MIA: Granted and Affirmed Preliminary Injunctions

Posted on | April 25, 2008 | No Comments

We recently posted about the Federal Circuit’s upcoming Judicial Conference, here.  The Conference’s Patent And Trademark breakout-session is titled “Patent Issues Ripe for Judicial Clarification,” a panel moderated by Prof. Lisa Dolak (Syracuse Law), with Hon. Patti Saris (D/MA), Hon. Liam O’Grady (ED/VA), Meredith Ady (Brinks Hofer), Morgan Chu (Irell & Manella), William Lee (WilmerHale), and Profs. Margo Bagley (UVA Law) and Joseph Miller (Lewis & Clark Law).

This sounds very interesting and, while we don’t know what issues they will discuss, one does seem ripe to us: Preliminary Injunctions.

In case you haven’t noticed, getting and keeping a preliminary injunction is increasingly difficult at both the district court and CAFC level.  Most, if not all, of this difficulty can be traced to two points:

• Plaintiff’s burden of showing that an invalidity challenge lacks substantial merit.  Genentech v. Novo Nordisk A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1997).  Specifically, how much merit is substantial?  At least one recent CAFC case has found that "casting doubt" on the validity of a patent was enough.  ERICO v. Vutec, 516 F.3d 1350 (Fed. Cir. 2008) (Disclaimer below).

• There is no more balancing of the four factors: rather, the first factor–plaintiff showing a substantial likelihood of success on the merits–has become essential.  Moreover, there are no gradients for this factor.  If you  satisfy it, you move on the next factor: if not, no injunction and the other factors are irrelevant.

Apparently some judges at the CAFC agree that this topic needs some clarification (including Judge Newman in her ERICO dissent).  In response to the ERICO decision, a petition for rehearing or rehearing en banc was filed–and the CAFC requested a response to the motion (see below).  While the court ultimately denied the motion, we think the court is interested in the topic but thought that ERICO was not the vehicle to take en banc.

In Part II of this post next week, we’ll review the CAFC’s recent decisions on preliminary injunctions and, in Part III, discuss in depth two recently filed appeals on preliminary injunctions, Novo-Nordisk and Printguard.

Documents:

ERICO Petition for Rehearing.pdf

Response.to.En Banc.Rehearing.pdf

Disclaimer: Our law firm, Renner Otto, represented ERICO in the case, although we were not involved.  I did, however, draft the Petition for Rehearing.

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