768 F. Supp. 2d 872
E.D. Va.2011Background
- FHCRC holds the '863 patent for dog breed identification and licensed it to Argus, which sublicensed to Mars.
- Plaintiffs filed suit against BioPet and PetSafe for infringement alleging use, sale, and offering to sell DNA breed identification services.
- Court previously granted a TRO; plaintiffs now seek a preliminary injunction under Rule 65.
- Defendants challenge infringement (especially claim 1, step (c)) and assert the patent is anticipated by prior art, including the Koskinen article.
- Court analyzes infringement, validity, irreparable harm, balance of equities, and public interest to decide on injunction.
- Court grants preliminary injunction conditioned on a $450,000 bond.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Infringement likelihood on claims 1, 20, 22, 28 | BioPet/PetSafe infringe claims by performing steps of claim 1 in the US. | Defendants do not perform all steps in the US; step (c) is not performed domestically. | Defendants perform step (c) in the US; infringement likely. |
| Validity and anticipation challenge | Presumed valid; Koskinen not prior art and other art fails to show substantial question of invalidity. | Koskinen and other arts anticipate/obvious; substantial question of invalidity exists. | Defendants failed to raise substantial question of invalidity; patent deemed valid. |
| Irreparable harm absent relief | Loss of customers, price erosion, and goodwill irreparably harms FHCRC; ongoing pricing disadvantage. | Public and third-party harms, potential business impact on BioPet/PetSafe. | Irreparable harm established in absence of injunction. |
| Balance of equities | Plaintiffs would be harmed by continued infringement; royalties and competitive disadvantage favor injunction. | Small BioPet facing bankruptcy; significant aggregate losses if enjoined. | Balance favors plaintiffs; equities support injunction. |
| Public interest | Protecting patent rights serves public welfare and innovation. | Injunction harms third parties relying on BioPet/PetSafe products. | Public interest supports enforcing patent rights. |
Key Cases Cited
- Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372 (Fed. Cir. 2009) (patent validity questions require substantial evidence of invalidity)
- Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142 (Fed. Cir. 2004) (test for anticipation and elements of claims)
- Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359 (Fed. Cir. 2001) (conceived and reduced to practice before reference can defeat validity)
- Centillion Data Sys., LLC v. Qwest Comm. Int'l, Inc., 631 F.3d 1279 (Fed. Cir. 2011) (use defined by control of the system)
- NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) (use of a patented process in a system)
- Canon Computer Sys., Inc. v. Nu-Kote Int'l, Inc., 134 F.3d 1085 (Fed. Cir. 1998) (presumption of validity at preliminary stage)