This table reflects the results after entire disposition of the case. For example, if the preliminary injunction was granted and then vacated on appeal, it is indicated here as denied.

**This case was later overruled.

1. The patent was not clearly valid. 2. No showing of irreparable harm.

3. No demonstration of acquiescence by the industry or the public.

4. No infringement was shown.

5. Insufficient evidence upon which to grant or deny a preliminary injunction.

6. The patentee was guilty of laches. 7. The patentee misused the patent.

Number of Occurrences

This table reflects the fact that preliminary injunctions were often denied for a number of reasons. It therefore contains some overlap and the total number of reasons for denials does not equal the number of cases where preliminary injunctions were denied.

EXAMINING THE EXTRA BURDEN
IMPOSED ON A PATENTEE WHO
SEEKS A PRELIMINARY

INJUNCTION

GERALD SOBEL*

INTRODUCTION

A patentee who seeks a preliminary injunction against an alleged infringer must satisfy a burden of unusual stringency. In addition to the elements traditionally required for a preliminary injunction,' the patentee must show that his patent is "beyond question valid and infringed."2 In contrast, nonpatent litigants seeking preliminary injunctive relief must show no more than a likelihood of success on the merits.3

The higher standard for preliminary injunctive relief in patent infringement cases has so long been a part of the jurisprudence that it is taken for granted. The rationales for maintaining the stringent standard are skepticism concerning the correctness of Patent Office determinations of patentability and the desire to foster competition by ensuring that technical matter that does not truly comprise an invention remains freely available for use. After reviewing the history an effect of the current standards for obtaining preliminary injunctive relief in patent and nonpatent litigation, this Article analyzes these rationales in light of conflicting considerations, including the express and implied rights of patentees reflected in the Patent Code, the policy of fostering innovation, and the jurisprudence of individual merit. This analysis indicates that the extra burden imposed on patentees should be eliminated.

I. CURRENT STANDARDS FOR OBTAINING PRELIMINARY

INJUNCTIONS

A. Nonpatent Cases

The standard that most courts currently require of nonpatent litigants seeking preliminary injunctions is less stringent than that required of patentees seeking such relief. Typically courts require the movant in nonpatent cases to demonstrate a likelihood or probability of success on the merits, a likelihood of irreparable injury if relief is denied, an injury outweighing any harm to the other party from granting the injunction, and a lack of adverse effect on the public interest if the injunction is granted.'

Member, Kaye, Scholer, Fierman, Hays & Handler, New York, New York. Adjunct Associate Professor of Law, New York University School of Law. Member, New York Bar. B.E.E., 1960, The City College of New York; J.D., 1963, New York University School of Law; M.A., 1979; New School for Social Research.

1. See infra text accompanying notes 7-9.

2. Simson Bros. v. Blancard & Co., 22 F.2d 498, 499 (2d Cir. 1927). See infra text accompanying notes 21-27.

3. See infra text accompanying notes 7-9.

4. See infra text accompanying notes 21-28.

5. See Carter-Wallace, Inc. v. Davis-Edwards Pharmacal Corp., 443 F.2d 867, 871-72 (2d Cir. 1971) (noting "free rein often exercised by [Patent Office] Examiners in their use of the concept of invention") (quoting Graham v. John Deere Co., 383 U.S. 1, 18 (1966)), cert. denied, 412 U.S. 929 (1973). See infra text accompanying notes 134-36.

6. See infra text accompanying notes 119-26.

7. See Harris v. Wilters, 596 F.2d 678, 680 (5th Cir. 1979) (prisoner sought injunction to require state to pay litigation expenses); North Carolina State Ports Auth. v. Dart Containerline Co., 592 F.2d 749, 750 (4th Cir. 1979) (state sought to enjoin application of provisions of common carrier's pending tariff); Kolz v. Board of Educ., 576 F.2d 747, 748-49 (7th Cir. 1978) (school teachers sought to enjoin transfer from one school to another); Constructors Ass'n v. Kreps, 573 F.2d 811, 815 (3d Cir. 1978) (association sought to enjoin application of provisions of federal law or govern. ment contracts); UV Indus. v. Posner, 466 F. Supp. 1251, 1255 (D. Me. 1979) (corporation sought injunction to prevent purchase of its stock by another corporation). For a discussion of the four criteria required to obtain a preliminary injunction, see 7 J. MOORE, Moore's Federal PracticE

Several federal circuit courts follow an even more relaxed standard. The Second Circuit, for example, like other courts, requires nonpatent movants to prove that irreparable harm will result if relief is not granted. In addition, however, it requires only that the movant show either a likelihood of success on the merits, or sufficiently serious questions on the merits to establish a fair ground for litigation with the equities in favor of the party requesting preliminary relief.9

B. Patent Cases

In contrast to the general standard for a preliminary injunction, the standard for patentees seeking injunctive relief pendente lite is more burdensome. In order to show a likelihood of success on the merits, a patentee must prove “beyond question” the validity and infringement of the patent. 10 Only two classes of patents have proved likely to satisfy this requirement: those previously adjudicated valid and those in whose validity industry has acquiesced." After meeting this requirement, a patentee must also demonstrate the remaining elements of the general standard. 12

The "beyond question" rule, defined by the Court of Appeals for the Second Circuit, 13 has been followed in a majority of the circuits.1 Ac

¶ 65.04(1), at 65-39 (2d ed. 1982) and C. WRIGHT & A. Miller, Federal Practice and ProceDUKE § 2948, at 430-66 (1973).

8 Jackson Dairy, Inc. v HP Hood & Sons, 596 F.2d 70, 72 (2d Cir. 1979). Irreparable injury is "injury for which a monetary award cannot be adequate compensation. Id The court noted disagreement about how likely and imminent the threatened irreparable injury must be, with alternatives ranging from "possible" to "probable”—the latter having been defined as " 'not remote or speculative but actual and imminent. Id. (quoting New York v. Nuclear Regulatory Comm'n, 550 F 2d 745, 755 (2d Cir. 1977)).

9. Jackson Dairy, Inc. v. H.P. Hood & Sons, 596 F.2d 70, 72 (2d Cir. 1979). Other circuits also have reduced the standard for success on the merits when the balance of hardships favored the plaintiff See Campbell "66" Express, Inc. v. Rundel, 597 F.2d 125, 127-28 (8th Cir. 1979) (preliminary injunction granted on showing of probable success on merits and possible irreparable damage). Brink's, Inc. v. Board of Governors of the Fed. Reserve, 466 F. Supp. 112, 115 (D.D.C. 1979) (preliminary injunction would issue on substantial case on merits and showing of other three factors): People v. City of South Lake Tahoe, 466 F. Supp. 527, 543-44 (E.D. Cal. 1978) (preliminary injunction denied for failure to show irreparable harm or equities favoring plaintiff).

10 See, eg, Mayview Corp. v. Rodstein, 480 F.2d 714, 717 (9th Cir. 1973); Eli Lilly & Co. v. Generix Drug Sales, Inc., 460 F.2d 1096, 1099 (5th Cir. 1972); Frommelt Indus. v. WB. McGuire Co, 504 F. Supp. 1180, 1184 (N.D.NY. 1981). See also infra note 15 and accompanying text. Rosenberg v. Groov-Pin Corp. 81 F.2d 46, 47 (2d Cir. 1936).

11.

12. See supra note 7 and accompanying text. See infra notes 21-24 and accompanying text. 13. See infra notes 21-28 and accompanying text.

14

Mayview Corp. v. Rodstein, 480 F.2d 714, 717 (9th Cir. 1973) (preliminary injunction denied unless patent valid beyond question): Eli Lilly & Co. v. Generix Drug Sales. Inc., 460 F.2d 1096, 1099 (5th Cir. 1972) (preliminary injunction denied unless patent valid beyond question and infringed). Pacific Cage & Screen Co. v. Continental Cage Corp., 259 F.2d 87, 88 (9th Cir. 1958) (dicta) (same): Leavitt v. McBee Co., 124 F.2d 938, 939-40 (1st Cir. 1942) (same): Hoeme v. Jeoffrov, 100 F.2d 225, 226 (5th Cir. 1938) (same); Stoody Co. v. Osage Metal Co., 95 F.2d 592, 593 (10th Cir 1938) (preliminary injunction denied unless patent is "clearly and convincingly valid). Zenith Labs, Inc. v. Eli Lilly & Co., 460 F. Supp. 812, 820 (D.N.J. 1978) (preliminary injunction denied unless patent valid beyond question and infringed), aff'd sub nom. Eli Lilly & Co. v. Premo

cording to a 1978 survey of the standard for preliminary relief in patent infringement cases, seven circuits apply the "beyond question" test and two circuits apply standards similar to this test. 15 The Eighth Circuit has applied a "reasonably clear" standard to the issue of infringement as distinct from validity. 16 The Third Circuit recently declined to apply the "beyond question” standard, and instead applied the general test for preliminary injunctions—reasonable probability of success on the merits to a patent infringement case. Federal district courts in the Third Circuit, however, more recently have applied the "beyond question" test. 18

With regard to the other requirements for obtaining a preliminary injunction, there is currently some disagreement about whether the mere fact of infringement of the patentee's right of exclusivity is enough to establish irreparable injury, or whether, as is more commonly held, something more need be shown to establish the inadequacy of a monetary recovery. 19 There is little in the patent cases on the issues of balancing the equities and identifying the public interest. One case that did address these questions held that the equities and public interest favored a preliminary injunction because denial of relief would encourage others to infringe, would drain the patent-holder's profits by increased litigation costs, and would discourage further research and development. 20

Pharmaceutical Labs., Inc., 630 F.2d 120 (3d Cir.), cert. denied, 449 U.S. 1014 (1980); Uniroyal, Inc v. Daly-Herring Co., 294 F. Supp. 754, 759 (E.D.N.C. 1968) (same); Heyman Mfg. Co. v. Electrix Corp., 200 F. Supp. 217, 218 (D.R.I. 1961) (same).

15. See Dorr & Duft, Patent Preliminary Injunctive Relief, 60 J. Pat. Off. Soc'Y 598, 632-33 (1978) (25-year survey of preliminary injunctions in patent suits). The Sixth Circuit was character. ized as using a "very probable" standard for determining patent validity and infringement, the Seventh Circuit, a "strong probability" standard. Id. at 632.

16. Ser Diamond Power Specialty Corp. v. Bayer Co., 95 F.2d 541 (8th Cir. 1938).

17. Eli Lilly & Co. v. Premo Pharmaceutical Labs., Inc., 630 F.2d 120 (3d Cir.), cert. denied, 449 U.S. 1014 (1980).

18. See, eg, Rohm & Haas Co. v. Mobil Oil Corp., 525 F. Supp. 1298, 1302 (D. Del. 1981) (preliminary injunction requires proof that patent valid beyond question and infringed). Jenn-Air Corp. v. Modern Maid Co., 499 F. Supp. 320, 322 (D. Del. 1980) (same), aff'd mem., 659 F.2d 1068 (3d Cir. 1981). See also Frommelt Indus. v. W.B. McGuire Co., 504 F. Supp. 1180, 1184 (N.D.N.Y. 1981) (preliminary injunction requires proof that patent valid beyond question and infringed).

19. Compare Zenith Labs., Inc. v. Eli Lilly & Co., 460 F. Supp. 812, 825-26 (D.N.J. 1978) (strong showing of other requirements for preliminary injunction justifies relief based on invasion of patent rights as requisite irreparable injury), aff'd sub nom. Eli Lilly & Co. v. Premo Pharmaceutical Labs., Inc., 630 F.2d 120 (3d Cir.), cert. denied, 449 U.S. 1014 (1980) and Teledyne Indus. v. Windmere Prods., 433 F. Supp. 710, 739-40 (S.D. Fla. 1977) (invasion of exclusive patent right constitutes irreparable injury) with Nuclear-Chicago Corp. v. Nuclear Data, Inc., 465 F.2d 428, 429-30 (7th Cir. 1972) (alleged invasion of patent does not constitute irreparable injury); Signode Corp. v. Weld-Loc Sys., 216 U.S.P.Q. (BNA) 310, 312 (N.D. Ill. May 27, 1982) (patentee must meet substantially heavier burden of proving irreparable injury); Frommelt Indus. v. W.B. McGuire Co., 504 F. Supp. 1180, 1184-85 (N.D.N.Y. 1981) (irreparable harm not shown where monetary dam. ages ascertainable and available) and Heyman Mfg. Co. v. Electrix Corp., 200 F. Supp. 217, 218 (D.R.I. 1961) (alleged invasion of patent not irreparable harm if monetary damages available).

20. Zenith Labs., Inc. v. Eli Lilly & Co., 460 F. Supp. 812, 826 (D.N.J. 1978), aff'd sub nom. Eli Lilly & Co. v. Premo Pharmaceutical Labs., Inc., 630 F.2d 120 (3d Cir.), cert. denied, 449 U.S. 1014 (1980). The dispute in Zenith involved the validity and infringement of the patents on two antibi