United States District Court, N.D. Illinois, Eastern Division
October 6, 2005.
TECHTRONIC INDUSTRIES CO., LTD. and RICHARD PANDO, Plaintiffs,
CHERVON HOLDINGS LTD., NANJING CHERVON INDUSTRIAL CO., LTD., a/k/a CHERVON INDUSTRY CO., LTD., CHERVON LTD., and CHERVON NORTH AMERICA, INC., Defendants.
The opinion of the court was delivered by: RUBEN CASTILLO, District Judge
MEMORANDUM OPINION AND ORDER
Techtronic Industries Company, Limited ("TTi") and Richard
Pando (together "Techtronic") sued Chervon Holdings Limited,
Nanjing Chervon Industrial Company, Limited, Chervon, Limited,
and Chervon North America, Incorporated (collectively "Chervon")
alleging patent infringement in violation of Title 35 of the
United States Code. (R. 1, Compl. ¶ 7.) Techtronic has moved this
Court for a preliminary injunction to prevent Chervon from
infringing U.S. patent 6,382,574, held by Richard Pando ("the
Pando patent").*fn1 For the reasons set forth below, we
grant Techtronic's motion for a preliminary injunction. (R.
TTi is a manufacturer of power tools that has an exclusive
license to the Pando patent. (R. 17, Pl.'s Mem., Ex. 4, Winn
Decl. ¶ 2; Ex. 5, Pando Decl. ¶ 4.) TTi sells products under the Ryobi® brand, among others. (Id., Ex. 4, Winn Decl. ¶ 4.) One
of the products that TTi sells under the Ryobi® brand is a
suction-mounted laser level product known as the AIRgrip Laser
Level. (Id. ¶ 6.) TTi spent sixteen months and more than 2
million dollars to design and develop this product. (Id. ¶ 7.)
The Ryobi® AIRgrip is sold exclusively in The Home Depot stores
across the United States. (Id. ¶ 10.) During discussions to set
up its exclusive relationship with The Home Depot, TTi informed
The Home Depot that TTi has patent protection for the AIRgrip
resulting from its exclusive license to the Pando patent. (Id.
¶ 9.) Since it began selling the AIRgrip in September 2004, The
Home Depot has sold more than 500,000 units of the product.
(Id. ¶ 11.)
Chervon is also in the business of manufacturing and selling
power tools. (R. 15, Defs.' Exs., Ex. S, Turoff Decl. ¶
2.)*fn2 This dispute arises out of Chervon's development of
a laser level with a motorized suction base which it plans to
market through Sears as the Craftsman® Acculine Laser Trac Level
Model 48253 ("the Chervon device"). (Id. ¶ 6; R. 17, Pls.'
Mem., Ex. 2, Karvelis Decl. ¶ 17.) Sears has announced that this
product will be available for retail in October 2005. (R. 17,
Pls.' Mem., Ex. 2, Karvelis Decl. ¶ 17.) Techtronic alleges that
the Chervon device directly infringes upon the Pando patent and
seeks preliminary injunctive relief to prevent Chervon from
A preliminary injunction is "an extraordinary and drastic
remedy, one that should not be granted unless the movant, by a
clear showing, carries the burden of persuasion." Mazurek v. Armstrong, 520 U.S. 968, 972 (1997) (per curiam) (emphasis in
original) (quoting 11 A C. Wright, A. Miller, & M. Kane, Fed.
Practice & Procedure § 2948, pp. 129-30 (2d ed. 1995)); National
Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1324
(Fed. Cir. 2004). The moving party is only entitled to a
preliminary injunction if it can demonstrate: (1) a reasonable
likelihood of success on the merits; (2) irreparable harm in the
absence of a preliminary injunction; (3) the balance of hardships
tips in the movant's favor; and (4) the injunction has a
favorable impact on the public interest.*fn3 Amazon.com,
Inc. v. Barnesand Noble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir.
2001). None of these factors, taken individually, is dispositive
because a district court must weigh each factor against the
others and against the relief requested. Hybritech,
849 F.2d at 1451. The moving party, however, "cannot be granted a preliminary
injunction unless it establishes both of the first two factors,
i.e., likelihood of success on the merits and irreparable
harm." Amazon.com, 239 F.3d at 1350 (emphasis in original).
Techtronic argues that it has shown a high likelihood of
success on the merits of its infringement claim, that Chervon's
pending release of the Chervon device will irreparably harm its
market share and customer relationships, and that the balance of
hardships and public interest factors weigh in its favor. Chervon
argues that Techtronic satisfies none of the preliminary
injunction factors and challenges both the Pando patent's
validity and Techtronic's assertion that the Chervon device
infringes that patent. I. Reasonable Likelihood of Success on the Merits
Because Chervon has challenged the validity of the Pando
patent, we must consider Techtronic's likelihood of succeeding
both on the merits of its infringement claim and in defending
against Chervon's validity challenge. Both of these
considerations involve a two-step analysis. The first step is the
same for both the infringement and validity analyses: we must
determine, as a matter of law, the proper scope and meaning of
the asserted patent claims. Oakley, Inc. v. Sunglass Hut Int'l,
316 F.3d 1331, 1339 (Fed. Cir. 2003). The second step of the
validity analysis requires us to compare the asserted patent
claim with the prior art referenced by the alleged infringer and
to determine whether "each and every limitation is found either
expressly or inherently in a single prior art reference" or
whether the claim "would have been obvious within the meaning of
35 U.S.C. § 103." Id. (quoting Celeritas Techs. Inc. v.
Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)).
Similarly, under step two of the infringement analysis we must
compare the claim to the accused device and determine whether
"every claim limitation or its equivalent [can] be found in the
accused device." Id.
A. Claim Construction
The only claim of the Pando patent that is in dispute for the
purposes of the preliminary injunction motion is claim 1, which
reads as follows:
A self-mounting device, comprising:
a suction cup that cooperates with an uneven and
immobile surface to define a suction space, wherein
the uneven and immobile surface allows for influx of
air into the suction space;
a motor coupled to a suction pump that cooperates
with the suction space to create a vacuum in the
suction space and that removes the air from the
suction space; and an article supporting portion other than a handle
that is mechanically coupled to the suction cup,
wherein the article supporting portion is configured
to support an article in a fixed relationship with
respect to the uneven and immobile surface.
(R. 17, Pls.' Mem., Ex. 1, Pando Patent, col. 6, Ins. 4-17.)
There are only two aspects of the construction of claim 1 over
which the parties disagree. The first is the meaning of the term
"uneven." The second is whether claim 1 claims a combination of a
"self-mounting device" and an "uneven and immobile surface" or
whether it claims the self-mounting device alone. (R. 21, Def.'s
Resp. at 9-11; R. 19, Pls.' Reply at 1-3, 4-7.)
In construing a patent claim, a district court must generally
give the words of the claim "their ordinary and customary
meaning." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
2005) (quoting Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582 (Fed. Cir. 1996)). The ordinary and customary meaning
of a term is determined by what a person of ordinary skill in the
art would understand the term to mean at the time of the
invention. Id. at 1313. The court begins its claim construction
by considering the intrinsic evidence, which includes the claim
language, the remainder of the specification, and the prosecution
history. Id. at 1314. The claim language itself is the most
important guide. See id.; Middleton, Inc. v. Minnesota Mining &
Mfg. Co., 311 F.3d 1384, 1387 (Fed. Cir. 2002) (stating that
"the most important indicator of the meaning" of a disputed term
"is its usage and context within the claim itself"); Bell
Communications Research, Inc. v. Vitalink Communications Corp.,
55 F.3d 615, 619 (Fed. Cir. 1995) (noting that "[f]irst, and most
importantly, the language of the claim defines the scope of the
protected invention"). If the claim language is clear, then "it
is improper for the court to rely on extrinsic evidence such as
expert testimony for purposes of claim construction." Bell &
Howell Document Mgmt. Prods. Co. v. Altek Sys., 132 F.3d 701,
706 (Fed. Cir. 1997). Where the claim language is not plain, "[t]he best source for understanding a technical term is the
specification from which it arose, informed, as needed, by the
prosecution history." Multiform Desiccants, Inc. v. Medzam,
Ltd., 133 F.3d 1473, 1478 (Fed Cir. 1998).
A court may also rely on extrinsic evidence to construe a claim
where it is useful to a determination of the claim's ordinary
meaning, but this evidence is less significant than the intrinsic
record. Phillips, 415 F.3d at 1317. Extrinsic evidence includes
"all evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and
learned treatises." Id. at 1317 (quoting Markman v. Westview
Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc),
aff'd, 517 U.S. 370 (1996)). While this evidence can be useful
in determining the true meaning of the relevant art, it is less
significant to claim construction than the intrinsic evidence.
1. Meaning of the Term "Uneven"
A key issue for the resolution of this motion is the meaning of
the term "uneven" in the context of claim 1. The term "uneven" is
generally understood to mean not smooth.*fn4 The meaning of
"uneven" within the context of claim 1, however, is even more
specific. The claim references an "uneven and immobile surface . . .
wherein the uneven and immobile surface allows for influx of
air into the suction space." (R. 17, Pls.' Mem., Ex. 1, Pando
Patent, col. 6, Ins. 5-8.) Based on the plain language of the
claim, we construe the meaning of "uneven" in the claim's
description of a surface as one that is "sufficiently non-smooth
as to allow for the influx of air around a suction cup." In reaching this preliminary construction, we have also relied
on the specification and prosecution history. The patent's
specification states that "[c]ontemplated surfaces need not be
smooth, but may alternatively be uneven, or have cracks or
crevices." (Id., col. 2, Ins. 55-57.) It also states that the
invention is meant "to be affixed to a stationary suction
surface, in which an undesired influx of air can be automatically
removed." (Id., col. 2, Ins. 14-16.) This reinforces our
construction that the surface must be sufficiently non-smooth as
to allow for the introduction of air when a suction cup is
applied. The prosecution history also supports our construction.
In differentiating his claim from the Maznik patent, U.S.
5,630,517, Pando remarked that:
Maznik further teaches that his `. . . apparatus
can be . . . mounted to any smooth surface . . .' . . .
however, [it] fails to teach an uneven and immobile
surface. On the contrary, a smooth surface is
entirely inconsistent with an uneven surface as
expressly required in amended claim 1.
(R. 15, Defs.' Exs., Ex. E, Pros. Hist. at 68.) He later
reiterated the distinction between "uneven" and "smooth" in
another defense against the Maznik patent as prior art. (Id. at
Although we have derived our construction of the term "uneven"
from our review of the intrinsic evidence in this case, we also
note that support for our construction can be found in the
extrinsic expert testimony that both parties offered in this
case. Techtronic's expert, Albert V. Karvelis, defines the
"uneven" limitation in the suction cup reference as a "suction
cup that acts together with a fixed surface which is not smooth
enough to prevent leakage of air, to form a vacuum chamber into
which the air leaks." (R. 17, Pls.' Mem., Ex. 2, Karvelis Decl. ¶
28 (emphasis added).) Chervon's expert, Allan S. Myerson, gives a
surprisingly similar explanation, stating that "the term `uneven'
as used in the [Pando] patent, should be construed as meaning
non-smooth." (R. 15, Defs.' Exs., Ex. A, Myerson Decl. ¶ 21.) He
also explained that "[a]n uneven surface is one that permits air to flow around the
suction cup and to enter the suction space." (Id. ¶ 25.) Dr.
Myerson even noted his agreement with Dr. Karvelis on this point.
(Id. ¶ 26.)
Chervon has attempted to limit the scope of this term, however,
by arguing that the term "uneven" as used in claim 1 should be
limited to the following surfaces: a crude concrete wall, block
or brick wall, unfinished wood, and tile wall. (R. 21, Defs.'
Resp. at 10.) No such limitation is found in the claim language
itself. The patent specification rejects Chervon's proposed
limitation, stating that:
Contemplated surfaces need not be smooth, but may
alternatively be uneven, or have cracks or crevices.
For example, contemplated surfaces include crude
concrete walls, block or brick walls, unfinished
wood, and tile walls having spaces partially filled
(R. 17, Pls.' Mem., Ex. 1, Pando Patent, col. 2, Ins. 55-59.) The
plain language of this text indicates that the specified surfaces
constitute a non-exhaustive list of contemplated examples rather
than a limitation of the specific surface types with which the
self-mounting device can be used.
Chervon's only support for its proposed limitation is the
patent examiner's statement in the prosecution history that Pando
"defines an uneven immobile surface as a crude concrete wall,
block or brick walls, unfinished wood, and tile wall." (R. 15,
Defs. Exs., Ex. E, Pros. Hist. at 79.) Chervon fails to note,
however, that in response to this statement, Pando specified that
those surfaces were merely examples, stating that "[t]he present
specification explicitly defines a static surface as an `uneven,'
. . . `immobile . . . object, for example, a wall, . . . crude
concrete walls, block or brick walls, . . . and tile
walls. . . ." (Id. at 83-84 (emphasis added).) Pando's characterization, and not the examiner's prior statement, is
consistent with the specification language. We find that the
Pando patent's specification, coupled with Pando's statements in
the prosecution history, do not support Chervon's proposed
limitation of the term "uneven" in claim 1 to those surfaces
explicitly named in the patent specification.
2. Combination of Device and Surface
The parties also hotly contest whether claim I is directed to
the self-mounting device alone, or whether it is directed to a
combination of the device and the "uneven and immobile surface."
(R. 21, Defs.' Resp. at 9, 11; R. 19, Pls.' Reply at 4-7.)
Chervon argues that the prosecution history demonstrates that
Pando limited the claims to a combination of the self-mounting
device and the surface on which the device is mounted. (R. 21,
Defs.' Resp. at 9.) In support of this construction, Myerson
states that "[b]ased on my review, the file history demonstrates
that the claims were limited, during prosecution, to the
combination of the self-mounting device and the surface[.]" (R.
15, Defs.' Exs., Ex. A, Myerson Decl. ¶ 26.)
We find that the plain language of claim 1 does not support
Chervon's proposed limitation. Claim one describes "[a]
self-mounting device, comprising: a suction cup that cooperates
with an uneven and immobile surface to define a suction
space[.]" (R. 17, Pls.' Mem., Ex. 1, Pando Patent, col. 6, Ins.
4-6 (emphasis added).) The claim thus identifies a suction cup as
a component of the self-mounting device and then describes how
that component interacts with a specific type of surface. The
role of the "surface" in the claim language is to describe how
the suction device functions in creating a suction space. This
construction is supported by the patent's specification, which
states that the Pando patent meets the need for a suction device
that deals with the problem of air leakage by providing "a vacuum
suction device that is used to be affixed to a stationary suction surface, in
which an undesired influx of air can be automatically removed."
(Id., col. 2, Ins. 8-19.) In describing how the self-mounting
device works, the specification states that "the device is
juxtaposed to a wall or other static surface, the motor is
engaged, and the vacuum generator creates a sufficient vacuum at
the suction cup to hold the device to the wall." (Id., col. 2,
Ins. 50-53.) These references in the patent specification support
our view that the surface reference is included in claim 1 to
describe how the self-mounting device operates. Nothing in the
claim language or specification indicates that claim 1 identifies
the surface as part of the patented device itself.
Though we find that the claim and specification language is
clear, the prosecution history on this issue is somewhat muddled.
As originally filed, the patent application preamble noted that
the patent covered "a self-mounting device to support an article
with respect to a static surface. . . ." (R. 15, Defs.' Exs., Ex.
E, Pros. Hist. at 29-30.) The examiner asked Pando to indicate
whether he intended to claim the self-mounting device alone or
the combination of the self-mounting device and the static
surface. (Id. at 30.) Specifically, the examiner stated:
[i]f applicant indicates by amendment that the
combination claim is the intention, the language in
the preamble should be made consistent with the
language in the body of the claims. If the intent is
to claim the subcombination, then the body of the
claims must be amended to remove positive recitation
of the combination.
(Id. at 31.) In response, Pando amended claim one to read
simply: "[a] self-mounting device, comprising. . . ." (Id. at
38.) Pando explained that he made the amendment "to more clearly
indicate a combination claim." (Id.)
The Federal Circuit recently acknowledged that "because the
prosecution history represents an ongoing negotiation between the
PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
specification and thus is less useful for claim construction
purposes." Phillips, 415 F.3d at 1317. We find that this
observation applies here. Pando's response to the examiner's
inquiry regarding the scope of claim 1 could be read in two
different ways. First, his amendment of the preamble and
statement that the amendment was made "to more clearly indicate a
combination claim" could indicate that he intended the claim to
include a combination of the device and the surface. It is also
possible, however, that Pando removed the reference to the
surface from the preamble to obviate that claim 1 covered only
the device itself. He did not follow the examiner's suggestion to
change the preamble to be consistent with the language in the
body of claim 1 if he wished to claim the device in combination
with the surface. As Techtronic has suggested, Pando's reference
to a "combination claim" could have referenced the combination of
the three elements of the claim. Because Pando did not adopt
either of the Examiner's suggestions, we simply cannot divine his
true intention from the prosecution history. Thus we cannot find
a clear intent on Pando's part to limit the scope of claim one to
a combination of the self-mounting device and a surface. See
id.; Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1345 (Fed.
Chervon has challenged the validity of the Pando patent,
arguing that it was anticipated and rendered obvious by prior
art.*fn5 Whether a patent is valid is a question of law.
Avia Group Int'l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557,
1562 (Fed. Cir. 1988). In order to establish that a prior art
renders a patent invalid, the challenger must compare the patent
claims with the prior art. Oakley, 316 F.3d at 1339. The district court must assess
the meaning of the prior art references, which is a question of
fact. Amazon. com, 239 F.3d at 1358. While a patent is presumed
valid under federal law, see 35 U.S.C. § 282, that presumption
does not relieve the moving party in the preliminary injunction
context from carrying its normal burden of establishing its
reasonable likelihood of prevailing, New England Braiding
Company, Inc. v. A.W. Chesterton Company, 970 F.2d 878, 882
(Fed. Cir. 1992). At the preliminary injunction stage, the
district court does not resolve the validity question but rather
assesses the persuasiveness of the challenger's evidence. Id.
at 882-83. As a result, a district court will only decline to
issue a preliminary injunction on validity grounds if the party
attacking validity "raises a substantial question concerning
infringement or validity, meaning that it asserts a defense that
the party seeking the injunction cannot prove lacks substantial
merit." Oakley, 316 F.3d at 1340 (internal quotation omitted);
New England Braiding, 970 F.2d at 882-83.
Here, Chervon challenges the validity of the Pando patent based
on Myerson's conclusion that claim 1 is "anticipated by at least
each of U.S. Patent Nos. 3,915,241 [`the `241 patent']; 4,058,281
[`the `281 patent']; and 5,795,001 [`the `001 patent.']" (R. 21,
Defs.' Resp. at 8.) "Anticipation under 35 U.S.C. § 102 means
lack of novelty, and is a question of fact." Brown v. 3M,
265 F.3d 1349, 1351 (Fed. Cir. 2001). A patent is anticipated if
every limitation is found either expressly or inherently in a
single prior art reference. Id.; Oakley, 316 F.3d at 1339;
Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1476
(Fed. Cir. 1997). In other words, "anticipation requires
identity." Robert L. Harmon, Patents and the Federal Circuit 93
(6th ed. 2003). We cannot find that Chervon has raised a
substantial question as to whether the Pando patent is invalid on an anticipation theory because Chervon has
not demonstrated that every limitation of the Pando patent is
found in the cited prior art references.
a. The `241 Patent
The `241 patent describes a "method and apparatus for
temporarily securing a tool to a supporting surface." (R. 15,
Defs.' Exs., Ex. H, `241 Patent.) The patent claims an apparatus
"comprising a rigid suction bell . . . a vacuum connection
opening in said bell for evacuation of said bell . . . and at
least three supporting legs rigidly affixed to said bell. . . ."
(Id., col. 5, Ins. 32-43.) Myerson provides no explanation for
his conclusion that a "suction bell" is equivalent to a "suction
cup." (See id., Ex. 1, Claim Comp. at 1.) The plain language of
the `241 patent differentiates between a suction cup and a
suction bell, identifying them as two different forms of suction
devices. (R. 15, Defs.' Exs., Ex. H, `241 Patent, col. 1, Ins.
35-37.) An anticipation finding requires a prior art reference to
"disclose each and every element of the claim with sufficient
clarity to prove its existence in the prior art." Motorola,
121 F.3d at 1473. Based on our review of the plain language, we
cannot find such clarity of identity between the Pando patent's
claim of a suction cup and the `241 patent's claim of a suction
The patents also differ because the suction bell in the `241
patent is supported by at least three supporting legs. (R. 15,
Defs.' Exs., Ex. H, `241 Patent, col. 2, Ins. 8-29, col. 5, Ins.
32-47.) The Pando patent, on the other hand, describes a
"self-mounting device" in which the suction cup secures to a
surface without any supporting features. (R. 17, Pls.' Mem., Ex.
1, Pando Patent, col. 6, Ins. 4-8.) The purpose of the suction
cup in the Pando patent is to allow for mounting without the need
for other support. Moreover, in the Pando patent, the motor and
article supporting portion are "coupled" to the suction cup and
pump, (id., col. 6, Ins. 8-14), while the vacuum source and motor described in the `241 patent
are remote from the suction bell and apparatus, (R. 15, Defs.'
Exs., Ex. H, `241 Patent, col. 3, Ins. 23-38). Based on our
comparison of the patent language, we cannot find that Chervon
has raised a substantial question regarding the validity of the
Pando patent that Techtronic cannot prove lacks substantial
b. The `281 Patent
Nor is there identity between the limitations of the Pando
patent and the `281 patent, which describes a "high vacuum
fastener." (Id., Ex. J, `281 Patent.) First, the `281 patent
claims "[a] vacuum device for securement against a flat surface
and capable of maintaining a vacuum against the surface by means
of an external vacuum source comprising . . . sealing means
disposed in said closed peripheral groove defining a vacuum
retaining area with the flat surface. . . ." (Id., col. 3,
Ins. 42-45, 49-51 (emphasis added).) Thus, while the Pando patent
claims a suction device for use against an uneven surface, the
`281 patent specifically discloses a vacuum device for use
against a flat surface. Chervon cannot argue that this
distinction makes no difference for validity purposes while
arguing that it makes every difference for its infringement
claim. We find that the `281 patent's express language limiting
the purpose of the device to use against a flat surface
demonstrates a lack of identity between it and the Pando patent.
Second, there is no suction cup referenced in the `281 patent;
instead, it references a sealing means comprising an "O-ring
disposed in said peripheral groove and extending partially out of
the plane of said first smooth surface." (Id., col. 4, Ins.
14-17.) According to the `281 patent, the O-ring defines the
enclosed vacuum retaining area, but the vacuum pump creates the
necessary air pressure within the enclosed area that the O-ring
defines. (Id., col. 2, Ins. 45-47, 54-62.) The suction cup
described in the Pando patent, on the other hand, can be affixed
to a stationary surface and then an undesired influx of air is removed
by operating the motorized suction pump. Moreover, the O-ring in
the `281 patent is "frictionally receiv[ed]" in an annular slot
in the peripheral edges of a surrounding block and thereby
defines the enclosed vacuum retaining area. (Id., col. 2, Ins.
44-47; col. 3, Ins. 49-51.) In the Pando patent, the suction cup
defines a suction space directly with the uneven surface. Myerson
gives no explanation for his conclusion that an O-ring is the
same as a suction cup. Instead, he simply states that Karvelis
agreed that this is the case. (Id. Ex. A, Myerson Decl. ¶ 35.)
Karvelis did not make such an admission; instead, he simply
testified that an O-ring could be used as a suction cup in
certain circumstances. (Id., Ex. D, Karvelis Dep. at 27, Ins.
9-11.) That two elements of separate patents can accomplish the
same function does not make them equal.
Finally, the second element claimed in the Pando patent is a
motor coupled to a suction pump. (R. 17, Pls.' Mem., Ex. 1, Pando
Patent, col. 6, In. 9.) The `281 patent does not claim a motor.
(Id., Ex. J, `281 Patent, cols. 3 & 4; Ex. K, Claim Comp. at
2-3.) Instead, it claims an "external vacuum source" that works
with a needle valve pin that allows air to evacuate through an
opening in the vacuum chamber. (Id., Ex. J, `281 Patent, col.
3, Ins. 44-45, 52-56 & col. 4, Ins. 1-13.) Comparing the plain
language of the two patents, we cannot say that the `281 patent
discloses a motor coupled to a suction cup. As a result, we find
that Chervon has not raised a substantial question as to whether
the `281 patent anticipates the Pando patent. Oakley,
316 F.3d at 1339-40.
c. The `001 Patent
Finally, we find that Chervon has not raised a substantial
question regarding whether the `001 patent anticipates the Pando
patent. The fact that the examiner who reviewed the Pando patent expressly compared it to the `001 patent makes it
especially difficult for Chervon to establish a substantial
question that the `001 patent anticipates the Pando patent. (R.
17, Pls.' Mem., Ex. 1, Pando Patent, col. 1, Ins. 46-50; col. 5,
Ins. 28-32); see Glaxo Group Ltd. v. Apotex, Inc.,
376 F.3d 1339, 1348 (Fed. Cir. 2004); Metabolite Labs., Inc. v. Lab.
Corp. of Am. Holdings, 370 F.3d 1354, 1367-68 (Fed. Cir. 2004).
Myerson states that the examiner did not consider whether the
`001 patent's "surface 36" could qualify as an article supporting
portion. (R. 15, Defs. Exs., Ex. A, Myerson Decl. ¶ 38.) The `001
patent specifically refers to surface 36 as a "handle grip
portion." (Id., Ex. L, `001 Patent, col. 2, Ins. 64-67, col. 5,
In. 39, col. 6, In. 18.) Claim 1 of the Pando patent, however,
specifically claims "an article supporting portion other than a
handle[.]" (R. 17, Pls. Mem, Ex. 1, Pando Patent, col. 6, In.
13.) Thus surface 36 does not describe the same element as the
article supporting portion in the Pando patent.
Because we have found that Myerson's conclusions regarding the
prior art's anticipation of the Pando patent are not supported by
the plain language of the prior art, we cannot find that Chervon
has raised a substantial question regarding the Pando patent's
validity based on its anticipation theory that Techtronic cannot
prove lacks substantial merit. See Motorola, 121 F.3d at 1476
(noting that "[a]n expert's conclusory testimony, unsupported by
the documentary evidence, cannot supplant the requirement of
anticipatory disclosure in the prior art reference itself.").
Though Chervon makes much ado about Techtronic's failure to
provide expert testimony supporting the validity of the Pando
patent, (R. 21, Defs.' Resp. at 7-8), the Federal Circuit has
made clear that expert testimony is not necessary to rebut a
validity challenge, see Avia Group Int'l, 853 F.2d at 1564.
Techtronic properly relies on the plain language of the prior art
to show that the Pando patent was not anticipated. (R. 19, Pls.'
Reply at 8-11.) Additionally, Techtronic has submitted Richard Pando's declaration which
demonstrates that other companies in the industry were unable to
obtain rights to the patent due to Pando's exclusive licensing
arrangement with TTi. (R. 17, Pls.' Mem., Ex. 5, Pando Decl. ¶¶
4-6.) Such evidence of industry acquiescence in the patent's
validity lends further support to our anticipation findings. See
Amazon. com, 239 F.3d at 1359. For all of these reasons, we
disagree with Chervon's contention that Techtronic has failed to
rebut its validity challenge.
Chervon also argues that the Pando patent is rendered obvious
by U.S. Patent No. 5,063,679 ("the `679 patent").*fn6 (R.
21, Defs.' Resp. at 8.) A patent is obvious if "the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains."
35 U.S.C. § 103(a). While a patent is presumed valid,
35 U.S.C. § 282, a court must hold a patent invalid if it is clear that the
invention as a whole would have been obvious in light of prior
art, Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566
(Fed. Cir. 1987). To avoid situations in which district courts
make obviousness findings based on the benefits of hindsight, the
Federal Circuit requires actual evidence of a suggestion,
teaching, or motivation to combine prior art references to
support a validity challenge based on obviousness. Ecolochem,
Inc. v. Southern Cal. Edison Co., 227 F.3d 1361, 1371-72 (Fed.
Cir. 2000); see also Nat'l Steel Car, 357 F.3d at 1337. Whether a patent is obvious is a question of law based on
factual inquiries. Graham v. John Deere Co., 383 U.S. 1, 17
(1966). The court reviewing an obviousness challenge must
consider four criteria: (1) a determination of the scope and
content of the prior art; (2) a determination of the differences
between the prior art and the claims at issue; (3) a
determination of the level of ordinary skill in the pertinent
art; and (4) a determination of which, if any, secondary
considerations or objective evidence of nonobviousness are
relevant and the effect of those secondary considerations. Id.
at 17-18; Mitsubishi Elec. Corp. v. Ampex Corp., 190 F.3d 1300,
1308-09 (Fed. Cir. 1999). Secondary considerations include
"commercial success, long felt but unsolved need for the
invention, the failure of others, and copying of the claimed
invention." For Your Ease Only, Inc. v. Natural Sci. Indus.,
Ltd., 02-C-1584, 2003 WL 22112997, *3 (N.D. Ill. Sept. 10,
2003), aff'd, 101 Fed. Appx. 356 (Fed. Cir. Jun. 24, 2004)
(citing Graham, 383 U.S. at 17).
Chervon rests its obviousness challenge on Myerson's
declaration. Myerson declares that every element of claim 1 of
the Pando patent exists in the `679 patent except for the motor
coupled to the vacuum pump. (R. 15, Defs.' Exs., Ex. A, Myerson
Decl. ¶ 39.) Myerson further states: "[i]t is my understanding
that it was well known in the art, at the time that the invention
of [the Pando] patent was made, to use a motor coupled to a
vacuum pump to remove air from the suction space." (Id.) The
only facts Myerson cites to support his "understanding" is
Karvelis's deposition and a blanket reference to the prior art
cited in support of Chervon's anticipation defense. (Id. ¶ 40.)
Karvelis acknowledged that the `001 patent has a feature
consisting of a motor and a suction cup. (Id., Ex. D, Karvelis
Dep. at 109.) As previously discussed, however, the patent examiner specifically referenced the `001 patent during a
rigorous and on-going examination of the Pando patent. (R. 17,
Pls.' Mem., Ex. 1, Pando Patent, col. 1, Ins. 46-50, col. 5, Ins.
28-29.) After noting the existence of prior art such as the
`001 patent that utilize a vacuum source in connection with a
vacuum suction device, the examiner found that none of the prior
art coupled the elements of claim 1 as the Pando patent had.
(Id. col. 2, Ins. 16-19.) As the patent examiner did not
consider Pando's invention obvious based on the existence of the
`001 patent and other prior art, Chervon's burden is particularly
high in making that argument here. See Glaxo Group,
376 F.3d at 1348; Hewlitt Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1467 (Fed. Cir. 1990).
The only evidence other than Karvelis's statement and the Pando
patent that Myerson offers in support of the obviousness defense
is his blanket contention that "several of the prior art patents
previously discussed illustrate that the use of such a
combination of a motor and a suction cup was known." (R. 15,
Defs.' Exs, Ex. A, Myerson Decl. ¶ 40.) Even crediting that
blanket assertion, Myerson has not demonstrated why or how the
knowledge that a motor could be used in combination with a
suction device renders Pando's invention as a whole obvious to a
person ordinarily skilled in the art. Pando's idea was to couple
the motorized suction device together with an article supporting
portion and to use that motorized suction device to prevent the
leakage of air from uneven surfaces. The patent examiner
recognized that this was a new idea. (R. 17, Pls.' Mem., Ex. 1,
Pando Patent, col. 2, Ins. 8-19.) Chervon has presented no
evidence that indicates that the prior art provide any
suggestion, teaching, or motivation to create the device that
Pando invented. See Ecolochem, 227 F.3d at 1371-72.
Though Chervon has neglected the Graham analysis for
obviousness, it is nonetheless our duty to review Chervon's challenge against that analytical
framework. As for the first factor, the `679 patent claims an
adjustable protractor bubble level that includes a suction cup as
an affixing means. (R. 15, Defs.' Exs., Ex. N, `679 Patent, col.
6, Ins. 11-12, 44-46.) That invention was intended for use as a
leveling device that is adapted for rapid affixation to a power
tool or other device. (Id., col. 1, Ins. 5-10.) Thus the scope
of the `679 patent is much more limited than the Pando patent,
which claims a more general self-mounting device that can be used
for many different purposes not just as a level. Under the
second factor, Myerson acknowledges that the `679 prior art does
not include a motor coupled to a vacuum pump, which is a key
element of claim 1 of the Pando patent. There is no evidence on
the third factor identification of a person ordinarily skilled
in the art so we find it has a neutral effect.
Finally, we find that secondary considerations weigh against
Chervon's obviousness challenge. Though we agree with Chervon
that Techtronic has provided no evidence that the commercial
success of the AIRgrip is attributable to the Pando patent, we
find that other secondary considerations weigh in Techtronic's
favor. Specifically, the examiner noted that the Pando invention
satisfies a previously unmet need to provide a suction device by
which an undesired influx of air can be automatically removed
when it is attached to a static surface. (R. 17, Pls.' Mem., Ex.
1, Pando Patent, col. 2, Ins. 16-19.) The examiner also noted
that while others had designed suction devices to be affixed to
static surfaces, they had failed to resolve the problem of the
undesired influx of air when a device is attached to an uneven
surface. (Id. col. 2, Ins. 8-19.) Thus secondary considerations
weigh against a finding of obviousness.
For all of these reasons, we find that Chervon has not raised a
substantial question regarding the validity of the Pando patent
based on obviousness. As a result, we will proceed to the infringement claim.
Techtronic argues that it is likely to prove at trial both that
Chervon is liable for direct infringement of the Pando patent and
for inducing Sears and other trade show attendees to infringe the
Pando patent. (R. 17, Pls.' Mem. at 11 & n. 4.) Whether or not an
accused device infringes on a patent is a question of fact.
Oakley, 316 F.3d at 1339. In reviewing an infringement claim,
the district court compares the patent claim to the accused
device. Id. The accused device only infringes if "every claim
limitation or its equivalent [is] found in the accused device."
Id.; Amazon. com, 239 F.3d at 1351. To support an inducement of
infringement claim, the moving party must establish actual
induction of infringement and that the alleged infringer had
specific intent to encourage another's infringement. Golden
Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054, 1061
(Fed. Cir. 2004); Minnesota Mining & Mfg. Co. v. Chemque, Inc.,
303 F.3d 1294, 1304-05 (Fed. Cir. 2002).
In support of its infringement claim, Techtronic has submitted
the supplemental declaration of Karvelis, who tested a sample of
the Chervon device.*fn7 (R. 37-2, Supp. Karvelis Decl.)
Karvelis notes that the packaging for the accused device shows
that the motorized suction cup base is intended for use on
painted interior walls and that the Operator's Manual recommends use of the suction cup base on "lightly textured
surfaces such as; painted walls. . . ." (Id. ¶ 5.) After
testing the device, Karvelis concluded that the "self-mounting
motorized suction cup base allows for attachment to fixed
surfaces that are uneven and that allow for an influx of air into
the suction space between the suction cup and the surface."
(Id. ¶ 9.) His testing demonstrated that the suction cup
affixed itself to smooth surfaces such as a glass window and a
mirror without need for the motorized device, but the suction cup
would not adhere to a painted drywall surface unless the motor
was engaged. (Id. ¶¶ 10-11.) As a result, Karvelis concluded
that "the motor is included in the Chervon device for the purpose
of attaching it to uneven surfaces[.]" (Id. ¶ 10.)
Karvelis also conducted a comparison of the elements of claim 1
of the Pando patent and the elements of the Chervon device's air
suction base. (Id., Ex. D, Claim Comp.) Karvelis found that
every element of claim 1 is present in the Chervon device. First,
he found that the Chervon device contains a suction cup that is
intended for use on surfaces that are not smooth enough to
prevent leakage of air. (Id.) Second, he found that the Chervon
device includes a battery-operated electric motor coupled to a
suction pump that cooperates with the suction space to remove
air. (Id.) Finally, he found that the Chervon device includes a
non-handle article support that is mechanically connected to the
suction cup and is configured to remain level with respect to an
uneven surface. (Id.)
Chervon makes two arguments in response to Techtronic's
infringement claims: first, it argues that its device cannot
infringe because it does not sell the surface on which the
self-mounting device attaches; and second, it argues that its
device cannot infringe because it is not recommended for use on
uneven surfaces. (R. 21, Defs.' Resp. at 10-11.) We have already construed claim 1 and limited the claim to the self-mounting
device rather than a combination of the self-mounting device and
the surface to which it is affixed. That construction disposes of
Chervon's first non-infringement argument.
With respect to Chervon's second non-infringement argument, we
have construed the term "uneven" as "sufficiently non-smooth to
allow for the influx of air around a suction cup." Chervon argues
that its device does not infringe because its Operator's Manual
recommends its "smooth surface suction cup base" for use on
"mostly smooth or lightly textured surfaces" and recommends a
separate base for use on rough surfaces. (Id. at 10.) Myerson
tested the accused device on the specific surfaces listed in the
Pando patent tiles with grout between them, brick, and cinder
block and found that the suction base was inoperable on those
surfaces. (R. 15, Defs.' Exs., Ex. A, Myerson Decl. ¶ 30.) He
concluded that the Chervon device "does not function with
surfaces of modest unevenness." (Id. ¶ 31.) Myerson does not
explain, however, why a motorized suction cup is recommended
and indeed, necessary for use with lightly textured surfaces
such as painted walls unless that device is needed to remove an
undesired influx of air. He gives no explanation for why lightly
textured surfaces do not qualify as uneven surfaces. Karvelis, on
the other hand, explained that painted drywall is an uneven
surface that allows for the influx of air. (R. 37-2, Supp.
Karvelis Decl. ¶¶ 10-11.) Additionally, as discussed in our claim
construction analysis, the Pando patent does not limit "uneven
surfaces" to those which are spelled out in the patent
specification. Thus, Myerson's conclusion that the Chervon device
does not work on those surfaces is not an infringement defense.
We find, based on all of the evidence presented, that
Techtronic has a reasonable likelihood of prevailing on its
infringement claim. As Karvelis noted, each element of the Pando patent exists in the Chervon device. It is clear from the
testimony of both experts that the Chervon device's suction cup
base is intended for use on surfaces that allow for an influx of
air. As a result, the Chervon device's suction cup base functions
with uneven surfaces as we have construed that term here. Because
we find that Techtronic has a reasonable likelihood of
demonstrating direct infringement at trial, we need not address
its inducement of infringement argument. Instead, we will proceed
to the remaining preliminary injunction factors.
II. Irreparable Harm
Because Techtronic has clearly shown a reasonable likelihood of
success on the merits of its claims, it is entitled to a
rebuttable presumption of irreparable harm. Oakley,
316 F.3d at 1345 (noting that even where merits are close, where they favor
the moving party that party is entitled to the irreparable harm
presumption); see also Amazon. com, 239 F.3d at 1350.
It is well-settled that, because the principal value
of a patent is its statutory right to exclude, the
nature of the patent grant weighs against holding
that monetary damages will always suffice to make the
patentee whole. The patent statute provides
injunctive relief to preserve the legal interests of
the parties against future infringement which may
have market effects never fully compensable in money.
Hybritech, 849 F.2d at 1456-57.
Techtronic has introduced evidence that supports a finding of
irreparable harm. For example, James Winn Techtronic's Senior
Vice President of Sales and Marketing for its power tool division
submitted a declaration stating that its exclusive arrangement
with The Home Depot for the marketing and sales of the AIRgrip
is based on Techtronic's representations that its product is
patent-protected. (R. 17, Pls.' Mem., Ex. 4, Winn Decl. ¶¶ 8-9,
16.) Winn asserts that the introduction of infringing products to
the market could damage its reputation and relationship with The
Home Depot. (Id. ¶ 25.) Winn also testified that Chervon's
introduction of the accused device through Sears could impact Techtronic's
market share for its patented product. (Id. ¶ 22.) Moreover,
Techtronic submitted evidence that Sears is one of its customers
and that without a preliminary injunction Techtronic may be put
in the position to sue Sears to prevent infringement. (Id., Ex.
6, Bettencourt Decl. ¶ 9.) The resulting harm to its business
relationship with Sears would be difficult to compensate through
Chervon challenges irreparable harm on three fronts. First,
Chervon argues that there is no evidence that the AIRgrip is
covered by the Pando patent. (R. 21, Defs.' Resp. at 12.) Richard
Pando, however, submitted a declaration in which he states that
he negotiated an exclusive license for his patent with TTi. (R.
17, Pls.' Mem., Ex. 5, Pando Decl. ¶ 4.) Pando also declared that
after TTi introduced the AIRgrip, Stanley Tools contacted him to
discuss his patent but he informed them that he had an exclusive
relationship with TTi. (Id. ¶ 6.) James Winn also submitted a
declaration stating that during negotiations with The Home Depot
for sales of the AIRgrip, TTi informed The Home Depot of its
exclusive license to the Pando patent, and that this patent
covered the AIRgrip. (Id., Ex. 4, Winn Decl. ¶¶ 8-9.) We find
this evidence sufficient at the preliminary injunction stage to
establish that the Pando patent covers the AIRgrip product.
Second, Chervon argues that Techtronic will not suffer
irreparable harm because there already are a large number of
competing products in the marketplace. (R. 21, Defs.' Resp. at
12.) There is no evidence, however, that any of the competing
products are laser levels that include a motorized suction cup.
The motorized suction feature is what Techtronic argues makes the
AIRgrip unique in the marketplace. Finally, Chervon argues that
it is sufficiently capitalized to pay any monetary judgment that
might result from this litigation. (Id. at 13.) Chervon's ability to pay, however, does not mitigate against the potential
harm to Techtronic's business relationship with Sears or
reputation in the marketplace that could result in the absence of
a preliminary injunction. See, e.g. Abbott Labs. v. Mead Johnson
& Co., 971 F.2d 6, 16 (7th Cir. 1992) (noting that damage to
reputation and loss of good will are intangible harms for which
it is "virtually impossible to ascertain the precise economic
consequences"). For all of these reasons, we find that the
irreparable harm factor weighs in favor of a preliminary
III. The Balance of Harms
Under the third factor of the preliminary injunction test, we
must weigh the harm that will occur to Techtronic if the
preliminary injunction is denied against the harm that Chervon
will incur if the injunction is granted. See Hybritech,
849 F.2d at 1457. We recognize that the requested preliminary
injunction would cause substantial hardship to Chervon, which
represents that it has already manufactured tens of thousands of
the accused device. As a result, Chervon will undoubtedly incur
financial loss from the delay in sales of those products if a
preliminary injunction is granted. It will also incur damage to
its reputation with Sears based on its inability to provide the
promised products in time for the upcoming holiday sales season.
In the absence of preliminary injunctive relief, Techtronic faces
financial loss in the form of reduced sales from the competition
of a potentially infringing product. It also faces the
possibility of having to take action against Sears, which could
ruin its business relationship with that company. Balancing these
harms against each other, we find that this factor weighs only
slightly in favor of Techtronic, which is operating pursuant to a
valid patent. See id., 1457-58 (upholding grant of preliminary
injunction even where district court found that neither party had
a clear advantage under this factor). IV. The Public Interest
In the typical patent case, there is a public interest in
enforcing the protections secured by valid patents. Id. at
1458. For purposes of the preliminary injunction analysis, we ask
"whether there exists some critical public interest that would be
injured by the grant of preliminary relief." Id. Chervon argues
that a preliminary injunction would injure the public interest in
promoting business competition. (R. 21, Defs.' Resp. at 15.)
While the public interest in competition is certainly a strong
one, the protection of valid patents encourages innovation and
thus furthers that interest. Chervon admits that "there are
already a large number of competing products in the marketplace,"
(id. at 12), which dilutes its argument that a preliminary
injunction threatens the public's interest in competition. The
evidence showing Techtronic's likelihood of succeeding on the
merits of its infringement claim also supports its argument that
the public interest in patent protection is on its side. As a
result, we find that the public interest factor weighs in favor
of granting Techtronic's motion.
After careful consideration of the arguments on both sides of
this matter, we find that Techtronic has shown that all four
factors of the preliminary injunction analysis weigh in its favor
and that the extraordinary remedy of preliminary injunctive
relief is warranted. As a result, we grant Techtronic's motion
for a preliminary injunction. (R. 13-1.) We remind the parties
that this is a business dispute best resolved through the
settlement negotiations of competent counsel. As such, the
parties are strongly encouraged to exhaust any settlement
possibilities before the next status hearing in this case, which
will be held on October 12, 2005, at 9:45 a.m. For the reasons set forth herein, this Court preliminarily
enjoins Chervon as well as its officers, agents, servants,
employees, and attorneys from making, using, offering to sell,
or selling within the United States the Accu-line Laser Trac
Level Model 48253.
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