Preliminary Injunction Denied - No Presumption of Irreparable Harm Post eBay

Tiber Laboratories, LLC v. Hawthorn Pharmaceuticals, Inc., No. 2:07-CV-0069 (N.D. Ga. Sept. 11, 2007) (Story, J.);
Tiber Laboratories, Inc., LLC v. Cypress Pharmaceuticals, No. 2:07-CV-0093 (N.D. Ga. Sept. 11, 2007) (Story, J.);
Cypress Pharmaceutical v. Tiber Laboratories, No. 2:07-CV-0092 (N.D. Ga. Sept. 11, 2007) (Story, J.).

Judge Story denied Plaintiff Tiber Laboratories, LLC’s (Tiber’s) Motion for Preliminary Injunction, based on a finding that Tiber’s delay in bringing the present infringement actions combined with its willingness to license the patent-in-suit precluded a finding of irreparable harm.

The patent at issue in these cases issued in December 2005 and is directed to a prescription cold medicine for pediatric patients. Tiber acquired the patent in December, 2006 from a now-defunct pharmaceutical company. In February, 2007, Tiber offered to license the patent to Cypress Pharmaceuticals (Cypress), but then filed suit against Cypress after it declined the offer. Four months later, Tiber filed a separate action against Hawthorn Pharmaceuticals, Inc. After consolidating these actions, Judge Story addressed Tiber’s request for a court order compelling Cypress and Hawthorn to place labels on the accused products directing that the accused products should not be prescribed or distributed to pediatric patients in accordance with Tiber’s patent rights.

The Court found that Tiber’s delay of thirteen months and seventeen months in bringing the present actions (Tiber was charged with its predecessor’s dilatory conduct) “warrant[ed] strongly against the finding of irreparable harm.” In addition, the Court found that Tiber’s apparent willingness to grant a license to Cypress during its prelitigation discussions further militated against the existence of irreparable harm. For these reasons, the Court held that it was precluded from awarding preliminary injunctive relief.

Although not necessary for its ultimate decision, the Court began its analysis by considering whether Tiber was entitled to the conventional presumption of irreparable harm in patent cases, or whether such a presumption should be rejected in light of the Supreme Court’s decision in eBay Inc. v. MercExchange, 126 S. Ct. 1837 (2006). In eBay, the Supreme Court unanimously rejected the Federal Circuit’s application of such a presumption, at least in the context of a permanent injunction, finding that no justification existed in the Patent Act for departing from the traditional considerations applicable to requests for equitable relief. Since then, the Federal Circuit has declined to address whether eBay similarly undermines the practice of presuming irreparable harm for purposes of a preliminary injunction. Judge Story noted, however, that most district courts have declined to apply a presumption of irreparable harm in the wake of eBay. Agreeing with this view, the Court concluded that eBay does not leave room for a presumption of irreparable injury in patent cases, whether raised at the preliminary or permanent injunction phase.

Thus, in the present case, the burden of proving irreparable injury was found to rest entirely with Tiber. Based on the facts above, the Court held that Tiber did not meet this burden. Moreover, the Court concluded that even if, despite eBay, Tiber was entitled to a presumption of irreparable injury, Cypress and Hawthorne had overcome that presumption by demonstrating that Tiber’s prelitigation conduct is inconsistent with a finding of irreparable harm.

Motion for Judgment on the Pleadings as to Inequitable Conduct Denied

Flo Healthcare Solutions, LLC v. Rioux Vision, Inc., No. 1:06-cv-02600 (N.D. Ga., Sept. 11, 2007) (Thrash, Jr., J).

Judge Thrash denied Plaintiff Flo Healthcare Solutions, LLC’s (Flo’s) Motion for Judgment on the Pleadings. In its Motion, Flo argued that the pleadings failed to state enough information to support Defendant Rioux Vision, Inc.’s (Rioux’s) claim of inequitable conduct. Specifically, Flo contended that the manner in which Flo allegedly concealed information from the USPTO was legally insufficient to support an inequitable conduct claim, and that the specific content of the information allegedly withheld was not “material.” The Court denied Flo’s Motion, stating that it needed additional information before it could conclusively decide issues such as the materiality of Flo’s alleged omissions. Although Judge Thrash characterized Rioux’s inequitable conduct arguments as “somewhat of a stretch,” he believed that Rioux sufficiently identified the ways in which Flo’s patent application could plausibly have misled the examiner, or violated a duty of candor. Rather than conclusively resolving the issues at this time, the Court suggested that the parties assert their claims and present all of their evidence during the motion for summary judgment stage of the litigation.

Motion to Stay Pending Reexamination of Patent-in-Suit Denied

Flo Healthcare Solutions, LLC v. Rioux Vision, Inc., No. 1:06-cv-02600 (N.D. Ga., Sept. 11, 2007) (Thrash, Jr., J.)

Judge Thrash denied Defendant Rioux Vision Inc.’s (Rioux’s) Motion to Stay Pending Reexamination of the Patent in Suit. After Plaintiff Flo Healthcare Solutions, LLC (Flo) filed the present action, Rioux sought inter partes reexamination of the patent-in-suit from the USPTO and filed a Motion to Stay. The Court denied the Motion to Stay for several reasons: (1) the parties had already expended substantial time and energy on discovery, which had concluded, and on summary judgment motions, which were due in two weeks; (2) the “marginal and theoretical benefit of additional information from a PTO reexamination, assuming it even takes place, does not outweigh Flo’s immediate interest in litigating the issue”; (3) the Court was not persuaded by Rioux’s speculative arguments as to what the USPTO might do in the event it grants reexamination; (4) Rioux failed to identify any hardship it would suffer in the absence of a stay; and (5) Rioux’s request for inter partes reexam had not yet been granted by the USPTO.

Claim Construction Order

Auction Management Solutions, Inc. v. Adesa, Inc., No. 1:05-cv-00638 (N.D. Ga., Sept. 11, 2007) (Story, J.)

Judge Story construed the claims of two patents relating to remote bidding systems that allow users to interactively participate in live auctions. Of particular note, the Court found a preamble term to be a claim limitation because the patentee “clearly and repeatedly” relied upon the preamble during prosecution to distinguish prior art references. Also of interest, the Court adopted its own definition of several claim terms after finding that, in light of the claim language and specification, neither party’s proposed construction was appropriate. In addition, the Court addressed such issues as prosecution disclaimer, the proper construction of means plus function limitations, whether the patentee acted as his own lexicographer and provided a explicit definitions for certain claim terms, and whether a claim term was so “insolubly ambiguous” as to be rendered indefinite.

New Northern District of Georgia Patent Cases

• Sept. 14, 2007: Walker v. Firestone, O’Malley, Muegerl, Heck, Elliot, Spirit of America Corp., Ralph, Labeau, AMAZE-N-TOW, LLC, and Brown, No. 2:07-cv-00105 (N.D. Ga.) (Story, J.) – Patent Infringement

• Sept. 24, 2007: Dynamic Depth, Inc. v. emFAST, Inc, No. 1:07-cv-02319 (N.D. Ga.) (Pannell, Jr., J.) – Patent Infringement

• Sept. 24, 2007: Dynamic Depth, Inc. v. Intellicomm, Inc., No. 1:07-cv-02320 (N.D. Ga.) (Pannell, Jr., J.) – Patent Infringement

• Sept. 24, 2007: Dynamic Depth, Inc. v. Faxcore, Inc., No. 1:07-cv-02321 (N.D. Ga.) (Pannell, Jr., J.) – Patent Infringement

• Oct. 2, 2007: Lesser and Creative Netventures, Inc. v. Williams and Doug Williams and Associates, LLC, No. 1:07-cv-02428 (N.D. Ga.) (Batten, J.) – Patent Infringement

• Oct. 4, 2007: Westminster, Inc. v. Silverlit Toys Manufactory, Ltd. and Silverlit Toys (U.S.A.), Inc., Spin Master, Ltd., Spin Master, Inc. (1), and Spin Master, Inc. (2), No. :07-cv-02450 (N.D. Ga.) (Forrester, J.) – Declaratory Judgment of Non-Infringement

• Oct. 5, 2007: TSYS Loyalty, Inc. v. Affinion Net Patents, Inc., No. 1:07-cv-02463 (N.D. Ga.) (Evans, J.) – Declaratory Judgment of Non-Infringement and Invalidity

• Oct. 18, 2007: Catch Curve, Inc. v. Intermedia.NET, Inc., No. 1:07-cv-02597 (N.D. Ga.) (Cooper, J.) – Patent Infringement

New Northern District of Georgia Patent Cases

Tillotson Corporation (d/b/a Best Mfg. Co.) v. Supermax Corporation Bhd., 511 Foodservice LTD., A. R. Medicom, Inc., Abco Safety, Abel Unlimited, Inc., Action Team Medical, Adenna, Inc., Aero-Med, Ltd., Agio Group Inc., Akers Industries, Inc., Alliance Rubber Products Sdn. Bhd., Almedic, Alpine Gloves, Inc., American Healthcare Products, Inc., Ancin Inc., APL Industries Bhd., APL Products Sdn. Bhd., Asia Dynamics, Inc., Asia Pacific Latex Sdn. Bhd., Asian Dynamics Group Inc., Atlantis Plastics, Inc., Audra Inc., Band-It Rubber Co., Basic Medical Industries Inc., Bay Medical Co., Inc., Beijing Chemical Industry Group Rubber & Plastic Products Factory, Beijing Huateng Rubber Plastic, Beijing Latex Factory, Beijing Reagent Latex Products Co., Ltd., Beijing Rubber & Plastics Products Factory, Besglove Medicare Sdn. Bhd., Best Tex International Inc., Bio-Flex International, Inc., Boss Manufacturing Co., Inc., Bowers Medical Supply Co., Boyd Medical & Safety Supplies, Inc., Bright Element Sdn. Bhd., Bright Way Holdings Sdn. Bhd., Brightness Corp., Carmichael International Service, Chemsource International Inc., Chemtech International, LLC, Clinical Supply Co., Coast Scientific Inc., Colonial Surgical Supply, Inc., Continental Lab Products, Contract Latex Dippers Sdn. Bhd., Cranberry (M) Sdn. Bhd., Cranberry USA Inc., Cross Pacific Enterprise Co. Ltd., Crosstex International, Inc., CT International, Dash Medical Gloves, Inc., Delta Medical Supply Group, Inc. (d/b/a The Delta Group), Dentexx/First Medica Infection Control Association, Dermatec Direct, Designer Care Co., Ltd., Digitcare Corp., Durasafe, Inc., Dynarex Corp., Econ Disposable Supplies, Inc., Essential Cares, Expeditors International of Washington, Inc., Firstline LLC, Genuine Glove, Global Imports USA, Globe Shamrock, Inc., Glovco (M) Sdn. Bhd., Glove Center, Glovco Holding Sdn. Bhd., Glove Source, Inc., Glove USA, Inc., Golden Pacific Healthcare Products, Inc., Goldmax Industries, Inc., Great Glove (USA) Inc., Great Glove Sdn. Bhd., Green Prospect Sdn. Bhd., GX Corporation Sdn. Bhd., H & L International, Inc., Handgards, Inc., Hartalega Holdings Bhd., Hartalega Sdn. Bhd., Hourglass Industries, Inc., Ideal Healthcare Group Co. Ltd., Ideal Medical Industries Co., Ltd., IMS, Inc., Indorama Group Companies, Innovative Healthcare Corp., Intco Industrial Co. Ltd., Inter Orient Services, Intermed Gloves, International Sourcing Co., Inc., Interworld Network Int'l, Inc., Jabil Global Services, JDA (Tianjin) Plastic Rubber Co., Ltd., JDA International, Inc., JXJ Labs Inc., Kemco Supply of Washington Inc., Kossan Gloves, Inc. (d/b/a Sintex), Kossan Holdings (M) Sdn. Bhd., Kossan Latex Industries (M) Sdn. Bhd., Kossan Rubber Industries Bhd., Laglove M Sdn. Bhd., LDF Industries, Inc., Li An Safety Products Corp., Liberty Glove and Safety Co., Life Science Products, Lifetime Glove Co., Inc., Lowrie & Company Medical Resource, Inc., Malaytex Products, Sdn. Bhd., Malaytex USA, Inc. (d/b/a Pro2 Solutions, Inc.), Mayer Laboratories Inc., Maytex Corp.,McCordick Glove & Safety Inc., Med Express Inc., Medco Supply Co., Medgluv Inc., Medical Safety Supply, Medi-Flex Limited (d/b/a Flexitech Sdn. Bhd.), Medisafe Technologies (USA), Medtexx Partners Inc., Metron Technology Corp., Metro-Pacifica, LLC, Mexpo International, Inc., Midavol Protective Products, Multisafe Sdn. Bhd., Mydent International Corp., Ningbo Tianshun Rubber Products Co., Nitritex, Ltd., Normandin Pacific Holdings Corp. (d/b/a Pacifica), Norpak Inc., North Safety Products, Inc., Northern Safety Co., Inc., Oak Technical, LLC, Pacewell USA Inc., Pac-Kem Value Medical Supply, PDQ Trading Co., Inc., Perfect Fit Glove Co., LLC, Perusahaan Getah Asas Sdn. Bhd., Pharmatex USA, Inc., PM Gloves, Inc., Preventive Care, Inc., Primary Products, Product Club, Inc., Prosemedic S.A., Pro-Stat Inc., Protective Industrial Products, Inc., PSS World Medical, Inc., PT Haloni Jane, PT Maja Agung Latexindo, PT Medisafe Technologies, PT Shamrock Manufacturing Corporation, PT Smart Glove Indonesia, QRP, Inc. (d/b/a QRP Gloves, Inc.), Quantum Labs Inc., Rampart International, Inc., Riverstone Resources Sdn. Bhd., RTS Supply, Seal Polymer Industries Bhd., Seal Polymer Industries Sdn. Bhd., Seattle Glove, Inc., Select Medical Products, Select Medical Supply Inc., Sentry Medical Products, Inc., Shamrock Manufacturing Company, Inc., Shamrock Manufacturing Company, Inc., Shamrock Marketing Company, Inc., Shanghai Champion Plastic Products Co., Ltd., Shanghai Knitwear Import & Export Co., Ltd., Sheen Moore Enterprises Co. Ltd., Shepard Medical Products, Inc., Sierra Scientific, Inc. (d/b/a Value-Tek), Smart Glove Corporation Sdn. Bhd., Smart Glove Holdings Sdn. Bhd., Solid Wing Trading Corp., Southern Pacific Coast Corporation (d/b/a Life Guard Medical Supply, Inc.), SRI Johani Sdn. Bhd., SS White Burs, Inc., Sterigard, Strata Medical Inc., Superior Glove Works Ltd., Supermax Glove Industries Sdn. Bhd., Supermax Glove Manufacturing Sdn. Bhd., Supermax Latex Products Sdn. Bhd., Supermax Sdn. Bhd., Supermax, Inc. (d/b/a Aurelia Gloves), Syrvet Inc., Techniglove International, Inc., The Cameron and Barkeley Co., Tillotson Healthcare Corp., TNT Enterprise, Inc., Tronex International Inc., United Delta, Inc., Universal X-Ray Company of Canada, UTI Pership (PVT) Ltd., Wear Safe (M) Sdn. Bhd., William A. McGinty Company, Yee Lee Corporation Bhd., Yee Lee Holdings Sdn. Bhd., YTY Holdings Sdn. Bhd., YTY Industry (Manjung) Sdn. Bhd., YTY Industry Sdn. Bhd., and Yujiang Ideal Medical Industries Co., Ltd.

Filed Sept. 27, 2007, Case No. 4:07-cv-00193 (N.D. Ga.) (Vining, Jr., J.) – Patent Infringement.