Monday, December 01, 2008

The meaning of Part VI of Abbott v. Sandoz on injunctions

In a post titled Whaling , the PatentHawk blog focusses on the injunction standards enumerated in the case Abbott Labs v. Sandoz,2008 U.S. App. LEXIS 21880 , decided on Oct. 21, and arrives at a punchline:

The combined signal from Munaf, Abbott and Winter mark a shift from the injunction chill of eBay, and earlier repeated statements from the Supreme Court that patent preliminary injunctive relief is an extraordinary remedy requiring a clear showing.

The Supreme Court has been less than clear in its jurisprudence on injunctions, as LBE pointed out in Will there be Unintended Consequences from the Supreme Court Decision in eBay v. MercExchange?

In Abbott, Judge Newman worked through, among other things, anticipation and obviousness defenses put forward by Sandoz, which analyses make for interesting reading. But, in terms of the panel vote, note Before NEWMAN, Circuit Judge, ARCHER, Senior Circuit Judge, and GAJARSA, Circuit Judge. Opinion for the court filed by Circuit Judge NEWMAN, in which Circuit Judge ARCHER concurs in the judgment and joins except as to Parts I and VI. Dissenting opinion filed by Circuit Judge GAJARSA. Note that part I was validity (anticipation and obviousness) and VI was THE ISSUE OF CONFLICTING PRECEDENT.

Part VI includes the text:

Supreme Court precedent is clear in stating that the same burdens and standards of proof apply in deciding the merits for preliminary injunction purposes, as in deciding the same questions upon full litigation. See, e.g., Gonzales, 546 U.S. at 429 (placing the burdens of proof for showing likelihood of success at the preliminary injunction stage). The Court explained in Amoco Production Co. v. Village of Gambell, AK, 480 U.S. 531, 546 n.2, 107 S. Ct. 1396, 94 L. Ed. 2d 542 (1987) [*67] that: [HN23] "The standard for a preliminary injunction is essentially the same as for a permanent injunction with the exception that the plaintiff must show a likelihood of success on the merits rather than actual success."

There is no reason why patent cases require unique treatment. See eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388. 394, 126 S. Ct. 1837, 164 L. Ed. 2d 641 (2006) ("[T]he [HN24] decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that such discretion must be exercised consistent with tradi-tional principles of equity, in patent disputes no less than in other cases governed by such standards."). The general cri-terion of likelihood of success on the merits, in the context of the equities of the particular case, are uniform throughout the regional circuits. All are consistent with the rulings of the Supreme Court, and, although the words vary, all refer to the likelihood of the eventual outcome, not whether a substantial question has been raised. In brief sampling, starting with the First Circuit, the court summarized the standard in Wine and Spirits Retailers, Inc. v. Rhode Island, 418 F.3d 36 (1st Cir. 2005):

The sine qua non of this four-part inquiry is likelihood of success on the merits: if the moving party cannot demonstrate that he is likely to succeed in his quest, the remaining factors become matter of idle curiosity.

Id. at 46 (citation omitted). The referenced "four-part inquiry" is "(1) the likelihood of success on the merits; (2) the potential for irreparable harm [to the movant] if the injunction is denied; (3) the balance of relevant impositions, i.e., the hardship to the nonmovant if enjoined as contrasted with the hardship to the movant if no injunction issues; and (4) the effect (if any) of the court's ruling on the public interest." Id. (alteration in original) (citations omitted).

Of Part VI, the dissent noted:

While Section VI of the opinion contains a superfluity of citations, it does not state the law relevant to this case. It is a pleasant, ambulatory, and meandering discussion; but it is not required to decide this case, is not part of the majority opinion, and is clearly dicta.


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