Radian Memory Systems LLC v. Samsung Electronics Co., Civil Action No. 2:24-cv-1073 (E.D. Tex.)—a patent infringement action in which an NPE has filed a motion for a preliminary injunction—has already achieved a degree of notoriety (see, e.g., here, here, and here) as a result of (1) the plaintiff’s argument that it is entitled to a finding of irreparable harm, based on the historic practice of equity courts circa 1789; and (2) the filing by the Antitrust Division of the Department of Justice and the USPTO of a Statement of Interest, arguing that “[u]nder the traditional principles of equity for a preliminary injunction,” “an ongoing patent infringement would, in many cases, result in irreparable harm based on the inadequacy of a monetary remedy, which can be difficult to calculate accurately.” In a supplemental filing post-dating the DOJ/USPTO Statement of Interest, the NPE argues that its position is supported by, inter alia, the recent decision in Trump v. CASA, Inc., in which the U.S. Supreme Court held that federal courts lack authority to issue universal injunctions, based on the majority’s reaffirmance of the holding in Grupo Mexicano de Desarrollo S.A. v. Alliance Bond Fund, Inc., 527 U.S. 308 (1999), that the Judiciary Act of 1789 authorizes U.S. district courts to grant “only those sorts of equitable remedies ‘traditionally accorded by courts of equity’ at our country’s inception.” As applied to injunctive relief in patent cases, the argument in Radian is that, under traditional principles, a court of equity would have presumed that the (alleged) infringement of a patent is an irreparable harm. The implication therefore might be that the Supreme Court’s decisions in eBay v. MercExchange and Winter v. Natural Resources Defense Council, Inc., which appear to allocate to the party seeking a permanent or preliminary injunction burden of showing irreparable harm, (1) were wrongly decided (even if they do not say, in so many words, that presuming irreparable harm is not good law), or (2) should be interpreted as at least permitting courts to presume irreparable harm in some cases, such as patent infringement actions, or (3) at least should make courts more receptive to finding irreparable harm, even when the patent owner is not a practicing entity. The government’s Statement of Interest is consistent with the third of these possibilities, and therefore not as far-reaching as the plaintiff’s, but still the filing of a Statement of Interest in connection with a motion for a preliminary injunction seems pretty remarkable—though it is consistent with the agencies’ practice, during the first Trump Administration, of filing statements of interest and other documents favoring injunctive relief in patent cases (and also disapproving of the use of antitrust law to regulate FRAND disputes). It also may prove consistent with the self-styled “American First" antitrust policy recently announced by AG Abigail Slater.
What Judge Gilstrap will make of it all is anyone’s guess, though I suspect he will feel bound by eBay and its subsequent interpretation by the Federal Circuit and other courts, and reject the invitation to revive the presumption of irreparable harm. To be fair, other common-law countries still apply a rebuttable presumption of irreparable harm in patent infringement actions, and efforts by Senators Coons and Tillis to enact legislation to that effect in the U.S. have been ongoing for several years. How significant such a change to U.S. practice, post-eBay, would be depends on how difficult it would be for accused infringers to rebut the presumption, though presumably the change would make it at least marginally, and perhaps a lot more than marginally, easier for patent owners including NPEs to obtain injunctive relief. It also is true, as the DOJ/USPTO point out, that patents are hard to value, and this is the principal economic argument in favor of protecting patents by means of property as opposed to liability rules. Nevertheless, arming patent owners with a presumption of irreparable harm also would risk enabling them to extract holdup rents that exceed the value of the invention in comparison with alternatives. Whether the error costs resulting from the denying injunctive relief would be greater than the error costs resulting from granting is, strictly speaking, indeterminate (though I have suggested what I believe to be some reasonable inferences courts could make, here); but there is a body of empirical research suggesting that, if anything, eBay has had a positive effect on U.S. innovation. (See Filippo Mezzanotti & Timothy Simcoe, Patent Policy and American Innovation After eBay: An Empirical Examination, 48 Rsch. Pol'y 1271 (2019); Filippo Mezzanotti, Roadblock to Innovation: The Role of Patent Litigation in Corporate R&D, 67 Mgmt. Sci. 7362 (2021); see also Samuel Antill et al., The Efficiency of Patent Litigation, Jan. 21, 2025, https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4842424; Fred Bereskin, Po-Hsuan Hsu & Huijun Wang, Growth of Firms under Injunction Risk, July 31, 2023, https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4281493; Christian Helmers & Brian J. Love, Patent Law Reform and Innovation: An Empirical Assessment of the Last 20 Years, Oct. 19, 2023, https://ssrn.com/abstract=4580645.) To be sure, every study has its limitations, but I have yet to see any of the people claiming that eBay has stifled innovation engage with this work, much less refute it with their own econometric studies. For this reason, my view for several years has been that, whatever eBay’s flaws may be purely as a matter of legal analysis, the U.S. is probably better off keeping it intact than re-instituting a presumption of irreparable harm.
As one might gather from the above, I also am firmly of the view that economic considerations should be paramount in this context. In my view, the fact that courts thought something was a good idea in 1789 is not a compelling reason to continue following their lead today, especially when we are talking about something like equity, which by its very nature should provide a measure of flexibility and adaptability in the application of the law. That said, Grupo Mexicano (a decision that rejected the federal courts’ authority to enter injunctions freezing a defendant’s assets pending trial to ensure the ability to pay compensatory damages, which is something the U.K. courts today are in fact authorized to do even if their counterparts in the 1700s were not) does state that U.S. courts only have “authority to administer in equity suits the principles of the system of judicial remedies which had been devised and was being administered by the English Court of Chancery at the time of the separation of the two countries.” But does that mean courts of equity today are obligated to follow 1790s-era practice so closely that must classify something as “irreparable harm” just because that was the common practice back then? For what it’s worth, I argued the following in a recent paper, Standing, Nominal Damages, and Nominal Damages “Workarounds” in Intellectual Property Law After TransUnion, 56 UC Davis L. Rev. 1085, 1162-63 (2023) (footnotes omitted):
I close by suggesting one possible further implication of the above analysis, relating to the availability of injunctive relief. Critics of the Supreme Court’s eBay decision often decry contemporary courts’ departure from the traditional equitable practice of granting prevailing patent owners injunctions in most cases. As the Article has shown, however, courts did not consistently recognize the “reasonable royalty” concept prior to Dowagiac [Mfg. Co. v. Minnesota Moline Plow Co., 235 U.S. 641 (1915)] — though, subject to strict conditions, they sometimes would award a lump-sum established royalty covering both past and future use of the patented invention, and when did they did so, injunctive relief was unavailable. On the other hand, when owners could not prove either a lost profit for past infringement, or an established royalty for past and future infringement, they could expect to recover only nominal damages; and since nominal damages are hardly an “adequate” remedy at law, it is not surprising that owners usually could convince a court of equity to grant an injunction. With the passage of time, however, reasonable royalties have become the most common form of monetary relief in patent cases, and sometimes may be adequate to compensate the patent owner not only for past infringement, but (in the form of ongoing royalties) for future infringement as well. Given these changed conditions, it may make sense to conclude that many patent owners today — unlike their nineteenth-century counterparts — have an adequate remedy at law that weighs against the entry of an injunction. Put another way — and consistent with the principle that “the expansion of adequate legal remedies . . . necessarily affects the scope of equity” — it may be that the adoption of reasonable royalties as a nominal damages workaround has alleviated, in some cases, the need for an equitable remedy altogether. At the very least, the historically-based criticism of eBay seems less secure.
I do note the following in a footnote, however:
. . . there is a debate over whether ongoing royalties are legal or equitable in nature. Compare H. Tomás Gómez-Arostegui & Sean Bottomley, The Traditional Burdens for Final Injunctions in Patent Cases c.1789 and Some Modern Implications, 71 Case W. Rsrv. L. Rev. 403, 436-41 (2020) (arguing that reasonable royalties are rarely awarded as “legal” relief for future injuries and noting that the Federal Circuit has characterized them as equitable relief), with Mark A. Lemley, Ongoing Confusion over Ongoing Royalties. 76 Mo. L. Rev. 695, 695-99 (2011) (arguing that “while the question is not free from doubt, there are reasonable arguments for treating ongoing royalties as within either the law or the equity power of the courts rather than resorting to a series of continuing lawsuits for past damages”). This rationale may not be relevant in some other IP cases, for which an award of total or partial profits or of statutory damages is available but not intended to compensate for future use — though there may be other valid reasons (e.g., balance of hardships) for denying injunctions in some of these cases.
I understand that the hearing on Radian’s motion will take place on July 16.
Update (7-11-25): Law360 reports this morning that Radian has withdrawn its motion for a preliminary injunction.
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