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« Impax Laboratories, Inc. v. Aventis Pharmaceuticals Inc. (Fed. Cir. 2008) | Main | Unhappy with the Ex parte Appeal Rule? Read This Now -- Updated »

October 08, 2008


What an excellent phrase!, “barebones majority opinion,” to describe the Supremes’ eBay opinion. Another apt phrase is to describe their eBay opinion is “Constitutionally unlawful” because it relied on a faulty argument which is found on page 3 of their opinion:

“… Indeed, the Patent Act itself indicates that patents shall have the attributes of personal property ‘[s]ubject to the provisions of this title,’ 35 U. S. C. §261, including, PRESUMABLY, the provision that injunctive relief ‘may’ issue only “in accordance with the principles of equity,” §283.” (emphasis added)

Well, the Supremes presumed wrong!; in their eBay opinion, they made the mistake to rely, essentially solely, on 283!, and 35 USC 283 is in conflict with our Constitution’s “Patent Clause”:

Article I, §8 Clause 8: “The several courts … may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”

35 USC 283 would cede discretion to courts to diminish the Power the Constitution gave Congress. You could, of course, make this change by formal amendment in accord with Article V, but certainly not by mere statute. When such conflict exists, the Supremacy Clause, Article VI, says there is no contest -- the Constitution wins – therefore, 35 USC 283 should be ignored until it is withdrawn; the same goes for the Supremes’ eBay opinion.

More can be found here (and elsewhere on Patently-O):
And, at the bottom of this lengthy comment is another link.

Also, I had a dialogue more than once with “Jim H.” on the subject; for example, please see:

Nice write-up! Just one thing: Judge Young entered neither final judgment nor did he grant a permanent injunction. Instead, the case is "administratively closed;" sending the defendant running to notice its appeal with nothing to appeal from, and throwing the already-ongoing interlocutory appeal in the Federal Circuit into a state of discombobulation that was most entertaining to watch during yesterday's oral arguments. As Judge Plager said: "this is [Judge Young's] masterpiece."

Dear Just:

The problem with your analysis is that both the Constitution and the statute are permissive, not mandatory. Indeed, Congress has the power to grant patents, but no obligation to. Similarly, courts have the equitable power to grant injunctions, but are not obliged to. Although I agree that the patent right is severely diminished without the injunctive remedy, Congress has not (and nothing the Court can say will change it) made the injunctive remedy obligatory. I'm not sure Congress could - courts have to have greater discretion with equitable remedies since they are extraordinary - money damages are presumed to be adequate.

Thanks for the comment.

Dear Silence:

Thanks for the clarification. We have altered the posts accordingly, especially in view of the pains with which the Federal Circuit went to limit the issues in oral argument over Roche's appeal to the preliminary injunction.

Thanks for the comment.

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