The appellate verdict affirmed a lower court's ruling denying the injunction as the patentee and not the exclusive licensee was named in the lawsuit.
Voda's exclusive licensee for his catheter patents was medical device maker Scimed.
The lawsuit was filed after cardiologist Voda claimed that his domestic and international patents for angioplasty guide catheters were infringed by a similar model made by Cordis.
Although the lower court found the patents infringed, it denied Voda's request for a permanent injunction against Cordis.
Upholding the denial of a permanent injunction, the Federal Circuit's ruling in Voda v Cordis Corporation said: "In this case, the district court found that Voda had not identified any irreparable injury to himself due to Cordis's infringement of his patents and also failed to show that monetary damages are inadequate to compensate for Cordis's infringement."
Voda's appeal for injunctive relief relied specifically on the Supreme Court's 2006 ruling in eBay Inc v MercExchange LLC.
Justice Thomas wrote in that case: "Some patent holders, such as university professors or self-made inventors, might reasonably prefer to license their patents, rather than undertake efforts to secure the financing necessary to bring their works to market themselves. Such patent holders may be able to satisfy the four-factor test, and we see no basis for categorically denying them the opportunity to do so."
The four-factor test was used in eBay to determine if there should be a permanent injunction. The four factors to be considered are: the presence of irreparable injury; inadequate resolution through monetary compensation; the necessity of monetary compensation; and that such an injunction would be in the interest of the public.
"Usually the standing shoe is on the other foot, where the licensee wants to go it alone ... Here it was the other way around," said Paul Janicke, a professor of IP and information law at the University of Houston in Texas.
"The patentee was going it alone, for whatever reason, and yet he claimed the irreparable harm was to the licensee. I'm not surprised that it didn't fly," he added.
The decision in Voda v Cordis on future injunctive challenges is expected to have mixed results. "It doesn't make [injunctions] a whole lot easier to get, but I don't think it changes where we already were," said Janicke. "It's just another nail in the trolls' coffin for injunctive relief."
In addition, one question yet to be answered by the case concerns post-denial remuneration structures.
"We don't know under what conditions a non-practising patentee might get an injunction. I think the more intriguing question for the future is, if the injunction is denied, what is the appropriate monetary remedy?" said Janicke.
