United States District Court, E.D. California
MEMORANDUM AND ORDER
MORRISON C. ENGLAND, Jr., Chief District Judge.
On December 17, 2013, Plaintiff Thermogenesis Corp. ("Thermo") filed the instant action against Defendant OriGen Biomedical, Inc. ("OriGen") for allegedly infringing two of Thermo's patents. ECF No. 2. Presently before the Court is Thermo's Motion for Preliminary Injunction ("Motion"). ECF No. 29. OriGen timely opposed the Motion, ECF No. 45, and Thermo filed a timely Reply, ECF No. 52. The Court held oral argument on September 4, 2014, and submitted the matter for a written decision. For the following reasons, the Motion is DENIED.
A. Factual Background
Thermo is a medical products company that designs, develops, manufactures, and sells automated and semi-automated devices and laboratory products for the medical market. Since the early 1990s, Thermo's inventions have included storage devices for storing blood at extremely low temperatures; these blood storage inventions helped enable the development of cell therapeutic technologies. In the early 1990s, Thermo partnered with the New York Blood Center ("NYBC"). Through this partnership, Thermo has ownership of or the right to enforce certain patents, including the two at issue in this case ("Asserted Patents").
The Asserted Patents include claims directed to improved-performance freezer bags and methods for the storage of blood and blood components at very low temperatures. The first, U.S. Patent No. 6, 232, 115 (the "115 Patent"), was issued in 2001 and is entitled "Freezing and Thawing Bag, Mold, Apparatus and Method." It provides a bag for reliable cryogenic storage of blood and blood products. Thermo owns all right, title, and interest to the 115 Patent, including the right to sue for past, present, and future infringements. The second, U.S. Patent No. 6, 491, 678 (the "678 Patent"), was issued in 2002 and is entitled "Freezer Bag." It provides a freezer bag that includes dosing compartment. Although the NYBC owns the 678 Patent, it has assigned all rights to enforce the patent against OriGen to Thermo, including the right to sue for past, present, and future infringement.
Thermo alleges that OriGen has made, used, sold, imported and/or offered for sale products and/or processes in the United States consisting of or including the CS-25 cryogenic freezer bag that incorporates the inventions of the Asserted Patents ("Accused Product"). Thermo alleges the Accused Product is a demonstrable copy of Thermo's patented product. Thermo claims that OriGen sells the Accused Product with the specific intent that customers use it for blood and/or blood product storage. According to Thermo, this is demonstrated by OriGen's statement on its website that its "CryoStore Freezing Bags are a safe, economical way to freeze blood components at any temperature and are ideally suited for cord blood and stem cell storage, cryogenic blood banking and cryopreservation of any blood component." OriGen has advertised the Accused Product through videos on its website, the websites of its distributors, or on YouTube.
According to Thermo, OriGen initially began making, using, selling, importing and/or offering for sale the Accused Product in or about 2007. Thermo claims at that time OriGen's management was advised and put on notice orally and in writing of the Asserted Patents and that OriGen's infringing activity must immediately cease. Thermo alleges, on information and belief, that OriGen did then cease all infringing activity related to the Asserted Patents.
Thermo alleges that OriGen has again undertaken infringing activity, including but not limited to OriGen's recommencement of manufacturing and selling the Accused Product in the United States, OriGen's offer for sale and/or its sale of the Accused Product to domestic and offshore customers, and OriGen's offering for sale and/or selling the Accused Product at trade shows in California and elsewhere in the United States. According to Thermo, this renewed infringing activity became overt in or about late 2013. Thermo claims it has demanded in writing that OriGen cease infringing activity, but OriGen, with full knowledge of the Asserted Patents, has failed to comply.
B. Procedural Background
On December 17, 2013, Thermo filed its initial Complaint. See ECF No. 1. On January 2, 2013, OriGen was served; accordingly its Answer was due by January 23, 2014. See ECF No. 6. On the day the Answer was due, the parties stipulated to extending to February 28, 2014, the time for OriGen to respond to the Complaint. See ECF No. 7. On February 25, 2014, the parties stipulated to a further extension, this time to March 14, 2014. See ECF No. 12. In that stipulation, the parties represented they had arrived at an oral agreement in principal to resolve this matter in full. See id. On March 14, 2014, OriGen filed a Motion to Dismiss under Federal Rule of Civil Procedure 12(b)(6). See ECF No. 14. On April 15, 2014, the Court granted the Motion to Dismiss because Thermo failed to timely file an opposition. See ECF No. 26. The same day, Thermo filed a First Amended Complaint. See ECF No. 27. On May 2, 2014, OriGen moved to dismiss in part the First Amended Complaint under Rule 12(b)(6). See ECF No. 28. On May 9, 2014, Thermo filed the instant Motion. See ECF No. 29.
"A preliminary injunction is an extraordinary remedy never awarded as of right." Winter v. Natural Res. Def. Council, Inc. , 555 U.S. 7, 20 (2008) (citing Munaf v. Green , 533 U.S. 674, 689-90 (2008)). Traditional equitable considerations apply to analysis of injunctions in patent cases. eBay, Inc. v. MercExchange, L.L.C. , 547 U.S. 388, 391 (2006). Thus, in order to obtain a preliminary injunction, a plaintiff must prove (1) it is likely to succeed on the merits, (2) it is likely to suffer irreparable harm in the absence of preliminary relief, (3) the balance of equities tips in its favor, and (4) an injunction is in the public interest. See Winter , 555 U.S. at 20. There is no longer a presumption of irreparable harm even if a court finds patent infringement. See Robert Bosch LLC v. Pylon Mfg. Corp. , 659 F.3d 1142, 1149 (Fed. Cir. 2011). Although granting a preliminary injunction requires analysis of all four factors, a trial court may deny a motion based on a patentee's failure to show any one of the factors-especially either of the first two- without analyzing the others. See Jack Guttman, Inc. v. Kopykake Enters. , 302 F.3d 1352, 1356 (Fed. Cir. 2002).
Alternatively, under the so-called sliding scale approach, as long as a plaintiff demonstrates the requisite likelihood of irreparable harm and shows that an injunction is in the public interest, a preliminary injunction can still issue so long as serious questions going to the merits are raised and the balance of hardships tips sharply in the plaintiff's favor. Alliance for Wild Rockies v. Cottrell , 632 F.3d 1127, 1131-1136 (9th Cir. 2011) (concluding ...