An Overly Broad Injunction

In International Rectifier Corporation v. IXYS Corporation (Fed. Cir., September 13, 2004), the lower court had issued a permanent injunction which read:

1. Each and every affirmative defense by [IXYS] is adjudicated in favor of [IR] and against IXYS. IR’s U.S. Patent No. 6,476,481 (the “’481 patent�) is not invalid and is not unenforceable.

2. IXYS has infringed Claims 1 through 5 of IR’s ’481 patent by making, using, offering for sale and/or selling in, and/or importing into, the United States during the period November 5–19, 2002 IXYS ISOPLUS which at that time were designated by [part numbers of accused devices].

3. IXYS and its officers, agents, servants, employees and attorneys, and all persons in active concert or participation with them who receive actual notice of this Judgment, are hereby prohibited and enjoined from making, using, offering for sale or selling in, or importing into, the United States, any device covered by one or more of Claims 1 through 5 of U.S. Patent No. 6,476,481.

The Federal Circuit concluded that the order did not meet the specificity requirements of Rule 65(d).

The injunctive language set forth in the trial court’s judgment prohibits infringement by "any device covered by one or more of Claims 1 through 5" of the '481 patent. On its face the injunction applies to many more devices than those actually adjudicated. Indeed, by its terms the injunction applies to "any device" made or sold by IXYS that is within the scope of the patent claims. The actual scope of the injunction cannot be that expansive, however, because this court has held that "contempt proceedings . . . are available only with respect to devices previously admitted or adjudged to infringe, and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent." Therefore, the only acts the injunction may prohibit are infringement of the patent by the adjudicated devices and infringement by devices not more than colorably different from the adjudicated devices. In order to comply with Rule 65(d), the injunction should explicitly proscribe only those specific acts. . . .

IR argues that the sentence immediately preceding the injunctive language in the judgment cures the Rule 65(d) violation in this case. Not so. That sentence, which lists the devices found to infringe during the initial two-week period after the patent issued, is not incorporated into the injunction against future infringing activities. Accordingly, it cannot convert a defective injunction into one that fulfills the requirements of Rule 65(d). . . .