Illinois Tool Works Inc. v. Grip-Pak, Inc.

• Citation: 13 USPQ 2d 1463,725 F. Supp. 951
• Decision Date: 04 December 1989
• Docket Number: No. 89 C 5274.,89 C 5274.
• Parties: ILLINOIS TOOL WORKS INC., Plaintiff, v. GRIP-PAK, INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

725 F. Supp. 951

13 USPQ 2d 1463

ILLINOIS TOOL WORKS INC., Plaintiff, v. GRIP-PAK, INC., Defendant.

No. 89 C 5274.

United States District Court, N.D. Illinois, E.D.

December 4, 1989.

MEMORANDUM OPINION

BRIAN BARNETT DUFF, District Judge.

Illinois Tool Works Inc. ("ITW") filed suit in this court on June 30, 1989, claiming that Grip-Pak, Inc. has infringed on two of its patents, U.S. Patent Nos. 3,733,100 (hereafter the "100 Patent"; one representation of it appears as Exhibit A to this opinion), and 4,219,117 (hereafter the "117 Patent"; a drawing of it appears as Exhibit B). Each patent describes a plastic device for carrying beverage containers. The sole licensee of these patents is Owens-Illinois, Inc. Grip-Pak manufactures and sells its own carrier, shown in Exhibit C. ITW has moved for a preliminary injunction against Grip-Pak under 35 U.S.C. § 283 (1982), which gives the federal courts the power to enjoin activities which violate any of the rights secured by patent. This court has jurisdiction over this matter pursuant to 28 U.S.C. § 1338(a) (1982); Grip-Pak agrees with ITW that venue is proper in this court.

The court invited memoranda of law from attorneys for each of the parties prior to hearing evidence and argument on ITW's motion on October 30-November 6 and November 9, 1989. The court is now fully advised in this matter, having considered all of the evidence and arguments presented. From them the court has concluded that it must deny ITW's motion.

The parties agree that for ITW to obtain a preliminary injunction, it has to establish a right to it "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." The court is not to treat any one factor as 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 Inc. v. Abbott Laboratories, 849 F.2d 1446, 1451 (Fed.Cir.1988) (footnotes omitted).

The court believes that ITW does not stand a good chance of prevailing on the merits of its complaint. The parties raised three major issues relating to the merits of ITW's complaint during the hearing: the validity of ITW's patents, Grip-Pak's infringement on those patents, and equitable estoppel. The court believes that ITW will prevail on two of these issues, the first and the third. It stumbles on the second, in such a way that undercuts ITW's entire case for an injunction.

A patent is presumed valid. See 35 U.S.C. § 282. The statutory presumption of validity puts the burden on Grip-Pak to demonstrate by clear and convincing evidence that ITW's patents are invalid. See Atlas Powder Co. v. E.I. DuPont de Nemours, 750 F.2d 1569, 1573 (Fed.Cir.1984). Grip-Pak's primary argument as to why ITW's patents are invalid is that each does not comply with 35 U.S.C. § 112, which requires such disclosure in the patent "to enable any person skilled in the art to which it pertains ... to make and use the same...." Grip-Pak submits that since neither patent discloses the chemical formula for the plastic one should use in making the patented carriers, neither patent enables a person skilled in the art to reproduce the patent.

The court believes that Grip-Pak will not demonstrate by clear and convincing evidence that the chemical formula of the plastic was crucial to enable one skilled in the art to make either patented carrier. None of the patents for plastic carriers introduced into evidence — some developed by Grip-Pak's founder, Ernest Cunningham — give the chemical makeup of the plastic used in the carrier in any greater detail than the 100 and 117 Patents. This would indicate to the court that the U.S. Patent and Trademark Office ("PTO") believed that it was issuing patents for specific designs of carriers, not their components. ITW thus would likely prevail on the issue of the validity of its patents.

ITW would also prevail on the issue of equitable estoppel. As it had on the issue of the validity of ITW's patents, Grip-Pak bears the burden of proof in establishing the elements of equitable estoppel; unlike its burden on the issue of validity, Grip-Pak's burden in asserting equitable estoppel is met by a preponderance of the evidence. The lighter burden makes Grip-Pak's case for equitable estoppel much easier than that for invalidity, but not easy enough. To prove equitable estoppel, Grip-Pak must show: (1) ITW unreasonably and inexcusably delayed in filing suit; (2) this delay caused Grip-Pak prejudice; (3) ITW's affirmative conduct induced Grip-Pak to believe that it had abandoned its claims; and (4) Grip-Pak relied on this conduct to its detriment. See Hottel Corp. v. Seaman Corp., 833 F.2d 1570, 1573 (Fed. Cir.1987).

The court believes that Grip-Pak can prove that ITW knew of Grip-Pak's allegedly infringing activity as far back as March 1983. While this knowledge may give Grip-Pak the benefit of presumptions on the issues of the reasonableness of ITW's delay and harm from that delay, see Jamesbury Corp. v. Litton Indus. Products, Inc., 839 F.2d 1544, 1555 (Fed.Cir. 1988) (Nies, concurring), regardless of this presumption this court believes it is likely that ITW had a good excuse for delay. Grip-Pak's activities were not commercially significant until 1988. The company faced problems in raising sufficient capital and designing an acceptable plastic carrier of its own, and thus from 1983 to 1988 it was unclear to ITW whether it would be economically prudent to take Grip-Pak to court. Patent lawyers do not work for free; as has been evident to the court throughout this case, both sides are expending great sums in advocating their positions. Patent owners are not expected to incur such large costs to silence commercially insignificant infringers. See Mead Digital Systems, Inc. v. A.B. Dick Co., 521 F.Supp. 164, 183 (S.D.Ohio 1981), aff'd on other grounds, 723 F.2d 455 (6th Cir.1983) (three-year wait to file suit after infringer achieved profitability not unreasonable); E.I. DuPont de Nemours v. Polaroid Graphics, 706 F.Supp. 1135, 1145 (D.Del. 1989). Grip-Pak probably did not achieve significant commercial success until mid-1988; ITW's delay in filing suit to mid-1989 probably was not unreasonable. Thus, even if Grip-Pak were to prevail on the other elements of estoppel — ITW's affirmative conduct evincing abandonment of its claims and detrimental reliance — Grip-Pak probably would not carry the issue in its entirety.

That ITW would prevail on the issues of validity and equitable estoppel does not mean, however, that it will prevail altogether on the merits. This is because the court believes that, as a matter of law, Grip-Pak's carrier does not infringe on either of ITW's patents. On this issue, ITW bears the burden of proof by a preponderance of the evidence. See Lemelson v. United States, 752 F.2d 1538, 1547 (Fed.Cir.1985). In deciding whether an accused device infringes on a patent, the court must proceed in two steps. The court must first construe the claims of the patent. The court then must compare the claims to the accused device. See Moeller v. Ionetics, Inc., 794 F.2d 653, 656 (Fed.Cir.1986). This process ensures that the court determines infringement on the basis of the claims of the patent, and not on the basis of the patent holder's commercial embodiment of the claimed invention. See SRI Intern. v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1121 (Fed.Cir.1985).

The court will look first at the 100 Patent. That patent has two claims; ITW argues for purposes of this motion that Grip-Pak's carrier infringes only on the first. The first claim reads, in pertinent part:

A predetermined length of strip stock for forming a plurality of container carriers for different selected numbers of pairs of containers, said strip stock comprising ... second web means longitudinally extending and interconnecting ... adjacently positioned pairs of bands, each end of said second web means providing a longitudinally projecting tab extending toward a line transversely of said strip stock and passing through each of ... first web means, said tabs extending substantially longitudinally outwardly of the contiguous edges of encircling bands whereby a longitudinally deflectable tab is provided at each end of a strip produced by a selective severance of said first web means and a pair of opposed tabs are provided intermediate each pair of adjacently positioned pair of bands which is connected to a second pair of longitudinally adjacent bands when connected by said first web means.

The parties ask the court to construe the words "longitudinally projecting tab." The court will interpret these words first according to their "ordinary and accustomed" meanings, unless it appears that the inventor used them differently. See Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 758 (Fed.Cir.1984), quoting Universal Oil Products Co. v. Globe Oil & Refining Co., 137 F.2d 3, 6 (7th Cir.1943). If the court cannot ascertain the meaning of these words from their plain usage, the court will look to other aids, including the language of other claims in the patent, the prior art carriers, the history of the patent's prosecution, and the entire specification of the patent. See SRI Intern., 775 F.2d at 1118.

Webster's Third New International Dictionary (1967) defines "tab" as, among other things, "a short flap, loop, or other device projecting from an object to facilitate its identification or grasping" or "appendage: extension." The word "projecting" is defined as "protrusive." The word "longitudinal" is defined as "of or relating to the lengthwise dimension: axial." Another definition in Webster's is "extending in length: placed or running lengthwise — opposed to transverse" (italics in original).

Other language in the first claim of the 100 Patent suggests that the...