Won-Door Corp. v. Cornell Iron Works, Inc.
Won-Door Corp. v. Cornell Iron Works, Inc.
Opinion of the Court
MEMORANDUM DECISION AND ORDER GRANTING PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION
This matter is before the Court on Plaintiff Won Door Corporation’s (“Won Door”) Motion for a Preliminary Injunction. For the reasons set forth below, the Court will grant Plaintiffs Motion.
I. BACKGROUND
Plaintiff manufactures movable partitions designed to extend and retract across rooms, and related components used to install such partitions. Defendant Cornell
Since 2008, Plaintiff and Defendant have directly competed in a two-player market manufacturing and installing accordion-style partitions in church buildings for the Church of Jesus Christ of Latter-Day Saints (“LDS Church”). On July 28, 2009, Plaintiff filed U.S. Patent Application 12/510,382, which was subsequently published on February 3, 2011, as US2011/0024061 (“the '061 Publication”). Plaintiffs application described a header assembly that suspends the partition and comprises a single channel in which the partition slides to extend or retract. On February 9, 2012, one of Plaintiffs employees obtained a sample of a one-track assembly being used by Defendant in installations and notified Plaintiffs Installation Manager.
In May 2012, Plaintiff contacted Defendant asserting that Defendant’s one-track assembly appeared to fall within the scope of the '061 Publication and that Plaintiff had a right to pursue a legal remedy once the patent issued. On November 27, 2012, Plaintiffs application issued as U.S. Patent 8,316,914 (“the '914 Patent”). On May 1, 2013, another of Plaintiffs employees observed a partition installed by Defendant that used the one-track assembly. On May 10, 2013, Plaintiff filed suit against Defendant alleging patent infringement. On June 4, 2013, Plaintiff moved for a preliminary injunction to enjoin Defendant from “making, using, selling, or offering to sell movable partitions, header assemblies, and overhead tracks” that infringe the '914 Patent.
II. DISCUSSION
“It is well established that a preliminary injunction is an extraordinary remedy reserved only for those cases where it is clearly warranted.”
A. LIKELIHOOD OF SUCCESS
For patent infringement claims, the first factor of the preliminary injunction test involves two prongs:
a patentee must show that, in light of the presumptions and burdens that will inhere at trial on the merits: (1) the patentee will likely prove that the accused infringer infringes the asserted patent; and (2) the patentee’s infringement claim will likely withstand the accused infringer’s challenges to the validity and enforceability of the patent.4
“A patent holder seeking a preliminary injunction bears the ultimate burden of establishing a likelihood of success on the
1. INFRINGEMENT
Plaintiff provided the Court with an element-by-element analysis of Defendant’s track, demonstrating how Defendant’s track meets each limitation of claim 1 and claim 7 of the '914 Patent. Defendant has not challenged Plaintiffs infringement analysis. Therefore, for purposes of this Motion, the Court finds that Plaintiff is likely to prove that Defendant’s overhead track infringes claim 1 and claim 7 of the '914 Patent.
2. VALIDITY
Patents enjoy a statutory presumption of validity.
■Defendant argues that each element of claims 1 and 7 of the '914 Patent were taught by prior art, and that the '914 Patent is therefore invalid for obviousness. Plaintiff argues that Defendant has failed to explain why a person of ordinary skill in the art would have been motivated to combine the elements in the cited prior art to create the '914 Patent. Plaintiff also argues that objective indicators of nonobviousness disprove Defendant’s assertion that the '914 Patent is invalid for obviousness.
a. OBVIOUSNESS
35 U.S.C. § 103 provides that
[a] patent for a claimed invention may not be obtained ... if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.
“[A] patent composed of several elements is not proved obvious by demonstrating that each of its elements was, independently, known in the art.”
Plaintiff also argues that objective indicators of nonobviousness demonstrate that Defendant’s invalidity argument lacks substantial merit. “Objective evidence of nonobviousness is an important component of the obviousness inquiry because ‘evidence of secondary considerations may often be the most probative and cogent evidence in the record. It may often establish that an invention appearing to have been obvious in light of the prior art was not.’ ”
First, the unitized track described in the '914 Patent has had commercial success. “Since 2010, [the unitized track] has generated over $50 million in product sales and project specifications for projects incorporating the unitized track and header assembly of the '914 Patent.”
[t]he two separate track support brackets of the invention can be manufactured at a cheaper cost than a single track support bracket because a single track support bracket that is strong enough to support the weight of the track and movable partition requires significantly more raw material and a larger extrusion or stamping die to manufacture than two separate track support brackets.21
Second, Defendant copied Plaintiffs innovation. “Not every competing product that arguably falls within the scope of a patent is evidence of copying. Otherwise every infringement suit would automatically confirm the nonobviousness of the patent.”
Third, Plaintiffs track design met a long felt need in the industry. “The length of the intervening time between the publication dates of the prior art and the claimed invention” is an objective indicator of an innovation having met a long felt need in the industry.
Based on the foregoing, the Court finds that Plaintiff will likely prove infringement, and will likely withstand Defendant’s challenges to the validity and enforceability of the '914 Patent.
B. IRREPARABLE HARM
The Federal Circuit has recognized that “the existence of a two-player market may well serve as a substantial ground for granting an injunction — e.g., because it creates an inference that an infringing sale amounts to a lost sale for the patentee....”
As discussed above, both parties agree that the only buyer in the relevant market — the LDS Church — requires use of the overhead track design encompassed by the '914 Patent in its bid specifications. Therefore, to participate in the market, Defendant must use Plaintiffs design. This requires Plaintiff to compete against its own invention and strips Plaintiff of its right to exclusivity of its innovation.
Defendant argues that Plaintiff delayed in bringing its Motion and that such delay is evidence of a lack of urgency and a lack of irreparable harm. “Delay is a factor in evaluating irreparable harm.”
Plaintiff first became aware that Defendant was developing or installing its own unitized track in February 2012, when Plaintiff obtained a sample of Defendant’s one-piece track assembly. In May 2012, Plaintiff’s attorney sent a notice letter to Defendant, advising that Defendant’s product appeared to fall within the scope of the '061 Publication. The '914 Patent issued six months later, on November 27, 2012. Plaintiff first received confirmation that Defendant was still installing the unitized track on May 1, 2013, when Plaintiff obtained photos of a partition system that was recently installed in San Tan Valley, Arizona. Plaintiff filed its Complaint shortly thereafter, on May 10, 2013, and filed its Motion for Preliminary Injunction on June 4, 2013. As such, one month passed between Plaintiff discovering what it believed to be an infringing installation and its request for injunctive relief. The Court finds that this is not the type of delay that militates against a finding of irreparable harm.
Based on the foregoing, the Court finds that Plaintiff will suffer irreparable harm if an injunction is not granted.
C. BALANCE OF EQUITIES
Defendant argues that Plaintiff should be held to a heightened standard because granting the preliminary injunc
“[T]he status quo is ‘the last uncontested status between the parties which preceded the controversy until the outcome of the final hearing.’ ”
The Court finds that the last uncontested status between the parties precedes Defendant’s unauthorized use of the unitized track encompassed by Plaintiffs '914 Patent. The evidence before the Court is that Plaintiff contested Defendant’s use of the unitized track as soon as Plaintiff became aware of it, even if Plaintiff did not file a complaint at that time. Therefore, a preliminary injunction would not alter the status quo between the parties. Further, the Court finds that the harm Plaintiff will suffer if the injunction is not issued outweighs any harm Defendant may suffer.
D. PUBLIC INTEREST
“A preliminary injunction that enforces a valid patent against an infringer does no more than further public policy inherent in the patent laws designed to encourage useful inventions by rewarding the inventor with a limited period of market exclusivity.”
III. CONCLUSION
It is therefore
ORDERED that Plaintiffs Motion for Preliminary Injunction (Docket No. 7) is GRANTED as follows:
Defendant, its officers, agents, servants, employees, attorneys, parents, subsidiaries and other related companies, and all persons acting in concert with Defendant are immediately enjoined:
1. From making, using, selling or offering for sale, any product incorporating the invention claimed in the '914 Patent, or any colorable imitation thereof, pending entry of final judgment in this action; and
2. From further acts of infringement of the '914 Patent.
. Docket No. 7, at 1.
. Apple, Inc. v. Samsung Elecs. Co., Ltd., 678 F.3d 1314, 1334 (Fed.Cir. 2012).
. Winter v. Natural Res. Def. Council, 555 U.S. 7, 20, 129 S.Ct. 365, 172 L.Ed.2d 249 (2008).
. Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1259 (Fed.Cir. 2012).
. Altana Pharma AG v. Teva Pharm. USA, Inc., 566 F.3d 999, 1005 (Fed.Cir. 2009).
. 35 U.S.C. § 282 (2006).
. Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1377 (Fed.Cir. 2009).
. Abbott Labs. v. Andrx Pharm., Inc., 473 F.3d 1196, 1201 (Fed.Cir. 2007).
. Altana Pharma, 566 F.3d at 1006.
. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007).
. In re Kahn, 441 F.3d 977, 985 (Fed.Cir. 2006).
. K-Tec, Inc. v. Vita-Mix Corp., 729 F.Supp.2d 1312, 1325 (D.Utah 2010) (citing Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed.Cir. 2008)).
. Innogenetics, 512 F.3d at 1373.
. Docket No. 41, at 15.
. Mintz v. Dietz & Watson, 679 F.3d 1372, 1377 (Fed.Cir. 2012).
. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed.Cir. 2012) (internal quotation marks omitted).
. See, e.g., Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1358-59 (Fed.Cir. 2013); Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1367 (Fed.Cir. 2012).
. In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed.Cir. 2011).
. Docket No. 46, at 3.
. Id. at 2.
. Docket No. 44, at 2.
. Id. at 2.
. Docket No. 46, at 2-3.
. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed.Cir. 2004).
. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed.Cir. 2010).
. Docket No. 9 Ex. A, at 2.
. Id. Ex. B, at 5.
. Leo Pharm. Prods., 726 F.3d at 1358-59 (holding that a period of fourteen years "speaks volumes” as to the nonobviousness of the patent).
. Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 1151 (Fed.Cir. 2011) (emphasis omitted).
. BcoNova Inc. v. DPS Utah, No. 1:12-cv174-TC, 2012 WL 5944257, at *15 (D.Utah Nov. 28, 2012) (citing Robert Bosch, 659 F.3d at 1149).
. Douglas Dynamics, LLC v. Buyers Prods. Co., 717 F.3d 1336, 1345 (Fed.Cir. 2013).
. Id.
. Cordis Corp. v. Bos. Scientific Corp., 99 Fed.Appx. 928, 934 (Fed.Cir. 2004).
. Advanced Commc’n Design, Inc. v. Premier Retail Networks, Inc., 46 Fed.Appx. 964, 984 (Fed.Cir. 2002).
. Hybritech, Inc. v. Abbott Labs., 849 F.2d 1446, 1457 (Fed.Cir. 1988).
. See, e.g., Advanced Commc’n Design, 46 Fed.Appx. at 984 (finding delay of three or four months insufficient on its own to undermine showing of irreparable harm).
. Gen. Motors Corp. v. Urban Gorilla, LLC, 500 F.3d 1222, 1226 (10th Cir. 2007) (internal quotation marks omitted).
. Revision Military, Inc. v. Balboa Mfg. Co., 700 F.3d 524, 526 (Fed.Cir. 2012).
. Schrier v. Univ. of Colo., 427 F.3d 1253, 1260 (10th Cir. 2005).
. Dominion Video Satellite, Inc. v. EchoStar Satellite Corp., 269 F.3d 1149, 1155 (10th Cir. 2001).
. Pfizer, Inc. v. Teva Pharm. USA, Inc., 429 F.3d 1364, 1382 (Fed.Cir. 2005) (internal quotation marks omitted).
. Sanofi-Synthelabo v. Apotex, Inc., 470 F.3d 1368, 1383 (Fed.Cir. 2006).
Reference
- Full Case Name
- WON-DOOR CORPORATION, a Utah Corporation v. CORNELL IRON WORKS, INC., a Pennsylvania Corporation
- Cited By
- 1 case
- Status
- Published