United States: Mere Clarification Of Original Injunction Without Modification That Substantially Alters The Legal Relations Of The Parties Does Not Confer Appellate Jurisdiction Until Final Judgment

In Aevoe Corp. v. AE Tech Co., No. 12-1422 (Fed. Cir. Aug. 29, 2013), the Federal Circuit dismissed the appeal for lack of jurisdiction because the district court merely clarified the scope of the original injunction, and there was no modification that substantially changed the legal relationship between the parties.

Aevoe Corporation ("Aevoe"), assignee of U.S. Patent No. 8,044,942 ("the '942 patent"), directed to a touchscreen protector for electronic devices, sued AE Tech Co., Ltd. ("AE Tech"), alleging that AE Tech was infringing the '942 patent.  Aevoe requested a temporary restraining order, which the district court granted, barring AE Tech from selling its touchscreen protector products.  Despite receiving notice of the district court's restraining and show cause orders, AE Tech neither answered the complaint, responded, nor appeared, and the district court issued a preliminary injunction. 

After entry of the preliminary injunction, AE Tech filed a motion to reconsider and vacate the preliminary injunction, which the district court denied and refused to vacate.  The district court, however, entered an order altering the January 24, 2012, injunction as requested by AE Tech to remove the "counterfeit" and "colorable imitation" trademark language from the injunction.

After the hearing on AE Tech's motion for reconsideration, on March 5, 2012, AE Tech informed Aevoe that it had redesigned its product and was "intending" to sell the new product with the help of and through S&F Corporation and GreatShield, Inc. (collectively "S&F Defendants").  On March 14, 2012, Aevoe filed an amended complaint joining the S&F Defendants, alleging that the S&F Defendants sold infringing products obtained from AE Tech.  Shortly thereafter, Aevoe filed a motion requesting that AE Tech and the S&F Defendants be held in contempt, and sanctioned for willfully disregarding the district court's preliminary injunction.  The district court found that the added channels were a nonfunctional and trivial attempt to design around the '942 patent, and that the redesigned AE Tech screen protector was not more than colorably different than the enjoined products.  Accordingly, the district court held all defendants in contempt, concluded that sanctions against AE Tech were appropriate, changed the language of the preliminary injunction by adding back the "colorable imitation" phrase, and explicitly named the S&F Defendants as enjoined parties. 

On appeal, the Federal Circuit noted its obligation to consider whether it had jurisdiction over the appeal.  The Court indicated that its focus would remain on the injunction and not on the district court's contempt order because a contempt order interpreting or enforcing an injunction is generally not appealable until final judgment.  Notably, the district court issued its original preliminary injunction on January 24, 2012, and AE Tech did not appeal the injunction until May 2012.  The Court pointed out that any appeal should have been filed within thirty days of the district court's grant of the original injunction; however, the district court twice altered the language of the injunction.  Thus, the operative question on appeal was whether these changes amounted to a modification of the original injunction that in effect would reset the time for appeal of the injunction.

"A contempt order interpreting or enforcing an injunction, however, is generally not appealable until final judgment.  This is particularly so where no sanction had yet been imposed for that contempt and proceedings with respect to that question remained ongoing at the time the appeal before us was filed."  Slip op. at 9 (citations omitted).

Relying on regional circuit law to determine whether the injunction had been modified, the Court indicated that "[w]hether an order modifies an existing injunction rather than merely interprets it depends on whether it substantially alters the legal relations of the parties."  Slip op. at 11 (alteration in original) (quoting Cunningham v. David Special Commitment Ctr., 158 F.3d 1035, 1037 (9th Cir. 1998)).  That inquiry required the Court to consider whether the district court modified the injunction as to AE Tech by reinserting the "colorable imitation" language after finding the defendants in contempt and explicitly adding the GreatShield "redesign" to the injunction.  The Court explained that whether "colorable imitations" were explicitly mentioned in the injunction language or not, such imitations fell within its scope; the district court was obligated to apply the colorable differences test in the contempt proceeding.  Thus, the Court concluded, the legal relationship between the parties was in no way altered by the district court's changes to the injunction language.  Further, the Court indicated that neither the excision and addition of the "colorable imitation" language nor the explicit description of the actual redesign amounted to a modification of the preliminary injunction upon which the Court could predicate jurisdiction.  As such, the Court stated, the district court never modified the injunction such that it would reset AE Tech's time to appeal, and, therefore, AE Tech's appeal was untimely.  Because the district court did not substantively modify the January 2012 injunction, the Federal Circuit held that AE Tech's appeal derived from a contempt order—not an appealable interlocutory order—and it did not have jurisdiction over AE Tech's appeal.

Finally, the Court considered whether the addition of the S&F Defendants amounted to a modification of the injunction.  Though the S&F Defendants were not joined as defendants until March 2012, the Court determined they had notice of the injunction within a week of its original issuance in January 2012 and again in February 2012.  The Court plainly stated that it was beyond debate that the S&F Defendants fell within the express language of the original injunction, whether or not they were explicitly named as enjoined parties, since the injunction was directed to AE Tech or any party that had notice of the injunction and was selling the barred products.  Thus, the addition of the S&F Defendants as explicitly enjoined parties did not substantively modify the language of the preliminary injunction because they were already barred—on the face of the injunction—from selling the products.  The Court noted, whether it does so expressly or not, however, a court generally may not enjoin a nonparty to the action before it. The Court, though, made the distinction that a party who acts in concert with an enjoined party may be subject to the strictures of an injunction.  The Court ultimately found that the S&F Defendants fell within the purview of the original injunction because they were "acting in concert" with AE Tech in connection with the resale of the redesigned products, and failure to enjoin their conduct would thwart the purposes of that injunction.  Therefore, the addition of the S&F Defendants only clarified, and did not modify, the original injunction because they always fell within the restrictions of the original injunction.  Because the district court did not substantially alter the legal relationship between the parties by explicitly naming the S&F Defendants as enjoined parties, the Court concluded that it also did not have jurisdiction over the S&F Defendants' appeal.

Accordingly, because the district court merely clarified the scope of the original injunction, the Court found that there was no modification that substantially changed the legal relationship between the parties and dismissed the appeal for lack of jurisdiction.

Judges: Rader, Lourie, O'Malley (author)

[Appealed from D. Nev., Judge Navarro

This article previously appeared in Last Month at the Federal Circuit, September 2013

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
23 Oct 2018, Webinar, Washington, DC, United States

How do trademark and advertising trends impact your company? Join a discussion on the latest trends in the food and beverage industry in the United States and Europe.

24 Oct 2018, Other, Washington, DC, United States

Join the usual suspects from Finnegan as they take you through a detailed discussion of patent prosecution strategies from drafting to grant.

25 Oct 2018, Seminar, Melbourne, Australia

Finnegan is a Gold sponsor of IAM Magazine’s IPBC Australasia. The program will take place at the Sofitel Hotel in Melbourne, Australia.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions