Federal Circuit Judge Bryson sits by designation in a number of D. Del. cases, but I've noticed lately that his opinions rarely hit the District Court's website, for whatever reason.
I found one such opinion today, and I thought it was worth posting about. It issued back in April 2023, but we missed it at the time since it didn't hit the website.
The opinion involves a lengthy and interesting discussion on a preliminary injunction motion in a patent case. Judge Bryson found that the patentee met almost all of the notoriously difficult factors for a preliminary injunction:
Wahoo’s motion presents a close question. Three of the preliminary injunction factors—irreparable harm, the balance of hardships, and the public interest—weigh in favor of granting an injunction. Wahoo has also made a persuasive showing that Zwift’s Hub product infringes at least some of the asserted claims.
Wahoo Fitness LLC v. Zwift, Inc., C.A. No. 22-1295-WCB-SRF, 32 (D. Del. Apr. 19, 2023).
The plaintiff fell down on a single factor—showing that there is the accused infringer's invalidity defenses lack merit, resulting in a finding of a substantial question regarding validity:
However, Wahoo has not shown that Zwift’s invalidity arguments lack substantial merit, and I conclude that there is a substantial question regarding the validity of the asserted claims. If there were no such question of invalidity, I would be strongly inclined to grant Wahoo’s motion. However, because Zwift has raised a substantial question of invalidity, Wahoo has failed to satisfy a “necessary prerequisite[] for entry of a preliminary injunction,” namely, a showing that Wahoo is likely to succeed on the merits. Amazon.com, 239 F.3d at 1366. Wahoo’s motion must therefore be denied.
Why did they fail? Because of an obviousness combination, and a motivation to combine that based on an online forum comment:
The combinations proposed by Zwift are straightforward. Zwift proposes modifying one of the direct drive trainer references, such as LeMondRevolution or Shu-Chiung, to include the magnetic brake assembly disclosed in Nakao or Cheng. In support of its assertion that there would be a motivation to combine those references, Zwift points to a comment posted in response to an online article discussing the Tacx VR trainer.
Here is the text of the online comment that the defendant relied on:
I will say that it seems to me, even with my limited experience, that no product currently on the market has it all. I would love [to] see someone deliver a trainer with the realistic feel of the Direct Drive LeMond Revolution (without the noise), the side-to-side motion and sturdy build of the Kurt Kinetic Rock & Roll for out of the saddle training, the longevity of the [Velotron] and the RLV, motorbrake [i.e., a magnetic brake assembly such as that disclosed in Nakao or Cheng] and wireless option of TACX.
Wow! Talk about a motivation to combine. After reviewing the references, the Court found that they presented a substantial question of validity—after noting the standard, which is quite high:
[I]t is useful to clarify the standard that applies for patent invalidity in the context of a motion for a preliminary injunction. At trial, a patent challenger must establish by clear and convincing evidence that a patent claim is invalid. . . . At the preliminary injunction stage, however, “[v]ulnerability is the issue.” . . . That is, “[t]he showing of a substantial question as to invalidity . . . requires less proof than the clear and convincing showing necessary to establish invalidity itself.” Id. While the patentee does not have a burden to prove validity, “the patentee must show that the alleged infringer’s defense lacks substantial merit.” . . . If there are “substantial questions as to the validity” of the asserted patents, then “the necessary prerequisites for entry of a preliminary injunction have not been satisfied,” even if the patentee has established a likelihood of success on the issue of infringement.
Basically, as set forth in this opinion, a strong invalidity defense is an "I win" button for preliminary injunctions.
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