Helifix Ltd v. Blok-Lok, Ltd.
| Decision Date | 07 April 2000 |
| Docket Number | No. 99-1196,DEFENDANTS-APPELLEES,PLAINTIFF-APPELLANT,BLOK-LO,LTD,99-1196 |
| Citation | 208 F.3d 1339,54 USPQ2d 1299 |
| Parties | (Fed. Cir. 2000) HELIFIX LIMITED,, v.AND WILLIAM SCOTT BURNS,, v. HELIFIX NORTH AMERICA CORPORATION, THIRD PARTY COUNTERCLAIM DEFENDANT |
| Court | U.S. Court of Appeals — Federal Circuit |
Jack E. Dominik, Dominik, Knechtel, Demeur & Samlan, of Miami Lakes, Florida, argued for plaintiff-appellant.
H. Bissell Carey, III, Robinson & Cole Llp, of Boston, Massachusetts, argued for defendants-appellees.
Before Rader, Schall, and Gajarsa, Circuit Judges.
Helifix Limited ("Helifix") appeals the order of the United States District Court for the District of Massachusetts denying its motion to preliminarily enjoin Blok-Lok, Ltd. and William Scott Burns 1 (collectively "Blok-Lok") from inducing infringement of, and contributorily infringing, United States Patent No. 5,687,801 ("the '801 patent"). See Helifix Ltd. v. Blok-Lok, Ltd., No. 98-11093 (D. Mass. Dec. 15, 1998) (memorandum and order). Helifix also appeals the district court's interlocutory order granting summary judgment of patent invalidity in favor of Blok-Lok on Blok-Lok's counterclaim against Helifix. 2 The district court held that the '801 patent was invalid by reason of anticipation and the on-sale bar under 35 U.S.C. § 102(b) (1994). See Helifix Ltd. v. Blok-Lok, Ltd., 26 F. Supp. 2d 294, 52 USPQ2d 1486 (D. Mass. 1998). We affirm the denial of the motion for a preliminary injunction, vacate the grant of summary judgment of patent invalidity, and remand for further proceedings.
The '801 patent, entitled "Method of Securing Walls with a Tie," issued from an application filed on September 27, 1996. That application was a divisional of Application Serial No. 08/491,358, filed June 30, 1995, which was a continuation-in-part of Application Serial No. 08/204,465, filed February 28, 1994. The patent names Robert Ian Paterson and Brian Alan Breeze as the inventors and Helifix as the assignee. The patent is directed to a method of securing layers of masonry ("wythes"), such as an exterior brick wall and an interior concrete wall, by means of ties. See, e.g., '801 pat., claim 1. The typical tie is described as spiral-shaped, 7-8 inches long, and made of solid stainless-steel. See id. at col. 2, ll. 55-56, col. 4, l. 42. The sole claim of the patent recites:
1. A method of securing (1) two or more wythes in a building structure (2) utilizing a helical tie member (3) having longitudinal helical flutes terminating at a cutting end at one end and (4) terminating at a remote end opposite the cutting end comprising the steps of:
and thereafter (12) finishing the remote end of the tie in accordance with mandates of the site.
(The reference numerals are those added by the district court in its summary judgment order, see Helifix, 26 F. Supp. 2d at 297, 52 USPQ2d at 1489.) The patent teaches that pursuant to this method "the tie helically grasps the interior wythe . . . as well as the exterior wythe . . . , and a dry fix or tieing [sic] relationship is developed." '801 pat., col. 5, ll. 34-36. The patent states that different tools can be used to drive the tie, "so long as the tie is permitted to rotate," id. at col. 4, l. 51, and that "[i]t is important that the tie be free to rotate in the . . . [tool] to avoid creating any stress in the masonry other than that imparted by the hammering action of the tie," id. at col. 5, ll. 47-52.
Figure 7 of the '801 patent shows a workman 21 practicing the invention of claim 1 by driving a helical tie member 10 into a building structure to secure a first wythe 2 to a second wythe 4:
[Tabular or Graphical Material Omitted]
Figure 13 of the patent shows a helical tie member 10 securing wythes 2 and 4 in a building structure [Tabular or Graphical Material Omitted]
In January of 1993, representatives of Helifix attended the World of Concrete trade show in Las Vegas, Nevada, where they displayed and distributed a brochure ("the '93 brochure"). The '93 brochure describes Helifix stainless steel ties and their use in masonry refacing and new construction. It also describes the use of the ties in both "DryFix" and "Dry-Chemical Fix" methods of construction. 3 With regard to the ties, the '93 brochure states:
The Helifix tie has a unique design which causes it to auger as it is installed. The tie cuts a helical groove as it corkscrews into the wall ensuring that it bonds securely with most construction materials.
With regard to the DryFix method, which is at issue in this case, the '93 brochure states:
The DryFix technique is used to pin facing material to the backup where the cavity is minimal or non-existent. Ideal for pinning masonry facings or veneers to brick, block, or concrete. Ideal for use in multi-wythe composite walls.
The brochure explains the DryFix method with the following diagrams and descriptions:
1. Having determined the points of entry for the Helifix ties, a hole is drilled through the outer wythe into the backup substrate to a predetermined depth.
[Tabular or Graphical Material Omitted]
2. The DryFix masonry tie is loaded into the insertion tool and power driven until the outer end of the tie is recessed below the face of the brickwork. [Tabular or Graphical Material Omitted]
3. The outer face is then finished with matching materials.
[Tabular or Graphical Material Omitted]
The DryFix portion of the brochure also states that ". . . the special augering action of the tie avoids bricks or blocks splitting . . . ."
The last paragraph of the brochure is a "warranty" that provides as follows:
Seller makes no warranty of any kind, express or implied, except that the goods sold under this agreement shall be of the standard quality of seller, and buyer assumes all risk and liability resulting from the use of the goods, whether used singly or in combination with other goods. Seller neither assumes nor authorizes any person to assume for seller any other liability in connection with the sale or use of the goods sold, and there is no oral agreement or warranty collateral to or affecting this transaction.
The brochure also sets forth a telephone number and address to contact "for further information."
On June 4, 1998, Helifix filed suit against Blok-Lok, alleging that Blok-Lok was infringing and inducing infringement of the '801 patent, was infringing Helifix's copyrighted catalogues, and was falsely designating the sponsorship of non-Helifix products as Helifix products. Helifix sought a preliminary injunction of the activities alleged to infringe the patent and demanded a jury trial. On July 9, 1998, Blok-Lok filed a counterclaim which included a request for a declaratory judgment of patent invalidity. Blok-Lok asserted that the '93 brochure describes the method claimed in the '801 patent and that the claimed method was on sale at the January 1993 World of Concrete trade show. Because the earliest United States priority date of the '801 patent, the February 28, 1994 filing date of Application Serial No. 08/204,465, was more than one year after the brochure was publicly distributed and more than one year after the trade show, Blok-Lok asserted that the method was unpatentable under 35 U.S.C. § 102(b).
In due course, Helifix moved for summary judgment of patent infringement and Blok-Lok cross-moved for summary judgment of patent invalidity. The district court denied both motions on September 14, 1998. However, after a hearing on September 15, 1998, the court invited Blok-Lok to renew its motion. Blok-Lok did so, and on November 5, 1998, the court granted the renewed motion for summary judgment in an interlocutory order. See Helifix, 26 F. Supp. 2d at 303, 52 USPQ2d at 1494. In doing so, the court construed claim 1 of the '801 patent, focusing on the tool recited in the claim. See id. at 296-98, 52 USPQ2d at 1488-89. The court concluded that the claim is not limited to the specific tool described in the patent specification. See id. at 298, 52 USPQ2d at 1489. The court then determined that the '801 patent is anticipated by the '93 brochure under 35 U.S.C. § 102(b) and that activities at the World of Concrete trade show in January of 1993 amounted to an on-sale bar under 35 U.S.C. § 102(b). See id. at 298-303, 52 USPQ2d at 1490-93. The court therefore granted Blok-Lok's motion for summary judgment of patent invalidity on an interlocutory basis. 4 See id. at 303, 52 USPQ2d at 1494.
On December 15, 1998, the district court denied Helifix's motion to preliminarily enjoin Blok-Lok from inducing infringement of, and contributorily infringing, the '801 patent. See Helifix, No. 98-11093, slip op. at 3. The court did so based upon its grant of summary judgment the previous month in favor of Blok-Lok:
It would not be consistent with the court's order of November 5, 1998 . . . to grant plaintiff's motion for preliminary injunction that would prevent the defendants from infringing the '801 patent. That part of plaintiff's motion is denied.
Helifix appeals from the denial of its request for a preliminary injunction and the court's grant of Blok-Lok's motion for summary judgment.
We have jurisdiction over the appeal of the denial of Helifix's ...
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