The opinion of the court was delivered by: James F. Holderman, Chief Judge
MEMORANDUM OPINION AND ORDER DENYING MOTION FOR PRELIMINARY INJUNCTION
Plaintiffs McDavid Knee Guard and Stirling Moulding Limited (collectively "McDavid") filed this lawsuit against defendant Nike USA, Inc. ("Nike"), alleging that Nike has been and currently is importing foam padded shorts manufactured in Taiwan by a process that infringes U.S. Patent No. 6,743,325 ("'325 patent"), which was issued on June 1, 2004, for a method of manufacturing "flexible material... suitable for providing protective war [sic] for human and animal bodies." ('325 patent, Abstract.)
This court issued its claim construction opinion as to the '325 patent's disputed claim terms on September 17, 2009 . After the court's September 17, 2009 opinion, a briefing schedule was set  regarding McDavid's Motion for Preliminary Injunction . On October 16, 2009, McDavid filed a Supplemental Brief articulating a new theory of patent infringement . On November 16, 2009, before the briefing was completed, McDavid sought leave to file a Second Amended Complaint . McDavid's motion for leave to file a Second Amended Complaint has been denied in a separate opinion issued by this court today.
For the reasons explained below, McDavid's Motion for Preliminary Injunction is also denied. The court finds that McDavid has failed to demonstrate a likelihood of success on the merits and irreparable harm, which are necessary requirements for the entry of a preliminary injunction against defendant Nike.
In its Motion for Preliminary Injunction, McDavid sought to enjoin Nike's sale and importation of Nike's "ProCombat" product line, the padding of which is manufactured in Taiwan by a process that McDavid claims infringes McDavid's '325 patent. The '325 patent, which is titled "Flexible Material," was issued to David Stirling Taylor (inventor) and assigned to his company, Stirling Moulding Limited, on June 1, 2004. Stirling Moulding Limited granted an exclusive license to McDavid Knee Guard, Inc. on June 30, 2005 to make, use, and sell products created by using the '325 patent's manufacturing method within the sporting goods field. The Abstract for the '325 patent describes the invention as:
A flexible material [that] includes a plurality of separate resilient elements joined to a flexible, resiliently stretchable substrate. Such a material is suitable for providing protective war [sic] for human and animal bodies. Preferably, the elements includes [sic] a foam material such as a closed cell polyethylene foam and the substrate includes a knitted fabric. In an advantageous embodiment, a second flexible substrate is bonded over the elements to sandwich them between the two layers of substrate. ('325 patent, Abstract.) The Field of the Invention section of the '325 patent describes the invention as relating "to a method of manufacturing a flexible material suitable, primarily, for use as a flexible protective material to protect for human and animal bodies." (Id. at col. 1:16-19.)
The flexible material created by the manufacturing method described in the '325 patent allows the material to more easily conform to the body of the wearer because it is flexible in all three dimensions. (Id. at col. 2:37-39.) Due to this increased flexibility, the material is more comfortable to wear and can accommodate movement better than previous conventional materials. (Id. at col. 2:39-42.) When the application for the '325 patent was filed in July 2000, the type of conventional protective material and wear that was on the market was molded to fit a particular part of a wearer's body and was produced in various shapes and sizes to fit different people. (Id. at col. 1:33-36.) In addition, these previous conventional items would often restrict a person's movement if worn on or near the person's joints. (Id. at col. 1:37-38.) Thus, the objective of the '325 patent was to overcome the drawbacks of then-existing materials by describing the method for producing material which offers increased flexibility and movement, and lends itself to a variety of uses. (Id. at col. 1:23-67; 2:1-16.)
Claim 1 of the '325 patent, which is the primary independent claim, states:
1. A method of manufacturing a flexible material comprising the steps of providing a sheet of a resilient material; cutting the sheet into a plurality of spaced separate elements using a cutter which is pressed into the sheet to cut therethrough; making one side of the plurality of spaced separate elements to stand proud of a surface of a jig provided to hold the elements in place; and bonding a flexible resiliently stretchable substrate to one side of the separate elements by heating the substrate either to activate an adhesive applied between said one side of the separate elements and the substrate or to weld the separate elements to the substrate. (Id. at col. 6:34-48.)
Claim 8 of the '325 patent, which is dependent on Claim 1, states:
8. The method as claimed in claim 1, wherein at least said one side of the sheet is coated with a hot-melt adhesive prior to being cut into the plurality of spaced separate elements.
McDavid sells a product line of padded protective sportswear known as "Hexpad" in competition with Nike's "ProCombat" line. McDavid alleges that non-party Finn Technologies' ("Finn Tech") manufacturing process in Taiwan that produces the padding for Nike's "ProCombat" line of padded sportswear infringes dependent Claim 8 of the '325 patent. Another non-party company in Asia sews that padding into Nike's "ProCombat" garments before Nike imports them into the United States. McDavid is seeking to preliminarily enjoin Nike's importation and sale of the allegedly infringing products under 35 U.S.C. § 271(g).*fn1 According to Nike, Finn Tech used a first method ("Method 1") of manufacturing until December 25, 2008 and since that time has used a second method ("Method 2") of manufacturing to make the foam padding for Nike's "ProCombat" products.
Based on the April 15, 2009 video recording of Finn Tech's Method 2 (Dkt. 112, Apr. 15, 2009 Video Recording Inspection Finn Tech Facility & Method, attached as Ex. 21 to Pls.' Reply Mot. Prelim. Inj. (filed under seal)), which is Finn Tech's current manufacturing method, and based on the submissions by the parties' counsel, which the court will not describe in detail so as not to reveal any interested entity's confidential information, the court finds, as explained further in the "Analysis" section of this opinion below, that Finn Tech's Method 2 of manufacturing process does not employ a "jig provided to hold the elements in place" ('325 patent, col. 6:43-44), as that claim term has been construed by the court.
The exact process of Finn Tech's Method 1 is unclear from the record because the details of Method 1 were not provided by either side. As discussed above, Finn Tech, ...