During the incumbent pre-filing analysis in an infringement case, patent litigation clients often inquire about the prejudgment remedy of a temporary restraining order (TRO). Generally, a patentee seeking preliminary injunctive relief must establish: 1) likelihood of success on the merits, 2) likelihood of suffering irreparable harm in the absence of preliminary relief, 3) that the balance of equities favors an injunction, and 4) that an injunction is in the public interest. In patent cases the first and second requirements are often the most challenging. With regard to the third and fourth factors in the preliminary injunction calculus, the balance of hardships and the public interest, a trial court need not make findings concerning these factors if the moving party fails to establish either of the first two factors.
Likelihood of success on the merits for patent infringement typically requires a two-step process: 1) the district court must determine the scope of the patent claims, and 2) the district court must determine whether properly interpreted claims encompass the accused structure.
A principal factor to be weighed in the irreparable harm inquiry in patent litigation is whether or not the patentee currently has a commercially available product. Although a patentee’s failure to practice an invention does not necessarily defeat the patentee’s claim of irreparable harm, the lack of commercial activity by the patentee is a significant factor in the calculus. If the patentee does not make, sell, or license the infringing product and does not adequately show that the alleged infringer’s activities have precluded the patentee from licensing its patent or entering the market, a finding of irreparable harm would be precluded.
While evidence supporting seeking a temporary restraining order may seemingly satisfy the first two TRO requirement factors, the increased upfront costs of pursuing this remedy often outweigh the potential procedural and economic upsides.