NPEs seeking U.S. patent injunctions won’t benefit from Judge Gilstrap’s clearly erroneous finding of irreparable harm in Collision v. Samsung

Something that occurred 12 years back — when Collision had a different business model — simply cannot constitute irreparable harm.

Analysis

1. The importance of the decision is widely overestimated. It does not break new ground if one takes into consideration that the sole factual anchor of the finding of irreparable harm and of inadequacy of monetary relief— a “design win” theory — was actually related to the company’s previous business model and taken into consideration only based on a misinterpretation of the first eBay factor.
2. For the avoidance of doubt, it is perfectly understood that the legal significance of a decision is not a binary question of the bottom-line outcome. Here, however, the primary reason for which no injunction issued on balance is directly related to why the goal posts have not really moved.
3. The finding that monetary relief would be inadequate would also be highly likely to be reversed in the circumstances of this case considering that the jury found any damages to be perfectly calculable and the patent will expire soon.
4. At least one LinkedIn comment had the law backwards by suggesting that the amount of the damages verdict should have seen as strengthening the case for an injunction. Actually, there are cases (such as this one) where the opposite is the case.
5. There are misconceptions about NPEs’ access to U.S. patent injunctions in the post-eBay era. Different credible studies showed that certain types of NPEs have still been able to win injunctions, even though it has undoubtedly become harder and many patent holders (even many operating companies, but particularly NPEs) gave up trying. In that regard, Judge Gilstrap’s invitation (see item 7 below) could make a non-legal impact.
6. There is persuasive value in the way Judge Gilstrap explained the wide spectrum of NPEs and the fact that there are no second-class patents. It states very well what U.S. courts have, however, taken into consideration in the entire post-eBay era.
7. Commonplace statements rejecting extreme positions on both sides of the debate, such as in the governmental Statement of Interest, are an invitation to file in the Eastern District of Texas, but do not move the needle in any litigation, which is separate from the hypothetical impact of a legislative initiative in U.S. Congress concerning the availability of patent injunctions.

In the following sections, I will elaborate on each of the above points.

I am taking these positions with the greatest respect for Judge Gilstrap. He’s a leading patent judge, but I owe it to my audience to highlight issues regardless of who erred.

1. “Design win” and eBay factors one to three

1.1 Structure of Judge Gilstrap’s irreparable-harm analysis

Section A of the decision has three subsections:

i. Irreparable Harm as a Matter of Law

ii. Irreparable Harm to Non-Practicing Entities

iii. Additional Bases for Irreparable Harm

The final two paragraphs of (iii) state the conclusion of the entire Section A:

The Court finds that Collision’s loss of the design-win competition, taken alongside Samsung’s ongoing infringement, is sufficient to establish irreparable harm. The Court considers the totality of the circumstances in reaching its conclusion. The Court also notes the struggle incumbent on any patent holder in protecting the right to exclude and the reality that Samsung continues to use the ‘492 patent against Collission’s wishes. [citation to Chief Justice Roberts’s eBay concurrence]

Accordingly, the Court finds that Collision has established that it has suffered irreparable harm in this case as required for injunctive relief to issue under eBay.

1.2 Design-win loss is cornerstone of irreparable-harm finding

The above conclusion puts the “design win” story front and center. Even if one considered it not to be the number one reason, it is a necessary element.

Let’s look at what Collision itself says about that one (in its motion for a permanent injunction):

Collision’s original business plan was to develop receiver algorithms and a software core based on its patented technology, perform simulations of said software to demonstrate the superiority of its algorithms, and then to enter co-development agreements with cellular equipment manufacturers like Samsung, Qualcomm, Nokia, and Ericsson to adapt and incorporate Collision’s software into their base station or handset receiver chips. Decl. of J. Fry at ¶¶ 2–4; TT Day 2 at 345:2–25, 348:1–13, 348:25–349:4, 351:23–352:10, 368:4–6. So while Collision did not produce its own physical product, it participated in a form of “design win” market, in which “the sales are ‘design wins,’ not a steady flow of discrete product sales[.]” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1337 (Fed. Cir. 2013). This is a known business model for small, innovative technology companies, and it depends on ordinary enforcement of patent rights. Fry Decl. at ¶¶ 5–7; TT Day 2 at 346:20–347:4.

Now, the above happened over a decade ago. Mr. Fry said in his declaration in support of the motion for a permanent injunction:

Samsung told us in March 2014—roughly three years after we first interacted with them in spring 2011—that it was not interested in incorporating our algorithms or software in its products at that time. Samsung had spent three years learning and evaluating our technology while requesting test after test and giving us proposal after proposal of unfair business terms.

On LinkedIn, former United States Patent and Trademark Office (USPTO) chief Kathi Vidal (now a partner at newly formed transatlantic firm Winston Taylor) comments as follows:

It is unclear whether Judge Gilstrap would find irreparable harm if there were no “additional bases.” One troubled by this can take solace from language in Judge Gilstrap’s opinion indicating that he would not adopt either sides “impermissible bright-line rule[s].”

Of course, we will never know that he would have decided in a but-for world. What we do know for sure is that the entire Section A of the decision does not specify any other case-specific facts supporting a request for injunctive relief. Everything else in that section would apply to each and every patent infringement case with a continuing infringement. As Ms. Vidal notes, relying exclusively on those generic arguments would be inconsistent with Judge Gilstrap’s rejection of categorical rules.

But here’s a useful thought experiment:

1.3 What would the Federal Circuit do?

In this case, timing and the damages opportunity weigh against an appeal of the injunction denial. For analytical purposes it’s nevertheless instructive to ask ourselves the question of what would happen in an alternative universe if the appeals court had to reach the question of irreparable harm on the basis of Judge Gilstrap’s Collision logic:

1. There would be no issue with the rejection of categorical rules because none of that is new law.
2. But the Federal Circuit has made it clear in equitable contexts that it at least needs something reviewable to put on the table by the trial judge. There must be some facts-based reasoning. Just “trust me, I got it right” is not enough.
3. It doesn’t matter that the section heading refers to “additional bases”: only the “additional bases” section presents any case-specific facts.
4. Then the only such thing as a factual basis, the design-win theory, would have to be thrown out as a misreading of eBay and general U.S. injunction rules, for the reasons explained in Section 1.4.
5. They would have to lift such an injunction (most likely, they would already have granted an emergency motion to stay it because the deficiency is obvious) and would most likely remand to the district court for further proceedings, giving the trial judge another chance to assess irreparable harm.

1.4 Misreading of eBay and U.S. injunction rules

This is how the eBay standard starts:

That test requires a plaintiff to demonstrate: (1) that it has suffered an irreparable injury; (2) […]

The Collision error has a grammatical explanation: the present perfect can mean

• that there has been at least one occurrence of an event or
• that the impact of something that has recently happened is felt now.

eBay means the latter, not the former. The notion that an injunction could or should right a past wrong is incorrect. The idea of punishment for past misbehavior has been rejected.

The only direction in which the window for irreparable harm can be extended is into the future: preliminary injunctions are available over an imminent infringement.

Here, there simply is no irreparable harm from the lost “design win”:

• It happened over a decade ago. At the time, Collision was not a patent assertion entity, but a technology owner who wanted to use the acquired IP to build a business through partnerships with innovatorsl ike Nokia.
• The business model changed. Collision shifted to patent monetization.
• Even if it still wanted to pursue its old business model, it couldn’t: the patent portfolio is too old (partly expired, and limited remaining life for the patent underlying the motion for an injunction. That would be an independent alternative ground for reversal.

Samsung raised the above arguments, but did not (and within the page limits of motion briefing) could not elaborate in full detail. It contented itself with a citation to the 2024 Supreme Court decision in Murthy v. Missouri:

While courts consider previous harms in evaluating this eBay factor, see i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 861 (Fed. Cir. 2010), the Supreme Court requires that to receive forward-looking injunctive relief, a plaintiff must show that they will be harmed “in the near future.” Murthy v. Missouri, 603 U.S. 43, 58 (2024). “But [where] the plaintiffs are seeking only forward-looking relief, the past injuries are relevant only for their predictive value . . . . the past is relevant only insofar as it is a launching pad for a showing of imminent future injury.” Id. at 59 (emphasis added).

Judge Gilstrap does not explain in this decision why he did not consider the above dispositive. He just decides differently.

There is no shortage of case law at all levels of the U.S. federal judiciary, also in connection with patent injunctions, that is consistent with Murthy. It would go too far to point to all of them.

In its 2011 Bosch v. Pylon decision, the Federal Circuit wrote:

There is no reason to believe that Pylon will stop infringing, or that the irreparable harms resulting from its infringement will otherwise cease, absent an injunction.

That confirms the idea of an injunction being needed to prevent further irreparable harm (of which there is none with respect to the “design win” in Collision).

Earlier that year, a decision in the Eastern District of Texas came down in SynQor v. Artesyn et al. (PDF). Judge T. John Ward granted a permanent injunction, relying on recent harm as evidence and finding that such harm would extend into the future:

There has been a loss of market share, lost profits, and potential revenue to Defendants in the past by Defendants‘ acts of infringement, and the Court finds that there will likely be such loss in the future.

This is picked up again in the balance-of-hardships context (eBay factor three):

Absent an injunction, SynQor will continue to suffer irreparable injury to its business, future opportunities, goodwill, potential revenue, and the very right to exclude that is the essence of the intellectual property at issue. Although an
injunction will interfere with Defendants‘ ability to sell their competing products, the harm to SynQor is significant.

The word “future” has 11 occurrences in SynQor. For a reason.

In a different context, SynQor cites to the Federal Circuit’s 2010 Spine v. Medtronic opinion relating to extraterritorial sales. What the appeals court said there about the purpose of an injunction versus damages is instructive:

An injunction is only proper to prevent future infringement of a patent, not to remedy past infringement. […] As we noted in CellPro, a patentee must seek compensation for past infringement under 35 U.S.C. § 284; the purpose of an injunction is to prevent future violations of the patent. […]

[T]he extraterritorial portion of the injunction appears to be premised solely on Medtronic’s past infringement, not on the prevention of future infringement. This is contrary to the plain language of 35 U.S.C. § 283.

1.5 Factor-One mistake infects factor-two analysis

eBay factor two (inadequacy of monetary relief) builds on the findings under factor one, referencing it through a demonstrative pronoun:

 […] (2) that remedies available at law are inadequate to compensate for that injury […]

In this case, there was no irreparable injury. Judge Gilstrap’s factor-two analysis adds no concrete facts. There’s just another flavor of the rejection of categorical rules.

1.6 Judge Gilstrap effectively corrected his own mistake at factor three

The third factor requires an injury that causes a hardship on the patentee in the absence of an injunction (for the infringer, it’s about hardship caused by an injunction). At this stage of the analysis, even Judge Gilstrap saw more no room for past harm. That is why he found that Collision “makes no effort to identify any particular or specific hardship it would face if an injunction were not to issue”.

Practically, by finally ignoring what happened a decade or more ago and doesn’t cause any harm going forward, Judge Gilstrap corrected his own mistake that led to incorrect findings of irreparable harm and inadequacy of monetary relief.

1.7 This design-win theory would not apply to typical patent monetizers

The Collision record shows that the alleged design-win loss was a long time ago and Collision’s business model subsequently changed (to patent monetization). Even if one ignored the fact that Collision was unable to show irreparable harm from continued infringement, the design-win argument was based on a business model that applies only to a limited subset of NPEs.

This is a special case because Collision did not make the original inventions, but after acquiring them had a business plan that was fundamentally different from the common buy-and-monetize model.

2. It’s not just about the outcome

Court rulings can move the goalposts even if a groundbreaking holding does not lead to a different result. But that requires the legal holding to be potentially beneficial to subsequent plaintiffs. Here, there are three types of holdings, neither of which makes patent injunctions more available to NPEs:

• The commonplace principles rejecting categorical rules are simply consistent with eBay and can be found in a variety of decisions that have come down since. The governmental submission merely reminded the court of them. It was a signal that NPEs should get a fair chance, and in the case of this judge, they were preaching to the converted.
• The irreparable-harm finding is clearly erroneous and not going to impress anyone. Defendants now know that they have to point Judge Gilstrap to more than just Murthy in this regard.
• The reason why Collision ultimately got no injunction is because Judge Gilstrap practically corrected at factor three his own error that led to incorrect findings on factors one and two.

3. Inadequacy of monetary relief contradicted by jury finding

Apart from the issue discussed in Section 1.5 above, there would be an independent ground for reversal on eBay factor two: the jury held that damages could be calculated as a reasonable royalty, even for the purpose of an ongoing royalty.

4. Misconceptions regarding whether damages verdicts strengthen injunction requests

On LinkedIn, a senior editor of another IP-focused publication wrote after Judge Gilstrap’s decision that this showed how hard it remained for NPEs to obtain U.S. patent injunctions “even with strong verdicts”. Actually, that ignores the specific situation (only one patent left while the verdict related to four patents, and the remaining one will expire soon) and is simply not the way it works anyway:

Injunctions are meant to address harm that cannot be quantified by a jury and then compensated for by means of a damages award.

That does not mean to say that a low damages award favors a motion for an injunction. The thing to understand is that it’s not a question of the amount, but of whether any amount can be identified. For example, a loss of market share is hard to quantify because there are so many question marks about what would happen in the future (such as new market entrants or other changing conditions).

Psychologically, a huge verdict will make judges feel that the patent holder is being made whole.

As explained in the previous section, the verdict in this case was even counterproductive in the sense that the nature and structure of the jury’s damages award showed the problem could be solved with money. And as explained in the previous article on the decision, a significant part of Collision’s problem was one of conflicting goals:

• On the balance of hardships, it argued that Samsung could work around the patent.
• But for the purpose of maximizing the damages award, it had argued the opposite.

5. Let’s not understate NPEs’ access to injunctive relief in U.S. court

Many reactions to Judge Gilstrap’s ruling looked as if NPEs, even under a broad definition of the term that would include research institutes, had been deprived of all access to injunctions. But the picture has always been more nuanced. Distinctions between different types of NPEs have been made all along, and have had implications for the likelihood of injunctions being granted.

For NPEs that acquire patents to monetize them, but do not engage in their own research (Collision, based on its own representations, at least tried to build a technology business before resorting to patent assertion), it has indeed become virtually impossible to obtain U.S. patent injunctions. Most of them don’t even try, and those who do try rarely succeed. But as explained before, what Judge Gilstrap held in this case would not help those in the buy-and-monetize business anyway.

Kirti Gupta and Jay P. Kesan worte in Studying the Impact of eBay on Injunctive Relief in Patent Cases (2017):

“We find that both for preliminary and permanent injunctions, NPEs are less likely to obtain an injunction, after controlling for patent characteristics and the length of the case (from filing to termination) throughout the 2000-2012 time period.”

“In order to understand whether or not the eBay ruling had a differential impact on PEs vs. NPEs, we utilize a diff-in-diff model. We find that the eBay ruling did not have a differential impact on the likelihood of NPEs to be granted a preliminary injunction as compared to PEs – in other words – the likelihood of being granted a preliminary injunction reduced equally both for NPEs and PEs post eBay. However, we do find a differential impact of the eBay ruling on PEs vs. NPEs for permanent injunctions. We find that NPEs are less likely to be granted a permanent injunction post-eBay compared to PEs, after eBay.”

A more recent (2024) study appeared in the Harvard Journal of Law & Technology (JOLT) (PDF). The author, Kristina M.L. Acri née Lybecker, wrote in the abstract:

Specifically, the relative decrease in requests for permanent injunctions was 87.4% for NPEs and 65.0% for operating companies. Surprisingly, requests for preliminary injunctions also fell, relative to the baseline: 48.4% for NPEs and 53.2% for operating companies. Finally, the relative decreases in grants of permanent injunctions were 91.2% for NPEs and 66.7% for operating companies. T

Also, in Sealant v. TEK, the United States District Court for the Northern District of California granted a permanent injunction for a non-practiced patent (LES Insights article by John C. Paul and D. Brian Kacedon). CSIRO, a research organization, even obtained a standard-essential patent (SEP) injunction in 2007 (February 19, 2026 ip fray article).

6. Judge Gilstrap’s description of NPE spectrum and non-existence of second-class patents has persuasive value

None of what is said in this article is meant to diminish the value of Judge Gilstrap’s explanations of how diverse NPEs are (and that NPE status can be transient) as well as his rejection of the notion that there are second-class patents.

7. Commonplace statements may be viewed as invitation to file, but do not change the law

What both Judge Gilstrap’s Collision order and the governmental submission will lead to is an increase, even if maybe just a modest one, in injunction requests. In some ways, patent holers may feel encouraged to give it a try. But as long as there is no legislative override of eBay to at least a significant extent, there still isn’t much hope for NPEs that they will win and get to enforce injunctions. The purpose of this article is simply a reality check. I’ve seen decisions that could be considered “sea change” rulings, particularly on SEP injunctions (in other jurisdictions), but Collision does not rise to that level, with the greatest respect for the court and the judge, who probably wanted to make a statement and knew that the near-term expiration of the patent was going to moot the issue anyway.