A preliminary injunction enjoining patent infringement involves substantive matters unique to patent law, and therefore, is governed by the law of the Federal Circuit.

Revision Military, Inc. (“Revision”) and Balboa Manufacturing Co. (“Balboa”) design, manufacture, and sell protective eyewear. Revision alleged that Balboa’s new “Bravo” design protective goggles copied and infringed Revision’s “Bullet Ant” goggles, covered by U.S. Design Patents No. 537,098 and No. 620,039. Revision filed a motion for a preliminary injunction, seeking to enjoin Balboa from making or selling its “Bravo” goggles while the litigation was pending. The district court denied the preliminary injunction, applying the Second Circuit’s heightened standard of “clear” and “substantial” likelihood of success, as established in Doninger v. Niehoff, 527 F.3d 41 (2d Cir. 2008).

The Federal Circuit concluded that the district court erred in applying the Second Circuit’s heightened standard of likelihood of success on the merits, instead of the Federal Circuit’s standard for consideration of whether to impose such relief. As such, the Federal Circuit vacated the decision, and remanded for redetermination under the appropriate standard.

The Federal Circuit explained that the Supreme Court in Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008) stated the general criteria for a preliminary injunction. Within that framework, district courts have developed various elaborations of the standard. The Second Circuit held, in Doninger, that the heightened standard of “clear” or “substantial” likelihood of success on the merits applies when a movant seeks “an injunction that will alter rather than maintain the status quo.” The district court held that the Doninger standard applied in this case. However, “a preliminary injunction enjoining a patent infringement pursuant to 35 U.S.C. § 283 involves substantive matters unique to patent law and, therefore, is governed by the law of this court.” Thus, the estimated likelihood of success in establishing infringement is governed by Federal Circuit law. On remand, the district court must apply the Federal Circuit’s more-likely-than-not standard.

The Federal Circuit continued, explaining that the “ordinary observer” test governs whether a design patent has been infringed. While the district court stated the correct standard, they did not consider the prior art context in which the ordinary observer test is to be applied. On remand, the district court must apply the design-as-a-whole criterion.

A copy of the opinion can be found here.