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TECHTRONIC INDUSTRIES CO. LTD. v. CHERVON HOLDINGS LTD.

October 6, 2005.

TECHTRONIC INDUSTRIES CO., LTD. and RICHARD PANDO, Plaintiffs,
v.
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. 13-1.)

RELEVANT FACTS

  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 further infringement.

  LEGAL STANDARDS

  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).

  ANALYSIS

  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. Id.

  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 83.)

  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 with grout.
(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 ...


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