United States District Court, N.D. Illinois, Eastern Division
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For Scholle Corporation, Plaintiff, Counter Defendant: Allan J. Sternstein, Timothy K. Sendek, LEAD ATTORNEYS, Michael Semyon Golenson, Sara M. Skulman, Lathrop & Gage LLP, Chicago, IL.
For Rapak LLC, Defendant, Counter Claimant: Kathleen Ann Lyons, Keith V. Rockey, Matthew L. DePreter, LEAD ATTORNEYS, Rockey & Lyons, Chicago, IL.
MEMORANDUM OPINION AND ORDER
Virginia M. Kendall, United States District Court Judge.
Plaintiff Scholle Corporation moved for a preliminary injunction against Defendant Rapak LLC based on Rapak's alleged infringement of U.S. Patent No. 8,448,799. The '799 Patent discloses a self-sealing bag in box cap assembly. Scholle claims that its QuickSeal Sentry Lock fitment, which is a valve used to attach flexible bags such as those used in liquid fruit and dairy products to serve smoothie beverages in major restaurant chains, is an embodiment of the '799 Patent. Although Scholle has been in the market for many years, Scholle touts its QuickSeal Sentry Lock as a relatively new innovation. Scholle obtained its patent on May 28, 2013, the day before this suit was filed. On January 9, 2014, this Court conducted a factual hearing to allow the parties to present evidence and arguments in support of their respective positions. For the reasons stated herein, this Court grants Scholle's motion for preliminary injunction and enjoins Rapak from making, using, selling, or offering to sell in the United States the accused product, Rapak's Smoothie Valve, or products that include Rapak's Smoothie Valve as a component.
Federal Rule of Civil Procedure 65 allows courts to issue preliminary injunctions to prevent harm to one or more parties before the parties have fully adjudicated their claims. A preliminary injunction is an extraordinary remedy that requires a clear showing that one is entitled to such a remedy. LifeScan Scotland, Ltd. v. Shasta Technologies., LLC, 734 F.3d 1361, 1366 (Fed. Cir. 2013). Because Scholle seeks to enjoin Rapak's alleged patent infringement, Federal Circuit precedent controls. Revision Military, Inc. v. Balboa Mfg. Co., 700 F.3d 524, 525 (Fed. Cir. 2012). " A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest." Id. (quoting Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 22, 129 S.Ct. 365, 172 L.Ed.2d 249 (2008)). In an action for patent infringement, a plaintiff cannot meet his burden where the accused infringer raises a substantial question as to infringement or invalidity. LifeScan, 734 F.3d at 1366.
A. Scholle is Likely to Succeed on the Merits
1. Claim Construction
" A correct claim construction is almost always a prerequisite for imposition of a preliminary injunction." Chamberlain Group, Inc. v. Lear Corp., 516 F.3d 1331, 1340 (Fed. Cir. 2008). At issue here is claim 1 of the '799 Patent. The claim discloses a cap assembly. In its pleadings and at the preliminary injunction hearing, Rapak identified two terms in claim 1 of the '799 Patent that it believes require construction. These terms are " top surface" and " releasably sandwich." This Court construes those claims for purposes of the pending preliminary injunction motion. See Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1302 (Fed. Cir. 2012) (" the general rule is that tentative claim construction for preliminary injunction purposes does not remove the issue from later review after the facts are elaborated" ).
The parties' dispute whether an inwardly sloping surface on the accused product is part of the " top surface" or the
" inner surface" of the cap assembly. If the former, then Rapak argues that it does not infringe; if the latter, then Scholle argues that Rapak infringes. But " [c]laims are properly construed without the objective of capturing or excluding the accused device." Vita-Mix Corp. v. BasicHolding, Inc., 581 F.3d 1317, 1324 (Fed. Cir. 2009). Therefore, this ...