Robert Bosch Llc v. Pylon Mfg. Corp..

• Decision Date: 13 October 2011
• Docket Number: No. 2011–1096.,2011–1096.
• Citation: 100 U.S.P.Q.2d 1656,659 F.3d 1142
• Parties: ROBERT BOSCH LLC, Plaintiff–Appellant,v.PYLON MANUFACTURING CORP., Defendant–Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

659 F.3d 1142

100 U.S.P.Q.2d 1656

ROBERT BOSCH LLC, Plaintiff–Appellant,

v.PYLON MANUFACTURING CORP., Defendant–Appellee.

No. 2011–1096.

United States Court of Appeals, Federal Circuit.

Oct. 13, 2011.

Mark A. Hannemann, Kenyon & Kenyon LLP, of New York, NY, argued for plaintiff-appellant. With him on the brief were Michael J. Lennon and Jeffrey S. Ginsberg. Of counsel was Susan A. Smith.Gregory L. Hillyer, Feldman Gale, P.A., of Philadelphia, PA, argued for defendant-appellee. With him on the brief were Nicole D. Galli; and James A. Gale, of Miami, FL.Before BRYSON, O'MALLEY, and REYNA, Circuit Judges.Opinion for the court filed by Circuit Judge O'MALLEY. Dissenting opinion filed by Circuit Judge BRYSON.

O'MALLEY, Circuit Judge.

Robert Bosch LLC (“Bosch”) appeals from the order of the United States District Court for the District of Delaware, denying Bosch's post-trial motion for entry of a permanent injunction. Because the district court abused its discretion when it denied a permanent injunction on this record, we reverse and remand with instructions to enter an appropriate injunction.

Background

This is a patent infringement case involving windshield wiper technology, specifically beam-type wiper blades (“beam blades”). Beam blades are a relatively new technology that offers several advantages over conventional, or “bracketed,” wiper blades, including more evenly distributed pressure across the length of the blade and better performance in inclement weather. Part of Bosch's business involves developing wiper blades, and Bosch owns patents covering various aspects of beam blade technology. In addition to its research and development efforts, Bosch sells blades to both original equipment manufacturers and aftermarket retailers. Pylon Manufacturing Corp., LLC (“Pylon”) also sells beam blades and has competed with Bosch for business from retailers such as Wal–Mart.

In August 2008, Bosch sued Pylon in the District of Delaware, alleging infringement of U.S. Patent Nos. 6,292,974 (“the '974 Patent”), 6,675,434 (“the '434 Patent”), 6,944,905 (“the '905 Patent”), and 6,978,512 (“the '512 Patent”).¹ On June 9, 2009, during a hearing regarding Bosch's alleged failure to produce certain financial data, the court informed the parties of its preference for bifurcating the issue of damages and suggested that this procedural mechanism may address the parties' discovery dispute. In response, Pylon moved to bifurcate the issues of damages and willfulness, a request that Bosch opposed. The district court granted Pylon's motion, noting its “determin[ation] that bifurcation is appropriate, if not necessary, in all but exceptional patent cases.” Memorandum Order, Robert Bosch LLC v. Pylon Mfg. Corp., No. 08–542, 2009 WL 2742750 (D.Del. Aug. 26, 2009), ECF No. 123.

The parties subsequently moved for summary judgment with respect to the validity and infringement of various claims. On March 30, 2010, the district court granted Pylon's motion for summary judgment of noninfringement of the ' 512 Patent, but denied its motion for summary judgment of invalidity of the '974 and '512 Patents. The court also granted Bosch's motions for summary judgment of: (1) infringement of claims 1 and 8 of the '974 Patent; and (2) no inequitable conduct and no invalidity for derivation as to the '905 and '434 Patents. The remaining issues were tried to a jury, which found: (1) claim 13 of both the '905 and '434 Patents valid and infringed; (2) claims 1 and 5 of the '434 Patent infringed, but invalid for obviousness; and (3) claims 1 and 8 of the '974 Patent invalid based on obviousness and derivation.

In light of the jury's determination that Pylon infringed valid claims of the '905 and '434 Patents, Bosch moved for entry of a permanent injunction. In a memorandum opinion dated November 3, 2010, the court denied the motion on grounds that Bosch failed to show that it would suffer irreparable harm. At the outset of its analysis, the district court noted an apparent difficulty faced by courts “struggling to balance the absence of a presumption of irreparable harm with a patentee's right to exclude,” and observed that other courts had “frequently focused upon the nature of the competition between plaintiff and defendant in the relevant market in the context of evaluating irreparable harm and the adequacy of money damages.” Robert Bosch LLC v. Pylon Mfg. Corp., 748 F.Supp.2d 383, 407 (D.Del.2010). The court also discerned a tendency among district courts to award permanent injunctions: (1) “under circumstances in which the plaintiff practices its invention and is a direct market competitor”; and (2) where the plaintiff's “patented technology is at the core of its business....” Id. at 407–08.

With these factors in mind, the court proceeded to assess the nature of the competition between Bosch and Pylon. In doing so, the court identified deficiencies it perceived in Bosch's presentation of the competitive landscape, including a failure to “provide[ ] a clear, summary-level overview of the relevant market” and “a breakdown illuminating [the parties'] relative market percentages.” Id. at 408. The court also focused on the fact that “[t]his is not a clear case of a two-supplier market wherein a sale to Pylon necessarily represents the loss of a sale to Bosch” and “wiper blades alone are not at the core of [Bosch's] business.” Id. at 408. Based on: (1) its conclusion that Bosch “fail[ed] to define a relevant market”; (2) the “existence of additional competitors”; and (3) the “non-core nature of Bosch's wiper blade business in relation to its business as a whole,” the court concluded that Bosch failed to show it would suffer irreparable harm. Id. Finding the absence of irreparable harm fatal to Bosch's motion, the court denied the request for an injunction without addressing the remaining equitable factors of the permanent injunction inquiry.

Bosch timely appealed the district court's interlocutory order, asserting jurisdiction under 28 U.S.C. §§ 1291 and 1292.

Jurisdiction

Whether this court has jurisdiction over an appeal taken from a district court judgment is a question of “Federal Circuit law, not that of the regional circuit from which the case arose.” Pause Tech. LLC v. TiVo, Inc., 401 F.3d 1290, 1292 (Fed.Cir.2005) (citing Woodard v. Sage Prods., Inc., 818 F.2d 841, 844 (Fed.Cir.1987) (en banc)). Section 1292(a)(1) provides that “the courts of appeals shall have jurisdiction of appeals” from “[i]nterlocutory orders of the district courts of the United States ... granting, continuing, modifying, refusing or dissolving injunctions....” 28 U.S.C. § 1292(a)(1). Section 1292(c)(1), moreover, confers upon this court exclusive jurisdiction over such appeals if we would otherwise have jurisdiction under § 1295. Thus, on its face, the district court's order denying Bosch's request for a permanent injunction in a patent case falls within the scope of § 1292(a)(1), (c)(1). See Cross Med. Prods. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1300 (Fed.Cir.2005) (“Medtronic appeals from an order permanently enjoining Medtronic from infringing the '555 patent. On its face, the order falls within the scope of § 1292(a)(1), (c)(1).”).

Pylon admits that § 1292(a)(1) provides a sound basis for jurisdiction, but contends that jurisdiction under that section “has not been established.” Appellee's Br. 1. According to Pylon, Bosch was required to show that the order will have “a serious, perhaps irreparable consequence” and that the order can be “effectually challenged” only “by immediate appeal.” Id. at 20 (quoting Stringfellow v. Concerned Neighbors in Action, 480 U.S. 370, 379, 107 S.Ct. 1177, 94 L.Ed.2d 389 (1987) and Carson v. American Brands, Inc., 450 U.S. 79, 84, 101 S.Ct. 993, 67 L.Ed.2d 59 (1981)). Pylon argues that Bosch failed to make such a showing and that we should, accordingly, “decline to exercise jurisdiction over this appeal at this time and dismiss with leave to refile after final judgment is entered below.” Id. at 23.

Bosch counters that the additional hurdles cited by Pylon apply only in cases involving orders that do not expressly deny an injunction, but have the effect of denying injunctive relief. Because its appeal is from an order “explicitly” denying a request for an injunction, Bosch contends that it need not make any additional showing for jurisdiction to attach under § 1292(a)(1). We agree.

This court has made clear that a party appealing an order that expressly grants or denies a permanent injunction need not also demonstrate that the order will have “a serious, perhaps irreparable consequence” and that “the order can be effectively challenged only by immediate appeal.” See Cross Med. Prods., 424 F.3d at 1300. When confronted with this issue in Cross Medical, we explained that these “ Carson requirements” apply only where there is no order specifically granting or denying injunctive relief, but the appellant argues that the appealed order has the effect of granting or denying such relief. Id. We also observed that the “Supreme Court [had] confirmed our reading of Carson as applying only to orders that have ‘the practical effect of granting or denying injunctions.’ ” Id. at 1301 (quoting Gulfstream Aerospace Corp. v. Mayacamas Corp., 485 U.S. 271, 287–288, 108 S.Ct. 1133, 99 L.Ed.2d 296 (1988)) (“Section 1292(a)(1) will, of course, continue to provide appellate jurisdiction over orders that grant or deny injunctions and orders that have the practical effect of granting or denying injunctions and have serious, perhaps irreparable, consequence.” (internal quotation marks omitted)). It is, thus, well-established that, “if the district court's order expressly grants [or denies] an injunction, the order is appealable under § 1292(a)(1), without regard to whether the appellant is able to demonstrate serious or irreparable consequences.” Id. (quoting 19 James Wm. Moore et al., Moore's Federal Practice ¶ 203.10[2][a], at 14 ...