US injunctions: no presumption of harm

A European patent owner planning US enforcement usually treats the preliminary injunction as the pressure point of the whole case: obtain one, and the commercial dispute is effectively over before discovery closes. A precedential Federal Circuit decision authored by Chief Judge Moore vacates such an injunction and puts two distinct pressure points back on the record — the evidence needed to show irreparable harm, and what happens when a district court reads a structural claim term as if it were written in means-plus-function form.

What did the Federal Circuit actually decide?

The court vacated a preliminary injunction granted by the US District Court for the Southern District of Florida, which had barred Import Global from manufacturing, using, selling, offering to sell, or importing the accused Neat Socket product into the United States, and it did so on two grounds: the constructions of two disputed claim terms, and the treatment of irreparable harm.

The patent at issue is U.S. Patent No. 9,509,080, owned by Socket Solutions, LLC, which alleged that Import Global’s Neat Socket product infringed claim 19. Procedurally, the district court had referred the preliminary injunction motion to a magistrate judge, who issued a Report and Recommendation recommending that the motion be granted. The decision is designated precedential, which matters for in-house planning: it is not a one-off panel disposition confined to its facts but a statement the Federal Circuit intends litigants and district courts to follow.

Why does the presumption of irreparable harm matter here?

Because the opinion states plainly that the presumption of irreparable harm cannot be justified after eBay Inc. v. MercExchange, L.L.C., and cites Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 1149 (Fed. Cir. 2011) as confirming that the presumption was abolished.

The extension is the part worth reading twice. The court acknowledged that eBay and Bosch involved permanent injunctions, and said it saw no reason to depart from their holdings in the preliminary injunction context. For a patent owner, the practical translation is that a strong showing on the merits does not carry irreparable harm with it as a matter of course at the preliminary stage. Harm has to be proved as its own subject, with its own evidence.

The court did not go further than that on this record. It did not reach Import Global’s irreparable harm arguments beyond holding that reliance on a presumption would be error, and it directed the district court on remand to analyse irreparable harm in a manner that does not rely on the presumption, if it reaches that issue. That conditional — if it reaches that issue — is a signal about sequencing: the claim construction rulings may dispose of the motion before harm is reached at all.

How did a structural term become a means-plus-function term?

The Federal Circuit held that the district court’s construction of “pin” improperly converted the term into a means-plus-function term under 35 U.S.C. § 112(f) — a conversion that, on the court’s reading, the claim language did not support.

The reasoning is short and useful. The court noted that the claim does not use the word “means”, and that the written description defines “pin” in structural terms, so the presumption is that Section 112(f) does not apply. Having removed the § 112(f) overlay, the court concluded that “pin” should be given its plain and ordinary meaning as understood by a skilled artisan. It also rejected Import Global’s proposed construction of “pin” as a “mechanical system”, for lack of support in the specification.

Two lessons sit in that sequence. First, absence of the word “means” is a starting point, not a shield: a district court was persuaded to read the term functionally regardless, and the patentee needed an appeal to undo it. Second, what actually did the work of rebutting the functional reading was the written description defining the term in structural terms. The specification, not the claim, carried the argument.

What happened to the second disputed term?

The court replaced the district court’s construction of “backplate” with one anchored in the geometry of the cover rather than in the presence of a particular electrical feature.

The district court had construed “backplate” as “the component of the cover, opposing the frontplate, that includes at least one set of electrical prongs”. The Federal Circuit construed it as “the component forming the cover with the frontplate, such that the maximum thickness of the cover is the distance, at the central portion of the cover, between the frontplate and the component”. The difference is not cosmetic: an infringement read that turns on where a set of prongs sits is a different exercise from one that turns on which component defines the cover’s maximum thickness at its central portion. Both of the terms the district court construed were replaced, and both replacements fed the vacatur.

What does this decision not settle?

It vacates and remands rather than deciding the merits, so the most important thing it does not do is hold that no injunction may issue in this case.

Several other gaps deserve to be stated precisely, because the temptation to over-read a precedential vacatur is real:

• The court did not resolve Import Global’s irreparable harm arguments on their substance. Its holding is confined to the point that reliance on a presumption would be error, and its instruction on remand is conditional on the district court reaching the issue at all.
• The two constructions settled are the constructions of two disputed terms in one patent. They are not a general rule that functional wording is safe, nor that it is fatal. The § 112(f) analysis turned on this claim’s omission of “means” and this specification’s structural definition of “pin”.
• The opinion says nothing about the standards for provisional measures before the Unified Patent Court, or before Swiss courts. A parallel European enforcement strategy is not affected by it, and should not be re-planned on the strength of it.

For a European patent owner running coordinated litigation, that last point is worth flagging internally before someone circulates the case as a general statement about injunctive relief. It is a US ruling of US scope.

What should an IP manager do with US assertion files now?

Treat the irreparable-harm record as a separate deliverable, built and evidenced independently of validity and infringement, and start it before the motion is drafted rather than in response to opposition.

In practice, that means identifying now, for each file where a preliminary injunction is contemplated, what evidence exists on lost sales, price erosion and the patentee’s own market entry or presence — and who inside the business can attest to it. eBay and Bosch concerned permanent injunctions; what this decision adds is the Federal Circuit’s statement that it sees no reason to depart from those holdings at the preliminary stage. A motion whose harm section leans on the strength of the merits is exposed on appeal even if it succeeds below, and this case shows the cost of that exposure: an injunction as broad as the one entered here, reaching manufacture, use, sale, offers to sell and importation, was granted on a magistrate judge’s recommendation and then vacated.

A second, quieter task follows from the disposition. Because the vacatur rests partly on claim construction, the sequencing risk is worth planning for — here the constructions of both disputed terms were replaced, and the reviewing court then left the substance of irreparable harm unaddressed, remitting it to the district court only if that court reaches it.

What should change in drafting and prosecution?

Audit pending US claim sets and drafting templates for structural terms that are defined only by what they do, and add structural definitions to the specification before filing.

The defensive value of a structural definition is exactly what the Federal Circuit relied on. It noted that the written description defines “pin” in structural terms, and that this — together with the absence of “means” — supported the presumption against § 112(f). Where a template introduces a component and then characterises it purely by function, the fallback that keeps the term out of § 112(f) may simply not be there. Adding a sentence of structural definition costs nothing at drafting; recovering the point costs an appeal.

Where the specification cannot support a proposed narrowing, that too can be argued: the court rejected Import Global’s “mechanical system” construction for lack of support in the specification. The specification is doing double duty in this opinion — rebutting an unwanted functional reading, and refusing an unwanted narrow one. Drafting files should be reviewed with both roles in mind, and reviewed on the patents you expect to assert first.