United States Court of Appeals
for the Federal Circuit
__________________________
KIMBERLY-CLARK WORLDWIDE, INC. AND
KIMBERLY-CLARK GLOBAL SALES, LLC,
Plaintiffs-Appellees,
v.
FIRST QUALITY BABY PRODUCTS, LLC AND
FIRST QUALITY RETAIL SERVICES, LLC,
Defendants-Appellants.
__________________________
2010-1382
__________________________
Appeal from the United States District Court for the
Eastern District of Wisconsin in case no. 09-CV-0916,
Judge William C. Griesbach.
__________________________
ON PETITION FOR PANEL REHEARING AND
REHEARING EN BANC
__________________________
CONSTANTINE L. TRELA, JR., Sidley Austin LLP, of
Chicago, Illinois, filed a combined petition for rehearing
and rehearing en banc for plaintiffs-appellees. With him
on the petition were BRADLEY C. WRIGHT, Banner &
Witcoff, Ltd., of Washington, DC; MARC S. COOPERMAN, J.
PIETER VAN ES, MATTHEW P. BECKER, AIMEE B. KOLZ,
MICHAEL L. KRASHIN, and KATIE L. BECKER, of Chicago,
Illinois. Of counsel was CHRISTOPHER B. ROTH, Banner &
Witcoff, Ltd., of Washington, DC.
KIMBERLY-CLARK v. FIRST QUALITY 2
KENNETH P. GEORGE, Amster Rothstein & Ebenstein
LLP, of New York, New York, filed a response for defen-
dants-appellants. With him on the response were IRA E.
SILFIN, MICHAEL V. SOLOMITA, CHARLES R. MACEDO, and
BRIAN COMACK.
__________________________
Before RADER, Chief Judge, NEWMAN, LOURIE, BRYSON,
LINN, DYK, PROST, MOORE, O’MALLEY, and REYNA, Circuit
Judges.
PER CURIAM.
NEWMAN, Circuit Judge, with whom O’MALLEY and
REYNA, Circuit Judges, join, dissents from the denial of
the petition for rehearing en banc.
O’MALLEY, Circuit Judge, dissents from the denial of
the petition for rehearing en banc.
ORDER
A combined petition for panel rehearing and rehear-
ing en banc was filed by Plaintiffs-Appellees, and a re-
sponse thereto was invited by the court and filed by
Defendants-Appellants. The petition for rehearing was
referred to the panel that heard the appeal, ∗ and thereaf-
ter the petition for rehearing en banc and the response
were referred to the circuit judges who are authorized to
request a poll of whether to rehear the appeal en banc. A
poll was requested, taken, and failed.
Upon consideration thereof,
IT IS ORDERED THAT:
∗
Judge Friedman, who was a member of the
panel, died July 6, 2011 and did not participate.
United States Court of Appeals
for the Federal Circuit
__________________________
KIMBERLY-CLARK WORLDWIDE, INC. AND
KIMBERLY-CLARK GLOBAL SALES, LLC,
Plaintiffs-Appellees,
v.
FIRST QUALITY BABY PRODUCTS, LLC AND
FIRST QUALITY RETAIL SERVICES, LLC,
Defendants-Appellants.
__________________________
2010-1382
__________________________
Appeal from the United States District Court for the
Eastern District of Wisconsin in Case No. 09-CV-0916,
Judge William C. Griesbach.
__________________________
NEWMAN, Circuit Judge, with whom O’MALLEY and
REYNA, Circuit Judges, join, dissenting from denial of the
petition for rehearing en banc.
I respectfully dissent from the denial of Kimberly-
Clark’s petition for rehearing en banc. The panel’s view of
the law governing preliminary injunctions warrants correc-
tion, for it is in conflict with the law of the Supreme Court,
in conflict with the law of all of the regional circuits, and in
conflict with controlling Federal Circuit precedent. Recent
aberrations, including this case, have imparted uncertainty
KIMBERLY-CLARK v. FIRST QUALITY 2
and brought further conflict to our own precedent. To
reestablish reliable law this issue should be taken en banc,
and a consistent position taken on which the district courts
and the concerned public can rely.
The matter is not trivial, for it affects whether a pre-
liminary injunction is available in a patent case. There is a
large difference between whether the movant is likely to
prevail after trial of the merits, and whether the nonmovant
has proffered a pre-trial defense that “does not lack sub-
stantial merit.” 1 In deciding whether the patent right
should be preserved pendente lite, the question of whether to
grant a preliminary injunction includes consideration of the
equities and relative harms, not simply whether the ac-
cused infringer has offered a colorable basis for avoiding
summary judgment.
The question before the panel was whether the district
court abused its discretion in granting the preliminary
injunction. The panel, reversing the district court for three
of the four patents, holds that it is an abuse of discretion to
grant a preliminary injunction unless the proposed defense
”lacks substantial merit.” Thus the panel offers a one-sided
presentation of the accused infringer’s position and gives
perfunctory treatment to the patentee’s position, even as the
panel affirms the district court’s findings that the factors of
irreparable harm, the balance of harms, and the public
interest, all favor the patentee. The panel simply rules that
if an accused infringer’s position does not lack substantial
merit, no preliminary injunction is available. The appropri-
ate question, however, is whether the movant is likely to
prevail on the merits, not whether the accused infringer can
1 The panel now issues an “errata,” changing “sub-
stantially meritless” in the panel opinion to “lack substan-
tial merit.” The panel does not explain its “error,” nor how
its new usage is free of that error.
3 KIMBERLY-CLARK v. FIRST QUALITY
raise a defense. The panel’s ruling violates the Court’s
requirement that injunctions in patent cases are subject to
the same rules as for other causes.
Inconsistent judicial statements of the law and its appli-
cations defeat a stable and reliable foundation for commerce
based on law. Consistency in the law is no less important in
patent matters, where public and private interests are
advanced by investment in technological commerce. This
court’s conflicting rules with respect to preliminary injunc-
tions should be resolved.
DISCUSSION
The Court has often mentioned the standard for issu-
ance of a preliminary injunction. E.g., Winter v. Natural
Res. Def. Council, Inc., 555 U.S. 7, 20 (2008) (“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 injunc-
tion is in the public interest.”); Amoco Prod. Co. v. Village of
Gambell, 480 U.S. 531, 546 n.12 (1987) (“The standard for a
preliminary injunction is essentially the same as for a
permanent injunction with the exception that the plaintiff
must show a likelihood of success on the merits rather than
actual success.”). This traditional standard is recited in the
panel’s opinion, but it is ignored. Instead, the panel adopts
the irregular standard that no preliminary injunction is
available if the defendant has raised a defense that does not
lack substantial merit.
The panel also does not properly consider, on motion for
a preliminary injunction, the presumptions and burdens
that will inhere at trial. That too is contrary to controlling
precedent. See Gonzales v. O Centro Espirita Beneficente
KIMBERLY-CLARK v. FIRST QUALITY 4
Uniao do Vegetal, 546 U.S. 418, 429 (2006) (“[T]he burdens
at the preliminary injunction stage track the burdens at
trial.”); AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1050
(Fed. Cir. 2010) (the district court, granting a preliminary
injunction, did not “clearly err by concluding that at trial
Apotex will likely not be able to demonstrate by clear and
convincing evidence that the Thorax advertisement antici-
pates the asserted method claims”). For proving invalidity
of an issued patent, the presumptions and burdens are
established by statute: “A patent shall be presumed valid . .
. . The burden of establishing invalidity of a patent or any
claim thereof shall rest on the party asserting such invalid-
ity.” 35 U.S.C. §282. This burden “exists at every stage of
the litigation.” Canon Computer Sys., Inc. v. Nu-Kote Int’l,
Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1998). In Microsoft
Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242 (2011), the
Court confirmed that invalidity must be proved by clear and
convincing evidence.
Most Federal Circuit decisions have been faithful to the
established rules. See, e.g., Sanofi-Synthelabo v. Apotex,
Inc., 470 F.3d 1368, 1374 (Fed. Cir. 2006) (applying the
applicable presumptions and burdens in reviewing the grant
of a preliminary injunction); Gillette Co. v. Energizer Hold-
ings, Inc., 405 F.3d 1367, 1370 (Fed. Cir. 2005) (“In order to
demonstrate a likelihood of success on the merits, Gillette
has to show that, in light of the presumptions and burdens
that will inhere at trial on the merits, (1) Energizer likely
infringes the ’777 patent, and (2) the claims of the ’777
patent will likely withstand Energizer’s challenges to valid-
ity.”); Ranbaxy Pharm., Inc. v. Apotex, Inc., 350 F.3d 1235,
1239 (Fed. Cir. 2003) (applying the traditional four factors
of “(1) a reasonable likelihood of success on the merits; (2)
irreparable harm if the injunctions were not granted; (3) the
balance of the hardships and (4) the impact of the injunction
on the public interest,” and reiterating that the showing of
5 KIMBERLY-CLARK v. FIRST QUALITY
reasonable likelihood of success on the merits must be “in
light of the presumptions and burdens that will inhere at
trial on the merits”); PPG Indus., Inc. v. Guardian Indus.,
Inc., 75 F.3d 1558, 1566 (Fed. Cir. 1996) (“The ultimate
question, however, is whether the challenger’s evidence of
invalidity is sufficiently persuasive that it is likely to over-
come the presumption of patent validity.”); Reebok Int’l Ltd.
v. J. Baker, Inc., 32 F.3d 1552, 1555 (Fed. Cir. 1994)
(“Whether a preliminary injunction should issue turns upon
four factors: (1) the movant’s reasonable likelihood of suc-
cess on the merits; (2) the irreparable harm the movant will
suffer if preliminary relief is not granted; (3) the balance of
hardships tipping in its favor; and (4) the adverse impact on
the public interest.”); Rosemount, Inc. v. Int’l Trade
Comm’n, 910 F.2d 819, 821 (Fed. Cir. 1990) (“To grant the
equitable relief of an injunction prior to trial, a district court
traditionally considers and balances the factors of: (1) the
movant’s likelihood of success on the merits; (2) whether or
not the movant will suffer irreparable injury during the
pendency of litigation if the preliminary injunction is not
granted; (3) whether or not that injury outweighs the harm
to other parties if the preliminary injunction is issued; and
(4) whether the grant or denial of the preliminary injunction
is in the public interest.”).
The district court found that the accused infringer, First
Quality Baby Products, was not likely to meet these burdens
as to the four manufacturing patents in suit. The panel did
not find otherwise. The panel’s reversal of the district
court’s ruling as to three patents is simply based on whether
First Quality raised a question that “does not lack substan-
tial merit.” This standard essentially negates the possibility
of grant of a preliminary injunction to preserve the status
quo during patent litigation, for in today’s complex patent
law it is hard to imagine a case in which a defense that is
KIMBERLY-CLARK v. FIRST QUALITY 6
“not substantially meritless” cannot be devised at the pre-
liminary stage.
The panel’s approach is in conflict with not only the Su-
preme Court, but with every other circuit. All require
consideration of the likely outcome on the merits as well as
the equitable factors. See, e.g., CSX Transp. Inc. v. Wil-
liams, 406 F.3d 667, 670 (D.C. Cir. 2005) (“In considering
whether to grant preliminary injunctive relief, the court
must consider whether: (1) the party seeking the injunction
has a substantial likelihood of success on the merits; (2) the
party seeking the injunction will be irreparably injured if
relief is withheld; (3) an injunction will not substantially
harm other parties; and (4) an injunction would further the
public interest.”); Wine & Spirits Retailers, Inc. v. Rhode
Island, 418 F.3d 36, 46 (1st Cir. 2005) (“A district court
must weigh four factors in determining whether to issue a
preliminary injunction: (1) the likelihood of success on the
merits; (2) the potential for irreparable harm [to the
movant] if the injunction is denied; (3) the balance of rele-
vant impositions, i.e., the hardship to the nonmovant if
enjoined as contrasted with the hardship to the movant if no
injunction issues; and (4) the effect (if any) of the court's
ruling on the public interest.”); Opticians Ass’n of Am. v.
Indep. Opticians of Am., 920 F.2d 187, 191-92 (3d Cir. 1990)
(“When ruling on such a motion, the district court must
consider four factors: [A] the likelihood that the applicant
will prevail on the merits at final hearing; [B] the extent to
which the plaintiffs are being irreparably harmed by the
conduct complained of; [C] the extent to which the defen-
dants will suffer irreparable harm if the preliminary injunc-
tion is issued; and [D] the public interest.”); WV Ass’n. of
Club Owners & Fraternal Servs., Inc. v. Musgrave, 553 F.3d
292, 298 (4th Cir. 2009) (“In order to receive a preliminary
injunction, a plaintiff must establish that he is likely to
succeed on the merits, that he is likely to suffer irreparable
7 KIMBERLY-CLARK v. FIRST QUALITY
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.”); Canal Authority of State of Florida v.
Callaway, 489 F.2d 567, 572 (5th Cir. 1974) (“The four
prerequisites are as follows: (1) a substantial likelihood that
plaintiff will prevail on the merits, (2) a substantial threat
that plaintiff will suffer irreparable injury if the injunction
is not granted, (3) that the threatened injury to plaintiff
outweighs the threatened harm the injunction may do to
defendant, and (4) that granting the preliminary injunction
will not disserve the public interest.”); Six Clinics Holding
Corp. II v. Cafcomp Sys., Inc., 119 F.3d 393, 399 (6th Cir.
1997) (“The factors to be considered by a district court in
deciding whether to grant a preliminary injunction are well-
established: (1) the likelihood that the party seeking the
preliminary injunction will succeed on the merits of the
claim; (2) whether the party seeking the injunction will
suffer irreparable harm without the grant of the extraordi-
nary relief; (3) the probability that granting the injunction
will cause substantial harm to others; and (4) whether the
public interest is advanced by the issuance of the injunc-
tion.”); Abbott Labs. v. Mead Johnson & Co., 971 F.2d 6, 11
(7th Cir. 1992) (“As a threshold matter, a party seeking a
preliminary injunction must demonstrate (1) some likeli-
hood of succeeding on the merits, and (2) that it has no
adequate remedy at law and will suffer irreparable harm if
preliminary relief is denied. If the moving party cannot
establish either of these prerequisites, a court's inquiry is
over and the injunction must be denied. If, however, the
moving party clears both thresholds, the court must then
consider: (3) the irreparable harm the non-moving party will
suffer if preliminary relief is granted, balancing that harm
against the irreparable harm to the moving party if relief is
denied; and (4) the public interest, meaning the conse-
quences of granting or denying the injunction to non-
parties.”); Entergy, Arkansas, Inc. v. Nebraska, 210 F.3d
KIMBERLY-CLARK v. FIRST QUALITY 8
887, 898 (8th Cir. 2000) (“The relevant factors on a motion
for a preliminary injunction are: (1) the probability of suc-
cess on the merits; (2) the threat of irreparable harm to the
movant; (3) the balance between this harm and the injury
that granting the injunction will inflict on other interested
parties; and (4) whether the issuance of an injunction is in
the public interest.”); Cal. Pharms. Ass’n v. Maxwell-Jolly,
563 F.3d 847, 849 (9th Cir. 2009) (“Plaintiffs seeking a
preliminary injunction in a case in which the public interest
is involved must establish that they are likely to succeed on
the merits, that they are likely to suffer irreparable harm in
the absence of preliminary relief, that the balance of equi-
ties tips in their favor, and that an injunction is in the
public interest.”); Resolution Trust Corp. v. Cruce, 972 F.2d
1195, 1199 (10th Cir. 1992) (“To obtain a preliminary in-
junction, the moving party must establish that (1) the
moving party will suffer irreparable injury unless the in-
junction issues; (2) the threatened injury to the moving
party outweighs whatever damage the proposed injunction
may cause the opposing party; (3) the injunction, if issued,
would not be adverse to the public interest; and (4) there is
a substantial likelihood that the moving party will eventu-
ally prevail on the merits.”); All Care Nursing Serv., Inc. v.
Bethesda Memorial Hosp., Inc., 887 F.2d 1535, 1537 (11th
Cir. 1989) (“A district court may grant injunctive relief if the
movant shows (1) a substantial likelihood of success on the
merits; (2) that irreparable injury will be suffered unless the
injunction issues; (3) that the threatened injury to the
movant outweighs whatever damage the proposed injunc-
tion may cause the opposing party, and (4) that if issued the
injunction would not be adverse to the public interest.”).
Some circuits, in cases where the eventual outcome is
hard to predict at that early stage, have authorized a pre-
liminary injunction when irreparable harm has been shown
and “the costs outweigh the benefits.” Citigroup Global
9 KIMBERLY-CLARK v. FIRST QUALITY
Mkts., Inc. v. VCG Special Opportunities Master Fund, Ltd.,
598 F.3d 30, 35 (2d Cir. 2010) (requiring “a party seeking a
preliminary injunction to show (a) irreparable harm and (b)
either (1) likelihood of success on the merits or (2) suffi-
ciently serious questions going to the merits to make them a
fair ground for litigation and a balance of hardships tipping
decidedly toward the party requesting the preliminary
relief,” and explaining that this standard “permits a district
court to grant a preliminary injunction in situations where
it cannot determine with certainty that the moving party is
more likely than not to prevail on the merits of the underly-
ing claims, but where the costs outweigh the benefits of not
granting the injunction.”); Dollar Rent A Car v. Travelers
Indem. Co., 774 F.2d 1371, 1374-75 (9th Cir. 1985) (“The
moving party may meet its burden by demonstrating either
(1) a combination of probable success on the merits and the
possibility of irreparable injury or (2) that serious questions
are raised and the balance of hardships tips sharply in its
favor.”).
Precedent’s concern for equity places the panel’s ruling
in sharp relief. No other circuit denies a preliminary in-
junction merely because the nonmovant has raised an
argument worthy of consideration. This is not the first case
in which this court has departed from the correct standard,
or even from recitation of the correct standard. In Ama-
zon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343,
1350 (Fed. Cir. 2001), the court stated that if the alleged
infringer “raises a substantial question concerning either
infringement or validity, i.e., asserts an infringement or
invalidity defense that the patentee cannot prove ‘lacks
substantial merit,’ the preliminary injunction should not
issue,” quoting a portion of Genentech, Inc. v. Novo Nordisk,
A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1997), where the court
interpreted precedent as meaning that “if Novo raises a
‘substantial question’ concerning validity, enforceability, or
KIMBERLY-CLARK v. FIRST QUALITY 10
infringement (i.e., asserts a defense that Genentech cannot
show ‘lacks substantial merit’) the preliminary injunction
should not issue.” The panel herein, with or without its
“errata,” adopts this “should not issue” posture without
appreciation of the context in which it arose, or of the fac-
tual and equitable situations in those cases that cited it.
However, a defense that does not “lack substantial merit” is
of a different order than a defense that is likely to succeed
by clear and convincing evidence.
This court’s departure from the universal standard con-
flicts with the Court’s admonition in eBay Inc, v. MercEx-
change, L.L.C., 547 U.S. 388, 391 (2006), where in
discussing the traditional principles for grant of a perma-
nent injunction, the Court held that “these familiar princi-
ples apply with equal force to disputes arising under the
Patent Act.” See Titan Tire Corp. v. Case New Holland,
Inc., 566 F.3d 1372, 1379 (Fed. Cir. 2009) (“The Supreme
Court has stated that the general rules applicable to injunc-
tions 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.” (citing eBay, 547 U.S. at 394)).
Just as the Court in eBay confirmed that there is no ab-
solute right to a permanent injunction, so there is no abso-
lute right to a preliminary injunction. See Salinger v.
Colting, 607 F.3d 68, 77-78 (2d Cir. 2010) (holding that eBay
applies “with equal force” to preliminary injunctions in
copyright cases). There is, however, an absolute right to the
principles of law and equity that govern such determina-
tions. See eBay, 547 U.S. at 391 (“a major departure from
the long tradition of equity practice should not be lightly
implied”).
11 KIMBERLY-CLARK v. FIRST QUALITY
In addition, this court has observed that the standard
for granting or denying a preliminary injunction is not
unique to patent law, and has ruled that the standard of the
regional circuit should apply. Mikohn Gaming Corp v. Acres
Gaming, Inc., 165 F.3d 891, 894 (Fed. Cir. 1998) (“The
Federal Circuit has generally viewed the grant of a prelimi-
nary injunction as a matter of procedural law not unique to
the exclusive jurisdiction of the Federal Circuit, and on
appellate review has applied the procedural law of the
regional circuit in which the case was brought.”). This rule,
too, receives no recognition in the panel’s opinion.
Recognizing the burgeoning divergences in Federal Cir-
cuit precedent, the court in Titan Tire undertook to recon-
cile various past statements and approaches, and explained
that “a finding of a ‘substantial question’ of invalidity is a
substantive conclusion by the trial court, a conclusion that
the patentee is unlikely to succeed on the merits of the
validity issue because the patentee is unable to establish
that the alleged infringer's invalidity defense ‘lacks substan-
tial merit’.” 566 F.3d at 1379. However, the attempted
reconciliation in Titan Tire appears to have failed, for this
panel provides no qualification for its position that if valid-
ity is reasonably questioned, the injunction will be denied.
As the Court has explained, “[t]he purpose of a prelimi-
nary injunction is merely to preserve the relative positions
of the parties until a trial on the merits can be held.” Univ.
of Texas v. Camenisch, 451 U.S. 390, 395 (1981); Mikohn,
165 F.3d at 895 (the preliminary injunction serves to pre-
serve the status quo “lest one side prevent resolution of the
questions or execution of any judgment by altering the
status quo”). Such purpose is of particular relevance for
patent property, for the patent term continues to run during
litigation, and a loss of patent-supported exclusivity during
the years of litigation may exhaust not only the life of the
KIMBERLY-CLARK v. FIRST QUALITY 12
patent, but also the value of the invention to its creator. Yet
the panel’s approach removes patent cases from the main-
stream of injunction practice. In reversing the district
court, the panel does not hold that the district court incor-
rectly assessed the likelihood of eventual outcome, or incor-
rectly found that the factors of irreparable harm, balance of
harms, and public interest all favored injunction. Instead,
the panel holds that if a patent is merely “vulnerable,” slip
op. at *5, a preliminary injunction is not available, despite
the factors weighing in the movant’s favor.
Although the panel recites the district court’s discre-
tionary authority, the panel does not explain how the dis-
trict court’s findings and balancing of the traditional factors
constituted an abuse of discretion. Again, the Court is
contrary. See Deckert v. Independence Shares Corp., 311
U.S. 282, 290 (1940) (“It is well settled that the granting of a
temporary injunction, pending final hearing, is within the
sound discretion of the trial court; and that, upon appeal, an
order granting such an injunction will not be disturbed
unless contrary to some rule of equity, or the result of an
improvident exercise of judicial discretion.”); We Care, Inc.
v. Ultra-Mark Int’l Corp., 930 F.2d 1567, 1570 (Fed. Cir.
1991) (“The court’s determination can be overturned only on
a showing that it abused its discretion, committed an error
of law, or seriously misjudged the evidence.”); Chrysler
Motor Corp. v. Auto Body Panels of Ohio, Inc., 908 F.2d 951
(Fed. Cir. 1990) (“Our rule regarding whether a preliminary
injunction should be granted or denied is that the trial court
should weigh and measure each of the four factors against
the other factors and against the magnitude of the relief
requested.”).
13 KIMBERLY-CLARK v. FIRST QUALITY
The matter warrants the attention of the full court. 2
Thus I must, respectfully, dissent from the court’s denial of
rehearing en banc.
2 The panel designated this opinion as “non-
precedential.” This designation does not relieve the court of
its responsibility to provide correct rulings in the case before
it. Nor are “non-precedential” rulings insulated from further
review; e.g., Teleflex, Inc. v. KSR Int’l Co., 119 Fed. Appx.
282 (Fed. Cir. 2005), reversed, 550 U.S. 398 (2007); A.C.
Aukerman Co. v. R.L. Chaides Const., Co., 1991 WL 62407
(Fed. Cir. 1991), vacated, 960 F.2d 1020 (Fed. Cir. 1992) (en
banc).
United States Court of Appeals
for the Federal Circuit
__________________________
KIMBERLY-CLARK WORLDWIDE, INC. AND
KIMBERLY-CLARK GLOBAL SALES, LLC,
Plaintiffs-Appellees,
v.
FIRST QUALITY BABY PRODUCTS, LLC AND
FIRST QUALITY RETAIL SERVICES, LLC
Defendant-Appellants.
__________________________
2010-1382
__________________________
Appeal from the United States District Court for the
Eastern District of Wisconsin in Case No. 09-CV-0916,
Judge William C. Griesbach.
__________________________
O’MALLEY, Circuit Judge, dissenting from denial of
the petition for rehearing en banc.
While I understand that it is unusual to address is-
sues raised by a nonprecedential opinion en banc, I be-
lieve there is merit in doing so in this case. I do not fault
the panel for approaching this matter as it did given our
precedent. I also understand that the panel carefully and
thoughtfully analyzed the validity issues presented to it.
Having said that, I believe our precedent regarding the
propriety of preliminary injunctive relief in patent cases
KIMBERLY-CLARK v. FIRST QUALITY 2
should be rethought and revised at our earliest opportu-
nity.
This court has historically approached its review of
trial court preliminary injunction rulings in a manner
that is inconsistent with the Supreme Court’s directives
in eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388
(2006); Rule 65 of the Federal Rules of Civil Procedure;
and the law of all of other regional circuits. We deviate
from the norm in this area in three ways. First, by em-
ploying a test which assesses whether a patent is “vulner-
able” to a claim of invalidity, or whether the assertion of
such a claim is “substantially meritless,” we employ a test
which is not the same as the “likelihood of success” test
that the rules and governing case law dictate. Second, we
inevitably ignore or give no real weight to the other
factors that Rule 65 tells us to consider, effectively rede-
fining the balancing process normally applied under that
rule. See Steven J. Lee, Recent Trends in Patent Litigation
under the Hatch-Waxman Act, 878 PLI/PAT 991, 1031
(Pract. Law Inst., Patents, Copyrights, Trademarks &
Literary Property Course Handbook, Series 2006) (noting
that this court has “focused the preliminary injunction
calculus on the ‘vulnerability’ of the patent claims to the
challenger’s defenses, rather than on a balancing of all
four of the equitable factors . . . .”). Third, we give virtu-
ally no deference to district court determinations in an
area where deference is clearly due.
District courts across the country have struggled with
our precedent in this area, concluding in large measure
that, whatever their views of the merits of a particular
preliminary injunction request, this court’s precedent
virtually mandates denial of all such motions. We should
bring our law into line with that applied in every other
regional circuit and with the standards mandated by
eBay.
3 KIMBERLY-CLARK v. FIRST QUALITY
For these reasons and all of those set forth in Judge
Newman’s dissent, and while it may be that the panel
ultimately reached the right result in this particular case,
I agree with Judge Newman that we should have taken
this opportunity to readdress our case law in this area.