Preliminary Injunction Can Issue Even Though Patentee Does not Practice the Invention

By Dennis Crouch

Trebro Mfg. v. FireFly Equipment and Steven Aposhian (Fed. Cir. 2014)

Here, the Federal Circuit holds that the district court abused its discretion in denying Trebro’s motion for preliminary injunction to stop ongoing infringement of its U.S. Patent No. 8,336,638. The patent covers sod harvesters and FireFly’s ProSlab 150 is said to infringe. This is an interesting case in terms of “troll” identity. Trebro did not itself invent the patented equipment and does not actually practice the invention. However, Trebro does compete directly with FireFly in the sod harvester business. Although the “troll” status of the plaintiff is generally irrelevant to patentability questions, many believe it is directly relevant to questions of injunctive relief.

The patented invention appears to have stemmed from an off-shoot of the Canadian sod harvester company BrouwerTurf. Trebro purchased the patent in 2013 as payment for a past debt but allowed Brower to retain a full license. Trebro then sued FireFly for infringement.

The money quote from the Federal Circuit decision is as follows: “[A] party that does not practice the asserted patent may still receive an injunction when it sells a competing product.”

Decisions like this serve as a boon for operating companies whose patent portfolios are largely based upon acquisition – such as Google.


In denying the patentee’s preliminary injunction motion, the district court made three findings. First, that the accused product did not include a vertically moveable “horizontal conveyor” as required by the asserted patent; Second that the vertical moveability limitation was of questionable novelty. Finally, the district court found ongoing competition harms (lost customers and market share) did not create any irreparable harm. On appeal, the Federal Circuit disagreed with each of these conclusions because involving misreading the patent and misapplying the law. The decision here might be seen as a contrast to the Federal Circuit’s other recent preliminary injunction decision where the court found fault with the grant of a PI. See Crouch, Substantial Unresolved Issues Unravel Preliminary Injunction.

The patent statute does not expressly permit preliminary injunctions, but does generally provide courts with authority to “grant injunctions in accordance with the principles of equity.” 35 U.S.C. § 283. The U.S. Supreme Court has discussed preliminary relief in a number of contexts and the statutory language suggests that principles from other contexts should apply in the patent situation as well. See Ebay v. MercExchange, 547 U.S. 388 (2006) and its progeny. A key to preliminary injunctive relief is that the movant is asking the court to award a remedy before making a determination of the merits of the case. That reversal of common chronology is only done with reluctance. Thus, the ordinary rule for preliminary injunctive relief is judged by the difficult-to-prove four factor test that it is (1) likely to eventually succeed on the merits of the case; (2) is to suffer irreparable harm absent an injunction; (3) that the balance of equities favor the movant; and (4) that the public interest favors injunctive relief. The requirement of “a likelihood of success on the merits” has always been confusing to me. A 10% chance of winning is still “a likelihood.” That is not how the court intends the rule to be seen. Rather, the Federal Circuit (and other courts) interprets this term as meaning the movant will more-likely-than-not win the case. A defendant can escape preliminary injunctive relief by poking holes in the case – such as demonstrating a substantial question as to whether the patent is valid or infringed.

The preliminary injunction factors have two distinguishing features when compared to the eBay factors designed for permanent injunctive relief. First, preliminary injunctions require proof of a likelihood of success on the merits. That factor tends to be heavily considered and thus makes preliminary relief more difficult to obtain. The likelihood of success factor is not considered in the context of permanent injunctive relief because that issue is generally only decided after a merits decision finding for the patentee. The eBay factors also include an additional element not found in the preliminary relief construct. That factor—that remedies available at law are inadequate to compensate for the injury—has caused some amount of academic consternation because of its extensive (perhaps entire) overlap with the irreparable harm factor. For preliminary relief, its absence of little importance because preliminary relief was not typically available in the courts of law.

14 thoughts on “Preliminary Injunction Can Issue Even Though Patentee Does not Practice the Invention

  1. Dennis, to avoid possible confusion to some readers re:
    “For preliminary relief, its absence of little importance because preliminary relief was not typically available in the courts of law”
    that this is a purely historical comment since the previously separate Federal courts of law and equity were merged long before almost all of your other readers were born.

  2. Not to disagree with any other aspect of this decision,* this is simply to point out that this is yet another Fed. Cir. patent injunction decision in which the Fed. Cir. acts as if their superior court has never dealt with that subject, never even citing eBay Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837 (2006) [much less ever explaining why its 4 requirements should not apply] , and citing Fed. Cir. decisions from from prior to eBay. As if a preliminary injunction is not really an injunction and has less requirements than an injunction AFTER both invalidity and non-infringement defenses have been fully disposed of?
    Also, the important defendant protection for putting a defendant out of business with a preliminary injunction is normally supposed to be posting a bond sufficient in amount to compensate for an improvidently issued preliminary injunction, and I did not see that mentioned either?

    *In fact I think the failed reexamination attack on the patent could have been given even more weight that it was in showing the weakness of the proposed invalidity defense.

  3. The value of this post is that the patent owner is damaged in his business by the infringement and it makes no difference whether he is selling a covered product. A legal remedy is totally inadequate because the last thing he ever wants to do is to license his competitor.

  4. “On appeal, the Federal Circuit disagreed with each of these conclusions because involving misreading the patent and misapplying the law.”

    another incompetent district court judge?

  5. I think you should revise your English-language interpretation of the likelihood of success on the merits. A “high” likelihood of success on the merits favors an injunction, whereas a “low” likelihood of success on the merits disfavors an injunction. This usage of the term “likelihood” is consistent with the Federal Circuit interpretation, without injecting any confusion.

    1. DC: The money quote from the Federal Circuit decision is as follows: “[A] party that does not practice the asserted patent may still receive an injunction when it sells a competing product.”

      Decisions like this serve as a boon for operating companies whose patent portfolios are largely based upon acquisition – such as Google.

      A couple points: first, nothing new about the Federal Circuit’s rule here. And last time I checked a patentee who produces nothing at all can still obtain an injunction if the circumstances warrant the injunction (there is no per se requirement to sell anything — it’s just a fact to be considered by the court).

      Second, the quote about “boon for operating companies … such as Google” can be made more accurate in the following way: “Decisions like this serve as a boon for operating companies whose patent portfolios are largely based upon acquisition and who offer products/services that, in some instances, are alternatives to the products/services claimed in the patents – such as Google.”

      One interesting question that arises is the degree to which a company can own and enforce many different patents encompassing many different potentially “competing” products where the prosecution histories of those patents are contradictory to each other (and necessarily contradictory, in some cases, to obtain the grant of the patent). Patent A says “X performs this function F better than Y.” Patent B says “Y performs this function F better than X.” They can’t both be correct. Can they both be owned and enforceable by the same owner? That doesn’t seem fair to the public (e.g., competitors). It’s also one reason why the ownership of patents should be transparent.

      1. Such things – since we know the official record is in writing – is already in the public. Further each patent (in fact claims within a patent) stand on their own. You (again) seek to ‘want’ something that you have no legal basis to have.

        By its very legal nature – personal property (please tell me you can find the legal quote for this) – your “should” is groundless.

        1. Such things – since we know the official record is in writing – is already in the public.

          Huh? What are “such things”?

          Further each patent (in fact claims within a patent) stand on their own.

          Claims don’t have legs so what are they standing on? Please tell everyone exactly what point you are trying to make instead of doing your usual game of reciting aphoristic nonsense where we all have to guess the rest of the argument (or make it up for you since you apparently can’t just type it out in English).

          Of course, if you’d rather simply stomp your feet and kick up dust, we all understand why you’d choose to do that.

          You (again) seek to ‘want’ something that you have no legal basis to have.

          You again seek to pretend that patent law isn’t constantly changing based on perceived flaws in the existing system. Please continue clutching your blankie and asking Daddy Gene for his assurance that the “pendulum is going to swing back.” Maybe he’ll kiss you goodnight, too.

          1. LOL – trite script items of Vinnie Barbarino, English, and opinion/policy/b-b-b-but law can change nonsense.

            Maybe you want to use actual law or actual facts instead of always pounding tables…

  6. Since the focus here in this case was on whether the lower court abused its discretion, the lack of inclusion of the (still controlling) 1908 Supreme Court case can be overlooked.

  7. This sounds like a proper application of injunction law. It’s common for competitors to try to obtain patents on what the other party is doing whether, they practice or not.

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