Chrysler Motors Corp. v. Auto Body Panels of Ohio, Inc.

• Decision Date: 11 July 1990
• Docket Number: No. 89-1656,89-1656
• Citation: 908 F.2d 951,15 USPQ2d 1469
• Parties: , 15 U.S.P.Q.2d 1469 CHRYSLER MOTORS CORP., Plaintiff-Appellant, v. AUTO BODY PANELS OF OHIO, INC., and Haur Tay Enterprise Co., Ltd., Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 951

908 F.2d 951

59 USLW 2087, 15 U.S.P.Q.2d 1469

CHRYSLER MOTORS CORP., Plaintiff-Appellant, v. AUTO BODY PANELS OF OHIO, INC., and Haur Tay Enterprise Co Ltd., Defendants-Appellees.

No. 89-1656.

United States Court of Appeals Federal Circuit.

July 11, 1990.

Don K. Harness, Harness, Dickey & Pierce, of Troy, Mich., argued for plaintiff-appellant. With him on the brief were W.R. Duke Taylor, Richard P. Vitek and John A. Artz. Also on the brief was Gary L. Newton, Chrysler Motors Corp., of Highland Park, Mich.

Peter T. Grossi, Jr., Arnold & Porter, of Washington, D.C., argued for defendants-appellees. With him on the brief were Perry J. Saidman, Saidman, Sterne, Kessler & Goldstein, of Washington, D.C., was on the brief for amicus curiae, Motor Vehicle Mfrs. Ass'n of The U.S., Inc. Also on the brief was William H. Crabtree, of Detroit, Mich., of counsel.

James F. Fitzpatrick and Wayne C. Holcombe. Also on the brief was William S. Wyler, Schwartz, Manes & Ruby, of Cincinnati, Ohio. Roger M. Milgrim, Milgrim Thomajan & Lee, P.C., of New York City, argued for defendants-appellees. With him on the brief was William M. Hart. Also on the brief was William E. Santen, Santen & Hughes, of Cincinnati, Ohio, of counsel.

Lawrence H. Mirel, of Washington, D.C., was on the brief for amicus curiae, Government Employees Ins. Co., The Center For Auto Safety, et al.

Before MICHEL, Circuit Judge, SKELTON, Senior Circuit Judge, and PLAGER, Circuit Judge.

PLAGER, Circuit Judge.

Chrysler Motors Corp. (Chrysler), plaintiff-appellant, sued to halt the manufacture and sale by Auto Body Panels of Ohio, Inc. and Haur Tay Enterprise Co., Ltd. (defendants), of certain fenders which serve as replacement parts for Chrysler's Dodge Dakota trucks. The district court for the Southern District of Ohio, Western Division, denied Chrysler's motion for a preliminary injunction. Chrysler Motors Corp. v. Auto Body Panels of Ohio, 719 F.Supp. 622, 12 USPQ2d 1493 (S.D.Ohio, 1989). Chrysler appeals to this court; amicus curiae briefs were filed on behalf of both parties. ¹ We affirm.

I. BACKGROUND

Chrysler is assignee of U.S. Design Patent No. 299,019 ('019), issued December 20, 1988, for the ornamental design of a fender used on Chrysler's Dodge Dakota trucks. The defendants collectively manufacture and sell truck fenders in the automotive parts aftermarket. This aftermarket includes auto body shops that replace fenders damaged by accident or corrosion. At least some of defendants' fenders are distributed in the United States. Defendants concede that if the '019 patent is valid, then their efforts to make a fender that appears identical to the fender in the '019 patent would automatically lead to the conclusion that it is an infringement.

The issue confronting the district court was whether to grant the special relief of a preliminary injunction on the basis of the record before it. Injunctive relief is a remedy available in a proper case to prevent the violation of any right secured by a patent. 35 U.S.C. Sec. 283 (1988). This includes preliminary injunctions. Smith Int'l, Inc. v. Hughes Tool Co., 718 F.2d 1573, 1577-79, 219 USPQ 686, 689-91 (Fed.Cir.) cert. denied, 464 U.S. 996, 104 S.Ct. 493, 78 L.Ed.2d 687 (1983). Since a preliminary injunction, if granted, issues before a full hearing on the merits, the generally recognized rule is that the party seeking the injunction must establish a right thereto in light of four factors: 1) a reasonable likelihood of success on the merits; 2) irreparable harm; 3) the balance of hardships tipping in favor of the requesting party; and 4) that the issuance of an injunction is in the public interest. T.J. Smith & Nephew Ltd. v. Consolidated Medical Equip., Inc., 821 F.2d 646, 647, 3 USPQ2d 1316, 1317 (Fed.Cir.1987).

That courts generally agree on these four factors has not led to uniform agreement on how the factors are applied in a given case. We treat the application of the factors--that is, the determination of whether a preliminary injunction should be granted or denied--as a procedural issue. When this court considers questions on appeal involving substantive matters not exclusively assigned to the Federal Circuit, our general practice is to apply to related procedural issues the appropriate regional circuit law. Atari Games Corp. v. Nintendo Our rule regarding whether a preliminary injunction should be granted or denied is that the trial court should weigh and measure each of the four factors against the other factors and against the magnitude of the relief requested. Hybritech, 849 F.2d at 1451, 7 USPQ2d at 1195. Under this rule, no one factor, taken individually, is necessarily dispositive. If a preliminary injunction is granted by the trial court, the weakness of the showing regarding one factor may be overborne by the strength of others. If the injunction is denied, the absence of an adequate showing with regard to any one factor may be sufficient, given the weight or lack of it assigned the other factors, to justify the denial. And as a basic proposition, the matter lies largely in the sound discretion of the trial judge. Smith Int'l, Inc. v. Hughes Tool Co., 718 F.2d at 1578, 219 USPQ at 690. We review the trial judge's determination to ascertain if there was an abuse of discretion, an error of law, or a serious misjudgment of the evidence. T.J. Smith & Nephew Ltd. v. Consolidated Medical Equip., Inc., 821 F.2d at 647, 3 USPQ2d at 1317.

of America, Inc., 897 F.2d 1572, 1575, 14 USPQ2d 1034, 1036 (Fed.Cir.1990); Panduit Corp. v. All States Plastic Mfg. Co., 744 F.2d 1564, 1574-75, 223 USPQ 465, 471 (Fed.Cir.1984). However, when the question on appeal is one involving substantive matters unique to the Federal Circuit, as in this case, we apply to related procedural issues the law of this circuit. Hybritech Inc. v. Abbott Laboratories, 849 F.2d 1446, 1451 n. 12, 7 USPQ2d 1191, 1195 n. 12 (Fed.Cir.1988).

II. DISCUSSION

While the issues underlying this case are perhaps broad and far reaching, or so amici would have us believe, the issue before this court is the narrow question of whether the district court abused its discretion in holding that Chrysler is not entitled to a preliminary injunction. The district judge found that the '019 patent was more functional than ornamental and that Chrysler had not met the reasonable likelihood of success prong of the preliminary injunction test. The court also found that Chrysler could not meet the irreparable harm prong of the test, despite Chrysler's allegations of irreparable harm due to the inferior quality of defendants' fenders.

1) Likelihood of Success

Design patent protection may be obtained for a design that is new, original, ornamental and nonobvious. 35 U.S.C. Secs. 103, 171 (1988); Avia Group Int'l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1562, 7 USPQ2d 1548, 1552 (Fed.Cir.1988). The design cannot be dictated by functional requirements. Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 238, 231 USPQ 774, 777 (Fed.Cir.1986). Chrysler contends the fender design of the '019 patent is new, original, ornamental and nonobvious, and stands on the presumption of validity established by 35 U.S.C. Sec. 282 (1988), and defendants' concession that its fender is a copy of the '019 design.

Under Sec. 282, a patent is presumed valid. This presumption of validity places the burden of persuasion as well as the burden of going forward on the party asserting invalidity. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534, 218 USPQ 871, 875 (Fed.Cir.1983). Defendants urged that the design at issue was not novel, original or ornamental and was therefore not eligible for patent protection. At this preliminary injunction stage, they also presented an affidavit from an expert witness that the design embodied in the '019 patent would have been obvious to one skilled in the art. The district court was persuaded by the expert witness and found

the '019 patent [to be] an obvious combination of previous well-known design features, including the outward protruding lip over the wheel arch; the scoop-out for the headlight bezel; the curved rear edge which comes to a point at the top ...; the inward line which runs the length of the '019 fender; the backward sloped edge at the top of the '019 fender; and the horizontal creases which are located...