NPEs seeking injunctive relief in US district courts have faced an uphill battle over much of the past two decades. Under the Supreme Court's 2006 decision in eBay v. MercExchange, courts must apply a four-factor equitable test when deciding requests for permanent injunctions—including one factor requiring a party to show that it would suffer "irreparable harm" without an injunction. NPEs have historically struggled to clear that threshold, in part because they typically cannot show competitive harm from infringement beyond what damages, as a remedy at law, could compensate. However, the US government, via the Department of Justice's Antitrust Division and the USPTO, has now pushed the Eastern District of Texas to revisit that standard. The government argues in a June 24 statement of interest—filed in a case from Radian Memory Systems LLC (RMS)—that courts should consider the difficulty of valuing patents and calculating damages for their infringement when weighing irreparable harm, arguing that there should be no categorical rule barring NPEs from injunctive relief on that basis.
The eBay Status Quo
Prior to eBay, permanent injunctions used to be the most common remedy in district court patent cases. They were essentially automatic, denied only in extraordinary circumstances. This presumption—that permanent injunctions should result from a finding of infringement, absent extraordinary circumstances—was considered to supersede the traditional equitable analysis.1
The Supreme Court's eBay decision upended that norm,2 essentially eliminating automatic permanent injunctions in patent suits by requiring courts to apply four equitable factors to determine whether to award permanent injunctions—basically, by making this issue a matter of the court's discretion. Specifically, eBay held that under "well-established principles of equity", a plaintiff seeking a permanent injunction must satisfy a four-part test, under which it must show:
"(1) that it has suffered an irreparable injury;
(2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury;
(3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and
(4) that the public interest would not be disserved by a permanent injunction."
A similar approach governs preliminary injunctions, except that in addition to considerations of irreparable harm, the balance of equities/hardships, and the public interest, the court must also consider the likelihood that the plaintiff is likely to prevail on infringement for at least one asserted patent claim and that the claim will withstand a validity challenge. Apart from this consideration of likelihood of success on the merits, the Supreme Court has held (in its 2008 Winter v. Natural Resources Defense Council decision3) that the standard governing permanent and preliminary injunctions is essentially the same.
Courts have tended to apply the "irreparable harm" and "remedies available at law" eBay factors together. This is because they are basically two sides of the same coin, as the question of whether a party has suffered an irreparable injury assumes that other remedies—namely, monetary damages—are inadequate.4 As a result, there is often some overlap in the issues that courts consider for these two factors.
Studies have consistently found that NPEs prevail significantly less often when requesting permanent injunctive relief5 and that such plaintiffs are "especially unlikely" to satisfy the eBay test.6 More specifically, data indicate that the primary barrier for NPEs (as well as non-competing entities) has been the first eBay factor requiring a patent owner to show that they would suffer irreparable harm without an injunction, "as they rarely can demonstrate the type of competition-related harm that qualifies as an irreparable injury under existing precedent".7 Moreover, one study found that NPEs that have actually won injunctions have tended to be failed (or failing) operating companies that have pivoted to patent assertion.8 As for preliminary injunctions, those tend to be granted far less often across the board, given the high bar set by the "likelihood of success" and "irreparable harm" factors.9
The Radian Litigation Below
Radian, a plaintiff tied to Fortress Investment Group LLC, filed the underlying litigation in December 2024 against Samsung (2:24-cv-01073) over the provision of solid state drives and related products that support Zoned Namespaces (ZNS) technology. In that complaint, RMS asserts seven memory technology patents developed at Radian Memory Systems Inc. (RMSI), which it characterizes as having "pioneered a new paradigm for managing flash storage media that it called Cooperative Flash Management ('CFM')" but as having been "cast out by the industry". RMS alleges that this was "retaliation for [RMSI]'s refusal to join the NVMe industry standard organization and associated Technical Working Groups". As the plaintiff subsequently recounted, after RMSI declined to join NVME due to policies that would have required it to grant royalty-free licenses to other members, the other members, including Samsung, then allegedly began to infringe its technology.
On May 6, 2025, RMS filed a motion for a preliminary injunction against Samsung. Notably, the motion seeks in part to establish irreparable harm through "traditional principles of equity . . . drawn from the English Court of Chancery circa 1789", under which the "prospect of ongoing future violations alone renders damages inadequate". RMS also argues that under a "more contemporary analysis", it would "suffer injury to its market position as a pioneer, suffer loss of market opportunities, suffer injury to its reputation and goodwill, and suffer irretrievable loss of its patent term".
Samsung asserts in its opposition that RMS cannot show a substantial likelihood of future injury, since the market is moving on from ZMS and Samsung has not sold products with the technology for two years. Additionally and relatedly, it contends that RMS cannot establish irreparable harm because the relevant conduct (adoption of the ZMS standard pushing RMSI out of the market) was by NVMe, not Samsung; occurred before issuance of the asserted patents, thus prior to the relevant period of alleged infringement; and involved an injury to the "legacy" operating entity RMSI, not RMS. Samsung also highlights the fact that RMS delayed three years before filing suit and intends only to monetize the patents, such that damages are an adequate remedy at law.
The Government's Statement of Interest
The government filed a statement of interest on June 24, framing its interest in the case as stemming from the intersection of antitrust and patent law and how they work together to encourage innovation.
Though Radian did not itself seek relief under antitrust laws, the government argues that its "complaint nevertheless raises competition concerns". In particular, the government asserts that there is a "'serious potential for anticompetitive harm' inherent in . . . standards-development organizations (SDO[s])", contending that they are economically incentivized to "restrain competition" through the manner in which their members allegedly "collaborate on what products will or will not be 'manufacture[d], distribute[d], or purchase[d]'" (citation omitted). Those concerns over competition are "particularly acute where an SDO is controlled by large implementers with market power", the government continues, asserting that such collaboration by "[l]arge purchasers" can amount to the exercise of "monopsony power—the 'mirror image' of monopoly power". The government further explains that it instead wants to promote competition from, and incentivize innovation by, smaller tech companies, contending that that incentive is undermined when those companies lack the ability to exclude infringers, via injunctive relief, from using a patent.
With those principles in mind, the government then proceeds to lay out its views on the proper interpretation of the irreparable harm requirement. It argues that this factor should be evaluated under traditional equitable principles—though it rejects RMS's arguments "based on 18th-century principles of equity . . . that under these traditional principles a finding of ongoing infringement is, as a matter of law, irreparable harm" as "inconsistent with eBay". Rather, the government asserts that ongoing infringement "would, in many cases, result in irreparable harm based on the inadequacy of a monetary remedy, which can be difficult to calculate accurately". As framed by the government, courts should treat patents like other "unique assets that are difficult to value, making damages hard and costly to calculate"; and should allow the "same remedy—an injunction—to prevent an ongoing violation of rights in a unique asset regardless of who owns the asset".
The government next details why, in its view, the infringement of an NPE's patent can cause irreparable harm—beginning by characterizing eBay as rejecting "wholesale categorical rules as inconsistent with equitable principles". The eBay majority opinion, notes the government, rejected a lower court decision's "broad classification" that an entity willing to license could not show irreparable harm, and as holding to the contrary that NPEs could satisfy the "traditional four-part test" and that they "should not be 'categorically den[ied] . . . the opportunity to do so'" (quoting eBay majority opinion). The government further observed that Chief Justice John Roberts, in his eBay concurrence, pointed to the prior automatic injunction rule as unsurprising "'given the difficulty of protecting the right to exclude through monetary remedies that allow an infringer to use an invention against the patentee's wishes'—a difficulty that suggests irreparable harm"; whereas Justice Kennedy, in his own concurrence, held that he would not extend the "lesson of historical practice" to the use of patents for licensing rather than producing products.
Additionally, the government cited post-eBay caselaw as providing that despite the lack of an automatic injunction rule, eBay does not require courts to "entirely ignore the fundamental nature of patents as property rights granting the owner the right to exclude"; and as providing that when an injury cannot be "quantified", damages cannot be calculated, so the harm is not adequately compensable and is thus irreparable (citations omitted).
Per the government, the often-wide gap between the reasonable damages calculations offered by plaintiffs and defendants exemplifies how "[i]rreparable harm is common in patent infringement cases because patents are hard to value and damages are difficult to calculate". Here, the government analogizes to other cases finding irreparable harm based on "the loss of control over a unique product or business opportunity", such as the failure to consummate the sale of a sports franchise or other franchise business. In this context, the government explained, the relevant loss of control is the patent owner's inability "to control to whom it licenses its products and the terms of that licensing" that results from infringement.
The government further observes that in "unique asset" cases, "courts have commonly found irreparable harm when damages are difficult to calculate"—and that argues that similar situations arise in patent cases due to the "profound difficulties" in calculating patent damages that adequately compensate for "the patentee's loss of control over how to license their patent". Those difficulties, per the government, are reflected in the complex and convoluted process of estimating a royalty based on a hypothetical negotiation, and are confirmed by the "large number of reversals based on flawed damages models", citing a number of Federal Circuit opinions from the past several years, including most recently its decision in EcoFactor v. Google. The government also characterizes certain post-eBay Federal Circuit rulings as establishing that "the difficulty in calculating monetary damages for ongoing patent infringement is evidence of irreparable harm, i.e., that legal remedies are inadequate"; that there are "many situations where the loss of the right to exclude in a competitive market can lead to irreparable harm due to the difficulty in calculating monetary damages"; and that even plaintiffs that do not practice their patents (i.e., NPEs) can still suffer irreparable harm (citations omitted).
However, despite recognizing that irreparable harm can result from the "difficulty of calculating damages", the government noted that the Federal Circuit has yet to find harm for any NPE. Though it acknowledges that a court may find no irreparable harm where a party chooses to license its patents rather than compete with accused infringers in cases where monetary harm is "readily quantifiable", the government contends that this does not mean that there is a categorical rule that "there can be no irreparable harm absent direct competition" (citation omitted). Indeed, the government argues that such a rule would contradict eBay and would "risk creating a compulsory licensing scheme of the sort rejected by Congress". Without an injunction, the government again underscored that a patent owner loses the ability to control the licensing of its patents—in particular, "to control how or to whom to license its patented technology, as well as the terms of its licenses"—while the potential of an injunction "also helps prevent potential licensees from viewing infringement as economically efficient" (citing recent scholarly articles addressing the concept of "efficient infringement", under which certain infringers allegedly use "judicial or regulatory processes to depress licensing rates").
Legislative Push to Overturn eBay
The government's statement of interest comes amid legislative efforts to roll back eBay altogether. In late February, Senators Chris Coons (D-DE) and Tom Cotton (R-AR) reintroduced a bill first proposed in 2024, the RESTORE Patent Rights Act, that would effectively overturn eBay by establishing that when a court issues a final judgment of infringement, "the patent owner shall be entitled to a rebuttable presumption that the court should grant a permanent injunction with respect to that infringing conduct".
Proponents of the bill include former Federal Circuit Judge Kathleen O'Malley, now a board member of the Council for Innovation Promotion, who on June 13 published an editorial touting the bill and calling the eBay decision "ill-conceived"; former USPTO Directors Andrei Iancu and David Kappos, who in March authored a related op-ed piece for The Hill; Sisvel, which also in March published a blog post on RESTORE and other proposed US IP reforms; and the Alliance of U.S. Startups & Inventors for Jobs, which in February issued a statement in support of the bill. AUTM has also released a number of statements in support of RESTORE.
For more on this and other patent-related bills pending before Congress, see "RPX Q1 in Review: US Policy Update" (April 2025). Further background on the RMS litigation can also be found at "Purported 'Industry Cast-Out' Sues Samsung" (December 2024).
Footnotes
1. David A. Skeels, How to Secure Injunctive Relief in Patent Cases 1 (Texas Bar CLE Advanced Patent Litigation Course, Jul. 18-19, 2019) at 2, https://www.whitakerchalk.com/wp-content/uploads/2019/10/How-to-Secure-Injunctive-Relief-in-Patent-Cases.pdf.
2. 547 U.S. 388 (2006).
3. 555 U.S. 7 (2008).
4. Benjamin Elacqua, "Injunctions: Using Patents to Stop Competitors", Fish & Richardson (Apr. 28, 2020), https://www.fr.com/injunctions-using-patents-to-stop-competitors/; see also Golden 2022 at 294 ("the first and second prongs are fundamentally redundant").
5. Jorge L. Contreras and Jessica Maupin, Unenjoined Infringement and Compulsory Licensing, 38 Berkeley Tech. L.J. 661, 667 (2003), available at https://btlj.org/wp-content/uploads/2023/11/0002_38-2_Contreras.pdf.
6. John M. Golden, United States, in Injunctions in Patent Law: Trans-Atlantic Dialogues on Flexibility and Tailoring 291, 296 (J. L. Contreras & M. Husovec ed., Cambridge University Press) (2022).
7. Christopher B. Seaman, Permanent Injunctions in Patent Litigation After eBay: An Empirical Study, 101 Iowa L. Rev. 1949, 2002 (2016), available at https://ssrn.com/abstract=2632834.
8. Id. at 1988-9.
9. John C. Jarosz, Jorge L. Contreras, and Robert L. Vigil, "Preliminary Injunctive Relief in Patent Cases: Repairing Irreparable Harm", 31 Tex. Intell. Prop. L.J. 63, 72-3 (2022).
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