Drexelbrook Controls v. Magnetrol Intern.
Decision Date | 30 August 1989 |
Docket Number | Civ. A. No. 89-132-CMW. |
Citation | 720 F. Supp. 397 |
Parties | DREXELBROOK CONTROLS, INC., Plaintiff, v. MAGNETROL INTERNATIONAL, INC., Defendant. |
Court | U.S. District Court — District of Delaware |
William O. LaMotte, III, and Donald F. Parsons, Jr., of Morris, Nichols, Arsht & Tunnell, Wilmington, Del. Norman L. Norris, and Jeffrey M. Navon, of Woodcock, Washburn, Kurtz, Mackiewicz & Norris, Philadelphia, Pa., of counsel, for plaintiff.
Vernon R. Proctor, and Michael Bonkowski, of Phillips, Lytle, Hitchcock, Blaine & Huber, Wilmington, Del. Lloyd W. Mason, Richard S. Phillips, and F. William McLaughlin, of Wood, Dalton, Phillips, Mason & Rowe, Chicago, Ill., for defendant.
This is a patent infringement suit in which plaintiff, Drexelbrook Controls, Inc. ("Drexelbrook"), seeks a preliminary injunction against defendant, Magnetrol International, Inc. ("Magnetrol"). Drexelbrook charges Magnetrol with infringement of Drexelbrook's United States Patent No. 4,146,834 (the "'834 patent"), which is directed to a two-wire, electronic transmitter system used in measuring the condition of materials. Specifically, Drexelbrook requests the Court to "enjoin Magnetrol from making, using or selling KOTRON two-wire transmitters and equivalent two-wire admittance monitoring transmitters."
Drexelbrook filed suit on March 21, 1989. It moved for a preliminary injunction on May 5, 1989, and briefing on the motion was completed June 28, 1989. The Court heard oral argument on July 7, 1989.
The Court has jurisdiction pursuant to 28 U.S.C. § 1338(a). For the reasons stated herein, plaintiff's motion is denied.
Drexelbrook, a Pennsylvania corporation, was founded in 1966 by its president, Frederick L. Maltby. Drexelbrook filed a patent application on September 19, 1974, directed to a two-wire transmitter comprising an admittance monitoring circuit. An admittance monitoring system measures a dynamic electrical characteristic (the admittance) of a material and uses that characteristic to indicate the condition of a material.1 Such a system can be used to measure the level of a liquid, such as oil, or a granular solid, such as grain, by electrically sensing the admittance between a probe electrode immersed in the material and a grounded vessel containing the material.2 Prior to the issuance of Drexelbrook's application as U.S. Patent No. 3,993,947 (the "'947 patent"), a continuation-in-part application was filed on November 22, 1976, which ultimately issued on March 27, 1979, as the '834 patent. The '834 patent is entitled "Admittance Measuring System for Monitoring the Condition of Materials."
The '834 patent includes thirty-five claims directed to various features of a two-wire transmitter system comprising the admittance monitoring circuit. As recited in claim 1 of the '834 patent, the two-wire transmitter system comprises an admittance sensing probe including a probe electrode that is adapted to sense the condition and corresponding admittance of materials. '834 Patent at column 26, lines 64-66. An admittance responsive network coupled to the probe represents the condition of the materials, and output means coupled to the admittance responsive network varies the signaling current in response to the condition of the materials. Id. at column 26, lines 67-68; column 27, lines 1-3.
Drexelbrook employs the subject matter of the '834 patent in its Universal Level Transmitter product line. This product line includes various two-wire transmitter models for admittance monitoring of conducting liquids, conducting slurries, interface levels and granular materials. The advantages of the system covered by the '834 patent include high reliability and low power requirements, which make it suitable for use in explosive or hazardous environments.
Drexelbrook has a number of competitors in the admittance monitoring product field. These include, but are not limited to, Princo Instruments, Inc. ("Princo") and defendant, Magnetrol. Magnetrol manufactures and sells the KOTRON Two-Wire Level Transmitter. This device includes a probe and transmitter circuitry, but does not include a load (power output), power supply or transmission line wires.3
The patent laws authorize this Court to grant a preliminary injunction in a patent case, and make the issuance of an injunction discretionary. 35 U.S.C. § 283; T.J. Smith & Nephew Ltd. v. Consol. Medical Equipment, Inc., 821 F.2d 646, 646 (Fed. Cir.1987). "The district court's discretion is not absolute, however, and must be measured against the standards governing the issuance of injunctions." Smith Int'l., Inc. v. Hughes Tool Co., 718 F.2d 1573, 1579 (Fed.Cir.), cert. denied, 464 U.S. 996, 104 S.Ct. 493, 78 L.Ed.2d 687 (1983).
To obtain a preliminary injunction in a patent infringement action pursuant to 35 U.S.C. § 283, a party must establish a right thereto in light of four factors: (1) reasonable likelihood of success on the merits; (2) irreparable harm; (3) the balance of hardships tipping in its favor; and (4) the impact of the injunction on the public interest. P.W. Woo & Sons, Inc. v. Antelope Enterprise Co. Ltd., 871 F.2d 1096, 10 U.S.P. Q.2d 1876, 1877 (Fed.Cir.1989); Hybritech Inc. v. Abbott Laboratories, 849 F.2d 1446, 1451 (Fed.Cir.1988); Consolidated Medical, 821 F.2d at 647. None of these factors, taken individually, are dispositive; rather, the court "must weigh and measure each factor against the other factors and against the form and magnitude of the relief requested." Hybritech, 849 F.2d at 1451.
If a patent holder makes a "clear showing" of both validity and infringement, the Court may presume irreparable harm. Roper Corp. v. Litton Systems, Inc., 757 F.2d 1266, 1271 (Fed.Cir.1985); Smith Int'l., 718 F.2d at 1581. If the patentee does not make such a "clear showing", but can establish only a reasonable likelihood of success on the merits, then he also must make a separate showing of irreparable injury. Roper, 757 F.2d at 1272 n. 5; Upjohn Co. v. Riahom Corp., 641 F.Supp. 1209, 1217 (D.Del.1986).
Thus, for Drexelbrook to succeed on its motion it must show a reasonable likelihood of success on the merits. To do so, Drexelbrook must show that there is a reasonable likelihood that at trial Magnetrol will not prevail on the invalidity and non-infringement defenses that it has advanced. More specifically, Drexelbrook has to show by a preponderance of the evidence both that Magnetrol will fail to meet its burden of proving, by clear and convincing evidence, that the '834 patent claims are invalid because of obviousness, and that Magnetrol infringes the '834 patent. See E.I. du Pont de Nemours & Co. v. Polaroid Graphics Imaging, Inc., 706 F.Supp. 1135, 1140 (D.Del.1989).
A patent is presumed valid, and each claim of a patent is presumed valid independent of the validity of the other claims. 35 U.S.C. § 282. This presumption is procedural, not substantive. Consolidated Medical, 821 F.2d at 648. The burden is on the party claiming invalidity to prove by clear and convincing evidence that the patent is invalid. 35 U.S.C. § 282; Polaroid, 706 F.Supp. at 1141. However, on a motion for preliminary injunction, the burden is on plaintiff to show a reasonable likelihood that the attack on its patent's validity would fail. H.H. Robertson, Co. v. United Steel Deck, Inc., 820 F.2d 384, 387 (Fed.Cir.1987); John Fluke Mfg. Co. v. North American Soar Corp., 5 U.S.P.Q.2d 1657, 1659, 1987 WL 46372 (D.N.J.1987).
A patent holder seeking a preliminary injunction can make a sufficient showing of patent validity in three ways: (1) a prior adjudication of the validity of the patent; (2) public acquiescence to its validity; or (3) direct technical evidence proving its validity. Smith Int'l., 718 F.2d at 1578; Upjohn, 641 F.Supp. at 1218. Because the validity of each of the patent's claims must be separately and independently considered, a plaintiff need only show a reasonable likelihood that one claim is valid in order for an injunction to be granted. Pittway v. Black & Decker, 667 F.Supp. 585, 588 (N.D.Ill.1987) (citing Glaros v. H.H. Robertson Co., 797 F.2d 1564, 1569-72 (Fed.Cir.1986)).
Drexelbrook admits that there has been no adjudication of the validity of the '834 patent. However, there has been prior litigation regarding the patent. In 1988, Drexelbrook filed suit against Princo charging that Princo was infringing claims of both the '834 and '947 patents by making, using and selling a two-wire transmitter system comprising an admittance monitoring circuit. Drexelbrook filed a motion for a preliminary injunction. Before the court had an opportunity to consider Drexelbrook's motion, Princo entered into a consent judgment with Drexelbrook. In the consent judgment, Princo acquiesced to the validity of the '834 patent by conceding that all claims of the patent were valid and that the claims of the patent were infringed by Princo. The consent judgment further enjoined Princo from infringing any claims of the '834 patent.
Drexelbrook asserts that the consent judgment "evidences public acquiescence in the validity of the '834 patent." Plaintiff's Brief at 13 ("P.Br."). Magnetrol calls this "pure speculation." Defendant's Brief at 10 ("D.Br."). While evidence of acquiescence by the industry to the patent owner's rights has long been accepted by the courts as providing partial or even total support for the probable validity of the patent, the necessary degree of acquiescence is dependent upon the particular circumstances. See 5 D. Chisum, Patents § 20.041, at XX-XXX-XX ("Chisum"). As a general matter, the public acquiescence needed to sustain validity must be long-standing. Upjohn, 641 F.Supp. at 1218. Also, acquiescence ceases to be probative of probable validity if the evidence suggests that such acquiescence was caused by factors other than belief by the industry in the validity of...
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