The Western District of Texas recently vacated a preliminary injunction after the USPTO issued a non-final rejection in a reexamination proceeding of all claims of the asserted patent directed to magnetic data cables. Although not final, the rejection was based on a substantial question of validity that made vulnerable the counter-plaintiff’s likelihood of success on the merits.
Initially, the court granted counter-plaintiff’s motion for a preliminary injunction against counter-defendants on the ground that counter-plaintiff had shown it was likely to succeed on its claim for patent infringement of U.S. Patent No. 11,972,881 (the ’881 Patent). Thereafter, counter-defendants filed a petition for reexamination of the ’881 Patent, and the USPTO subsequently issued a non-final rejection of all claims. In view of the non-final rejection, counter-defendants moved to vacate the preliminary injunction.
The court determined that the non-final rejection represented a changed circumstance warranting reconsideration of the preliminary injunction. It then evaluated whether counter-plaintiff continued to meet the requirements for maintaining a preliminary injunction, including demonstrating a likelihood of success on the merits—meaning not only likely proof of infringement, but also that the ’881 Patent will likely withstand validity and enforceability challenges.
The court noted that the Federal Circuit has instructed district courts to consider the current posture of USPTO proceedings when evaluating the likelihood of success. Although a non‑final office action does not require dissolution of a preliminary injunction, it may provide persuasive evidence that the patent is vulnerable in a validity challenge. The court also highlighted that validity standards differ at the preliminary‑injunction stage: while a defendant must ultimately prove invalidity under the “clear and convincing” standard, a preliminary‑injunction opponent need only raise a “substantial question” of validity.
Here, the court determined that the current posture—i.e., the USPTO issuing a non-final rejection finding all eighteen claims of the ’881 Patent to be invalid—tilted strongly in favor of the ’881 Patent being vulnerable to a validity challenge. On that basis, the court granted the motion to vacate the preliminary injunction. However, the court made clear that this decision did not foreclose future injunctive relief should new circumstances warrant it, such as if the USPTO ultimately confirmed the ’881 Patent claims in reexamination.
Practice Tip:
In the context of a preliminary injunction, a non-final rejection in a parallel reexamination proceeding may be relevant to the likelihood of success on the merits, including if it raises a substantial question of validity as to the asserted patent claims. Therefore, a defendant facing a motion for a preliminary injunction should consider the effects of a parallel USPTO proceeding because—even if an injunction is initially granted—a non-final rejection from the USPTO of the claims at issue can be persuasive grounds for vacating that injunction.
Yue v. Reaction Labs, LLC, No. 24-CV-1125, 2026 WL 157144 (W.D. Tex. Jan. 20, 2026) (J. Pitman)