Despite Obama's lost luster, Winter still holds sway in the W.D. Va.
Late last week, Judge Norman K. Moon of the U.S. District Court for the Western District of Virginia, issued a 55-page opinion denying a motion for preliminary injunction in patent litigation regarding a medical device. See MicroAire Surgical Instruments, LLC v. Arthrex, Inc., case no. 3:09-cv-00078 (W.D. Va. June 3, 2010).
The case involves claims of infringement of a patent acquired by MicroAire from 3M on a carpal tunnel release surgical instrument useful for “probing body cavities and manipulating tissue contained therein under continuous observation.”
Having failed to receive satisfaction from Arthrex in regard to Arthrex’s competing device, MicroAire sued for patent infringement and related torts and moved for a preliminary injunction.
Judge Moon applied the four-part test of Winter v. Natural Resources Defense Council, 129 S.Ct. 365 (2008), endorsed by the Federal Circuit in Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372 (Fed. Cir. 2009), and by the Fourth Circuit in the Real Truth About Obama, Inc. v. FEC, 575 F.3d 342 (4th Cir. 2009). For more background on Winter and the resulting changes in the Fourth Circuit’s preliminary injunctions law, see this prior post and the articles cited in it.
Astute observers may note at this point that Real Truth has since been vacated by the U.S. Supreme Court and remanded for further consideration in light of the Supreme Court’s controversial Citizen United decision regarding corporate political donations and activity. See 2010 U.S. LEXIS 3521 (April 26, 2010). This creates a temporary vacuum, although there appears to be no substantial prospect of anything but Winter filling that vacuum. Until another Fourth Circuit decision repeating Real Truth’s endorsement of the Winter standard, practitioners should be careful to note the subsequent history of Real Truth when citing that case and should also cite Winter directly and/or a post-Real Truth decision of the district court in which their case is pending (available in both Virginia district courts).
Moving back to Judge Moon’s opinion, the Court labeled the “likelihood of success on the merits” and the “irreparable harm” prongs as central to any preliminary injunctive analysis. It concluded that MicroAire had not established either one, construing the disputed terms “actuating means” and “essentially perpendicular” in such a way that likely infringement (literally or under the doctrine of equivalents) had not been shown and rejecting the claims of irreparable harm based on loss of goodwill, irreversible price erosion, or general decline in reputation of the surgical procedure at issue.
I could spend many pages relating portions of Judge Moon’s very thorough opinion. I will leave you, dear reader, to explore what you are most interested in. Suffice it to say that the analysis addresses how preliminary injunctions apply in the patent context, claim construction, means-plus-function limitations and prosecution disclaimer, the doctrine of equivalents and prosecution history estoppel, irreparable harm with respect to goodwill and the adequacy of damages, and the balancing of the equities as a patent approaches its expiration.
