CG3 Media, LLC v. Belleau Techs.

• Decision Date: 01 March 2023
• Docket Number: 1:21-cv-04607-MKV
• Parties: CG3 MEDIA, LLC, and COREY GRIFFIN, Plaintiffs, v. BELLEAU TECHNOLOGIES, LLC, Defendant.
• Court: U.S. District Court — Southern District of New York

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CG3 MEDIA, LLC, and COREY GRIFFIN, Plaintiffs, v. BELLEAU TECHNOLOGIES, LLC, Defendant.

No. 1:21-cv-04607-MKV

United States District Court, S.D. New York

March 1, 2023

MEMORANDUM OPINION AND ORDER DENYING PRELIMINARY INJUNCTION

MARY KAY VYSKOCIL, United States District Judge.

Plaintiffs CG3 Media, LLC (“CG3”) and Corey Griffin (collectively, “Plaintiffs”) filed this action in May 2021, seeking a declaratory judgment that Speakflow their online teleprompter software application, does not infringe “any valid or enforceable claim” of United States Patent No. 9,953,646 (“the '646 Patent”), owned by Defendant Belleau Technologies, LLC (“Belleau”). Complaint ¶ 1 [ECF No. 1] (“Compl.”). In the alternative, Plaintiffs seek a determination that the '646 Patent is invalid and unenforceable. Compl. ¶ 1.

Defendant timely answered the Complaint and asserted a counterclaim alleging patent infringement. See Belleau Answer and Counterclaim [ECF No. 9] (“Answer” or “Counterclaim”). Nearly seventeen months after this action was filed, Defendant filed a motion for a preliminary injunction. Defendant requests that this Court, among other things, (i) enjoin Plaintiffs from any conduct that infringes the '646 Patent, including “making, selling, distributing, marketing, testing importing, offering to sell, or otherwise using their Speakflow software product,” and (ii) “[r]equiring Plaintiffs to take down speakflow.com and to remove all marketing materials, postings, and social media accounts about Speakflow.” See Motion for Preliminary Injunction [ECF No. 34] (“Motion”); Memorandum of Law in Support 24-25 [ECF No. 38] (“Def Mem.”). For the reasons outlined below, Defendant's motion for a preliminary injunction is DENIED.

BACKGROUND

Defendant/Counterclaim Plaintiff Belleau makes and sells a teleprompter software application, PromptSmart, that automatically scrolls teleprompter text while a user is speaking. Answer ¶ 7 Counterclaim ¶ 25. Belleau owns the '646 Patent, which claims a method by which a teleprompter can automatically scroll text along with a user's voice. Counterclaim ¶¶ 30, 31. Plaintiff CG3 owns Speakflow, another online teleprompter software application. Compl. ¶ 4. Griffin is the founder of CG3. Compl. ¶ 5.

In April 2021, Belleau's manager, Jeremy Sadkin, sent a cease-and-desist letter to Griffin, alleging that the Speakflow application infringed on the '646 Patent. See Declaration of Jeremy Sadkin in Support (“Sadkin Dec.”), Exhibit M [ECF No. 40-13]. Several weeks later, Plaintiffs filed their Complaint, seeking “a declaration of their rights that the '646 Patent is invalid, unenforceable, and not infringed.” Compl. ¶ 19. Belleau answered and asserted a counterclaim for patent infringement, see Counterclaim ¶¶ 55-63, which Plaintiffs answered. See Answer to Counterclaim [ECF No. 11].

Thereafter, the parties engaged in discovery and filed claim construction briefing which remains sub judice. See Opening Claim Construction Brief [ECF No. 26] (“Def. CCB”); Responsive Claim Construction Brief [ECF No. 27] (“Pl. CCB”); Reply Claim Construction Brief [ECF No. 28] (“Reply CCB”).

Nearly seventeen months after this action was filed, and while claim construction was pending, Belleau filed a motion for a preliminary injunction. Belleau did not request expedited briefing or an expedited hearing. Rather, Belleau noticed its motion on the standard schedule outlined in Local Civil Rule 6.1(b), see Motion 2, and the Court entered an Order setting a standard briefing schedule. See November 15 Order [ECF No. 41]. Thereafter, the parties filed, and the Court granted, a Joint Letter Motion seeking an extension of time to complete briefing. Joint Letter Motion [ECF No. 43]; November 16 Order [ECF No. 44]. Pursuant to that schedule, Plaintiffs submitted a Memorandum of Law in Opposition [ECF No. 46] (“Pl. Mem.”), and Belleau filed a Reply Memorandum of Law [ECF No. 51] (“Reply”). The parties filed letter motions to seal along with each brief. See Letter Motions to Seal [ECF Nos. 33, 45, 50].

After briefing was completed, the Court scheduled a hearing on Belleau's motion for injunctive relief. See Scheduling Order [ECF No. 60.] The parties jointly requested an adjournment of the hearing. See Joint Letter Motion to Adjourn [ECF No. 61]. The Court held a hearing on Defendant's motion for a preliminary injunction on February 16, 2023. See Order [ECF No. 62]; Preliminary Injunction Hearing Transcript (“Transcript”).^[1]

This Opinion constitutes the Court's findings of fact and conclusions of law. See Fed.R.Civ.P. 52(a)(2).

LEGAL STANDARD

A preliminary injunction is “an extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief.” Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 22 (2008). Under the Patent Act, this Court “may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.” 35 U.S.C. § 283. District courts have “broad discretion in determining whether the facts of a case warrant an injunction and in determining the scope of the injunctive relief.” Ortho Pharm. Corp. v. Smith, 959 F.2d 936, 945 (Fed. Cir. 1992).^[2] Four factors guide this Court's analysis of Belleau's request for injunctive relief: “(1) the likelihood of the patentee's success on the merits; (2) irreparable harm if the injunction is not granted; (3) the balance of hardships between the parties; and (4) the public interest.” Oakley, Inc. v Sunglass Hut Int'l, 316 F.3d 1331, 1338-39 (Fed. Cir. 2003). Although no single factor is determinative, “a movant cannot be granted a preliminary injunction unless it establishes both of the first two factors, i.e., likelihood of success on the merits and irreparable harm.” Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001) (emphasis in original).

DISCUSSION

I. Likelihood of Success on the Merits

A patentee seeking a preliminary injunction “‘must show that, in light of the presumptions and burdens applicable at trial, it will likely prove' infringement and ‘that the patent will likely withstand' a validity challenge.” GeigTech E. Bay LLC v. Lutron Elecrtonics Co., No. 18 CIV. 5290 (CM), 2018 WL 4360792, at *2 (S.D.N.Y. Sept. 5, 2018) (quoting Tate Access Floors, Inc., v. Interface Architectural Res., Inc., 279 F.3d 1357, 1365 (Fed. Cir. 2002)). Where an alleged infringer “raises a ‘substantial question' concerning validity, enforceability, or infringement, and the patentee does not demonstrate that the defense ‘lacks substantial merit,' [a] preliminary injunction should not issue.” Id. (quoting Genentech, Inc., v. Novo Nordisk A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1997)). Here, the Court concludes that Plaintiffs, the alleged infringers, have raised substantial questions regarding infringement and the patentee, Belleau, has not demonstrated that the defense lacks substantial merit. Id. 1. Infringement

Belleau contends that Speakflow performs the method claimed in the '646 Patent and is therefore infringing. Def. Mem. 9-12. Plaintiffs disagree, explaining that Speakflow does not infringe because it “only has part of the functionality” outlined in the '646 Patent. Transcript 47:6. Specifically, Plaintiffs clarify that Speakflow does not “carry out all the functions,” and instead, requires an internet connection so that “a third-party server . . . [can] carry out [some of the other] functions [specified] in the claim[].” Transcript 47:6-9, 47:24-25.

“[B]efore a claim of patent infringement can be evaluated, a court must determine the scope and meaning of any disputed terms and limiting expression in the claims.” GeigTech, 2018 WL 4360792, at *4 (citing Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). “A district court is not required to make ‘a comprehensive and final claim construction in a preliminary injunction proceeding' but must conduct at least a preliminary or abbreviated claim construction to the extent necessary to determine a movant's likelihood of success on the merits.” Sure Fit Home Prod., LLC v. Maytex Mills, Inc., No. 21 CIV. 2169 (LGS), 2022 WL 3594578, at *2 (S.D.N.Y. Aug. 23, 2022) (quoting Shuffle Master, Inc. v. VendingData Corp., 163 Fed.Appx. 864, 867-68 (Fed. Cir. 2005)).

At the claim construction stage, the district court's duty is to resolve a dispute about claim scope that has been raised by the parties. Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314, 1319 (Fed. Cir. 2016). Claim terms are presumed to be given their ordinary and customary meaning, as understood by a person of ordinary skill in the art as of the patent's priority date, considering the entirety of the patent. Network-1 Techs., Inc. v. Hewlett-Packard Co., 981 F.3d 1015, 1022 (Fed. Cir. 2020).

Claim 1 of the '646 Patent reads as follows, with the disputed terms emphasized in bold:

1. A computer-implemented method for dynamically presenting a prewritten text in a graphical user interface comprising:

a) receiving a text artifact, said text artifact containing a plurality of artifact words;

b) storing, via a processor, said text artifact in a memory device of a computer;

c) retrieving, via said processor, said text artifact;

d) displaying said text artifact on the display screen of said computer;

e) receiving a vocal input;

f) generating, via said processor, a text file representing the words spoken in said vocal input, said text file containing a plurality of hypothesis words;

g) comparing, via said processor, a predetermined number of said hypothesis words to a predetermined number of said artifact words;

h) determining a match location in said text artifact where a specific number of

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