Patent Case Summaries April 8, 2020

Patent Case Summaries | Week Ending April 3, 2020

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.


Myco Industries, Inc., et al. v. BlephEx, LLC, et al., No. 2019-2374 (Fed. Cir. (E.D. Mich.) Apr. 3, 2020). Opinion by O’Malley, joined by Newman and Taranto.

The Federal Circuit reversed, vacated, and remanded a district court order that preliminarily enjoined a patent holder from alleging patent infringement or threatening patent litigation against a competitor.

BlephEx owns a patent relating to a method and device for treating ocular disorders. Myco believed that BlephEx had made false and misleading statements about a Myco device and whether it infringed BlephEx’s patent. Myco therefore filed suit seeking a declaratory judgment of noninfringement and invalidity, and Myco also moved for a preliminary injunction enjoining BlephEx “from making allegations of patent infringement and from threatening litigation against Myco’s potential customers.” The district court granted the preliminary injunction after weighing four factors under Sixth Circuit law: the likelihood of success on the merits, irreparable injury, harm to others, and the public interest.

On appeal, the Federal Circuit acknowledged the four factors considered by the district court, but explained that “when a preliminary injunction prevents a patentee from communicating its patent rights, a court applies federal patent law and precedent relating to the giving of notice of patent rights.” And “federal law requires a showing of bad faith before a patentee can be enjoined from communicating his patent rights.” The Federal Circuit explained that “communication to possible infringers concerning patent rights is not improper if the patent holder has a good faith belief in the accuracy of the communication.” Here, though, the district court failed to analyze bad faith, warranting reversal. Although Myco argued that the district court implied bad faith in its findings, the Federal Circuit disagreed.

The Federal Circuit also disagreed with the district court’s finding that Myco had a “strong likelihood of success on the merits.” The district court’s claim construction analysis erroneously limited the scope of BlephEx’s patent claims in a manner that was inconsistent with their plain language, and the court failed to consider whether BlephEx had disavowed claim scope. The district court also conflated the patent’s claims with the patent owner’s product, violating the principle that “infringement is determined on the basis of the claims, not on the basis of a comparison with the patentee’s commercial embodiment of the claimed invention.”

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