Canon Computer Systems, Inc. v. Nu-Kote Intern., Inc.

• Decision Date: 08 January 1998
• Docket Number: Nos. 97-1248,97-1290,NU-KOTE,s. 97-1248
• Citation: 45 USPQ2d 1355,134 F.3d 1085
• Parties: CANON COMPUTER SYSTEMS, INC., Canon U.S.A., Inc., and Canon, Inc., Plaintiffs-Appellees, v.INTERNATIONAL, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1085

134 F.3d 1085

45 U.S.P.Q.2d 1355

CANON COMPUTER SYSTEMS, INC., Canon U.S.A., Inc., and Canon Inc., Plaintiffs-Appellees, v. NU-KOTE INTERNATIONAL, INC., Defendant-Appellant.

Nos. 97-1248, 97-1290.

United States Court of Appeals Federal Circuit.

Jan. 8, 1998.

Nicholas M. Cannella, Fitzpatrick, Cella, Harper & Scinto, of New York City, argued for plaintiffs-appellees. With him on the brief were Joseph M. Fitzpatrick, Joseph M. O'Malley, Jr., and Bruce M. Wexler. Of counsel were John A. O'Brien, and Pasquale A. Razzano. Also on the brief was Donald L. Morrow, Paul, Hastings, Janofsky & Walker, L.L.P., of Costa Mesa, California.

Ronald S. Katz, Coudert Brothers, of San Francisco, California, argued for defendant-appellant. With him on the brief were David Schnapf and J. Bruce McCubbrey. Of counsel was Victoria E. Brieant.

Before LOURIE, RADER, and SCHALL, Circuit Judges.

LOURIE, Circuit Judge.

Nu-Kote, International, Inc. appeals from the decision of the United States District Court for the Central District of California granting Canon Computer Systems, Inc., Canon U.S.A., Inc. and Canon, Inc.'s (collectively "Canon's") motion for a preliminary injunction. Canon Computer Sys., Inc. v. Nu-Kote Int'l, Inc., Docket No. CV 95-288 (Feb. 28, 1997) (entering denial of Nu-Kote's motion to dissolve the preliminary injunction and entering findings of fact and conclusions of law in support of the January 6, 1997 order granting preliminary injunction). Nu-Kote argues that the district court abused its discretion in granting the preliminary injunction, largely by making clearly erroneous factual findings on the issues of infringement and validity. Because the district court did not base its issuance of the preliminary injunction on clearly erroneous fact findings or on erroneous legal conclusions, nor did it otherwise abuse its discretion, we affirm.

BACKGROUND

Canon accused Nu-Kote of infringing its patent, U.S. 5,509,140, which relates to a replaceable ink cartridge for "bubble jet" printers. Claim 1 was the only claim asserted for purposes of the preliminary injunction motion. Claim 1 reads, in pertinent part and with emphasis added:

A replaceable ink cartridge ... comprising:

a container formed by a front wall, back wall, top wall and bottom wall, each of which is elongated, and two side walls providing major surfaces of said container;

a partition attached to said side walls and extending from said top wall toward said bottom wall to divide said container into a first chamber and a second chamber communicating with each other through an opening formed by said partition proximate to said bottom wall;

said first chamber being defined by said partition and said back wall, top wall, bottom wall and said two side walls of said container and being generally sealed from ambient air except through said opening;

...

at least one groove in said partition extending from said opening to a position spaced from said top wall for forming an air flow passage from said second chamber to said first chamber....

Figure 19 from the patent, shown below, illustrates one of the embodiments of the invention. As ink (3) flows out of the cartridge during printing, air enters the second chamber (4), which contains a sponge-like material, through the air vent (13). When the ink level reaches the top of the groove (C), air flows down the groove and into the first chamber (6), allowing ink (9) to flow through the opening (8) into the sponge-like material.

An Embodiment of the Invention The Accused Device

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

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Nu-Kote makes and sells replaceable ink cartridges that are compatible with Canon's printers. For purposes of illustration, a depiction of the Nu-Kote cartridge, taken from one of Canon's exhibits, is reproduced above. Although the specific dimensions of the various Nu-Kote cartridges differ, all the cartridges in dispute admittedly have a grooved partition that separates a chamber containing a sponge from another chamber that does not contain a sponge. Because the cartridges vary only in ways immaterial to this appeal, they will be collectively referred to as "the cartridge."

Nu-Kote challenges both the validity of the patent and the charge of infringement. Nu-Kote asserts that the patent is invalid because certain named inventors on the patent were incorrectly joined. The infringement dispute primarily concerns whether the claimed partition reads on the partition in the Nu-Kote cartridge. Specifically, Nu-Kote argues that the groove in its partition does not act as an "air flow passage" and that its partition does not define the claimed "first chamber," which must also be defined by the back wall of the cartridge, but instead divides the chamber containing the sponge from an unclaimed middle chamber. Nu-Kote asserts that a second "partition," called a "stiffening rib" by Canon, which descends a portion of the way down the walls of the cartridge, divides its ink chamber into two distinct chambers.

The district court granted Canon's motion for a preliminary injunction after determining that Canon had established a likelihood of success on the merits of the infringement action and after applying the four-part test articulated by this court. See Nutrition 21 v. United States, 930 F.2d 867, 869, 18 USPQ2d 1347, 1348-49 (Fed.Cir.1991); Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1451, 7 USPQ2d 1191, 1195 (Fed.Cir.1988).

Following the initial order granting the preliminary injunction, Nu-Kote moved to dissolve the injunction on the ground that new evidence rendered an ultimate finding of infringement unlikely. It submitted a videotape, which the district court considered and which purported to show that the groove in a Nu-Kote cartridge did not act as an "air flow passage." Thus, Nu-Kote argued, its cartridge lacked the claimed grooved partition, which must form an air flow passage. Canon responded with its own videotape, demonstrating that the groove in a Nu-Kote cartridge that was acquired from a retail establishment did act as an "air flow passage," at least under certain conditions. The district court reviewed the videotapes and denied Nu-Kote's motion for the reasons stated by Canon in its opposition. Canon's opposition indicated that the evidence could have been submitted prior to the court's ruling on the injunction and was thus untimely, and further reasoned that the video was unpersuasive and contradicted by Canon's video. Nu-Kote appeals from the grant of the preliminary injunction and from the denial of its motion to dissolve the injunction. We have jurisdiction under 28 U.S.C. § 1292(a)(1), (c)(1) (1994).

DISCUSSION

In order for Nu-Kote to prevail on appeal, it must demonstrate that the district Nu-Kote argues that the grant of the preliminary injunction was based on the erroneous finding that Canon made a strong showing on the issue of validity. Notwithstanding the presumption of validity, see 35 U.S.C. § 282 (1994), Nu-Kote asserts that the presence of sixteen named inventors casts sufficient doubt on the validity of the patent, such that the burden of going forward shifted to Canon. In Nu-Kote's own words, "it is absurd to believe that it took sixteen people to invent a simple plastic container of ink." Nu-Kote thus contends that the burden is on Canon to substantiate the inventive contribution of each of the named inventors. We disagree. It is true that Canon carries the burden of establishing a likelihood of success on the validity issue and thus must show that Nu-Kote will not likely prove that the patent is invalid. See Nutrition 21, 930 F.2d at 869-70, 18 USPQ2d at 1349-50. However, a patent is presumed valid, and this presumption exists at every stage of the litigation. See PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1566, 37 USPQ2d 1618, 1624 (Fed.Cir.1996); see also H.H. Robertson, Co. v. United Steel Deck, Inc., 820 F.2d 384, 387-88, 2 USPQ2d 1926, 1927-28 (Fed.Cir.1987), overruled on other grounds by Markman v. Westview Instruments, Inc., 52 F.3d 967, 34 U.S.P.Q.2d 1321 (Fed.Cir.1995) (in banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577, 38 USPQ2d 1461 (1996). Ultimately, at trial on the merits, Canon need only submit sufficient evidence to rebut any proof of invalidity offered by Nu-Kote. Thus, where the challenger fails to identify any persuasive evidence of invalidity, the very existence of the patent satisfies the patentee's burden on the validity issue. See H.H. Robertson, Co., 820 F.2d at 388, 2 USPQ2d at 1928 (stating that a preliminary injunction is determined "in the context of the presumptions and burdens that inhere at trial on the merits").

court abused its discretion in granting Canon's motion for the preliminary injunction. See Smith Int'l, Inc. v. Hughes Tool Co., 718 F.2d 1573, 1579, 219 USPQ 686, 691 (Fed.Cir.1983). An abuse of discretion may be established by showing that the district court made a clear error of judgment, or based its decision on an erroneous legal conclusion or clearly erroneous factual findings. See Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 772, 28 USPQ2d 1378, 1380 (Fed.Cir.1993).

Nu-Kote argues that the sheer number of named inventors is evidence of the patent's invalidity. We disagree. Improper inventorship is not presumed simply because a large number of individuals are listed on the patent...