A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Refuses to Preliminarily Enjoin Defendants' Participation in IPR

In a September 16, 2015 ruling, Judge Vernon S. Broderick denied the plaintiffs’ motion for a preliminary injunction to enjoin the defendants from participating in a Patent Office Inter Partes Review proceeding because the participation supposedly violated a forum selection clause in the contract between the plaintiffs and the defendants. In denying the injunction, Judge Broderick ruled that the plaintiffs would not be irreparably harmed by being forced to proceed with the IPR because the cost of the proceeding, although costing in the hundreds of thousands of dollars, was nevertheless not an unquantifiable amount constituting irreparable injury. The Court further ruled that the plaintiffs had failed to show a likelihood of success on the merits because the IPR proceeding did not arise out of or relate to the parties’ contract containing the forum selection clause, and thus was not covered by the forum selection clause. Judge Broderick reasoned that the issues in the IPR – the validity of the patents-in-suit – were unrelated to the parties’ contract, and in fact could have been raised essentially by any third party not at all involved in the contract.

The plaintiffs had also contended that the defendants were equitably estopped from challenging the validity of the patents because the defendants had previously assigned the patents at issue. The Court disposed of this contention by noting that the Patent Trial and Appeal Board “has held that the defense of assignor estoppel does not apply in IPR proceedings” so “if the IPR is initiated, [the plaintiffs] will be unable to raise assignor estoppel unless and until the outcome of the IPR is appealed to the Federal Circuit.”
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