By Dennis Crouch
Sciele Pharma v. Lupin (Fed. Cir. 2012)
In a December 2011 order, the Delaware district court awarded preliminary injunctive relief to Sciele and Shionogi and forcing Lupin to stop selling generic versions of the patentee's diabetes drug Fortamet (metformin). After an emergency motion, the district court refused to stay relief pending appeal. Based upon a separate emergency motion, the Court of Appeals for the Federal Circuit has now vacated the preliminary injunction and remanded the case for a new hearing.
Pre-hearing motions to the Federal Circuit are normally decided by a designated motions judge. Typically, the Federal Circuit judges rotate through that position on a monthly basis. Simple procedural motions are pushed-down to the clerk to handle. At times, more complex motions are pushed-up to the merits panel who will hear the substantive portion of the case. Motions for emergency stay of injunctive relief are typically in the latter category being pushed to the merits panel because judging the motion typically requires a substantive review of the merits of the appeal. In this case, Judges Lourie, Prost, and Moore decided the motion.
Under the Federal Rules of Civil Procedure, a losing party has a right to delay (stay) payment of monetary damages pending appeal of the decision. That right, however, does not extend to staying an order for injunctive relief. Thus, in those cases the losing party must file emergency motions for a stay pending appeal.
Along the lines of eBay, appellate courts apply a four factor test to determine whether to issue a stay of injunctive relief pending appeal. The party requesting the stay must show (1) a likelihood of success on the merits of the appeal; (2) that the requesting party will suffer irreparable injury absent a stay; (3) that the stay will not unduly harm other parties interested in the proceeding; and (4) that a stay serves the public interest. The Federal Circuit has held that either of the first two factors can be (and often are) dispositive. Namely, the court has held that the party can be awarded a stay based upon either (1) a strong likelihood of success on the merits of the appeal or (2) a substantial case on the merits coupled with harm factors that "militate in its favor."
Here, the district court had rejected the defendant's obviousness argument but did not make any proper finding of facts or conclusions of law regarding that argument. On appeal, the Federal Circuit held that the district court should have made "an independent assessment" of the obviousness defense and that failure prevents the Federal Circuit from "engaging in a meaningful review of the issue." As such the court vacated and remanded "for a proper analysis."
In the separate decision of Midtronics v. Aurora Performance (Fed. Cir. 2012), the Federal Circuit has also awarded an emergency stay of relief pending appeal. In the Midtronics case, Judge Shadur of the Northern District of Illinois ordered the adjudged infringer to issue a general recall of its battery testing devices and pay end users to return the infringing product. BPPower appealed and also requested an emergency stay of the order pending resolution of the appeal. Without substantive opinion, the same panel of Judges Lourie, Prost, and Moore issued a stay of relief pending the outcome of the appeal.