SoClean, Inc. v. Sunset Healthcare Solutions, Inc., No. 21-2311 (Fed. Cir. 2022)
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SoClean, a medical-device company that produces sanitizing devices for CPAP machines, owns the 195 registration for the configuration of replacement filters for its sanitizing devices. SoClean sued its former distributor, Sunset, for patent infringement, and trademark infringement based on that registration. On a motion for a preliminary injunction, the district court concluded that SoClean was likely to succeed on the merits and was entitled to a presumption of irreparable harm. Balancing the equities and weighing the public interest, the court concluded that enjoining all sales of Sunset’s filters would “go[] much further than necessary” to “end any possible statutory violation.” The court crafted a narrow “injunction that prohibits Sunset from engaging in those practices that result in consumer confusion” and enjoined Sunset from marketing its filters “using images of the filter cartridge alone”; “[a]ny image, drawings, or other depictions of Sunset’s filter cartridge used for the purposes of promotion, marketing and/or sales shall prominently display the Sunset brand name in a manner that leaves no reasonable confusion that what is being sold is a Sunset brand filter.”
The Federal Circuit affirmed, rejecting arguments that the district court afforded too much weight to the presumption of validity and held Sunset to a higher standard of proof than the applicable preponderance-of-the-evidence standard.
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