More on eBay v. MercExchange, and CJ Roberts

The holding of the unanimous court in eBay v. MercExchange, 126 S. Ct. 1837; 164 L. Ed. 2d 641 (2006) was:

We hold only that the decision whether to grant or deny injunctive
relief rests within the equitable discretion of the district courts,
and that such discretion must be exercised consistent with
traditional principles of equity, in patent disputes no less than in other cases
governed by such standards.

At a commencement speech at Georgetown University Law Center, Chief Justice Roberts made a plea for more consensus within the Court -- for unanimous or near-unanimous decisions, on the ground that they promote the rule of law. But that wasn't the most interesting part. He also argued that unanimous or near-unanimous decisions lead to narrow, minimalist opinions. “The broader the agreement among the justices, the more likely it is that the decision is on the narrowest possible ground." In his view, narrow decisions tend to be best. In an aphoristic summary of the minimalist position in constitutional law, he added, “If it is not necessary to decide more to dispose of a case, in my view it is necessary not to decide more." [from uchicagolaw]

In eBay v. MercExchange, there were two concurring opinions, one of which was by CJ Roberts.

CJ Roberts wrote: At the same time, there is a difference between exercising equitable discretion pursuant to the established four-factor test and writing on an entirely clean slate. "Discretion is not whim, and limiting discretion according to legal standards helps promote the basic principle of justice that like cases should be decided alike."

IPBiz notes that the unanimous opinion included a rejection of certain categorical standards, both by the CAFC and the district court.

J. Kennedy wrote:

To the extent earlier cases establish a pattern of granting an
injunction against patent infringers almost as a matter of course, this
pattern simply illustrates the result of the four-factor test in the
contexts then prevalent.

(...)
In addition injunctive relief may have different consequences for the burgeoning number of patents over business methods, which were not of much economic and legal significance in earlier times. The potential vagueness and suspect validity of some of these patents may affect the calculus under the four-factor test.

IPBiz notes the problematic nature of the highlighted sentence. At the time of application of the four-factor test, THE PATENT IN QUESTION has been determined to be valid and infringed. How can the "suspect validity of SOME OF THESE PATENTS" affect the calculus under the four-factor test? The suspect validity of someone else's business method patent should not enter into the calculus under the four-factor test for a patent determined to be valid. One wonders if this was an oblique reference to the re-examination undergone of some of the MercExchange patents. An initial Office Action in the re-exam of the MercExchange patent leading to the injunction had produced rejection. Is this the issue J. Kennedy raises?