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DOJ And USPTO Urge Courts To Consider Injunctions For Non‑Practicing Patentees Under eBay; Emphasize Irreparable Harm And The Limits Of Monetary Remedies
03/11/2026On February 27, 2026, the U.S. Department of Justice’s Antitrust Division and the U.S. Patent and Trademark Office filed a Statement of Interest in Collision Communications, Inc. v. Samsung Electronics Co., Ltd., pending in the United States District Court for the Eastern District of Texas, Case No. 2:23-cv-00587 (JRG). The government’s submission addresses how district courts should assess the first two eBay factors—irreparable harm and the inadequacy of legal remedies—when a non‑practicing patentee seeks a permanent injunction after a finding of infringement.
The case arrived at the remedial stage following a jury verdict that defendant willfully infringed claims in four patents and which awarded USD445.5 million as a running royalty for past infringement. The jury was instructed that any damages for future sales would be addressed by the Court. Plaintiff now seeks to enjoin defendant from “further infringing” one of the adjudicated patents.
The United States submitted the Statement “in support of neither party” and stated that it “does not take a position on the outcome,” but the Statement provides views on the legal framework and the types of evidence relevant to determining whether continued infringement inflicts irreparable harm that money cannot adequately remedy.
The Statement situates its analysis within the statutory right to exclude and Congress’ authorization of injunctive relief “in accordance with the principles of equity” to prevent violations of patent rights. It underscores that eBay rejected categorical rules both for and against injunctions, noting that—while a patentee’s willingness to license its patent for a monetary royalty can be relevant—“that choice, however, is not dispositive of the issue of irreparable harm.” Invoking Supreme Court and Federal Circuit recognition of patents as property rights, the government emphasizes the historically grounded concern, reflected in Chief Justice Roberts’s eBay concurrence, about “the difficulty of protecting a right to exclude through monetary remedies that allow an infringer to use an invention against the patentee’s wishes.” The Statement cautions that treating a patentee’s prior licensing of a patent as effectively determinative of its right to exclude infringers would conflict with eBay and risk “creating a compulsory licensing scheme of the sort rejected by Congress,” particularly where “a calculating infringer may […] decide to risk a delayed payment to obtain use of valuable property without prior negotiation.”
On the first two eBay factors, the government identifies two considerations that can support a finding of irreparable harm for non‑practicing patentees.
First, patents are unique assets that can be difficult to value, akin to other property interests where loss of control over a singular asset or market opportunity has been recognized as irreparable. The Statement explains that non‑practicing entities are not categorically foreclosed from showing irreparable harm, stating plainly that “non‑practicing patent holders, such as [plaintiff], can suffer irreparable harm from infringement.”
Second, calculating patent damages—particularly reasonable royalties premised on a hypothetical negotiation—remains an uncertain and error‑prone process. Citing longstanding Federal Circuit commentary, the Statement highlights that determining a reasonable royalty has been described as “a difficult judicial chore, seeming often to involve more the talents of a conjurer than those of a judge,” and even, more succinctly, as a “fantasy.” It further notes multiple recent Federal Circuit reversals of sizeable verdicts based on flawed damages methodologies, underscoring the instability of ex post compensation. Past damages awards are therefore “not dispositive” of the adequacy of monetary relief for future infringement because going‑forward royalties concern a different period, with potentially different competitors and economic conditions, and here involve only “one of the four patents at issue in the verdict.”
The Statement also addresses the remaining eBay factors, emphasizing that courts should balance hardships and consider the public interest, and, where appropriate, tailor relief to the equities. It highlights tools such as the ability to “delay the effective date of an injunction” or to adopt a sunset provision to allow removal or redesign of infringing features or to facilitate licensing discussions. At the same time, it reiterates that “an injunction should not be punitive and is not designed to give a patent owner undue leverage,” and that appropriately scoped relief should align the leverage afforded by an injunction with the actual value of the patented technology. The availability of non‑infringing alternatives and the parties’ respective sizes, products, and revenue sources may bear on the hardship inquiry, whereas an infringer’s sunk development costs and commercial success generally should not.
For IP litigants and in‑house counsel, the government’s submission confirms that non‑practicing patentees—including small businesses and research‑focused entities—may, on an appropriate evidentiary record, satisfy eBay’s equitable standards and obtain tailored injunctive relief. Practically, patentees seeking injunctions should build robust showings on the uniqueness and valuation difficulty of the asserted patents, the inherent uncertainty of future‑period damages modeling, and the inadequacy of ongoing royalties to protect the right to exclude. Accused infringers should be prepared to present concrete evidence of non‑infringing alternatives, redesign feasibility, and public‑interest considerations that support tailoring or denying injunctive relief. The Statement’s key message is clear: a non‑practicing patentee’s licensing posture is not dispositive, and courts should evaluate irreparable harm and adequacy of legal remedies with due regard both for patents’ status as unique property rights and for the practical limits of monetary awards.
