Jeneric/Pentron v. Dillion Co.

• Decision Date: 20 March 2000
• Citation: 205 F.3d 1377,54 USPQ2d 1086
• Parties: (Fed. Cir. 2000) JENERIC/PENTRON, INC., Plaintiff-Appellant, v. DILLON COMPANY, INC. and CHEMICHL, INC., Defendants-Appellees. 99-1283 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1377

205 F.3d 1377 (Fed. Cir. 2000)

JENERIC/PENTRON, INC., Plaintiff-Appellant, v. DILLON COMPANY, INC. and CHEMICHL, INC., Defendants-Appellees.

99-1283

United States Court of Appeals for the Federal Circuit

DECIDED: March 20, 2000

Appealed from: U.S. District Court for the District of Connecticut

Senior Judge Ellen Bree Burns

[Copyrighted Material Omitted] William J. Cass, Cantor Colburn LLP, of Windsor, Connecticut, argued for plaintiff appellant. With him on the brief were Michael A. Cantor, Leah M. Reimer, and Michael J. Rye.

Peter K. Sommer, Phillips, Lytle, Hitchcock, Blaine & Huber LLP, of Buffalo, New York, argued for defendants-appellees. With him on the brief was Rowland Richards.

Before NEWMAN, Circuit Judge, ARCHER, Senior Circuit Judge, and RADER, Circuit Judge.

RADER, Circuit Judge.

The United States District Court for the District of Connecticut denied Jeneric/Pentron, Inc.'s (Jeneric's) motion for a preliminary injunction against Dillon Company, Inc. and Chemichl, Inc. (collectively, Dillon). See Jeneric/Pentron, Inc. v. Dillon Co., No. 3:98-CV-818 (EBB), 1999 WL 66537 (D. Conn. Feb. 3, 1999) (Jeneric). Because Jeneric has not shown sufficient reason to overturn the trial court's denial of a preliminary injunction, this court affirms.

I.

Both Jeneric and Dillon sell porcelain dental restoration products. Jeneric received U.S. Patent No. 5,653,791 ('791 patent) by assignment. The '791 patent covers a two-phase porcelain composition comprising a leucite crystallite phase dispersed in a glass phase. Porcelain compositions are "useful in the preparation and repair of dental restorations such as porcelain-fused-to metal restorations, all-ceramic restorations, inlays, onlays and veneers." '791 patent, col. 1, ll. 8-11. In dentistry, porcelain compositions are highly desirable because "they can be colored to closely resemble the teeth they must replace, resist degradation inside the oral cavity and remain biocompatible." Id. at ll. 16-21. Claims 1 and 2, the only asserted claims, recite:

1. A two-phase porcelain composition comprising a leucite crystallite phase dispersed in a feldspathic glass matrix, a maturing temperature of from about 750o to about 1050o C. and a coefficient of thermal expansion of from about 12 x 10-6 /oC. to about 17.5 x 10-6 /oC. (room temperature to 450o C.), said porcelain composition comprising:

                ComponentAmount (wt. %)
                SiO257-66
                Al2O37-15
                K2O7-15
                Na2O7-12
                Li2O0.5-3
                CaO0-3
                MgO0-7
                F0-4
                CeO20-1
                

wherein the leucite crystallites possess diameters not exceeding about 10 microns and represent from about 5 to about 65 weight percent of the two-phase porcelain composition.

2. The two-phase porcelain composition of claim 1 further comprising at least one component selected from the group consisting of opacifying agent, pigment and fluorescing agent.

Id. at col. 6, ll. 12-36 (emphasis added). The '791 patent emphasizes that "[i]t is essential to the practice of the present invention that the leucite crystallites present in the two-phase porcelain composition herein possess diameters not exceeding about 10 microns." Id. at col. 2, ll. 49-52.

Dillon sells the two accused dental products - Cerpress SL (Cerpress) and Sensation SL (Sensation) - that are used together for construction of dental restorations. Cerpress is a ceramic pellet used as a core or base material; Sensation is an overlay material applied over the Cerpress core to form a complete dental implant. Dillon imports these products from Chemichl, Inc.'s parent company (Chemichl AG) in Liechtenstein. Dillon resells the two products to dental technicians and dentists.

On May 1, 1998, Jeneric sued Dillon alleging infringement of the '791 patent. Soon thereafter, on June 26, 1998, Jeneric filed a motion for a preliminary injunction. In the motion, Jeneric alleged that Sensation literally infringes claims 1 and 2 of the '791 patent, and that Cerpress infringes claim 1 of the '791 patent under the doctrine of equivalents. Dillon, in turn, asserted various affirmative defenses and counterclaims, including non-infringement and invalidity.

The district court first addressed Jeneric's motion. After a three-day hearing, in which the parties presented oral testimony and over 500 exhibits, the district court denied Jeneric's motion for a preliminary injunction. The district court concluded, inter alia, that Jeneric did not show a reasonable likelihood of success on infringement. Jeneric appeals.

II.

Under 35 U.S.C. § 283 (1994), a patent owner may preliminarily enjoin alleged infringing conduct to exercise its right to exclude pending final adjudication. A preliminary injunction requires the movant to show four factors: (1) a reasonable likelihood of success on the merits, (2) the prospect of irreparable harm, (3) a balance of the parties' hardships in favor of injunction, and (4) no potential injury to an important public interest. See Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1451, 7 USPQ2d 1191, 1195 (Fed. Cir. 1988). The grant of a preliminary injunction is within the trial court's discretion. See Sofamor Danek Group, Inc. v. DePuy-Motech, Inc., 74 F.3d 1216, 1219, 37 USPQ2d 1529, 1531 (Fed. Cir. 1996). "An abuse of discretion may be established by showing that the court made a clear error of judgment in weighing relevant factors or exercised its discretion based upon an error of law or clearly erroneous factual findings." Novo Nordisk of N. Am. v. Genentech, Inc., 77 F.3d 1364, 1367, 37 USPQ2d 1773, 1775 (Fed. Cir. 1996).

"Central to the movant's burden are the likelihood of success and irreparable harm factors." Sofamor Danek, 74 F.3d at 1219. A court may decline to issue a preliminary injunction if the movant does not prove either of these factors. See Polymer Techs., Inc. v. Bridwell, 103 F.3d 970, 973, 41 USPQ2d 1185, 1188 (Fed. Cir. 1996).

Likelihood of Success

In reviewing a preliminary injunction decision, the likelihood of success factor plays a key role. See Sofamor Danek, 74 F.3d at 1219. This showing requires proof on both validity and infringement. See Hybritech, 849 F.2d at 1451. To determine the likelihood of success on patent infringement, this court may construe the claim as a matter of law. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976, 34 USPQ2d 1321, 1326 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). The court then determines whether the accused product is likely to fall within the properly construed claim. See id. An accused product infringes if it embodies each claim element or its equivalent. See Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562, 19 USPQ2d 1500, 1503 (Fed. Cir. 1991).

The first step, claim construction, is a matter of law, which this court reviews independently. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456, 46 USPQ2d 1169, 1174 (Fed. Cir. 1998) (en banc). To determine claim meaning, this court retains at all times its focus on the claims themselves, but also consults the written description, the prosecution history, and at times extrinsic evidence to discern the scientific and technological context at the time of invention. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309, 51 USPQ2d 1161, 1168 (Fed. Cir. 1999); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582, 39 USPQ2d 1573, 1576 (Fed. Cir. 1996).

Under that guideline, the district court construed the claims of the '791 patent by reviewing the specification, prosecution history, and extrinsic evidence. In so doing, the court rejected Jeneric's proposed construction that the dental porcelain composition ranges of the table in claim 1 may vary from the recited values. Instead, the district court construed claim 1 as limiting the ranges of compositions to "the exact weight percentage ranges." Jeneric, 1999 WL 66537, at *11. Based on this preliminary record, this court agrees.

As the district court correctly stated, the claim language "indicates that the invention's chemical components should be limited to the precise ranges set forth therein." Jeneric, 1999 WL 66537, at *10. The district court's claim interpretation finds support in claim construction principles enunciated by this court in other cases. In general, "[a] term such as 'about' is not subject to [] a precise construction . . . but is dependent on the factual situation presented." W.L. Gore & Assocs., Inc. v. Garlock, Inc., 842 F.2d 1275, 1280, 6 USPQ2d 1277, 1282 (Fed. Cir. 1988). Without broadening words that ordinarily receive some leeway, see Modine Manufacturing Co. v. United States International Trade Commission, 75 F.3d 1545, 1554, 37 USPQ2d 1609, 1615 (Fed. Cir. 1996), the precise weight ranges of claim 1 do not "avoid[] a strict numerical boundary to the specified parameter," Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217, 36 USPQ2d 1225, 1229 (Fed. Cir. 1995).

This construction, assigning numerical precision to composition ranges, is particularly appropriate when other variables in the same claims explicitly use qualifying language. See Modine Mfg., 75 F.3d at 1551. Claim 1 contains a mixture of imprecise and precise claim limitations. Specifically, claim 1 uses the word "about" to qualify the values of many variables: the range of the maturing temperature, the coefficient of thermal expansion, the leucite crystallite sizes, and the weight percentage of leucite crystals. In contrast, the claim recites precise ranges for the weight of dental compositions. Under these circumstances, the district court correctly limited the weight ranges to those recited precisely in the table of claim 1.

This reading finds additional support in the written description of the '791 patent. As illustrated below, columns 2 and 3 of a table in the '791 patent disclose the outermost and preferred ranges of dental compositions, respectively:

                OxideRangePreferredExample 1Example 2
                SiO257-6658-6562.158.0
                Al2O37-158-149.814.0
                K2O7-1511-1514.215
                Na2O7-127.5-117.68.1

...