News
Fusilamp’s Motion for Preliminary Injunction Denied Where Reexamination Order by PTO Establishes Substantial Question of Validity (FLSD)
September 2nd, 2010
Motion for Preliminary Injunction Denied August 31, 2010
Fusilamp, LLC v. Littelfuse, Inc., et. al. (1-10-cv-20528) FLSD
District Judge Cecilia M. Altonaga
Plaintiff Fusilamp, LLC’s filed a motion for preliminary injunction June 24, 2010 requesting the court to enjoin defendants, Littelfuse, Inc. and Catalina Performance Accessories, Inc. from infringing United States Patent No. 5,598,138 covering a fault-indicating blade fuse, typically used in automobiles. Fusilamp initially filed its complaint alleging patent infringement, declaratory judgment, and breach of contract on February 19, 2010. Shortly thereafter, Littelfuse filed a request for an ex parte reexamination of the ‘138 Patent. On May 20, 2010, the PTO granted and ordered reexamination of all requested claims.
By the court’s standard, to prevail on a motion for preliminary injunction, the plaintiff must show: (1) a substantial likelihood of success on the merits of the underlying case, (2) the movant will suffer irreparable harm in the absence of an injunction, (3) the harm suffered by the movant in the absence of an injunction would exceed the harm suffered by the opposing party if the injunction issued, and (4) an injunction would not disserve the public interest. The failure of the movant to establish even one of the four factors “would, standing alone, make preliminary injunctive relief improper.” Siegel v. LePore, 234 F.3d 1163, 1176 (11th Cir. 2000). A plaintiff alleging patent infringement demonstrates a substantial likelihood of success by showing: (1) the patent is likely to withstand a challenge to its validity; and (2) the plaintiff will likely prove the defendant is infringing the patent. See Amazon.com v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001).
Fusilamp USA maintained the ‘138 Patent was likely to withstand a challenge to its validity because it is presumed valid, and this presumption exists at every stage of the litigation. In response, Littelfuse pointed to the reexamination order granted by the PTO and examples of prior art that it contended undermined the patentability of an integrated light-emitting fault indicator fuse.
The court acknowledged that, at a trial to determine the validity of a patent, a patent is presumed valid under 35 U.S.C. § 282 and the burden is placed on the alleged patent infringer to overcome the presumption by clear and convincing evidence. However, the court found that this is not the same burden an alleged infringer must meet when it defends against a motion for preliminary injunctive relief. That is, the alleged infringer must only establish the existence of a substantial question as to the invalidity of the patent.
On this issue, the court found that, while the PTO’s decision to reexamine the ‘138 Patent is not dispositive on the issue of validity, it is relevant to whether a substantial question of invalidity has been raised:
“In arriving at its reexamination decision, the PTO considered the prosecution history of the ‘138 Patent and recognized a lack of clarity regarding an amendment to the original application as well as certain statements made by the patent applicant as to the novelty of the incorporated light-emitting electrical device … That the PTO has ordered a reexamination of the ‘138 Patent on grounds of patentability supports Fusilamp’s assertion of a substantial question regarding the patent’s validity.” Order p. 7 (citations omitted).
Ultimately the court found that the presumption of validity does not relieve a patentee who moves for a preliminary injunction from carrying the normal burden of demonstrating it will likely succeed on all disputed liability issues at trial, even where the issue concerns the patent’s validity. The court concluded that, because Littelfuse met its burden in establishing substantial questions exist as to the validity of the ‘138 Patent and Fusilamp USA failed to establish a substantial likelihood of success on the merits of the underlying claim, plaintiffs’ motion for preliminary injunction was denied.