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.
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 ...