Back in July Kimberly-Clark won a trademark battle over designs on toilet paper at the U.S. Court of Appeals for the Seventh Circuit. As we reported, the case elicited some cringe-inducing wordplay from the bench. ("We now wipe the slate clean," remarked the court at one point.) Kimberly-Clark's latest intellectual property battle also involves a bathroom product, but there's no toilet humor this time around, as judges on the Federal Circuit Court of Appeals argue among themselves over how difficult it should be for plaintiffs to win preliminary injunctions in patent cases.
The Federal Circuit on Thursday issued an order denying Kimberly-Clark's petition for an en banc rehearing of its request for a preliminary injunction against a rival company, First Quality Baby Products. According to a suit filed by Kimberly-Clark in 2009, First Quality infringes on four Kimberly-Clark patents related to a process for making fasteners on training pants for potty-training toddlers.
Last year a Green Bay, Wisc., federal district court judge sided with Kimberly-Clark and preliminarily enjoined First Quality from using certain manufacturing processes. First Quality's lawyers at Amster, Rothstein & Ebenstein appealed to the Federal Circuit, which in June reversed and vacated the preliminary injunction on three of the four patents. That set the stage for Kimberly-Clark's unsuccessful request for an en banc rehearing, presented by Sidley Austin.
Most interesting to us in the denial of that request is the forceful three-person dissent written by judge Pauline Newman. She accused her colleagues of scrapping the time-tested factors used to weigh requests for preliminary injunctions in patent cases and improperly replacing them with a new standard.
"The panel simply rules that if an accused infringer's position does not lack substantial merit, no preliminary injunction is available. The appropriate question, however, is whether the movant is likely to prevail on the merits, not whether the accused infringer can raise a defense," she writes. "The panel's view of the law governing preliminary injunctions warrants correction, for it is in conflict with the law of the Supreme Court, in conflict with the law of all of the regional circuits, and in conflict with controlling Federal Circuit precedent."
We talked to First Quality's lawyer, Brian Comack of Amster, Rothstein. "It is only fair that defendants, according to the Federal Circuit standard,need only show that its defenses do not lack substantial merit," he said. "A preliminary injunction is requested at the early stages of the lawsuit,without the benefit of full discovery in the case and time for a defendant to develop its defenses."
Constantine Trela Jr., a partner at Sidley Austin who argued the federal circuit appeal for Kimberly-Clark, did not return a call seeking comment.
Barry Irwin, a partner at Kirkland & Ellis who is not involved in this case, told the Litigation Daily that to the extent the Kimberly-Clark decision makes it more difficult to get a preliminary injunction, "it would also diminish a patentee's remedy for willful infringement." Irwin points out that in the Federal Circuit's Seagate decision, the court held that if a patent holder fails to get injunctive relief, it's likely that the infringement didn't rise to the level of recklessness.
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