CAFC Preliminary Injunction Update: Legal Issues As Substantial Questions

Posted on | May 19, 2008 | No Comments

Recently we promised updates on preliminary injunctions at the Federal Circuit, and last week the the court issued E.I. du Pont v. MacDermid Printing, Case No. 2007-1568, reversing the district court’s denial of a preliminary injunction and remanding for reconsideration. 

The appeal turned whether du Pont’s asserted patent was entitled to an earlier priority date under 35 U.S.C. § 119(e)(1) based on a provisional application: if not, then the patent was probably invalid under the on-sale/public use provision of § 102(b).  The district court found the priority issue difficult to analyze and therefore concluded that du Pont had not shown that MacDermid’s § 102(b) defense lacked substantial merit.

The Federal Circuit’s § 119 discussion is summarized here by Peter Zura or here at Patently-O, but the interesting facet regarding injunction analysis is whether a legal issue can be the substantial question that defeats a plaintiff’s likelihood of success on the merits.  The du Pont district court never decided which priority date applied–rather, it used its uncertainty regarding this legal conclusion to create the "substantial question of validity" and left it unresolved.   

The panel rejected this approach, concluding that, at least when the underlying facts are not in dispute, the legal question should be answered one way or the other:

The facts underlying MacDermid’s arguments, however, are not disputed (i.e., the extent of the overlap of inventorship and the language contained in the non-provisional application referencing the provisional application). The only issue is the legal significance of these facts, i.e. whether the non-provisional application is entitled to claim the priority date of the provisional application. Determination of the priority date (e.g., the effective filing date) is purely a question of law if the facts underlying that determination are undisputed. See Broadcast Innovation, L.L.C. v. Charter Commc’n, Inc., 420 F.3d 1364, 1366 (Fed. Cir. 2005).

Here, the district court gave two reasons why a substantial question of validity was present: (1) DuPont had provided insufficient evidence to show that it was entitled to the priority date of the provisional application and (2) the conflict in DuPont’s statements as to the critical date (initially conceding the effective filing date as that of the non-provisional application but then later arguing that the effective filing date should be that of the provisional application). Neither of these concerns was warranted.

First, it is unclear what necessary evidence the district court thought was missing from the preliminary injunction record. In responding to the motion for preliminary injunction, MacDermid provided the district court with the patent’s prosecution history including the ADS containing the reference to the provisional application, and DuPont’s complaint included as an attachment the certificate of correction which corrected the patent to include a reference to the provisional application. We see no evidentiary deficiency that prevented the district court from resolving this issue.

Additionally, since the facts underlying the priority determination are undisputed, DuPont’s counsel’s conflicting characterization of those facts is immaterial to the legal analysis and cannot serve to create a substantial question of validity. DuPont’s counsel candidly admitted at oral argument in this appeal that the initial concession of a later priority date was based on an oversight, but that the oversight was corrected as soon as it was discovered. Such inconsistent attorney argument standing alone cannot create a substantial question as to a purely legal issue when the undisputed facts necessary to resolve the legal issue are before the court.

We thus conclude that the district court’s reliance on lack of evidence and conflicting attorney argument to find a substantial question of validity was an abuse of discretion. Because the facts that DuPont contends entitle the ’859 patent to the effective filing date of the provisional application are not disputed, we can resolve this question in the first instance. [Emphasis by PATracer]

This excerpt reminded me of another pending preliminary injunction appeal that also turned on a "substantial question" of a legal issue.  In Novo-Nordisk v. Sanofi-Aventis (2008-1225) [which we previously discussed here and here], the court found a substantial question existed based on a complex and hotly contested claim construction issue–and, like the priority issue here, the court didn’t actually construe the claim or resolve this legal issue, but rather used the existence of this dispute to deny the preliminary injunction.  Coincidentally, Judge Mary Cooper (D/NJ) is the district judge in both the du Pont and Novo-Nordisk cases. 

The du Pont panel’s reasoning would seem to apply with equal or greater force to claim construction–a legal issue in which the material facts are almost always before the court in the form of the intrinsic evidence.    

Notes:  The Novo-Nordisk case is on the expedited track.  The appeal was filed in early March, the briefing is already nearly concluded, and the case will be heard in July.  We will have our In Brief post on this case as soon as we get copies of the briefs (as always, we invite our readers to email to us copies of any appeal briefs).

Following what seems to be a trend, the district court stopped its analysis once it found a substantial question of validity and declined to consider any of MacDermid’s other arguments or the other preliminary injunction factors.  Thus, the Federal Circuit could not decide whether an injunction should or should not issue, but instead remanded for the district court to consider these other issues and factors in the first instance.

Documents: 

District Court Order_on_Prelim_Injunction.pdf

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