Is a Preliminary Injunction Ever Proper Parallel to Patent Reexamination?Over the past week I have discussed the interplay between a parallel patent reexamination and requests for a preliminary injunction. On Monday I pointed out that if a request for injunctive relief remains outstanding courts are very reluctant to stay an ongoing litigation pending a parallel patent reexamination. Last week I explained that a defendant’s ability to argue prejudice, to fend off a stay pending patent reexamination, may very well hinge on the pursuit of a preliminary injunction. Left to explore this week is the impact of the parallel reexamination on the preliminary injunction equities ultimately weighed by the court.To date, a parallel patent reexamination has been the “silver bullet” for defeating requests for such preliminary injunctive relief. Yet, as one defendant found out recently, perceived gamesmanship in patent reexamination tactics may re-direct that very same bullet to one’s foot.In the case of Celsis In Vitro Inc., v. CellzDirect Inc., & Invitrogen Corp. (N.D. IL), the court agreed to enter an injunction. In doing so, the court rejected certain invalidity evidence presented by the defendant for purposes of demonstrating that the plaintiff was unlikely to succeed on the merits. Upon losing their argument, the defendant filed a request for inter partes patent reexamination. The request included much more art than was presented to the court.Around the same time, the plaintiff beat the defendant to the punch by using the same art in their own ex parte request. The ex parte patent reexamination request was granted. In view of the same or cumulative art before the USPTO in the ex parte request, the defendant’s inter partes request was denied shortly thereafter. By employing this “first to file” strategy, the plaintiff effectively shut out the defendant from participating in the patent reexamination. (See first to file strategy discussion here)Nevertheless, once a first office action was issued in the ex parte patent reexamination, the defendant sought dissolution/modification of the injunction. The defendant argued that a preliminary injunction has never been maintained in view of a parallel patent reexamination that rejected claims. Yet, this otherwise compelling argument was offset by the perceived bad faith in the defendant’s actions. The court questioned the defendant on the issue as follows:THE COURT:Good morning. I would be remiss, I think, if I didn’t comment that I find defendant’s actions here very troubling. You know, if your — I know you are a newcomer here for this purpose. But if your people wanted to have reexamination of plaintiffs’ ‘929 patent, why wasn’t that done before our hearing and the entry of the preliminary injunction order? That I believe casts a serious cloud on the good faith of the defendants and defense counsel.What is conspicuously absent from this motion to stay is even a whisper of an explanation for doing battle before me, occupying a great deal of time and effort on my part, as well as the part of the litigants, and then when you have lost, tendering the issue of patent validity to the Patent & Trademark Office.And it is not just a matter of lack of consideration for an imposition on what is really — although lawyers don’t think about this a lot — the most limited resource in the justice system, that is, the judge’s time. So before you started to lecture me about something I was well aware, that is, the power to stay and the need for the exercise of discretion, it seems to me I am entitled to an explanation. (Plaintiff’s motion in Opposition to Dissolve or Modify Preliminary Injunction, January 4, 2011)Thereafter, the court did agree to modify the injunction as to certain products already in existence for purposes of inventory liquidation. (order here) However, the court refused to modify the injunction for prospective sales and the manufacture of new product. In other words, based upon the court’s inference of bad faith, the very first defendant was preliminarily enjoined in view of a parallel patent reexamination that rejected asserted claims. (Discussion on permanent injunction equities and parallel patent reexamination here)It may be that the new art in the defendant’s request was more of a response to the “use it or lose it” estoppel provision of inter partes patent reexamination (as opposed to a lack of bad faith). Still, delaying the filing of a patent reexamination parallel to patent litigation rarely makes sense.This case was brought to my attention by the great Docket Navigator.
Over the past week I have discussed the interplay between a parallel patent reexamination and requests for a preliminary injunction. On Monday I pointed out that if a request for injunctive relief remains outstanding courts are very reluctant to stay an ongoing litigation pending a parallel patent reexamination. Last week I explained that a defendant’s ability to argue prejudice, to fend off a stay pending patent reexamination, may very well hinge on the pursuit of a preliminary injunction. Left to explore this week is the impact of the parallel reexamination on the preliminary injunction equities ultimately weighed by the court.
To date, a parallel patent reexamination has been the “silver bullet” for defeating requests for such preliminary injunctive relief. Yet, as one defendant found out recently, perceived gamesmanship in patent reexamination tactics may re-direct that very same bullet to one’s foot.
In the case of Celsis In Vitro Inc., v. CellzDirect Inc., & Invitrogen Corp. (N.D. IL), the court agreed to enter an injunction. In doing so, the court rejected certain invalidity evidence presented by the defendant for purposes of demonstrating that the plaintiff was unlikely to succeed on the merits. Upon losing their argument, the defendant filed a request for inter partes patent reexamination. The request included much more art than was presented to the court.
Around the same time, the plaintiff beat the defendant to the punch by using the same art in their own ex parte request. The ex parte patent reexamination request was granted. In view of the same or cumulative art before the USPTO in the ex parte request, the defendant’s inter partes request was denied shortly thereafter. By employing this “first to file” strategy, the plaintiff effectively shut out the defendant from participating in the patent reexamination. (See first to file strategy discussion here)
Nevertheless, once a first office action was issued in the ex parte patent reexamination, the defendant sought dissolution/modification of the injunction. The defendant argued that a preliminary injunction has never been maintained in view of a parallel patent reexamination that rejected claims. Yet, this otherwise compelling argument was offset by the perceived bad faith in the defendant’s actions. The court questioned the defendant on the issue as follows:
THE COURT:Good morning. I would be remiss, I think, if I didn’t comment that I find defendant’s actions here very troubling. You know, if your — I know you are a newcomer here for this purpose. But if your people wanted to have reexamination of plaintiffs’ ‘929 patent, why wasn’t that done before our hearing and the entry of the preliminary injunction order? That I believe casts a serious cloud on the good faith of the defendants and defense counsel.
What is conspicuously absent from this motion to stay is even a whisper of an explanation for doing battle before me, occupying a great deal of time and effort on my part, as well as the part of the litigants, and then when you have lost, tendering the issue of patent validity to the Patent & Trademark Office.
And it is not just a matter of lack of consideration for an imposition on what is really — although lawyers don’t think about this a lot — the most limited resource in the justice system, that is, the judge’s time. So before you started to lecture me about something I was well aware, that is, the power to stay and the need for the exercise of discretion, it seems to me I am entitled to an explanation. (Plaintiff’s motion in Opposition to Dissolve or Modify Preliminary Injunction, January 4, 2011)
Thereafter, the court did agree to modify the injunction as to certain products already in existence for purposes of inventory liquidation. (order here) However, the court refused to modify the injunction for prospective sales and the manufacture of new product. In other words, based upon the court’s inference of bad faith, the very first defendant was preliminarily enjoined in view of a parallel patent reexamination that rejected asserted claims. (Discussion on permanent injunction equities and parallel patent reexamination here)
It may be that the new art in the defendant’s request was more of a response to the “use it or lose it” estoppel provision of inter partes patent reexamination (as opposed to a lack of bad faith). Still, delaying the filing of a patent reexamination parallel to patent litigation rarely makes sense.