Injunctions as more (or Less) than "off switches": Patent-infringement injunctions' scope

Texas Law Review

Volumn 90, Issue 6, 2012, Pages 1399-1472

  Golden, John M ^a  

^a UNIVERSITY OF TEXAS SCHOOL OF LAW   (United States)

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EID: 84863893686     PISSN: 00404411     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article

References (428)

1. John M. Golden, Principles for Patent Remedies, 88 TEXAS L. REV. 505, 506-07 & n.5 (2010) (noting the existence of "conflicting answers from lower courts and academic commentators regarding how to decide when injunctions should issue" (footnotes omitted))
2. Peter Lee, The Accession Insight and Patent Infringement Remedies, 110 MICH. L. REV. 175, 240 (2011) (proposing to "apply[] accession doctrine-with some modification-to deny injunctive relief when an infringer substantially improves on an underlying patented invention"). Denials of patentinfringement injunctions have raised questions of when and how a court should award an "ongoing royalty" to compensate for expected activity that the court does not enjoin.
3. Paice LLC v. Toyota Motor Corp., 504 F.3d 1293, 1314 (Fed. Cir. 2007) ("Under some circumstances, awarding an ongoing royalty for patent infringement in lieu of an injunction may be appropriate.")
4. H. Tomás Gómez-Arostegui, Prospective Compensation in Lieu of a Final Injunction in Patent and Copyright Cases, 78 FORDHAM L. REV. 1661, 1664-65 (2010) (seeking "to demonstrate that federal courts have no authority to award compulsory prospective compensation ... for postjudgment copyright and patent infringements"). Exploration of the proper limits and form of ongoing-royalty orders is outside the scope of this Article.
5. Golden, supra note 1, at 582-86 (examining reform proposals relating to the calculation of damages)
6. Mark A. Lemley & Carl Shapiro, Patent Holdup and Royalty Stacking, 85 TEXAS L. REV. 1991, 2017-35 (2007) (discussing legal standards and practices regarding reasonable-royalty damages).
7. See infra text accompanying note 162.
8. Mark A. Lemley & Philip J. Weiser, Should Property or Liability Rules Govern Information?, 85 TEXAS L. REV. 783, 783 (2007) ("[L]aw and economics scholars call injunctive relief a 'property rule.'")
9. Guido Calabresi & A. Douglas Melamed, Property Rules, Liability Rules, and Inalienability: One View of the Cathedral, 85 HARV. L. REV. 1089, 1092, 1115-16 (1972) (characterizing enforcement of a legal entitlement by an injunction as a form of "protect[ion] by a property rule").
10. Joshua P. Davis, Taking Uncertainty Seriously: Revising Injunction Doctrine, 34 RUTGERS L.J. 363, 397 (2003) ("The choice a judge makes regarding preliminary and final injunctive relief need not be dichotomous.").
11. Doug Rendleman, The Trial Judge's Equitable Discretion Following eBay v. MercExchange, 27 REV. LITIG. 63, 74 (2007) ("The judge's decisions in drafting an injunction are contextual and discretionary: these are the details of what to forbid or require and the timing of whether or not to give the defendant a period to adjust and, if so, how long.")
12. cf. OWEN M. FISS, THE CIVIL RIGHTS INJUNCTION 7 (1978) (describing the law as having "long embraced a pluralism with regard to injunctions" and proposing a new scheme for classifying injunctions as "preventive," "reparative," or "structural").
13. Cf. Orit Fischman Afori, Flexible Remedies as a Means to Counteract Failures in Copyright Law, 29 CARDOZO ARTS & ENT. L.J. 1, 29-30 (2011) (suggesting, in the copyright context, that "an injunction could be granted for a limited period of time only" in order to balance copyright-owner and free speech interests)
14. John M. Golden, Commentary, "Patent Trolls" and Patent Remedies, 85 TEXAS L. REV. 2111, 2148 n.136 (2007) (discussing considerations that might favor or disfavor staying an injunction).
15. Supplemental Brief of Defendants-Appellants on Rehearing En Banc at 34, TiVo Inc. v. EchoStar Corp., 646 F.3d 869 (Fed. Cir. 2011) (en banc) (No. 2009-1374) (contending that, "at least for a first-time infringer, [an] injunction may not legally go further" than "'prevent[ing] the violation of any right secured by patent'" (quoting 35 U.S.C. § 283 (2006))).
16. For purposes of this Article, "injunction scope" is not considered to be concerned with the nature and extent of the individuals or entities whose compliance with the injunction is ordered.
17. 646 F. 3d 869 (Fed. Cir. 2011) (en banc).
18. TiVo Inc. v. EchoStar Corp., No. 2009-1374, 2010 U.S. App. LEXIS 4543, at *39 (Fed. Cir. Mar. 4, 2010) ("Given EchoStar's refusal to disable the DVR functionality in its existing devices and the fact that its original attempts to design around TiVo's patent were wholly unsuccessful, the district court had ample justification for ... determin[ing] that court pre-approval of any new design-around effort was necessary to prevent future infringing activity."), vacated, 376 F. App'x 21 (Fed. Cir. 2010).
19. Louis Kaplow & Steven Shavell, Property Rules Versus Liability Rules: An Economic Analysis, 109 HARV. L. REV. 713, 715 (1996) (contrasting such a state guarantee under a property rule with "liability rules, under which [the state] merely discourages violations by requiring transgressors to pay victims for harms suffered" (emphasis omitted))
20. see also id. at 723 (defining a property rule as involving "absolute protection of [an] entitlement").
21. Id. at 724
22. cf. id. at 756 (discussing the possibility of "[v]iewing property rules and the conventional liability rule as members of a continuum of liability rules").
23. Cf. id. at 757 ("When we consider how property and liability rules are actually applied, we also see that the view that they lie on a continuum is descriptively helpful, because the rules often turn out to be different from both true property rules and the liability rule with damages equal to harm.").
24. With respect to concerns of potential patent "holdup" or "holdout," crafting of injunctive language might be particularly effective in addressing concerns about the chilling of design-around activity from overly broad or vague injunctions. On the other hand, as long as injunctive language requires an infringer to abandon its existing course of activity, careful tailoring of injunctive language might do little to address holdup or holdout concerns that result from a lock-in effect under which any significant change in the infringer's course will impose large costs that have essentially nothing to do with the merits of the patented invention. Consequently, consideration of problems of injunction scope might help disentangle holdout concerns that arise from two different causes: (1) an injunction so broadly written that all feasible design-arounds risk a holding of contempt, and (2) lock-in effects that mean that any design-around, no matter how legally permissible, entails high cost.
25. Cf. Robert P. Merges & Richard R. Nelson, On the Complex Economics of Patent Scope, 90 COLUM. L. REV. 839, 916 (1990) ("[A] 'strengthening' of property rights will not always increase incentives to invent .... When a broad patent is granted or expanded via the doctrine of equivalents, its scope diminishes incentives for others to stay in the invention game ....").
26. In mathematics, a measure "is a rule that assigns a non-negative number (or +∞) ... to each set ... in [a] collection" of sets. 2 PAUL BAMBERG & SHLOMO STERNBERG, A COURSE IN MATHEMATICS FOR STUDENTS OF PHYSICS 801 (1990). The assigned number is generally representative of the size of the set with which it is associated. Cf. id. (observing that one axiom of measure theory is that the measure of a "countable union of disjoint sets" equals the sum of the measures of the individual disjoint sets included in the union). Hence, according to one standard convention, the measure of an interval from a to b along the line of real numbers (a straight line stretching from -∞ to +∞) equals the magnitude of the difference between a and b. Id. Thus, the measure of the interval from 5 to 9 is 4. On the other hand, the measure of a single real number such as 5 equals the magnitude of the difference between 5 and 5-namely, zero. Under this convention, the number 5 is a set of measure zero along the line of real numbers.
27. Because a Type-1, colorable-differences injunction generally includes a foundational Type- 0, measure-zero injunction, this Article will commonly refer to an order that has Type-0 and Type-1 aspects simply as a "Type-1 injunction." 17. Because United States patent law generally does not forbid the use abroad of a product or process whose use in the United States would infringe a U.S. patent, a product or process located abroad would, generally speaking, not be expected to factor into future U.S. patent infringement unless there were reason to expect that the product or something generated by the process would be brought to the United States.
28. See 35 U.S.C. § 271 (2006) (describing forms of patent infringement); see also Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 441 (2007) ("It is the general rule under United States patent law that no infringement occurs when a patented product is made and sold in another country.").
29. John M. Golden, Construing Patent Claims According to Their "Interpretive Community": A Call for an Attorney-Plus-Artisan Perspective, 21 HARV. J.L. & TECH. 321, 322 (2008) ("Determination of the scope of a patented invention is one of the most contentious and difficult tasks of modern patent law.").
30. Merges & Nelson, supra note 14, at 843 ("Without extensively reducing the pioneer's incentives, the law should attempt at the margin to favor a competitive environment for improvements ....").
31. TiVo Inc. v. EchoStar Corp., 646 F.3d 869, 883 (Fed. Cir. 2011) (en banc).
32. See id. ("But an assertion that one has permissibly designed around a patent should not be used to mask continued infringement.").
33. U.S. Patent No. 4,963,736 col. 14 II. 24-35 (filed Nov. 15, 1989).
34. Applera Corp. v. Micromass UK Ltd., 186 F. Supp. 2d 487, 501, 504 (D. Del. 2002) (observing that a device accused of infringing the '736 patent included "an empty vacuum chamber before the hexapole ion bridge chamber alleged by [the plaintiffs] to be the 'first vacuum chamber' in the '736 patent").
35. See id. at 509 (noting that the defendants "propose[d] a construction of 'separated by a wall' and 'interchamber orifice' that would require the wall and interchamber orifice to join or link the two vacuum chambers and spaces").
36. See id. at 510 (noting the plaintiffs' argument that "'separated by a wall' should be construed to mean only that 'there is at least a wall between the first and second vacuum chambers'").
37. See id. at 508 (finding "the proper construction of rod to be self-evident" and that the term does not need construction "because 'a rod is a rod'").
38. Cf. MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY 1079 (11th ed. 2003) (defining rod as "a slender bar (as of wood or metal)").
39. SUBCOMM. ON PATENTS, TRADEMARKS, & COPYRIGHTS, S. COMM. ON THE JUDICIARY, 85TH CONG., AN ECONOMIC REVIEW OF THE PATENT SYSTEM 50 (Comm. Print 1958) (prepared by Fritz Machlup) [hereinafter ECONOMIC REVIEW OF THE PATENT SYSTEM] (describing how "'invent[ing] around' [a] competitor's patent" can enable a rival to compete with a patent holder)
40. F. Scott Kieff et al., PRINCIPLES OF PATENT LAW 71 (4th ed. 2008) (arguing that the "secondary inventive activity" of designing around patents is generally desirable because it helps ensure fuller exploration of technological alternatives)
41. Golden, supra note 6, at 2130 (noting that under a specified model of party incentives where the expected cost of a design-around is less than the expected cost of simply litigating and potentially being subjected to court-ordered remedies, "the possibility of a design-around improves the potential infringer's position ... [and] should reduce the amount for which the potential infringer is willing to settle").
42. Cf. Golden, supra note 6, at 2132 ("[A] patent holder will likely approach negotiations at a significant informational disadvantage with respect to the potential infringer's expected costs.").
43. Kieff et al., supra note 30, at 70
44. see id. at 71 (arguing that "[w]hile at first blush [designing around] may seem wasteful, as redundant, it becomes immediately apparent that such secondary inventive activity is usually a very good thing" because "[o]ften, a second-generation product is better than the first")
45. ROGER E. SCHECHTER & JOHN R. THOMAS, INTELLECTUAL PROPERTY: THE LAW OF COPYRIGHTS, PATENTS AND TRADEMARKS § 13.4.1, at 289 (2003) ("The Patent Act is also thought to stimulate technological advancement by inducing individuals to 'invent around' patented technology.")
46. ECONOMIC REVIEW OF THE PATENT SYSTEM, supra note 30, at 51 ("[F]rom merely defending the need of 'inventing around a patent' as a minor item of waste, the discussion has recently proceeded to eulogize it as one of the advantages of the system, indeed as one of its 'justifications.'" (footnotes omitted)).
47. State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985).
48. ECONOMIC REVIEW OF THE PATENT SYSTEM, supra note 30, at 51 ("The production of the knowledge of how to do in a somewhat different way what we have already learned to do in a satisfactory way would hardly be given highest priority in a rational allocation of resources.").
49. Edmund W. Kitch, The Nature and Function of the Patent System, 20 J.L. & ECON. 265, 276 (1977) (describing how patent law "puts the patent owner in a position to coordinate the search for technological and market enhancement of the patent's value so that duplicative investments are not made and so that information is exchanged among the searchers").
50. Cf. ECONOMIC REVIEW OF THE PATENT SYSTEM, supra note 30, at 52 ("The continental blockade in the Napoleonic War led to the development of beet sugar; the blockade in World War I led to the process of obtaining nitrogen from air; the U-boat blockade in World War II led to the invention of atabrine as a substitute for quinine; etc., etc. Does it follow that it would be a good idea to institute more blockades?").
51. 1 DAN B. DOBBS, DOBBS LAW OF REMEDIES § 2.8(1), at 186 (2d ed. 1993) ("Because [equitable decrees] are personal orders, they are often enforced coercively, through the contempt power.").
52. Id. at 187 (discussing the possibility of civil or criminal contempt proceedings)
53. KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1524 & n.2 (Fed. Cir. 1985) (noting the possibility of "civil and criminal contempt proceedings"), overruled on other grounds, TiVo Inc. v. EchoStar Corp., 646 F.3d 869(Fed. Cir. 2011) (en banc)
54. James C. Nemmers, Enforcement of Injunctive Orders and Decrees in Patent Cases, 7 IND. L. REV. 287, 291 (1973) (discussing the use of civil and criminal contempt in patent cases).
55. 1 DOBBS, supra note 37, § 2.8(3), at 196-97
56. Spindelfabrik Suessen-Schurrv. Schubert & Salzer Maschinenfabrik Aktiengesellschaft, 903 F.2d 1568, 1578 (Fed. Cir. 1990) ("A civil contempt sanction is remedial, and for the benefit of the complainant[,] while a criminal contempt sentence is punitive, to vindicate the authority of the court." (internal quotation marks omitted)).
57. FED. R. CRIM. P. 42(b) ("Notwithstanding any other provision of these rules, the court (other than a magistrate judge) may summarily punish a person who commits criminal contempt in its presence if the judge saw or heard the contemptuous conduct and so certifies; a magistrate judge may summarily punish a person as provided in 28 U.S.C. § 636(e).").
58. 1 DOBBS, supra note 37, § 2.8(1), at 187 (observing that for purposes of imposing "a criminal sanction," "the incidents of trial must comport with all the relevant rules of criminal procedure, including the constitutional protections afforded to those charged with crime" and possibly including a right to a jury trial and a requirement of "proof beyond a reasonable doubt")
59. FED. R. CRIM. P. 42(a) (providing notice and other procedural requirements for criminal contempt proceedings)
60. Victor Stanley, Inc. v. Creative Pipe, Inc., 269 F.R.D. 497, 537-38 (D. Md. 2010) (noting that in criminal contempt proceedings, "the court must refer the matter to the United States Attorney for prosecution," "appoint a private prosecutor" if the U.S. Attorney declines "(a highly probable outcome in most instances)," demand proof "beyond a reasonable doubt," and provide for "a jury trial if the sentence will be longer than six months" (citations omitted)).
61. TWM Mfg. Co. v. Dura Corp., 722 F.2d 1261, 1272 (6th Cir. 1983) (stating, in reviewing a holding of criminal contempt for violation of a patent-infringement injunction, that "[i]n criminal contempt, willful disobedience must be proved beyond a reasonable doubt" and that "[w]illfulness, for this purpose, implies a deliberate or intended violation, as distinguished from an accidental, inadvertent or negligent violation")
62. Nemmers, supra note 38, at 295 ("A criminal contempt proceeding is a crime 'in the ordinary sense,' and therefore the acts of the accused must be shown beyond a reasonable doubt to have been willful and deliberate." (footnotes omitted)).
63. An electronic search of all federal court opinions in the Westlaw database since 1970 that used "criminal contempt" and "patent" in the same paragraph turned up no case in which a district court made a holding of criminal contempt that was not reversed on appeal, and two cases in which such holdings were reversed.
64. See Spindelfabrik, 903 F.2d at 1580 (holding that a "$2 million fine" "constituted punishment for criminal contempt, and cannot stand because it was imposed without following the requisite procedures for criminal contempt")
65. TWM, 722 F.2d at 1272 (holding that "the evidence [did] not support a finding of criminal contempt"). In 1973, James Nemmers reported that he was able to identify only two reported cases "in which criminal contempt was clearly charged for violation of an injunction in a patent case"-one from 1970 and another from 1911.
66. Nemmers, supra note 38, at 291 n.20 (citing United States ex rel. Shell Oil Co. v. Barco Corp., 430 F.2d 998 (8th Cir. 1970)
67. Kreplik v. Couch Patents Co., 190 F. 565 (1st Cir. 1911)). More generally, Nemmers reported that courts have historically tended to find criminal contempt principally in situations involving "'direct' contempt[]"-i.e., contemptuous behavior "committed in the presence of the court."
68. Id. at 289, 291.
69. Generally FED. R. CRIM. P. 42(b) ("Notwithstanding any other provision of these rules, the court (other than a magistrate judge) may summarily punish a person who commits criminal contempt in its presence if the judge saw or heard the contemptuous conduct and so certifies; a magistrate judge may summarily punish a person as provided in 28 U.S.C. § 636(e)."). Violation of patent-infringement injunctions can be expected rarely, if ever, to constitute such direct contempt.
70. Nemmers, supra note 38, at 289-90 ("Since violations of injunctive relief in patent cases do not occur in the presence of the court, contempts considered hereinafter will be in the category of 'indirect' contempts ....").
71. 1 DOBBS, supra note 37, § 2.8(3), at 197
72. Spindelfabrik, 903 F.2d at 1578 ("Judicial sanctions in civil contempt proceedings may, in a proper case, be employed for either or both of two purposes: to coerce the defendant into compliance with the court's order, and to compensate the complainant for losses sustained." (internal quotation marks omitted)).
73. United States v. United Mine Workers, 330 U.S. 258, 304 (1947) (declaring that a compensatory "fine must of course be based upon evidence of [the] complainant's actual loss").
74. Broadview Chem. Corp. v. Loctite Corp., 311 F. Supp. 447, 453 (D. Conn. 1970) ("[T]o the extent that double or treble damages serve a punitive purpose, they may not be awarded in a civil contempt proceeding.")
75. Nemmers, supra note 38, at 306 ("The increased damages provisions of [35 U.S.C. §] 284 for a deliberate infringement are punitive; and although the contemnor may lose his profits, he cannot be assessed punitive damages in a civil contempt proceeding.").
76. Spindelfabrik, 903 F.2d at 1578 (holding that where a district court "justifiably characterized ... actions as 'flagrant contemptuous conduct[,]'" "the district court did not abuse its discretion in trebling the damages and awarding attorney fees" in a civil contempt proceeding, but that the district court erred in imposing a $2 million fine without following criminal contempt procedures because the fine was not conditional on noncompliance and thus constituted "punishment for criminal contempt").
77. 35 U.S.C. § 284 (2006) (empowering district courts to "increase the damages up to three times the amount found or assessed").
78. 903 F.2d 1568 (Fed. Cir. 1990).
79. Id. at 1578.
80. 234 F.3d 1252 (Fed. Cir. 2000).
81. Id. at 1260.
82. 1 DOBBS, supra note 37, § 2.8(3), at 197
83. Spindelfabrik, 903 F.2d at 1578-79 ("The ability of the contemnor to avoid the sanction by complying with the court order is an important factor in determining whether a contempt adjudication is civil or criminal.").
84. Generally United States v. United Mine Workers, 330 U.S. 258, 304 (1947) (stating that, in civil contempt proceedings, a court seeking to use a fine "to make the defendant comply" with the court's earlier order "must ... consider the character and magnitude of the harm threatened by continued contumacy, and the probable effectiveness of any suggested sanction in bringing about the result desired").
85. Schaefer Fan Co. v. J&D Mfg., 265 F.3d 1282, 1290 (Fed. Cir. 2001) (upholding a district court's award of contempt sanctions equaling the contemnor's "total profit" from the sale of two types of fans)
86. Brine, Inc. v. STX, L.L.C., 367 F. Supp. 2d 61, 71 (D. Mass.) ("[A] sanction in the amount of gross profit from the sales of the X2+ provides a natural means of imposing a penalty that is proportionate to the severity of the contempt."), aff'd, 139 F. App'x 281 (Fed. Cir. 2005)
87. Nemmers, supra note 38, at 305 ("It appears settled that the complainant is entitled to the contemnor's profits" "even though 'profits' of the infringer are not recoverable in the ordinary patent infringement action."). As with treble damages for contempt, disgorgement of the entirety of a contemnor's profits appears to be considered an extreme sanction reserved for egregious behavior.
88. Schaefer, 265 F.3d at 1290 (holding disgorgement of the contemnor's "total profit" to be justified where the contemnor had previously been found in contempt and had "acted willfully by failing to obtain any opinion of counsel on whether [certain products] would breach the agreement and the court's orders").
89. Nemmers, supra note 38, at 307 (noting a contempt complainant's ability "to recover his attorney's fees and costs and expenses incurred in conducting the civil contempt proceeding," subject to the trial court's discretion)
90. Stryker, 234 F.3d at 1260 (holding that the district court "did not abuse its discretion in awarding treble the compensatory royalty damages, attorney fees, and costs").
91. Spindelfabrik, 903 F.2d at 1577 (holding that in contempt proceedings, "[t]he district court did not abuse its discretion in broadening the injunction to cover 'any automated rotor spinning machine,' without the qualifying word 'infringing'").
92. KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1524 (Fed. Cir. 1985), overruled on other grounds, TiVo Inc. v. EchoStar Corp., 646 F.3d 869 (Fed. Cir. 2011) (en banc).
93. TiVo, 646 F.3d at 880.
94. Concerns about serious stigma associated with contempt seem more strongly associated with criminal contempt than with civil contempt.
95. Richard B. Kuhns, The Summary Contempt Power: A Critique and a New Perspective, 88 YALE L.J. 39, 79 n.235 (1978) (expressing concern for "the stigma of a conviction" for criminal contempt)
96. F. Joseph Warin & Michael D. Bopp, Corporations, Criminal Contempt and the Constitution: Do Corporations Have a Sixth Amendment Right to Trial by Jury in Criminal Contempt Actions and, if So, Under What Circumstances?, 1997 COLUM. BUS. L. REV. 1, 40 n.161 ("The collateral effects of a criminal contempt finding include the stigma that attaches in such circumstances.")
97. Douglas C. Berman, Note, Coercive Contempt and the Federal Grand Jury, 79 COLUM. L. REV. 735, 758 (1979) ("[C]oercive contempt incarceration does not entail the limitations of civil rights (such as disenfranchisement) that normally attend a felony conviction, and ... the stigma of being a convicted criminal does not attach.")
98. Kathleen A. Burdette, Comment, Making Parents Pay: Interstate Child Support Enforcement After United States v. Lopez, 144 U. PA. L. REV. 1469, 1527 (1996) ("[C]riminal convictions carry a much more severe social stigma than do civil contempt orders."). At least one commentator has suggested that even criminal contempt tends not to carry much stigma.
99. Eric L. Jensen, The Waiver of Juveniles to Criminal Court: Policy Goals, Empirical Realities, and Suggestions for Change, 31 IDAHO L. REV. 173, 174 n.4 (1994) (excluding "criminal contempt violations" from the scope of a discussion of the treatment of criminal activity by juveniles because of "the absence of strong criminal stigma attached" to such violations).
100. But other commentators have suggested that even civil contempt can inflict significant stigma.
101. Earl C. Dudley, Jr., Getting Beyond the Civil/Criminal Distinction: A New Approach to the Regulation of Indirect Contempts, 79 VA. L. REV. 1025, 1065 (1993) ("It may seriously be doubted whether any nonlawyers are sufficiently aware of-let alone appreciate the import of-the [civilversus- criminal contempt] distinction for it to make any real difference in the opprobrium attaching to a contempt judgment.")
102. Recent Case, International Bhd. of Teamsters v. NLRB (D.C. Cir. 1958), 72 HARV. L. REV. 1577, 1580 (1959) (expressing concern that even when "only civil penalties" are likely to be imposed, "the threat of a large fine and the stigma of citation for contempt may inhibit [labor] activities beyond those specifically restrained" (footnote omitted))
103. Note, Procedures for Trying Contempts in the Federal Courts, 73 HARV. L. REV. 353, 357 (1959) (suggesting "the possibility [that] stigma ... may result from the imposition of sanctions similar in form to criminal punishment").
104. An infringer might perceive the heightening of sanctions as especially sharp if the infringer were insured for ordinary and perhaps even willful infringement but not for contempt. But patentlitigation insurance of any stripe appears to be relatively rare.
105. CJA CONSULTANTS LTD., PATENT LITIGATION INSURANCE: A STUDY FOR THE EUROPEAN COMMISSION ON POSSIBLE INSURANCE SCHEMES AGAINST PATENT LITIGATION RISKS § 7.7.1 (2003) ("Contrary to received belief, the extent of Patent litigation insurance in the USA in relation to the extent of litigation appears to be small, and limited to defence, including damages.")
106. Colleen V. Chien, Predicting Patent Litigation, 90 TEXAS L. REV. 283, 295 (2011) ("[T]he market for patent insurance is extremely small and highly inefficient. Offerings are limited and expensive. Defensive policies ... fail to cover many situations." (footnotes omitted) (internal quotation marks omitted)).
107. Thus, an adjudged infringer is not likely to perceive a special pinch from lack of insurance coverage for contempt sanctions.
108. TiVo, 646 F.3d at 883 ("The patentee bears the burden of proving violation of the injunction by clear and convincing evidence ....").
109. Because monetary sanctions for civil contempt are generally limited to quite finite values, contempt sanctions and the injunctions that they back up do not act as the sort of limiting endpoint for a liability-rule continuum that Kaplow and Shavell have associated with a true property rule.
110. Kaplow & Shavell, supra note 10, at 756 ("[T]he property rule protecting victims mirrors a liability rule with extremely high, or infinite, damages.").
111. A patent-infringement injunction does not generally equate with an award of infinite damages for continued infringement.
112. TiVo Inc. v. Dish Network Corp., 655 F. Supp. 2d 661, 666 (E.D. Tex. 2009) (deciding on an award of "approximately $110 million in compensation based on the jury's [prior damages] award and approximately $90 million in sanctions," plus "attorney's fees and costs" for the contempt proceedings).
113. Id. at 665 ("TiVo's suggested disgorgement of nearly $1 billion is unreasonable under the circumstances of this case.").
114. supra note 54 and text accompanying notes 46-52.
115. Cf. Lemley & Shapiro, supra note 2, at 2009 ("A microprocessor may include 5,000 different inventions ....").
116. Bo Zeng, Note, Lucent v. Gateway: Putting the "Reasonable" Back into Reasonable Royalties, 26 BERKELEY TECH. L.J. 329, 366 (2011) (observing that in various recent cases, "the Federal Circuit made a critically important effort to ensure that reasonable royalty damage awards are actually reasonable").
117. No. 2:04-CV-211-DF, 2006 WL 2385139, at *6 (E.D. Tex. Aug. 16, 2006) (denying the patentee's motion for a permanent injunction), aff'd in part and vacated in part, 504 F.3d 1293 (Fed. Cir. 2007).
118. Id. at *3 (quoting defendants' observation that the jury's award amounted to "1/8th of one percent of the $20,000 price of a Prius and even less of a percentage of the price of the Highlander ($33,000) and the RX400h ($42,000)").
119. Kaplow & Shavell, supra note 10, at 715 (emphasis omitted). Paul Heald has separately analogized injunctions to damages awards.
120. Paul J. Heald, Permanent Injunctions as Punitive Damages in Patent Infringement Cases 3 (Ill. Pub. Law & Legal Theory Research Paper No. 10-38, 2011) (discussing the "analogy injunctions can bear to punitive damages"), available at http://ssrn.com/abstract=1851681.
121. But, at least in contexts of high design-around costs, his analogy is to punitive damages, id., which commentators have commonly associated with property rules rather than liability rules.
122. Richard Craswell, Property Rules and Liability Rules in Unconscionability and Related Doctrines, 60 U. CHI. L. REV. 1, 4 (1993) (observing that in contract law, "punitive damages" operate to protect a "promise with a property rule")
123. William S. Dodge, The Case for Punitive Damages in Contracts, 48 DUKE L.J. 629, 634 (1999) (contending that "contractual entitlements should be protected with property rules, including punitive damages")
124. Henry E. Smith, Mind the Gap: The Indirect Relation Between Ends and Means in American Property Law, 94 CORNELL L. REV. 959, 966 (2009) (describing "property rules" as "embodied in injunctions and punitive damages").
125. Kaplow & Shavell, supra note 10, at 716.
126. Deterrence or recompense made available through an injunction can be viewed as "extra" to the extent net contempt sanctions or awards to the patentee are expected to exceed those available through ordinary infringement proceedings, whether because contempt proceedings are expected to yield higher monetary awards or because enforcement through contempt is more likely to occur due to contempt proceedings' greater speed and presumably lower cost, etc. Of course, there is a background question of when such a higher level of effective remedies should be viewed as desirable at all. See id. at 773 (contending that in situations involving "harmful externalities" and an "absence of bargaining between victims and injurers, a liability rule with damages equal to estimated harm is unambiguously superior to property rules even though actual harm in a given case may be difficult to determine").
127. The adjudged infringer will rationally only pay for a license if the profitability of that course is at least as great as the more profitable of options (2) and (3). In terms of the model that follows, the rational infringer's willingness to pay for a license is thus capped by a licensing cost equaling the lesser of D1 and {Eth}2, where the value of {Eth}2 is indicated by Equation 4, infra at text accompanying notes 77-78. Transaction costs of negotiating and complying with a license will likely mean that the rational infringer's maximum licensing fee is lower than this maximum acceptable licensing cost.
128. See Carl Shapiro, Injunctions, Hold-Up, and Patent Royalties, 12 AM. L. & ECON. REV. 280, 286-87 (2010) (developing a model to determine potential outcomes of royalty negotiations between a "downstream firm" and a "patent holder"); see also Lemley & Shapiro, supra note 2, at 1995-97 (using Shapiro's model).
129. For simplicity, I neglect time discounting for products sold after a period of time has elapsed.
130. See KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1529 (Fed. Cir. 1985) ("The validity of the patent is the law of the case in [contempt] proceedings."), overruled on other grounds, TiVo Inc. v. EchoStar Corp., 646 F.3d 869 (Fed. Cir. 2011) (en banc).
131. To the extent defenses of invalidity and unenforceability were available, the adjudged infringer will likely have challenged validity and enforceability in the original litigation.
132. See Mark A. Lemley, Rational Ignorance at the Patent Office, 95 NW. U. L. REV. 1495, 1502 (2001) ("Virtually every patent infringement lawsuit includes a claim that the patent is either invalid or unenforceable ... (or commonly both)."). Thus, the infringer might be precluded from making such challenges in later litigation.
133. See, e.g., Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372, 1381 (Fed. Cir. 2008) (affirming a district court's holding that "validity challenges ... were barred by the doctrine of claim preclusion")
134. Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., 763 F. Supp. 2d 671, 678-79 (D. Del. 2010) (holding that various arguments for invalidity were barred by issue preclusion) cf. Foster v. Hallco Mfg. Co., 947 F.2d 469, 480-81 (Fed. Cir. 1991) ("[I]f a consent judgment, by its terms, indicates that the parties thereto intend to preclude any challenge to the validity of a particular patent, even in subsequent litigation involving a new cause of action, then that issue can be precluded.").
135. DOUGLAS LAYCOCK, MODERN AMERICAN REMEDIES: CASES AND MATERIALS 766-69 (4th ed. 2010) (discussing the categories of "criminal contempt, coercive civil contempt, and compensatory civil contempt" and describing a potential three-step process in which a court first "issues the injunction," second, "adjudicates the first violations and threatens specific fines for further violations," and third, "adjudicates further violations and collects the fines").
136. DOUG RENDLEMAN, COMPLEX LITIGATION: INJUNCTIONS, STRUCTURAL REMEDIES, AND CONTEMPT 425 (2010).
137. (stating that an adjudicated infringer's "intuitive calculation considers his gain from [an] activity, reduced by the probability and severity of a sanction".
138. inf exceeds the residual alternative expected cost-zero-of such nonexistent alternative remedies.
139. inf Δinf). The conclusion in the text follows from noting that (1 - θcon) ≥ 0 and, by assumption, Δinf ≥ 0.
140. In reality, the proper balance will likely reflect a variety of other concerns as well.
141. See, e.g., Golden, supra note 1, at 509-11 (discussing various goals and behaviors that patent law might seek to promote or affect).
142. The three "supercategories" of (a) do-not-infringe injunctions, (b) purely reparative injunctions, and (c) prophylactic injunctions might be viewed as at least somewhat parallel to the three classifications proposed by Owen Fiss in 1978: (a′) "the preventive injunction, which seeks to prohibit some discrete act or series of acts from occurring in the future"; (b′) "the reparative injunction, which compels the defendant to engage in a course of action that seeks to correct the effects of a past wrong"; and (c′) "the structural injunction, which seeks to effectuate the reorganization of an ongoing social institution."
143. FISS, supra note 5, at 7.
144. Cf. Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1368 (Fed. Cir. 2005) ("Gillette sued Energizer Holdings, Inc.... alleging Energizer's QUATTRO®, a four-bladed wet-shave safety razor, infringes certain claims of the '777 patent.").
145. See supra note 15.
146. See, e.g., Ariba, Inc. v. Emptoris, Inc., No. 9:07-CV-90, slip op. at 1-2 (E.D. Tex. Jan. 22, 2009) (prohibiting activities involving "1. the Emptoris software (versions 5.2, 6.0, 6.1 and 7.0) heretofore marketed by Emptoris; and 2. all other software not more than colorably different there from "), aff'd per curiam, No. 2009-1230, 2010 WL 55625 (Fed. Cir. Jan. 8, 2010); Callaway Golf Co. v. Acushnet Co., No. 06-091-SLR, slip op. at 2 (D. Del. Nov. 10, 2008) (prohibiting activity involving "any of the Pro V1® line of golf balls ... or any variations thereof not more than colorably different"), vacated, 576 F.3d 1331 (Fed. Cir. 2009).
147. KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1526 (Fed. Cir. 1985), overruled on other grounds, TiVo Inc. v. EchoStar Corp., 646 F.3d 869 (Fed. Cir. 2011) (en banc).
148. See, e.g., Retractable Techs. Inc. v. Becton, Dickinson & Co., No. 2:07-cv-00250-DF-CMC, slip op. at 2 (E.D. Tex. May 19, 2010) (prohibiting activity involving products found specifically to infringe or products "only colorably different therefrom" and further prohibiting "otherwise infringing or inducing others to infringe the Infringed Claims"), aff'd in part, rev'd in part, 653 F.3d 1296 (Fed. Cir. 2011); Nomadix, Inc. v. Second Rule LLC, No. CV07-1946 DDP (VBKx), slip op. at 2 (C.D. Cal. Mar. 31, 2009) (prohibiting "directly or indirectly infringing any of [five] U.S. Patents ... in any way").
149. Abbott Labs. v. TorPharm, Inc., 503 F.3d 1372, 1382 (Fed. Cir. 2007) ("There must be clear and convincing evidence of patent infringement to support a district court's finding of contempt.").
150. Creative Compounds, LLC v. Starmark Labs., 651 F.3d 1303, 1314 (Fed. Cir. 2011) ("The patentee bears the burden of proving infringement by a preponderance of the evidence." (quoting SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1123 (Fed. Cir. 1985))).
151. KSM, 776 F.2d at 1526.
152. The KSM court observed: The unreasonableness of a decree incorporating a vague or broad prohibition against "infringement" of a "patent" is alleviated because of the universal rule ... that contempt proceedings, civil or criminal, are available only with respect to devices previously admitted or adjudged to infringe, and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent.
153. cf. 11 A CHARLES ALAN WRIGHT, ARTHUR R. MILLER & MARY KAY KANE, FEDERAL PRACTICE AND PROCEDURE § 2955, at 311 (2d ed. 1995) ("A court's failure to comply with the prerequisites in Rule 65(d) as to the proper scope or form of an injunction or restraining order does not deprive it of jurisdiction or render its order void." (footnotes omitted)).
154. 35 U.S.C. § 283 (2006).
155. H.K. Porter Co. v. Nat'l Friction Prods. Corp., 568 F.2d 24, 27 (7th Cir. 1978) ("Because of the risks of contempt proceedings ... interests of liberty and due process make it indispensable for the chancellor or his surrogate to speak clearly, explicitly, and specifically if violation of his direction is to subject a litigant ... to coercive or penal measures [and] to payment of damages.").
156. FED. R. CIV. P. 65(d)(1)
157. see also 11 A WRIGHT, MILLER & KANE, supra note 92, § 2955, at 308-09 ("The drafting standard established by Rule 65(d) is that an ordinary person reading the court's order should be able to ascertain from the document itself exactly what conduct is proscribed.").
158. E.g., Int'l Rectifier Corp. v. IXYS Corp., 383 F.3d 1312, 1316 (Fed. Cir. 2004) (vacating an injunction that "by its terms ... applies to 'any device' made or sold by IXYS that is within the scope of the patent claims")
159. see also Forest Labs., Inc. v. Ivax Pharm., Inc., 501 F.3d 1263, 1272 (Fed. Cir. 2007) (narrowing an injunction by "delet[ing] the language 'any products that infringe the '712 patent, including'")
160. Marketa Trimble, Cross-Border Injunctions in U.S. Patent Cases and Their Enforcement Abroad, 13 MARQ. INTELL. PROP. L. REV. 331, 340 (2009) (noting the Federal Circuit's indication that injunctions broadly prohibiting infringement of a patent violate Rule 65(d))
161. cf. PETER S. MENELL et al., PATENT CASE MANAGEMENT JUDICIAL GUIDE § 3.8.1, at 3-25 (2009) (stating that an injunction "must ... specifically describe the infringing actions enjoined, with reference to particular products"). An injunction simply stating that further infringement of a specific patent or patent claim is prohibited would appear to require "reference [to] materials in other documents" and thus, on that ground alone, would be at least technically contrary to the plain language of Rule 65(d).
162. See Dupuy v. Samuels, 465 F.3d 757, 758 (7th Cir. 2006) (arguing for and applying a relatively strict, "literal interpretation" of Rule 65(d)'s requirement "that an injunction be a self-contained document rather than [one] incorporat[ing] by reference materials in other documents"); cf. H.K. Porter, 568 F.2d at 27 ("It is beyond cavil that when it merely incorporated by reference the Settlement Agreement, the April 15, 1968 order ignored that rule's mandatory requirement that an injunction 'shall describe in reasonable detail, and not by reference to the complaint or other document, the act or acts sought to be restrained.'"). But see Landmark Legal Found. v. EPA, 272 F. Supp. 2d 70, 74 (D.D.C. 2003) ("Courts are split on whether Rule 65(d) requires a strict interpretation.").
163. Additive Controls & Measurement Sys., Inc. v. Flowdata, Inc., 986 F.2d 476, 479-80 (Fed. Cir. 1993).
164. Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352, 1359 (Fed. Cir. 1999).
165. 665 F.3d 1269 (Fed. Cir. 2012).
166. Id. at 1293 (internal quotation marks omitted).
167. Int'l Rectifier Corp. v. IXYS Corp., 383 F.3d 1312, 1316 (Fed. Cir. 2004); accord Forest Labs., Inc. v. Ivax Pharm., Inc., 501 F.3d 1263, 1271 (Fed. Cir. 2007) (quoting Int'l Rectifier).
168. Int'l Rectifier, 383 F.3d at 1317 104. Streck, 665 F.3d at 1293 (citing only Signtech and Federal Rule of Civil Procedure 65(d) in reasoning about the propriety of Type-2 language).
169. See Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988) ("Where there is direct conflict [between prior decisions of Federal Circuit panels], the precedential decision is the first.").
170. See 11 A WRIGHT, MILLER & KANE, supra note 92, § 2955, at 311 ("A court's failure to comply with the prerequisites in Rule 65(d) as to the proper scope or form of an injunction or restraining order does not deprive it of jurisdiction or render its order void." (footnotes omitted)).
171. BLACK'S LAW DICTIONARY 1394 (9th ed. 2009) (defining reformation as "[a]n equitable remedy by which a court will modify a written agreement to reflect the actual intent of the parties").
172. See KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1526 (Fed. Cir. 1985) (noting that, even when a decree "incorporat[es] a vague or broad prohibition against 'infringement' of a 'patent[,]' ... contempt proceedings, civil or criminal, are available only with respect to devices previously admitted or adjudged to infringe, and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent"), overruled on other grounds, TiVo Inc. v. EchoStar Corp., 646 F.3d 869 (Fed. Cir. 2011) (en banc).
173. See Tracy A. Thomas, The Continued Vitality of Prophylactic Relief, 27 REV. LITIG. 99, 102 (2007) ("Reparative injunctions repair the ongoing consequences of the past harm, and might order the reinstatement of an employee fired because of discrimination.").
174. See Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1320 (Fed. Cir. 2010) (holding that because overseas sales "cannot infringe any U.S. patent, and there is little risk that the infringing devices will be imported," the district court "abused its discretion in imposing ... extraterritorial restraints").
175. 1 DOBBS, supra note 37, § 2.9, at 225 ("The reparative injunction goes when the evidence shows that an existing right has been violated but can be repaired or restored effectively.").
176. 35 U.S.C. § 283 (2006).
177. Spine Solutions, 620 F.3d at 1320
178. see also Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1365 (Fed. Cir. 1998) ("In accordance with the clear wording of [§ 283], an injunction is only proper to the extent it is to prevent the violation of any right secured by patent." (internal quotation marks omitted)).
179. One might argue that the prospect of a reparative order can have a deterrent effect that can help prevent infringement in general, even if it is too late to prevent infringement in the case at hand. Further, one might note that the case to which the Federal Circuit's ban on reparative orders tends to be traced involved a situation in which matter abroad had been produced in the U.S. prior to issuance of the relevant patent and thus was never directly involved in infringement.
180. See Johns Hopkins, 152 F.3d at 1366 ("An injunction requiring return of [an] exported machine, which was never made, used, or sold during the term of the patent in the United States, is beyond the scope of Section 283 and hence an abuse of discretion."). Only later did the Federal Circuit apply language from that case to justify forbidding destruction of matter abroad that was directly involved in an infringement of an issued U.S. patent. See Spine Solutions, 620 F.3d at 1320 ("[T]he extraterritorial portion of the injunction appears to be premised solely on Medtronic's past infringement, not on the prevention of future infringement."); see also Non-confidential Brief for Defendants-Appellants Medtronic Sofamor Danek USA, Inc. & Medtronic Sofamor Danek, Inc. at 64, Spine Solutions, 620 F.3d 1305 (No. 2009-1538) ("The district court stated that ... it is quite possible that some of Medtronic's exported devices were manufactured in violation of [the relevant] patent." (internal quotation marks omitted)).
181. The distinction between a purely reparative injunction and a prophylactic injunction can be subtle and, arguably, excessively formal. Many prophylactic injunctions-such as a hypothetical order to destroy all Schick Quattros in Energizer's possession in the United States-can be viewed as at least partly reparative. Destruction prevents further infringement with the destroyed Quattros but also helps nullify the effects of past infringing manufacture and is thereby reparative. For purposes of legal characterization in relation to existing law, however, the key point appears to be that, regardless of any additional reparative effect or purpose, a prophylactic injunction has a direct connection to the statutorily sanctioned goal of preventing future infringement.
182. See, e.g., Proveris Scientific Corp. v. InnovaSystems Inc., No. 05-12424-WGY, slip op. at 3 (D. Mass. May 11, 2007) (requiring the defendant to "destroy all inventory of its OSA product").
183. Cf. Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) ("Based on the preliminary record before this court, the district court erred in limiting the claims of [Gillette's] patent to encompass safety razors with solely three blades").
184. TiVo Inc. v. EchoStar Corp., 646 F.3d 869, 877 (Fed. Cir. 2011) (en banc) (quoting TiVo Inc. v. Dish Network Corp., 640 F. Supp. 2d 853, 858 (E.D. Tex. 2009)).
185. In the constitutional law context, the term prophylactic rule has inspired "a wealth of sometimes widely divergent definitions."
186. Mitchell N. Berman, Constitutional Decision Rules, 90 VA. L. REV. 1, 30 (2004). Sometimes commentators view only extraprotective rules as prophylactic rules.
187. (describing a prophylactic rule as "that sort of extraconstitutional rule that overenforces what the Constitution, as judicially interpreted, would itself require")
188. id. at 40-42 (distinguishing prophylactic rules from "underenforcement rule[s]" and hybrid "overlapping rule[s]"). At least one prior commentator has characterized both subprotective and extraprotective legal rules as prophylactic, using reasoning like that presented in this Article's text.
189. David A. Strauss, The Ubiquity of Prophylactic Rules, 55 U. CHI. L. REV. 190, 204-06 (1988) (characterizing both rules of "strict scrutiny" and "rational basis review" as prophylactic rules, although the former is likely extraprotective and the latter is likely subprotective of the constitutional interests most centrally at issue).
190. The example is inspired by the fact pattern associated with Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), in which the U.S. Supreme Court considered whether a purification process running at a pH of 5.0 could infringe a patent claim under the doctrine of equivalents.
191. See id. at 23 (describing the case's underlying facts).
192. A subprotective injunction from a patentee's perspective is likely to be an extraprotective injunction from the perspective of an infringer or society. Such an injunction might, for example, provide prophylactic protection to legitimate infringer interests in pursuing a good-faith redesign without fear of being held in contempt.
193. See supra text accompanying note 102.
194. See supra text accompanying notes 94-97.
195. See supra text accompanying notes 111-13.
196. See supra text accompanying note 112.
197. 1 DOBBS, supra note 37, § 2.4(7), at 121
198. see also Russian Media Grp., LLC v. Cable Am., Inc., 598 F.3d 302, 307 (7th Cir. 2010) ("The district court may even enjoin certain otherwise lawful conduct when the defendant's conduct has demonstrated that prohibiting only unlawful conduct would not effectively protect the plaintiff's rights against future encroachment.")
199. cf. Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1126 (5th Cir. 1991) ("In fashioning relief against a party who has transgressed the governing legal standards, a court of equity is free to proscribe activities that, standing alone, would have been unassailable." (quoting Ky. Fried Chicken Corp. v. Diversified Packaging Corp., 549 F.2d 368, 390 (5th Cir. 1977)))
200. RENDLEMAN, supra note 79, at 427 ("Under some circumstances, a judge may grant a plaintiff an injunction that forbids defendant's activities that are not themselves wrongs and that commands activities that are not in themselves part of the plaintiff's substantive-law entitlement.")
201. 11 A WRIGHT, MILLER & KANE, supra note 92, § 2955, at 327-28 (indicating that a "broad decree" might be justified as "the only way to prevent a statutory violation" or because "it can be drafted by the court more easily than a narrow decree").
202. Thomas, supra note 109, at 104.
203. See Schenck v. Pro-Choice Network of W. N.Y., 519 U.S. 357, 380 (1997) (upholding "fixed buffer zones around the doorways, driveways, and driveway entrances" of clinics); Madsen v. Women's Health Ctr., Inc., 512 U.S. 753, 776 (1994) (upholding "noise restrictions and the 36- foot buffer zone around the clinic entrances and driveway because they burden no more speech than necessary to eliminate the unlawful conduct targeted by the state court's injunction").
204. Madsen, 512 U.S. at 767-68.
205. Cf. LAYCOCK, supra note 78, at 290 ("Conflict and misunderstanding, testing of limits and overreaching, emotional reactions, inconsistent perceptions and accounts of what happened-all these are inevitable. The judicial need for bright-line rules can be overwhelming.").
206. Strauss, supra note 119, at 195
207. see also Berman, supra note 119, at 13-14 (observing that, by the year 2000, "many constitutional theorists had become persuaded by David Strauss's careful and powerful argument that prophylactic rules indistinguishable from Miranda are ubiquitous and legitimate")
208. cf. RICHARD H. FALLON, JR., IMPLEMENTING THE CONSTITUTION 5 (2001) ("Rather than picturing the Justices as pervasively engaged in a search for the Constitution's one true meaning, I argue ... that we should understand the Supreme Court's role as a more multifaceted one of 'implementing' constitutional norms.... [L]awyers' work involv[es] ... the creative design of implementing strategies.")
209. Lawrence Gene Sager, Fair Measure: The Legal Status of Underenforced Constitutional Norms, 91 HARV. L. REV. 1212, 1213 (1978) ("[T]here is an important distinction between a statement which describes an ideal which is embodied in the Constitution and a statement which attempts to translate such an ideal into a workable standard for the decision of concrete issues.").
210. 384 U.S. 436 (1966).
211. See, e.g., Strauss, supra note 119, at 190 (discussing the "'prophylactic' character [of] the Miranda rule").
212. See, e.g., id. at 198 (discussing how significant aspects of First Amendment doctrine, such as "a nearly conclusive presumption against [the] constitutionality" of most "content-based" restrictions on speech, might be viewed as prophylactic).
213. See, e.g., id. at 204-05 (discussing how equal protection doctrine might be viewed as embodying prophylactic rules).
214. Cf. id. at 200 (describing the courts' "categorical approach to content-based [speech] restrictions and the Miranda rules [as] relatively rigid doctrines designed to reduce the likelihood that the authorities ... will violate the law, and designed to improve a reviewing court's chances of identifying violations where they occur").
215. See Thomas, supra note 109, at 99, 100 (describing prophylactic injunctions as tending to "reach[] the facilitators of harm in order to prevent continued illegality"); cf. RENDLEMAN, supra note 79, at 34 ("We will encounter many injunctions that forbid defendants' preparatory, ancillary, and related behavior.")
216. Rendleman, supra note 5, at 89 ("Public-nuisance injunctions against street gangs often extend defendants' prohibitions beyond the criminal law ....").
217. Thomas, supra note 109, at 101-02 (describing potential types of prophylactic measures).
218. LAYCOCK, supra note 78, at 284-87 (reproducing portions of PepsiCo, Inc. v. Redmond, 54 F.3d 1262 (7th Cir. 1995)).
219. HERBERT HOVENKAMP, THE ANTITRUST ENTERPRISE: PRINCIPLE AND EXECUTION 300 (2005) ("Early in the history of antitrust enforcement courts tended to favor 'structural' remedies in cases involving significant § 2 violations. A structural remedy ... typically breaks the defendant firm into two or more pieces ....")
220. cf. Howard A. Shelanski & J. Gregory Sidak, Antitrust Divestiture in Network Industries, 68 U. CHI. L. REV. 1, 15-16 (2001) (describing "structural remedies" as "redistributing competitive assets" either "by breaking the defendant company into two or more pieces" or "by requiring the defendant to sell or otherwise make available to its competitors some input, right, or facility").
221. 231 F. Supp. 2d 144 (D.D.C. 2002), aff'd in relevant part sub nom. Massachusetts v. Microsoft Corp., 373 F.3d 1199 (D.C. Cir. 2004).
222. Id. at 190.
223. Id. at 189.
224. Id. at 190 (internal quotation marks omitted). The district court's reasoning substantially parroted the D.C. Circuit's earlier instruction that insurance against future monopolization was one of the necessary goals of an antitrust decree. United States v. Microsoft Corp., 253 F.3d 34, 103 (D.C. Cir. 2001) ("[A] remedies decree in an antitrust case must seek to ... ensure that there remain no practices likely to result in monopolization in the future." (citations omitted) (internal quotation marks omitted)).
225. See Tracy A. Thomas, The Prophylactic Remedy: Normative Principles and Definitional Parameters of Broad Injunctive Relief, 52 BUFF. L. REV. 301, 372 (2004) ("The intangible rights at issue in the prophylactic remedies cases present challenges to the court as to how to translate those rights into tangible meaning.").
226. See id. at 334 ("[T]he affiliated conduct included in the prophylactic relief must demonstrate a sufficient causal nexus to the established harm.")
227. id. at 339-40 ("The causal nexus is established where the affiliated conduct bears a factual relationship to the harm and the relationship is of sufficiently close degree to justify the inclusion of the conduct in the prophylactic order.").
228. TiVo Inc. v. EchoStar Corp., 646 F.3d 869, 890 (Fed. Cir. 2011) (en banc) ("We therefore conclude that EchoStar's arguments on overbreadth of the district court's injunction have been waived by its failure to raise them earlier.").
229. Id. at 890 n.9 (citations omitted). Does the en banc majority's indication that an injunction can be designed "to prevent or remedy infringement" mean that the judges in the majority are looking to step back from the Federal Circuit's prior rejection of purely reparative patentinfringement injunctions? Not necessarily. The majority might simply have meant to recognize that some injunctions, such as an order to destroy specified devices, can serve dual purposes of preventing further infringement and helping to correct for past infringement.
230. Id. at 893-94 (Dyk, J., dissenting) (fourth alteration in original) (citations omitted) (internal quotation marks omitted).
231. Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1366-67 (Fed. Cir. 1998) (emphasis omitted); cf. Trimble, supra note 96, at 367 ("U.S. courts ... have issued orders requesting or prohibiting behavior abroad that is not infringing per se but is behavior that the courts have decided to target in order to prevent further infringements of U.S. patents.").
232. See, e.g., Spindelfabrik Suessen-Schurr v. Schubert & Salzer Maschinenfabrik Aktiengesellschaft, 903 F.2d 1568, 1577 (Fed. Cir. 1990) (holding that "repeated and 'flagrant' violations of the district court's earlier injunction fully justified these broad provisions" against "directly or indirectly engaging in any activity which in any way relates to the manufacture, sale, use, servicing, exhibition, demonstration, promotion or commercialization of any automated rotor spinning machines")
233. see also KIMBERLY A. MOORE et al., PATENT LITIGATION AND STRATEGY 715 (3d ed. 2008) (discussing Spindelfabrik).
234. 154 F.3d 1345 (Fed. Cir. 1998).
235. Id. at 1356.
236. Some additional search results were apparently added to the Lex Machina database after the author's review of search results for injunctions issued in 2010 began. Thus, the results reported in this Article might not reflect all 2010 injunctions that are ultimately indicated in the Lex Machina database.
237. Four orders for injunctive relief were excluded from the ultimate dataset because their text leaves unclear whether they were motivated by concerns with patent infringement, as opposed to infringement of other rights such as trademark or trade dress. Bon-Aire Indus., Inc. v. Mitchell Prods., No. 3:10-cv-01602-MLC-TJB, slip op. at 2 (D.N.J. Apr. 26, 2010) (permanently enjoining various acts involving "any hose nozzle having a trade dress that is identical to, substantially similar to, or a colorable imitation of the appearance of the ULTIMATE® hose nozzle"); Bon-Aire Indus., Inc. v. Mitchell Prods., No. 3:10-cv-01602-MLC-TJB, slip op. at 2-3 (D.N.J. Apr. 13, 2010) (preliminarily enjoining, in the same case, various acts involving such a nozzle); ICON Health & Fitness, Inc. v. Solo Sports Grp., Inc., No. 1:10-cv-00020-TC, slip op. at 1 (D. Utah Mar. 4, 2010) (permanently enjoining activities involving "the Elite Fitness Dual Action Upright Exercise Bike Model EB275, and any other product that incorporates the same or substantially the same features of ICON's trade dress design contained in its Weslo Pursuit E28 bike"); Metraflex Co. v. Flex-Hose Co., No. 1:10-cv-00302, slip op. at 1-2 (N.D. Ill. Feb. 16, 2010) (preliminarily enjoining "utilizing, displaying, or distributing [the] Seismic Movement Brochure," statements about whether certain products "meet building code requirements or specifications" and reproduction of "drawings and/or photographs of U-shaped or V-shaped flexible loops that are original to and/or the copyrighted property of Metraflex").
238. Coding appears to have generally been straightforward, but it did sometimes require review of underlying patents, briefing, or other documents. Further, characterization of injunction language as Type-1 or as a specially tailored injunction targeting correlated activity could involve some reasoning about the meaning of the injunction's text and its relation to the statutory delineation of infringing activities in 35 U.S.C. § 271. For example, if an injunction forbade "manufacturing," rather than the "making" specifically defined as infringing by § 271, I reasoned that this difference in specific language did not amount to a classification-relevant difference in scope that might result in the injunction being classified as a specially tailored injunction, rather than a do-not-infringe injunction. Likewise, I characterized various, occasional forms of injunctive language explicitly targeting "similar" or "substantially equivalent" products or processes as Type-1 even though this language did not appear precisely in more typical colorable-differences form. Cf., e.g., Extreme Tool & Eng'g, Inc. v. Bear Cub Enters., LLC, No. 2:08-cv-257, slip op. at 2 (W.D. Mich. Mar. 29, 2010) (including "similar products that lack colorable distinctions" within the injunction's scope); Canon Inc. v. Densigraphix Kopi Inc., No. 1:10-cv-00034-CMH-IDD, slip op. at 2-3 (E.D. Va. Mar. 9, 2010) (including "substantially equivalent" products within the injunction's scope); Mannatech, Inc. v. Techmedica Health, Inc., No. 3:06-CV-00813-P, slip op. at 3 (N.D. Tex. Jan. 12, 2010) (including "colorable imitations" and products "substantially equivalent in composition" within the injunction's scope). These approaches to classification were consistent with my general effort to be relatively conservative in characterizing injunctive language as Type-2 or specially tailored, rather than falling within the more generally acknowledged categories of Type- 0 or Type-1 do-not-infringe orders.
239. Reah v. Re.source, Inc., No. 2:09-cv-00601-CW-DN (D. Utah Mar. 25, 2010) (issuing three separate consent orders directed at three different defendants); Reah v. Re.source, Inc., No. 2:09-cv-00601-CW-DN, slip op. at 1-2 (D. Utah Feb. 23, 2010) (issuing a consent order directed at Datavision Computer Video, Inc.); Reah v. Re.source, Inc., No. 2:09-cv-00601-CW-DN (D. Utah Jan. 20, 2010) (issuing five separate consent orders directed at five different defendants).
240. Compare, e.g., Reah v. Re.source, Inc., No. 2:09-cv-00601-CW-DN, slip op. at 10-11 (D. Utah Mar. 25, 2010) (prohibiting LBM Corp. from "making, using, selling, offering for sale, or importing products that come within one or more claims of U.S. Patent No. 6,982,542, or otherwise infringing ... U.S. Patent No. 6,982,542, including without limitation the Power Station and Power Station Traveller"), with Denmel Holdings, LLC v. Re.source, Inc., No. 2:09-cv-00601-CW-DN (D. Utah Mar. 25, 2010) (prohibiting Electronicsshowplace.com from "making, using, offering for sale, and/or importing charging valets and/or charging stations that come within one or more claims of U.S. Patent No. 6,982,542, or otherwise infring[ing] ... U.S. Patent No. 6,982,542").
241. The overall Type-2 error rate for the 28 same-case injunctions is about 54% (15 of 28). The Type-2 error rate for the 25 consented-to orders among these 28 injunctions is about 56% (14 of 25). These percentages appear substantially consistent with the approximately 58% Type-2 error rate for the other 115 non-same-case orders (67 of 115) and the approximately 57% Type-2 error rate for the 58 non-same-case consented-to orders (33 of 58). When the results for the 28 same-case injunctions and the 115 non-same-case injunctions are compared, two-sample, two-tailed t-tests assuming equal variances and assuming unequal variances yield, respectively, t(141) = -0.45, p = 0.66; and t(40) = -0.44, p = 0.66. An F-test for equality of variances did not indicate a statistically significant difference between variances (F = 1.1, p = 0.41). Likewise, when the results for the 25 same-case consented-to orders and the 58 non-same-case consented-to orders are compared, twosample, two-tailed t-tests assuming equal variances and assuming unequal variances yield, respectively, t(81) = -0.075, p = 0.94; and t(45) = -0.074, p = 0.94. An F-test for equality of variances did not indicate a statistically significant difference between variances (F = 1.0, p = 0.45).
242. See supra text accompanying notes 92-108.
243. See KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1526 (Fed. Cir. 1985) ("[I]njunctions are frequently drafted or approved by the courts in general terms, broadly enjoining 'further infringement' of the 'patent,' despite the language of Rule 65(d) ...."), overruled on other grounds, TiVo Inc. v. EchoStar Corp., 646 F.3d 869 (Fed. Cir. 2011) (en banc).
244. See LAYCOCK, supra note 78, at 274 ("Defendants do not object to obey-the-law clauses as often as one would expect in light of [the case law].").
245. Perhaps the nearest known analog is Marketa Trimble's study of thirteen cases involving patent-infringement "[i]njunctions issued against foreign entities."
246. Trimble, supra note 96, at 339.
247. Trimble noted in passing that at least two of the injunctions in the study contained language that, according to Federal Circuit precedent, violates Rule 65(d).
248. Id. at 340.
249. See, e.g., Harris v. City of Phila., 47 F.3d 1342, 1349 (3d Cir. 1995) (stating that Rule 65(d) is "also applicable to consent decrees"); Converse Inc. v. Reebok Int'l Ltd., 328 F. Supp. 2d 166, 176 (D. Mass. 2004) ("[T]he Court must ensure that the consent decree conforms to the strictures of Federal Rule of Civil Procedure 65(d) ....").
250. See generally LAYCOCK, supra note 78, at 345 (discussing the principle that parties cannot contract for an injunction otherwise beyond a court's power to grant).
251. The question of whether an injunction should be classified as opposed or unopposed is not necessarily entirely straightforward. In this category of otherwise unopposed injunctions, I do not include injunctions whose underlying bases-e.g., the validity of the patents the injunctions sought to enforce-were contested by not presently defaulting parties that were targets of the injunction, even if, following determinations on the merits of liability, the issuance of an injunction itself does not seem to have been specifically opposed or if the merits were contested before a magistrate judge but not subsequently before the relevant district judge. Cf. Docket Entry No. 218, Duramed Pharms., Inc. v. Watson Labs., Inc., No. 3:08-cv-00116-LRH-WGC (D. Nev. Apr. 15, 2010) (recording the filing of an "Unopposed Motion for Entry of Final Judgment"). The qualification about the parties at issue being not presently defaulting reflects contemplation of the "anomalous" procedural situation surrounding an injunction in Ocean Innovations, Inc. v. Quarterberth, Inc., No. 1:03-CV-0913, slip op. at 6-7 (N.D. Ohio May 14, 2010) (memorandum opinion and order) ("[T]he procedural history and posture of this case is certainly anomalous."), which issued after various parties had defaulted on the merits but then had appeared to contest the default. Cf. Ocean Innovations, Inc. v. Quarterberth, Inc., No. 1:03-CV-0913 (N.D. Ohio May 14, 2010) (issuing a permanent injunction enjoining defendants from various activities).
252. Cf. David E. Klein & Robert J. Hume, Fear of Reversal as an Explanation of Lower Court Compliance, 37 LAW & SOC'Y REV. 579, 603 (2003) (suggesting that "trial judges in virtually every court system" might be particularly sensitive, compared to U.S. circuit court judges, to "[t]he threat of reversal").
253. See Temporary Restraining Order, Valvtechnologies, Inc. v. North, No. 4:10-cv-03943 (S.D. Tex. Oct. 20, 2010) (issuing a temporary restraining order without notice to the defendants).
254. More specifically, under a one-sample, two-tailed t-test applied to the sample of eightythree consented-to injunctions, a null hypothesis that the real error rate is 45% is rejected at a 95% confidence level, with t(82) = 2.1, p = 0.04. If a one-tailed t-test is used to test a null hypothesis that the real error rate is less than or equal to 45%, the null hypothesis is rejected at a 95% confidence level by a more substantial margin, t(82) = 2.1, p = 0.02.
255. Under a one-sample, two-tailed t-test applied to the sample of forty-one actively opposed injunctions, a null hypothesis that the real error rate is 25% is rejected at a 95% confidence level, with t(40) = 2.4, p = 0.02. If a one-tailed t-test is used to test a null hypothesis that the real error rate is less than or equal to 25%, the null hypothesis is rejected at a 95% confidence level by a more substantial margin, t(40) = 2.4, p = 0.01.
256. Under a one-sample, two-tailed t-test applied to the sample of nineteen unconsented-to but unopposed injunctions, a null hypothesis that the real error rate is 70% is rejected at a 95% confidence level, with t(18) = 2.7, p = 0.015. If a one-tailed t-test is used to test a null hypothesis that the real error rate is less than or equal to 70%, the null hypothesis is rejected at a 95% confidence level by a more substantial margin, t(18) = 2.7, p = 0.0075.
257. When the results for the eighty-three consented-to injunctions and the forty-one actively opposed injunctions are compared, two-sample, two-tailed t-tests assuming equal variances and assuming unequal variances yield, respectively, t(122) = 1.3, p = 0.18; and t(79) = 1.3, p = 0.19. An F-test for equality of variances did not indicate a statistically significant difference between variances (F = 0.98, p = 0.47).
258. When the results for the eighty-three consented-to injunctions and the nineteen otherwiseunopposed injunctions are compared, two-sample, two-tailed t-tests assuming equal variances and assuming unequal variances yield, respectively, t(100) = -2.7, p = 0.007; and t(42) = -3.6, p = 0.0008. An F-test for equality of variances indicated a statistically significant difference between variances at a 95% confidence level (F = 2.15, p = 0.015). When the results for the forty-one actively opposed injunctions and the nineteen unconsented-to but unopposed injunctions are compared, two-sample, two-tailed t-tests assuming equal variances and assuming unequal variances yield, respectively, t(58) = -3.6, p = 0.0006; and t(53) = -4.3, p = 0.00008. An F-test for equality of variances indicated a statistically significant difference between variances at a 95% confidence level (F = 2.5, p = 0.018).
259. See, e.g., Golden R., supra note 20, at 324 & n.15 (noting that "claim construction jurisprudence continues to bear hallmarks of unpredictability" and that "[r]eversal rates of district court claim constructions stand at roughly 34%").
260. Cf. id. at 386 ("[E]ven a more coherent claim construction jurisprudence will leave room for uncertainty regarding the meanings of particular claims ....").
261. id. at 324 n.15 ("Of course, the relatively high reversal rates for patent claim construction could be explained by litigants' greater selectivity in choosing which claim constructions to appeal, rather than any atypical failure on the part of courts.").
262. No. 2:07-cv-283-RLY-WGH slip op. (S.D. Ind. May 12, 2010).
263. Id. at 1.
264. See DOUGLAS LAYCOCK, THE DEATH OF THE IRREPARABLE INJURY RULE 111, 116 (1991) (noting that "a preliminary order may inflict serious costs on a defendant who had little time to prepare a defense" and that "[i]t is almost universally true that courts are more willing to grant permanent injunctions than preliminary injunctions")
265. Golden, supra note 6, at 2159 n.178 ("During the several years that it can take to obtain a permanent injunction, the defendant may redesign its accused product or process multiple times, or perhaps stop manufacturing or using it simply because it has become obsolete.").
266. See id. at 111 (noting that one "reason[] for being cautious with preliminary relief" is that a "court must act without a full trial, sometimes on sketchy motion papers and affidavits").
267. When the results for the 124 permanent injunctions and the 19 preliminary injunctions (including temporary restraining orders) are compared, two-sample, two-tailed t-tests assuming equal variances and assuming unequal variances yield, respectively, t(141) = 2.0, p = 0.053; and t(24) = 1.9, p = 0.06. An F-test for equality of variances does not indicate a statistically significant difference between variances (F = 0.98, p = 0.44).
268. See, e.g., John M. Golden, Innovation Dynamics, Patents, and Dynamic-Elasticity Tests for the Promotion of Progress, 24 HARV. J.L. & TECH. 47, 105 (2010) (noting further reason "to believe that a policy mechanism like patent law will have disparate effects for different technologies and industries").
269. The majority of BMS orders (15 of 25) were actively opposed, and none involved situations of actual or effective default. Somewhat interestingly, Type-2 language appears exclusively in actively opposed BMS orders: three of the fifteen actively opposed BMS orders feature Type-2 language, whereas no consented-to BMS order includes such language.
270. See 21 U.S.C. § 355(j)(2)(A) (2006) (mandating that "an abbreviated application for a new drug shall contain ... information to show that the active ingredients of the new drug are the same as those of the listed drug" and "information to show that the new drug is bioequivalent to the listed drug")
271. see also David E. Adelman & Christopher M. Holman, Misplaced Fears in the Legislative Battle Over Affordable Biotech Drugs, 50 IDEA 565, 580 (2010) ("In the case of traditional drugs, [follow-on drug] assessment turns on the chemical identity and purity of a generic drug (i.e., whether it is 'bioequivalent' and employs the 'same' active ingredient), both of which involve testing methods that are accurate and precise.").
272. See JAMES BESSEN & MICHAEL J. MEURER, PATENT FAILURE: HOW JUDGES, BUREAUCRATS, AND LAWYERS PUT INNOVATORS AT RISK 152 (2008) ("The usual explanation for the superior performance of patents in [chemical and pharmaceutical] technologies is that the boundaries of chemical patents are clearer ... -the structure of a molecule or the composition of a mixture can be defined with precision."). One large subclass of BMS patent litigation is litigation based on § 271(e) of the U.S. Patent Act, which makes the filing of an application for Food and Drug Administration approval of a patented drug an act of infringement. 35 U.S.C. § 271(e)(2) (2006). Subsection 271(e)(4) makes distinct and exclusive provision for the remedies that are available for such an act of infringement, declaring, in effect, that in many cases the only available relief will be "injunctive relief ... to prevent the commercial manufacture, use, offer to sell, or sale within the United States or importation into the United States of an approved drug or veterinary biological product." Id. § 271(e)(4).
273. When the results for the sixty-four remaining consented-to injunctions and the twenty-six remaining actively opposed injunctions are compared, two-sample, two-tailed t-tests assuming equal variances and assuming unequal variances yield, respectively, t(88) = 0.28, p = 0.78; and t(45) = 0.28, p = 0.78. An F-test for equality of variances does not indicate a statistically significant difference between variances (F = 0.95, p = 0.42).
274. When the results for the sixty-four remaining consented-to injunctions and the fifteen remaining unconsented-to but unopposed injunctions are compared, two-sample, two-tailed t-tests assuming equal variances and assuming unequal variances yield, respectively, t(77) = -1.9, p = 0.06; and t(28) = -, p = 0.03. An F-test for equality of variances does not indicate a statistically significant difference between variances at a 95% confidence level but does indicate such a difference at a 90% confidence level (F = 2.0, p = 0.08). When the results for the twenty-six remaining actively opposed injunctions and the fifteen remaining unconsented-to but unopposed injunctions are compared, two-sample, two-tailed t-tests assuming equal variances and assuming unequal variances yield, respectively, t(39) = -1.9, p = 0.06; and t(37) = -2.2, p = 0.04. An F-test for equality of variances does not indicate a statistically significant difference between variances at a 95% confidence level but does indicate such a difference at a 90% confidence level (F = 2.1, p = 0.08).
275. No preliminary injunctions in the residuum were consented-to. When the results for the ninety-six remaining permanent injunctions and the nine remaining preliminary injunctions (including temporary restraining orders) are compared, two-sample, two-tailed t-tests assuming equal variances and assuming unequal variances yield, respectively, t(103) = 0.53, p = 0.59; and t(9) = 0.49, p = 0.63. An F-test for equality of variances does not indicate a statistically significant difference between variances (F = 0.83, p = 0.31). Likewise, when the results for the twenty of these permanent injunctions that were actively opposed and the six of these preliminary injunctions that were actively opposed are compared, two-sample, two-tailed t-tests assuming equal variances and assuming unequal variances yield, respectively, t(24) = 0.42, p = 0.68; and t(8) = 0.40, p = 0.70. An F-test for equality of variances does not indicate a statistically significant difference between variances (F = 0.84, p = 0.35).
276. The observed Type-2 error rates for the sixteen BMS permanent injunctions and the nine BMS preliminary injunctions (including temporary restraining orders) are approximately 13% (2 of 16) and 11% (1 of 9), respectively. The observed Type-2 error rates for the twelve purely designpatent permanent injunctions and the one purely design-patent preliminary injunction are approximately 92% and 100%, respectively. Given the closeness of the preliminary and permanent injunction error rates and the small sizes of the samples, it virtually goes without saying that the observed differences within the respective BMS and purely design-patent classes do not appear to be statistically significant.
277. See Lexmark Int'l, Inc. v. Ink Techs. Printer Supplies, LLC, No. 1:10-cv-00564-MRB (S.D. Ohio Dec. 21, 2010) (issuing a permanent injunction directed at Print-Rite Holdings Ltd.); Lexmark Int'l, Inc. v. Ink Techs. Printer Supplies, LLC, No. 1:10-cv-00564-MRB (S.D. Ohio Dec. 9, 2010) (issuing a permanent injunction directed at Virtual Imaging Products, Inc.).
278. Of course, attorneys and their clients still need to consider the risk that, whether through error or a legal course change, courts will later either enforce Type-2, obey-the-law language as written (a risk for the adjudged infringer and its attorneys) or refuse to enforce the injunction at all (a risk for the patentee and its attorneys). Given the apparent ease of avoiding such risks, one might have expected attorneys to more strictly avoid Type-2 language.
279. Evidence of Type-2 orders appears at least as early as the mid-nineteenth century.
280. See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 613, 617-18 (1885) (refusing to determine the scope of an injunction against "making, selling, or using, or in any manner disposing of, any artificial stone-block pavements embracing the invention and improvements described in the said reissued letters patent"); Corning v. Troy Iron & Nail Factory, 56 U.S. (15 How.) 451, 456 (1854) (reporting the trial court's grant of an injunction against "in any manner infringing or violating any of the rights or privileges granted or secured by said patent")
281. see also KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1533 n.1 (Fed. Cir. 1985) (Newman, J., concurring in part) ("The majority posits the 'unreasonableness of a decree incorporating a vague or broad prohibition against "infringement" of a "patent."' A century of precedent weighs to the contrary."), overruled on other grounds, TiVo Inc. v. EchoStar Corp., 646 F.3d 869 (Fed. Cir. 2011) (en banc).
282. The same is true for injunctions including both Type-2 and Type-0 orders. See Barnard v. Gibson, 48 U.S. (7 How.) 650, 653 (1849) (reporting the trial court's grant of an injunction against "any further constructing or using in any manner ... of the two planing-machines mentioned in said bill ... and [against] infringing upon or violating the said patent in any way whatsoever"). The practice of limiting the effective scope of injunctions to matters judged to be infringing and only colorable variants thereof appears to have comparable lineage.
283. See, e.g., Crown Cork & Seal Co. of Balt. City v. Am. Cork Specialty Co., 211 F. 650, 653 (2d Cir. 1914) ("It has been the practice in this circuit not to deal with modifications of a machine held to be an infringement, on motions to punish for contempt, unless the change was plainly a mere colorable equivalent ...." (citations omitted)); Onderdonk v. Fanning, 2 F. 568, 569 (E.D.N.Y. 1880) (concluding that a difference from a device previously adjudged to infringe "was not so plainly colorable as to entitle the plaintiff to an attachment against him for contempt")
284. cf. ALBERT H. WALKER, TEXT-BOOK OF THE PATENT LAWS OF THE UNITED STATES OF AMERICA § 708, at 555 (4th ed. 1904) ("And an attachment will not issue where the character of the defendant's doings, after the injunction, is doubtful.").
285. G. Mitu Gulati & Robert E. Scott, Introduction: The Three and a Half Minute Transaction: Boilerplate and the Limits of Contract Design 5 (Columbia Law Sch., Working Paper No. 410, 2011), available at http://ssrn.com/abstract=1945988.
286. Burton v. City of Belle Glade, 178 F.3d 1175, 1201 (11th Cir. 1999) ("As [an] injunction [against racial discrimination in annexation] would do no more than instruct the City to 'obey the law,' we believe that it would not satisfy the specificity requirements of Rule 65(d) ....")
287. see also Payne v. Travenol Labs., Inc., 565 F.2d 895, 898 (5th Cir. 1978) (holding that an antidiscrimination injunction "more specific than Title VII itself only in that it does not prohibit employment discrimination based on religion and natural origin ... cannot be sustained")
288. cf. LAYCOCK, supra note 78, at 274 (describing Rule 65(d) as "generally preclud[ing] injunctions that merely tell defendant to 'obey the law'").
289. See, e.g., U.S. Patent No. D618, 225 S, at [57] (filed July 13, 2009) ("The ornamental design for a cellphone plug adapter, as shown and described.")
290. U.S. Patent No. D456,023 S, at [57] (filed July 17, 2000) ("The ornamental design for a display, as shown and described.").
291. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (describing proof of infringement as requiring the patentee to "prov[e] the two designs would appear 'substantially the same' to the ordinary observer").
292. Weatherford Can. Ltd. v. Corlac Inc., [2010] F.C. 667 paras. 17, 20 (Can. Ont. Fed. Ct.) (observing that an injunction against "infringing [patent] claims as interpreted whether [via] the named products or not" was "consistent with other orders of this Court, as affirmed by the Court of Appeal, restraining sale and distribution of infringing products generally")
293. Merck & Co. v. Apotex Inc., [1999] 293 N.R. 316 (Can. Fed. Ct. App.) (rejecting a request to narrow an injunction prohibiting infringement of a specified patent so that an adjudged infringer might participate in activities involving "newly developed compounds" not available at the time of the trial judgment)
294. cf. ROBERT J. SHARPE, INJUNCTIONS AND SPECIFIC PERFORMANCE (2d ed. 1997). Justice Sharpe of the Ontario Court of Justice observes: [I]t has often been said that for negative injunctions a general form is to be used, provided it gives sufficient guidance, and orders prohibiting the defendant from acting 'in the manner hitherto pursued by him or in any other manner so as to cause a nuisance' and 'in the manner complained of ... or otherwise so as to cause a nuisance' have been approved by appellate courts.
295. Id. ¶ 1.400, at 1-17 (footnotes omitted).
296. Coflexip S.A. v. Stolt Comex Seaway MS Ltd., [2001] 5 R.P.C. 182 (Ct. App.) 186-87 (Eng.) (Aldous, L.J.)
297. ("The draft order contained an injunction in the usual form which restrained the defendants from 'infringing European Patent (U.K.) No. 0478742.")
298. Nutrinova Nutrition Specialties & Food Ingredients GMBH v. Scanchem UK Ltd. (No. 2), [2000] F.S.R. 831 (Patents Ct.) 838-39 (Eng.) (noting that although "there is no rule that in any case of infringement of an intellectual property right the injunction granted will be a general injunction against infringing that right[,]" "the discretion is a wide one [and] injunctive relief ... may be in the wide form hitherto customary").
299. See generally Microsoft Corp. v. Plato Tech. Ltd., [1999] Masons C.L.R. 370 (Ct. App.) (Eng.) (Nourse, L.J.) (agreeing that cited authorities "undoubtedly support ... as a general proposition" "that in the case of infringement of intellectual property rights ... it is well established ... that, once the claimant has established any infringements of his rights at all, he is entitled as of right to an injunction in the usual wide form to restrain all future infringements").
300. Coflexip, [2001] 5 R.P.C. at 188.
301. Welcome Real-Time SA v Catuity Inc. [2001] F.C.A. 785, para. 9 (Austl.)
302. para. 11 ("The invariable practice in the High Court has been to grant an injunction which simply restrained infringing the patent ....").
303. See, e.g., SHARPE, supra note 203, ¶ 1.390, at 1-16 ("Quite clearly, in formulating injunction orders, the courts should avoid vague or ambiguous language which fails to give the defendant proper guidance or which in effect postpones determination of what actually constitutes a violation of the plaintiff's rights.").
304. Nonetheless, I can cite two instances where district courts appear to have actively corrected a party's attempt to obtain a Type-2, obey-the-law injunction. In one, a court denied an injunction altogether. Plastic Tubing Indus., Inc. v. Blue Diamond Indus., LLC, No. 6:10-cv-1227- GAP-KRS (M.D. Fla. Dec. 28, 2010) (denying parties' "Joint Motion for Entry of Consent Final Judgment and Permanent Injunction" because "[t]he proposed consent judgment [was] essentially an extremely broad 'obey the law' injunction"). In the other, the court blacklined Type-2, obey-thelaw language in a party's draft order. Proveris Scientific Corp. v. InnovaSystems, Inc., No. 05- 12424-WGY, slip op. at 2-3 (D. Mass. May 11, 2007) (striking language that would have prohibited activities involving "any other product that embodies the patented inventions recited in claims 3-10 and 13" of U.S. Patent No. 6,785,400 and striking language requiring the destruction of "any other infringing products").
305. Lemley & Shapiro, supra note 2, at 1992 (stating that "far more patents are licensed or settled than litigated to judgment").
306. See Keith N. Hylton & Sungjoon Cho, The Economics of Injunctive and Reverse Settlements, 12 AM. L. & ECON. REV. 181, 185 (2010) (developing a model that corroborates standard notions that asymmetric stakes or different probability-of-outcome expectations can prevent settlement where reverse payments are not an option). Reverse payments might fail to be a viable option because they are legally prohibited by, for example, antitrust laws.
307. Henry N. Butler & Jeffrey Paul Jarosch, Policy Reversal on Reverse Payments: Why Courts Should Not Follow the New DOJ Position on Reverse-Payment Settlements of Pharmaceutical Patent Litigation, 96 IOWA L. REV. 57, 61 (2010) (noting that both the U.S. Department of Justice and the Federal Trade Commission have "pursu[ed] antitrust liability for reverse-payment settlements").
308. Alternatively, reverse payments might fail to be a viable option because they undermine a right holder's ability to credibly threaten others with enforcement that does not entail payment to the others to avoid or cease infringement.
309. Kaplow & Shavell, supra note 10, at 722 (noting that under a liability rule, "even though I would be willing to pay Jack not to take my car if it were inadequately valued by the courts, there would be no point in paying him to desist-for Jill, or someone else, could come along and take it the next day").
310. Lower quality attorney representation or lower quality use of attorney representation could explain a discrepancy in the parties' views about likely case outcomes. Less experienced attorneys or attorneys whose interests are not well aligned with those of their clients might be less likely to convey an accurate sense of the likelihood of case outcomes.
311. See Steven Shavell, On the Design of the Appeals Process: The Optimal Use of Discretionary Review Versus Direct Appeal, 39 J. LEGAL STUD. 63, 81-82 (2010) ("Attorneys have a personal interest in making appeals, as that means more work for them, which suggests that to some degree attorneys will give unduly optimistic advice to clients and promote excessive appeals if direct appeal is the only avenue of appeal."). A less experienced or less legally savvy party might be more likely to misestimate such probabilities even if properly informed. On the other hand, party inexperience or lack of legal savvy might not help explain the high frequency of a procedural error like the issuance of a Type-2, obey-the-law injunction. Unlike a decision on whether to settle, a decision on whether to make a procedural objection might be almost exclusively within the domain of the attorneys.
312. Batesville Servs., Inc. v. S. Rain Casket & Funeral Supply, No. 2:09-CV-257-PPS-APR, slip op. at 5 (N.D. Ind. July 15, 2010).
313. Seiko Epson Corp. v. Abacus 24-7 LLC, No. 3:09-cv-00477-BR, slip op. at 8 (D. Or. July 8, 2010) (emphasis added).
314. 35 U.S.C. § 271 (2006) (setting out different forms of infringement).
315. Id. § 271(a).
316. E.g., Silverlit Toys Manufactory Ltd. v. JP Commerce, LLC, No. 2:09-CV-08959-CAS (JCx), slip op. at 4 (C.D. Cal. Apr. 29, 2010) (enjoining, inter alia, "marketing, reproducing, distributing, receiving, forwarding, shipping, displaying (on their websites or otherwise), or in any way commercially exploiting ... any toy helicopters that infringe one or more claims" of two specified patents); Innovation U.S.A., Inc. v. IDO Furniture (U.S.A.) Inc., No. 1:09-cv-01727-JBWRLM, slip op. at 3 (E.D.N.Y. Mar. 31, 2010) (enjoining "referencing or depicting on their website or in any future catalog, brochure, and any other form of marketing literature," a sofa or a reclinable sofa bed that infringes either of two specified design patents).
317. 17 U.S.C. § 106(3) (2006).
318. Cf. ANDREW BURROWS, REMEDIES FOR TORTS AND BREACH OF CONTRACT 511-12 (3d ed. 2004) (describing the difference between "prohibitory" and "mandatory" injunctions)
319. 11A WRIGHT, MILLER & KANE, supra note 92, § 2942, at 57 ("[I]njunctions compelling the doing of some act, as opposed to forbidding the continuation of a course of conduct, are an ancient and familiar tool of equity courts and will be used whenever the circumstances warrant.").
320. No. 2:04-cv-00032-CE (E.D. Tex. Sept. 27, 2010).
321. Id. at 2. In Polytree (H.K.) Co. v. Forests Mfg., Ltd., No. 1:09-cv-03377-WSD, slip op. (N.D. Ga. Dec. 20, 2010), the court commanded the U.S. Customs and Border Patrol to prevent importation into the United States of "any Christmas tree stand imported by Defendant marked with" a number from either of two patents owned by the plaintiff.
322. Id. at 39. This order could be understood to facilitate prevention of infringement by releasing the patentee and customs officers from any need to prove or confirm that tree stands so marked in fact incorporated the indicated inventions. But the order could also be understood as primarily directed toward preventing further violations of the U.S. Patent Act's false marking statute, which, among other things, prohibits the deceptive marking of a product "without the consent of the patentee." 35 U.S.C. § 292(a) (2006).
323. See, e.g., Saint-Gobain Technical Fabrics Am., Inc. v. Checkmate Geosynthetics, Inc., No. 6:09-cv-00557-MSS-KRS, slip op. at 19 (M.D. Fla. Oct. 26, 2010) (ordering defendant to "deliver, at its expense, to Saint-Gobain's counsel all of its infringing products and all literature, advertisements and other materials related to [the] infringing products"); Caught Fish Enters., LLC v. Blaze Wharton Constr., Inc., No. 09-cv-02878-PAB-KMT (D. Colo. Feb. 24, 2010) (requiring that the adjudged infringer "ship to Caught Fish at their own cost and for destruction ... all Accused Clamps in their possession, custody, or control").
324. 15 U.S.C. § 1118 (2006) (empowering courts in federal trademark actions to "order that all labels, signs, prints, packages, wrappers, receptacles, and advertisements in the possession of the defendant, bearing the registered mark ... or any reproduction, counterfeit, copy, or colorable imitation thereof, and all plates, molds, matrices, and other means of making the same, shall be delivered up and destroyed")
325. 17 U.S.C. § 503(b) (2006) (authorizing courts in copyrightinfringement cases to order "the destruction or other reasonable disposition of all copies or phonorecords found to have been made or used in violation of the copyright owner's exclusive rights, and of all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced").
326. Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1366 (Fed. Cir. 1998) (emphasis added).
327. So-called ANDA litigation that tends to result in injunctions making such a reference is enabled by § 271(e) of the U.S. Patent Act, 35 U.S.C. § 271(e) (Supp. IV 2010), which, roughly speaking, provides patentees with "the ability to sue [generic drug manufacturers] for merely filing an application (known as an Abbreviated New Drug Application, or ANDA) with the [Food and Drug Administration]." Timothy R. Holbrook, Possession in Patent Law, 59 SMU L. REV. 123, 141 (2006).
328. No. 4:10-cv-00044.A, slip op. (N.D. Tex. May 20, 2010).
329. Id. at 2.
330. U.S. Patent No. 6,516,752 col. 4 I. 46 (filed July 2, 2001)
331. id. at col. 5 I. 22.
332. No. 2:10-cv-297-TJW, slip op. (E.D. Tex. Nov. 2, 2010).
333. Id. at 2.
334. Jennifer Yannone, Comment, The Future of Unauthorized Pop-Up Advertisements Remains Uncertain as Courts Reach Conflicting Outcomes, 7 TUL. J. TECH. & INTELL. PROP. 281, 282 (2005).
335. U.S. Patent No. 7,386,555 col. 15 II. 28-30 (filed Feb. 23, 2004)
336. see also id. at col. 14 I. 64 to col. 15 I. 16 (claiming a "system for Internet advertising" comprising "a media that interacts with a display device to display to a user at least one browser," "a script handler that invokes a postsession procedure" that "open[s] a second browser in a ... background window," and "an event handler that ... loads [an] advertisement into said second browser").
337. No. 2:09-cv-04685-JVS-AN, slip op. (C.D. Cal. Jan. 5, 2010).
338. Compare id. at 2 (forbidding activities involving "any vertical door conversion kits or vertical door hinges intended to allow opening of a vehicle door outward (i.e., in a horizontal motion like typical car doors), and then upward (i.e., in a vertical motion), and that are designed to be bolted on to the vehicle frame and door, as opposed to welded"), with U.S. Patent No. 6,845,547 col. 12 II. 46-64 (filed Nov. 26, 2002) (claiming a "vehicle door hinge for a vehicle door and frame, the hinge comprising: a chassis mounting plate securely fastened to such vehicle frame; a swingarm securely fastened to such vehicle door[,]" and other elements).
339. No. 5:08-cv-00503-WTH-DAB, slip op. (M.D. Fla. Nov. 19, 2010).
340. Id. at 1-2 (forbidding various activities involving "a precast concrete block" having various specified features).
341. Compare id., with U.S. Patent No. 7,073,304 col. 17 I. 35 to col. 20 I. 65 (filed Sept. 23, 2004) (listing claims)
342. U.S. Patent No. 6,796,098 col. 13 I. 41 to col. 16 I. 43 (filed Feb. 27, 2003) (same).
343. '098 Patent, col. 13 II. 41-57.
344. Parties routinely agree on contract terms that set bounds for authorized or unauthorized behavior that do not precisely align with intellectual property rights.
345. Jeanne C. Fromer, Claiming Intellectual Property, 76 U. CHI. L. REV. 719, 749-50 (2009) (describing such practice by copyright owners)
346. cf. Mark R. Patterson, Contractual Expansion of the Scope of Patent Infringement Through Field-of-Use Licensing, 49 WM. & MARY L. REV. 157, 160 (2007) ("[P]atentees have used field-of-use licensing to prevent purchasers of patented products from repairing those products, and to enforce distribution restraints."). Consequently, reflection of such behavior in consent decrees that result from agreements between parties should probably not be surprising.
347. Structural Tenting Corp. v. Termite Doctor, LLC, No. 1:09-cv-21285-MGC, slip op. at 2 (S.D. Fla. Aug. 17, 2010).
348. DatCard Sys., Inc. v. Codonics, Inc., No. 8:08-cv-00063-AHS-RNB, slip op. at 1 (C.D. Cal. Jan. 21, 2010).
349. King Pharms., Inc. v. Sandoz, Inc., No. 3:08-cv-05974-GEB-DEA, slip op. at 2 (D.N.J. Apr. 6, 2010).
350. Hoffman-La Roche Inc. v. Cobalt Pharms. Inc., No. 2:07-cv-04539-SRC-MAS, slip op. at 2 (D.N.J. Nov. 10, 2010) (emphasis added) ("preliminarily enjoin[ing] ... engag[ement] in the commercial manufacture, use, offer for sale, or sale within the United States of any products that are the subject of Cobalt's Abbreviated New Drug Applications Nos. 79-002 and 79-003")
351. Sandoz Inc. v. Boehringer Ingelheim Int'l GMBH, No. 3:10-cv-00437-TJC-JBT, slip op. at 1-2 (M.D. Fla. July 29, 2010) (emphasis added) (prohibiting "engag[ement] in the commercial manufacture, use, offer to sell, or sale within the United States, or importation into the United States, of any drug product containing pramipexole or a pharmaceutically acceptable salt thereof").
352. 35 U.S.C. § 271(e)(4)(B) (2006) (emphasis added)
353. Likewise, for purposes of simplicity, this Article assumes, at least as a general matter, that society rationally wishes to discourage actually infringing activity. Of course, if one believes that patent rights are systematically overbroad, one might question this assumption and seek narrower or otherwise weaker injunctions without vexing about any felt need to balance lost protection for patentees against the gains from reduced chilling and "taxation" of infringing or, at least, potentially infringing activity.
354. Cf. Omri Ben-Shahar, Damages for Unlicensed Use 23 (Univ. of Chi. John M. Olin Law & Econ., Working Paper No. 534, 2010), available at http://ssrn.com/abstract=1677667 (indicating an argument that "already-licensed parties" should "face harsher remedies for unlicensed use than the ones strangers face" because already-licensed parties can be expected, generally speaking, to have lower transaction costs for additional licensing).
355. Herbert Hovenkamp, Response, Notice and Patent Remedies, 88 TEXAS L. REV. SEE ALSO 221, 224 (2011) (emphasizing the importance of notice concerns in relation to remedies for patent infringement)
356. see also BESSEN & MEURER, supra note 189, at 46 ("A successful property system establishes clear, easily determined rights.").
357. See Dan L. Burk & Mark A. Lemley, Fence Posts or Sign Posts? Rethinking Patent Claim Construction, 157 U. PA. L. REV. 1743, 1748 (2009) ("Those who are intimate with the patent system have long understood that it is simply impossible to define boundaries of invention with the physical or descriptive precision of defining the boundaries of real property.").
358. Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1368 (Fed. Cir. 2005) ("The district court denied Gillette's motion for a preliminary injunction because it found that the claims ... covered only a three-bladed razor ....").
359. (holding that "the district court erred in construing the claims")
360. id. at 1382 (Archer, J., dissenting) ("[T]he specification makes abundantly clear that the invention ... was a razor having three blades, no more ....").
361. Contra Earl C. Dudley, Jr., Getting Beyond the Civil/Criminal Distinction: A New Approach to the Regulation of Indirect Contempts, 79 VA. L. REV. 1025, 1025-27 (1993) (describing exercises of contempt power as lacking meaningful constraint).
362. Louis Kaplow, Rules Versus Standards: An Economic Analysis, 42 DUKE L.J. 557, 569 (1992) (observing that where "there is a given cost of determining the appropriate content of the law ex ante," "rules are more expensive to promulgate than standards").
363. See FED. R. CIV. P. 60(b)(5) ("On motion and just terms, the court may relieve a party or its legal representative from a final judgment, order, or proceeding for the ... [reason that] ... applying it prospectively is no longer equitable ....")
364. see also Smith Corona Corp. v. Pelikan, Inc., 784 F. Supp. 452, 486 (M.D. Tenn. 1992) ("Pelikan's motion to clarify injunction is granted ....")
365. RENDLEMAN, supra note 79, at 491 ("The Supreme Court's decision that a Chancery court has inherent power to modify or dissolve an injunction came in 1932 .... Rule 60(b)(5) became effective ... six years later.").
366. Lemley & Shapiro, supra note 2, at 1993 ("Injunction threats often involve a strong element of holdup in the common circumstance in which the defendant has already invested heavily to design, manufacture, market, and sell the product with the allegedly infringing feature.").
367. See generally Calabresi & Melamed, supra note 4, at 1107 (describing "moving from a property rule to a liability rule" as a potential solution to a "holdout problem").
368. 275 F. Supp. 2d 695 (E.D. Va. 2003), aff'd in part, rev'd in part, vacated in part, 401 F.3d 1323 (Fed. Cir. 2005), vacated, 547 U.S. 388 (2006).
369. Id. at 714.
370. More fully, the district judge stated, If the court did enjoin the defendants here, the court would essentially be opening a Pandora's box of new problems. This case has been one of the more, if not the most, contentious cases that this court has ever presided over.... The court predicts that if it granted the plaintiff's request for a permanent injunction, the battle would continue to be as contentious as ever.... The court envisions contempt hearing after contempt hearing .... This will result in extraordinary costs to the parties, as well as considerable judicial resources.
371. See Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 704 (Fed. Cir. 2008) (upholding a district court's order granting an injunction in part because a "sunset provision" permitting infringement to continue for twenty months after the jury verdict alleviated hardship to the adjudged infringer)
372. Metso Minerals, Inc. v. Powerscreen Int'l Distribution Ltd., 788 F. Supp. 2d 71, 77 (E.D.N.Y. 2011) (holding that, in light of the defendants' representation "that they will have completed the redesign of their screener line by the end of June 2011," the balance of hardships and considerations of public interest made "appropriate ... delay[ing] the implementation of injunctive relief until July 11, 2011")
373. B. Braun Melsungen AG v. Terumo Med. Corp., 778 F. Supp. 2d 506, 524 (D. Del. 2011) (ruling in favor of the adjudged infringer's proposal of "a 'sunset' period of fifteen months, allowing [the infringer] to continue to sell the [infringing device] in [a] market segment where it is presently sold").
374. See, e.g., QBAS Co. v. C Walters Intercoastal Corp., No. 8:10-cv-00406-AG-MLG, slip op. at 23 (C.D. Cal. Dec. 16, 2010) (deciding to grant a preliminary injunction but deciding to "determine an appropriate bond amount [only] after Plaintiffs file a proposed preliminary injunction order")
375. Stone Strong, LLC v. Del Zotto Prods. of Fla., Inc., No. 5:08-cv-503-oc-10DAB, slip op. at 8 (M.D. Fla. Oct. 25, 2010) (holding that "the Plaintiff is entitled to injunctive relief" and giving the plaintiff "[ten] days within which to file and submit a proposed, final injunctive decree")
376. Mytee Prods., Inc. v. Harris Research, Inc., No. 3:06-cv-01854-CAB, slip op. at 7 (S.D. Cal. Jan. 20, 2010) (granting a motion for permanent injunction and calling for subsequent submission of "[a] proposed permanent injunction")
377. Flexiteek Ams., Inc. v. Plasteak, Inc., No. 0:08-cv-60996-JIC, slip op. at 18-19 (S.D. Fla. Sept. 15, 2009) (concluding that an injunction should issue and ordering plaintiffs to file a proposed injunction)
378. But see Metso Minerals, 788 F. Supp. 2d at 77 ("In addition to their arguments opposing injunctive relief in whole, the defendants also oppose a number of specific aspects of the plaintiff's proposed injunction.")
379. B. Braun Melsungen, 778 F. Supp. 2d at 525-26 (reviewing the parties' proposals for the scope of injunctive relief and granting a permanent injunction "only to the extent of entering an injunction on the terms proposed by [the defendant]").
380. After deciding to grant an injunction, a district court might call for a specific proposal for the form of the on an injunction even though a proposed order has previously been submitted. Compare Mytee Prods., slip op. at 7 (deciding to issue an injunction and calling for subsequent submission of "[a] proposed permanent injunction"), with Mytee Prods., Inc. v. Harris Research, Inc., No. 3:06-cv- 01854-CAB (S.D. Cal. Nov. 20, 2009) (proposed permanent injunction) (presenting a draft order prohibiting infringement of various patent claims).
381. Cf. ION, Inc. v. Sercel, Inc., No. 5:06-CV-236-DF, slip op. at 14 (E.D. Tex. Sept. 16, 2010) (agreeing with objections to the scope of "ION's proposed injunction" and observing that "exempting customers that have already purchased infringing sensors from the scope of the injunction mitigates the adverse practical and economic effects").
382. Kaplow A, supra note 254, at 576 n.42 ("If, for example, there is uncertainty concerning what an adjudicator would deem to be due care, there may be a tendency ... to take care that is excessive relative to the expected due care requirement, although it is also possible that individuals would take less care than the expected due care requirement.").
383. A specially tailored order might help promote increased legal compliance by third parties if, for example, violation or arguable violation of Type-1 orders encourages disrespect of patent rights or court orders more generally.
384. Edward K. Cheng, Structural Laws and the Puzzle of Regulating Behavior, 100 NW. U. L. REV. 655, 656-57 (2006) (suggesting that a symptom of "excessive use of criminalization" is "casual lawbreaking by ordinary citizens [that] promotes an unhealthy disrespect for the law")
385. Joseph P. Liu, Owning Digital Copies: Copyright Law and the Incidents of Copy Ownership, 42 WM. & MARY L. REV. 1245, 1307 (2001) ("[A] significant divergence between norms of usage and legal requirements may lead to a disrespect for the law.").
386. The value of increased legal compliance might generally be thought likely to be positive although, under a dysfunctional or even merely imperfect legal regime, this is not necessarily always so.
387. RONALD DWORKIN, A MATTER OF PRINCIPLE 106 (1985) ("Almost everyone will agree that if a particular decision is very wicked, people should disobey it." (emphasis omitted))
388. Hovenkamp, supra note 249, at 223 ("As a result of overly aggressive substantive rules, many antitrust violations are also economically efficient.")
389. Eric A. Posner & Alan O. Sykes, Efficient Breach of International Law: Optimal Remedies, "Legalized Noncompliance," and Related Issues, 110 MICH. L. REV. 243, 287 (2011) (positing "examples of 'efficient breach' in international law").
390. LAYCOCK, supra note 78, at 287 (discussing a six-month limit on an injunction against a former employee joining a competitor).
391. Cf. FED. R. CIV. P. 60(b)(5) ("On motion and just terms, the court may relieve a party or its legal representative from a final judgment, order, or proceeding for the ... [reason that] ... applying it prospectively is no longer equitable ....")
392. SHARPE, supra note 203, ¶ 1.450, at 1-18 to 1-19 ("If necessary, the court can make an order by which it implicitly undertakes to review the circumstances and the obligation imposed as matters proceed.").
393. See generally DAVID I. LEVINE et al., REMEDIES: PUBLIC AND PRIVATE 244 (5th ed. 2009) (discussing "[t]he uncertainty of when to apply [a] rigid standard ... to modifications of injunctions and consent decrees and when a more flexible standard is appropriate").
394. Henry E. Smith, An Economic Analysis of Law Versus Equity 39 (Mar. 10, 2010) (unpublished manuscript), available at http://extranet.isnie.org/uploads/isnie2010/smith.pdf ("Equity applies in a smaller domain [than law] with an eye to deterring opportunism, but where it applies it is vague and ex post.")
395. cf. Kaplow, supra note 254, at 618 (observing that fraud "may be easier to commit if there are known rigid rules that a fraudulent actor can carefully circumvent").
396. Kaplow, supra note 254, at 572 ("The difference in [legal] promulgation costs favors standards, whereas that in enforcement costs favors rules.").
397. Steven Shavell, Optimal Discretion in the Application of Rules, 9 AM. L. & ECON. REV. 175, 178 (2007) (describing how an appeals process can "induce[] decisions to conform to the socially desirable, at least within the range governed by the cost of an appeal").
398. Mark Gergen, John M. Golden & Henry E. Smith, The Supreme Court's Accidental Revolution? The Test for Permanent Injunctions, 112 COLUM. L. REV. 203, 237 (2012) ("A major theme in equity has been the need to correct for party opportunism, and injunctions partake of this overarching purpose." (footnote omitted)).
399. Califano v. Yamasaki, 442 U.S. 682, 702 (1979) (rejecting an argument that "nationwide class relief [was] inconsistent with the rule that injunctive relief should be no more burdensome to the defendant than necessary to provide complete relief to the plaintiffs")
400. see also Madsen v. Women's Health Ctr., Inc., 512 U.S. 753, 765 (1994) (describing Califano as stating a "general rule")
401. cf. Dayton Bd. of Educ. v. Brinkman, 433 U.S. 406, 418 (1977) ("In effect, the Court of Appeals imposed a remedy which we think is entirely out of proportion to the constitutional violations found by the District Court ....").
402. Kaplow, supra note 254, at 594 (indicating the likelihood of imperfect tailoring, as a practical matter, under any form of legal doctrine by characterizing "imagin[ing] countless factors (arguments) that a decisionmaker might take into account" under a sufficiently inclusive standard as "a romantic perspective, hardly a valid depiction of actual decisionmaking").
403. Golden, supra note 20, at 348-49 ("In central claiming, claims describe or point to representative embodiments of the inventive idea.").
404. See id. at 349 ("In peripheral claiming, claims indicate the literal boundaries of patent rights.").
405. RENDLEMAN, supra note 79, at 424 (observing that relative to "a statute, a rule, a regulation, a will, and a contract ..., an injunction can be more specific because it is drafted to control the behavior of a known defendant engaged in an actual lawsuit").
406. John M. Golden, Patentable Subject Matter and Institutional Choice, 89 TEXAS L. REV. 1041, 1098 (2011) ("The ex parte nature of the dominant forms of USPTO proceedings- examination proceedings and ex parte reexamination proceedings-means that USPTO examiners primarily interact with parties seeking to obtain patent rights.")
407. Hovenkamp, supra note 249, at 223 ("[A]pplications are evaluated in largely ex parte proceedings by overworked government officials ....").
408. Kaplow, supra note 254, at 585 ("Whether a law should be given content ex ante or ex post involves determining whether information should be gathered and processed before or after individuals act.").
409. Kaplow has noted that time discounting "tends to favor standards, which have a cost advantage at the first stage and disadvantages at [later] stages."
410. Id. at 572 n.33.
411. ALFRED D. CHANDLER, JR., INVENTING THE ELECTRONIC CENTURY: THE EPIC STORY OF THE CONSUMER ELECTRONICS AND COMPUTER INDUSTRIES 4-5 (2005) ("Once ... core companies establish a viable national industry, entrepreneurial start-ups are rarely able to enter," with a result "that only a small number of enterprises defines the evolving paths of learning in which the products of new technical knowledge are commercialized.").
412. See Michael Bednarek, Responding to Recent Trends in the IP Realm: New Considerations for IP Lawyers and Clients, in INTELLECTUAL PROPERTY LAW 2011: TOP LAWYERS ON TRENDS AND KEY STRATEGIES FOR THE UPCOMING YEAR 41, 51 (2011) (stating that patentees who do not practice their inventions "typical[ly] target high-profile companies with deep pockets").
413. Rendleman, supra note 5, at 74 (noting that judges have "considerable discretion in administering an injunction; a judge enforcing an injunction against a recusant defendant may choose between modifying the injunction, granting a second injunction, holding the defendant in contempt, imposing a civil contempt or a criminal contempt sanction, and deciding whether to displace the defendant with a receiver").
414. Daniel A. Crane, Rules Versus Standards in Antitrust Adjudication, 64 WASH. & LEE L. REV. 49, 51 (2007) (suggesting that an existing tendency to shift toward standards-based adjudication in antitrust law will likely be followed by a "swing back toward rules")
415. Kaplow, supra note 254, at 560 (assuming, for purposes of analysis, that "the only distinction between rules and standards is the extent to which efforts to give content to the law are undertaken before or after individuals act" (emphasis omitted)).
416. Burk & Lemley, supra note 250, at 1746 (suggesting that U.S. patent law might improve through a return to central claiming, under which "the patentee discloses the central features of the invention ... and the courts determine how much protection the patent is entitled to")
417. Fromer, supra note 240, at 772 (arguing that patent law should "incorporate further aspects of central claiming").
418. See generally Golden, supra note 20, at 349 (describing a protracted historical shift from central to peripheral claiming).
419. Michael J. Meurer & Craig Allen Nard, Invention, Refinement and Patent Claim Scope: A New Perspective on the Doctrine of Equivalents, 93 GEO. L.J. 1947, 2010 (2005) (calling for "balanc[ing] refinement cost savings and innovative incentives created by the [doctrine of equivalents] against the harm to competition and rent-seeking costs created by the doctrine")
420. Doug Lichtman, Substitutes for the Doctrine of Equivalents: A Response to Meurer and Nard, 93 GEO. L.J. 2013, 2030 (2005) ("[T]he doctrine of equivalents should play a significant role in patent interpretation.").
421. Kaplow, supra note 254, at 580 (observing that spending "relatively little" on the design of a rule "unlikely to apply to many or any acts" "softens the disadvantage of rules ... by reducing the promulgation cost differential" but might also "reduc[e] the benefit of rules with regard to inducing individuals to behave in a socially optimal manner").
422. See Rendleman, supra note 5, at 94 ("In selecting and measuring a remedy, the judge should articulate reasons and apply standards.").
423. R. Shep Melnick, Taking Remedies Seriously: Can Courts Control Public Schools?, in FROM SCHOOLHOUSE TO COURTHOUSE: THE JUDICIARY'S ROLE IN AMERICAN EDUCATION 17, 26 (Joshua M. Dunn & Martin R. West eds., 2009) ("Given the potential sweep and coerciveness of structural injunctions, [U.S.] Supreme Court guidance on the use of injunctions has remained remarkably vague.").
424. Thomas, supra note 145, at 365-69 (discussing how, in deciding on an appropriate remedy, a "court uses traditional decisionmaking tools such as cost-benefit analysis or balancing of the equities ... to select from among the possible alternatives")
425. cf. id. at 332 (arguing that prophylactic remedies should be "narrowly targeted at redressing the proven harm" and have "a sufficient causal nexus to the established harm").
426. David S. Schoenbrod, The Measure of an Injunction: A Principle to Replace Balancing the Equities and Tailoring the Remedy, 72 MINN. L. REV. 627, 678 (1988) ("The injunction's aim must be the plaintiff's rightful position, but to achieve that aim, its terms may impose conditions ... that require actions going beyond the plaintiff's rightful position.")
427. Tracy A. Thomas, Understanding Prophylactic Remedies Through the Looking Glass of Bush v. Gore, 11 WM. & MARY BILL RTS. J. 343, 389 (2002) ("The right level of protection commonly accepted for injunctive remedies is the return of the plaintiff to her rightful position ....").
428. Thomas, supra note 145, at 372 (arguing that compliance, notice, and enforcement advantages "make [prophylactic remedies] particularly effective ... to enforce intangible rights").