Case: 24-2265 Document: 17 Page: 1 Filed: 09/17/2024
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`No. 2024-2265
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`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
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`VIDSTREAM LLC,
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`v.
`TWITTER, INC.,
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`Plaintiff-Appellant,
`
`Defendant-Appellee.
`
`
`On Appeal from the United States District Court for The Northern District of
`Texas in Case No. 3:16-cv-00764-N, Judge David C. Godbey
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`APPELLEE TWITTER, INC.’S REPLY IN SUPPORT OF ITS MOTION
`FOR SUMMARY AFFIRMANCE
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`VidStream does not dispute that (1) the district court rejected VidStream’s
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`preliminary injunction request solely due to VidStream’s failure to establish
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`irreparable harm, C.A. Dkt. 13 (“Opp.”) at 3, (2) the heart of VidStream’s irreparable
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`harm argument was its assertion that “establishing [a] likelihood of ongoing
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`infringement” establishes irreparable harm, id. at 1, or that (3) Robert Bosch stated
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`that it was “abolish[ing] [this Court’s] general rule that an injunction normally will
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`issue when a patent is found to have been valid and infringed,” 659 F.3d 1142, 1148-
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`1149 (Fed. Cir. 2011); see generally Opp. 5-10.
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`Because VidStream cannot contest the core of Twitter’s motion for summary
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`affirmance, it deflects. VidStream’s tactics—attempting to (misleadingly) shift its
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`Case: 24-2265 Document: 17 Page: 2 Filed: 09/17/2024
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`position on appeal, asserting (incorrectly) that Robert Bosch’s clear language is
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`dicta, and raising (erroneous) assertions about Twitter’s litigation position on
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`appeal—do not change the analysis. In front of the district court, VidStream raised
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`a single irreparable harm theory that is impossible to square with binding precedent
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`this Court issued thirteen years ago. Summary affirmance is thus appropriate and
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`VidStream’s contrary arguments are unavailing.
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`First, VidStream contends that it established “irreparable injury on several
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`grounds” in the district court (i.e., suggesting it can prevail despite Robert Bosch).
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`Opp. 3-4.1 But the first two “grounds” that VidStream identifies (“primary source
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`evidence [regarding] traditional principles of equity” and “evidence that Twitter was
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`unlikely to change the Twitter app”) are merely the two component parts of a
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`singular argument: that VidStream suffered irreparable harm (as that term was
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`understood in 18th century courts of equity) due to Twitter’s supposed ongoing
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`infringement. It was this theory alone that VidStream articulated in the district court.
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`See, e.g., Reply.Add. at 2 (“Ongoing infringement, itself, was deemed to be
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`irreparable harm because the remedies offered by the courts of law in the eighteenth
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`1 Emphasis added unless otherwise noted.
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`2
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`Case: 24-2265 Document: 17 Page: 3 Filed: 09/17/2024
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`century were deemed inadequate.”).2
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` As the district court summarized,
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`“VidStream’s entire irreparable harm argument relies on an unsubstantiated rule that
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`a likelihood of irreparable harm is established where ‘Plaintiff has established that it
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`is likely to succeed on the merits and also because the Defendant’s infringement is
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`ongoing.” C.A. Dkt. 5 (“Mot.”) Add. at 4.3
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`VidStream relatedly argues (at 4) that Mr. Reed’s declaration was offered to
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`show ways in which “Twitter irreparably harmed VidStream” and Youtoo. This
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`argument is triply flawed. First, in front of the district court, VidStream never
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`claimed that the purported harms identified in the declaration were irreparable; it
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`merely asked the district court to consider them as part of the balance of the equities.
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`See Reply.Add. at 13-14. Second, harm that VidStream or Youtoo purportedly
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`2 The irreparable harm and balance-of-the-hardship sections from Vidstream’s
`district court briefing are reproduced in the addendum to this reply, as is a portion
`of Apple’s opposition brief. Although the district court briefing was fully filed under
`seal, the relevant passages discuss publicly available case law and secondary sources
`(and a publicly filed declaration)—i.e., material that appears in VidStream’s opening
`merits brief (C.A. Dkt. 11). Moreover, VidStream has confirmed in writing that the
`district court briefing contains no VidStream confidential material. See D. Ct. Dkt.
`37 at 15 (protective order noting that parties can “agree[] in writing to alter or waive
`the provisions or protections provided for in this Protective Order with respect to
`any particular information or material”).
`3 VidStream’s suggestion (at 3) that the district court denied the injunction because
`the court believed “a non-practicing entity” can never show irreparable harm is
`specious. The district court expressly noted that eBay “reject[ed] a per se rule ‘that
`… a patent holder who has unreasonably declined to use the patent’” can never
`receive injunctive relief. Mot. Add. at 2-3. VidStream lost for a more prosaic
`reason—it failed to put forth a viable theory of irreparable harm.
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`3
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`Case: 24-2265 Document: 17 Page: 4 Filed: 09/17/2024
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`suffered in the past is irrelevant to this appeal. The irreparable harm inquiry is
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`forward-looking and considers only future harm that will be suffered if an injunction
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`is not granted. See Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7,
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`20 (2008) (plaintiff must show “that he is likely to suffer irreparable harm in the
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`absence of preliminary relief.”). Third, this Court has already concluded that the
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`types of harm Mr. Reed asserts—i.e., the costs of litigation that purportedly led
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`Youtoo into bankruptcy and impingement on Youtoo’s/VidStream’s right to exclude
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`others from using the patent—are not irreparable. See ActiveVideo Networks, Inc.
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`v. Verizon Communications, Inc., 694 F.3d 1312, 1337 (Fed. Cir. 2012) (“Litigation
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`costs … are not an irreparable harm in the injunction calculus.”); Reebok
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`International, Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1558 (Fed. Cir. 1994) (“We reject
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`th[e] argument” that the “right to exclude establishes irreparable harm[.]”).4
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`Second, VidStream argues Robert Bosch is irrelevant because VidStream did
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`not rely on a rebuttable presumption of irreparable harm in the district court but
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`instead “provided specific factual proof” of such harm. Opp. 5-6. VidStream
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`misstates the record. As explained, VidStream’s only theory of irreparable harm
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`4 Mr. Reed’s suggestion that Youtoo’s expenses were high because Twitter acted
`improperly and/or pressed meritless arguments is unsupported. Before Youtoo went
`bankrupt, for example, Twitter prevailed in invalidating two patents (including the
`patent at issue on appeal) and successfully sought sanctions against Youtoo and its
`former law firm for their discovery conduct. See D. Ct. Dkt. 164 at 4-6 (summarizing
`this procedural history).
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`4
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`Case: 24-2265 Document: 17 Page: 5 Filed: 09/17/2024
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`was that establishing a likelihood of success on the merits and continuing
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`infringement were sufficient to meet its burden. See supra pp. 2-3. In front of the
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`district court, Twitter argued that this argument could not be right because “‘it would
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`require a finding of irreparable harm to every patentee regardless of the
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`circumstances.’” Reply.Add. at 19-20 (quoting Reebok, 32 F.3d at 1558-1559).
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`In reply, VidStream asserted it was not advocating for such a “per se” rule
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`because the finding of irreparable harm could be rebutted if, “‘[f]or example, [a]
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`defendant can demonstrate to the court’s satisfaction that it is unlikely to infringe
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`again.’” Reply.Add. at 25. Importantly, VidStream took this line directly from a
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`law review article cited heavily throughout its preliminary injunction briefing, which
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`advocates for “federal courts [t]o … presume, in accordance with traditional
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`equitable principles … that a patentee is likely to suffer [irreparable] injury in the
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`absence of a final injunction.” See Gómez-Arosteui & Bottomley, The Traditional
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`Burdens For Final Injunctions, 71 Case Western L. Rev. 403, 440 (2020); see also
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`Reply.Add. at 6, 8, 9, 10, 11, 13, 15 (VidStream’s opening brief discussing
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`Traditional Burdens). The language VidStream quoted was articulating a way the
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`5
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`Case: 24-2265 Document: 17 Page: 6 Filed: 09/17/2024
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`authors believed a defendant can “overcome th[at] presumption[].” Gómez-
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`Arosteui & Bottomley, Traditional Burdens, 71 Case Western L. Rev. at 440.5
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`Regardless, even if VidStream has not advocated for a presumption in the
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`district court, it cannot be the case that precisely the same type of evidence that
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`Robert Bosch held does not give rise to a rebuttable presumption of irreparable harm
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`constitutes irrebuttable proof of that same harm. Not only does the latter rule fit
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`even more obviously into eBay’s ban on “categorical rule[s],” Robert Bosch, 659
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`F.3d at 1148-1149, but if VidStream is right, the Robert Bosch Court would have
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`had no need to spend another five pages wading through the parties’ irreparable harm
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`arguments, id. at 1150-1155. Even the Traditional Burdens article—which, again,
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`VidStream repeatedly cited in its district court briefing, see supra p. 5—
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`acknowledges that adopting the very same “[t]raditional equitable principles” that
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`VidStream relies upon for its irreparable harm argument would require “the Federal
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`Circuit to overrule its 2011 decision in [Robert] Bosch.” Gómez-Arosteui &
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`Bottomley, 71 Case Western L. Rev. at 444; see also id. at 405-406 & n.4 (under
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`5 Similarly, in contesting Twitter’s assertion that Reebok precludes a rule that
`ongoing infringement necessarily constitutes irreparable harm, VidStream’s reply
`argued that “Twitter … ignores how Reebok recognized that ‘[a] strong showing of
`likelihood of success on the merits coupled with continuing infringement raises a
`presumption of irreparable harm to the patentee.’” Reply.Add. at 27 (quoting
`Reebok 32 F.3d at 1556).
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`6
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`Case: 24-2265 Document: 17 Page: 7 Filed: 09/17/2024
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`Robert Bosch, “a patentee must now always prove that some future injury is likely—
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`one caused by, but exceeding, any future infringement itself.”).
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`VidStream (at 5-6) relatedly faults Twitter for not citing Robert Bosch more
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`heavily in front of the district court. Of course, whether Twitter (or even the district
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`court) previously cited Robert Bosch is irrelevant to the question of whether it
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`controls this case. In any event, this argument is a red herring, as it was not clear
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`until VidStream’s reply that it was advocating for a presumption. See supra pp. 5-6
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`& n.5. And, notably, VidStream does not dispute that Twitter’s opposition did cite
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`Robert Bosch and VidStream’s reply had no answer. Compare Mot. 5 with Opp. 6-
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`7. Finally, VidStream’s assertion (at 6) that the district court did not rely on the
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`Robert Bosch principle ignores the district court’s citation to Automated
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`Merchandising Systems, Inc. v. Crane, which makes the same point as Robert Bosch.
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`Compare Automated, 357 F. App’x 297, 301 (Fed. Cir. 2009) (nonprecedential)
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`(holding that in eBay “the presumption of irreparable harm, based just on proof of
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`infringement, was discarded. The burden is now on the patentee to demonstrate that
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`its potential losses cannot be compensated by monetary damages”) with Mot. Add.
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`at 4 (citing Automated Merchandising for the proposition that “post-eBay, ‘[t]he
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`burden is now on the patentee to demonstrate that its potential losses cannot be
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`compensated by monetary damages”).
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`7
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`Case: 24-2265 Document: 17 Page: 8 Filed: 09/17/2024
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`Third, VidStream contends that the statements from Robert Bosch cited in
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`Twitter’s motion (e.g., that “eBay abolishes [this Court’s] general rule that an
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`injunction normally will issue when a patent is found to have been valid and
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`infringed,” see Mot. 5) are dicta. Opp. 7-9. Not so. Both sides agree that dicta
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`“describes statements made by a court that are ‘unnecessary to the decision in the
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`case.’” Co-Steel Raritan, Inc. v. ITC, 357 F.3d 1294, 1307 (Fed. Cir. 2004), cited in
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`Opp. 7. In Robert Bosch, whether the presumption of irreparable harm survived
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`eBay was a threshold issue that was necessary to resolve.
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`Specifically, the Robert Bosch patentee sought this Court’s review of the
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`denial of a permanent injunction after a finding of infringement and raised a
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`significant number of irreparable harm theories. 659 F.3d at 1145. If the pre-eBay
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`presumption of irreparable harm was still in place, this Court could have stopped the
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`analysis there without needing to reach the patentee’s more granular arguments. But
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`because this Court held that the presumption had been “jettisoned,” it was required
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`to—and did—address the patentee’s various assertions regarding market share, the
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`defendant’s “inability to satisfy a judgment,” and competition between the parties.
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`Id. at 1149, 1150-1155.
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`VidStream relatedly argues (at 8) that the fact that this Court has not
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`frequently cited Robert Bosch for its irreparable harm holding provides an
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`independent reason to ignore it. That cannot be right. “[A] panel of this court … is
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`8
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`Case: 24-2265 Document: 17 Page: 9 Filed: 09/17/2024
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`bound by the precedential decisions of prior panels unless and until overruled by an
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`intervening Supreme Court or en banc decision.” Deckers Corp. v. United States,
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`752 F.3d 949, 964 (Fed. Cir. 2014). Nothing in that rule permits this Court to draw
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`a distinction between cases that are cited frequently and those that are not. Indeed,
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`under VidStream’s logic, courts could set aside the well-established principle of
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`judicial review simply because no litigant in 221 years has thought to challenge
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`Marbury v. Madison, 5 U.S. 137 (1803).6
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`Finally, VidStream asserts that Twitter’s unwillingness to agree to expedited
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`merits briefing (a request VidStream made only after Twitter sought VidStream’s
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`position on the instant motion) somehow diminishes its motion for summary
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`affirmance. Opp. 10. But as Twitter’s counsel explained to VidStream, the two
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`motions are entirely distinct: “While the Robert Bosch issue can be resolved
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`expeditiously through the motion for summary affirmance process, merits briefing
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`will require addressing numerous other alternative grounds for affirmance and thus
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`will require more time.” C.A. Dkt. 10 Add. at 6. More broadly, completing merits
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`briefing and oral argument will require both the parties and this Court to expend far
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`6 Robert Bosch’s holding is in fact so well-established that it can be recited in a
`nonprecedential opinion. See Fleet Engineers, Inc. v. Mudguard Techs., LLC, 2023
`WL 5219773, at *9 (Fed. Cir. Aug. 15, 2023) (nonprecedential); see also Fed. Cir.
`IOP #10.3 (“Disposition by nonprecedential opinion … [means] that a precedential
`opinion would not add significantly to the body of law[.]”).
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`9
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`Case: 24-2265 Document: 17 Page: 10 Filed: 09/17/2024
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`greater resources than will be required to resolve the instant motion, which is now
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`fully briefed.
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`CONCLUSION
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`For the foregoing reasons, Twitter respectfully requests this Court
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`summarily affirm the district court’s ruling.
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`Dated: September 17, 2024
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`Respectfully submitted,
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`/s/ Thomas G. Sprankling
`SONAL N. MEHTA
`THOMAS G. SPRANKLING
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`2600 El Camino Real, Suite 400
`Palo Alto, CA 94306
`(650) 858-6000
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`Counsel for Appellee Twitter, Inc.
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`10
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`Case: 24-2265 Document: 17 Page: 11 Filed: 09/17/2024
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`CERTIFICATE OF INTEREST
`Counsel for Defendant-Appellee Twitter, Inc. certifies the following:
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`Represented Entities. Fed. Cir. R. 47.4(a)(1). Provide the full names
`1.
`of all entities represented by undersigned counsel in this case.
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`Twitter, Inc.
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`Real Party in Interest. Fed. Cir. R. 47.4(a)(2). Provide the full names
`2.
`of all real parties in interest for the entities. Do not list the real parties if they are the
`same as the entities.
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`X Corp.
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`Parent Corporations and Stockholders. Fed. Cir. R. 47.4(a)(3).
`3.
`Provide the full names of all parent corporations for the entities and all publicly held
`companies that own 10% or more stock in the entities.
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`X Corp. is a privately held corporation. Its parent corporation is X Holdings
`Corp. No publicly traded corporation owns 10% or more of the stock of X
`Corp. or X Holdings Corp.
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`Legal Representatives. List all law firms, partners, and associates that
`4.
`(a) appeared for the entities in the originating court or agency or (b) are expected to
`appear in this court for the entities. Do not include those who have already entered
`an appearance in this court. Fed. Cir. R. 47.4(a)(4).
`
`WILMER CUTLER PICKERING HALE AND DORR LLP: Scott W. Bertulli, Rachel
`S. Bier, Sydney E. Donovan, Kim U. Do (former), Reshma C. Gogineni, J.
`Taylor Gooch, Matthew T. Martens, Nora Q.E. Passamaneck
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`HAYNES AND BOONE LLP: Charles M. Jones II, David L. McCombs
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`DURIE TANGRI LLP: Laura E. Miller (former), James Tsuei (former)
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`Case: 24-2265 Document: 17 Page: 12 Filed: 09/17/2024
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`Related Cases. Other than the originating case(s) for this case, are
`5.
`there related or prior cases that meet the criteria under Fed. Cir. R. 47.5(a)?
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`X Yes (file separate notice; see below)
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`If yes, concurrently file a separate Notice of Related Case Information that complies
`with Fed. Cir. R. 47.5(b). Please do not duplicate information. This separate Notice
`must only be filed with the first Certificate of Interest or, subsequently, if
`information changes during the pendency of the appeal. Fed. Cir. R. 47.5(b).
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` No
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` N/A (amicus/movant)
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`Already filed.
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`Organizational Victims and Bankruptcy Cases. Provide any
`6.
`information required under Fed. R. App. P. 26.1(b) (organizational victims in
`criminal cases) and 26.1(c) (bankruptcy case debtors and trustees). Fed. Cir. R.
`47.4(a)(6).
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`None.
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`Dated: September 17, 2024
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`
`
`
`
`/s/ Thomas G. Sprankling
`THOMAS G. SPRANKLING
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`2600 El Camino Real, Suite 400
`Palo Alto, CA 94306
`(650) 858-6000
`
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`Case: 24-2265 Document: 17 Page: 13 Filed: 09/17/2024
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`CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME
`LIMITATIONS
`The foregoing filing complies with the relevant type-volume limitation of the
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`Federal Rules of Appellate Procedure and Federal Circuit Rules because:
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`1.
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`The filing has been prepared using a proportionally spaced typeface and
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`includes 2,112 words.
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`2.
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`The foregoing has been prepared using Microsoft Word for Office 365
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`in 14-point Times New Roman font. As permitted by Fed. R. App. P. 32(g), the
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`undersigned has relied upon the word count feature of this word processing system
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`in preparing this certificate.
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`/s/ Thomas G. Sprankling
`THOMAS G. SPRANKLING
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`2600 El Camino Real, Suite 400
`Palo Alto, CA 94306
`(650) 858-6000
`
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`September 17, 2024
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`Case: 24-2265 Document: 17 Page: 14 Filed: 09/17/2024
`Case: 24-2265
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`Filed: 09/17/2024
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`ADDENDUM
`ADDENDUM
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`Case: 24-2265 Document: 17 Page: 15 Filed: 09/17/2024
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`
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`TABLE OF CONTENTS
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` Page(s)
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`Excerpts from Plaintiff VidStream LLC’s Brief in Support of
`Its Motion for Preliminary Injunction, Dkt. No. 262-1
`(Jan. 4, 2024) .......................................................................................... Add. 1-17
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`Excerpts from Defendant Twitter, Inc.’s Opposition to
`VidStream LLC’s Motion for Preliminary Injunction, Dkt.
`No. 275-1 (Feb. 29, 2024).................................................................... Add. 18-21
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`Excerpts from Plaintiff VidStream LLC’s Reply Brief in
`Support of Its Motion for Preliminary Injunction, Dkt.
`No. 282-1 (Mar. 14, 2024) ................................................................... Add. 22-29
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`
`i
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`Case: 24-2265 Document: 17 Page: 16 Filed: 09/17/2024
`Case 3:16-cv-00764-N Document 262-1 Filed 01/09/24 Page 1 of 41 PageID 7536
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
`
`
`
`
` C.A. NO. 3:16-cv-00764-N
` Judge David C. Godbey
`
`
`VIDSTREAM LLC,
`Plaintiff,
`
`v.
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`TWITTER, INC.,
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`Defendant.
`
`
`
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`PLAINTIFF VIDSTREAM LLC’S BRIEF IN SUPPORT OF ITS
`MOTION FOR PRELIMINARY INJUNCTION
`
`FILED UNDER SEAL
`
`Add. 1
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`

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`Case: 24-2265 Document: 17 Page: 17 Filed: 09/17/2024
`Case 3:16-cv-00764-N Document 262-1 Filed 01/09/24 Page 20 of 41 PageID 7555
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`Because Plaintiff has established that it is likely to succeed on the merits, the first Winter
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`factor favors granting a preliminary injunction.
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`B. Winter Factor 2: Irreparable Harm in the Absence of Preliminary Relief
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`“[T]he decision whether to grant or deny injunctive relief rests within the equitable
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`discretion of the district courts, and . . . such discretion must be exercised consistent with
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`traditional principles of equity[.]” eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 394 (2006).
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`The Supreme Court has explained that the term “principles of equity” refers to “fundamental
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`rules that apply . . . across claims and practice areas” such as remedies. See Romag Fasteners,
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`Inc v. Fossil, Inc., 140 S. Ct. 1492, 1496 (2020). And in granting or denying equitable relief, the
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`“fundamental rules” that the Court must abide by are defined by the actual practices of the
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`English Court of Chancery in 1789, unless altered by Congress. See Grupo Mexicano de
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`Desarrollo S.A. v. All. Bond Fund, Inc., 527 U.S. 308, 318 (1999) (explaining that a federal
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`court’s equitable jurisdiction is, more accurately, “an authority to administer in equity suits the
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`principles of the system of judicial remedies which had been devised and was being administered
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`by the English Court of Chancery at the time of the separation of the two countries”). Ongoing
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`infringement, itself, was deemed to be irreparable harm because the remedies offered by the
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`courts of law in the eighteenth century were deemed inadequate. See Donaldson v. Becket (H.L.
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`1774), 17 The Parliamentary History of England from the Earliest Period to the Year 1803, at
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`953, 989 (William Cobbett ed., London, 1813) (De Grey, C.J., explaining that, when opposing a
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`motion for interlocutory injunction in a copyright-infringement case, it is no “objection that the
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`party applying for it has a remedy at law.”).
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`1. Winter Factor 2 Must Be Evaluated under the Traditional Principles of Equity.
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`When it comes to discerning and applying the traditional principles of equity, “a page of
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`history is worth a volume of logic.” eBay, 547 U.S. at 395 (Roberts, J., concurring) (quoting
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`11
`Add. 2
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`

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`Case: 24-2265 Document: 17 Page: 18 Filed: 09/17/2024
`Case 3:16-cv-00764-N Document 262-1 Filed 01/09/24 Page 21 of 41 PageID 7556
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`New York Trust Co. v. Eisner, 256 U.S. 345, 349 (1921)). These “traditional principles of
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`equity” originate from and are defined by “the jurisdiction in equity exercised by the High Court
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`of Chancery in England at the time of the adoption of the Constitution and the enactment of the
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`original Judiciary Act, 1789 (1 Stat. 73).” Grupo Mexicano, 527 U.S. at 318. This is well
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`established:
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`We have long held that “[t]he ‘jurisdiction’ thus conferred . . . is an
`authority to administer in equity suits the principles of the system of
`judicial remedies which had been devised and was being
`administered by the English Court of Chancery at the time of the
`separation of the two countries.”
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`Id. at 318 (quoting Atlas Life Ins. Co. v. W.I. Southern, Inc., 306 U.S. 563, 568 (1939)); accord
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`Stainback v. Mo Hock Ke Lok Po, 336 U.S. 368, 382 n.26 (1949) (“Notwithstanding the fusion of
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`law and equity by the Rules of Civil Procedure, the substantive principles of Courts of Chancery
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`remain unaffected.”); Guaranty Trust Co. v. York, 326 U.S. 99, 105 (1945) (confirming, post-
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`Erie, that federal courts are to continue exercising their powers in equity according to “the body
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`of law which had been transplanted to this country from the English Court of Chancery” even in
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`diversity cases); see also Fontain v. Ravenel, 58 U.S. (17 How.) 369, 384 (1855); Robinson v.
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`Campbell, 16 U.S. (3 Wheat.) 212, 222–23 (1818); Pomeroy, Equity Jurisprudence § 294 (4th
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`ed. 1918) (“While the equitable jurisdiction of the national courts is derived wholly from the
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`United States constitution and statutes, it is identical or equivalent in extent with that possessed
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`by the English High Court of Chancery at the time of the Revolution.”).
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`2. Federal Courts Must Exercise Their Powers in Equity as Would the English Court
`of Chancery circa 1789.
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`Moreover, the Court must exercise its powers in equity according to the substantive and
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`remedial principles of English Court of Chancery circa 1789—as evidenced by actual Chancery
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`practice in the late eighteenth century. Grupo Mexicano is particularly instructive on this point.
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`At issue in that case was whether an Article III court had the power to enjoin assets from being
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`transferred in an action for money damages, absent any lien or equitable interest in the asset.
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`Grupo Mexicano, 527 U.S. at 310. The Court not only reconfirmed that “the equity jurisdiction
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`of the federal courts is the jurisdiction in equity exercised by the High Court of Chancery in
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`England at the time of the adoption of the Constitution and the enactment of the original
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`Judiciary Act,” id. at 318, it further noted that the “substantive prerequisites for obtaining an
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`equitable remedy as well as the general availability of injunctive relief are not altered by [Rule
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`65] and depend on traditional principles of equity jurisdiction.” Id. at 318–319 (quoting 11A
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`Charles Alan Wright, Arthur R. Miller, & Mary Kay Kane, Federal Practice and Procedure §
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`2941, p. 31 (2d ed. 1995))). And the Supreme Court did not struggle with the parties’
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`hypothesizing about whether the equitable remedy introduced in England in 1975 was based on
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`English statutory authority or inherent equitable power. It rejected the entire exercise as
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`irrelevant: “Regardless of the answer to this question, it is indisputable that the English courts of
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`equity did not actually exercise this power until 1975, and that federal courts in this country have
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`traditionally applied the principle that courts of equity will not [grant the equitable remedy in
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`question].” Grupo Mexicano, 527 U.S. at 329. Indeed, the entire inquiry in Grupo Mexicano
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`boiled down to “whether the relief respondents requested here was traditionally accorded by
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`courts of equity” in 1789. See id. at 319.
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`It is not just that a federal court possesses the same range of powers in equity as did the
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`English Court of Chancery in 1789, within which it is free to do whatever it wants. Rather, a
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`federal court must conform its practices in dispensing equitable relief to the practices of English
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`Court of Chancery in 1789, unless Congress has expressly stated otherwise. A federal court’s
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`discretion both to grant an injunction—as well as its discretion to deny equitable relief—must
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`conform to the traditional principles of equity. See eBay, 547 U.S. at 394 (“[T]he decision
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`whether to grant or deny injunctive relief rests within the equitable discretion of the district
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`courts, and that such discretion must be exercised consistent with traditional principles of equity,
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`in patent disputes no less than in other cases governed by such standards.”); Boyle, 6 Pet. at 654
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`(“[T]he remedies in equity are to be administered . . . according to the practice of courts of equity
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`in [England.]”); see also Great-West Life & Annuity Ins. Co. v. Knudson, 534 U.S. 204, 216–17
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`(2002) (applying historical understanding of “equity” and criticizing dissent’s approach as a
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`“rolling revision” of the term “equity” that would “introduce a high degree of confusion”).
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`Simply put, “[d]iscretion is not whim[.]” eBay, 547 U.S. at 395 (Roberts, J., concurring)
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`(quoting Martin v. Franklin Capital Corp., 546 U.S. 132, 139 (2005)). As Justice Story
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`observed, the discretion of a federal court to dispense equitable relief is not “discretion” in a
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`broad or personal sense but is rather “discretion” in the sense that a federal court is entrusted and
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`expected to follow the fixed, historical administration of equity:
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`“There are” (said Lord Redesdale) “certain principles, on which
`courts of equity act, which are very well settled. The cases which
`occur are various; but they are decided on fixed principles. Courts
`of equity have, in this respect, no more discretionary power than
`courts of law. They decide new cases, as they arise, by the principles
`on which former cases have been decided; and may thus illustrate,
`or enlarge, the operation of those principles. But the principles are
`as fixed and certain as the principles on which the courts of common
`law proceed.”
`
`Hon. Mr. Justice Story, Commentaries on Equity Jurisprudence § 20 (Sweet and Maxwell,
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`Limited, 3d ed. 1920) (quoting Bond v. Hopkins, 1 Sch. & Lef. 428, 429 (1802)).
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`Importantly, since a federal court must exercise its powers in equity just as the English
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`Court of Chancery exercised its power in 1789, it would be an abuse of discretion under Grupo
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`Mexicano for a federal court to order ongoing royalties for future infringement in lieu of an
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`injunction in patent-infringement cases because “the records of the Chancery demonstrate that in
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`and before 1789, the court never once awarded a continuing royalty or lump sum in lieu of a
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`final injunction in infringement cases.” H. Tomás Gómez-Arostegui, Prospective Compensation
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`in Lieu of A Final Injunction in Patent and Copyright Cases, 78 Fordham L. Rev. 1661, 1701
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`(2010); see also id. at 1699 (explaining how post-judgment damages in cases of continuing
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`wrongs also became available in 1858—“only on account of equity jurisdiction being enlarged
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`by statute”).
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`3. Preliminary Injunctions Were “Seldom Refused” in Patent Cases in 18th Century
`Chancery and Only When the Court Had Doubts About the Merits of the
`Plaintiff’s Case.
`
`Baron Eyre, sitting in place of Lord Chancellor Thurlow, said the following about the
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`ordinary course of procedure in invention patent suits: “The ordinary relief in Case of Rights
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`upon Patents is [an] Injunction & an Account. [Equity] [s]eldom refuse[s] [to grant an]
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`Injunction till [the] hearing.” Liardet v. Johnson (Ch. 1780), printed in H. Tomás Gómez-
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`Arostegui & Sean Bottomley, Patent-Infringement Suits and the Right to a Jury Trial, 72 Am. U.
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`L. Rev. 1293, 1343 (2023).
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`Of course, the fact that eighteenth-century Chancery “seldom refused” to grant
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`preliminary injunctions in patent-infringement cases means that it was sometimes denied. But
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`the denial of a preliminary injunction in patent-infringement cases “appears to have occurred
`
`only when the court had doubts about the merits of a plaintiff’s case and concerns over the
`
`hardship of an injunction.” H. Tomás Gómez-Arostegui & Sean Bottomley, The Traditional
`
`Burdens for Final Injunctions in Patent Cases c.1789 and Some Modern Implications, 71 Case
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`W. Rsrv. L. Rev. 403, 420 n.70 (2020) (citing Stationers v. Carnan (Ch. 1774); Liardet v.
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`Johnson (Ch. 1777)).
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`As a matter of practice, a plaintiff seeking a preliminary injunction in eighteenth-century
`
`Chancery (i.e., an injunction until the hearing of the cause in Chancery) could do so by showing
`
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`cause on the merits. See Robert Hinde, The Modern Practice of the High Court of Chancery 598
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`(London 1785).
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`In 1752, in the