Federal Circuit Finds District Court Abused Its Discretion by Enjoining a Patent Holder from Making Allegations of Patent Infringement

Held: Under 35 U.S.C. §  287, a patentee is permitted to inform a potential infringer of the existence of its patent, and a court may only enjoin the patentee from such communication if the patentee has acted in bad faith.

Federal CircuitThe Federal Circuit recently reversed, vacated, and remanded a decision by the United States District Court for the Eastern District of Michigan, finding that the District Court had abused its discretion when it granted a preliminary injunction enjoining BlephEx, LLC 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. See Myco Indust., Inc. v. BlephEx, LLC, No. 2019-2374, 2020 U.S. App. LEXIS 10510 (Fed. Cir. Apr. 3, 2020) (Before Newman, O’Malley, and Taranto, Circuit Judges) (Order for the Court, O’Malley, Circuit Judge).

The case arrived at the Federal Circuit by way of appeal by BlephEx after the District Court granted a motion for preliminary injunction filed by Myco Industries, Inc. Myco alleged that BlephEx had engaged in unprotected speech by making false and misleading claims that Myco’s product, the AB Max, had infringed the claims of U.S. Patent No. 9,039,718 (’718 patent) owned by BlephEx.

The ’718 patent is directed to a device for cleaning eyelids to treat ocular diseases such as blepharitis, meibomitis, and dry eye syndrome. After filing the ’718 patent, Dr. James Rynerson entered into a partnership with John Choate to develop and market a product based on the device disclosed in the ’718 patent. However, after a few years, Choate ended the partnership with Rynerson and became chairman of Myco. Myco subsequently developed and marketed the AB Max for treating blepharitis using a design similar to the device disclosed in the ’718 patent.

In early 2019, Rynerson and Choate both attended a trade show in New Orleans. Myco alleges that Rynerson approached Choate at the trade show and loudly accused the AB Max of infringing the claims of the ’718 patent in front of several of Myco’s potential clients. Subsequently, Myco filed a declaratory judgment seeking a finding that Myco had not infringed the claims of the ’718 patent and that the claims of the ’718 patent were invalid. Myco additionally sought injunctive relief under Michigan and federal unfair competition laws on the basis that Rynerson had alleged, in bad faith, that the AB Max infringed the claims of the ’718 patent.

The District Court granted the preliminary injunction concluding that Myco had a likelihood of success on the merits of its patent non-infringement claim because the ’718 patent claims were limited to devices for treating posterior blepharitis rather than the anterior blepharitis that Myco had advertised that its AB Max could treat.

On appeal, the Federal Circuit found that the District Court had improperly limited the claims of the ’718 patent to a device for treating posterior blepharitis. Therefore, the District Court should not have found that Myco had a likelihood of succeeding on the merits regarding the non-infringement claim. Furthermore, the District Court had abused its discretion when it granted a preliminary injunction enjoining BlephEx’s speech without a finding of bad faith. Influencing the Federal Circuit’s decision was the fact that the District Court had not found the speech to be either false or misleading, nor had the District Court shown that BlephEx had acted in bad faith when it made the allegations of patent infringement.

Finding that the District Court had abused its discretion in enjoining BlephEx from making allegations of patent infringement without a finding of bad faith, the Federal Circuit reversed and vacated the District Court’s preliminary injunction and remanded the case back to the District Court for further proceedings.

The Author

Dustin Weeks

Dustin Weeks is a Partner in the intellectual property practice group at Troutman Sanders. His practice spans all areas of intellectual property law, including patent prosecution, patent litigation (including Hatch-Waxman litigation), and client counseling. He represents clients ranging from start-ups and solo inventors to Fortune 500 companies. Dustin works closely with his clients to learn their business objectives so that he can tailor strategies to procure, protect, and enforce their intellectual property. Dustin specializes in post-grant proceedings (e.g. Inter Partes Reviews) before the Patent Trial and Appeal Board (PTAB) where he has extensive experience representing both patent owners and petitioners across a wide range of technologies, including wireless networking, pharmaceuticals, MEMs devices, medical devices, and electro-mechanical consumer devices. Dustin's broad experience in patent prosecution, counseling, and patent litigation uniquely positions him to navigate the blended practice of post-grant proceedings.

For more information or to contact Dustin, please visit his Firm Profile Page.

Dustin Weeks

Joseph Robinson & Robert Schaffer  

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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  1. Mark Syman April 12, 2020 12:36 pm

    The fedteral district court decision that was reversed is just one more example how some people, including judges, just don’t want inventors to have protection of their inventions. Shameful.

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