United States District Court, E.D. Michigan, Southern Division
AND ORDER GRANTING PLAINTIFF'S AMENDED MOTION FOR
PRELIMINARY INJUNCTION [#11], DENYING DEFENDANT'S MOTION
FOR LEAVE TO FILE SUPPLEMENTAL BRIEF IN OPPOSITION TO
PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION [#35],
DENYING PLAINTIFF'S MOTION FOR LEAVE TO SUPPLEMENT
PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION [#36], AND
DENYING PLAINTIFF'S MOTION TO CONSOLIDATE PRELIMINARY
INJUNCTION HEARING WITH TRIAL [#54] AS MOOT
Gershwin A. Drain, United States District Court Judge.
the Court is Plaintiff's Amended Motion for Preliminary
Injunction. Plaintiff requests this Court to enjoin Defendant
from making allegations of patent infringement and from
threatening litigation against potential customers of
Plaintiff. Pursuant to E.D. Mich. LR 7.1(f)(2), this Court
has determined that oral argument is not necessary in order
to rule on this Motion. For the reasons discussed below, this
Court will grant Plaintiff's Amended Motion for
Preliminary Injunction. Defendant, its officers, agents, and
those in active concert with it are enjoined from making
allegations of patent infringement and threatening litigation
against Plaintiff's potential customers. Both parties in
this matter also filed Motions for Leave to Supplement their
preliminary injunction pleadings. This Court will deny both
Motions to Supplement. Lastly, Plaintiff filed a Motion to
Consolidate Preliminary Injunction Hearing with Trial. The
Court will deny this Motion as moot.
Myco Industries, Inc. (“Myco”) is a corporation
organized and existing under the laws of Michigan. Dkt. No.
9, pg. 2 (Pg. ID 24). Defendant BlephEx, LLC
(“BlephEx”) is a corporation organized under the
laws of Florida with its principal place of business located
in Tennessee. Id. Mr. John Choate is Myco's
Chairman. Dkt. No. 20, pg. 9 (Pg. ID 1184). Dr. James
Rynerson is BlephEx's owner and President. Id.
August of 2012, Dr. Rynerson sought out Mr. Choate to design
and develop a prototype for a device that could treat
blepharitis. Id. at pg. 10 (Pg. ID 1185).
Blepharitis is an eyelid disease characterized by the
inflammation, scaling, reddening, and crusting of the eyelid,
creating dandruff-like scales on the eyelashes. Dkt. No. 9,
pg. 3 (Pg. ID 25); Dkt. No. 20, pg. 10 (Pg. ID 1185).
Blepharitis can be anterior or posterior. Anterior
blepharitis affects the front edge of the eyelid where the
eyelashes join it, and posterior blepharitis affects the
inner edge of the eyelid. Id.
and Choate formed RySurg LLC (“RySurg”), a
Michigan company and the BlephEx's company's
predecessor. Id. at pg. 10 (Pg. ID 1185). Mr. Choate
modified Dr. Rynerson's device design, developed a
prototype, and oversaw the manufacture and commercialization
of the final product, named the Blephex. Id. The
Blephex removes debris from the eyelid using the ‘718
patent method. Id. at pg. 11 (Pg. ID 1186).
Rynerson initially filed a patent on July 24, 2012 to patent
the Blephex. Dkt. No. 11-7, pg. 150 (Pg. ID 720). On
September 19, 2014, The Patent and Trademark Office
(“PTO”) rejected Dr. Rynerson's first patent
application for the Blephex because it was infringing on a
patent that named Grenon as the inventor (the “Grenon
patent”). Dkt. No. 11-7, pg. 150 (Pg. ID 720). The PTO
corresponded with Dr. Rynerson's representatives to
discuss the difference between Rynerson's Blephex and the
Grenon patent. Dkt. No. 11-7, pg. 179 (Pg. ID 749).
Rynerson's representatives maintained that the Blephex
contacts the inner surface of the eyelid or eyelid margin.
Id. The PTO agreed that the claim limitation of
contacting the inner surface of the eyelid was adequate to
differentiate the Blephex from the Grenon patent.
Rynerson obtained the patent for the Blephex (“the
‘718 patent”) on May 26, 2015. Dkt. No. 11-6, pg.
2 (Pg. ID 562). It is a process, i.e. “method”
patent. See Id. The patent does not state that it
only treats posterior blepharitis. See Dkt. No.
11-6. The patent also never states the terms
“anterior” or “posterior.” However,
the patent consistently states that the Blephex is for use
with the “inner edge portion of the eyelid
margin.” See Dkt. No. 11-6, pg. 9 (Pg. ID 569)
(“the swab having at least a portion thereof configured
to access an inner edge portion of the eyelid margin . . .
the swab . . . contacting a portion of the eye between the
eyelashes and the inner edge of the eyelid margin . . . the
method of claim 1 further comprising accessing at least an
inner edge portion of the eyelid margin with swab . . . the
method of claim 14 further comprising accessing at least an
inner edge portion of the eyelid margin with swab . . . while
the swab is being moved by the electromechanical device,
contacting at least an inner edge portion of the eyelid
margin”). Claim 1 of the patent states that what is
A method of treating an eye for an ocular disorder with a
swab operably connected to an electromechanical device,
wherein the eye has an eyelid margin and includes a removable
debris, the method comprising; effecting movement of the swab
relative to the electromechanical device, the swab having at
least a portion thereof configured to access an inner edge
portion of the eyelid margin; while the swab is being moved
by the electromechanical device, contacting a portion of the
eye between the eyelashes and the inner edge of the eyelid
margin that includes the removable debris with the swab
thereby impacting the debris with the swab to remove debris
from the eye.
Dkt. No. 11-6, pg. 9 (Pg. ID 569). The Blephex went to market
in 2013. Id. Mr. Choate was employed by and served
as President of RySurg from December 2012 until January 2014.
Dkt. No. 10, pg. 16 (Pg. ID 64). Choate and Rynerson ended
their partnership due to financial conflicts. Id.
Dr. Rynerson then formed BlephEx, LLC to market the Blephex.
now sells the Blephex treatment device that is used by
healthcare professionals for the treatment of blepharitis.
Dkt. No. 15, pg. 13 (Pg. ID 975).
February 20-24 of 2019, both BlephEx and Myco attended the
Southern Educational Congress of Optometry
(“SECO”) conference in New Orleans, Louisiana.
Dkt. No. 10, pg. 17 (Pg. ID 65). The SECO conference allows
companies to promote and display their goods and service to
thousands of optometric professionals from around the world.
Id. Myco began marketing its AB Max tool in 2019 at
the SECO conference. Id. Plaintiff asserts that the
AB Max is a device intended for the treatment of anterior
blepharitis only. Id. at pg. 25 (Pg. ID 73). Myco
showed the AB Max tool and handed out materials explaining
the AB Max's functionality and use at the conference.
Id. According to Plaintiff, Dr. Rynerson approached
the Myco booth at the conference and stated that the AB Max
infringes on his Blephex patent. Id. at pg. 18 (Pg.
ID 66). Dr. Rynerson allegedly made this accusation loudly
and within earshot of prospective customers. Id.
Plaintiff alleges that Dr. Rynerson returned to his BlephEx
booth and told optometrists that Myco's AB Max was
infringing on his patents and that he would take action.
Id. at pg. 19 (Pg. ID 67).
to Dr. Rynerson, he approached the Myco booth at the SECO
conference and asked Choate if he thought the AB Max might
infringe Rynerson's patent. Dkt. No. 15-1, pg. 5 (Pg. ID
996). Rynerson asserts that he did not threaten to sue anyone
for patent infringement. Id. He further states that
to the best of his recollection, he did not tell doctors and
practitioners visiting the BlephEx booth that the AB Max
infringed on his patent. Id. at pg. 15 (Pg. ID 977).
March 4, 2019, Plaintiff filed a complaint in this Court.
Dkt. No. 1. Plaintiff filed an amended complaint on March 14,
2019. Dkt. No. 14. The amended complaint requests a
declaratory judgment of non-infringement, a declaratory
judgment of invalidity of the ‘718 patent, and asserts
federal and common law unfair competition claims.
Id. On March 18, 2019, Plaintiff filed the present
Amended Motion for Preliminary Injunction to enjoin Defendant
from making patent infringement allegations and threatening
litigation against Plaintiff's potential customers. Dkt.
No. 11. Defendant opposed the Motion on April 8, 2019. Dkt.
No. 17. Plaintiff replied on April 22, 2019. Dkt. No. 19.
parties have moved this Court for leave to file supplemental
briefs to support the arguments that they presented in
Plaintiff's Motion for Preliminary Injunction. On June
26, 2019, Defendant filed its Motion for Leave. Dkt. No. 35.
On July 2, 2019, Plaintiff filed its Motion for Leave. Dkt.
No. 36. Both parties filed responses to the other's
Motion for Leave on July 10, 2019 and July 16, 2019. Dkt.
Nos. 43, 46. The parties filed replies to the Motions for
Leave on July 16, 2019 and July 23, 2019. Dkt. Nos. 47, 48.
Neither party has shown good cause for filing supplemental
briefs on this issue. Further, the Court has reviewed the
parties' supplemental pleadings and finds that they are
not necessary to consider in its determination of
Plaintiff's Motion for Preliminary Injunction.
Correspondingly, the Court will deny the parties' Motions
for Leave to Supplement.
August 20, 2019 Plaintiff filed a Motion to Consolidate
Preliminary Injunction Hearing with Trial. Dkt. No. 54.
Plaintiff states in its Motion that it sought concurrence
with Defendant but Defendant did not concur. Id. at
pg. 5 (Pg. ID 2013). Defendant has not yet filed a response
to Plaintiff's Motion to Consolidate. For the reasons
discussed below, this Court will grant Plaintiff's
preliminary injunction. Therefore, Plaintiff's Motion to
Consolidate is moot and this Court will accordingly deny the
Motion to Consolidate.
preliminary injunction is an extraordinary measure that has
been characterized as ‘one of the most drastic tools in
the arsenal of judicial remedies.'” Bonnell v.
Lorenzo, 241 F.3d 800, 808 (6th Cir. 2001) (quoting
Hanson Trust PLC v. ML SCM Acquisition Inc., 781
F.2d 264, 273 (2d Cir. 1986)). A preliminary injunction seeks
to “maintain the status quo pending a final hearing
regarding the parties' rights.” All. for
Mentally Ill. of Mich. v. Dep't of Cmty. Health, 588
N.W.2d 133, 137 (Mich. Ct. App. 1998). Whether to grant such
relief is a matter within the discretion of the district
court. See Certified Restoration Dry Cleaning Network,
L.L.C. v. Tenke Corp., 511 F.3d 535, 540-41 (6th Cir.
2007). The Court must balance four factors in determining
whether to grant a request for a preliminary injunction.
Id. at 542. Those factors are:
(1) whether the movant has a strong likelihood of success on
(2) whether the movant would suffer irreparable injury
without the injunction;
(3) whether issuance of the injunction would cause
substantial harm to others; and
(4) whether the public interest would be served by the
issuance of ...