955 F.3d 1
Fed. Cir.2020Background
- Myco Industries (plaintiff) owns U.S. Patent No. 9,039,718 (the ’718 patent) covering a method/device using an electromechanical swab to remove debris from the eyelid margin; BlephEx (defendant) commercialized a related product (BlephEx) and the inventor later worked with Myco.
- At the SECO 2019 trade show the patent inventor (Rynerson) confronted Myco/BlephEx personnel about possible infringement; witnesses’ accounts conflicted about whether he accused the AB Max of infringement or threatened litigation.
- Myco sued for declaratory relief (noninfringement and invalidity) and unfair competition, and moved for a preliminary injunction seeking to bar BlephEx from making infringement allegations or threatening Myco’s potential customers.
- The district court granted a preliminary injunction, concluding Myco showed a strong likelihood of success on noninfringement (reasoning: the ’718 claims were limited to treating posterior blepharitis while AB Max treats anterior blepharitis) and enjoined BlephEx from making allegations of infringement and threatening litigation.
- On appeal the Federal Circuit held the district court abused its discretion: it enjoined patentee speech without applying the required bad-faith/objective-baselessness standard, applied flawed claim-construction reasoning, and lacked evidence that threats were actually made; §287(c) does not make alleged infringement statements per se baseless.
Issues
| Issue | Plaintiff's Argument (Myco) | Defendant's Argument (BlephEx) | Held |
|---|---|---|---|
| Whether a court may preliminarily enjoin a patentee from communicating patent rights without a finding of bad faith | Injunction proper because statements/threats toward Myco’s customers were baseless and would harm Myco | Federal law requires a showing of bad faith (objectively baseless claims) before enjoining patent-notice speech | Reversed — injunction against patentee speech was an abuse of discretion because no finding of bad faith/objective baselessness was made |
| Whether Myco showed a strong likelihood of success on noninfringement by limiting the ’718 claims to posterior blepharitis | Prosecution history and claim language narrow the claims to treating posterior blepharitis; AB Max treats anterior blepharitis | Claims do not require contact only with the inner edge; claim differentiation and prosecution record do not clearly disclaim broader scope | Vacated — district court’s claim-construction and likelihood-of-success findings were flawed and remanded |
| Whether statements accusing medical practitioners of infringement are objectively baseless due to §287(c) immunity | §287(c) immunizes medical practitioners, so accusing them (or threatening them) is baseless and in bad faith | §287(c) removes remedies but does not negate infringement; statements can be in good faith and indirect-infringement theories remain possible | Rejected — §287(c) does not render infringement allegations automatically baseless |
| Whether the record supported an injunction against threatening Myco’s customers | Rynerson’s SECO statements ("taking action") amounted to threats that warranted injunction | Record lacks evidence of threats; witness testimony is conflicting and does not show threats to customers | Reversed — no evidentiary basis that threats were made; injunction against alleged threats was improper |
Key Cases Cited
- GP Indus., Inc. v. Eran Indus., Inc., 500 F.3d 1369 (Fed. Cir. 2007) (federal patent law requires showing of bad faith before enjoining patent-notice communications)
- Prof’l Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49 (1993) (objective baselessness standard for sham litigation)
- Mikohn Gaming Corp. v. Acres Gaming, Inc., 165 F.3d 891 (Fed. Cir. 1998) (patentee may communicate patent rights if held in good faith)
- Va. Panel Corp. v. MAC Panel Co., 133 F.3d 860 (Fed. Cir. 1997) (patentee may notify potential infringers of patent rights to allow decision whether to cease or license)
- Certified Restoration Dry Cleaning Network, L.L.C. v. Tenke Corp., 511 F.3d 535 (6th Cir. 2007) (four-factor preliminary injunction framework cited)
- Barry v. Medtronic, Inc., 914 F.3d 1310 (Fed. Cir. 2019) (direct surgeon infringement can support indirect-infringement claims against device makers)
- Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352 (Fed. Cir. 2002) (district courts may issue tentative claim constructions at the preliminary-injunction stage)
- Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375 (Fed. Cir. 2005) (prosecution disclaimer requires clear and unmistakable disavowal)
- Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335 (Fed. Cir. 2012) (claim differentiation presumption against reading dependent-claim limitations into independent claims)