Substantial New Question of Patentability is Not Necessarily a Substantial Question of Validity

The Procter & Gamble Company v. Kraft Foods Global, Inc., [2008-1105] (December 5, 2008) [GAJARSA, Bryson, Dyk] The Federal vacated a stay initiated by Kraft pending reexamination of Kraft’s patent, and remanded for consideration of the merits of P&G’s motion for a preliminary injunction.
DISCUSSION: The Federal Circuit said tha the district court abused its discretion by effectively denying P&G’s motion for a preliminary injunction without considering and balancing the required factors. The Federal Circuit the district instructed the district court to consider the current posture of the reexamination proceeding, and cautioned it not to equate the “substantial new question of patentability” standard for whether reexamination should take place, with the with the “substantial question of validity” standard by which a defendant may prevent a patentee from demonstrating a likelihood of success on the merits.
Regarding the stay, the Federal Circuit rejected Kraft’s argument that the statute only authorizes patentees to obtain stays, noting that a district court has historically had the power to stay proceedings grant stays to control its docket. The Federal Circuit added that we note that the district court ordinarily should not grant both a preliminary injunction and a stay.