Scott Daniels | November 5, 2012
One of the collateral reasons for an accused infringer to pursue reexamination – to rebut a preliminary injunction motion – was on display last week in Transtex Composite v. Laydon Composite, 2012 U.S. Dist. LEXIS 155476 (W.D. Ken.).
There, the patentee, Plaintiff Transtex, moved for a preliminary injunction asserting that Defendant Laydon’s sales of infringing products caused it irreparable harm. Judge Jennifer Coffman applied the customary four-part test: the plaintiff’s likelihood of success, the harm to the plaintiff, the harm to the defendant, and the public interest. She found that the accused products infringed both of the asserted patents. She also found that the harm to the plaintiff from a denial of preliminary relief greatly outweighed the harm to the defendant from a grant of preliminary relief. And she found that the public interest would not be affected.
The decisive consideration for Judge Coffman’s analysis, however, was the fact the Patent Office was conducting reexaminations of both patents-in-suit and had rejected the claims of one as obvious. The Judge acknowledged that the rejection was non-final and that Transtex could still traverse and appeal the rejection, but she concluded that “fact that the PTO has rejected the entirety of the claims Transtex’s patent raises a substantial question as to the patent’s validity sufficient to justify the denial of a preliminary injunction.” (Emphasis added). She also acknowledged that the Patent Office had not yet determined whether to reject the claims of the second patent. Still, the PTO’s “grounds for rejecting the claims in the [first patent] would apply equally well to the claims in [the second patent], particularly those [claims] at issue n this case.”