Emerging Scholars Series: Cross-Border Injunctions in U.S. Patent Cases and Their Enforcement Abroad

INTRODUCTION I. CROSS-BORDER INJUNCTIONS IN U.S. COURTS--A QUANTITATIVE VIEW II. CROSS-BORDER INJUNCTIONS IN U.S. COURTS--A QUALITATIVE VIEW III. ENFORCEMENT OF U.S. INJUNCTIONS ABROAD A. Enforcement of an Injunction B. Enforcement of a Contempt Order C. Alternatives to Injunctions and Their Enforcement Abroad IV. CROSS-BORDER INJUNCTIONS IN EUROPE A. Pan-European Injunctions B. Other Cross-Border Injunctions in Europe CONCLUSION INTRODUCTION Injunctions play an important role in patent enforcement; the Federal Circuit Court pointed out the link between injunctive relief and the incentive to invent in its 1983 opinion in Smith International, Inc. v. Hughes Tool Co., where it stated that "[w]ithout the right to obtain an injunction, the right to exclude granted to the patentee would have only a fraction of the value it was intended to have, and would no longer be as great an incentive to engage in the toils of scientific and technological research." (1) Although it has since then become clear that the right to an injunction may not always function as an incentive but may serve as an inhibitor of inventing activity, the injunction has not lost its crucial position as a regularly-pursued remedy in patent infringement cases; patent holders almost always request injunctions and courts frequently issue them and from time to time enforce them if they are not complied with voluntarily. This Article examines the problem of enforcement of "cross-border injunctions"--injunctions that order or prohibit conduct outside the United States, (2) with a particular focus on cases in which such injunctions have been issued against non-U.S. entities, sometimes with no assets located in the United States. Although such cases may appear to be extreme outliers, surprisingly they are not uncommon, and they pose serious questions about the feasibility of the enforcement of injunctions. As is generally true with any remedies, injunctions are effective only as long as there is the potential that once issued they can also be enforced. Their enforcement should not pose a significant problem when confined to the country of the court issuing the injunction but can become problematic when jurisdictions outside those of the issuing country become involved, since without their assistance the enforcement of the order of the issuing court may, as a practical matter, be very difficult, if not impossible. While in many cases a plaintiff can simply avoid the cross-border problem by filing a lawsuit in the jurisdiction of the anticipated enforcement, in some cases the rules of jurisdiction prevent such a solution. Patent infringement cases are a good example of a situation in which plaintiffs often do not have a choice--they must file in the country where the patent was issued notwithstanding the fact that the opponent's assets are located elsewhere. (3) At first glance it might appear that cross-border enforcement problems should not arise in patent cases at all because of the territorial limitations of patent law; for a court to issue remedies for patent infringement under U.S. law, the allegedly infringing activity must occur within the United States. Therefore, one might expect that the alleged infringer would have to be domiciled in the United States or have some other significant physical presence in the United States in order to engage in such an activity. However, as U.S. law strives to encompass conduct beyond U.S. borders that harms the interests of U.S. patent holders, (4) injunctions issued by U.S. courts try to reach abroad. As this Article shows, plaintiffs request such injunctions notwithstanding the potential difficulties that enforcement abroad may cause. While enforcement of a cross-border injunction against a U.S. entity is unlikely to pose significantly greater difficulties than enforcement of any other injunction (perhaps with the exception of evidentiary issues if a contempt order is sought and conduct abroad has to be proven before a U. …