Titan Tire Corp. v. Case New Holland, Inc.

• Citation: 566 F.3d 1372
• Decision Date: 03 June 2009
• Docket Number: No. 2008-1078.,2008-1078.
• Parties: TITAN TIRE CORPORATION and The Goodyear Tire & Rubber Company, Plaintiffs-Appellants, v. CASE NEW HOLLAND, INC., CNH America LLC, and GPX International Tire Corporation, Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

566 F.3d 1372

TITAN TIRE CORPORATION and The Goodyear Tire & Rubber Company, Plaintiffs-Appellants, v. CASE NEW HOLLAND, INC., CNH America LLC, and GPX International Tire Corporation, Defendants-Appellees.

No. 2008-1078.

United States Court of Appeals, Federal Circuit.

June 3, 2009.

Kent A. Herink, Davis, Brown, Koehn, Shors & Roberts, P.C., of Des Moines, IA, argued for plaintiffs-appellants. With him on the brief were David A. Tank and Deborah M. Tharnish.

William R. Grimm, Hinckley, Allen & Snyder LLP, of Providence, RI, argued for defendants-appellees. With him on the brief was Eric D. Levin, of Boston, MA.

Before NEWMAN, PLAGER, and GAJARSA, Circuit Judges.

PLAGER, Circuit Judge.

In this design patent case, in which the patentee sought a preliminary injunction, we first clarify the requirements for such an injunction. We then determine, in light of that clarification and the evidence before the trial court, whether that court was correct in denying the sought-for relief. Because we conclude that under the applicable legal standard the trial court did not abuse its discretion in denying the injunction, we affirm.

BACKGROUND

Appellant The Goodyear Tire & Rubber Company ("Goodyear") owns U.S. Design Patent No. 360,862 ("the '862 patent"), which claims a design for a tractor tire. Appellant Titan Tire Corporation ("Titan") is a licensee with the right to enforce the '862 patent. Figure 1 of the '862 patent is a perspective view of a tractor tire showing the claimed design:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

In February 2007, Goodyear and Titan (collectively, "Titan") filed a complaint for patent infringement against Appellee Case New Holland, Inc. ("Case") in the United States District Court for the Southern District of Iowa. Titan alleged that Case sells backhoes equipped with tires that infringe the '862 patent.

In May 2007, Titan filed a motion for a preliminary injunction to prohibit Case from selling backhoes with infringing tires. After the trial court held a hearing on the motion, Titan filed an amended complaint adding Appellees CNH America LLC ("CNH") and GPX International Tire Corporation ("GPX") as defendants. The addition of CNH apparently was in response to the statement in Case's answer that CNH, not Case, is the corporate entity that sells backhoes in the United States. GPX is the manufacturer of the "Easy Rider" model tire that allegedly infringes the '862 patent.

The trial court denied Titan's motion for a preliminary injunction. Titan Tire Corp. v. Case New Holland, Inc., No. 4:07-CV-00063, 2007 WL 2914513 (S.D.Iowa Oct. 3, 2007) ("Preliminary Injunction Order"). The court found Titan was likely to succeed in showing infringement and was likely to withstand Case's challenge to the validity of the '862 patent on the ground that the design is primarily functional, but that Titan was not likely to withstand Case's challenge to the patent's validity on obviousness grounds. While finding that the other three preliminary injunction factors—irreparable harm, balance of the hardships, and public interest—weighed in favor of granting an injunction, the trial court concluded that Titan's failure to establish a likelihood of success on the validity issue was sufficient to defeat the motion for a preliminary injunction. Since the trial court concluded that a preliminary injunction should not issue on the record before it, the court determined that it was unnecessary to decide whether an injunction would be proper against CNH and GPX, the parties added to the case after the trial court's hearing on the motion.

Titan appeals from the trial court's denial of its motion for a preliminary injunction. We have jurisdiction pursuant to 28 U.S.C. § 1292(c)(1).

DISCUSSION

A.

When a patentee sues an alleged infringer for patent infringement and, for the purpose of immediately preventing further alleged infringement, moves under 35 U.S.C. § 283 for the extraordinary relief of a preliminary injunction, the patentee's entitlement to such an injunction is a matter largely within the discretion of the trial court. Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1364 (Fed.Cir.1997). On appeal, a trial court's decision to grant or deny a preliminary injunction, made after taking into account the relevant factors, will be overturned only upon a showing that the court abused its discretion. Id. Abuse of discretion is a deferential standard of review that requires a showing that "the court made a clear error of judgment in weighing relevant factors or exercised its discretion based upon an error of law or clearly erroneous factual findings." Id.

The factors the trial court considers when determining whether to grant a preliminary injunction are of longstanding and universal applicability. As the Supreme Court recently reiterated, there are four: "[a] plaintiff seeking a preliminary injunction must establish [1] that he is likely to succeed on the merits, [2] that he is likely to suffer irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in his favor, and [4] that an injunction is in the public interest." Winter v. Natural Res. Def. Council, Inc., ___ U.S. ___, 129 S.Ct. 365, 374, 172 L.Ed.2d 249 (2008) (citing Supreme Court cases). We note in passing that some cases state the first factor as requiring a "reasonable" likelihood of success on the merits.¹ It is not clear whether the addition of "reasonable" adds anything substantive to the test,² but in any event, for our purposes the Supreme Court's current statement of the test is the definitive one.

In this case, in denying the preliminary injunction, the trial court specifically stated that Titan had the burden of demonstrating a likelihood of success on the merits, including a showing that Titan will likely withstand Case's challenge to the validity of the '862 patent. Preliminary Injunction Order, 2007 WL 2914513, at *4. The trial court also made reference to a requirement that Case demonstrate a "substantial question" regarding the patent's validity. Id. at *8.

In the appeal before us, the parties stated the issue as whether Case succeeded before the trial court in raising a substantial question of invalidity. As we shall explain, when the issue is expressed only in terms of whether the alleged infringer raised a substantial question of invalidity, litigants may err in addressing the proper presumptions and burdens of proof in their case, and their arguments may reflect a possible misunderstanding of the applicable law.

With regard to the first factor— establishing a likelihood of success on the merits—the patentee seeking a preliminary injunction in a patent infringement suit must show that it will likely prove infringement, and that it will likely withstand challenges, if any, to the validity of the patent. See Genentech, 108 F.3d at 1364. In assessing whether the patentee is entitled to the injunction, the court views the matter in light of the burdens and presumptions that will inhere at trial. See Gonzales v. O Centro Espirita Beneficente Uniao do Vegetal, 546 U.S. 418, 429, 126 S.Ct. 1211, 163 L.Ed.2d 1017 (2006) ("[T]he burdens at the preliminary injunction stage track the burdens at trial.").³

At trial, as we explained in our recent case of Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir.2008), an issued patent comes with a statutory presumption of validity under 35 U.S.C. § 282. Because of this presumption, an alleged infringer who raises invalidity as an affirmative defense has the ultimate burden of persuasion to prove invalidity by clear and convincing evidence, as well as the initial burden of going forward with evidence to support its invalidity allegation.⁴ Tech. Licensing, 545 F.3d at 1327. Once the challenger presents initially persuasive evidence of invalidity, the burden of going forward shifts to the patentee to present contrary evidence and argument. Id. Ultimately, the outcome of the trial on this point will depend on whether, in light of all the evidence, the party challenging the patent's validity has carried its burden of persuasion to prove by clear and convincing evidence that the patent is invalid. Id. at 1328.

Before trial, when the question of validity arises at the preliminary injunction stage, the application of these burdens and presumptions is tailored to fit the preliminary injunction context. To begin, the patent enjoys the same presumption of validity during preliminary injunction proceedings as at other stages of litigation. Canon Computer Sys., Inc. v. Nu-Kote Int'l, Inc., 134 F.3d 1085, 1088 (Fed.Cir. 1998). Thus, if a patentee moves for a preliminary injunction and the alleged infringer does not challenge validity, the very existence of the patent with its concomitant presumption of validity satisfies the patentee's burden of showing a likelihood of success on the validity issue. See Purdue Pharma L.P. v. Boehringer Ingelheim GmbH, 237 F.3d 1359, 1365 (Fed.Cir. 2001); Canon, 134 F.3d at 1088.

If, instead, the alleged infringer responds to the preliminary injunction motion by launching an attack on the validity of the patent, the burden is on the challenger to come forward with evidence of invalidity, just as it would be at trial. The patentee, to avoid a conclusion that it is unable to show a likelihood of success, then has the burden of responding with contrary evidence, which of course may include analysis and argument.

While the evidentiary burdens at the preliminary injunction stage track the burdens at trial, importantly the ultimate question before the trial court is different. As this court explained in New England Braiding Co. v. A.W. Chesterton Co., the trial court "does not resolve the validity question, but rather must ... make an assessment of the persuasiveness of the challenger's evidence, recognizing that it is doing so without all evidence that may come out at trial." 970 F.2d 878,...