- BASICS: “A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.” Apple I (Fed. Cir. 05/14/12) (Bryson, J.). “An accused infringer can defeat a showing of likelihood of success on the merits by demonstrating a substantial question of validity or infringement.” Trebro (Fed. Cir. 04/09/14) (Rader, J.) (vacating denial of preliminary injunction to consider balance of equities and public interest; likely irreparable harm where “direct competitor is able to sell an infringing product in the small, niche sod harvester market,” even though patent owner not practicing the patent). “A preliminary injunction is ‘an extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief.’” Id. Challenger has burden of producing evidence of invalidity but “vulnerability is the issue at the preliminary injunction stage, while validity is the issue at trial.” Tinnus Enter. (Fed. Cir. 01/24/17) (aff’g grant of preliminary injunction notwithstanding PTAB final written decision (post Fed. Cir. argument) that claims are indefinite (where defendant did not challenge Magistrate Judge’s finding of no indefiniteness)). [see Tinnus Enter. II (Fed. Cir. 05/30/18) (non-precedential) (rev’g PTAB indefiniteness decision)]; Blephex (Fed. Cir. 02/02/22) (aff’g preliminary injunction; “if the accused infringer presents a substantial question of validity, ‘i.e., asserts an invalidity defense that the patentee cannot prove ‘lacks substantial merit,’ the preliminary injunction should not issue.’” “We review the question of whether a movant has shown a likelihood of success in showing patent validity for abuse of discretion.”); Low Temp Indus. (Fed. Cir. 12/28/21) (non-precedential) (rev’g preliminary injunction ivo substantial question on invalidity); M-I LLC (Fed. Cir. 09/24/15) (non-precedential) (aff’g preliminary injunction in two-competitor market). Apple III (Fed. Cir. 11/18/13) (vacating denial of permanent injunction against Samsung phones and tablets); Broadcom (Fed. Cir. 09/24/08) (aff’g injunction, with sunset provision); see AstraZeneca (Fed. Cir. 11/01/10) (aff’g a preliminary injunction against an ANDA application).
- Possible Grounds For Finding Irreparable Harm Include Price Erosion, Loss Of Goodwill, Damage To Reputation, And Loss Of Business Opportunities: “Price erosion, loss of goodwill, damage to reputation, and loss of business opportunities are all valid grounds for finding irreparable harm.” Celsis in Vitro (Fed. Cir. 01/09/12) (preliminary injunction affirmed); SmartSky Networks (Fed. Cir. 01/31/24) (non-precedential) (aff’g denial of preliminary injunction despite parties being direct competitors where accused 5G network not yet released, evidence indicated any lost sales through trial would be quantifiable, possible presence of non-infringing alternatives that may have taken what sales accused system takes, inadequate evidence of price erosion, patent owner’s continued ability to attract customers and investors, and no evidence of loss of important customers).
- Delay Bringing Suit And Seeking Preliminary Injunction May Or May Not Suggest No Irreparable Harm, And May Be Factor Against Permanent Injunction: “Delay in bringing an infringement action and seeking a preliminary injunction are factors that could suggest that the patentee is not irreparably harmed by the infringement.” Apple I (Fed. Cir. 05/14/12) (aff’g denial of preliminary injunction, in part due to four-year delay). There “may well be reasons for the patent owner’s” postponing suit and not seeking preliminary injunction that do not suggest lack of irreparable harm, “for example, the competitive threat may initially be small, or the merits may be much better presented through full litigation than through abbreviated preliminary-injunction proceedings. But Genband has not justified a per se rule making the patent owner’s choices about when to sue and whether to seek interim relief legally irrelevant.” Genband (Fed. Cir. 07/10/17) (vacating denial of permanent injunction). “While we have held that delay in seeking an injunction is a factor to be considered in determining whether to issue a preliminary injunction, we have never held that failure to seek a preliminary injunction must be considered as a factor weighing against a court’s issuance of a permanent injunction.” Mytee Prod. (Fed. Cir. 09/02/11) (non-precedential) (aff’g permanent injunction).
- Preliminary Injunction May Prevent Future Infringement Even Where Infringement Was The Status Quo: “Preservation of the status quo is not the sole objective of preliminary injunctions. Preliminary injunctions also serve to prevent ongoing trespasses during the pendency of an infringement case.” Blephex (Fed. Cir. 02/02/22) (aff’g preliminary injunction against continued sales of a product that defendant began marketing before filing of continuation application that issued as asserted patent).
- Cited Art May Defeat Preliminary Injunction Especially If Patent Granted Before KSR: Art considered by PTO might raise substantial question of patentability, particularly because patent issued before KSR “changed the state of obviousness law.” Automated Merchandising (Fed. Cir. 12/16/09) (non-precedential).