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Patent Law: The Patent Prospector
By Gary Odom and Jordan Kuhn
Novo Nordisk sued Sanofi-Aventis for infringing 7,241,278. Novo then motioned for a preliminary injunction. Denied. Affirmed on appeal because Novo "failed to show a reasonable likelihood of success on the merits." Sanofi had "raised substantial questions," including whether claim construction would go Novo's way. In other words, in order to get a preliminary injunction, the plaintiff has to demonstrate a clear-cut case, while the defendant merely has to raise doubt.
Novo Nordisk v. Sanofi-Aventis (CAFC 2008-1225) non-precedential
In order to obtain a preliminary injunction, a patentee must show: "(1) reasonable likelihood of success on the merits; (2) irreparable harm; (3) that the balance of hardships tips in its favor; and (4) the impact of the injunction on the public interest." Jack Guttman, Inc. v. Kopykake Enters., 302 F.3d 1352, 1356 (Fed. Cir. 2002). The denial of a preliminary injunction pursuant to 35 U.S.C. § 283 is within a district court's discretion. Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1997). We will reverse such a decision only when an appellant demonstrates that the "factors relied on by the district court [were] clearly erroneous" and "that a denial of the preliminary relief sought would amount to an abuse of the court's discretion upon reversal of an erroneous finding." New Eng. Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878, 882 (Fed. Cir. 1992).
Sanofi had argued noninfringement based on its general interpretation of the asserted claims in light of the specification.
The district court ultimately found that these substantial questions precluded a finding that Novo has a likelihood of success on the merits and, accordingly, denied Novo's motion for a preliminary injunction. Id. at 38, 40.
In light of this apparent conflict between the specification and the claims, the district court appropriately exercised its discretion in concluding that Novo has not established a likelihood of success on the merits.
Moreover, notwithstanding Novo's arguments to the contrary, we read the district court's opinion as generally addressing whether Sanofi raised "substantial questions," rather than specifically articulating a claim construction. While it is true that many of the substantial questions identified by the district court would ultimately be analyzed in the context of construing the claims, some might more appropriately be analyzed in the context of validity (i.e., written description and enablement). See, e.g., Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357, 1372 (Fed. Cir. 2002) ("[W]here claim language is clear we must accord it full breadth even if the result is a claim that is clearly invalid."). At the preliminary injunction stage, however, it is irrelevant whether this case presents greater issues of claim construction or validity--the existence of one or both of these issues is sufficient to justify the district court's decision to deny a preliminary injunction. As this court previously explained in a similar situation:
Cases such as this one, in which predecessor applications or patents were drawn to narrow claims and in which the claims in the successor application are arguably broader than the invention described in the specification, present difficult questions of both claim construction and validity. Where the applicant expressly and unambiguously states his intention to claim broadly, the claim construction issue is easier and the question becomes one of validity--whether the specification supports the full breadth of the new claims. On the other hand, where--as in this case--the patentee has not been explicit about the scope of the new claims, the case can pose interdependent problems of both claim construction and validity.
Saunders Group, Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1335-36 (Fed. Cir. 2007).