SHARE

July 21, 2022

Threat of ITC Exclusion Order Is Too Speculative to Constitute Irreparable Harm

You've Reached Your
Free Article Limit This Month
Register for free to get unlimited access to all Law.com OnPractice content.
Register Now

The US Court of Appeals for the Federal Circuit affirmed a decision by a federal district court denying a defendant's motion for a preliminary injunction seeking to enjoin a parallel International Trade Commission (ITC) investigation against it. The Federal Circuit agreed that the defendant's alleged irreparable harm (a "cloud" over its business) was too conclusory and speculative to support relief. Koninklijke Philips N.V. v. Thales Dis Ais USA LLC, Case No. 21-2106 (Fed. Cir. July 13, 2022) (Moore, C.J., Dyk, Chen, JJ)

Koninklijke filed a complaint at the ITC requesting a Section 337 investigation based on alleged infringement by Thales of four patents designated essential to the 3G and 4G telecommunications standards. Koninklijke simultaneously filed a parallel district court action against Thales in the Delaware district court based on those four patents. At the district court, Thales moved for a preliminary injunction seeking to enjoin Koninklijke from pursuing an exclusion order at the ITC because of an alleged breach of contract. The district court denied that motion, and Thales appealed to the Federal Circuit.

Meanwhile, the ITC investigation continued, and the administrative law judge (ALJ) issued an initial determination finding no violation of Section 337 with respect to any of the four patents. Subsequently, the Federal Circuit held oral arguments on the district court appeal, during which the judges questioned whether there could be irreparable harm if the ITC were to adopt the ALJ's determination and consequently not issue an exclusion order. Thales argued that the threat of an exclusion order had left a "cloud" over its business and cited customer concerns that Thales might not be able to deliver products in the future. The ITC subsequently affirmed the ALJ's finding of no violation and terminated the investigation without issuing any exclusion order.

A week later, the Federal Circuit issued a decision affirming the district court's denial of the preliminary injunction motion. The Court held that Thales had failed to meet its burden to establish irreparable harm because it had not presented any evidence that it had actually lost any customers, that any customers had delayed purchases or that it had struggled to gain new customers because of the threat from the ITC investigation. The Court also found that the cloud over Thales' business and the potential loss of business were too speculative to justify a preliminary injunction.

Practice Note: While the ITC investigation was ongoing, Thales filed a civil action in France against Koninklijke—a fellow European company—alleging that Koninklijke's attempt to obtain injunctive relief in the United States for standard essential patents constituted an anti-competitive act that violated French civil law. Thales sought EUR 13.5 million in damages for the legal fees that it had incurred in defending the ITC investigation.

ALM expressly disclaims any express or implied warranty regarding the OnPractice Content, including any implied warranty that the OnPractice Content is accurate, has been corrected or is otherwise free from errors.

More From McDermott Will & Emery

Trending in Telehealth: January 9 - 16, 2023

By Amanda Enyeart McDermott Will & Emery January 19 , 2023

Trending in Telehealth is a new weekly series from the McDermott Digital Health team where we track telehealth regulatory and legislative activity.

That Stings: Consent to Jurisdiction Must Be Effective at Filing to Invoke Fed. R. Civ. P. 4(k)(2)

By Joshua Revilla McDermott Will & Emery January 19 , 2023

The US Court of Appeals for the Federal Circuit, on petition for writ of mandamus, vacated the district court’s transfer order and remanded the transfer to be considered under the clarified parameters of Fed. R. Civ. P. 4(k)(2) and 28 U.S.C. § 1404.

Absent Expressed Rationale of Obviousness, Federal Circuit Calls for Do-Over

By Anisa Noorassa McDermott Will & Emery January 19 , 2023

The US Court of Appeals for the Federal Circuit reversed a ruling by the Patent Trial & Appeal Board (Board) where, on appeal, the US Patent & Trademark Office’s (PTO) rationale for sustaining the Board’s obviousness rejection did not reflect “the reasoning or findings the Board actually invoked.”

More From Trade Secrets

5 Trends to Watch in 2023 International Arbitration

By Joseph J. Mamounas Greenberg Traurig January 19 , 2023

To meet demand for more flexible and timely ways to achieve dispute resolution, some clients are turning to emergency arbitration procedures as ways to not only preserve the status quo but also obtain an early assessment of the merits (through the lens of the likelihood of success).

That Stings: Consent to Jurisdiction Must Be Effective at Filing to Invoke Fed. R. Civ. P. 4(k)(2)

By Joshua Revilla McDermott Will & Emery January 19 , 2023

The US Court of Appeals for the Federal Circuit, on petition for writ of mandamus, vacated the district court’s transfer order and remanded the transfer to be considered under the clarified parameters of Fed. R. Civ. P. 4(k)(2) and 28 U.S.C. § 1404.

Absent Expressed Rationale of Obviousness, Federal Circuit Calls for Do-Over

By Anisa Noorassa McDermott Will & Emery January 19 , 2023

The US Court of Appeals for the Federal Circuit reversed a ruling by the Patent Trial & Appeal Board (Board) where, on appeal, the US Patent & Trademark Office’s (PTO) rationale for sustaining the Board’s obviousness rejection did not reflect “the reasoning or findings the Board actually invoked.”

Featured Stories
Closeclose
Search
Menu

Working...