H.H. Robertson, Co. v. United Steel Deck, Inc.

• Decision Date: 27 May 1987
• Docket Number: No. 86-1410,86-1410
• Citation: 2 USPQ2d 1926,820 F.2d 384
• Parties: H.H. ROBERTSON, COMPANY, Plaintiff/Appellee, v. UNITED STEEL DECK, INC. and Nicholas J. Bouras, Inc., Defendants/Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 384

820 F.2d 384

2 U.S.P.Q.2d 1926

H.H. ROBERTSON, COMPANY, Plaintiff/Appellee, v. UNITED STEEL DECK, INC. and Nicholas J. Bouras, Inc. Defendants/Appellants.

No. 86-1410.

United States Court of Appeals Federal Circuit.

May 27, 1987.

John G. Gilfillan, III, Carella, Byrne, Bain & Gilfillan, Roseland, N.J., argued, for defendants/appellants.

Arland T. Stein, Reed Smith Shaw & McClay, Pittsburgh, Pa., argued, for plaintiff/appellee. With him on the brief, were Joseph W. Klein and Michael J. Kline. Also on the brief were Michael P. Griffinger and Ann M. McCormick, Crummy, Del Deo, Dolan, Griffinger and Vecchione, Newark, N.J.

Before NEWMAN and BISSELL, Circuit Judges, and NEWMAN, Senior Judge. ^*

PAULINE NEWMAN, Circuit Judge.

United Steel Deck, Inc. (USD) and Nicholas J. Bouras, Inc., (Bouras) appeal the Order of Preliminary Injunction of the United States District Court for the District of New Jersey in favor of the H.H. Robertson Company (Robertson). USD and Bouras were enjoined pendente lite from making, using, and selling certain structures which were found to infringe United States Patent No. 3,721,051 (the '051 or Fork patent). H.H. Robertson Co. v. United Steel Deck, Inc., No. 84-5357 (D.N.J. March 31, 1986). We affirm.

Background

Robertson is the owner of the '051 patent, invention of Frank W. Fork, issued on March 20, 1973 and entitled "Bottomless Sub-Assembly for Producing an Underfloor Electrical Cable Trench". The invention is a concrete deck structure sub-assembly for distributing electrical wiring. A detailed description of the invention and its development appears in H.H. Robertson Co. v. Bargar Metal Fabricating Co., 225 USPQ 1191, 1192-96 (N.D. Ohio 1984), and need not be repeated.

Robertson charged Bouras and its affiliated manufacturing company USD with infringement (inducing and contributory infringement) of claims 1, 2, 4, 6, 9, 13, and 14 of the Fork patent. In moving for preliminary injunction Robertson alleged that "there is a reasonable probability of eventual success on the patent infringement claim"; that "the Fork patent was held valid, infringed, contributorily infringed and enforceable by the United States District Court for the Northern District of Ohio in ... Bargar "; that the "accused structures of USD and Bouras are the same or substantially the same as those held ... to infringe in Bargar "; that "[w]here, as here, the patent has been held valid and infringed, irreparable harm is presumed ... and the harm ... cannot be fully compensated by money damages"; and that the "balance of equities heavily weighs in favor of Robertson."

The district court held a four-day hearing on the motion, during which witnesses including experts testified on the issues of patent validity and infringement. The legal and equitable issues were briefed and argued. The court concluded that Robertson had "established a basis for the relief it seeks," and granted the preliminary injunction. Robertson, slip op. at 25.

Analysis

Injunctive relief in patent cases is authorized by statute The several courts having jurisdiction of cases under this title 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. Sec. 283. See generally Smith International, Inc. v. Hughes Tool Co., 718 F.2d 1573, 1577-79, 219 USPQ 686, 689-90 (Fed Cir.), cert. denied, 464 U.S. 996, 104 S.Ct. 493, 78 L.Ed.2d 687, 220 USPQ 385 (1983).

The standards applied to the grant of a preliminary injunction are no more nor less stringent in patent cases than in other areas of the law. The court in Smith International discussed the so-called "more severe" rule that has at times weighed against the grant of preliminary injunctions in patent cases, stating: "The basis for the more severe rule appears to be both a distrust of and unfamiliarity with patent issues and a belief that the ex parte examination by the Patent and Trademark Office is inherently unreliable." Id. at 1578, 219 USPQ at 690. See also Atlas Powder Co. v. Ireco Chemicals, 773 F.2d 1230, 1233, 227 USPQ 289, 292 (Fed.Cir.1985) ("burden upon the movant should be no different in a patent case than for other kinds of intellectual property"). The existing standards for relief pendente lite, fairly applied, can accommodate any special circumstances that may arise.

The grant or denial of a preliminary injunction is within the discretionary authority of the trial court. Appellate review is on the basis of whether the court "abused its discretion, committed an error of law, or seriously misjudged the evidence." Smith International, 718 F.2d at 1579, 219 USPQ at 691. See also Roche Products, Inc. v. Bolar Pharmaceutical Co., 733 F.2d 858, 865, 221 USPQ 937, 942 (Fed Cir.), cert. denied, 469 U.S. 856, 105 S.Ct. 183, 83 L.Ed.2d 117, 225 USPQ 792 (1984) ("trial court ... has considerable discretion in determining whether ... to issue an injunction").

The district court applied to Robertson's motion the Third Circuit standard:

An applicant for a preliminary injunction against patent infringement must show:

... (1) a reasonable probability of eventual success in the litigation and (2) that the movant will be irreparably injured pendente lite if relief is not granted.... Moreover, while the burden rests upon the moving party to make these two requisite showings, the district court "should take into account, when they are relevant, (3) the possibility of harm to other interested persons from the grant or denial of the injunction, and (4) the public interest."

E.g., Eli Lilly and Co. v. Premo Pharmaceutical Labs., Inc., 630 F.2d 120, 136 (3d Cir.), cert. denied, 449 U.S. 1014, 101 S.Ct. 573, 66 L.Ed.2d 473 (1980).

Robertson, slip op. at 11. In Eli Lilly the Third Circuit applied to a patent case the "well settled" standard set forth in the (non-patent) case Constructors Association of Western Pennsylvania v. Kreps, 573 F.2d 811, 814-15 (3d Cir.1978). This is substantially the same standard enunciated by this court. See, for example, Roper Corp. v. Litton Systems, Inc., 757 F.2d 1266, 1270-73, 225 USPQ 345, 347-50 (Fed.Cir.1985), and Atlas Powder, 773 F.2d at 1231-34, 227 USPQ at 290-93.

Patent Validity

The first question before the district court was whether the movant Robertson had demonstrated a reasonable likelihood that USD and Bouras would fail to meet their burden at trial of proving, by clear and convincing evidence, that the Fork patent claims were invalid.

The burden of proving invalidity is with the party attacking validity. See Roper Corp., 757 F.2d at 1270, 225 USPQ at 347 (in a preliminary injunction case the burden of establishing invalidity remains on the challenger). The evidence adduced in connection with a motion for preliminary relief must be considered in this light.

Robertson retained the burden of showing a reasonable likelihood that the attack on its patent's validity would fail. Indeed, the district court placed a greater burden on Robertson than was required, referring to our statement in Atlas Powder, 773 F.2d at 1233, 227 USPQ at 292, that a patentee seeking a preliminary injunction must " 'clearly show[ ]' that his patent is valid".

This court's statement in Atlas Powder does not change the immutable allocation to the challenger of the burden of proving invalidity, but rather reflects the rule that the burden is always on the movant to demonstrate entitlement to preliminary relief. Such entitlement, however, is determined in the context of the presumptions and burdens that would inhere at trial on the merits. See Anderson v. Liberty Lobby, Inc., --- U.S. ----, 106 S.Ct. 2505, 2512, 91 L.Ed.2d 202 (1986), wherein the Court observed that in deciding a motion for summary judgment the trial court must be cognizant of "the substantive evidentiary standard of proof that would apply at the trial on the merits". A similar cognizance is appropriate to a motion for preliminary injunction.

Before the district court, USD and Bouras argued that all of the Fork patent claims at issue were invalid for obviousness in terms of 35 U.S.C. Sec. 103, and that claim 2 was invalid in terms of 35 U.S.C. Sec. 112. The asserted invalidity for obviousness was based on references that had been before the Ohio court in Bargar, including references that had been before the patent examiner during prosecution of the Fork patent application, and three references that were newly presented. The patent claims, the details of the references, and the evidence and argument offered by both sides, need not be here repeated.

The district court in its opinion referred to the detailed analysis by the Ohio court and to its decision that the accused infringers in that case had failed to establish the invalidity of the claims. The district court stated that the "finding of validity of the Fork '051 patent in Bargar is persuasive evidence of validity" with respect to the references before that court. Robertson, slip op. at 14-17. The district court further held, upon reviewing the three additional references, that "considering them as part of the prior art does not render obvious the Fork bottomless trench invention." Id. We discern no error in the court's conclusion that "the finding in Bargar and the evidence submitted in the present case lead to the conclusion that there is a reasonable probability that Robertson will ultimately succeed on the issue of obviousness". Id. at 17.

The issue of validity of claim 2 under section 112 raised the question of whether the written description was enabling to one skilled in this art. Reviewing the evidence, including expert testimony, the district court held that "the patent requirements of Sec. 112 are met". Id. at 18-19. The court's determination that the disclosure had not been proven not to be enabling has not been shown to be in error.

Bouras accuses the district court of giving undue weight to the Ohio court's...