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Expectations were high this Term for the Court’s opinions on patent law. The opinions provided less guidance, however, than
anticipated.
The most watched case this Term in the patent area was eBay v. MercExchange, L.L.C., 126 S. Ct. 1837, where the Court unanimously, but narrowly, held that requests for injunctive relief against patent infringers
are not to be automatically granted. Rather, a plaintiff must meet the traditional four-factor test applied by courts when
considering whether to award permanent injunctive relief to a prevailing plaintiff, i.e., irreparable injury; inadequacy of legal remedies; balance of hardships; and the public interest. The Court ruled that the
Federal Circuit had erred in adopting a categorical rule that a permanent injunction should be denied in a patent case only
in the “unusual” case, but that the district court also did not properly apply the traditional test because it relied on “plaintiff’s
willingness to license its patents” and “its lack of commercial activity in practicing the patents” as sufficient to establish
that the patent holder would not suffer irreparable harm if an injunction did not issue. The Court stated that “traditional
equitable principles do not permit such broad classifications” and noted that some patent holders, “such as university researchers
or self‑made inventors, might reasonably prefer to license their patents” and “may be able to satisfy the traditional four‑factor
test.”
Two significant concurring opinions also were filed which are certain to get attention because they appear to be attempts
to provide greater guidance to the lower courts. Chief Justice Roberts, in a concurring opinion for three, emphasized that
in applying the four-factor test, lower courts should not ignore the fact that courts have historically found permanent injunctions
appropriate in patent law because of “the difficulty of protecting a right toexclude through monetary remedies that allow an infringer touse an invention against the patentee’s wishes.” In a different concurring opinion for four, Justice Kennedy stressed that history
is most helpful in cases where the circumstances are like those in past cases and may not apply where a patent is being used
“primarily for obtaining licensing fees” or where there is “potential vagueness and suspect validity” of a patent “over business
methods, which were not of much economic and legal significance in earlier times.”
A second patent case that was anxiously anticipated became a non-event. In Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., 74 U.S.L.W. 4431, the Court had granted certiorari to decide the question whether a method patent directing a party to correlate certain test results could validly claim a
monopoly “over a basic scientific relationship” used in medical treatment. Based on an earlier Invitation from the Court to
the Solicitor General, the Court also was expected to revisit the issue of the patentability of laws of nature and natural
phenomena. But the Court decided not to decide the case. The Court issued an order dismissing the writ of certiorari as improvidently granted. Such a ruling does not reflect a view on the merits of the case. In a very unusual opinion for
three dissenting from the dismissal, Justice Breyer set forth at length the reasons why and how the case should have been
decided, opining that the patent was invalid because based on an unpatentable phenomenon of nature. Whether a majority of
the Court would agree with that view will have to be determined in another case.
The third patent case this Term, Illinois Tool Works, Inc. v. Independent Ink, Inc., 126 S. Ct. 1281, involved the intersection of patent and antitrust law and is discussed in the antitrust analysis above.
Its rejection of the judicial presumption that a patent confers market power upon the patent holder followed the course expected
by patent and antitrust experts.
The Court has granted certiorari in two patent cases for next term and issued an Invitation to the Solicitor General in a third. See "Business Cases to Watch for Next Term."
