Judge Robinson Denies Preliminary Injunction Motion because of Reexamination

Scott Daniels | June 22, 2012

An accused infringer’s primary purpose in requesting reexamination of a patent is, obviously, to persuade the Patent Office to cancel the claims.  But there are other potential benefits from reexamination, apart from actual cancelation of the claims.  One such potential benefit is an argument against a motion for preliminary injunction.

Earlier this week, Judge Sue Robinson of Delaware ruled on the patentee’s request for preliminary injunction in ButamaxTM Advanced Biofuels v. Gevo, 2012 U.S. Dist. LEXIS 84608.  The patent owner Butamax had sued Gevo for infringement of a patent claiming a method for making isobutanol suitable as a biofuel, using recombinant microorganisms.  Eight months into the case, Butamax asked Judge Robinson for preliminary relief pending completion of the case. 

Judge Robinson has now denied that motion because she finds that Butamax is unlikely to succeed on the merits at trial, for each of two reasons.  First, she construes the claims in a manner that makes a finding of infringement unlikely.  Second, on a point that will interest reexamination practitioners, she finds that there is “a substantial question” concerning the validity of the patent, relying heavily on a non-final rejection of the claims in inter partes reexamination. 

Judge Robinson initially notes the CAFC precedent to the effect that results from reexamination “may be relevant to [the] likelihood of success” prong of the preliminary injunction standard.  She acknowledges certain questions regarding the examiner’s inherency analysis supporting the rejection, but she “nevertheless [concludes] the fact that the ‘889 patent has been rejected on reexamination, combined with the finding by the court that plaintiff’s likely claim construction is too narrow, demonstrate that defendant’s invalidity defenses do not lack substantial merit.”  Accordingly, she “finds that defendant has raised a substantial question regarding the validity of claims” in issue.

Finally, on a point asserted by some that reexamination moves too slowly to have an impact on co-pending litigation, it should be noted that Gevos’ reexamination request was filed at approximately the same time as the patentee’s motion for preliminary injunction. 

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