Judge Robinson has issued a supplemental permanent injunction in the Invista v. M&G USA case, which involves resins manufactured by the parties and sold to customers to make containers. Following a jury trial, Judge Robinson had previously granted a permanent injunction. The previous injunction had not, however, addressed sales for exportation outside of the United States under 35 U.S.C. § 271(f). In considering the request for the new injunction, Judge Robinson pointed out that although the plaintiff had not “specifically invoke[d] 35 U.S.C. § 271(f) in connection with the [patent-in-suit], Invista did ask in its complaint for an injunction permanently enjoining [the defendant] from ‘. . . exporting out of the United States any products that infringe any claims of the patents-in-suit . . ., or by supplying or causing to be supplied any products that induce or contribute to the same by others, including third parties outside of the United States.’” Invista N. Am. S.A.R.L., et al. v. M&G USA Corp., et al., C.A. No. 11-1007-SLR-CJB, Order at 1-2 (D. Del. Apr. 21, 2014). Because there are no non-infringing uses of the products found to infringe, Judge Robinson agreed that the plaintiff would be irreparably harmed if the defendant “manufactures such resins, regardless of who the customers are.” Id. Her Honor therefore permanently enjoined the plaintiff “from infringing the [patent-in-suit] by manufacturing, using, importing, selling, and/or offering to sell in the United States, or exporting from the United States” the infringing products until the expiration of the patent-in-suit. Judge Robinson did, however, order that the injunction not take effect for ten days in order to allow an immediate appeal to the Federal Circuit. Id. at 2-3.
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