Page 123 - Intellectual Property Disputes

public interest factor is whether an injunction, both in scope and effect, strikes a workable balance
between protecting the patentee’s rights and protecting the public from the injunction’s adverse effects."
fn 53 The appellate court reviewed the district court’s determination of irreparable injury to i4i noting, the
"district court concluded that i4i was irreparably injured by Microsoft’s infringement, based on its
factual findings that Microsoft and i4i were direct competitors in the custom XML market, and that i4i
lost market share as a result of Microsoft’s infringing Word products." fn 54 In addition, the appellate
court stated that "it was proper for the district court to consider evidence of past harm to i4i. Past harm
to a patentee’s market share, revenues, and brand recognition is relevant for determining whether the
patentee ‘has suffered an irreparable injury.’" fn 55

The appellate court also reviewed the district court’s finding that monetary damages were insufficient.
The Federal Circuit noted that the "district court found no evidence that i4i had previously licensed the
patent, instead, finding evidence that i4i sought to retain exclusive use of its invention" and that "[i]t was
not an abuse of discretion for the district court to conclude that monetary damages would be
inadequate." The circuit court also held that i4i’s patented technology was "central" to its business and
that its "market share, revenues, and business strategy are similarly tied to the patented method." In
finding the balance of hardships weighting in favor of i4i, the court explained that the "far greater
importance of the patented method to i4i, combined with the demonstrated past effects of infringement
on i4i, favors issuance of a permanent injunction." Finally, the court expressed its belief that "the
injunction’s narrow scope substantially mitigates the negative effects on the public, practically and
economically." fn 56 The only modification the appellate court made to the injunction was the effective
date, which was extended from 60 days from the date of the injunction order to 5 months from that date.
In all other respects, the scope of the permanent injunction was upheld.

Courts have split on whether to obtain an advisory jury verdict on the appropriate post-verdict royalty.
For example, Cummins-Allison Corp. v. SBM Co. fn 57 and Ariba, Inc. v. Emptoris, Inc. fn 58 submitted
the issue to the jury. Other judges have considered the post-verdict royalty after trial as for example,
Presidio Components v. American Technical Ceramics Corp.; fn 59 Creative Internet Advertising Corp. v.

fn 53 Id. (citing Broadcom Corp. v. Qualcomm, Inc., 543 F.3d 683, 704 (Fed. Cir. 2008)).

fn 54 i4i, 598 F.3d at 831.

fn 55 Id. (citing eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006)).

fn 56 i4i, 598 F.3d at 831.

fn 57 Cummins-Allison Corp. v. SBM Co., 584 F. Supp. 2d 916 (E.D. Tex. 2008).

fn 58 Ariba v. Emptoris, 567 F. Supp. 2d 914 (E.D. Tex. 2008).

fn 59 Presidio Components Inc. v. Am. Technical Ceramics Corp., 2010 WL 3070370 (S.D. Cal.).

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