Denial of a Preliminary Injunction Affirmed in a Design Patent Case Because Plaintiff Failed to Demonstrate Likelihood of Success in Withstanding Validity Challenge
June 03, 2009
Last Month at the Federal Circuit - July 2009
Judges: Newman, Plager (author), Gajarsa
[Appealed from: S.D. Iowa, Judge Gritzner]
In Titan Tire Corp. v. Case New Holland, Inc., No. 08-1078 (Fed. Cir. June 3, 3009), the Federal Circuit affirmed the trial court’s denial of a preliminary injunction because The Goodyear Tire & Rubber Company and Titan Tire Corporation (collectively “Titan”) failed to demonstrate a likelihood of success on the merits.
Titan sued Case New Holland, Inc., CNH America LLC, and GPX International Tire Corporation (collectively “Case”) for infringing U.S. Design Patent No. 360,862 (“the ’862 patent”), which claims a design for a tractor tire. The trial court denied Titan’s motion for a preliminary injunction because Titan failed to establish a likelihood of successfully withstanding Case’s obviousness challenge to the ’862 patent.
On appeal, the Federal Circuit noted that the extraordinary relief of a preliminary injunction is a matter largely within the discretion of the trial court. Slip op. at 4-5. For a preliminary injunction to be granted, a plaintiff must establish four factors: (1) likelihood of success on the merits, (2) likelihood of irreparable harm in the absence of preliminary relief, (3) the balance of equities tips in plaintiff’s favor, and (4) an injunction is in the public interest. Id. at 4. To establish likelihood of success on the merits in a patent case, the patentee “must show that it will likely prove infringement, and that it will likely withstand challenges, if any, to the validity of the patent.” Id. at 5. The Court acknowledged that a patent enjoys the same presumption of validity during preliminary injunction proceedings as at other stages of litigation. At the preliminary injunction stage, however, the patentee must persuade the court that, despite any challenge presented to validity by the alleged infringer, the patentee nevertheless is likely to succeed at trial on the validity issue.
The Federal Circuit noted that a trial court’s task is to examine the alleged infringer’s evidence of invalidity, consider rebuttal evidence presented by the patentee, and determine whether the patentee can show that the invalidity defense “lacks substantial merit.” If the trial court concludes that the alleged infringer has presented an invalidity defense that the patentee has not shown lacks substantial merit, then the patentee has not succeeded in showing a likelihood of success.
The Court stated that the determination should be based on “whether it is more likely than not that the challenger will be able to prove at trial, by clear and convincing evidence, that the patent is invalid.” Id. at 12. The Court stated that a design patent is invalid based on the nonobviousness requirement of 35 U.S.C. § 103 when “one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design.” Id. at 14 (citing Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996)). The Court found that the primary and secondary references presented by Case were sufficient for the trial court to conclude that Titan was unlikely to withstand Case’s challenge to the validity of the ’862 patent on obviousness grounds. Accordingly, the Federal Circuit held that the trial court did not abuse its discretion by denying the preliminary injuction.
Summary authored by Eli Mazour, student associate at Finnegan.