Preliminary injunctions in patent litigation are tough to win at the district court. Even if you do, you may still need to defend the decision at the Federal Circuit. Given the high-reversal rate of claim constructions on appeal, it is a good idea to raise multiple patent claims to support an injunction. Otherwise, as the Federal Circuit’s recent reversal of the preliminary injunction in Luminara Worldwide, LLC v. Liown Elecs. Co., No. 2015–1671, 2016 WL 797925 (Fed. Cir. Feb. 29, 2016) illustrates, putting all your eggs in one basket may prove costly.
In Luminara, shortly after filing its patent infringement suit, Luminara moved for a preliminary injunction. Although Luminara asserted four different patents in the complaint, it moved for a preliminary injunction based only on one patent claim: claim 1 of U.S. Patent No. 8,696,166. Luminara also based its preliminary injunction motion on its tortious interference claim; however, the district court did not address that ground after finding injunctive relief was warranted under claim 1 and the Federal Circuit chose not to consider the claim in the first instance. The district court found that Luminara met its burden after considering the four familiar factors: (1) likelihood of success on the merits, (2) irreparable harm, (3) balance of the equities, and (4) public interest. With regard to the first factor—often the most important—there was no genuine dispute that an earlier Disney patent disclosed every limitation in claim 1 except one. Thus, the narrow fighting issue was whether Disney’s earlier patent anticipated claim 1. The district court, under a preliminary claim construction, held it did not.
On appeal, under de novo review of the issue, the Federal Circuit held that the district court erred in construing a term in claim 1. After considering the plain and ordinary meaning of the term, the absence of any disclaimer or disavowal of such an ordinary meaning, and the specification of the ‘166 patent, the Federal Circuit held that “there [existed] a substantial question of validity.” Since this undermined Luminara’s likelihood of success for infringement on claim 1, without considering any of the remaining factors, the Federal Circuit vacated the injunction and remanded.
Shortly after remand, the district court issued an order directing the parties to provide their positions on how to proceed regarding the preliminary injunction. In a letter brief to the district court, Luminara argued that the Court should now consider the likelihood of success on several other patent claims and the tortious interference claim. Liown responded that it would not address the likelihood of success arguments until Luminara formally renews its motion for a preliminary injunction. However, it stressed that there cannot be a showing of irreparable harm in light of newly discovered license agreements to other parties for the patents at issue.
With summary judgment briefs looming less than a week away, it appears that the remand may not be particularly detrimental for Luminara. It will soon present its arguments for all the patent claims at issue, and the district court will be able to evaluate whether any of those merit injunctive relief. Indeed, the district court issued its claim construction order, mostly siding with Luminara, a mere week before the Federal Circuit’s remand.
Of course, not all parties may be so fortunate on the timing of a preliminary injunction remand. So, to maximize the chance for success, how many claims should a party raise in a preliminary injunction motion? To win a preliminary injunction motion, a party needs to only show a likelihood of infringement on one valid and enforceable claim of the asserted patents. See Abbott Laboratories v. Andrx Pharmaceuticals, Inc., 473 F.3d 1196, 1201 (Fed. Cir. 2007). Given the difficulty in winning such motions, it is smart to streamline the arguments and provide a clear path for the district court to rule in your favor. Sending the court on an Easter egg hunt to find your best arguments is never a good idea. But putting all your eggs in one patent-claim basket has its own risks. As explained above, the Federal Circuit is not afraid to crack claim construction eggs even when presented in the nicest of baskets.
While there is no magic number for all situations, presenting at least two independent patent claims usually offers a better chance for success. To provide the most assurance, the claims should not include a mutual claim term that is heavily disputed or be subject to the same invalidity argument. Of course, there is no guarantee that the district court will consider all the claims a party raises. And if the fighting issue pervades all patent claims, raising multiple claims will not add much security. In many situations, however, raising multiple claims will increase the odds that the injunction survives appeal. Fortunately for Luminara, it can now raise multiple claims at summary judgment without much additional effort.