Preliminary Injunction Denied Because of Reexamination Grant

Scott Daniels | September 2, 2010

A reexamination request is an obvious way for an accused infringer to attack the validity of a patent during litigation.  But reexamination may also have collateral benefits for the accused infringer.  For instance, a court’s analysis of a motion for a preliminary injunction may be affected by a reexamination, as was demonstrated this week in Fusilamp, LLC v. Littelfuse, Inc., Case No. 10-20528-CIV-Altonaga, in the Southern District of Florida.

There, the patentee Fusilamp moved in June for a preliminary injunction to stop Littelfuse from selling the products alleged to infringe the patent.  Littelfuse opposed the motion, asserting that Fusilamp had failed to show “a substantial likelihood of success on the merits of the underlying claim.”  Littelfuse relied, in part, on the fact that the PTO had granted a request for reexamination of the patent.

Judge Cecilia M. Altonaga began her analysis of the motion by explaining that Littelfuse need not overcome the statutory presumption of validity and did not have the burden of showing invalidity by clear and convincing evidence, as it would at trial.  Rather “the alleged infringer must only establish the existence of a substantial question as to the invalidity of the patent.”  Once the accused infringer does so, “the burden shifts to the patentee who must show it will likely succeed at trial.”

Judge Altonaga was clearly impressed by the PTO’s grant of the request for reexamination, but she cautioned that the grant, by itself, was not determinative of the validity issue.  She then reviewed the prior art references and found that she confirmed “the conclusion of the PTO’s reexamination order – substantial questions do exist as to the [validity of the patent].”  She also stated that Littelfuse “presents sixteen separate grounds that, individually and cumulatively, raise substantial questions as to the validity of [the patent].”

The burden therefore shifted to Fusilamp which, Judge Altonaga complained, “flatly refuses to do more than rest on the presumption of validity… .”  She concluded that Fusilamp had failed to show a likelihood of success at trial on the merits and therefore denied the motion for a preliminary injunction.

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