Furminator, Inc. v. Ontel Products Corp.
| Decision Date | 19 April 2006 |
| Docket Number | No. 4:06-CV-23 CAS.,4:06-CV-23 CAS. |
| Citation | 429 F.Supp.2d 1153 |
| Parties | FURMINATOR, INC., Plaintiff, v. ONTEL PRODUCTS CORP., et al., Defendants. |
| Court | U.S. District Court — Eastern District of Missouri |
Alan H. Norman, David B. Jinkins, Matthew A. Braunel, Steven E. Garlock, Thompson Coburn, St. Louis, MO, for Plaintiff.
Jeffrey L. Eichen, Michelle Meira Marcus, Roger A. Colaizzi, Venable LLP, Washington, DC, Molly B. Edwards, Rudolph A. Telscher, Jr., Douglas R. Wilner, Matthew L. Cutler, Harness and Dickey, Thomas P. Berra, Jr., Keith J. Grady, Michael J. Hickey, Lewis and Rice, St. Louis, MO, John Lawrence Knoble, Knoble and Yoshida, LLC, Laura Genovese Miller, Akin and Gump, Philadelphia, PA, for Defendants.
REDACTED, NONCONFIDENTIAL VERSION OF FINDINGS OF FACT AND CONCLUSIONS OF LAW PREVIOUSLY ISSUED MARCH 17, 2006
This matter is before the Court on plaintiff FURminator, Inc.'s Motion for Preliminary Injunction on its claims of patent and trademark infringement. The defendants are Ontel Products Corporation, Linens `N Things, Inc. (collectively referred to as "Ontel"),1 Bamboo, a division of Munchkin, Inc., and Munchkin, Inc. (collectively referred to as "Munchkin"). The Court conducted an evidentiary hearing on February 14, 2006 and thereafter the parties submitted proposed findings of fact and conclusions of law. For the following reasons, the Court finds that plaintiff's motion for preliminary injunction should be denied in all respects.
1. Plaintiff FURminator, Inc. ("FURminator") is the listed assignee and owner of U.S. Patent No. 6,782,846 B1 ("the Porter Patent"). See Def. Munchkin Ex. A, Porter Patent, cover page.
2. The Porter Patent is titled "PET GROOMING TOOL AND METHOD FOR REMOVING LOOSE HAIR FROM A FURRY PET" and lists David and Angela Porter as the named inventors. See id.
3. The application for the Porter Patent was filed on May 30, 2000, and the Porter Patent issued on August 31, 2004. See id.
4. The invention disclosed and claimed in the Porter Patent involves putting a handle on a conventional clipper blade to perform a process known as "carding" or "deshedding." This process is described in column 1, lines 19-29 of the Porter Patent, which states:
Some pet groomers have determined that a toothed blade removed from electric grooming sheers [sic] is effective for removing shed hair from a dog or cat. The toothed blade includes a relatively sharp blade edge with a plurality of relatively short, comb-like teeth extending from the edge. Although effective in removing shed hair, the size and shape of the toothed blade makes it difficult to hold while combing or passing the blade over the pet's fur. This difficulty fatigues a groomer's hands and arms, thereby limiting the time a groomer can groom pets in this manner.
See also id., Col. 2, ll. 41-54; Def. Munchkin Ex. C, Declaration of Paul Bryant, ¶¶ 3-4; Def. Munchkin Ex. D, Declaration of C.J. McLaughlin, ¶ 3. The Porter Patent added an elongate handle to the toothed blade of the prior art to alleviate the fatigue problem. See Def. Munchkin Ex. A, Porter Patent, Col. 1, ll. 32-47, 56-61.
5. The grooming tool disclosed in the patent has an elongate handle portion 22 that extends generally along a handle axis X. See Def. Munchkin Ex. A, Porter Patent, Figure 1. A pet engageable portion 24 (described in the patent as an Oster A5 clipper blade) is secured to the handle portion. The pet engageable portion 24 (shown in Figure 4) includes a blade portion 30 and a plurality of teeth 32. The blade portion 30 includes a blade edge 34 with a number of different segments. The teeth 32 extend from the blade edge 34. See Def. Munchkin Ex. A, Porter Patent, Col. 2, ll. 25-47.
6. To remove loose hair from a pet, a user places the pet engageable portion 24 in engagement with the pet so that the teeth 32 are against the pet's coat in a manner so that the first planar surface 36 is generally perpendicular to the handle axis X (id., Col. 2, ll.s 55-58) and to the region of the pet's coat engaged by the teeth 32. Id., Col. 3, ll. 36-41. The user then pulls the handle portion 22 generally along the handle axis X while maintaining engagement of the teeth 32 with the pet's coat. Id.
7. FURminator promotes and sells, among other things, three deshedding products entitled "FURminator® small professional deShedding tool," "FURminator® medium professional deShedding tool" and "FURminator® large professional deShedding tool" (collectively, the FURminator tools). See Def. Ontel Ex. N (FURminator tool); Def. Munchkin Ex. N (FURminator tools); Def. Munchkin Ex. F, ¶ 9 (Porter Declaration); Joint Stipulation of Uncontested Facts, ¶ 2; D. Porter Dep. at 89:8-90:7.
8. All three FURminator tools have the same basic configuration—a fine-toothed metal comb or "blade" and an elongated handle attached at the centerline of the blade and perpendicular to it, like a small rake or hoe. The user places the blade against the pet's coat and then pulls the handle in a direction generally parallel to the longest dimension of the handle, which drags the blade through the fur so that the blade's teeth engage and remove the loose hair, like pulling a rake through a lawn covered with leaves. FURminator's instructions and infomercial show its tools being used in this manner. See Def. Ontel Ex. N (FURminator tool); Def. Ontel Ex. 0 (FURminator infomercial); Def. Munchkin Ex. L (FURminator tool); Def. Munchkin Ex. M (FURminator tool); Def. Munchkin Ex. N (FURminator tool); Plaintiff Ex. 40 (FURminator instructions).
9. FURminator sells its tools through two primary channels of distribution— first, by direct sales to professional dog groomers and other pet professionals such as breeders and veterinarians and second, through the QVC television shopping channel. Beginning in the fall of 2005, FURminator also briefly sold its tools through a television infomercial, but discontinued the infomercial in mid-December 2005. FURminator also sells its tools at PetSmart, a national pet specialty retail chain. FURminator's tools carry a retail price between $29.95 and $49.95. See Def. Ontel Ex. S (Hawthorn Direct Broadcast History); Def. Ontel Ex. T (chart of FURminator's ads and sales); Def. Munchkin Ex. F, ¶ ¶ 10-12 (Porter Decl.); D. Porter Dep. at 17:16-18:25; 20:12-15; 21:5-22; 23:11-15; 26:2-9; 31:6-12; 32:17-34:22; 178:10-179:1; 168:10-18; A. Porter Dep. at 163:1-166:14.
10. Munchkin sells Munchkin's Bamboo® Dog de-shedding comb and Munchkin's Bamboo® Cat de-shedding comb, which are substantially identical in their configuration, differing only in size. See Def. Munchkin Exs. AA, EE, AAA, & NNN. Each includes a metal blade with an integrated comb. A padded grip portion is provided that is generally coplanar (along the same plane) with the plane in which the metal blade resides. See id.; see also Pl.'s Ex. 43, Bamboo deshedding tool instruction manual.
11. The Munchkin products are used by holding the grip portion while passing the comb and blade over a pet's fur. See Pl.'s Ex. 43. The orientation of the groomer's hand and the motion of the tool while using the Munchkin products are substantially identical to those of the groomers practicing the admitted prior art "carding" process that is described in column 1, lines 19-28 of the Porter Patent. See id.
12. The Munchkin products do not have an elongate handle. See Def. Munchkin Exs. AA, EE, AAA, & NNN; McLaughlin Dep., Vol. I at 47:2-49:9; id., Vol. II at 86:15-24, Feb. 9, 2006; Preliminary Injunction Hearing Transcript ("Hearing Tr.") at 122:20-123:3, Feb. 14 2006. To use the Munchkin products, a user would not pull the grooming tool along anything that could be described as an elongate handle axis. See Pl.'s Ex. 43; McLaughlin Dep., Vol. I at 47:2-49:9.
13. Munchkin was aware of the Porter Patent and specifically designed its product to avoid infringement of the Porter Patent, even eliminating from the final product a handle that was on a prototype to ensure non-infringement of the Porter Patent. See Def. Munchkin Ex. E, Declaration of Mark Hatherill, ¶¶ 12-14 (including referenced exhibits); Hatherill Dep. at 120:17-121:8, Feb. 10, 2006. Munchkin made significant investment in such development of its accused products. See Def. Munchkin Ex. E, Hatherill Decl., ¶ 15.
14. Munchkin asserts it has sufficient assets to pay monetary damages for any alleged infringement by its accused products. See id., ¶ 18.
15. Ontel promotes and sells, among other things, a carding or deshedding tool called the "Shed Ender0 Professional De-Shedding Tool" (the "Shed Ender"). See Def. Ontel Ex. A, ¶¶ 22-24 (Murphy Decl.); Def. Ontel Ex. G, ¶¶ 17, 20 (Anderson Decl.); Def. Ontel Ex. K, ¶ 23 (Khubani Decl.); Def. Ontel Ex. M (Shed Ender product).
16. The Shed Ender consists of a fine-toothed metal comb or "blade" and an elongated handle, but the handle is located at the end of the blade and parallel to it, like a knife or a comb with a handle. See Def. Ontel Ex. A, ¶¶ 20 (Murphy Decl.); Def. Ontel Ex. G, ¶¶ 22 (Anderson Decl.); Murphy Dep. at 52:20-53:11; Def. Ontel Ex. M (Shed Ender product); Anderson Dep. at 56:4-15; Khubani Dep. at 46:12-17; 75:12-22.
17. Unlike the FURminator tools, the Shed Ender is used by placing the blade against the coat of a furry pet like a dog or cat and then pulling the handle in a direction generally perpendicular to the longest dimension of the handle. Ontel's instructions and infomercial show the Shed Ender being used in this manner, and in fact, pulling the Shed Ender's handle in a direction parallel to the longest dimension of the handle prevents the teeth of the metal comb from engaging the pet's fur and could injure the pet. See Def. Ontel Ex. A, ¶¶ 20 (Murphy Decl.); Def. Ontel ...
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