Federal Circuit Upholds Preliminary Injunction Altering the Status Quo

Sales halted on device used to clean eyelids due to likelihood of patent infringement

The Federal Circuit upheld a preliminary injunction against a manufacturer of an eyelid cleaning device used by medical professionals to clean the eyelid margin of patients more thoroughly than can be done using at-home methods. It involved an electromechanical device having a cleaning swab.

The manufacturer began marketing its electromechanical device with a cleaning swab product a month prior to when the patentee first-filed a patent application directed to the device. The same day that the application matured into a patent, the patentee sued the manufacturer for patent infringement and later obtained a preliminary injunction from a district court.

Regarding the “status quo,” the Federal Circuit rejected the notion that the purpose of a preliminary injunction is to preserve the status quo and that, because the preliminary injunction upset the status quo, it was improper. First, the Federal Circuit felt the “status quo” should be measured at the time the suit was filed. Thus, even though the manufacturer was selling its products well before the patent issued, the Federal Circuit felt the “status quo” was “[i]n a state in which the … patent had been granted and could be asserted.” Second, the Federal Circuit stated that “preservation of the status quo is not the sole objective of preliminary injunctions” and that preliminary injunctions can “serve to prevent ongoing trespasses during the pendency of an infringement case.“ Accordingly, the fact that the manufacturer marketed its product before the patent was filed did not disqualify a preliminary injunction: “Even where a patent is applied for and granted after the allegedly infringing product enters the market, a preliminary injunction may still be used to prevent future trespasses on the patent, so long as the district court correctly applies the relevant factors.”

In other findings, the district court found that the manufacturer did not demonstrate a substantial question of validity. The manufacturer pointed to a prior art patent which disclosed a figure showing a swab and another figure showing an electromechanical device, but the district court make a finding, in which the Federal Circuit did not find clear error, that those figures were directed to different embodiments and did not anticipate the patent. The Federal Circuit further felt that the manufacturer presented a weak case of obviousness.

Also, the Federal Circuit did not find the injunction overbroad because it enjoined all sales of the manufacturer’s device when the patent was only directed to a single method of use. In upholding the injunction, the Federal Circuit discounted arguments of non-infringing uses as being unsupported and contradicted.