Final Patent Reexamination Result to Dissolve Injunction 

A defendant’s request to delay entry of a permanent injunction until reexamination concludes is more likely to be well-taken by a district court when the reexamination is near conclusion and rejecting the patent owner’s claims.  Depending on the length of time that passes before a litigant requests reexamination of a patent, either party could argue that the timing of the request supports its own interests under the four factor P.I. test and the balancing of the equities.

This tension played out recently in Inventio AG v. Otis Elevator Co. (SDNY)[1]

In Otis, the Court found that entry of a permanent injunction was against public interest (i.e., P.I .fourth factor) where a patent reexamination existed demonstrating the potential invalidity of the subject patent. 

In connection with the fourth factor, public interest, it is often argued in patent cases that the public interest serves to uphold valid patents, eliminate invalid patents, and preserve innovation.  Yet, where the validity of a patent is in question, enjoining the public from making, using, or selling the patented invention may not serve the public interest to uphold only valid patents or to preserve innovation.

In this regard, the court explained:

[T]his case has an unusual twist. Unbeknownst to the Court (I am not sure why), by the time we went to trial, the PTO not only had the ‘094 patent under reexamination (on the same ground that was submitted to the jury – obviousness in view of undisclosed prior art), but unconstrained by any presumption of validity, unlike the jury – had issued an initial office action rejecting all the claims in suit. (Initial Office Action Dated April 21, 2011, Minarik Ex. D). Putting to one side the waste of resources, judicial and otherwise, appurtenant to holding a trial under these circumstances, it is hard to see the public interest in enjoining the use of what may soon turn out to be – the verdict notwithstanding – an invalid patent.

 However, until such time as the PTO renders a final decision, this court has a jury verdict, supported by evidence, to uphold and give effect to; and until final PTO action the vindication of the patent system outweighs any other equitable consideration. I shall, therefore, enter an injunction in Inventio’s favor. As argued by Otis, however, that injunction must include a term specifically stating that the injunction comes up for automatic review in the event that the PTO finally disallows any or all of the claims in suit. I originally wanted the injunction to expire by its terms in that eventuality, but Otis does not seek such a term, and I intuit that the scope of relief from an injunction might depend on the scope of the PTO’s final action.

Ruling (here)

The “permanence” of the injunction is predicated on the reexamination result. (Note that the estoppel result of a Final District Court proceeding would preclude use of inter partes patentreexamination to achieve this result.) For further discussions on this topic, see the previous posts (here)

This case was brought to my attention by the great Docket Navigator.

[1]Oblon Spivak is reexamination counsel to Otis Elevator.