Background
Apple and Motorola were locked in global patent litigation across dozens of cases. This Federal Circuit appeal arose from a Northern District of Illinois case managed by Judge Richard Posner — a prominent antitrust and economics scholar sitting by designation. Judge Posner had dismissed both Apple’s and Motorola’s patent damages claims, finding that neither party could prove a causal link between the alleged infringement and any cognizable harm. He also denied both parties’ requests for injunctive relief. The result — a patent trial with zero recovery for both sides — was unusual enough to generate significant attention.
The case reached the Federal Circuit on cross-appeals, presenting important questions about how damages should be calculated when patented features are small components of complex multifunction devices, and about whether FRAND-encumbered standard-essential patents (SEPs) can ever justify injunctions.
The Court’s Holding
Chief Judge Rader and Judge Prost reversed the district court’s exclusion of both parties’ damages evidence and the grant of summary judgment of no damages, holding that Judge Posner had applied too strict a causal nexus standard and had improperly excluded reasonable royalty evidence. For utility patent damages, the Federal Circuit clarified that while apportionment is required and a causal nexus between the patented feature and demand for the product may be needed for certain types of damages, the threshold for establishing a reasonable royalty was lower than Judge Posner had applied.
On injunctions, the court made a landmark ruling: there is no categorical rule that injunctions are unavailable for standard-essential patents subject to FRAND commitments. The availability of injunctions must be evaluated under the Supreme Court’s four-factor eBay framework case by case. However, the court affirmed the denial of an injunction to Motorola on its FRAND-committed SEP because Motorola had committed to license on FRAND terms — meaning it had essentially promised that money damages would make it whole. Having made that promise, Motorola could not easily show that money damages were inadequate, which is a prerequisite to injunctive relief under eBay.
Key Takeaways
- There is no per se rule against injunctive relief for standard-essential patents — courts must apply the eBay four-factor test case by case.
- However, a FRAND commitment strongly undermines the “inadequacy of money damages” prong of eBay: having committed to license for money, an SEP holder will find it very difficult to show money damages are insufficient.
- Patent damages in complex multi-feature products cannot be dismissed wholesale for lack of causation — courts must allow appropriate expert testimony on reasonable royalties even when the patented feature is a small part of the product.
- The decision reinforced that damages methodology disputes (apportionment, causation, royalty base) should go to the jury rather than being resolved at summary judgment based on overly strict causal nexus requirements.
Why It Matters
Apple v. Motorola was one of the definitive cases shaping the intersection of FRAND commitments and injunctive relief. The Federal Circuit’s rejection of a categorical anti-injunction rule for SEPs gave patent holders slightly more leverage in licensing negotiations — even after FRAND commitments, an injunction is not impossible. But the practical effect of the court’s eBay analysis confirmed what most practitioners already understood: FRAND-committed SEPs very rarely justify injunctions, because the patent holder’s own commitment to license for reasonable compensation undercuts the showing of irreparable harm and inadequacy of money damages.
The case also highlighted the importance of sophisticated damages modeling in complex patent cases. Judge Posner’s dismissal of all damages — while intellectually rigorous — proved too severe for the Federal Circuit. The appeal reminded district courts that uncertainty about the precise amount of damages is not a basis for awarding nothing; the patent system requires a damages award when infringement is proven, even if the award must be based on a reasonable royalty estimate.