By now, every “non-practicing entity” (NPE) in the country must be aware of the impact of the Supreme Court’s eBay decision, compelling the courts to apply the dreaded “four-factor” test to determine whether a prevailing patentee is entitled to an injunction barring further infringement by the scum-sucking defendant. In case anyone has been comatose for the past year and is unaware of the implications of this decision, I will briefly summarize – if you’re an NPE, the courts will NOT grant you an injunction. Note use of the word “courts.” We now have some good news for downtrodden NPEs, to wit, the four-factor test does NOT apply to patent cases in the International Trade Commission (ITC). (Spansion, Inc. v. Int’l. Trade Comm’n.)
That’s right folks, the CAFC has held that “eBay does not apply to [ITC] remedy determinations.” Previously, the ITC opened its doors – under certain conditions – to NPEs in its “landmark” (lawyerspeak for “it really helps our side”) Saxon decision (see N.P.E.s Rejoice, Exploitation And Licensing and Our Analysis Comes First). So, if you’re an NPE that has a patent that is being infringed by some offshore scum-sucker and you can establish the requisite “standing,” by showing previous licensing and enforcement efforts, perhaps you can get a limited exclusion and cease-and-desist order from the ITC.
THE LESSON TO BE LEARNED: They may not be the A-Team, but they may be your only hope of an injunction if you’re an NPE.
... which is why it's now become common, even de rigueur, for NPEs to file with both the district court and the ITC. One door closes, and another opens ...