An Injunction Against Communication of Patent Rights Is Strong Medicine That Must Be Used With Care

GP Industries, Inc., v. A Gutter Solution LLC, [2007-1087](September 20, 2007)[LOURIE, Newman, Prost] The Federal Circuit reversed a preliminary injunction enjoining Eran from future correspondence with present and potential customers about infringement of its patent.
SIGNIFICANCE: A patentee has the right to communicate with others about its patent rights so long as he is not acting in bad faith, i.e. where the claim of infringement is objectively baseless.
BRIEF: Eran, through counsel, sent letters to its distributors and contractors informing them that GPI, a company formed by former employees of Eran, planned to manufacture and sell a gutter cover that infringed U.S. Patent No. 5,557,891. GPI sued for a declaratory judgment of non-infringement and tortious interference, and sought to enjoin Eran's contacting others about GPI's alleged infringement. The Federal Circuit said that when a patentee is prevented from communicating its patent rights, "[w]e apply federal patent law and precedent relating to the giving of notice of patent rights, in reviewing the grant of an injunction against the giving of such notice." The grant of the preliminary injunction is reviewed in the context of whether, under applicable federal law, the notice of patent rights was properly given. Federal law requires a showing of bad faith in order to bar such communications. The Federal Circuit noted the rarity of an injunction being granted against communicating with others concerning one’s patent rights. The Federal Circuit said that "One has a right to inform others of his or her patent rights" and that "an injunction against communication is strong medicine that must be used with care and only in exceptional circumstances." A patentee, acting in good faith on its belief as to the nature and scope of its rights, is fully permitted to press those rights even though he may misconceive what those rights are." “Bad faith” may include subjective and objective considerations, but cannot be satisfied in the absence of a showing that the claims asserted were objectively baseless.