A motion for a preliminary injunction is expensive for the reasons outlines above. Moreover, motions for preliminary injunctions have, historically, had a low success rate. As an alternative to seeking a preliminary injunction, an aggressive approach to a motion for summary judgment of on the issue of infringement presents a number of attractive advantages.

Rule 56 of the Federal Rules of Civil Procedure provides the statutory basis for summary judgment. Rule 56(c) states, in relevant part:

The purpose of summary judgment is to avoid an unnecessary trial by enabling an expeditious procedure whereby, for issues on which there is no material factual dispute, the court can decide the controversy by applying the law to the undisputed facts. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986).

Summary judgment on the issue of infringement is appropriate in patent cases, and numerous cases before the Court of Appeals for the Federal Circuit have confirmed the appropriateness of such a procedure. See, e.g., Becton Dickinson & Co. v. C.R. Bard, Inc. , 922 F.2d 792, 795, 17 U.S.P.Q.2d 1097, 1099 (Fed. Cir. 1990)(“As in other cases, the grant of summary judgment under Fed. R. Civ. P. 56, is appropriate in a patent case where no genuine issue of material fact exists and the movant is entitled to judgment as a matter of law.”); see also, Sage Products, Inc. v. Devon Industries, Inc. , 126 F.3d 1420, 1423, 44 U.S.P.Q.2d 1103, 1106 (Fed. Cir. 1997).

While it is well-settled that the issue of infringement is a question of fact, where there are no genuine issues of fact regarding the accused product, the question of infringement, either as to literal infringement or infringement under the Doctrine of Equivalents, collapses into claim construction and is amendable to summary judgment. See General Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 983, 41 U.S.P.Q.2d 1440, 1440 (Fed. Cir. 1997); Sage Products, 126 F.3d at 1423. (“Although equivalence is a factual matter normally reserved for a fact finder, the trial court should grant summary judgment in any case where no reasonable fact finder could find equivalence.”); Laitram Corp. v. Morehouse Industries Inc., 143 F.3d 1456, 1464, 46 U.S.P.Q.2d 1609, 1616 (Fed. Cir. 1998) citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 117 S. Ct. 1040, 1053 n. 8, 41 U.S.P.Q.2d 1865, 1875 n. 8 (1997)(“Where the evidence is such that no reasonable jury could determine two elements to be equivalent, district courts are obliged to grant . . . summary judgment.”).

As addressed supra, the process of determining infringement is well-settled. To briefly reiterate, in determining whether a product infringes or not, the claims of the patent in suit are construed by the Court as a matter of law. Those properly construed claims are then applied to the accused products, as manifested in the incontestable factual structure and function, and if all claimed limitations (or their equivalents) are found in the accused device, there is infringement. Importantly, the process is simplified due to the absence of any issues of validity or enforceability of the claims, which had been present and essential in exercising the preliminary injunction procedure. In view of this applicable law, an alternative to a preliminary injunction is to proceed as rapidly as possible to summary judgment on the issue of patent infringement.

Often, the speed with which such a motion can be brought before the court is governed by the Local Rules of the applicable district court. For example, in the United States District Court for the Central District of California, local rules governing motions (included summary judgment motions) require that a conference of counsel take place at least twenty (20) days prior to the filing of the motion and that the parties attempt to resolve the issue short of court involvement. Additionally, the same local rules require that the motion is noticed for hearing at least twenty-one (21) days (depending upon the method of service) in advance of the scheduled hearing. Accordingly, counsel is encouraged to carefully consult the local rules (and indeed, a particular judge’s personal rules) when considering this tactic.

As the meaning of the patent claim terms are to be decided as a matter of law and that, generally, there are no genuine issues of fact as to the structure (or function, in the case of method claims) of the accused product or method, this tactic of using summary judgment motions early in the litigation may result in an adjudication of patent infringement relatively quickly. Thus, on a motion for partial summary judgment of infringement filed by the plaintiff early on in the case, the district court can adjudicate the issue of patent infringement, rather than merely making a determination of the “reasonable likelihood of success on the merits” on that issue.

While a summary judgment may not end the case because of possible issues of alleged invalidity or alleged unenforceability of the claims of the patent in suit, an adjudication of patent infringement can then be used more effectively in conjunction with the remaining issues in the case. For example, if the accused infringer’s remaining argument is an obviousness argument, will the accused infringer really have the heart to continue that fight? Winning a summary judgment motion on the issue of infringement will likely be, for practical purposes, almost as good as obtaining a preliminary injunction and winning a summary judgment motion on the issue of infringement is likely to be more obtainable than a preliminary injunction.

Additionally, in keeping with the purpose of summary judgment, in the event the motion is not granted, at least the issues relating to infringement may be narrowed.