Patent Lawyer Blog
In a post-judgment ruling from the U.S. District Court for the Eastern District of New York, the court rejected defendants’ bid to escape a destruction mandate after the asserted patents expired just days after a permanent injunction issued, ordering the destruction of all infringing “RadCad caddies” in defendants’ possession during the patent term. The decision affirms courts’ equitable powers to remedy past infringement even post-expiration of a patent, citing Federal Circuit precedents to distinguish between impermissible future-use bans and status quo restorations like product destruction.
Background
Following a finding of willful infringement, the court on August 29, 2025, entered a Permanent Injunction Order (“PI Order”) enjoining defendants from making, using, selling, or offering to sell infringing RadCad caddies—battery-powered medical transport devices—and requiring, at defendants’ expense, the destruction of all such products in their possession or control (the “Destruction Order”). The PI Order specified it would “remain in effect until the expiration of the asserted patents” and mandated notification of compliance within 30 days.
Plaintiff notified the court on September 12, 2025, that the patents expired on September 2, 2025—mere days after the PI Order. Defendants moved for confirmation that the expiration of the patent nullified all obligations, including destruction and reporting, arguing the court lacked post-expiration equitable authority. Plaintiff countered that the patents’ lapse didn’t moot remediation for past wrongs. The court, balancing the PI Order’s terms with enduring jurisdiction, sided with plaintiff.
Key Issues in the Decision
The court’s analysis hinged on the interplay between the PI Order’s explicit expiration tie and broader equitable remedies for infringement.
Survival of Destruction Obligation Post-Expiration
Defendants argued the post-expiration notification deadline (September 28) imposed no duty. The court agreed on expiration but held the underlying obligation endured: “Though Defendants are correct that, by its terms, the PI Order expired with the patents on September 2, 2025, the fact that the deadline for Defendants to provide notification of compliance was after the expiration of the patents does not mean that Defendants had no obligation to comply with the Destruction Order.”
Equitable Jurisdiction for Remedial Relief
Defendants urged that patent expiration divested the court of any equitable power, rendering the case moot. The court disagreed, drawing on Federal Circuit authority to affirm jurisdiction for “status quo” remedies like destruction, not forward-looking bans. It cited Roche Prods., Inc. v. Bolar Pharm. Co., 733 F.2d 858, 865 (Fed. Cir. 1984), noting the case was not moot because “although the initially requested order no longer is necessary, other remedies can be fashioned to give [plaintiff] relief against [defendant’s] past infringement,” such as “an order to confiscate and destroy the data which [defendant] has generated during its infringing activity.” Similarly, Kearns v. Chrysler Corp., 32 F.3d 1541, 1550 (Fed. Cir. 1994), distinguished improper relief prohibiting future invention use from Roche-style measures “intended to return the parties to the status quo before infringement (e.g., destruction of data obtained as a result of the infringement).” Echoing AstraZeneca AB v. Impax Lab’ys, Inc., 490 F. Supp. 2d 368, 375 (S.D.N.Y. 2007), the court concluded: “expiration of the patents has not divested the Court of the power to issue other forms of equitable relief.”
Thus, jurisdiction persisted: “For these reasons, the Court finds that the expiration of the patents does not divest the Court of its jurisdiction to order the destruction of all infringing products that Defendants possessed when the patents were in effect.”
Scope and Timeline of Relief
The court mandated destruction of all infringing RadCad caddies “regardless of battery size” held during the patent term, with sworn reporting: “Accordingly, by October 24, 2025, Defendants, at their own expense, shall properly destroy any and all infringing RadCad caddies, regardless of battery size, that were in their possession while the patents were in effect, and shall serve on Plaintiff a report in writing, under oath, setting forth in detail the manner and form in which Defendants have complied with this Order, filing the same on the docket.”
Implications for Patent Practice
This order illustrates the persistence of equitable remedies beyond patent life, particularly for destruction tied to past infringement—a tool to prevent “holdover” stockpiles or data hoarding. It aligns with Federal Circuit trends favoring plaintiff relief in willful cases, even if injunctions are short-lived due to term-end timing. Infringers should inventory and destroy promptly upon injunction, as delayed expiration doesn’t excuse compliance. Plaintiffs gain leverage: Courts retain flexibility to enforce cleanup, deterring gamesmanship around term ends.
Tools Aviation, LLC v. Digital Pavilion Electronics LLC et al, Case No. l 1-20-cv-02651 (E.D.N.Y. 10/10/2025)
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or at SGibson@jmbm.com