Anton/Bauer, Inc. v. Pag, Ltd., Civil Action No. 3:01 CV 577 (CFD) (D. Conn. 6/12/2002)
| Decision Date | 12 June 2002 |
| Docket Number | Civil Action No. 3:01 CV 577 (CFD). |
| Parties | ANTON/BAUER, INC. Plaintiff, v. PAG, LTD., Defendant. |
| Court | U.S. District Court — District of Connecticut |
The plaintiff, Anton/Bauer, Inc. ("Anton/Bauer"), brings this action pursuant to 35 U.S.C. § 271(b) and (c) alleging infringement of U.S. Patent No. 4,810,204 ("`204 patent"), which discloses a battery pack connection "in which a battery pack can be quickly and efficiently replaced upon discharge of the batteries." U.S. Patent No. 4,810, 204 (issued March 7, 1989). Anton/Bauer claims that the defendant, PAG, Ltd. ("PAG") has induced or contributed to infringement of the `204 patent by offering the PAG L75 battery pack for sale. Anton/Bauer alleges that end-users of PAG's L75 battery pack infringe the `204 patent when they use PAG's battery pack together with Anton/Bauer products designed to employ the connection described in the `204 patent.
Anton/Bauer has moved for a preliminary injunction [Doc. #3]. PAG opposes Anton/Bauer's motion for preliminary injunction, arguing that consumers who use PAG's L75 battery pack with Anton/Bauer products designed to employ the connection described in the `204 patent are performing a permissible repair of a patented combination.
The Court finds the following facts in connection with Anton/Bauer's preliminary injunction:
1. PAG is a United Kingdom corporation based in London, England.
2. Anton/Bauer is a Delaware corporation with its principal place of business in Connecticut.
3. Anton/Bauer manufactures battery packs and connecting components used to power portable, professional broadcast video cameras.
4. The Anton/Bauer battery packs and connecting components relevant to this case incorporate a releasable connection as shown and claimed in the `204 patent, owned by Anton/Bauer and issued on March 7, 1989.
5. The connection claimed in the `204 patent includes (1) a flat "female plate" having a plurality of keyhole slots and at least one elongated electrical terminal; (2) a flat "male plate" including a plurality of shaped headed projections adapted to be received in the keyhole slots to lock the "female" and "male" plates together, including at least one elongated electrical terminal which mates with the electrical terminal on the "female plate" when the plates are locked together; and (3) a "releasable locking means" on the "female plate" for engaging at least one of the headed projections for locking and preventing movement between the plates once they are assembled in mating relation.
6. The "female plate" component is normally affixed to the camera or other electrically operated device, such as a battery charger.
7. The "male plate" is usually a portion of the housing of the battery pack within which an electrical battery or AC/DC power source is contained. The electrical battery or AC/DC source powers the camera through the mating terminal connection.
8. Anton/Bauer manufactures and sells both "female plates" and battery packs whose casing includes "male plates." Anton/Bauer also manufactures and sells battery chargers for recharging its battery packs.
9. Anton/Bauer holds 100 percent of the U.S. market for "female plates" that comprise the "releaseable locking means on said female plate" required by claims 9 and 11 of the `204 patent.
10. Anton/Bauer's "female plates" are sold to members of the portable television video camera industry and are attached to certain commercial television portable video cameras manufactured by Sony, Hitachi, Panasonic, Ikegami, Philips, JVC, and others. Current sales of the "female plates" generally occur in two ways. The first instance occurs when a camera manufacturer purchases an Anton/Bauer product containing a "female plate" directly from Anton/Bauer. The camera manufacturer incorporates the "female plate" into a camera and then sells the camera, with the "female plate" attached, to the public. The second instance occurs when Anton/Bauer sells a "female plate" directly to an end-user as an after-market product.
11. PAG introduced its PAG L75 battery pack in the United States in April 2000.
12. The housing of the PAG L75 battery pack contains a "male plate" which allows the battery pack to be fitted to Anton/Bauer's products containing a "female plate" with a latch as shown in Figures 14-19 of the `204 patent.
13. PAG does not make, use, or sell any "female plate" in the United States with a "releasable locking means on said female plate."
14. PAG's L75 battery pack can also be used with older "female plate" designs such as the design disclosed in Anton/Bauer's now expired patent, U.S. Patent No. 4,218,107 ("`107 patent").
15. The expired `107 patent discloses all aspects of the male-female battery pack connection claimed in the `204 patent except for the components of the "releasable locking mechanism on said female plate" specified in claims 9 and 11 of the `204 patent.
16. There are few, if any, "female plates" in existence which incorporate the design disclosed in the expired `107 patent.
17. PAG advertises that its PAG L75 battery pack can be used with any Anton/Bauer mount, i.e. Anton/Bauer product containing a "female plate."
18. PAG sought the opinion of a patent counsel regarding the PAG L75 battery pack design and began corresponding with Anton/Bauer about the `204 patent in October 2000.
Injunctive relief in patent cases is authorized by 35 U.S.C. § 283.1 Generally, the law of the Federal Circuit, rather than the law of the regional circuits, provides the standards relevant to the issuance of injunctions in patent cases. See Hybritech, Inc. v. Abbott Lab., 849 F.2d 1446, 1451 & n. 12 (Fed. Cir. 1988); Brainard v. Custom Chrome, Inc., 872 F. Supp. 39, 41 (W.D.N.Y. 1994); Flo-Con Systems, Inc. v. Leco Corp., 845 F. Supp. 1576, 1578-79 & n. 2 (S.D.Ga. 1993).
The Federal Circuit requires that four factors be considered by a district court when deciding whether a patent owner is entitled to a preliminary injunction. See Reebok Int'l., Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1555 (Fed. Cir. 1994). Each factor must be considered in context with the other factors and the conduct which is sought to be enjoined. The four factors are: Intel Corp. v. ULSI Sys. Tech, Inc., 995 F.2d 1566, 1568 (Fed. Cir. 1993), cert. denied, 114 S.Ct. 923 (1994); Smith Int'l, Inc. v. Hughes Tool Co., 718 F.2d 1573 (Fed. Cir. 1983), cert. denied, 464 U.S. 996 (1983).
A patent owner can show a reasonable likelihood of success on the merits if it can demonstrate the patent in question is valid, enforceable, and infringed. See Nutrition 21 v. U.S., 930 F.2d 867, 869-70 (Fed. Cir. 1991). A presumption of validity attaches to all patents. See 35 U.S.C. § 282. Further, if the alleged infringer does not challenge the patent's validity with evidence, then the patent owner need do nothing to establish its rights under the patent. See New England Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878, 882-83 (Fed. Cir. 1992).
As PAG has offered no evidence challenging the validity of the `204 patent, in order to establish the validity of the `204 patent, Anton/Bauer must show only that it owns the patent and that the patent has not expired. See New England Braiding Co., 970 F.2d at 882-83. The parties do not appear to dispute that Anton/Bauer owns the `204 patent and that the patent does not expire until March 7, 2009. Thus, the Court assumes both proper ownership and non-expiration of the patent.
It appears that the PAG L75 battery pack can be used in two in two ways: (1) it can be used in combination with "female plate" products based on Anton/Bauer's now-expired `107 patent; and (2) it can be used in combination with Anton/Bauer's products containing "female plates" and locking mechanisms as described in the `204 patent. Anton/Bauer challenges only the second use for the PAG L75 battery pack. Moreover, as the PAG L75 battery pack does not contain a "female plate," Anton/Bauer does not argue that it directly infringes the `204 patent, but contends that end-users of the PAG L75 battery pack and Anton/Bauer products containing "female plates" and locking mechanisms as described in the `204 patent would infringe claims 9 and 11 by forming the combination in Figures 14 to 19 of the patent. Thus, Anton/Bauer argues that the PAG L75 battery pack contributes to or induces infringement of the `204 patent.
35 U.S.C. § 271 provides, in relevant part:
(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.
(b) Whoever actively induces infringement of a patent shall be liable as an infringer.
(c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.
35 U.S.C. § 271. Claims of contributory or induced infringement require a showing of direct infringement by some third party. Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 340-46 (1981); Met-Coil Systems Corp. v. Corners Unlimited, Inc., 803 F.2d 684, 687 (Fed. Cir. 1986). PAG contends that Anton/Bauer has failed to offer evidence of direct infringement of the `204 patent by any party, because (1) end-users of Anton/Bauer products...
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