RESTORE Patent Rights Act would give a winning patent owner a presumption of permanent injunction

2024-07-30Legislation

RESTORE Patent Rights Act of 2024 (Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive Patent Rights Act of 2024), S. 4840, 118th Cong., introduced July 30, 2024 by Senator Coons for himself and Senator Cotton, and H.R. 9221, 118th Cong., introduced July 30, 2024 by Representative Moran for himself and Representatives Roy, Ross, Johnson of Georgia and Dean of Pennsylvania, each referred to the Committee on the Judiciary

The bill amends Section 283 of Title 35 of the United States Code, the injunction provision, by designating the existing text as subsection (a) and adding subsection (b), "Rebuttable Presumption": "If, in a case under this title, the court enters a final judgment finding infringement of a right secured by patent, the patent owner shall be entitled to a rebuttable presumption that the court should grant a permanent injunction with respect to that infringing conduct." The findings in section 2 state that the right to exclude is the core of the patent right, that courts "historically presumed that an injunction should be granted" after a finding of infringement and placed the burden on the defendant to rebut it with equitable defenses, that courts recently abandoned that practice, and that abandoning it reduced patent owners' ability to stop continuing or willful infringement and encouraged "large, multinational companies" to engage in predatory infringement against individual inventors, universities, startups and small and medium-sized enterprises. The findings do not name eBay Inc. v. MercExchange, L.L.C., the 2006 Supreme Court decision that requires the four-factor equitable test before a permanent injunction issues. The presumption is limited to the conduct found to infringe in a final judgment, and the text says nothing about what rebuts it beyond calling it rebuttable. Both bills are at introduction with no hearing scheduled.

What it changesUnder eBay a software or model patent asserted against a shipping product is a damages case; an injunction is rare where the patentee does not practice the claims or where the feature is one part of a larger product. A presumption of injunction would turn the same patent into shutdown risk for the accused product, and a company running inference on a third-party model would face that risk for features it did not build. Nothing changes today, and the time to act on a bill is at a hearing, not an introduction. What is worth doing now is cheap: identify the product features that would be hardest to design around if an injunction issued, and rank the clearance work on those features above the rest, because that ranking is the right one under any remedy regime. On the asserting side, a portfolio whose value depends on licensing gains little from the bill, and a program that holds claims on features competitors cannot remove gains the most.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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