Short Summary: Denial of a preliminary injunction vacated and remanded.
Case: Trebro MFG., Inc. v. Firefly Equip., LLC., No. 2013-1437 (Fed. Cir. April 9, 2014) (precedential). On appeal from D. Mont. Before Rader, Lourie, and Prost.
Procedural Posture: Plaintiff appealed district court’s denial of a preliminary injunction. CAFC vacated and remanded.
- Injunctions (Likelihood of Success):
- Infringement – The district court erred in its construction of claim 1 because it imported limitations from claim 10 into claim 1. Under the correct construction of claim 1, plaintiff established that it is more likely than not to succeed on its infringement claim.
- Substantial Question as to Validity – The district court’s analysis incorrectly focused on only one claim limitation and relied on testimony that discussed machines in the field without regard to the patent’s priority date. The other references that defendants relied on for invalidity were not prior art because they were invented by the same inventive entity as the patent in suit and “emerged” less than one year before the filing date of the patent in suit. The Federal Circuit held that the district court abused its discretion in concluding that there was no likelihood of success on validity.
- Irreparable Harm – The district court abused its discretion in finding that the plaintiff failed to show a likelihood of irreparable harm. The Federal Circuit held that because of the “niche” market of the accused products and the infrequency with which customers purchase the product, the loss of customers and reduced market share would likely be irreparable harm. The Federal Circuit noted that the fact that the plaintiff did not presently practice the patent did not detract from a finding of irreparable harm.
- Injunctions (Balance of Equities): While the Federal Circuit remanded the balance of equities analysis to the district court, the Federal Circuit instructed the district court to note that (1) plaintiff was an established company in the market, where defendants was a newcomer to the market (2) the patent at issue was conferred as payment to the plaintiff, and the inability to enforce the patent would greatly devalue it.