Kimberly-Clark v. First Quality Baby Products: No CAFC en banc resolution of standard for preliminary injunctions

By Jason Rantanen

Kimberly-Clark Worldwide, Inc. v. First Quality Baby Products, LLC (precedential order denying rehearing en banc) Download 10-1382 order
Newman, O'Malley and Reyna dissenting

During the last few years a significant intra-circuit split has developed at the Federal Circuit over the appropriate standard to apply to likelihood of success determinations made in the context of requests for a preliminary injunction.  Last week the Federal Circuit declined to take the issue en banc in a move that prolongs the uncertainty but perhaps paves the way for Supreme Court review.

As in other areas of the law, the determination of whether to grant a preliminary injunction requires the applicant to establish four factors: a likelihood of success on the merits, irreparable harm in the absence of preliminary relief, that the balance of equities tips in the applicant's favor, and that an injunction is in the public interest.  The judges of the Federal Circuit disagree, however, about the standard for demonstrating a likelihood of success on the merits, as well as whether such a showing is a necessary prerequisite for entry of a preliminary injunction.

On this issue, several of the judges (including Judges Dyk and Prost, who participated on the panel in this case) apply the standard that an applicant fails to establish a liklihood of success on the merits if the accused party raises a defense that "does not lack substantial merit," and that such a failure precludes entry of a preliminary injunction.  This was the standard applied in the Kimberly-Clark opinion itself, in which the panel vacated a district court's entry of a preliminary injunction with respect to three patents (although it did affirm an injunction based on a fourth patent, concluding that the accused infringer "failed to raise a substantial issue of patentability"). Download 10-1382

Other judges, most vocally Judge Newman, take the view that a defense that does not "lack substantial merit" does not equate with a failure to establish a likelihood of success on the merits, and in any event should not automatically preclude entry of a preliminary injunction.  In her dissent in the denial of rehearing en banc in Kimberly-Clark, for example, Judge Newman – joined by Judges O'Malley and Reyna – criticizes the alternate rule as an absurdity.  "This standard essentially negates the possibility of grant of a preliminary injunction to preserve the status quo during patent litigation, for in today’s complex patent law it is hard to imagine a case in which a defense that is “not substantially meritless” cannot be devised at the preliminary stage."  Dissent at 5-6.  In support of her view, Judge Newman points to the disconnect between "lacks substantial merit" and the standard applied by everyone besides the Federal Circuit.  "The panel's approach is in conflict with not only the Supreme Court, but with every other circuit."  Id. at 6. Nor should a defense that lacks substantial merit automatically preclude entry of a preliminary injunction if the balancing of the four factors necessitates otherwise. See id. at 10-12. Judge O'Malley, writing separately, expressed her strong agreement with the points raised by Judge Newman, as well as concerns about the difficulties faced by district courts in resolving the court's precedent in this area.

Regardless who is correct on the appropriate standard for a preliminary injunction, it is apparent that a sharp split exists within the Federal Circuit that it will be unable to resolve on its own in the near future.  The denial of the en banc request suggests two possible outcomes: (1) that success of a preliminary injunction appeal to the Federal Circuit will continue to be heavily panel-dependant for foreseeable future, or (2) that the Supreme Court will intervene in this case or another to resolve the split and restore some predictability to the area of preliminary injunctions.

16 thoughts on “Kimberly-Clark v. First Quality Baby Products: No CAFC en banc resolution of standard for preliminary injunctions

  1. 16

    could you provide some specific examples for which the eBay tests would not apply?


    You are asking the wrong question.

    It is not a matter of saying “eBay tests would not apply.”

    It is not even a matter of understanding the differences of when the tests apply.

    It is a matter of understanding the purposes of preliminary injunction versus the purpose of permant injunction.

    Throwing in an eBay question as you do only kicks up dust and obscures the fact that the two are simply different.

    Do you understand the differences?

  2. 15

    CAFC blows it again. Suh-prise, Suh-prise, SUHPRISE! As Gomer Pyle, USMC used to say.

    On the record, clearly, the injunction is warranted.

    (non-disclaimer: NOT a KMB employee or stockholder, etc.)

  3. 14

    The report says:

    ” From the inception of the survey in fall 2006 through the end of Fiscal Year (FY) 2009, perceptions of examination quality changed very little among survey respondents, with reports of good/excellent examination quality barely outnumbering the reports of poor/very poor examination quality. Beginning in FY 2010 (October 2009), the Office started seeing significant improvements in the perceptions of examination
    quality, and recent survey results (Spring 2011) indicate that there are now three (3) times as many
    respondents that rate patent examination quality as “good” or “excellent” as there are that rate patent examination quality as “poor” or “very poor”. Customers may also rate examination quality as “fair”.

    Even if their conclusion were justified, all it means is that the Patent Office got its data by sending its questionaire to those they thought would return a favorable response.

    The Patent Office is famous for cooking its statistics to make itself look good.

    It is really a matter of credibility.

    The Patent Office doesn’t have any, and won’t have any, as long as 6 is an examiner.

  4. 13

    I would also like to note that the book that just came out “about time”

    link to

    also advocates the old time view which I subscribe to that time is simply something we’ve been making up, but does not really exist.

  5. 12

    TJ, I think the rule requires that the plaintiff prove a likelihood of success on the merits. Of course, this likelihood has degrees. The more likely, the more the equity favors the granting of the preliminary injunction.

    I think the point of the dissenters was this, that the Federal Circuit essentially held that there was no likelihood of success if the defendant could allege a meritorious defense to validity, regardless of the merits of that defense and regardless of the burden of proof that the defendant has when patent validity is involved, and that is clear and convincing evidence.

  6. 10

    Its a lot more than just semantics if the court fails to force the patent owner to post a bond sufficient to cover the entire damages of the defendant being put out of business, if the patent suit is not ultimately sucessful, or if the court does not then award it all to the defendant.

  7. 8


    There is a big difference when a “per se’ rule swollos the other factors to be balanced.

    I think your slam against Judge Newman is clearly oout of touch with her written opinion.

    Let’s stay focused and have a meaningful discussion, shall we?

  8. 7


    How do you feel about the opinions expressed in the dissents from the denial of en banc (in the provided link)?

  9. 6

    In particular, what part of the eBay decision quoted below would not or should not apply to preliminary injunctions?:
    “That test requires a plaintiff to demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law are inadequate to compensate for that injury; (3) that considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. The decision to grant or deny such relief is an act of equitable discretion by the district court, reviewable on appeal for abuse of discretion.”

  10. 5

    In many ways this is just a play with semantics. Every circuit has a “per se” rule that if the defendant is likely to win, then the preliminary injunction is to be denied. The only question is how likely is likely enough to trigger this per se rule. The panel majority uses the word “substantial,” which probably means something like 40%. Judge Newman would like it to be much higher, say 51% or even 99%. But it is a useless fight to accuse the panel of creating a “per se” rule as if it were somehow doing something very wrong. Every rule is per se once applied to concrete facts.

  11. 4

    Since you are suggesting that preliminary injunctions could and should be granted with LOWER standards than those required by eBay, could you provide some specific examples for which the eBay tests would not apply?

  12. 3

    If E-Bay stands for anything, it stands for the proposition that patent law is not exempt from the normal rules that apply to injunctions.

    The point of the dissenters here appears to be that the Federal Circuit does have just that sort of special rule here, a form of per se rule that pertains only to patent preliminary injunctions and to no other subject matter. They are denied on a basis that amounts to an effective per se rule that if a colorable defense to validity is raised, the injunction is to be denied.

  13. 2

    Logically, the standards for preliminary injunctions can only be different than that for final injunctions


    While the two are similar actions, the context of the two are different. It is clearly not a matter that a preliminary injunction must have a greater standard to be met to be levied.

  14. 1

    As I recall, only the IBM amicus brief even addressed the specific issue of preliminary injunctions (versus final injunctions) in eBay, Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837, 1841 (2006). Even though the situation in eBay was not that of a completely final injunction, and the Sup. Ct. did not specifically indicate that it was limiting its overruling of prior Fed. Cir. precedents only to final injunctions. Yet, some Fed. Cir. members since then still seem, from some opinions, to somehow not consider eBay to be controlling as to preliminary injunctions? Logically, the standards for preliminary injunctions can only be greater than that for final injunctions, since there has been at that point in time little if any discovery, no trial, and no final decision, as to infringement, validity or enforceability.

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