Amazon.com, Inc. v. Barnesandnoble.com, Inc. - 239 F.3d 1343 (Fed. Cir. 2001)

Rule:

If the defendant raises a substantial question concerning either infringement or validity, i.e., asserts an infringement or invalidity defense that the patentee cannot prove lacks substantial merit, the preliminary injunction should not issue.

Facts:

In patent infringement suit, plaintiff Amazon.com, Inc. moved for a preliminary injunction to prohibit the use of defendant barnesandnoble.com llc of a feature of its website called "Express Lane." Defendant resisted the preliminary injunction on several grounds, including that its Express Lane feature did not infringe the claims of plaintiff's patent, and that substantial questions existed as to the validity of plaintiff's patent. The district court rejected defendant's contentions and held that plaintiff had presented a case showing a likelihood of infringement by defendant, and that defendant's challenges to the validity of the patent in suit lacked sufficient merit to avoid awarding extraordinary preliminary injunctive relief to plaintiff. The district court granted plaintiff's motion, and defendant appealed.

Issue:

Under the circumstances, was plaintiff entitled to preliminary injunctive relief?

Answer:

No.

Conclusion:

The court concluded that defendant had mounted a substantial challenge to the validity of the patent in suit. According to the court, If the defendant raised a substantial question concerning either infringement or validity, i.e., asserted an infringement or invalidity defense that the patentee cannot prove lacked substantial merit, the preliminary injunction should not issue. Moreover, the court found that the district court committed clear error by misreading the factual content of the prior art references cited by defendant and by failing to recognize that defendant had raised a substantial question of invalidity of the asserted claims in view of the prior art references. Because plaintiff was not entitled to preliminary injunctive relief, the court vacated the order of the district court that set the preliminary injunction in place and remanded the case for further proceedings.