—
records,
light
in
public
1994)
infringe
to be from
“future
(recognizing
had
rebuttal
any
introduce
failure to
Pylon’s
effects never
may
...
have market
ment
or to this
argue below
or to even
evidence
im
money”).
in
More
fully compensable
of its
characterization
court that Bosch’s
financial condi
questionable
portantly, the
inaccurate, and the
is
financial status
company
Pylon
parent
and its
tion of both
case, we
history of this
procedural
unique
remedy at
inadequacy of a
reinforces the
finding favors a
that this factor
conclude
wheth
should assess
law. A district court
harm.6
in
meaningful one
damage remedy is a
er a
in
condition of the
light of the financial
evidence, the
foregoing
In view
money
fringer before the alternative
which the dis-
no basis on
record contains
adequate.
deemed
While
damages can be
have concluded
rationally could
trict court
argue, we did to the district
argu-
response
as
During
lengthy discussiоn at oral
counsel,
issue,
court,
avail-
Pylon's
when
evidence that was
based on the
ment on
express
able,
assur-
directly,
not offer
argument
asked
could
and then live with the
to make
satisfy
damages
Pylon could
ances that
Judge Robinson ordered----”
decision
royalty payment.
judgment
prospective
and a
con-
Pylon’s counsel also
Id. at 27:44-28:22.
25:56-26:18,
7, 2011) at
Argument (July
Oral
tended,
was
confusingly,
whether there
http://www.cafc.uscourts.gov/oral-
available at
ability
Pylon’s
to show
evidence “available”
addi-
argument-recordings/all/pylon.html.
Pylon decid-
judgment, and whether
pay a
tion,
produce
why
did not
asked
when
it,
"we can
produce was a matter
ed not to
money
ability
satisfy
dam-
itsof
debating.” Id. at 29:28-36.
and are
"our
ages judgment,
counsel said
competitive
theoretically
junction
can be off-
than
harms
would burden
more
by monetary
certain cir-
of an
harm
payments
set
the absence
would
cumstances,
availability
likely
Appellee’s
of those Bosch.
Br. 58.
are not
We
monetary
the cir-
A
payments helps
persuaded.
party
define
cannot
an in-
escape
See,
e.g.,
junction simply
which this is
cumstances
so.
because
than
smaller
Canon,
Ltd.,
Inc. v. GCC Int’l
263 Fed.
or because
patentee
primary prod-
(Fed.Cir.2008)
57, 62
(considering
infringing
Windsurfing
uct is an
one.
Appx.
See
Int’l,
AMF, Inc.,
improbability
patentee
that the
could
Inc. v.
(Fed.Cir.1986) (“One
money judgment
weighing
collect
as
n. 12
who elects
injunction);
product
of an
Micro Int’l
build a
on a
favor
business
found to
*14
Co.,
Beyond
infringe
Innovation Tech.
No.
cannot be heard to
if an
complain
Ltd.
204-cv-32,
injunction against
at *2
WL
continuing infringement
(E.D.Tex.
21, 2007),
elected.”).
Mar.
destroys
vacated and re-
the business so
On
hand,
grounds,
on other
manded
damages”). public interest, As to the that we find
Here, only the record is that is evidence of this factor neutral. that argues Bosch Pylon likely product will be faced a substan- “may with inferior potentially” damages infringe- tial past compromise public’s safety, award for its the Appellant’s may ment and even that. pay unable to Br. but there is no support in the evidence, In the face of such the district record for that assertion. Although Bosch court’s failure right Pylon the extent also its to consider cites exclude and a monetary which forward-looking right award relies its to compete generally, is a viable or meaningful to an party specific alternative neither offers arguments as case, was error.7 why, in this public the interest injunc- would be served or disserved an We also that conclude Although tion. this final factor does factor, third hardships, the balance of fa party, favor either the remaining cоnsider- Pylon Bosch. “Bosch argues vors that is only ations lead to one reasonable conclu- an international conglomerate with a di sion: has that Bosch shown enti- that it is product base,” “Pylon verse is a whereas injunction. tled to a permanent small, domestic corporation that focuses on blades,” the manufacture and sale of undisputed Because the that parties’ such respective size and conclusively permanent injunc shows that business models that an in- case, demonstrate tive is relief warranted in this we do Pylon 7. To extent we discovery contends that should cate these all of issues for both develop remand this case so that it can evi- point trial. The circumstances here out the award, ability damages pay dence dangers with a regarding hard and fast rule persuaded. moreover, uniquely we are not is Pylon, such bifurcation. It was information, against objection, control its own financial Bosch's asked it either could damages not or chose not to come portion court to bifurcate the of this forward with relevant complain information. diffi- now case. It cannot nat- about the posed respect consequences culties with procedure to these issues are ural of the it asked directly tied to adopt. decision to court’s bifur- the court to merit, is are without we matter reverse not believe remand with Bosch court’s agree entry We denial of Bosch’s motion for appropriate. stands, any alternative record as it permanent injunction on the of a and remand necessarily would be result on remand injunction. appropriate particular- of discretion. Remand abuse AND REMANDED REVERSED only because would ly inappropriate here currently delay relief which Costs competing has been entitled. Costs are awarded to Bosch. product jury
against with pat- Bosch’s valid infringes has concluded BRYSON, Judge, dissenting in
ents, so for seventeen Circuit has done part. and for jury’s since the verdict months year nearly one since the district court agree majority I that the dis- Bosch’s motion for denied application trict court in its erred so injunction. despite It has done also factors, eBay and I agree therefore compelling evidence record which contains we not affirm the *15 should district court’s injunctive relief Bosch’s fa- supporting However, injunction. order I denying would delay, Further which amount vor. disagree majority’s with the decision that bond, stay injunction of an without a to a compels the the of an in- record issuance inequitable. be
would junction I and therefore dissent with re- urges, agree, as the dissent that We spect aspect judg- to that of this court’s normally a district court should balance ment. equitable these considerations the first injunctive Whether Bosch is entitled to instance, case compel but facts of this the is inquiry relief a fact-intensive that re- the on a different result. Unlike cases quires balancing competing careful of relies, eBay the including which dissent concerns, of equitable none which is dis- itself, courts where the district either of positive. competing The resolution fac- have apply could not or did not the stan- issues, sufficiency tual such as the and parties eBay, announced in the and dard Pylon’s the persuasiveness of evidence that the district court in this case were well infringement and will to have has continue develop- of the when eBay aware standard Bosch, adverse on is the district effects for applying Again, the record. to the ing and court, the infringement which has tried damages por- extent that bifurcation of the portion of this case to verdict and is famil- development tion of the trial inhibited of iar with I the record. would therefore relief, injunctive record as it to the relates injunction, entry direct of an but would the Pylon’s doing. the of Re- was result ordinary remanding follow course the of manding hearings the action for additional for the court to whether an district decide prior injunctive to relief would proper should issue based on a patentee the district punish the for court’s application four-part grant- test for decision, Pylon’s to the urging, bifurcate ing permanent injunctive eBay relief. See for court’s trial and erroneous L.L.C., MercExchange, Inc. 547 U.S. to the be- application the law 394, 1837, it. endorse result. 126 S.Ct. L.Ed.2d fore We cannot (2006) (remanding “so that the District Conclusion in the that framework may apply Court Ecolab, instance”); reasons, Inc. v. FMC first For the because foregoing (Fed.Cir. Pylon’s remaining arguments Corp., 569 F.3d 1351-52 we find 2009) Thus, district court on (“Although proposition did not which Bosch bas- factors, eBay nonethe- es much of argument Pylon’s consider the FMC ac- —that it tions required inflicting irreparable less asserts that made the are harm by injunctive showing causing and that it entitled to to at least open lose sales—is to However, analyze question relief. decline to requires we further factual de- instance.”); eBay velopment. majority in the first factors The сorrect that it Stryker Corp., Acumed LLC v. enough is not district court simply (“If (Fed.Cir.2007) to we were to conclude that blade the beam market is weigh evidence ourselves to not a two-competitor reach a market and to deny relief, injunctive injunctive conclusion on ground. we would relief But to effectively exercising our own the extent of competitors discretion the number as if we were the first-line court of other equity. the market characteristics affect belongs exclusively impact That role Bosch, the dis- sales on those solely trict court. task is issues are important Our review right Bosch’s injunctive relief; the district court’s decisions for an intensely abuse those factual discretion.”). issues given should be further consider- by ation the district court. majority concludes that on this rec- any out, ord decision the district court As the majority points Bosch con- deny to Bosch tends would be an addition loss of mar- share, abuse I disagree. my of discretion. ket has suffered harm view, enough open questions erosion, there are in the price form of loss of cus- tomers, *16 fact bearing propriety injunctive on the of potential and loss of access to cus- tomers, relief that not bypass we should the dis- issues on which the district court trict court’s of explicit findings. consideration those factual made no majority The issues on remand. concludes prima that Bosch made a facie showing on each of those issues and that First, open whether, question there is an Pylon because did rebut that showing, extent, Pylon and to what and Bosch com- those issues can conclusively be resolved pete the marketplace. Evidence before against Pylon. disagree I with that ap- that Pylon court showed is not proach to the of resolution those factual only the competing manufacturer-distribu- issues. Bosch’s on those issues tor of wiper beam blades in the market. was far compelling; from it certainly is majority out points that Bosch has incumbent upon the district сourt to con- sued several other manufacturer-distribu- evidence, sider may that be that the tors in addition for patent in- district court it persuasive. will find But fringement. the exception With of one that evidence was not so clear-cut that settled, however, case that has the record those issues can be resolved based on a does not reflect outcome of the those suits shifting proof. of the of burden The evi- thus cannot be assumed that the presents dence factual issues for the dis- other actually manufacturers infringe resolve, trict court to and we should direct Bosch’s patent rights. addition, the that court to those resolve issues rather evidence is as to unclear whether than reaching out to decide those issues presence was, the beam blade market or ourselves without aid of the pertinent the be, continues to reason that the Bosch has factual analysis by district court. the not succeeded in its efforts to market its Wal-Mart, product largest the Finally, after- live there is a issue as to the market of retailer effect parts. diversity automotive size and the two wiper large, and its blade Bosch is parties: INC., INTEGRATION, business, TRUSTED part its only are a small
sales Plaintiff-Appellant, ac- is small and blades while for its sales. The district court count all of the cutting against facts as regarded those STATES, Defendant-Appellee. UNITED ground injunction on the of an issuance impact the lost sales No. the economic 2010-5142. harm to not result would of Appeals, States United Court majority is that harm correct Bosch. The Federal Circuit. irrep- but still may comparatively be small if, example, Pylon financially is Oct. arable — for its losses compensate unable But Pylon’s ongoing infringement.
from parties af- respective size the two on bearing factor whether
fects another the bal- injunction granted: should be issue, As hardships. to that
ance says party cannot
majority simply just it is injunction because
escape
small, “to requiring com- against patented own invention”
pete may hardship in itself. While respective impact goes,
true so far as it parties impor-
of an on consideration, im- and the equitable
tant party can be each
pact respective by their
significantly affected nature of their business.
size and the *17 say the balance of
That is not to Pylon, necessarily favor but
hardships will
only that the considerations to which
points legitimate bearing are factors hardships. It is district
the balance of
court, court, not this that should consider weigh in the
those factors and them overall extent, To that I re-
equitable balance.
spectfully dissent.