The Federal Circuit clarifies injunction requirements in patent cases.

In Titan Tire Corporation v. Case New Holland, Inc, Case no. 208-1078 (June 3, 2009), the Court of Appeals for the Federal Circuit clarified confusing language from prior cases—or did it? The District Court had refused the injunction notwithstanding finding that irreparable harm, the balance of harms and the public interest favored a preliminary injunction. Why? Because the plaintiff was not likely to withstand a challenge to the validity of the patent.   Clarification was required because prior cases held that where the alleged infringer raises a substantial question of invalidity, the patentee must show that the alleged infringer’s defense lacks substantial merit, a formulation that “leaves room for different interpretations.” 

The court held that the “raises a substantial question” phrase referred to a conclusion to be reached by the trial court after considering evidence on both sides rather than a burden of production procedural step before the conclusion was reached, yet the ultimate question “remains that of the patentee’s likelihood of success on the merits” because “there is no room for making the substantial question test a substitute or replacement for the established test for injunctions. That test places the burden on the plaintiff to prove likelihood of success.”

Further clarification issued to ensure that the “substantial question” standard regarding invalidity should not be confused with the “substantial evidence” standard by which jury verdicts and administrative law matter were reviewed. The latter is not the evidentiary test to decide whether to grant or deny a preliminary injunction.

Finally, the infringer does not need to prove invalidity by clear and convincing evidence at the preliminary injunction stage, while it will have to meet that standard at the trial on the merits. Yet the trial court must keep this standard in mind at the preliminary injunction stage. “This decision process, which requires the court to assess the potential of a ‘clear and convincing’ showing in the future, but in terms of what is ‘more likely than not’ presently, rests initially in the capable hands and sound judgment of the trial court.”

Is everyone clear now?