Substantial Unresolved Issues Unravel Preliminary Injunction

By Dennis Crouch

Vasculary Solutions v. Boston Scientific (Fed. Cir. 2014)

In a one-paragraph non-precedential decision, the Federal Circuit has vacated the district court’s preliminary injunction.

A preliminary injunction is a ‘drastic and extraordinary remedy that is not to be routinely granted.’ Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1324 (Fed. Cir. 2004) (citing Intel Corp. v. ULSI Sys. Tech., Inc., 995 F.2d 1566, 1568 (Fed. Cir. 1993)). As evidenced by the extended argument before this court, there are too many unresolved issues at this stage of the case and the record is too incomplete on issues of claim construction, infringement, and ultimate validity to warrant the grant of a preliminary injunction. For these reasons, we vacate the preliminary injunction.

A preliminary injunction requires that the movant (typically the patentee) show a likelihood of success on the eventual merits of the case. Here, the court’s basic take-away is that the “likelihood of success” should be based on a substantially complete understanding of the merits and not merely a guess.

17 thoughts on “Substantial Unresolved Issues Unravel Preliminary Injunction

  1. 8

    […] 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. […]

  2. 7

    A completely different situation than the preliminary injunction issued in the Edwards vs. Medtronic litigation where validity and infringement issues were fully tried and appealed.

    1. 7.1

      Joe, I assume that you were discussing Rader’s opinion in Trebo.

      I agree.

      In most cases, the infringer raises a dust storm of issues concerning validity and infringement to avoid a preliminary injunction. That didn’t happen in this case.

      If there is ANY lesson to be learned from Trebo it is this:

      Write clear and definite claims so that there is no real issue of literal infringement. The patent may not have a high holdup value, but it certainly will protect the client if he is facing direct competition.

  3. 6

    Rader reverses denial of preliminary injunction, remands for further consideration of issues the district court did not resolve. No valid prior art was cited against patent. Finding of non infringement was clearly erroneous. Harm from completion by direct competitor irreparable. The writing is on the wall.

    link to

  4. 5

    Injunctions in general and any form of equitable remedy:

    Money can be and often is a remedy that approximates the repair to an injury.

    But it is a hoary notion that “injunction” should be considered a “heavy response” – nay, too heavy a response in the normal treatment of equitable remedies without first looking at the right transgressed to which any remedy is to be geared.

    A baseline view of any remedy is to approximate as close as possible the conditions for which remedy is sought. In many contexts, the remedy of ‘making whole’ is simply not a possibility. One cannot un-injure another in a typical tort settings.

    The plain (and often overlooked) fact of the matter is that patents are different in this regard. It is perhaps a singular nature of the patent right that the equitable remedy of injunction is by far the best and most closely way of ‘making whole,’ and it is only in the hoary clutching of “injunction is too severe” that this ready tool of making whole is apparently denigrated without any deep thinking.

    All that eBay held was that the analysis could not be short-shrifted – no short-cuts. A proper analysis looks at all of the appropriate factors, and – critically – does not lose sight of the first rule of thumb as to what remedy is for: to attempt to make the transgressed whole.

  5. 4

    Another example of a Fed. Cir. decision on a preliminary injunction that fails to even cite eBay Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837 (2006) [the controlling law on patent infringement injunctions], and only citing some Fed. Cir. decisions from prior to eBay.

      1. 4.1.1

        Why should it not? The eBay decision does not suggest any exclusion for preliminary injunctions. Does anyone suggest that the requirements for granting a pre-trial preliminary injunction should be LOWER than for a post-trial permanent injunction?


          Paul, not at all. The standards are a lot stiffer to begin with, and one must have a patent that has been litigated before and preferably where there already has been entered a permanent injunction.

  6. 3

    It used to be a rule of thumb that one could not get a preliminary injunction on a patent until the second case, the first having resulted in a win for the patentee.

  7. 2

    The plaintiff should also be required to show why money would be insufficient to compensate for continued infringement during trial, since that’s one of the factors.

    1. 2.1

      the plaintiff should also be required to show why money would be insufficient to compensate for continued infringement during trial, since that’s one of the factors.

      Agreed, especially where it’s an NPE asserting the patent.


          LOL – yes, would love to see a court try to explicitly change the words of Congress on that one…

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