LIIBULLETIN-Patent, Inc. v., Inc. No. 00-1109, 2000 U.S. App. LEXIS 2163 (Feb. 14, 2001).




Whether a court should issue a preliminary injunction when the patentee has shown a likelihood of success at trial on the issue of infringement, but the alleged infringer raised a substantial challenge to the validity of the patent at issue.


No. To properly obtain a preliminary injunction, the patentee/movant must demonstrate a likelihood of success on the merits, including a likelihood that the patent at issue has been infringed and that the patent will likely survive any challenges to its validity and enforceability.

SUMMARY, Inc. ("Amazon") owns U.S. Patent No. 5, 960, 411 ("the '411 patent"), directed to various methods and systems for "single action" ordering in the context of a "client/server environment," including the Internet. Less than one month after the '411 patent issued, Amazon sued, inc. and llc (collectively "BN") alleging infringement of the '411 patent. Amazon claimed that the "Express Lane" feature on BN's Internet website, BN's version of a short-cut ordering system, infringed the "single action" ordering limitations found in claims 1, 2, 6, 9 and 11 of the '411 patent. Amazon sought a preliminary injunction to restrain BN from using its "Express Lane" system.

The U.S. District Court for the Western District of Washington held that Amazon was entitled to a preliminary injunction. The district court concluded that Amazon showed it was likely to prove infringement of at least one '411 claim at trial and that BN failed to raise a substantial challenge to the validity of the '411 patent. Amazon had established a likelihood of success on the merits and irreparable harm is presumed in light of such a clear showing of patent validity and infringement. BN appealed.

The Federal Circuit reviewed the district court's ruling under an abuse of discretion standard. Initially, the Federal Circuit determined the meaning and scope of the relevant "single action" claim limitation. According to the plain language of the claims and the written description accompanying the '411 patent, the Court interpreted the "single action" limitation to require that the short-cut ordering system be available only after some display of information, not after every display. In light of the corrected interpretation of the "single action" limitation found in several claims of the '411 patent, the Federal Circuit easily found that BN's "Express Lane" system, which allows customers to "[b]uy it now with just 1 click" on any page displaying information, would likely infringe Amazon's patent. Thus the Court affirmed the district court's finding of a likelihood of literal infringement.

The Federal Circuit also considered whether BN had failed to raise a substantial challenge to the validity of the claims in the '411 patent. According to the Federal Circuit, the trial court had summarily dismissed the prior art cited by BN, and consequently, it had committed clear error by misinterpreting the actual content of that prior art. In light of these errors in interpretation, the Federal Circuit ruled that the prior art cited by BN did raise a substantial question regarding the validity of the claims at issue. The Court noted that the showing required to establish the questionable validity of an asserted patent is "less proof than the clear and convincing showing" necessary to invalidate a patent at trial. The Court ruled that BN had met the burden of showing questionable validity of the '411 patent with the prior art asserted at the hearing. In light of the different showings required to establish a substantial question regarding invalidity and to resolve the ultimate issue of invalidity, the Federal Circuit did not resolve the issue of BN's invalidity claims and remanded for a trial on the merits.


Prepared by the liibulletin-patent Editorial Board.

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