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In presenting its case, the plaintiff should draw forth and produce all the information it has in support of the previously stated patent preliminary injunction requirements. Title, of course, is casily proven. Validity, infringement, and irreparable harm likewise should not be difficult to prove. If they are, then plaintiff should not be seeking preliminary relief. A series of precise requests for admissions to the defendant may well make the plaintiff's presentation easier and less complex. For example, if the defendant admits infringement of the patent, the plaintiff may then concentrate on maintaining patent validity. Admissions of infringement in preliminary requests have occurred in the past. 128

CONCLUSION The award of preliminary injunctive relief in patent cases appears to be much more frequent than is popularly believed. Regretably, the overriding consideration in filing for preliminary relief is in the selection of the forum. Upon a review of twenty-five years of patent cases wherein preliminary injunctions were sought, it is the authors' belief that such a distinct difference between the circuits does substantial harm to the overall fairness advocated by Equity. It is also the authors' contention that the vast differences between, for example, the Second and Fifth Circuits in the percentage of decrees of preliminary relief, injures the meaning of law. There will be a race in the future between patentees who seek Fifth Circuit injunctive relief and defendants who seek Second Circuit declaratory judgments. Thus, justice will take a backseat to tactics and opportunity. Although we operate under a system of government which sought to eliminate “Balkanism,” we can certainly say, based on the 25-year survey, that such a state now reigns among the circuits, at least regarding the allowance or denial of preliminary patent requests.

126 FED. R. CIV. P. 86(b).

In the spirit of having a single national sct of standards for the analysis of patent preliminary relief, it is the authors' position that that single standard of proof should be "beyond a reasonable doubt” as to the title requirement, and “beyond question” as to validity and infringement. Such standards correspond with the majority of United States District case law. Meeting these burdens of proof should be the goal an attorney strives for, while a judge should keep them all at the forefront of his mind in deciding whether to award preliminary relief to enjoin patent infringement.

The results of the 25-year survey indicate that one moving for a preliminary injunction must demonstrate to the court that he has title, that the patent is valid and infringed, that he will suffer irreparable injury should the injunction not issue, and that the balance of equities tips in his favor. In the presentation of cach of these elements, equities appear to be invaluable and the movant should endeavor to offer to the court all that can be gleaned from the facts of the dispute.

The defendant, on the other hand, must demonstrate that the balance of hardships tips against him and thus indicate that the hardship in not preventing irreparable injury to the movant is outweighed by the concomitant harm to the defendant should the preliminary injunction issue. Defenses which would move the court to declare the patent invalid or refuse to enforce the patent should also be vigorously set forth.

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A 25-Year Survey (January, 1953–September, 1978)

© Burton & Dorr 1978

Breakdown By Circuit
DISTRICT COURT

CIRCUIT COURT*
Total Pre. Pre. Inj. Pre. Inj. Percent Upheld Vacated
Circuit Inj. Cases Granted Denied Granted G D G D

Aff'd
1

2
1
1

50%
2
25

3
22
12%

0%
3

5
1
4

20% 4

3
0
3

0%
5

7
6
1
86% 2

100% 6

1 1 0

100% 7 4

1
75% 1

50%
8

1
1
0
100%

0 %
9

5
5
0
100%

50%
10

0
0

0
D.C.

1
1
0

100%
TOTALS: 51

22 32 4 2 5 0

55%**

Total %
Granted
50%

8%
20%

n%
86%
100%
25%
0%

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417

329

* G and D indicate the number of preliminary injunctions granted or denied which were either upheld or vacated on appeal.

** 44% of granted preliminary injunctions which were appealed were affirmed (4 of 9), while 100% of preliminary injunctions denied were affirmed on appeal (2 of 2).

TABLE 2

Circuit

1st 2nd 3rd 4th 5th 6th 7th 8th 9th 10th D.C.

PATENT PRELIMINARY INJUNCTIONS

A 25-Year Survey
(January, 1953 - September, 1978)

© Burton & Dorr 1978
Burden of Proof Requirements
Validity

Infringement Beyond Question 1 Beyond Question 1 Beyond Question ?

Beyond Question ?
Beyond Question 3 Reasonably Likely'
Beyond Question

Beyond Question
Beyond Question

Beyond Question
Very Probably ?

Very Probably 8
Strong Probability Strong Probability'

Reasonably Clear 10 Beyond Question 11

Beyond Question 11 Beyond Question 12

Beyond Question 13

In circuits where no cases within the 25 year period examined were found to espouse the burden of proof requirements, resort was had to pre-1953 cases.

1 Leavitt v. The McBee Co., 124 F.2d 938, 939, 62 U.S.P.Q. 193, 194 (1st Cir. 1942); Heyman Manufacturing Co., v. Electrix Corp., 200 F. Supp. 217, 131 U.S.P.Q. 387 (D. R.I. 1961).

2 Simpson Bros., Inc. v. Blancard & Co., 22 F.2d 498, 499 (2d Cir. 1927); Coleco Industries, Inc. v. Empire Plastic Corp., 169 U.S.P.Q. 94 (S.D.N.Y. 1971); H. Kohnstamm & Co. v. Allied Chemical Corp., 182 U.S.P.Q. 360 (S.D.N.Y. 1973). Espousing different standards are: Owens v. American Stereographic Corp., 116 F. Supp. 406, 99 U.S.P.Q. 157 (S.D.N.Y. 1953) (infringement must be "reasonably clear" and and patent validity must be shown by “clear and convincing' evidence); Tyrolean Handbag Co. v. Empress Hand Bag, Inc., 122 F. Supp. 299, 102 U.S.P.Q. 382 (S.D.N.Y. 1954) (patent validity must be shown by “clear and convincing" evidence); Marshall Metal Products, Inc. v. Aghnides, 126 F. Supp. 850, 103 U.S.P.Q. 176 (S.D. N.Y. 1954) (both infringment and patent validity must be shown by “clear and convincing" evidence); Singer Manufacturing Co., v. Better Service Sewing Machine Co., 131 F. Supp. 146, 105 U.S.P.Q. 190 (S.D.N.Y. 1955) (patent validity must be shown by “clear and convincing" evidence); Loctite Corp. v. B. Jadow & Sons, Inc., 177 U.S.P.Q. 410 (S.D.N.Y. 1973) (preliminary injunction will not issue in a patent infringement suit "except when the patent is clearly found to be valid and infringed").

8 Standard Paint Co. v. Reynolds, 43 F. 304, 305 (3rd Cir. 1890) (no preliminary injunction should issue "where the answering affidavits show a reasonable doubt about the ... validity of the ... patent."). Knoll International, Inc. v. Continental Imports, Inc., 192 U.S.P.Q. 502 (E.D. Penn. 1976).

5 Uniroyal, Inc., v. Daly-Herring Co., 294 F. Supp. 754, 161 U.S.P.Q. 506 (E.D.N.C. 1968), citing with approval Judge Learned Hand's statement in Simpson Bros., Inc. v. Blancard & Co., 22 F.2d 498, 499 (2d Cir. 1927), that the patent must be "beyond question valid and infringed" before a preliminary injunction will issue.

Norwich Pharmacal Co., v. International Brokers, Inc., 159 U.S.P.Q. 417 (N.D. Ga. 1968); Eli Lilly and Co., v. Generix Drug Sales, Inc., 324 F. Supp. 715, 169 U.S.P.Q. 13 (S.D. Fla. 1971), af'd as to granting preliminary injunctions, vacated as to permanent injunction, 460 F.2d 1096, 174 U.S.P.Q. 65 (5th Cir. 1972); Julien v. Gomez & Andre Tractor Repairs, Inc., 196 U.S.P.Q. 224 (M.D. La. 1977); Teledyne Industries, Inc. v. Windmere Products, Inc., 433 F. Supp. 710, 195 U.S.P.Q. 354 (S.D. Fla. 1977).

1 Gleaned from the texts of City of Grand Rapids v. Warren Bros. Co., 196 F. 892, 894-897 (6th Cir. 1912), and Mueller v. Wolfinger, 68 F. Supp. 486, 69 U.S.P.Q. 311 (S.D. Ohio 1946).

8 Gordon Johnson Co., v. Hunt, 109 F. Supp. 571, 96 U.S.P.Q. 92 (N.D. Ohio 1952); City of Grand Rapids v. Warren Bros. Co., 196 F. 892 (6th Cir. 1912); Crescent Specialty Co. v. National Fireworks Distributing Co., 219 F. 130 (6th Cir. 1915).

Nuclear-Chicago Corp. v. Nuclear Data, Inc., 173 U.S.P.Q. 326 (N.D. III. 1972), rev'd, 465 F.2d 428, 174 U.S.P.Q. 381 (7th Cir. 1972). See also, Artmoore Co., v. Dayless Manufacturing Co., 100 F. Supp. 110, 90 U.S.P.Q. 300 (N.D. ill. 1951) (infringement must be “reasonably clear”); Standard Elevator v. Crane Elevator Co., 56 F. 718, 719 (7th Cir. 1893) (standard used was "without reasonable doubt"); Flintkote Co., v. Philip Carey Co., 13 F.20 850 (7th Cir. 1926) (per curiam) ("beyond question" was the standard used).

10 Diamond Power Specialty Corp. v. Bayer Co., 95 F.2d 541, 37 U.S.P.Q. 233 (8th Cir. 1938).

11 Pacific Cage & Screen Co. v. Continental Cage Corp., 259 F.2d 87, 119 U.S.P.Q. 338 (9th Cir. 1958); Mayview Corp. v. Rodstein, 480 F.2d 714, 178 U.S.P.Q. 449 (9th Cir. 1973).

12 Stoody Co. v. Osage Metal Co., 95 F.2d 592, 593, 37 U.S.P.Q. 169, 170 (10th Cir. 1938), citing Simpson Bros., Inc. v. Blancard & Co., 22 F.2d 498, 499 (2d Cir. 1927) (patent must be beyond question valid and infringed).

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