No Irreparable Harm, No Injunction Design Patent Dangers

July 26, 2013, 03:07 PM

Under 35 U.S.C. 283, a patentee may seek a preliminary injunction against an alleged infringer. The issuance of a preliminary injunction can be significant in a design patent case since the alleged infringer is often producing and profiting from an actual product to the detriment of the patent holder. In order to obtain a preliminary injunction, a patentee must show that: (1) his infringement suit is likely to succeed on the merits, (2) he is likely to suffer irreparable harm absent preliminary relief, (3) the balance of equities is in his favor, and (4) an injunction is in the publics interest. Titan Tire Corp. v. Case New Holland, Inc., 556 F.3d 1372, 1375-76 (Fed. Cir. 2009). Demonstrating irreparable harm can be difficult to establish as it entails making a clear showing that the patentee is likely to suffer substantial and immediate irreparable injury. Apple Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1325 (Fed. Cir. 2012). Additionally, in order to obtain a preliminary injunction, a patentee must generally show that remedies available at law, such as monetary damages, are inadequate to compensate for this substantial irreparable injury. eBay, Inc. v MercExhcange, LLC, 547 U.S. 388, 391 (2006). In a recent case out of the Western District of Virginia the district judge was asked to evaluate irreparable harm in the context of a preliminary injunction against an accused design patent. Robinson v. Bartlow, 2013 U.S. Dist. LEXIS 42677 (W.D. Va. Mar. 22, 2013). Specifically, the patent at issue was for a bra design with pockets while the accused product was known as the JoeyBra and was a bra design that also featured pockets (for carrying a credit card, cell phone, or keys). Id. at *4-6,14. In evaluating the claimed irreparable harm and whether monetary damages would compensate for such injuries, the WDVA district judge evaluated factors such as: market share and revenue loss, the likelihood of price erosion, and the loss of consumer goodwill. Id. at *15-16. The court concluded that because Plaintiff [did] not have a product for sale at this time and no evidence had been produced as to a loss of market share or consumer goodwill, Plaintiff had not demonstrated that he was at risk of irreparable harm in the absence of injunctive relief. Id. at *16-17. This case demonstrates that a design patent holder who is not actually producing a product will likely face a difficult task in establishing irreparable harm and obtaining a preliminary injunction.–Lauren Tallent Rogers