United States: E.D. Va. Requires Patentee To Make A "Clear Showing" For Preliminary Injunction

Following what arguably can be characterized as Supreme Court dictum, the district court in PRE Holding, Inc. v. Monaghan Med. Corp., 2009 WL 3874171 (E.D. Va. Nov. 17, 2009), denied a patentee's motion for a preliminary injunction because the patentee failed to make a "clear showing" of entitlement to relief. The ruling may signal a significant raising of the evidentiary bar a patentee must surmount to obtain a preliminary injunction.

To demonstrate entitlement to a preliminary injunction in a patent case, a patentee "must establish [1] that he is likely to succeed on the merits, [2] that he is likely to suffer irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in his favor, and [4] that an injunction is in the public interest.'"¹ For years the Federal Circuit has held that a patentee need only make a reasonable showing of a likelihood of success in proving infringement and surviving any challenges to the patent's validity and enforceability.² According to the Federal Circuit, to show a likelihood of success on the merits, a patentee need only show a "reasonable probability" that it can prevail in proving infringement.³ The patentee does not need to show "that infringement [can] be proved beyond all question, or that there be no evidence supporting the viewpoint of the accused infringer."⁴ The Federal Circuit has also instructed that at the preliminary injunction phase the movant "need not present sufficient evidence to be entitled to summary judgment in its favor."⁵ Consequently, Federal Circuit law does not require a patentee to make a "clear showing" that it can prove infringement to obtain a preliminary injunction. In fact, the Federal Circuit has held that a patentee need not make a "strong" or "clear" showing of likelihood of success on the merits to prevail, unless the patentee attempts to invoke the presumption of irreparable harm.^6,7

Despite the foregoing, the district court in PRE Holding construed Winter v. Natural Resources Defense Council, Inc., 129 S. Ct. 365 (2008), as requiring that for all preliminary injunctions, a movant must make a "clear showing" as to each of the four factors. The district court noted that in Winter "the Chief Justice, speaking for the Court, emphasized that 'injunctive relief [is] an extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief.'" 2009 WL 3874171, at *3. Applying this view of Winter, the district court further explained that its "initial task entails a careful assessment of the evidence and record to determine whether Plaintiffs have demonstrated a likelihood of both success on the merits and proof of consequent irreparable harm in the absence of preliminary injunctive relief. To warrant such extraordinary relief, Plaintiffs must make a 'clear showing' of entitlement. And all four requirements for preliminary injunctive relief must be satisfied." Id. at *4.

Considering the patentee's showing as to infringement, the district court noted that the patentee and accused infringer each presented expert testimony with divergent views as to whether the structural characteristics of the accused product infringed. Id. at *4. Further, the court noted that a "[f]inal resolution of this case-dispositive dispute will require more detailed claim construction[.]" Id. Considering the overall evidence, the district court found that "[w]hile the evidence appears to tilt in Plaintiffs' favor, the Court must conclude at this preliminary stage that the evidence, when collectively viewed, still raises a substantial question as to whether [certain structural features in the accused product] are sufficiently similar structurally [to the asserted patent] to warrant a finding of infringement." Id. Instead of addressing whether the evidence that tilted in the patentee's favor showed a "reasonable probability" that the patentee could prevail on proving infringement, the district court held that the patentee failed to make a "clear showing" of infringement. Citing to a Fourth Circuit opinion,⁸ the district court stated:

Id.

The district court applied the same "clear showing" requirement to the patentee's proof of irreparable harm. The court found that "Plaintiffs' evidence demonstrates that it may suffer potential harm from Defendants' alleged infringement, but Plaintiffs have failed to clearly prove such harm is likely or that it is irreparable." Id. at *5.

In light of the patentee's failure to make a "clear showing" of a likelihood in proving infringement and "clearly prove" irreparable harm, the district court denied the motion for the preliminary injunction. Id. at *5.

The district court's application of a "clear showing" requirement, when closely securitized, appears questionable. Supreme Court precedent regarding the treatment of dicta instructs that "[i]t is to the holdings of our cases, rather than their dicta, that we must attend[.]"⁹Thus, opinions should be cited for what the court did, and not just what the court said.¹⁰ The Court has cautioned that "[o]n occasion, a would-be doctrinal rule or test finds its way into our case law through simple repetition of a phrase—however fortuitously coined."¹¹ For the reasons that follow, the "clear showing" language in Winter is arguably such dictum.

In Winter, the Supreme Court overturned a grant of a preliminary injunction where the intermediate appellate court had ruled that a movant meets the irreparable harm factor if it merely shows that there is a "possibility" it will suffer irreparable harm without the injunction. Rejecting this standard for being "too lenient," the Supreme Court ruled that a movant must show that irreparable harm is "likely" without the injunction, not just show a mere "possibility" of irreparable harm.¹² In explaining its holding, the Court stated:

Notably, the Winter court did not apply a "clear showing" standard in overturning the underlying decision. Thus, the "clear showing" language is dicta.

Furthermore, in Winter, the Court cited a per curiam opinion, Mazurek, as the only support for the "clear showing" sentence.¹⁴ In Mazurek, the Court, quoting a leading civil procedure treatise stated: "'It frequently is observed that a preliminary injunction is an extraordinary and drastic remedy, one that should not be granted unless the movant, by a clear showing, carries the burden of persuasion.'" While the court did add the italics emphasis to the "clear showing" language, the context of Mazurek shows that the "clear showing" language was dicta. The Court made the statement as part of faulting the movant for failing to introduce any evidence to show a necessary element of its claim. The issue in Mazurek was not whether the movant made a "clear showing" as opposed to a "reasonable probability" showing, but whether it made any showing at all. Thus, even in Mazurek the "clear showing" language is dicta. Additionally, the Supreme Court has instructed that it will exercise a "customary refusal to be bound by dicta" especially in a per curiam disposition that lacks the full reasoned consideration of a full opinion.¹⁵ As noted above, Mazurek is a per curiam opinion.

Hence, the district court's extracting a "clear showing" requirement from Winter in PRE Holding seems suspect. Additionally, other Supreme Court opinions state that the movant's burden on a motion for a preliminary injunction is to show a "probability of success"¹⁶ or that the movant is "likely" to prevail.¹⁷ Indeed, the Supreme Court has acknowledged that "[i]f complainants in every case must understand that a motion for preliminary injunction requires the same showing as on final hearing very few motion of that sort would be made."¹⁸ Imposing a "clear showing" standard, which arguably imposes a greater standard of proof than the "preponderance of the evidence" standard that applies to prove infringement at trial,¹⁹ seems contrary to these established precedents.

Should other courts, including the Federal Circuit, follow the "clear showing" standard of PRE Holdings, patentees will face even greater difficulties in proving entitlement to a preliminary injunction. Hence, practitioners should keep an eye on this case, especially if it makes its way to the Federal Circuit.

The foregoing first appeared in the December 2009 issue of Patent Happenings available at www.PatentHappenings.com. Other case summaries from that issue include:

• Eastern District of Texas now applying a more main-stream view on transferring patent infringement actions
  
• Tafas saga concludes, but Federal Circuit may have raised roadblocks for future litigants to obtain vacatur as part of settling a patent litigation
  
• Federal Circuit rules that unclaimed effectiveness level could not save method claim from a finding of anticipation
  
• While excluding evidence of pending reexamination proceeding under F.R.E. 403, district court also excludes evidence of the "presumption of validity"
  

About the Author

Robert A. Matthews, Jr. (www.matthewspatentlaw.com/) provides patent-law consulting services to corporate counsel and trial counsel. Specifically, he helps counsel analyze and brief the myriad of substantive and procedural legal issues arising in patent infringement litigations. Matthews authors the Annotated Patent Digest (www.matthewspatentlaw.com/pages/matthews_patent_law_annotated_patent_digest.htm), an eight-volume patent treatise published by West and available on Westlaw, the Patent Jury Instruction Handbook (www.matthewspatentlaw.com/pages/matthews_patent_law_patent_jury_instructions.htm), and the monthly newsletter Patent Happenings®. Matthews has assisted clients with patent matters before the U.S. Supreme Court (KSR and Bilski), the Federal Circuit, the ITC and numerous federal district courts.

To view Patent Happenings, December, 2009 in full please click here (www.matthewspatentlaw.com/documents/PH-2009-12.pdf).

Footnotes

^{1.Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375-76 (Fed. Cir. 2009) (quoting Winter v. Natural Res. Def. Council, Inc., 129 S.Ct. 365, 374 (2008)). See generally, Robert A. Matthews, Jr., Annotated Patent Digest § 32:21 Four Factors to be Considered [hereinafter APD]. The Federal Circuit has further noted that "some cases state the first factor as requiring a 'reasonable' likelihood of success on the merits. It is not clear whether the addition of 'reasonable' adds anything substantive to the test, but in any event, for our purposes the Supreme Court's current statement of the test [in Winter] is the definitive one." Titan, 566 F.2d at 1376.}

^{2. See generally, APD § 32:27 Patentee Must Show Likelihood of Prevailing on Infringement, Validity and Enforceability.}

^{3.H.H. Robertson Co. v. United Steel Deck, Inc., 820 F.2d 384, 390 (Fed. Cir. 1987). See also APD § 32:28 Specifics of Showing Likelihood of Establishing Infringement.}

^{4.H.H. Robertson, 820 F.2d at 390.}

^{5.New England Braiding Co. Inc. v. A. W. Chesterton Co., 970 F.2d 878, 882-83 n.4 (Fed. Cir. 1992).}

^{6.Roper Corp. v. Litton Systems, Inc., 757 F.2d 1266, 1271 n.5 (Fed. Cir. 1985) (noting the differences between a "strong" showing needed to invoke the presumption of irreparable harm and the "reasonable" showing needed while proving irreparable harm and stating "A showing of a 'reasonable likelihood of success' on validity and infringement is sufficient, when coupled with separate showings of irreparable injury, favorable balance of injury, and the public interest, to justify the grant of a motion for preliminary injunction against patent infringement.").}

^{7.Whether the presumption of irreparable harm remains a viable legal doctrine is a hotly debated issue. See generally, APD § 32:64 Questions Regarding Legality of the Presumption. As discussed in the subsection entitled "Death of the Presumption of Irreparable Harm" in the article The Restricted Scope of Patent Infringement Remedies Available to Non-Practicing Patent Owners, Robert A. Matthews, Jr, IP Litigator, July/Aug 2009 (available here), the Supreme Court cases of Amoco, Winter, eBay, and Nken cast significant doubt that a court can presume irreparable harm just because the movant makes a strong showing of a likelihood of success on the merits. But see Powell v. Home Depot U.S.A., Inc., 2009 WL 3855174, *13-*14 (S.D. Fla. Nov. 17, 2009) (magistrate judge opining, in dictum, that the presumption of irreparable harm for preliminary injunctions in patent infringement actions survived eBay, but not addressing Amoco, Winter, or Nken).}

^{8.The Federal Circuit applies its own law, rather than regional circuit law, as to the standards for granting a preliminary injunction under 35 U.S.C. § 283 to enjoin acts of patent infringement. Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1451 n.12 (Fed. Cir. 1988). See generally, APD § 32:4 Application of Federal Circuit Law.}

^{9.Kokkonen v. Guardian Life Insurance Co. of America, 511 U.S. 375, 379 (1994). See generally, APD § 2:13 Dictum Limits Scope of What is Binding.}

^{10.Illinois Tool Works, Inc. v. Grip-Pak, Inc., 906 F.2d 679, 684 n.5 (Fed. Cir. 1990) ("[I]t is inappropriate to quote mere language from a court opinion, while disregarding the actual holding of the court and the factual pattern which gave rise to the quoted language.").}

^{11.See Lingle v. Chevron, 544 U.S. 528, 531 (2005).}

^{12.129 S. Ct. at 375-76.}

^13.Id.

^{14.Mazurek v. Armstrong, 520 U.S. 968, 972 (1997) (per curiam).}

^{15.U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, 513 U.S. 18, 24 (1994).}

^{16.Pharmaceutical Research and Manufacturers of Am. v. Walsh, 538 U.S. 644, 670 (2003) (affirming reversal of a preliminary injunction because petitioner failed to carry its burden of "showing a probability of success on the merits of its claim")}

^{17.Ashcroft v. Am. Civil Liberties Union, 524 U.S. 656, 666 (2004) ("In deciding whether to grant a preliminary injunction stage, a district court must consider whether the plaintiffs have demonstrated that they are likely to prevail on the merits." – affirming preliminary injunction enjoining enforcement of statute because district court did not abuse its discretion in finding that the statute likely violated that First Amendment). See also Doran v. Salem Inn, Inc., 422 U.S. 922, 932 (1975) (clarifying that the district court should not have spoken in terms of the plaintiff actually proving success but in the context of the preliminary injunction motion referred to the likelihood that the plaintiff would ultimately prevail)}

^{18.Brill v. Peckham Motor Truck & Wheel Co., 189 U.S. 57, 63 (1903).}

^{19.See generally, APD § 9:8 Patentee's Burden of Proving Infringement.}

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