A method of removing “the plank in your own eye”

In his Sermon on the Mount, Jesus reportedly provided a set of anti-hypocrite statements all centered around cleaning-out human eyeballs:

 3 “Why do you look at the speck of sawdust in your brother’s eye and pay no attention to the plank in your own eye? 4 How can you say to your brother, ‘Let me take the speck out of your eye,’ when all the time there is a plank in your own eye? 5 You hypocrite, first take the plank out of your own eye, and then you will see clearly to remove the speck from your brother’s eye.

Matthew 7:3-5 (NIV).  The Federal Circuit’s new decision in Myco Industries v. BlephEx, LLC (Fed. Cir. 2020), offers a modern and less-metaphorical treatment of the same issues.

BlephEx has a patent on a particular method using a swab to remove debris from a human eye. U.S. Patent No. 9,039,718 (treatment method for blepharitis).  Myco is an unwelcome newer competitor with its AB (anterior blepharitis) MAX product.  However, rather than suing for infringement, BlephEx apparently started threatening lawsuits against both Myco and also Myco’s customers (typically opthalmic/optometric medical professionals).

Myco filed suit – asking for a declaratory judgment of no infringement and also invalidity as well as seeking unfair-competition damages for bad-faith patent infringement statements by BlephEx.   In the lawsuit, Myco also asked for and was a preliminary injunction against BlephEx’s ongoing speech. In particular, the district court enjoined BlephEx or its people

from making allegations of patent infringement and from threatening litigation against [Myco’s] potential customers.

Grant or denial of a preliminary injunction is immediately appealable and BlephEx appealed.  The Federal Circuit has now reversed the lower court decision — holding that the injunction was an improper limit on speech.

The Federal Circuit has previously held that preliminary injunctions preventing a company from “communicating its patent rights” requires a showing of “bad faith” supported by “a finding that the claims asserted were objectively baseless.” “An asserted claim is objectively baseless if no reasonable litigant could realistically expect success on the merits.”  The basic idea here is that someone with a patent has a legal right to communicate with infringers and others to tell them “stop and/or get a license.”  Note here that the “bad faith” requirement goes well beyond the usual “likelihood of success on the merits” prong for preliminary relief.

Here, the reversal was easy because the district court did not consider whether the BlephEx’s statements were baseless and in bad faith. “This alone warrants reversal.”

Speech is not to be enjoined lightly. Here, there is not even a finding, let alone a finding supported by evidence and a correct view of the law, that the speech restrained was either false or misleading. The district court abused its discretion when it granted a preliminary injunction enjoining BlephEx from making allegations of patent infringement without a finding of bad faith and with no adequate basis to conclude that allegations of patent infringement would be false or misleading. It also abused its discretion in enjoining BlephEx from threatening Myco’s potential customers with litigation where there was not only no finding of bad faith but no evidence in the record that any such threats had even been made. We therefore reverse and vacate the district court’s preliminary injunction, and remand.

Allegations against the doctors: 35 USC 287(c) immunizes “a medical practitioner’s performance of a medical activity” from being charged with infringement under 35 U.S.C. 271(a) or (b).  Under the statute, the patentee will not have a case against the medical practitioner or against a related health care entity.  Judge O’Malley – who authored the opinion here – would likely quibble with my aforementioned statements.  In the opinion she writes that “[t]he plain text of the statute does not state that a medical practitioner is ‘immune from infringement,’ . . . [Rather, t]he act provides immunity to certain infringers, but it does not render them non-infringers.” The Judge’s point here is really that there might be some other third parties who are liable for indirect infringement based upon the medical practitioner’s underlying infringement.

In any event, the court’s ruling here is that it is OK to tell Doctors that they are infringing and that you may “take action” to stop the infringement. Even though you can’t sue the doctor, you might sue the supplier for contributory infringement.

Before finishing, the court also took the district court to task for faulty claim construction — offering the kind “reminder” that “limitations from different dependent claims should not be interpreted as if they were general statements of disavowal from the written description.”

= = = =

As with many Judge O’Malley decisions, this one has several other important learning points.  One of note is that BlephEx apparently did not suggest to the lower court that Bad Faith was needed for a preliminary speech injunction. On appeal, Myco argued waiver.  The Federal Circuit disagree — holding that “there can be no waiver here of the Judge’s duty to apply the correct legal standard.”

11 thoughts on “A method of removing “the plank in your own eye”

  1. 5

    Denis, further re your comment re Judge O’Malley, she has been on the Fed. Cir. since 2010. But before that she was a federal District Court judge from 1994. I.e., she is one of the rare [or only?] sitting Fed. Cir. judges with a number of years of full time federal trial court experience. [Some others have volunteered for some trials.]

    1. 5.1

      Judge O’Malley… is one of the rare [or only?] sitting Fed. Cir. judges with a number of years of full time federal trial court experience.

      Certainly not the only. Judge Wallach sat for over a dozen years as a district court judge on the Court of International Trade.

  2. 4

    “Why do you look at the speck of sawdust in your brother’s eye and pay no attention to the plank in your own eye?”

    Why are we more concerned with our rights . . . than with our wrongs?

  3. 3

    The notion that a patentee who points out to infringers that they are infringers and therefore liable but does not sue is somehow a bad actor is a terrible notion.

    Business transactions take place every day where party A has a coercive position vis-a-vis party B and uses that position to induce the deal to favor party A. In fact, the availability of lawsuits as a coercive tool is often present in business negotiations. Nobody finds fault with that, even if the coercive position is the threat of a lawsuit for contract breach, etc. Personal injury claims are routinely settled this way.

    Lawsuits are supposed to be the exception, not the rule.

    There is no reason a patentee should be treated worse than other parties.

    1. 3.1

      I think that something is getting lost in translation because while I agree with your overall tone and message, I do not agree with the statement of:

      Lawsuits are supposed to be the exception, not the rule.

      Lawsuits are a mechanism expressly set up in our system of government for problem resolution.

      They are NOT exceptions in any sense of the word, nor are they meant to be.

      Sure, there are plenty of ways to resolve issues outside of lawsuits (including illegal ones), but that does not change the legal nature of a lawsuit.

      You almost (but not quite) seem to be breaking free of the propaganda of “Oh N0es, you can be sued.”

      1. 3.1.1

        Well, I will concede that lawsuits are to be preferred to duels

        But, the only participants who can be confident of being winners of lawsuits are the lawyers. Real businesses do what they can to avoid lawsuits, which is as it should be.

      2. 3.1.2

        OT, but did you ever consider that one of these examiners on this board may also be a paid blogger? If so, it would break the rules of the USPTO.

  4. 2

    While it may be ‘easy’ to see an eye to eye linkage between two parables, the actual connection between a parable that stresses “a set of anti-hypocrite statements” and the several warnings from Judge O’Malley is cloudy at best.

    Hypocrisy isn’t really the focus here.

    A more direct view on the folly of believing the rampant propaganda that “patents are bad” and that employing the legal mechanism to enforce patents (suit and threatening of suit) must be “the worst thing evah” would provide a much clearer lesson.

  5. 1

    There being several hundred Federal District Court judges, it is to be expected that one of those judges sometimes errs in a free speech decision. It’s reassuring that in this instance, the Federal Circuit corrected the mistake.

    By comparison, BOTH of the candidates in the last presidential election tried to use IP laws to silence people who parodied them. And the NSA under the previous president tried to invoke a criminal statute against a parodist. Thanks to some vigorous lawyering (pro bono if memory serves correctly), those efforts didn’t get very far either.

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