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II. HISTORY OF THE CURRENT STANDARDS

The leading case law on the standard for preliminary injunctive relief in patent cases consists of Simson Bros. v. Blancard & Co. 21 and Rosenberg v. Groov-Pin Corp., 22 two decisions written by Judge Learned Hand for the Court of Appeals for the Second Circuit. In Simson, decided in 1927, the court articulated the classic statement of the rule: a preliminary injunction should be granted only when the patent is "beyond question valid and infringed."

.::23 In Rosenberg, decided nine years later, the court stated that "in the absence of long acquiescence or adjudication (a preliminary) injunction will not go."24 Notwithstanding the presumption of validity generally granted to an issued patent,25 the court noted that a competitor has a greater incentive than a patent examiner to exhaust prior art references. 26

The standard for preliminary injunctions in patent suits that emerged from Simson and Rosenberg, therefore, required proof beyond doubt of the validity and infringement of the patent. These decisions identified two classes of parents likely to satisfy this test: those previously adjudicated valid and those in whose validity the industry had acquiesced. 27 The

otic drugs. Id. at 814 Eli Lilly established the parents' validitv by presenting evidence of industry acquiescence. Sue id at 822. The court viewed Zenith's admissions that it solicited orders and sold the disputed antibiotics as admissions of infringement. Se id. at 825. The court found that the invasion of Eli Lilly's parents constituted irreparable harm. See id in support of its decision to grant a preliminary injunction, the court in Zenuh ciled public interest factors, including the follow. ing Eli Lilly's initial development and continued testing of the antibiotics. Eli Lilly's potential lost profits if Zenith were allowed to continue its infringement; the common practice of drug companies entering the market with similar products while the original patent is being challenged, and the costs of continued litigation, which would deplete Eli Lilly's resources, and thereby hinder research and development Skeid.

21 22 F 20 198 (2d Cir. 1927), 22. 81 E 20 46 (2d Cir. 1936).

23 Simson Bros. v. Blancard & Co., 22 F.2d 198, +99 (2d Cir. 1927). The court reviewed prior art references, questioned whether the jewelry setting patent in issue had in fact been invented, and held that preliminary relief was unwarranted. Id.

24. Rosenberg v Groov-Pin Corp., 81 F.2d 46, +7 (2d Cir. 1936) of the two palents for metal pins allegedly infringed, one had previously been adjudicated valid. The question of in. fringement, however, hinged on whether the dispused material had the same performance capabil. ity as the patented material. Id. at 46. Because the court was not willing to decide this factual issue on the affidavits, a trial was necessary and preliminary injunctive relief was denied 14. at 18.

25. Id at +7

26. Id The court in Rosenberg stated that industry acquiescence was the equivalent of adjudication. Id. According to Judge Hand, the rationale for equating acquiescence with adjudication is that industry compeutors would naturally have contested a patent of doubtful validies. Id at 18. In this case, the new prior art reference introduced by the alleged infringer on appeal cast doubt on the validity of the patent and injunctive relief was denied. Id at 16.

Perhaps another explanation for the courts' reluctance to grant preliminary relief in patent cases is the difficulty of the subject matter. Focusing on the question of infringement, one ninetcenth century count referred to the difficult legal questions involved, and the “painful necessity of spend. ing our whole vacations in anticipating and duplicating these long and difficult investigations, and trying the merits of every case on these preliminary motions." Parker v. Sears, 18 F. Cas. 1159, 1160-61 (E.D Pa. 1850) (No. 10,748)

27 See supra noic 11 and accompanying text,

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requirements for preliminary injunctions enunciated in these cases were reaffirmed in 1971 by the Second Circuit in Carter-Wallace, Inc. v. Davis. Edwards Pharmacal Corp. 28

The court in the Simson and Carter-Wallace decisions relied on nineteenth and early twentieth century cases to support the stringent rule on patent validity. 29 The earliest case cited 30 refers to an 1880 decision in which a district court noted that for more than half a century a movant in a patent case had been required to show that his patent had been in use, and undisputed, for long enough to establish prima facie its validity. In fact, even earlier cases had required that preliminary injunctive relief be denied "if there were any real doubts" concerning the patent's validity. 32 Courts also recognized that exclusive possession of the patent right for a considerable time warranted the issuance of a preliminary injunction without the need to adjudicate the validity of the patent.3.3

The stringent test for infringement is found in early twentieth century cases as well. A "fair” doubt regarding infringement has precluded injunctive relief.34 Without addressing the standard for establishing in. fringement as a separate element, one court stated that a case wholly free from reasonable doubt was necessary for a grant of preliminary injunctive relief.35

28 H3 F.2d 867 (2d Cir. 1971), cont. denied, 412 U.S. 929 (1973). Citing Judge Hand's ravon. ale in Rosenborg that competitors are better investigators of patent validity than Patent Office exam: iners, the court in Carter-Wallace noted that “more than 80% of patent infringement actions on appeal result in a determination that the patent sued upon is invalid." Id. at 872.

29. See Carter-Wallace, Inc. v. Davis-Edwards Pharmacal Corp., H3 F.2d 867, 871 (2d Cir. 1971),cert. denied, 412 U.S. 929 (1973). Simson Bros. v. Blancard & Co., 22 F.2d 198, +99 (2d Cir. 1927)

30. Dickerson v. De la Vergne Refrigerating Mach. Co., 35 F. 143 (C.C.S.D.ST. 1888). 31. Kirby Bung Mfg Co. v. White, 1 F. 604. 606 (C.C.E.D. Mo. 1880). cited in id at

32. Sue Thomas v. Weeks, 23 F. Cas. 978. 980 (C.C.S.D.N.Y. 1827) (No. 13.914). She also Grover & Baker Sewing Mach Co. v. Williams, 11 F. Cas. 83, 87 (C.C.D. Mass. 1860) (No. 5.8+7) (substantial doubts as to validity of plaintiffs' right or defendants' alleged infringement precluded grant of preliminary injunction). Winans v. Eaton, 30 F. Cas. 262, 261 (C.CNDSY 185+) 1.No. 17.861) (reasonable doubt surrounding originality of improvement precluded issuance of prelimi. nary injunction), Isaacs v. Cooper, 13 F. Cas. 153 (C.C. Pa. 1821) (glaring defects in patent precluded grant of preliminary injunction against alleged infringer). CJ, Irwin v. Dane, 13 F. Cas. 116. 117 (C.C.N.D. III. 1871) (No. 7,081) (given greater likelihood of substantial or irreparable injurv 10 complainant than to defendant, showing of "prima facie case of infringemeni“ sufficient for preliminary injunction). Nineteenth century courts also noted that preliminars injunctive relief could be denied on a "clear" showing of infringement See Hodge v. Hudson River RR, 1. F. Cas, 370), 278 (C.C.S.D.XY. 1868) (No. 6,560), Porter v. Muller, 19 F. Cas. 1170, 1170 (C.CS.D. Ohio 186+) (.No. 11,334); Poppenhusen v. New York Gulla Percha Comb Co., 19 F. Cas. 1056, 1057 (CC.S.DST. 1858) (No. 11,281).

33. Thomas v. Weeks. 23 F. Cas. 978. 980 (C.C.S.DNY. 1827) (No. 13,91+): Sullivan v. Redfield, 23 F. Cas. 357, 360 (C.C.D.NY. 1825) (No. 13,597).

34. Newhall v. McCabe, 125 F. 919, 921 (2d Cir. 1903) (ciling Dickerson v. De la Vergne Refrigerating Mach. Co., 35 F. 143 (C.C.S.D.N.Y. 1888)).

35. George Cutter Co. v. Metropolitan Elec. Mig Co., 275 F. 158, 16+ (2d Cir 1921). Se Hildrith v. Norton, 159 F. 428, 429 (2d Cir. 1908) (injunction denied because validity and infringemeni vigorously disputed).

The principal rationale offered by the courts in the earliest patent cases for the burdensome test for injunctive relief was not peculiar to patent law: rather, it derived from basic principles of equity. Courts of equity granted injunctive relief in aid of the common law under which The patentee's legal right was being infringed. 36 Courts of law admonished courts of equity not to grant an injunction upon a doubtful right, or upon an assumption that the right had been infringed. 37 The Supreme Court stated the rule concerning the issuance of injunctions in Hlexander r. Pendleton, 38 an early quiet title case. The Court stated that a court of equity should quiet title only in a clear case and should deny relief if the right were doubtful.39 The Supreme Court applied the same principle in a later case dealing specifically with a preliminary injunclion, stating that relief would issue only upon the plaintiff's showing of a clear, firm case of right.40 State courts of equity also applied this test in the early nineteenth century.*'

In essence, therefore, early courts of equity required proof of a clear, firm case of right for preliminary or final injunctive relief for nonpatentees and patentees alike. Since then, the standard for preliminary relief outside the parent area has been relaxed until in the Second Circuit preliminary relief is available even without proof of a likelihood of success on the merits.t2 The present requirements,*3 which include a showing of likely irreparable injury in all cases, were fixed in 1976 in Trebu asser & Katz v. Amencan Telephone & Telegraph Co. ** In the parent

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See, Thomas v. Weeks, 23 F Cas. 978. 980 (CCS.DNY 1827) (No. 13.914) (equiry will and law only absent doubt that parent infringed). In Dickerson s. De la Vergne Refrigerating MachCo. 35 F 143 C.CSDN.Y. 1888), the court observed that courts continually declined to recognize the presumpuon of validity attendant on letters patent because of distrust of patent offcials Id at 14

37 Dickerson v: De la Vergne Refrigerating Mach. Co., 35 F 143, 144 (C.C.S.DNY. 1888). 38 12 LS 8 Cranch) 462, 468 (1814). 39 Id at +68

10 Parker » Winnipiscogee Lake Cotton & Woolen Co., 67 U'S (2 Black) 545, 552 (1862) inuisance suit).

See, eş. Charles River Bridge v. Warren Bridge, 24 Mass. (7 Pick) 344 (1829), afd. 36 CS.11 Peu 120 (1837), Morris Canal & Banking Co. v. Society for Establishing Useful Manufac. tures. INJ. Eq. 202, 221-22 (V.J. Ch. 1845), Hart v. Mayor of Albany, 3 Paige Ch. 213, 21+ (N.Y Ch 1832), Scott x Burton, ? Ashm. 312, 330 (1st Jud. D. Pa. 1840),

12 See jupra notes 8-9 and accompanying text. The Second Circuit came to hold that the standard for demonstrating probable success on the merits was less stringent in cases in which the balance of hardships favored the movant. Set, c.. Dino De Laurentiis Cinematograhca. S.p.A. v. D.170. Inc., 366 F 2d 373. 375 (2d Cir. 1966). At one point the Second Circuit held that the party seeking the injunction did not have to show irreparable injury if the balance of hardships tilted decidedis in its lavor se Sonesta Int'l Hotels Corp. v. Wellington Assoc., 483 F.2d 217, 250 (2d Cor. 1973). In Sonesta the court held that a preliminary injunction could be granted upon either a clear showing of probable success on the merits and possible irreparable injury, or sufficiently seri. ous questions on the merits to establish a fair ground for litigation and equities favoring the

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See supra text accompanving noies 8-9
535 F.2d 1356 (2d Cir. 1976). In Triebwasser G Katz, the court held that a satisfactory

area, however, the stringent standard for preliminary relief has not been relaxed.45 The clear case of right, in the form of the "beyond doubi" test, still is required of patentees seeking preliminary injunctions.

III. EFFECT OF THE ESTRA BL'RDES OS PATENTEES

The extra burden imposed on patentees makes it difficult to obtain a preliminary injunction. A wenty-five-year survey of patent actions for preliminary injunctions indicates a success rate of t14 at the district court level and 32% at the appellate level. These figures are intlated because they include the exceptions to the “beyond doubi“ rule: instances of prior adjudication and industry acquiescence. Furthermore, they do not reflect the instances in which motions for preliminary relief were never brought because of the stringent standard. Although atisrics are not available, it is reasonable to infer that preliminary injunc

showing of irreparable injury was alwa's necessary for a preliminary injunctum because cymus could not act when money damago would compensate for an injun Id. at 1154 +5

The standard of proof of irreparable injur has become stricter as well Originally.. patentee had only to demonstrate, with the requisite proof an interference with his night to enco sive use. assumed to be irreparable for purposes of preliminan relief Sir Gibson i lin Bresal. 10 E Cas. 3.9. 334 C.C.SDST. 1850).No 3.0) (injunction granted with no dir una of irnp. rable injurv). As the 19th century progressed. sume courts examined the issue of irreparable murs in relation to the balance of hardships in patent cases. We Benen Dredging Co. Veu Virk Dredging Co., 77 E 480, 90+ C.CWD Wash 18* burden on cumplainant to pruir irreparable injurvi, Potter vi Whitney, 19 F Cas. 1191. 11°C.C.D. Mans 1861.1. 11. Hirin mique circumstances, decision to issue munition should consider balance of equiest. MonsLonell Mfg Co., 17 F. Cas 8??. 893 CCD Mass. 1 Best Som 9.831 before issuing injunction cou considers situation of parties and potential harm to defendants Somalo. 8. Siker a CJP Eustis Mfg Co., 130 F 318.30 CCD Mass. 1) balance of hardship in lavor of dietend.int). Hockholzer - Eager. 1. F. Cas 69.270 CCD Se 18711Warninsame Hi the time Judge Hand wrote his opinions on the subject, honeirt, wame court still granted preliminar rhet with out inquiring into the particular hardships intoed door. Hilditch American Bhumpet Comp 15728 +51, +52 (E.D.SE 1920). Some courts conunued to regard the lens of exclusivitats irrepe rable injury. She id. General Elec. Co. Wise, 119F 22.92+ SDNY 1983).

Irreparable injury was one of the requirements for a prelimuman injunction in the coll 1411 century outside the patent area. Ser Charles River Bridge Harren Budge. + Mans i Pick #071809), uffd. 30 l'S. 11 Peti +2011837). Conversels, when there was an adequate temedisit law, cquits had to stay its hand see, ep. Ilart « Mavor of Albam. Paige Ch?!1!1! Vich 1812). Further, preliminary injunctions were available to prevent interference with emluvterielles generally without proof of inability to calculate monetan losses. See (born s. Bank of the lineet States. !? (S. 19 Wheat 758 118111 government sult to present entoniement et JH IN that would have destroved national bank. In turn the Supreme Counterirdihat the time wete often used to prevent interference with exclusive franchises. The infuns done by kenting to the bank the exercise of its franchise in the state of Ohi, is dit uit totulate as the numbe by participating in an exclusive privilege Id ut 8+1 + Serul Livingston, Oeden. I bubu Ch 48 (NY.Ch. 1819, injunction granted to protect steamboat i racune right to tastele Thus 11 is evident that the irreparable injury requirement of the preliminary injunction standard has txt' made harsher as well

16. Dorr & Duft, supra note 15. at ni

i ld at B-114 lederal court decree sustaining a patent after a full hearing ***TUTE very strong evidence of a palent's validits Id. 41 608 The prior adjudoton hueset must have been full contested and must have encompassed the issues of the present suit ld. A pruer deutre entered bi default is insufficient proof of a patenti validits. Id.

a

rions are more often sought and obtained in other causes of action not burdened by the “beyond doubt" standard.

According to the survey, the most common ground for denial of preliminary relief in patent cases is a finding that the patent is not clearly valid.18 The second most frequent ground is a failure to show irreparable harm.49 In most patent cases, therefore, a preliminary injunction against patent infringement does not issue unless there is a history of acquiescence respecting the relevant patent or a prior adjudication upholding its validity—the exceptions built into the "beyond question” rule. In one notable case, however, the absence of the requirement of acquiescence or prior adjudication was not determinative. 50 The court concluded that, after six months of litigation, it was in a position to determine whether the parents were "probably” valid and "probably" infringed and granted a preliminary injunction under this less strict

test. 51

The relative inability of a patentee to obtain preliminary relief puts a patentee who wishes to stop infringement in a difficult position. For the year ending June 30, 1982, the median length of litigation in the federal district courts of patent cases proceeding to trial was thirty-six months. 52 Ten percent of these cases lasted longer than seventy-seven months.53 Figures for preceding years are not significantly different. 54 A determined infringer, consequently, often can use the patent for more than three years until trial and judgment. During this period an alleged in

+8 Id at 599 19. Id

50 Teledyne Indus, v. Windmere Prods. 133 F. Supp. 710 (S.D. Fla. 1977). In Teledyne a showerhead manufacturer sought a temporary injunction against the market of a similar imported device that allegedly infringed Teledyne's patent rights. The parents in question were obtained in 1973, 1974, and 1976-100 recently, in the eyes of the court, to support a finding of a histon of industry acquiescence. The court stated, however, that long acquiescence and prior adjudication were not the only means of ensuring that all prior art had been brought before the court. Id at 713

51 Id at 713-14. The court relied on evidence that it was likely that Teledyne would succeed on the merits and would suffer irreparable harm if relief were not granted. Id at 714 In Rvan u Ideal Tov Corp., 260 F. Supp. 828 (C.D. Cal 1966), overruled in Mavview Corp. v. Rodstein, 180 F.2d 714 (9th Cir. 1973), the court issued a preliminary injunction without acquiescence, prior adjudication, or a bevond doubt showing that the patent was valid and infringed, requiring only a "strong probability" of validity and infringement. Id at 832. The court in Ryan, however, relied upon iwo Supreme Court holdings that dealt with permanent injunctions granted after a inal on the meriis, not with preliminary relief. See Mumm v. Jacob E. Decker & Sons, 301 L.S. 168 (1937): Radio Corp. of Am. v. Radio Eng'g Labs., Inc., 293 U.S. 1 (1934). Moreover, the Rran decision was expressly overruled in Mayview Corp, v. Rodstein, 180 F.2d 714. 717-18 (9th Cir. 1973). See also Carter. Wallace, Inc. v. Davis-Edwards Pharmacal Corp., +43 F.2d 867. 872 n.5 (2d Cir. 1971) (noting that Ninth Circuit should decide whether decision in Ryan stated relaxed rule too emphati. calls), cent denird, +12 U.S. 929 (1973)

52 ADMINISTRATIVE OFFICE OF THE U.S. COCKTS, 1982 ANNUAL REPORT OF THE DIRECTOK 253

53. Id.

54 ADMINISTRATIVE OFFICE OF THE U.S. COCKTS, 1981 ANNUAL REPORT OF THE DIRECTOK A-32

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