Intellectual Property Law

It?s Very Difficult to Get a Preliminary Injunction in a Patent Infringement Case

By Lee Gesmer

When you can prove that you likely are the victim of copyright or trademark infringement, or trade secret misappropriation, you have a good shot at getting a preliminary injunction (if you can afford the bond). That’s because there is a legal “presumption” of irreparable harm associated with these types of IP claims. Prove likelihood of success and you are well on your way to establishing irreparable harm.

But, this is not true in patent cases. It’s quite difficult to get a preliminary injunction in a patent infringement case. Its always been hard, and its getting harder. After all, in 2006 the Supreme Court held that injunctions are far from a sure thing, even if you win a patent infringement case on the full merits (after trial). eBay v. MercExchange [link].

Many courts (although not the Federal Circuit Court of Appeals, which holds almost all of the big mojo when it comes to patent matters, trumpted only by SCOTUS), has not explicitly held that MercExchange applies to preliminary injunctions, but it makes sense that it should, and a number of district courts have so held.

Printguard, Inc. recently discovered how hard it is to get a preliminary injunction in a patent infringement case in a case it brought against Anti-Marketing Systems, Inc. in the District of Massachusetts. Our District’s newest addition to the federal bench, Judge F. Dennis Saylor, IV, rejected the motion on the ground that the defendan had raised a “substantial question” as to the validity of the patent - in this case the validity of the patent due to obviousness. In a well-reason opinion Judge Saylor didn’t even reach the thorny question of irreparable harm, which might have provided an alternative basis altogether for denying the motion.

Of course, the case goes on, and Printguard has appealed Judge Saylor’s decision.

Full post as published by Mass Law Blog on February 20, 2008 (boomark / email).