The Software IP Report

Modifying a Patent Infringement Injunction After Remand

Method claims can be the basis for enjoining a defendant from selling certain software, even if the software does not directly infringe asserted patent claims without a customer’s use. Therefore, following the Federal Circuit’s holding that certain asserted claims were invalid, it was appropriate to modify an injunction to exclude software configurations encompassed only by the invalidated claims. Otherwise, the Federal Circuit’s mandate was for the injunction to remain in force. ePLUS, Inc. v. Lawson Software, Inc., No. 3:09cv620 (E.D. Va. June 11, 2013).

The trial court’s first task following remand from the Federal Circuit was to determine the impact of the Federal Circuit’s opinion on the injunction that the trial court had entered prior to appeal. Here, the Federal Circuit’s “opinion provided that the action was being remanded ‘for the district court to consider what changes are required to the terms of the injunction consistent with this opinion.'” Further, the Federal Circuit’s “mandate must be viewed in perspective of the fact that the Court of Appeals upheld the injunction against [defendant] Lawson’s argument that it was ‘too broad.'” Under the so-called “mandate rule” (which the court explained was another name for the law of the case), the court could not simply dissolve the injunction. However, the Federal Circuit had ordered that on remand the injunction could be modified consistent with its opinion.

Therefore, the court revisited the injunction under the familiar four-factor test, citing eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006). In this case, the trial court determined that its prior findings under eBay remained viable.  The only question was how, if at all, to modify the injunction to conform to the decision of the appeals court.

The original injunction had covered three product configurations (Two, Three, and Five). The defendant argued that because a method claim was now infringed, “the Court may not enjoin the sale of the configurations simply because they may be used to infringe” this claim. The court disagreed, because “the Federal Circuit has affirmed that there was sufficient evidence from which to conclude that Lawson engaged in direct, indirect, and contributory infringement.”

Further, the defendant argued that “Configurations 3 and 5 cannot constitute contributory infringement because both configurations have substantial non-infringing uses.” The court disagreed, because the “jury received substantial evidence of contributory infringement,” and “[t]he Federal Circuit affirmed the verdict as to the method of Claim 26.”

The court modified the injunction to remove Configuration Two from its scope, because that configuration infringed only an invalidated claim. Otherwise, the court held that “injunction shall remain in effect in all other respects.”