CAFC Again Vacates Preliminary Injunction: No Likelihood of Success

A G Design v. Trainman Lantern (Fed. Cir. 2008) (nonprecedential)

AG sued Trainman for infringement of its hand-held RR Lantern patent. (US Pat. No. 7,118,245).  The W.D. Washington district court issued a preliminary injunction after hearing an expert report that Trainman’s product was essentially identical to the patented device (except for one claim element).

On appeal the CAFC vacated the preliminary injunction — finding that the lower court had committed legal error in finding that the patentee had “a likelihood of success on the merits.”

Legal Standard for Preliminary Relief: The CAFC nominally applies a four factor standard for determining whether preliminary relief is warranted. However, two factors are requisite and typically determinative: (a) Likelihood of success on the merits and (b) irreparable harm associated without preliminary relief.

Likelihood of Success: A likelihood of success on the merits requires some proof that the defendant “infringes at least one valid and enforceable claim” of the asserted patent. The likelihood of success may be rebutted by an accused infringer who raises a “substantial question” regarding the patent’s validity, enforceability, or whether the accused device infringes the asserted claims.  In a recent case, the a different panel (Judges Rader & Dyk) found the substantial question threshold met by evidence that “cast[s] doubt on the [claim’s] validity.” Erico Int'l v. Vutec & Doc’s Marketing (Fed. Cir. 2008).

Lacking a Claim Element: Because the accused device here lacked a claim element (a ‘plurality of ports’ in the reflector), it could not literally infringe. Likewise, the CAFC found that the ‘plurality of ports’ limitation had been added during prosecution to narrow the claims — presumptively foreclosing infringement by equivalents. (Unless AG can show that the “rationale for the amendment is tangential to the equivalent in question.”).

Validity Questions: The CAFC also found error in the district court opinion because the court did not specifically analyze whether a disclosed prototype included “all of the limitations of any of the asserted claims.”  Instead, for the purposes of the PI, the district court had only noted that the prototype was “different” from the patent claims.

Expired Non-Compete: The parties here have a history including a non-compete agreement that expired during the appeal.  Because it is now expired, the CAFC found that the non-compete could not serve as a basis for preliminary relief.

Notes:

• This should be a precedential opinion.
• Under 28 U.S.C. § 1292(c)(1), the grant or denial of a preliminary injunction is immediately appealable to the Federal Circuit. See, Dennis Crouch, Using Preliminary Injunction Decisions to Seek Immediate Appeal; Dennis Crouch, De-Stabilizing Preliminary Injunctions through De Novo Review of Claim Construction; Dennis Crouch, No Immediate Appeal of PI Contempt Order;  
• Dennis Crouch, As a Matter of Law, Preliminary Injunction Defeated by Casting Doubt on Patent's Validity.
  

 

Comments

[Malcolm Mooney]

It's 2008 and District Courts still struggle with the basics.

Is it the judges, the attorneys, or both?

I can't recall the name offhand, but I believe a CAFC case issued earlier this month where the Court trashed the lower court's opinion for adopting one side's claim constructions and arguments more or less wholesale, and it was pure crap. One can argue that the district court judge should have known better (indeed, I think in that case the district court judge admitted on the record to being clueless about patent law) but the problem is more likely that the attorneys just quote-mined, mis-cited or simply ignored the applicable case law.

Rule 11 exists for a reason. Use it or lose it.

[rules is rules]

Why are these opinions ignoring 3/4 of the factors governing PIs? Couldn't they at least throw a bone to the other 3 but say the liklihood factor outweighs them? It's like they don't even exist.

[Also Anon]

"Rule 11 exists for a reason. Use it or lose it."

Maybe Dennis can post on some of the rather harsh penalties coming out of the district courts related addressing the way patent counsel are trying cases, such as Depuy Spine, Inc. v. Medtronic (penalty of $10M) and the Colorado case it cited...

[examiner#6k]

So let me get this straight if I claim "A headlight comprising a light" and you make a stool then I used to could have obtained a preliminary injunction even though your item doesn't even have a light? Sure this might be an exageration but for pete's sakes we get people to amend the claims here at the office so as to have them exclude subject matter. Some district courts are for the LOL for sure. But frankly some cases are so complicated the everyman who is a judge cannot be expected to understand them. These cases are funny that they even need to be precedential.

[Richard]

Malcolm:

It's both. And it makes you want to tear your hair out.

[Sandeep]

MM,
The case you are referring to is:
LSI Industries v. ImagePoint and Marketing Displays Inc. (MDI); ImagePoint v. Keyser Industries (aka Florida Plastics International) v. MDI (CAFC 2007-1292, -1293, -1294, -1295)

[Also Anon]

Sandeep and MM, I felt like those comments by the CAFC were a form of approval of the actions taken by the district courts I mentioned above (the timing is just too close between all 3). We may be seeing a big change in the way patent cases are litigated.

[Jefferson Coulter]

As the lead counsel on this case, I'd like to think it was the district court judge that didn't get it, but who knows. I'm not sure how much more heavily we could have briefed or argued the issue of prosecution history estoppel. Essentially, the judge just thought they looked the same. Now we are back to the district court to try and resolve this thing, with a great ruling.

[Paul F. Morgan]

The large number of CLEARLY unsustainable District Court patent case decisions reaching the CAFC [many decided per curium] is not just a reflection of judges who are inexperienced with patent cases. It is also due to too many trial counsel presenting any argument that might win a Phyric victory at the trial level by bamboozling the judge, even when they knew, or should know, that it cannot possibly be sustained on appeal, and will likely come back to a judge and client who should now realize that they have been costly mislead by those attorneys. In the past the CAFC has occasionally granted sanctions against attorneys defending clearly frivolous appeal positions in such cases, and ought to do so more often. Clients ought to be paying more attention as well, and getting independent second opinions before proceeding to trial with unsustainable arguments, rather than trying to settle, where that is possible.

[Paul F. Morgan]

Let me make it perfectly clear, even though I believe it was already, that my above comments relate to a general issue, not any particular case.

[examiner#6k]

I would agree with you Morgan but so far I've only seen one such case have something like that happen in my 100 or so that I've dealt with. His appeal is so lolable I have to wonder if he even bothered to read the reference. My examiners answer could be one sentence, less than 10 words, and still be crystal clear.

[examiner#6k]

I should also say that the case I'm referring to happens to be my only appealed case so far.

[WaLaw]

Wanted to post an update on the above case, AG Design v. Trainman Lantern Company (TLC). Judge Ronald Leighton, Fed District Court, Western Washington just issued a ruling GRANTING TLC's patent infringement motion for summary judgment as a matter of law. Part of Judge Leighton's ruling states, "A.G. Design, the patentee, does not, however, present any facts to support this conclusory assertion, resting solely upon the absence of facts. A.G. Design misunderstands the law on this issue." Seems Judge Leighton succeeded where Judge Franklin Burgess failed. Leighton correctly applied the law instead of napping on the bench during the original hearing in 2007! The big winners...the American people and the intellectual property community. The big losers...incompetent attorneys and judges who should make it a point to understand the area of law they're practicing within. Shame on them.