Intellectual Property Law

Denial of injunction against sending letters asserting infringement affirmed

By McKee, Voorhees & Sease, P.L.C.

In a decision Tuesday, the Federal Circuit affirmed the denial of a preliminary injunction seeking to prevent a patentee from representing to the defendant's customers that the defendant's product potentially infringed the plaintiff's patent.  The patent at issue had a lengthy and complicated prosecution history that included an interference proceeding.  In that proceeding, the BPAI ruled another party properly had priority in the invention.  The patentee filed an action pursuant to § 146, and the parties eventually settled, with the party that prevailed at the BPAI conceding priority and receiving a license under the patent.  In another proceeding in which the patentee was not a party, a district court held that the patentee had abandoned, suppressed, or concealed his invention.

The defendant argued that because of the issues relating to priority and abandonment, suppression, and concealment (as well as inequitable conduct issues), the plaintiff's assertions of infringement were in bad faith, and sought an injunction to prevent the plaintiff from representing to the defendant's customers that its products potentially infringed.  The district court rejected this, finding the four-factor test did not warrant an injunction.

The Federal Circuit affirmed, finding the action not objectively unreasonable, as the case was not so clear-cut to make the district court's decision an abuse of discretion.  However, while the court noted the defendant's chances on appeal were "slim," the appeal was not "clearly hopeless," and declined to award the plaintiff its fees for the appeal.

More detail of Judkins v. HT Window Fashion Corp. after the jump.

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Full post as published by FileWrapper on April 10, 2008 (boomark / email).