549 F.3d 842 (Fed. Cir. 2008), 2008-1105, Procter & Gamble Co. v. Kraft Foods Global, Inc.

Docket Nº:2008-1105.
Citation:549 F.3d 842, 89 U.S.P.Q.2d 1085
Party Name:The PROCTER & GAMBLE COMPANY, Plaintiff-Appellant, v. KRAFT FOODS GLOBAL, INC., Defendant-Appellee.
Case Date:December 05, 2008
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 842

549 F.3d 842 (Fed. Cir. 2008)

89 U.S.P.Q.2d 1085

The PROCTER & GAMBLE COMPANY, Plaintiff-Appellant,


KRAFT FOODS GLOBAL, INC., Defendant-Appellee.

No. 2008-1105.

United States Court of Appeals, Federal Circuit.

December 5, 2008

Page 843

[Copyrighted Material Omitted]

Page 844

William C. Rooklidge, Howrey LLP, of Irvine, CA, argued for plaintiff-appellant. With him on the brief was Henry A. Petri, Jr., of Houston, TX.

Claude M. Stern, Quinn Emanuel Urquhart Oliver & Hedges, LLP, of Redwood Shores, CA, argued for defendant-appellee. With him on the brief was Evette D. Pennypacker.

Before BRYSON, GAJARSA, and DYK, Circuit Judges.

GAJARSA, Circuit Judge.

Although this is a patent infringement case, this appeal turns on a procedural issue regarding the issuance of a stay and the denial of a preliminary injunction. The Procter & Gamble Company (“ P & G" ) appeals from the trial court's interlocutory order granting Kraft Foods Global, Inc.'s (“ Kraft's" ) motion for a stay pending inter partes reexamination before the United States Patent and Trademark Office (“ PTO" ) of P & G's U.S. Patent No. 7,169,418 (“ the '418 patent" ). In particular, P & G argues that the stay order either directly denied its motion for a preliminary injunction or had the effect of denying the motion. This case therefore presents the issue of whether we have jurisdiction to hear this interlocutory appeal, and if so, whether the district court abused its discretion with respect to Kraft's motion to stay and/or P & G's motion for a preliminary injunction. Because the stay order effectively denied P & G's motion, jurisdiction is proper. Further, we hold that the district court abused its discretion by effectively denying P & G's motion without proper consideration of the merits. Therefore, we vacate the stay and remand for consideration of the merits of P & G's motion for a preliminary injunction.


P & G owns the Folgers brand of ground, roast coffee; Kraft owns the competing Maxwell House brand. P & G's '418 patent is directed to a plastic container, intended to replace conventional metal cans for marketing and storing ground, roast coffee. The '418 patent issued on January 30, 2007. Kraft filed a request for inter partes reexamination of that patent on March 8, 2007. On June 7, 2007, the PTO granted Kraft's request for reexamination but simultaneously confirmed the patentability of every claim of the '418 patent.

Page 845

In July 2007, Kraft introduced a plastic coffee container for the Maxwell House brand ground, roast coffee. P & G filed this action on August 8, 2007. On September 14, 2007, P & G filed a motion seeking a preliminary injunction against Kraft's continued use of its plastic containers. Kraft, in turn, filed a motion for a stay pending its appeal to the Board of Patent Appeals and Interferences (“ BPAI" ) of the examiner's decision on reexamination confirming the patentability of the claims of the '418 patent. Procter & Gamble v. Kraft Foods Global, No. 3:07-CV-04413, 2007 WL 2990152, **1-2 (N.D.Cal. Oct. 11, 2007) (hereinafter “ Stay Order " ). At a hearing on October 3, 2007, the trial court removed from its calendar the scheduled hearing for P & G's preliminary injunction motion, reasoning that it could not determine P & G's likelihood of success on the merits without construing the claims. Stay Hr'g Tr. 33-35 (Oct. 3, 2007). The court further stated that it would reschedule the hearing (1) if it did not grant Kraft's motion to stay; and (2) after any claim construction disputes had been resolved. Id. On October 11, 2007, the district court granted Kraft's motion to stay the case and concluded without any analysis that “ plaintiff's pending motion for preliminary injunction is moot." Stay Order at **1-2.

P & G filed a notice of appeal, and Kraft filed a motion for this court to dismiss the appeal for lack of jurisdiction. Kraft argued that (1) the appeal is premature because the district court's stay order is not a final judgment on the merits and does not expressly deny an injunction; and (2) P & G cannot demonstrate that it will suffer irreparable harm without an immediate appeal. A motions panel of the court denied Kraft's motion to dismiss, reasoning that (1) the district court's statement characterizing P & G's preliminary injunction motion as moot might be an express denial; and (2) “ an order argued to have the effect of denying a request for a preliminary injunction ‘ readily satisfies' the requirement to show irreparable harm." Procter & Gamble Co. v. Kraft Food Global, Inc., No.2008-1150, slip op. at 2 (Fed.Cir. Feb. 28, 2008) (quoting Woodard v. Sage Products, Inc., 818 F.2d 841, 851 (Fed.Cir.1987) (en banc)). The court also noted that the parties remained free to present jurisdictional arguments to a merits panel for an ultimate disposition. Id. at 2. As set forth below, we conclude that we have jurisdiction over this appeal pursuant to 28 U.S.C. § 1292(c)(1).


When jurisdiction is proper, a district court's decision to issue a stay is reviewed for an abuse of discretion. See Gould v. Control Laser Corp., 705 F.2d 1340, 1341 (Fed.Cir.1983); cf. Am. Life Ins. Co. v. Stewart, 300 U.S. 203, 215, 57 S.Ct. 377, 81 L.Ed. 605 (1937) (“ In the exercise of a sound discretion [the district court] may hold one lawsuit in abeyance to abide the outcome of another, especially where the parties and the issues are the same." ). We also...

To continue reading