Short Summary

Concord & Sage PC secured two significant procedural victories for a major Amazon seller in a U.S. patent infringement action. The plaintiff withdrew its application for a temporary restraining order, and the court subsequently denied its motion for a preliminary injunction. In parallel, the firm initiated post-grant review proceedings before the Patent Trial and Appeal Board, advancing a coordinated strategy across the federal court and the USPTO.

Full Article

Concord & Sage Defeats TRO and Preliminary Injunction Motions in U.S. Patent Litigation

Concord & Sage PC’s intellectual property team recently secured two significant procedural victories for a major Amazon seller in a one-on-one patent infringement action before a U.S. federal district court. The plaintiff withdrew its application for a temporary restraining order (“TRO”), and the court subsequently denied its motion for a preliminary injunction (“PI”) following a hearing.

In parallel with the federal court defense, Concord & Sage filed a petition for post-grant review (“PGR”) before the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office (“USPTO”) within three weeks after the client was sued. This created a coordinated two-track strategy combining federal court litigation with a direct challenge to the validity of the asserted patent.

Background

The plaintiff, a well-known U.S. consumer brand, owns a U.S. patent relating to the products at issue. The defendant, represented by Concord & Sage, is a major Amazon seller whose relevant products have generated substantial sales.

After commencing the lawsuit, the plaintiff sought both a TRO and a PI. These forms of emergency relief can place considerable pressure on cross-border e-commerce businesses. If granted, an injunction may result in product listings being removed and funds being frozen, creating immediate operational and commercial consequences before the underlying infringement and validity issues have been fully adjudicated.

The TRO Application

Rather than limiting its response to the federal court action, the Concord & Sage team promptly initiated PGR proceedings before the PTAB, challenging the validity of the asserted patent.

After the court was informed that the PGR petition had been filed, the plaintiff withdrew its TRO application at the hearing. The client was therefore able to continue its business operations without interruption from the requested TRO.

A party seeking a TRO must generally establish, among other requirements, a likelihood of success on the merits. A formal challenge to the validity of the asserted patent may materially affect the strength of a plaintiff’s position that its patent is valid and infringed. In this matter, the PGR filing formed an important part of the defense strategy against the requested emergency relief.

The Preliminary Injunction Motion

The plaintiff subsequently moved for a preliminary injunction and submitted an expert declaration in support of its infringement allegations.

After the defense filed its opposition to the PI motion, the plaintiff submitted a new expert declaration on the day before the hearing. Although the plaintiff had sufficient time to present its expert evidence with its opening submission, it provided separate declarations addressing infringement and validity at different stages of the proceedings.

Concord & Sage promptly moved to strike the newly submitted declaration on procedural fairness grounds, arguing that its timing deprived the defense of a fair opportunity to examine and respond to the evidence. The court granted the defense request to exclude the declaration.

At the hearing, counsel for the plaintiff acknowledged that, without the excluded expert evidence, the plaintiff could not proceed with its PI motion. Several days later, the court issued a written order denying the application for a preliminary injunction.

Parallel Proceedings Before the PTAB

While the federal court proceedings were moving forward, the PGR matter entered the next procedural stage before the PTAB. The plaintiff’s counsel submitted a request asking the Director of the USPTO to exercise discretionary authority to deny institution. Concord & Sage is preparing an opposition to that request. The next significant milestone will be the PTAB’s institution decision.

If the PGR is instituted, the validity of the asserted patent will be subject to substantive review before the PTAB. That review may also affect the plaintiff’s ability to establish a likelihood of success in the parallel federal court litigation.

Moving from Defense to Affirmative Claims

Concord & Sage has filed an answer on behalf of the client and asserted counterclaims for non-infringement and patent invalidity. The matter has therefore progressed beyond the defense of the requested injunctions to the substantive infringement and validity issues.

The federal court proceedings are being handled by a Concord & Sage team comprising Senior Partner He Wengang, Managing Partner Li Qin, Senior Attorney Hua Zhiwei, Counsel Steve Moore and other members of the firm. The PTAB proceedings are being handled by the team led by Patent Director Liu Hanchen.

Commenting on the matter, He Wengang noted that TRO and PI applications are among the most consequential forms of early relief available to a patent plaintiff and can serve as significant leverage in settlement discussions. Defeating requested injunctive relief at an early stage may remove a central source of that pressure.

He further observed that the two procedural outcomes resulted from a coordinated strategy: the federal court defense and the patent validity challenge before the USPTO were pursued as related components of the same overall response. The PGR proceeding directly addresses the validity of the patent on which the federal litigation is based.

For cross-border e-commerce businesses facing U.S. patent litigation, the matter illustrates the importance of evaluating both defensive and affirmative options at an early stage. Where supported by the facts and applicable law, procedural tools in federal court and patent validity proceedings before the USPTO may be used together to preserve business continuity and create additional room for litigation and settlement strategy.

Concord & Sage will continue to represent the client in the federal court litigation and the PTAB proceedings.

This article is based on publicly available court filings and authorized case information. Client-identifying information has been anonymized. It is provided for case discussion purposes only and does not constitute legal advice. Outcomes depend on the facts, evidence and procedural posture of each matter.