Pittway v. Black & Decker

• Decision Date: 23 July 1987
• Docket Number: No. 87 C 2188.,87 C 2188.
• Citation: 667 F. Supp. 585
• Parties: PITTWAY, Plaintiff, v. BLACK & DECKER, Defendant.
• Court: U.S. District Court — Northern District of Illinois

667 F. Supp. 585

PITTWAY, Plaintiff, v. BLACK & DECKER, Defendant.

No. 87 C 2188.

United States District Court, N.D. Illinois, E.D.

July 23, 1987.

James M. Amend, P.C., Stanley A. Schlitter, David L. Witcoff, Kirkland & Ellis, Chicago, Ill., for plaintiff.

John A. Artz, Harness, Dickey & Pierce, Birmingham, Mich., William A. VanSanten, Wood, Dalton, Phillips, Mason & Rowe, Chicago, Ill., for defendant.

MEMORANDUM OPINION AND ORDER

PARSONS, Senior District Judge:

Plaintiff, Pittway Corporation, seeks a preliminary injunction restraining defendant Black & Decker (U.S.), Inc. from "manufacturing, selling or advertising or offering for sale" their new "Flashliter" rechargeable flashlights, and otherwise infringing U.S. Patent Letter No. 4,647,832. Plaintiff also states that defendant be enjoined from liquidating the remainder of its inventory of their allegedly infringing rechargeable flashlights.

Plaintiff designs, manufactures and distributes consumer and industrial products, including rechargeable flashlights in which the electrical force powering the flashlight can be recharged and reused, rather than replaced altogether (as in the case, for example, of disposable batteries). Pittway is the present owner of all right, title and interest in United States Patent No. 4,647,832 that was issued on March 3, 1987, covering a "Three Position Switch" for this portable rechargeable flashlight. The defendant also manufactures, distributes and sells consumer products, including rechargeable flashlights.

On March 3, 1987, Pittway filed a complaint charging Black & Decker with infringement of its patent. Then, on March 10, 1987, Pittway filed its motion for preliminary injunction.

Background

Pittway first became involved with flashlights around 1981. It became interested in rechargeable flashlights at that time because few rechargeable flashlights were available, and they all were relatively expensive and had many problems. An example of these expensive, relatively crude rechargeable flashlights was one where the user had to physically remove the rechargeable unit from the flashlight, plug that unit into an electrical outlet for recharging, and then once it is recharged, insert that unit back into the flashlight. Other examples of the expensive, unrefined rechargeable flashlights available in 1981-82 include: (1) flashlights where the user could recharge them only by placing them into large, connecting racks or brackets which previously had been plugged into electrical outlets; (2) flashlights where the user had to unscrew one end of the flashlight to expose an electrical cord which then could be plugged into an outlet for recharging; and (3) flashlights which featured electrical prongs permanently sticking out of the flashlight body to be plugged directly into an electrical outlet. All of these early rechargeable flashlights were relatively expensive, cumbersome, inconvenient, sometimes space-consuming (the conductive racks or brackets) and sometimes unsafe and subject to damage (permanently extended electrical prongs).

Anticipating a great market potential, Pittway developed its First Alert Rechargeable Flashlight (RL 30 Model) which overcame the disadvantages and problems of the prior rechargeable flashlights. The evidence shows that this new rechargeable flashlight is unique because it can be plugged directly into an electrical outlet for recharging, so that the user will not be required to unscrew or unhinge anything, or use any type of external device to recharge it. Pittway also recognized that the function selected by the user (i.e., "ON", "OFF", "RECHARGE") should be directly related to whether the electrical recharge prongs are needed. Its engineers went on to develop a unique three-position electrical control switch, which when it is moved to the "ON" or "OFF" position, the recharge prongs remained recessed in the flashlight handle and covered by the switch; and when the switch is moved to the "RECHARGE" position, the prongs are automatically rotated out of the handle until they are perpendicular to the flashlight body so that the flashlight can then simply be plugged into an electrical outlet for recharging. In addition, the switch and flashlight circuitry are designed so that recharging will occur without damaging the flashlight or energizing the flashlight bulb. Finally, after the flashlight is recharged and unplugged from the socket, sliding the switch back to the "ON" or "OFF" position will cause the prongs to retract fully into the flashlight handle and be covered by the switch once again.

To protect their investment in developing this product, and to help achieve its objective of becoming a market leader in rechargeable electrical devices, Pittway applied for a patent covering its unique three-position switch. The original application was filed on July 26, 1984. Thereafter, a continuation-in-part application covering the invention was filed on June 24, 1985. This application issued as U.S. Patent No. 4,647,832 on March 3, 1987.

Pittway's First Alert Rechargeable Flashlights were an immediate commercial success in the marketplace. Through the end of the first quarter of 1987, Pittway sold over 3,000,000 First Alert Rechargeable Flashlights for a gross revenue exceeding $30,000,000.

Black & Decker had been manufacturing rechargeable flashlights prior to the introduction of Pittway's First Alert Rechargeable Flashlight, but none of them could be directly plugged into an electrical outlet for recharging or had a switch which rotated the recharge prongs into and out of the flashlight body. In February of 1986, Black & Decker decided that it needed a product that would compete with Pittway's new innovation in the rechargeable flashlight market. Black & Decker employed Yamada Electric, an electrical appliance manufacturer in Japan, to start a "rapid development program" to manufacture rechargeable flashlights patterned after Pittway's First Alert Rechargeable Flashlight and sent samples of Pittway's model along to guide Yamada in the making of a Black & Decker product. The flashlight manufactured by Yamada for Black & Decker turned out to be almost identical to Pittway's new product except for the size and shape of the outer body and bulb. After this case was filed, Black & Decker admitted that they had patterned their product after Pittway's First Alert Rechargeable Flashlight, including the patented three-position switch, and that their product infringed upon Pittway's '832 patent.

After approving the final design of its new product, Black & Decker ordered 400,000 of their infringing "FlashLiter" on June 13, 1986, and when the hearing on the notice for preliminary injunction in this case got under way, Black & Decker had already sold half of their order. They still have approximately 200,000 in their inventory. It was because of this that Pittway filed with its complaint a motion for a preliminary injunction, and sought an early hearing. Pittway seeks to prevent Black & Decker from selling their remaining inventory.

DISCUSSION

The law is clear, a plaintiff is entitled to a preliminary injunction in a patent infringement suit when it demonstrates: (1) that there is a reasonable likelihood of success on the merits (reasonable likelihood that the patent is both valid and infringed); (2) that irreparable injury will result if the injunction is not granted; (3) that the threatened injury to the plaintiff if an injunction is not granted outweighs the threatened harm to the defendant if the injunction is granted; and (4) that the granting of the injunction will not disserve the public interest. Roper Corp. v. Litton Systems, Inc., 757 F.2d 1266, 1269-70 (Fed. Cir.1985); Smith International Inc. v. Hughes Tool Co., 718 F.2d 1573, 1581 (Fed. Cir.), cert. denied, 464 U.S. 996, 104 S.Ct. 493, 78 L.Ed.2d 687 (1983).

In deciding whether or not to grant a preliminary injunction, let us consider first whether there is a reasonable likelihood that Pittway can succeed on the merits. In other words, is there a reasonable likelihood that the patent is both infringed and valid? Roper, 757 F.2d at 1269-70.

Black & Decker has admitted that its product infringes Pittway's '832 patent. Infringement thus having been established, the remaining big question is validity. Because the validity of each of the patent's claims must be separately and independently considered, Glaros v. H.H. Robertson Co., 797 F.2d 1564, 1569-72 (Fed.Cir.1986), Pittway need only show a reasonable likelihood that one claim is valid in order for an injunction to be granted.

Pittway's '832 patent must be presumed valid because it was duly issued by the United States Patent and Trademark Office. 35 U.S.C. § 282. The effect of this presumption is to shift the burden of proof to the admitted infringer, for "the burden of establishing invalidity remains on the party attacking validity," Roper, at 1270; and "the evidence adduced in connection with a motion for preliminary relief must be considered in this light." H.H. Robertson Co. v. United Steel Deck, Inc., et al., 820 F.2d 384, 387 (Fed.Cir.1987). "This burden is immutable and does not change because a preliminary rather than permanent injunction is being sought." Id. at 5-6, 820 F.2d at 388. (Emphasis added). This statutory presumption of validity goes further. Here it places on Black & Decker the burden of proving invalidity by clear and convincing evidence. Jones v. Hardy, 727 F.2d 1524, 1528 (Fed.Cir.1984). "Notwithstanding the fact that the introduction of prior art that may not have been before the examiner may facilitate the challenger's meeting the burden of proof on invalidity, the burden of overcoming the presumption of validity by clear and convincing evidence remains intact and never shifts from the patent challenger throughout the hearing." Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1375 (Fed. Cir.1986).

For a patent to be valid, it must be novel under 35...