[T]he estimated likelihood of success in establishing infringement is governed by Federal Circuit law. [A movant for a preliminary injunction in a patent case] need not meet [the] heightened "clear or substantial likelihood" standard [adopted by other courts], but [need only satisfy] the Federal Circuit's standard of whether success is more likely than not.

On November 27, 2012, in Revision Military, Inc. v. Balboa Mfg. Co., the U.S. Court of Appeals for the Federal Circuit (Newman,* Clevenger, Linn) vacated and remanded the district court's denial of Revision's motion for a preliminary injunction to enjoin Balboa from infringing U.S. Design Patents No. 537,098 and No. 620,039, which related to ballistic protective eyewear. The Federal Circuit stated:

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. [T]he heightened standard of "clear" or "substantial" likelihood of success on the merits applies when a movant seeks "an injunction that will alter rather than maintain the status quo." The district court held that the heightened standard applies here, because Balboa was already offering to sell the accused Bravo goggles to Revision's customers; the district court held that an injunction would alter Balboa's status. Thus the district court held that Revision must show a clear and substantial likelihood of success, and that a simple more-likely-than-not showing is insufficient.

With respect to the applicable standard, the Federal Circuit has explained that a preliminary injunction enjoining patent infringement pursuant to 35 U.S.C. §283 "involves substantive matters unique to patent law and, therefore, is governed by the law of this court." . . . "Because the issuance of an injunction pursuant to this section enjoins 'the violation of any right secured by a patent' . . . a preliminary injunction of this type, although a procedural matter, involves substantive matters unique to patent law and, therefore, is governed by the law of this court."

Substantive matters of patent infringement are unique to patent law, and thus the estimated likelihood of success in establishing infringement is governed by Federal Circuit law. Revision need not meet the Second Circuit's heightened "clear or substantial likelihood" standard, but rather the Federal Circuit's standard of whether success is more likely than not. In turn, the weight of the likelihood may be considered as an equitable factor, along with issues of the position of the parties with respect to the status quo, in the ultimate balance of equities.

The law of design patent infringement is stated in Gorham Co. v. White, 81 U.S. 511 (1871), as whether "in the eye of an ordinary observer, giving such attention as a purchaser usually gives, [the] two designs are substantially the same." "[T]he 'ordinary observer' test should be the sole test for determining whether a design patent has been infringed."

Revision states that to the eye of the ordinary observer, and viewing the designs as a whole, the designs here at issue are substantially the same. Revision offers a comparison of the patented designs in the '098 and '039 patents, and photographs of the Bobster Bravo . . . . Although the district court stated the correct "overall design" standard, the court focused on features that "stand out as dissimilar," reciting the shape and sizes of the lenses, the concavity of the nose bridge, and the venting along the top and bottoms. Revision states that the design of the Bravo goggles and the patented goggles is substantially the same, and that any differences would not be noticed by the ordinary observer.

Although individual features may indeed serve in assessing the "impact on the overall appearance," in determining whether apparently minor differences between specific features would be recognized as distinguishing the designs, it is often helpful to refer to any prior art with which the ordinary observer would reasonably be familiar. "[T]he background prior art, provides . . . a frame of reference and is therefore often useful in the process of comparison." The district court did not consider the prior art context in which the ordinary observer test is applied. Although the district court stated that "[b]ecause this is not a particularly close case, the court does not need prior art as a 'frame of reference' to apply the 'ordinary observer test,'" the record suggests otherwise. On remand, the district court may redetermine the question, applying the design-as-a-whole criterion and the more-likely-than-not standard.

It is the role of the district court to determine, in the first instance, whether a preliminary injunction is warranted on the law, facts, and equities of the case. We vacate the denial of the preliminary injunction, and remand for redetermination in accordance with Federal Circuit criteria.

If you have questions about the material presented above, please contact Dr. Lawrence M. Sung ( lsung@bakerlaw.com or 202.861.1537) or any member of our Intellectual Property Team.

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