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special to the national law journal Peter J. Chassman is a partner in the Houston office of Washington’s Howrey Simon Arnold & White, specializing in patent litigation, and Shashi H. Kewalramani is a senior associate in that office, also specializing in patent litigation. The patent statute expressly provides that courts “may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.” 35 U.S.C. 283. Consequently, courts may grant injunctive relief after a trial on the merits, or, if warranted, a preliminary injunction before a full trial on the merits. In practice, courts appear hesitant to grant preliminary injunctions in patent cases. The U.S. Court of Appeals for the Federal Circuit sets the substantive standards for obtaining preliminary injunctions in patent cases. See 28 U.S.C. 1295; see also Mylan Pharmaceuticals Inc. v. Thompson, 268 F.3d 1323, 1329 n.1 (Fed. Cir. 2001). The four factors of the Federal Circuit’s test for a preliminary injunction, however, are no different from the preliminary injunction factors that most lawyers learned in law school: likelihood of success on the merits, irreparable harm if no injunction issues, balance of hardships on the parties and the public interest. Oakley Inc. v. Sunglass Hut International, 316 F.3d 1331, 1339 (Fed. Cir. 2003). The Federal Circuit has stated repeatedly that an evaluation as to each factor is necessary. See Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1451 (Fed. Cir. 1988); see also Amazon.com Inc. v. Barnesandnoble.com Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001). Nevertheless, in practice, the courts’ analysis typically is focused on the first factor-the patent owner’s likelihood of success on the merits at the trial. Importantly, the Federal Circuit has held that a district court should presume irreparable harm when a movant makes a clear showing of patent validity and infringement. Id. Preliminary injunctions in patent cases are the exception and not the rule. The Federal Circuit has stated that “a preliminary injunction is a drastic and extraordinary remedy that is not to be routinely granted.” Intel Corp. v. ULSI System Technology Inc., 995 F.2d 1566, 1568 (Fed. Cir. 1993). The statistics demonstrate that this pronouncement has become reality. Specifically, plaintiffs request preliminary injunctions in approximately 19% of patent suits. See Samson Vermont, From Ideas to Assets: Investing Wisely in Intellectual Property, Chapter 16 (Wiley Dec. 2001). Of those requests, courts hear only half, and of those, courts grant roughly half again. Id. The plain fact is that a preliminary injunction issues in slightly fewer than one in every 20 patent cases filed. For example, a review of cases reported on Westlaw from January 2000 through February 2003 revealed that district courts granted only 12 preliminary injunctions out of 26 reported decisions. The Federal Circuit affirmed seven of these decisions. What is not obvious from the statistics is that, frequently, district courts do not even rule on requests for preliminary injunctions. Why is that? A district court may not rule on a preliminary injunction request for one or more of the following reasons. First, a preliminary injunction ruling requires the district court to make factual and legal determinations regarding the merits at an early stage in the case, before discovery is completed or even substantially underway. A court may perceive this as an involved task that may not be an economic use of judicial resources. Second, a preliminary injunction ruling is subject to interlocutory appellate review. See 28 U.S.C. 1292(c)(1). If a party does seek an interlocutory appeal, the Federal Circuit’s decision on interlocutory appeal could vacate the preliminary injunction, further delaying the case. Third, a party seeking a preliminary injunction in a patent case may not appeal a district court’s refusal to rule on a preliminary injunction request. The district court’s analysis in ruling on a request for preliminary injunction in a patent case boils down to whether a party is likely to succeed on the merits. This means determining whether the accused infringer infringes the patent-in-suit and, if the accused party raises an affirmative defense (such as a defense that the claims are invalid), determining whether the defendant is likely to prevail on that defense. “An assessment of the likelihood of infringement, like a determination of patent infringement at a later stage in litigation, requires a two-step analysis.” Oakley, 316 F.3d at 1339. “An assessment of the likelihood of validity of a patent claim over the prior art also involves a two-step process.” Id. Claim construction Infringement and validity determinations can each involve what a district court may perceive as a significant amount of work. The first step in each of these analyses involves claim “interpretation” or “construction,” which is a question of law, requiring the district court to interpret the meaning of any terms in the patent claims-the part of the patent that sets out the actual invention covered by the patent. Id.; see Markman v. Westview Instruments Inc., 52 F.2d 967, 970-71, (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996) (setting out that patent-claim interpretation is a question of law). The claim-construction process can involve a substantial amount of briefing and a hearing before the court issues a claim interpretation (or Markman) ruling. The extensive briefing and hearing are usually necessary because the parties disagree over technical terms; as a result, the parties may present technical-expert testimony (and, thus, expert reports) concerning what the terms would mean to a hypothetical person of “ordinary skill in the art” of the technical field of the patent. This may necessitate the court evaluating conflicting testimonies and other evidence to decide what the patent-claim terms mean as a matter of law. To construe claim terms, the court must often perform detailed analysis in a technical field in which it may not have any previous technical expertise. A court may perceive this undertaking as complicated enough at the trial or summary judgment stage, even after substantial discovery and after the parties have narrowed the issues, but at the preliminary injunction stage, the court may view the issues as even more difficult to handle. The second step in the infringement analysis is to compare the asserted and interpreted patent claims against the product or process accused of infringement, in order to determine whether every element of the claims or its equivalent exists or is performed in the accused product or process. Oakley, 316 F.3d at 1339. This is a factual determination. Again, a district court may see this process as involving a substantial amount of work. The court may have a similar perception concerning its role in analyzing a defendant’s challenge to the validity of the patent claims in a preliminary injunction context. The second step in determining the merits of an invalidity defense requires comparing the asserted patent claims to the contents of technical prior art literature. Id. Thus, the claim interpretation is at the heart of the analyses. A court may see claim interpretation at an early stage of the litigation as having drawbacks if the court must perform claim interpretation without the benefit of completed discovery. This concern may or may not be well-founded, but some judges simply may not want to take the chance. Findings may change The Federal Circuit’s comments may allay some district courts’ concerns regarding reversal of their claim interpretations based upon incomplete discovery: “[I]n reviewing a district court’s decision on a motion for a preliminary injunction, we remain ‘mindful that all findings of fact and conclusions of law at the preliminary injunction stage are subject to change upon the ultimate trial on the merits.’ ” Jack Guttman Inc. v. Kopykake Enterprises Inc., 302 F.3d 1352, 1361 (Fed. Cir. 2002) (quoting Purdue Pharma L.P. v. Boehringer Ingelheim GmbH, 237 F.3d 1359, 1363 (Fed. Cir. 2001)). The Federal Circuit further explained that “[d]istrict courts may engage in rolling claim construction, in which the court revisits and alters its interpretation of the claim terms as its understanding of the technology evolves.” Id. at 1361. This statement does not change the fact that a district court may have to visit the issue of claim construction more than once, if it entertains a request for preliminary injunction. Consequently, by asking a district court to rule on a preliminary-injunction request and, thereby, to interpret the claims, the requesting party should be aware that it is asking the court to take up and decide issues that it may have to revisit later. Regardless of the potential for irreparable harm, some would argue that the potential for repetition in a case in which the court entertains a request for a preliminary injunction makes such a request an ineffective use of the parties’ and judicial resources. Obviously, the party seeking the preliminary injunction would not see it that way. Rather than address the issues multiple times, a district judge may seek to placate the requesting party by setting an aggressive litigation schedule with an earlier trial date than the court may have set otherwise. Though this may offer little comfort to a party seeking a preliminary injunction early in the case, the requesting party’s hands are usually tied. Moreover, if a district court construes the patent claims in the context of a preliminary injunction analysis and the Federal Circuit vacates that claim construction after an interlocutory appeal, the district court may receive what it considers to be an incomplete decision from the Federal Circuit. Because the Federal Circuit reviews the interpretation and underlying record, a district court may consider the Federal Circuit’s review of the claim construction to be of limited use, since, during its interlocutory review, the Federal Circuit would not have the benefit of subsequent discovery and evidence. The ongoing nature of discovery could affect not only the claim construction, but also decisions as to infringement and validity. Finally, the Federal Circuit cannot reverse a district court’s decision not to rule upon a motion for preliminary injunction; if the district court simply chooses not to rule on a preliminary injunction request, the requesting party’s options are limited. The requesting party cannot appeal the decision not to rule on the preliminary injunction because the Federal Circuit only has appellate jurisdiction over final orders or orders granting or denying injunctive relief. See 28 U.S.C. 1295(a); see also 28 U.S.C. 1292(a)(1); Johnson v. Way Cool Mfg., No. 01-1181, 2001 WL 360808, at 1 (Fed. Cir. March 30, 2001). This article is not intended to discourage parties from seeking preliminary injunctions but, rather, to provide possible explanations as to why a district court judge may choose not to entertain or rule on a preliminary injunction. It is to be hoped that litigants will be better informed as to some of the concerns that district courts may have when it comes to making or opposing requests for preliminary injunctions in patent cases.

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