The U.S. Court of Appeals for the Federal Circuit has now vacated and remanded an injunction that did not comply with the specificity requirements of Federal Rule of Civil Procedure (F.R.C.P.) 65(d), relating to the scope of an injunction. The Court also vacated and remanded a portion of the judgment relating to the accused infringer’s affirmative defenses of invalidity and unenforceability. International Rectifier Corp. v. IXYS Corp., Case No. 04-1014 (Fed. Cir. Sept. 13, 2004). (Plager, J.)
International Rectifier is the assignee of a patent which relates to semiconductor device packages. On the same day its patent issued, International Rectifier filed a patent infringement suit against IXYS. Two weeks after the suit was filed IXYS modified the design of its accused products. International Rectifier subsequently filed a motion for summary judgment of infringement of the old products, which IXYS did not oppose (primarily because there was no economic incentive by IXYS to defend a suit against a discontinued product having only de minimis sales). The district court granted International Rectifier's motion for summary judgment, entered final judgment, and granted a permanent injunction against IXYS that simply prohibited any future infringement of the patent; i.e. the language proposed by International Rectifier and opposed by IXYS.
IXYS claimed that the injunction was overbroad in violation of F.R.C.P. 65(d) and urged the district court to limit the injunction to products made according to IXYS’ original design and any post-injunction products that differed in a "merely colorable" way from the adjudicated products. IXYS’ proposed injunction would exclude its redesigned products so that International Rectifier would be unable to accuse those products of infringement in a contempt proceeding. The district court rejected IXYS’ objections and entered final judgment using the language proposed by International Rectifier. IXYS appealed.
The Federal Circuit vacated the permanent injunction, finding that "the injunction failed to satisfy Rule 65(d) because it lacked specific terms and a reasonably detailed description of the acts sought to be restrained." Applying the holding of its Additive Controls case (1993), the Court rejected as overly broad a permanent injunction "that simply prohibits future infringement of a patent." The Federal Circuit explained that the district court erroneously failed to state which acts constituted infringement or to limit the injunction’s scope to the manufacture, use or sale of the specific devices found to infringe. Furthermore, as the only acts an injunction may prohibit are the infringement of a patent by an adjudicated devices and infringement by devices not more than colorably different from the adjudicated devices, the Federal Circuit held that in order to comply with Rule 65(d), an injunction is required to explicitly proscribe those acts.
The Court rejected IXYS’ request to exclude from the injunctions the redesigned IXYS’ redesigned products, which International Rectifier chose not to accuse despite efforts by IXYS to obtain an adjudication of those products below. The Court reasoned that the applicability of a properly limited injunction to those products must await a contempt proceeding, if one is ever brought, since those products were/are not before either the district court or the Federal Circuit.
Finally, the judgment regarding no invalidity and no unenforceability in favor of International Rectifier were vacated because those issues were never adjudicated. IXYS withdrew its affirmative defenses during discovery and prior to the date on which International Rectifier filed its motion for summary judgment. Thus, those issues were not before the court and International Rectifier was not entitled to adjudication of them.
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