{"id":1528,"date":"2017-04-28T12:16:10","date_gmt":"2017-04-28T16:16:10","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1528"},"modified":"2017-05-04T10:29:17","modified_gmt":"2017-05-04T14:29:17","slug":"lack-of-proof-that-infringement-was-but-for-cause-of-lost-sales-or-price-erosion-defeats-permanent-injunction","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1528","title":{"rendered":"Lack of Proof That Infringement was But For Cause of Lost Sales or Price Erosion Defeats Permanent Injunction"},"content":{"rendered":"

In Nichia Corp. v. Everlight Americas, Inc.<\/a>, [2016-1585, 2016-1618] (April 28, 2017), the Federal Circuit affirmed the district court’s judgment that U.S. Patent Nos. 8,530,250, 7,432,589,\u00a0and 7,462,870, directed to LED devices, were valid and infringed, as well as the district court’s denial of a permanent injunction.<\/p>\n

The Federal Circuit affirmed the district court’s construction of “lead,” rejecting the argument that it should have been construed to mean \u201cthe conductive portion of the\u00a0device that makes an electrical connection to a structure\u00a0outside of the device” rather than “the portion of\u00a0the device that conducts electricity.\u201d \u00a0The Federal Circuit also affirmed the district court’s construction of “planar,” rejecting the argument that it should have been construed to mean \u201cno\u00a0measurable surface variation,\u201d rather than \u201cin a substantially same plane.\u201d Thus the Federal Circuit affirmed the finding of infringement.<\/p>\n

With respect to validity, the Federal Circuit found substantial evidence supported the district court’s conclusion that some of the references asserted were not analogous, that claim elements were missing from other references, and that there was a lack of motivation to combine, \u00a0and thus that the patents were not proven obvious.<\/p>\n

As to Nichia’s appeal, the\u00a0district court held that Nichia failed to show that it had\u00a0suffered irreparable harm and that remedies at law\u00a0provided Nichia inadequate compensation. \u00a0The Federal Circuit agreed that Nichia failed to show irreparable harm, and thus did not reach the adequacy of compensation issue. \u00a0The Federal Circuit said that\u00a0an injunction in patent law must be justified like\u00a0any other: the moving party must satisfy the court that\u00a0relief is needed. Applying “well established principles of equity” the Federal Circuit found the showing of irreparable harm lacking.<\/p>\n

The district court noted the absence of meaningful competition between the parties. \u00a0The district court also found that Nichia had failed to establish past\u00a0irreparable harm, or the likelihood of irreparable harm in\u00a0the future based on lost sales\u201d or \u201cbased on price erosion.\u201d \u00a0The district court further found that\u00a0Nichia\u2019s licensing of the patents\u00a0to major competitors suggested that harm from \u201cinfringement\u00a0of the patents-in-suit is not irreparable.\u201d \u00a0Finally, the district court found that Nichia\u2019s licensing practices have made\u00a0multiple low-priced non-infringing alternatives from\u00a0competitors available to replace the accused Everlight\u00a0products if such products were not available.<\/p>\n

The Federal Circuit deferred to the district court\u00a0because the court heard these\u00a0arguments as the original finder of fact and concluded to\u00a0the contrary, carefully weighing both parties\u2019 evidence. \u00a0The Federal Circuit agreed that that parties sold in different markets, and Nichia\u00a0failed to prove that any competition between the parties\u00a0was meaningful. \u00a0The Federal Circuit noted that Nichia failed to show the infringement was the “but for” cause of even one lost sale, or the “but for” cause of price erosion.<\/p>\n

The Federal Circuit rejected a rule that the patentee’s licensing activities automatically barred injunctive relief, but had no problem with considering licensing activities as a factor. \u00a0Because Nichia failed to establish\u00a0one of the four equitable factors, the court did not abuse\u00a0its discretion in denying Nichia\u2019s request for an injunction.<\/p>\n

It is interesting that principles of equity can defeat the Constitutionally established “exclusive rights” to inventions and discovery, yet principals of equity are insufficient to extend laches to patent cases.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Nichia Corp. v. Everlight Americas, Inc., [2016-1585, 2016-1618] (April 28, 2017), the Federal Circuit affirmed the district court’s judgment that U.S. Patent Nos. 8,530,250, 7,432,589,\u00a0and 7,462,870, directed to LED devices, were valid and infringed, as well as the district … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[55,1],"tags":[],"class_list":["post-1528","post","type-post","status-publish","format-standard","hentry","category-injunction","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1528","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1528"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1528\/revisions"}],"predecessor-version":[{"id":1530,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1528\/revisions\/1530"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1528"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1528"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1528"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}