The opinion of the court was delivered by: William M. Skretny United States District Judge
Presently before this Court is Plaintiff Gaymar Industries, Inc.'s Motion for Preliminary Injunction. Also pending is Defendant Cincinnati Sub-Zero Products, Inc.'s ("CSZ") Motion to Stay Pending Inter Partes Reexamination of the patent-in-suit - No. 6,517,510 ("the '510 patent") for an automatic patient control device - by the United States Patent and Trademark Office ("PTO").*fn1 For the reasons discussed below, Gaymar's Motion for Preliminary Injunction is denied and CSZ's Motion to Stay is granted.
At issue in this case are the parties' competing temperature management products for use in heat therapy, blood and fluid warming, and core body temperature management. Gaymar produces the Medi-Therm III warming and cooling unit under the '510 patent; CSZ produces the Blanketrol III.
Gaymar filed its Complaint in this Court on April 18, 2008, alleging that CSZ's Blanketrol III infringes its '510 patent. (Docket No. 1.) It moved for a preliminary injunction approximately three months later, on July 15, 2008. (Docket No. 3.) CSZ moved to stay these proceedings on September 10, 2008, in light of its pending request for the PTO to conduct inter partes reexamination of the '510 patent. (Docket No. 21.) During the pendency of the motion, the PTO granted CSZ's request for inter partes reexamination and rejected all 134 claims in the '510 patent. (Docket No. 67.)
A. Gaymar's Motion for Preliminary Injunction
Motions for preliminary injunction In a patent infringement case require the court to examine four factors: "(1) the likelihood of the patentee's success on the merits; (2) irreparable harm if the injunction is not granted; (3) the balance of hardships between the parties; and (4) the public interest." Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331, 1338-39 (Fed. Cir. 2003) (citing Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001)). A preliminary injunction in a patent case, however, "is an extraordinary remedy reserved for circumstances in which the merits of movant's case are clear, the irreparable injury is manifest, the hardships tip decidedly in the movant's favor, and the public interest is served by the injunction." Canon Inc. v. GCC Int'l Ltd., 450 F.Supp.2d 243, 246 (S.D.N.Y. 2006).
Where the parties to patent litigation file competing motions for preliminary injunction and motions to stay proceedings pending reexamination before the PTO, the Federal Circuit has cautioned district courts to not grant both motions:
A preliminary injunction should not be granted if there is a substantial issue of patent validity. Similarly, a stay should ordinarily not be granted unless there is a substantial patentability issue raised in the inter partes reexamination proceeding. Thus, both a preliminary injunction and a stay ordinarily should not be granted at the same time. A grant of a preliminary injunction followed by a stay of the district court proceedings could subject an accused infringer to unfair and undesirable delay in reaching a final resolution.
Proctor & Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 849 (Fed. Cir. 2008).
It is undisputed in this case that the PTO has granted CSZ's request for reexamination of the '510 patent. Thus, the PTO has determined that there is a substantial new question of patentability concerning the Medi-Therm III. See 35 U.S.C. § 312(a); see also In Re Freeman, 30 F.3d 1459, 1468 (Fed. Cir. 1994) ("The function of reexamination is to increase the reliability of patents thought to be of doubtful validity."). Moreover, the PTO issued a non-final action rejecting all 134 claims in the '510 patent. For these reasons, and those stated below in the discussion of CSZ's Motion to Stay, this Court finds that there ...