Wednesday, October 31, 2007

ED Va enjoins implementation of USPTO rules

The PLI website (which presented "live" coverage) stated:

John White, known to many patent attorneys across the nation as the guy who helped them pass the patent bar examination, played the role of ace reporter live from the Eastern District of Virginia. According to John, "there was an audible sigh in the courtroom when Judge Cacheris said the rules were enjoined." No doubt, those in attendance were quite happy that Judge Cacheris kept the status quo.

In an earlier blog post John had said that the courtroom was full, and reporters were everywhere. As it turns out, the courtroom was full of patent attorneys and there was only one reporter who apparently left early. How John could mistake concerned patent attorneys for reporters is something we will have to ask him later, maybe he should stick to his day job!

In any event, what John just told me via telephone is that Judge Cacheris did not make any statements about the likely merits of the case when making his ruling from the bench. He will, however, be issuing a formal written opinion which will be entered sometime this afternoon. As soon as we receive that ruling we will post it together with our analysis.


Blogger David Woycechowsky said...

This seems pretty appealable if the USPTO wants to because the decision seems kind of inconsistent with eBay v. MercExchange (S. Ct. 2006). What I mean:

Here is something troubling that the district court said in its grant of injunction:

The Federal Circuit has generally treated the grant or denial of a preliminary injunction as a procedural matter and
thus has applied the procedural law of the regional circuit in which the case was brought. See Texas Instruments, Inc. v.
Tessera, Inc., 231 F.3d 1325, 1328 (Fed. Cir. 2000); Mikohn v. Gaming Corp. v. Acres Gaming, Inc., 165 F.3d 891, 894 (Fed. Cir.
1998). However, where “the issue pertains to or is unique to patent law,” the Federal Circuit has applied its own law to both
substantive and procedural issues “intimately involved in the substance of enforcement of the patent right.” Amana
Refrigeration, Inc., v. Quadlux, Inc., 172 F.3d 852, 856 (Fed. Cir. 1999)(citations omitted); see also Mikohn, 165 F.3d at 894
(stating that the Federal Circuit has given “dominant effect to Federal Circuit precedent insofar as it reflects considerations
specific to patent issues”). To the extent that GSK’s Motion deals with the propriety of the Final Rules under the patent
laws, the Court will apply the law of the Federal Circuit with respect to the issuance of a preliminary injunction.

The grant of injunction does not cite eBay. Arguably, eBay stands for the proposition that special, Fed.-Cir-specific or patent-specific rules for granting injunction do not exist. Money quote from eBay decision:

[the traditional 4 factor test for injunction] with equal force to disputes arising under the Patent Act. As this Court has long recognized, “a major departure from the long tradition of equity practice should not be lightly implied.” . . . Nothing in the Patent Act indicates that Congress intended such a departure. To the contrary, the Patent Act expressly provides that injunctions “may” issue “in accordance with the principles of equity.” . . .
In reversing the District Court, the Court of Appeals departed in the opposite direction from the four-factor test. The court articulated a “general rule,” unique to patent disputes, “that a permanent injunction will issue once infringement and validity have been adjudged.” . . . The court further indicated that injunctions should be denied only in the “unusual” case, under “exceptional circumstances” and “‘in rare instances . . . to protect the public interest.’” . . . Just as the District Court erred in its categorical denial of injunctive relief, the Court of Appeals erred in its categorical grant of such relief.

Because opposition to the new rules is so universal and strong, I join pretty much all patent attys in hoping that the injunction sticks, but I really wonder what Fed. Cir. will do if the grant is appealed there.

7:00 AM  

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