Sod Busted

On Wednesday, the Federal Circuit issued a decision in Trebro Manufacturing Inc. v. Firefly Equipment LLC.  This decision is notable because the court reversed a decision by the US District Court for the District of Montana denying a preliminary injunction.  In a 3-0 decision authored by Judge Rader, the Federal Circuit found that the district court had abused its discretion in denying Trebro's motion for a preliminary injunction.  

This can't happen very often.

The picture above shows one of plaintiff/appellant Trebro's machines.  I have no idea if it's covered by the patents in suit, but the nine-year-old part of me thinks it's pretty cool anyway.  I wish I were better with Photoshop, so I could have put Bill Murray in the driver's seat.  

But I digress.  

In order to get a preliminary injunction, the movant has to show a likelihood of success on the merits, among other things.  Now, in order to show likelihood of success on the merits in a patent case, you have to show a likelihood of ... infringement, right?  My sense is that in most patent cases this is not the critical element in deciding whether to grant a motion for preliminary injunction, because the pleading requirements in most jurisdictions these days require a significant amount of diligence on that front before the complaint is filed (usually, the motion falls on the "irreparable harm" or "public interest" prongs of the test, or the defendant raises substantial questions about the patent's validity).

Anyhoo, showing likelihood on the merits in this case involved testimony about the claims, and the allegedly infringing device. The dispute in the case turns on whether the defendant's sod-harvesting equipment meets one of the elements of the plaintiff's patent claims.  The district court, without holding a Markman hearing, decided that there was no likelihood of success, because the accused machine didn't meet the disputed limitation.  

On appeal, the Federal Circuit takes a look at the case, and says, wait a minute.  These devices sure look like they meet the disputed claim terms to us.  They even go so far as to include color photographs of the accused devices in the opinion, and explaining how they meet the disputed limitation.  In concluding, the Federal Circuit comes right out and says that "absent an explicit claim construction favorable to [defendant]...this court holds the district court erred.  That error in law underlies, in part, the district court's abuse of discretion."  The case is remanded for the usual "further proceedings consistent with this opinion."

Now, this has me thinking.  First, as a general matter, does this decision mean that from now on, in order to decide a motion for preliminary injunction, a court's going to have to do an "explicit claim construction?"  Does that mean a full-blown Markman hearing?  If I'm representing a defendant in a patent case, facing a motion for preliminary injunction, I'm sure making that argument.  

Second, with this case in mind specifically, on remand is the district court stuck with the Federal Circuit's claim construction?  There hasn't been a Markman hearing yet.  If I'm representing the defendant, I'm certainly going to demand that.  However, if I'm representing the plaintiff, I'm going to strongly suggest that the court doesn't need to go to all that trouble, now that the Federal Circuit has helpfully explained the meaning of the claims.  And that adopting the Federal Circuit's claim construction at this stage makes the claim interpretation appeal-proof.  Because when the case comes back up to the Federal Circuit on the inevitable appeal, they'd never reverse their own claim construction.

Right?