IPR Validity Challenge on Related Patent Prevents Preliminary Injunction

Authored by D. Brian Kacedon, John C. Paul, and David C. Seastrunk

Abstract

A California court denied a preliminary injunction for patent infringement based on an IPR validity challenge filed against the asserted patent and an IPR validity challenge against a related patent that raised serious questions about the validity of the asserted claims.

Patent owners can ask a court to order accused infringers to cease alleged infringing activities during a litigation. Courts will grant one of these motions for a "preliminary injunction" where a patentee successfully demonstrates that they are likely to win the case, and that even after winning, the patent owner will likely be unable to recapture market share, customers, or goodwill lost if the accused infringer is allowed to continue the accused activities.

Recently, in DNA Genotek Inc. v. Spectrum Solutions LLCet al, a patent owner asked the District Court for the Southern District of California to prevent an accused infringer from selling the accused products, arguing that if the accused infringer’s sales continued, it would suffer serious and irreparable losses. The court denied the patentee’s motion, finding that there was a substantial question as to the validity of the patent at issue. In reaching this conclusion, the court relied on the fact that the Patent Trial and Appeal Board ("PTAB") had instituted an Inter Partes Review (IPR) petition on similar claims in another of the patentee’s patents even though the PTAB had not yet instituted an IPR on the actual claims at issue in the case.

Background

DNA Genotek ("DNAG") brought a patent infringement suit against Spectrum Solutions LLC ("Spectrum") in the Southern District of California alleging infringement of a patent related to saliva collection devices for DNA testing. DNAG also asked the court to issue an order for preliminary injunction to prevent Spectrum from selling its allegedly infringing products.

In a different litigation, DNAG accused Ancestry.com ("Ancestry") of infringing a similar patent. Ancestry responded to DNAG’s lawsuit by filing IPR petitions against multiple DNAG patents, including a petition for review of the patent DNAG asserted against Spectrum.

The DNA Genotek Decision

To obtain a preliminary injunction, DNAG must show, among other things, a likelihood of success on the merits, which means that DNAG is likely to win if the case proceeds to trial. If Spectrum raised a substantial question as to the validity of the patent at issue, however, DNAG could not demonstrate such a likelihood of success.

Spectrum argued that the IPR petitions filed by Ancestry raised a substantial question as to the validity of DNAG’s patent. DNAG disagreed, arguing that the IPR petition related to the asserted patent hadn’t even been granted yet. In response, Spectrum pointed to the similarities between the claims in the present case and a separate IPR petition filed by Ancestry on a related DNAG patent, which was already instituted. The court agreed with Spectrum, finding that even though the claims were not identical to the claims under IPR, they were sufficiently similar to raise a substantial question of validity.

Finally, the court found the answer to the likelihood of success question sufficient alone in denying DNAG’s motion, and further, no other factors weighed in favor of granting a preliminary injunction.

Strategy and Conclusion

This order shows that courts may be unwilling to issue orders preventing an accused infringer from continuing allegedly infringing activity where a patent’s validity is called into question by an IPR filing, even where the PTAB has not yet granted the petition for IPR. Parties should consider the possibility of an IPR challenge when evaluating whether to bring a motion for preliminary injunction. Similarly, a prior-filed IPR petition may serve as a useful defense against such motions.

Further Information

The DNA Genotek opinion can be found here.