Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in DexCom, Inc. v. Abbott Diabetes Care, Inc., No. 2023-1795 (Jan. 3, 2024), affirming the District of Delaware’s decision to deny a preliminary injunction seeking to enjoin an accused infringer from proceeding with inter partes review (IPRs) based on a forum selection clause.
DexCom and Abbott are competing manufacturers of continuous glucose monitoring systems. Following years of litigation, the parties entered into a 2014 settlement agreement providing for cross-licenses for several patents, covenants not to sue, and a forum selection clause granting the District of Delaware sole jurisdiction over claims arising under the agreement. June 2021, after the expiration of the covenant not to sue provision, DexCom filed a patent infringement suit against Abbott in the Western District of Texas. The case was transferred to the District of Delaware and consolidated with a breach of contract suit Abbott filed while its motion to transfer was pending. In April 2022, Abbott filed eight IPRs challenging DexCom’s asserted patents. Five months later, DexCom answered alleging breach of contract of the forum selection clause of the Agreement. On October 25, 2022, DexCom moved for a preliminary injunction seeking to prevent Abbott from proceeding with the IPRs. The District of Delaware denied the motion for preliminary injunction and DexCom filed an interlocutory appeal to the Federal Circuit.
In upholding the denial, the Federal Circuit reviewed the district court’s application of the following four factors: “(1) whether the moving party has shown a reasonable likelihood of success on the merits; (2) whether the moving party will suffer irreparable harm in the absence of a preliminary injunction; (3) whether the balance of hardships tips in the moving party’s favor; and (4) the impact of a preliminary injunction on the public interest.” The district court had determined DexCom could not meet the second, third, and fourth requirements, finding that DexCom’s participation in the IPR proceeding for six months before seeking injunctive relief, inconsistent legal positions, and the public interest in preventing invalid patents and allowing the PTAB to complete its proceedings favored denial. On appeal, the Federal Circuit determined that DexCom did not demonstrate a reasonable likelihood of success on its breach of contract counterclaim, ending the inquiry at the first factor. Because the courts reached the same outcome, the Federal Circuit affirmed the judgment of the district court.
