Following up on my recent post about Judge St. Eve’s post-eBay permanent injunction opinion (the first in the Northern District), Michael Smith who writes the E.D. Texas Federal Court Blog has written a very interesting article analyzing the first nine district court permanent injunction decisions decided using the eBay standard.

You can download a PDF of the article from Michael’s Blog here.  Although he wrote the article too early and, therefore, was not able to include Judge St. Eve’s opinion, he draws some very interesting conclusions.  For example, he believes that the first nine cases suggest what many expected:  plaintiffs that manufacture products that compete with the defendant’s infringing product get permanent injunctions, while plaintiffs that license their patents without manufacturing or selling competing products do not get permanent injunctions.  He also notes that one of the four plaintiffs in the E.D. Texas received permanent injunctive relief, while four of five plaintiffs outside the E.D. Texas received permanent injunctive relief.  Of course, the first nine permanent injunction opinions are not likely a large enough pool to draw strong conclusions, but the results certainly are interesting.  Here is a brief section of Michael’s conclusion:

 

 

Of the nine substantive decisions discussed above, the plaintiff prevailed in one out of four in the Eastern District of Texas, but four out of five outside it. Why the geographic split? Because both of the concurrences in eBay were correct. Chief Justice Roberts was correct that “history informs current practice” in cases which, as Justice Kennedy wrote “bear substantial parallels to litigation the courts have confronted before.” Essentially the litigation outside the Eastern District of Texas follows the more traditional model of litigation between competitors in an industry and accordingly, the non-Eastern District of Texas cases present a win rate of 80% for a prevailing plaintiff on the merits. On the other hand the litigation in the Eastern District apparently more often presents cases where, as Justice Kennedy observed, the plaintiff was not a competitor, but rather a company seeking licensing revenues in return for the use of its invention. Accordingly, in these cases the requests for injunctions were denied, and, the plaintiff’s overall win rate is only 25%. This is perhaps an illustration that, as Justice Kennedy observed, trial courts are using their discretion to determine whether “past practice fits the circumstances of the case before them.”