Black and Decker, Inc. v. Hoover Service Center, Civ. No. H-87-851(WWE).

CourtUnited States District Courts. 2nd Circuit. United States District Court (Connecticut)
Writing for the CourtEGINTON
Citation765 F. Supp. 1129
PartiesBLACK AND DECKER, INC. and Black and Decker (U.S.), Inc. and CIC Int'l Corp. v. HOOVER SERVICE CENTER and The Hoover Company.
Docket NumberCiv. No. H-87-851(WWE).
Decision Date03 April 1991

765 F. Supp. 1129

BLACK AND DECKER, INC. and Black and Decker (U.S.), Inc. and CIC Int'l Corp.
v.
HOOVER SERVICE CENTER and The Hoover Company.

Civ. No. H-87-851(WWE).

United States District Court, D. Connecticut.

April 3, 1991.


765 F. Supp. 1130
COPYRIGHT MATERIAL OMITTED
765 F. Supp. 1131
COPYRIGHT MATERIAL OMITTED
765 F. Supp. 1132
Deborah J. Blood, Day, Berry & Howard, Hartford, Conn., Don Harness, Gordon Harris (pro hac vice), Herness, Dickey & Pierce, Troy, Mich., Barry Deutsch, Sr. Group Patent Counsel, Black and Decker U.S. Inc., Shelton, Conn., John D. DelPonti, General Patent Counsel, Black and Decker Corp., Towson, Md., for plaintiffs

Ben A. Solnit, Robert K. Ciulla, Ronald J. Cohen, Tyler, Cooper & Alcorn, New Haven, Conn., Ray L. Weber (pro hac vice), Renner, Kenner, Greive, Bobak Taylor, Akron, Ohio, Ralph J. Savarese, Charles J. Engel, Margaret M. Zwisler, Howrey & Simon, Washington, D.C., Ronald K. Bennington, Black, McCuskey, Souers and Arbaugh, Canton, Ohio, for defendants.

RULING ON PLAINTIFFS' MOTION FOR A PRELIMINARY INJUNCTION

EGINTON, District Judge.

BACKGROUND

Plaintiffs, Black and Decker, Inc., Black and Decker (U.S.), Inc. and CIC Int'l Corp. (collectively "Black and Decker"), commenced this action against defendants, the Hoover Service Center and The Hoover Company (collectively "Hoover"), alleging that the sales of Hoover's DUBL-DUTY hand-held vacuum product constituted infringement of U.S. Patent No. 4,309,875 ("875 patent"), infringement and dilution of trademark rights arising from the appearance of the bowl portion of Black and Decker's DUSTBUSTER hand-held vacuum product, and unfair competition.

On November 2, 1987, Black and Decker moved to enjoin sales of the DUBL-DUTY on the basis of all the allegations of the

765 F. Supp. 1133
complaint with the exception of the patent infringement claims. Prior to a preliminary injunction hearing, Black and Decker amended the complaint, adding an allegation of infringement of U.S. Patent No. 4,542,557 ("557 patent") for the rights to which Black and Decker had become an exclusive licensee, and adding as plaintiff its licensor, CIC Int'l Corp. Based on the amended complaint, Black and Decker moved to enjoin infringement of the 557 patent

In April and July, 1988, this Court conducted a seven day evidentiary hearing on the issues raised by Black and Decker's motion for a preliminary injunction. The motion was then denied by a ruling dated January 27, 1989. On September 28, 1989, the United States Court of Appeals for the Federal Circuit vacated this Court's opinion and remanded for further consideration in light of its appellate opinion. Black and Decker, Inc. v. Hoover Serv. Center, 886 F.2d 1285 (Fed.Cir.1989). The Federal Circuit held that this Court's determination that the trade dress of the DUSTBUSTER bowl was functional was based on erroneous reliance on the 875 patent and that, in any event, the Court's holding on this point was clearly erroneous. In addition, the Federal Circuit found that this Court's holding that Black and Decker had not shown a likelihood of success on its claim of infringement of the 557 patent under the doctrine of equivalents was also clearly erroneous.

On October 9, 1989, plaintiffs filed a renewed motion for a preliminary injunction, seeking to prevent defendants from infringing United States Reissue Patent No. Re. 33,074 ("074 reissue patent" or "the Levine patent") which is a reissue of the 557 patent. At the same time, plaintiffs withdrew their request for preliminary relief on the trade dress issue. In accordance with the instructions of the Federal Circuit, this Court conducted eleven additional days of evidentiary hearing on plaintiffs' renewed motion for a preliminary injunction. The Court heard evidence regarding the issue of validity of the 074 reissue patent, irreparable harm, balance of hardships, public interest, as well as defendants' affirmative defenses and counterclaims for antitrust violations. The parties have submitted post-hearing briefs which this Court has carefully reviewed. For the reasons set forth below, plaintiffs' motion for a preliminary injunction will be denied.

DISCUSSION

Initially the Court notes that it is bound by the finding of the Federal Circuit that Black and Decker has shown a likelihood of success on the merits of its claim of infringement under the doctrine of equivalents. Black and Decker, Inc. v. Hoover Service Center, 886 F.2d at 1296. Despite the fact that the patent has been reissued since the filing of the Federal Circuit opinion, the reissue claims presently asserted for purposes of Black and Decker's motion for a preliminary injunction are unchanged from the original patent and thus the finding of the Federal Circuit on the issue of infringement remains binding on this Court.

As a preliminary matter, Black and Decker urges this Court to disregard all evidence regarding Hoover's claims of trademark misuse or bad faith trademark prosecution. However, "the use of a patent as part of an overall scheme to violate the antitrust laws" constitutes patent misuse barring enforcement of the patent. Atari Games Corp. v. Nintendo of America, Inc., 897 F.2d 1572, 1577-78 (Fed.Cir. 1990). Thus, the Court finds that evidence regarding trademark misuse and bad faith trademark prosecution is relevant and properly considered insofar as it is offered to show an overall scheme to violate the antitrust laws. The Court will not, however, consider this evidence as a separate ground for a denial of Black and Decker's motion for a preliminary injunction since a finding that trademark misuse or bad faith trademark prosecution has occurred, standing alone, would not render the patent at issue unenforceable.

Black and Decker also seeks to preclude consideration of Hoover's Clayton Act claims on the ground that such claims were first asserted after the conclusion of

765 F. Supp. 1134
the preliminary injunction hearings. The Court agrees that Hoover should have asserted these claims earlier. However, the Court finds that Black and Decker will not be prejudiced by consideration of these claims, especially given the substantial overlap of evidence between the Clayton Act claims and the Section 2 Sherman Act claims

In addition to the issues of the validity and enforceability of the 074 reissue patent, this ruling will address the issues of irreparable harm, balance of hardships and the public interest surrounding the grant or denial of injunctive relief.

I. Validity of the 074 Reissue Patent

In response to Black and Decker's claims of infringement, Hoover has asserted that the 074 reissue patent is invalid and unenforceable for several reasons. First, Hoover argues that claim 1 of the reissue patent is anticipated by the Meyerhoefer Patent 3,267,511 and is thus invalid pursuant to 35 U.S.C. § 102. Alternatively Hoover argues that, even if not anticipated, claim 1 is obvious in light of Meyerhoefer and thus invalid pursuant to 35 U.S.C. § 103. Second, Hoover claims that the ambiguities and inconsistencies contained in claim 1 of the 074 reissue render the patent invalid pursuant to 35 U.S.C. § 112. Finally, Hoover argues that the 074 reissue patent is rendered unenforceable by the inequitable conduct of Black and Decker in prosecuting the reissue application before the Patent and Trademark Office.

At trial, the burden of proof of patent invalidity rests on the party asserting the defense. Hoover's claim of anticipation under 35 U.S.C. § 102(b) will ultimately require Hoover to come forth with clear and convincing evidence overcoming the presumption of patent validity, 35 U.S.C. § 282, and demonstrating that all of the claim limitations are met by a prior art reference. Trans-World Mfg. Corp. v. Al Nyman & Sons, Inc., 750 F.2d 1552 (Fed. Cir.1984). However, while the ultimate burden of proof on the affirmative defenses of invalidity and unenforceability will fall on Hoover at trial, at this preliminary injunction stage Black and Decker must show a "reasonable likelihood" that Hoover's attacks on the patent in issue will fail. H.H. Robertson, Co. v. United Steel Deck, Inc., 820 F.2d 384, 387 (Fed.Cir.1987); see also Drexelbrook Controls, Inc. v. Magnetrol Int'l, Inc., 720 F.Supp. 397, 400 (D.Del. 1989), aff'd, 904 F.2d 45 (Fed.Cir.1990). Considering Black and Decker's burden on its motion for a preliminary injunction in the context of the presumptions and burdens to be met by Hoover at a trial on the merits, the Court will consider each of Hoover's defenses in turn.

A. Invalidity Under 35 U.S.C. § 102

An invention protected by a patent is measured by the patent claims. Environmental Designs, Ltd. v. Union Oil Co. of California, 713 F.2d 693 (Fed.Cir.1983), cert. denied, 464 U.S. 1043, 104 S.Ct. 709, 79 L.Ed.2d 173 (1984). These claims must identify that which the patentee regards as his invention. 35 U.S.C. § 102. An invention may not be patented if the claimed subject matter of the invention was "patented or described in a printed publication ... or in public use or on sale ... more than one year prior to the date of the application for patent ..." 35 U.S.C. § 102(b). Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed.Cir. 1986), cert. denied, 480 U.S. 947, 107 S.Ct. 1606, 94 L.Ed.2d 792 (1987).

In response to Hoover's assertion of the Meyerhoefer patent as an anticipating reference, Black and Decker argues that Meyerhoefer does not anticipate claim 1 of the reissue patent because, unlike claim 1, Meyerhoefer does not disclose a hand held portable vacuum cleaner, the Meyerhoefer device employs a float valve to shut off the device when it is full, and the Meyerhoefer device is not operative in a variety of orientations. Based on the evidence, however, the Court concludes that, like the Meyerhoefer device, claim 1 of the reissue patent is directed toward a vacuum cleaner generally and is not limited to a hand held portable vacuum cleaner, is not...

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4 practice notes
  • Eyeticket Corp. v. Unisys Corp., No. Civ.A. 200CV940.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Eastern District of Virginia)
    • February 23, 2001
    ...might be invalid, but alleged a specific basis for the assertion of invalidity. See, e.g., Black and Decker, Inc. v. Hoover Serv. Ctr., 765 F.Supp. 1129, 1134, 20 U.S.P.Q.2d 1612, 1614 (D.Conn.1991) ("Hoover has asserted that the 074 reissue patent is invalid and unenforceable for several r......
  • Mediacom Communications v. Sinclair Broadcast, No. 4:06-cv-491.
    • United States
    • United States District Courts. 8th Circuit. United States State District Court of Southern District of Iowa
    • October 24, 2006
    ...courts analyze "antitrust injury" under the likelihood of success on the merits factor, see Black & Decker, Inc. v. Hoover Serv. Ctr., 765 F.Supp. 1129, 1141 (D.Conn.1991); Pennzoil Co. v. Texaco, Inc., No. 84-C-29-E, 1984 WL 164045 (N.D.Okla. Feb.8, 1984). Still other courts have addressed......
  • Adc Telecommunications, Inc. v. Siecor Corp., Civil Action No. 95-813 MMS.
    • United States
    • United States District Courts. 3th Circuit. United States District Court (Delaware)
    • February 7, 1997
    ...902, 911 (Fed.Cir.1988) ("It is improper to read limitations of one claim into another."); Black & Decker, Inc. v. Hoover Serv. Ctr., 765 F.Supp. 1129, 1135 (D.Conn. 1991) ("A court may not introduce into a claim by interpretation limitations that are explicitly contained in other claims.")......
  • Fireman's Fund Ins. v. Valley Manufactured Prod. Co., Civ. A. No. 85-2606-H
    • United States
    • United States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of Massachusetts
    • June 7, 1991
    ...the insurers of either the 1973 tank leak, their actual knowledge of the contamination of the Town's wells in 1979, or the 1981 lawsuit 765 F. Supp. 1129 by the Town deprived the insurers of the opportunity to consider this request at the time the Town made it and/or to reconsider it before......
4 cases
  • Eyeticket Corp. v. Unisys Corp., No. Civ.A. 200CV940.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Eastern District of Virginia)
    • February 23, 2001
    ...might be invalid, but alleged a specific basis for the assertion of invalidity. See, e.g., Black and Decker, Inc. v. Hoover Serv. Ctr., 765 F.Supp. 1129, 1134, 20 U.S.P.Q.2d 1612, 1614 (D.Conn.1991) ("Hoover has asserted that the 074 reissue patent is invalid and unenforceable for several r......
  • Mediacom Communications v. Sinclair Broadcast, No. 4:06-cv-491.
    • United States
    • United States District Courts. 8th Circuit. United States State District Court of Southern District of Iowa
    • October 24, 2006
    ...courts analyze "antitrust injury" under the likelihood of success on the merits factor, see Black & Decker, Inc. v. Hoover Serv. Ctr., 765 F.Supp. 1129, 1141 (D.Conn.1991); Pennzoil Co. v. Texaco, Inc., No. 84-C-29-E, 1984 WL 164045 (N.D.Okla. Feb.8, 1984). Still other courts have addressed......
  • Adc Telecommunications, Inc. v. Siecor Corp., Civil Action No. 95-813 MMS.
    • United States
    • United States District Courts. 3th Circuit. United States District Court (Delaware)
    • February 7, 1997
    ...902, 911 (Fed.Cir.1988) ("It is improper to read limitations of one claim into another."); Black & Decker, Inc. v. Hoover Serv. Ctr., 765 F.Supp. 1129, 1135 (D.Conn. 1991) ("A court may not introduce into a claim by interpretation limitations that are explicitly contained in other claims.")......
  • Fireman's Fund Ins. v. Valley Manufactured Prod. Co., Civ. A. No. 85-2606-H
    • United States
    • United States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of Massachusetts
    • June 7, 1991
    ...the insurers of either the 1973 tank leak, their actual knowledge of the contamination of the Town's wells in 1979, or the 1981 lawsuit 765 F. Supp. 1129 by the Town deprived the insurers of the opportunity to consider this request at the time the Town made it and/or to reconsider it before......

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