United States District Court, D. Delaware
E. Moore, Bindu A. Palapura, and Stephanie E. O'Byrne,
POTTER ANDERSON & CORROON LLP, Wilmington, DE H. Mark
Lyon, GIBSON DUNN & CRUTCHER LLP, Palo Alto, CA Y. Ernest
Hsin, GIBSON DUNN & CRUTCHER LLP, San Francisco, CA
Jennifer Rho, GIBSON DUNN & CRUTCHER LLP, Los Angeles, CA
Karen A. Gibbs, Campbell, CA Attorneys for Plaintiff
S. Kraft and Brian A. Biggs, DLA PIPER LLP (US), Wilmington,
DE Michael G. Strapp, Larissa Park, Kristoffer W. Lange, and
Yasmin Ghassab, DLA PIPER LLP (US), Boston, MA Attorneys for
U.S DISTRICT JUDGE
Citrix Systems, Inc. (“Citrix”) filed suit
against Defendant Workspot, Inc. (“Workspot”) on
April 19, 2018. (D.I. 1) Citrix claimed infringement of U.S.
Patent Nos. 7, 949, 677 (“the ‘677
patent”), 8, 341, 732 (“the ‘732
patent”), 7, 594, 018 (“the ‘018 patent),
and 8, 135, 843 (‘the ‘843 patent). (D.I. 21)
Citrix also claimed false advertising and unfair competition
under the Lanham Act, the Delaware Deceptive Trade Practices
Act, and common law. (Id.) On May 4, 2018, Citrix
moved for a preliminary injunction, pursuant to Federal Rule
of Civil Procedure 65(a), to enjoin Workspot from what Citrix
contends to be (1) infringement of the asserted patents; and
(2) false and misleading statements about Citrix's
products. (D.I. 8) On December 12, 2018, the Court held a
hearing and denied Citrix's motion. (See D.I.
136; see also 145 (“Tr.”)) This opinion
further explains the Court's reasoning for its decision.
Circuit law provides the standard for granting an application
for a preliminary injunction of patent infringement, and
Third Circuit law provides the standard for a preliminary
injunction of false and misleading statements. See
Hybridtech, Inc. v. Abbott Labs, 849 F.2d 1446, 1451
n.12 (Fed. Cir. 1988); Novartis Consumer Health, Inc. v.
Johnson & Johnson-Merck Consumer Pharmaceuticals
Co., 290 F.3d 578 (3d Cir. 2002). A preliminary
injunction is “extraordinary” relief. Titan
Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372,
1375 (Fed. Cir. 2009); see also Novartis, 290 F.3d
at 586. A “patentee's entitlement to such an
injunction is a matter largely within the discretion of the
trial court.” Id. A plaintiff seeking a
preliminary injunction must establish “ that he is
likely to succeed on the merits,  that he is likely to
suffer irreparable harm in the absence of preliminary relief,
 that the balance of equities tips in his favor, and 
that an injunction is in the public interest.”
Winter v. Natural Res. Def. Council, Inc., 555 U.S.
7, 20 (2008).
moves for a preliminary injunction on two grounds. First,
Citrix moves to enjoin Workspot from infringing the asserted
patents. (D.I. 8) Second, Citrix moves to enjoin Workspot
from making what Citrix contends to be false and misleading
reasons below, the Court concludes that Citrix has not met
its burden on the likelihood of success and irreparable harm
prongs. Therefore, the Court will deny Citrix's motion
for a preliminary injunction. See Jack Guttman, Inc. v.
Kopykake Enterprises, Inc., 302 F.3d 1352, 1356 (Fed.
Cir. 2002) (holding that district court may “deny a
motion based on a patentee's failure to show any one of
the four factors - especially either of the first two -
without analyzing the others”).
Likelihood of Success on the Merits
establish a likelihood of success on the merits of its patent
infringement cause of action, Citrix must demonstrate that it
will “likely prove” that Workspot infringes at
least one claim of an asserted patent, and that the asserted
claims “will likely withstand” Workspot's
challenges to that claim's validity. See Mylan
Institutional LLC v. Aurobindo Pharma Ltd. , 857 F.3d
858, 866 (Fed. Cir. 2017). In other words, a preliminary
injunction should not issue if an alleged infringer raises a
“substantial question” regarding either
infringement or validity, that is, the alleged infringer
asserts an infringement or invalidity defense that the
patentee has not shown “lacks substantial merit.”
AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1050
(Fed. Cir. 2010).
asserts that (a) Citrix's infringement theory is not
sufficiently complete or coherent (D.I. 62 at 5-11); (b) the
asserted patents are invalid (id. at 11-12); and (c)
Workspot has a license to use the ‘843 patent
(id. at 12-13). The Court concludes that Workspot
has raised a substantial question as to Citrix's
infringement theory. Therefore, the Court will not address
Workspot's invalidity and license defenses.
parties focus on one representative claim for each of the
four asserted patents: claim 15 of the ‘677 patent,
claim 20 of the ‘732 patent, claim 1 of the ‘018
patent, and claim 1 of the ‘843 patent. (D.I. 23 at
11-16) Citrix charts the claims against Workspot's
cloud-based virtual desktop solution, which includes
components such as Workspot Control, Workspot Client,
Workspot Connector, and Workspot Agent. (D.I. 1 Exs. 5-8;
D.I. 85) The Court will address each representative claim in
Claim 15 of the ...