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            Discussion of federal preliminary injunction law must now begin with two recent United States Supreme Court cases. 

             In Munaf v. Geren, 553 U.S. ___, 128 S.Ct. 2207 (2008), the Supreme Court vacated and remanded decisions on two habeas petitions by detainees, who sought, inter alia, preliminary injunctions to prevent transfer to Iraqi custody.  Regarding the preliminary injunction, the Court “beg[a]n with the basics”:  “A preliminary injunction is an ‘extraordinary and drastic remedy,’” that “is never awarded as of right.  Rather, a party seeking a preliminary injunction must demonstrate, among other things, ‘a likelihood of success on the merits.’”  Id. at 2219.  The Court found fault with the lower court’s failure to apply that standard.  Id. (quoting Omar v. Harvey, 416 F. Supp. 2d 19, 23-24 (D.C. 2006)).  Although the D.C. district court had not relied on the case specifically, it had applied a preliminary injunction test indistinguishable from that adopted by the Fourth Circuit in Blackwelder Furniture Co. v. Seilig Manufacturing Co., 550 F.2d 189 (4th Cir. 1977).  See, e.g., Omar, 416 F. Supp. 2d at 22, 29.

             For more on Blackwelder and the change in the law, along with a discussion of the law in Virginia state court, see this article by Brad Davenport and yours truly in the Spring 2009 Virginia State Bar’s Litigation section news, as well as this brief update in the Fall 2009 issue, noting that the Fourth Circuit later officially put Blackwelder to rest in The Real Truth About Obama, Inc. v. Federal Election Commission et al., 575 F.3d 342, 346 (4th Cir. 2009).

            In Winter v. Natural Resources Defense Council, Inc., 129 S.Ct. 365 (2008), the Supreme Court reversed a Ninth Circuit decision affirming a district court’s grant of a preliminary injunction imposing restrictions on the Navy’s use of active sonar to prevent harm to sea animals.  Citing Munaf and other cases, the Court explained that “A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.”  Id. at 374 (emphasis added, citations omitted).  As they had done in Munaf, the lower courts in Winter employed a flexible analysis in which a strong showing on one factor allowed a much weaker showing on another – the twist was that the lower courts had concluded there was a strong likelihood of success on the merits, making the “‘possibility’ of irreparable harm” sufficient.  Id. at 375.  The Supreme Court reiterated its “extraordinary remedy” language from Munaf and stated that its “frequently reiterated standard requires plaintiffs seeking preliminary relief to demonstrate that irreparable injury is likely in the absence of an injunction.”  Id. at 375-76.

            With that necessary background, let’s turn to the opinion in PRE Holding.

            After quoting the Winter standard, the Court repeated several points “accentuated” by the U.S. Supreme Court – namely, “that a plaintiff seeking preliminary relief must demonstrate ‘that irreparable harm is likely in the absence of an injunction’” and that “‘injunctive relief [is] an extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief.’”  PRE Holding at 2 (quoting Winter). 

            The Court then noted that the Federal Circuit had used “likely” in describing what a patent plaintiff need prove for a preliminary injunction prior to Winter, citing Sanofi-Synthelabo v. Apotex, Inc., 470 F.3d 1368, 1374 (Fed. Cir. 2006).  And it quoted Altana Pharma AG v. Teva Pharms. USA, Inc., 566 F.3d 999, 1006 (Fed. Cir. 2009), for the proposition that “if the accused infringer 'raises a substantial question concerning validity, enforceability, or infringement (i.e., asserts a defense that [the movant] cannot show 'lacks substantial merit') that preliminary injunction should not issue.’”  PRE Holding at 2-3.

             After discussing the patents at issue, the Court concluded as follows:  “While the evidence appears to tilt in Plaintiffs' favor, the Court must conclude at this preliminary stage that the evidence, when collectively viewed, still raises a substantial question as to whether the exhalation pathways are sufficiently similar structurally to warrant a finding of infringement….  ‘[b]ecause a preliminary injunction affords, on a temporary basis, the relief that can be granted permanently after trial, the party seeking the preliminary injunction must demonstrate by 'a clear showing' that, among other things, it is likely to succeed on the merits at trial.’  Plaintiffs' evidence fails to meet this standard at this stage.”  Id. at 8 (quoting Real Truth About Obama) (citations omitted).

            What seems to have stirred debate is that the Court quoted Fourth Circuit case law and repeated Winter’s “clear showing” language, which some label as dictum, rather than stating that there needed to be a “reasonable likelihood” of success on the merits (language used in some pre-Winter Federal Circuit cases).

             The first problem is one of wording and clarity.  The standard for preliminary injunctions already contains vast amounts of wiggle room, both because it asks a judge to weigh the “likelihood of success” in litigation and because “the patentee's entitlement to such an injunction is a matter largely within the discretion of the trial court.”  Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375 (Fed. Cir. 2009). (Thus, a “deferential standard of review” applies, requiring “a showing that ‘the court made a clear error of judgment in weighing relevant factors or exercised its discretion based upon an error of law or clearly erroneous factual findings.’”  Id.

            When you already have a “likelihood” standard, on which discretionary decisions are made, adding additional language – e.g., a “reasonable likelihood,” or a “clear showing” – serves more to obfuscate than anything else.  Making matters less clear by adding words is a problem lawyers routinely confront, and courts are not immune. 

            Indeed, the Federal Circuit itself recently expressed puzzlement at the effect of its own cases’ language.  See Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1376 (Fed. Cir. 2009) (“It is not clear whether the addition of ‘reasonable’ adds anything substantive to the test”).  The Federal Circuit further noted that some commentators have concluded the answer is no.  See id. at 1376 n.2 (quoting the Wright & Miller treatise’s conclusion that, despite the “bewildering variety of formulations of the need for showing some likelihood of success,” “the verbal differences do not seem to reflect substantive disagreement”).

             Moreover, concluding that PRE Holding raises the bar (assuming that one could discern where the bar was before and that it is different now), seems to ignore that the Court was plainly applying its view of both Winter and Federal Circuit law. 

            In PRE Holding, the Court applied the four-factor test from Winter.  On the first factor (“likelihood of success on the merits”), the Court concluded “that the evidence, when collectively viewed, still raises a substantial question as to whether the exhalation pathways are sufficiently similar structurally to warrant a finding of infringement.”  PRE Holding at 8.  That “substantial question” language echoes the Federal Circuit in Altana Pharma AG, 566 F.3d at 1006, which the Court had quoted previously in its opinion. 

            The Federal Circuit has explained what the “substantial question” language means, see Titan Tire 566 F.3d at 1377-79, but as it has stated, the bottom line is that Winter governs in patent infringement cases too.  See id. at 1380 (“Asking whether the challenger has raised a substantial question of invalidity in the manner we have described may be a useful way of initially evaluating the evidence, but the ultimate question regarding the first preliminary injunction factor remains that of the patentee's likelihood of success on the merits.  The Supreme Court has stated that the general rules applicable to injunctions in civil actions apply equally to injunctions in patent cases; there is no room for making the substantial question test a substitute or replacement for the established test for injunctions.”).

             In sum, at least in comparison with precedents like Blackwelder, it is fair to see recent Supreme Court case law as raising the bar.  But PRE Holding, in my mind, does not.  And debating whether the “clear showing” language in Winter is dicta may be little more than an academic exercise.  See, e.g., DaimlerChrysler Corp. v. United States, 361 F.3d 1378, 1385 n.3 (Fed. Cir. 2004) (“even if dicta, we would feel obligated to follow the Supreme Court's explicit and carefully considered statements”) (citing prior Federal Circuit cases).