Quad/Tech v. Q.I. Press Controls (Fed. Cir. 2011)
Quad/Tech sued QI, alleging infringement of its U.S. Patent No. 5,412,577. The ‘577 patent is directed to a “color registration system for a printing press.” According to the briefing, QI has already lost a parallel patent infringement lawsuit in Germany and is subject to a permanent injunction based upon a “virtually identical” patent claim. In the German case, QI lost at lower court level and then failed to appeal.
Preliminary Relief: The district court denied Quad/Tech’s motion for a preliminary injunction. Although interlocutory, the grant or denial of preliminary injunctive relief is immediately appealable. However, a district court’s decision to grant or deny a preliminary injunction is reviewed only for an abuse of discretion that requires a “showing that the court made a clear error of judgment in weighing relevant factors or exercised its discretion based upon an error of law or clearly erroneous factual findings.” Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1997).
On appeal, the Federal Circuit issued a two paragraph non-precedential opinion upholding the district court conclusion that, based upon a preliminary claim construction, that the infringement claim may fail and that Quad/Tech had failed to prove likely irreparable harm absent preliminary injunctive relief.
Using Foreign Infringement Judgment to Prove Infringement in the US: An interesting aspect of this decision is the district court’s use of the German opinion. In particular, Quad/Tech requested that the court “adopt Q.I.’s acceptance of the judgment in Germany as an admission of infringement of a virtually identical claim.” The district court rejected that argument – holding that:
- Quad/Tech had failed to provide sufficient evidence of the German judgment (the company had only submitted an affidavit from a corporate VP); and
- Foreign patent determinations are not binding upon US litigation concerning US patents.
In its analysis, the district court cited several prior cases where US courts have refused to rely upon foreign analysis of family-member patents. In Medtronic, Inc. v. Daig Corp., 789 F.2d 903 (Fed.Cir.1986), the accused infringer asked the court to rely upon a German tribunal holding that the parallel family-member patent was invalid as obvious. The Federal Circuit rejected that argument – calling it “specious.” The Medtronic decision was followed in both Allen v. Howmedica Leibinger, Inc., 197 F.Supp.2d 101 (D.Del.2002) and Oki Am. v. Advanced Micro Devices, Inc., 2006 WL 3290577 (N.D.Cal. Nov. 13, 2006). In the Oki Am case, the court specifically held that the “the action taken by the European Patent Office rejecting counterpart application over the same reference is neither controlling nor persuasive.” In his patent digest, Robert Matthews concludes that:
Generally, a validity determination by a foreign patent office has little relevance or weight in considering the validity of a corresponding United States patent. The Federal Circuit has instructed that because the theories and laws of patentability vary from country to country, as do examination practices, caution must be exercised in extrapolating any consequences arising out of acts taken in a foreign proceeding.
Matthews, Annotated Patent Digest, § 15:53 (2011).
There are several important distinctions between Quad/Tech’s case and Medtronic. Perhaps most notably is the fact that Quad/Tech is requesting consideration of the foreign judgment only at this preliminary stage when the court is attempting to speculate on the likelihood of success on the merits.