Prof. Gómez-Arostegui concludes, based upon extensive historical research:

[F]ederal courts lack the authority, in either law or equity, to award prospective compensation to plaintiffs for post-judgment copyright or patent infringements. Until such time as Congress creates a new form of compulsory licensing, future-damage awards and continuing royalties can only be granted in lieu of a final injunction by consent of the parties. Thus, a plaintiff who succeeds on the merits of her case but who fails to obtain a final injunction must be allowed to periodically sue for any subsequent infringements, if she so chooses.

In essence, the Supreme Court's eBay "solved," to use the word loosely, the easier half of the problem of patent infringement without halting commerce.

Prof. Gómez-Arostegui -

[T]he Court's decision in eBay has triggered a monumental shift in the way courts think about final injunctions in copyright and patent cases. Grounds that were previously ignored for denying an injunction have been revived after eBay, and as a consequence we are seeing courts deny injunctions more often than before to plaintiffs who have actually succeeded on the merits.

[There are] possible alternatives to granting a final injunction--continuing royalties, lump-sum awards, and successive actions. [T]he Supreme Court has yet to opine on the matter in a conclusive way and that the Court thus remains free to consider the issue. Given eBay's growing progeny, it seems likely litigants will ask the Court to do so in the near future.

The ability of federal courts to grant relief arises from only two sources. The first is by an express statutory grant from Congress. Part IV demonstrates that neither the Copyright Act of 1976 nor the Patent Act of 1952 expressly authorize the sort of prospective relief that lower courts have granted in lieu of a final injunction.

The second source remains the common law. It sets the default reach of a court's remedial powers and courts may use it to fill the interstices of a statute. [But] not any decisional law will do. The Supreme Court has stated numerous times that a federal court cannot import a remedy into a reticulated statutory scheme unless that remedy was widely recognized at common law at the time the statute was enacted. Decisions modifying the common law after the relevant time period are ultra vires and irrelevant. The Court's approach for incorporating equitable remedies is even more restrictive. A federal court's default equitable powers are further limited to the remedies the English Court of Chancery administered circa 1789--the date our federal judiciary was founded. Undertaking an historical review,... a lumpsum award for future infringements, which some courts have loosely characterized as a legal remedy, was not recognized at common law. [A] continuing royalty, which most courts today correctly label as equitable, was also unknown to the Chancery in 1789. During that period, the court granted only two forms of final relief in copyright and patent cases--a final injunction and a disgorgement of the defendant's past profits. Moreover, the award of profits was only incidental to the grant of the final injunction.

[O]nce the remedial history and authority of the federal courts are correctly understood, it becomes evident that most post-eBay decisions that have denied plaintiffs a final injunction abused their discretion. Most courts deny final injunctions because they believe they are authorized to award prospective compensation in lieu of an injunction and that such compensation therefore constitutes an adequate remedy at law. Neither is correct.

Download the paper.

The issue of prospective relief is not addressed in the present proposed patent legislation.