Roper Corp. v. Litton Systems, Inc.
| Citation | 757 F.2d 1266,225 USPQ 345 |
| Decision Date | 15 March 1985 |
| Docket Number | No. 84-1711,84-1711 |
| Parties | ROPER CORPORATION, Appellant, v. LITTON SYSTEMS, INC., Appellee. Appeal |
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
Frank P. Porcelli, Boston, Mass., argued for appellant. With him on brief were John M. Skenyon, W.R. Hulbert and Fish and Richardson.
J. Robert Dailey, argued, Morgan, Finnegan, Pine, Foley & Lee, New York City, for appellee. With him on brief was John Haurykiewicz, Minneapolis, Minn.
Before MARKEY, Chief Judge, DAVIS, Circuit Judge, and RE, Judge. *
Appeal from an order of the United States District Court for the Northern District of Illinois, Eastern Division, denying Roper Corporation's (Roper's) motion for preliminary injunction. 589 F.Supp. 823. We affirm.
Roper is the assignee of United States Patent No. 4,028,520, issued June 7, 1977 to Sumner H. Torrey (the Roper patent), relating Sears, Roebuck & Co. and Roper entered a joint venture for development and marketing of the oven. Roper filed a patent application on February 26, 1976, which issued as the Roper patent on June 7, 1977. Roper and Sears jointly test-marketed their common cavity oven in 1976.
to a self-cleaning "common cavity" oven, i.e., an oven capable of operating in three modes: (1) conventional thermal cooking, (2) microwave cooking, and (3) pyrolytic self-cleaning . A more detailed description of the invention and of the claims of the Roper patent appears in Raytheon Co. v. Roper Corp., 724 F.2d 951, 955, 220 USPQ 592, 595 (Fed.Cir.1983), cert. denied, --- U.S. ----, 105 S.Ct. 127, 83 L.Ed.2d 69 (1984).
The Roper oven was a commercially successful product, at least during the early years. See Raytheon Co. v. Roper Corp., 724 F.2d at 954, 220 USPQ at 594. On September 9, 1980, the Raytheon Company sued for declaratory judgment that the Roper patent was invalid and Roper counterclaimed for infringement. Id. at 955, 220 USPQ at 595.
Sears decided to withdraw from the common cavity oven market in mid-1981, and Roper discontinued producing its ovens in mid-1982, after making and selling over 24,000 patented ovens at an average retail price of about $1,100, for a total approximating $25 million.
In Raytheon, this court affirmed the district court's judgment that claim 1 was invalid, that claims 2-7 were not invalid, and that the latter claims were infringed by Raytheon's ovens. Id. at 962, 220 USPQ at 601.
Soon after this court's mandate issued in Raytheon, Roper sued Litton, alleging its 700 series to be an infringement. On May 22, 1984, Roper moved for a preliminary injunction enjoining Litton from manufacturing and selling its 700 series ovens, and from providing to third parties the technology of the ventilation system in the accused ovens.
With its motion, Roper submitted declarations by Sumner Torrey (the inventor), Norman Kirschke (Vice President of Engineering at the Jenn-Air Company, and formerly employed by General Electric on its self-cleaning common cavity oven project), Robert Hilger (Roper's Manager of Product Integrity and Reliability), and Robert Triplett (Roper's former Vice-President of Engineering and Sales). Litton took the depositions of Kirschke and Torrey, and submitted affidavits of Robert Lowe (Litton Group Patent and Licensing Counsel), Gary Pearson and Glenn Spitzer (Operations Controller and Manager of Marketing Administration, respectively, of Litton's Microwave Cooking Products Division), Ronald Lentz (a Litton Staff Engineer), and Russell Hoeker (a Litton Senior Engineer). Roper took Hoeker's deposition.
At a June 18th hearing, Kirschke, Torrey, Triplett, and Hilger testified and were cross-examined. Litton called no witnesses, relying on its affidavits, on the depositions of Kirschke, Torrey, and Hoeker, and on cross-examination of Roper's witnesses.
Litton chose not to contest validity of the Roper patent at this stage. It opposed the motion on the grounds that Roper had not shown: (1) any danger of its suffering immediate irreparable injury; (2) that any harm it would suffer from denial of the injunction would outweigh the harm Litton would suffer from a grant of the injunction; (3) that a preliminary injunction would serve the public interest; and (4) a likelihood of success on the merits. On July 11, 1984, the parties submitted extensive post-hearing briefs and proposed findings and conclusions.
On August 10, 1984, the district court denied Roper's motion in published memorandum opinion because "Roper had failed to demonstrate that it would suffer immediate irreparable injury if a preliminary injunction did not issue." 589 F.Supp. 823, 826.
The trial court looked to the four factors set forth in O'Connor v. Board of Education, 645 F.2d 578, 580 (7th Cir.), cert. denied, 454 U.S. 1084, 102 S.Ct. 641, 70 L.Ed.2d 619 (1981):
(1) whether the plaintiff will have an adequate remedy at law or will be irreparably harmed if the injunction does not issue;
(2) whether the threatened injury to the plaintiff outweighs the threatened harm the injunction may inflict on the defendant;
(3) whether the plaintiff has at least a reasonable likelihood of success on the merits; and
(4) whether the granting of a preliminary injunction will disserve the public interest. 1
The district court stated that "unless the plaintiff establishes that the defendant is financially irresponsible, a court will not grant a preliminary injunction enjoining infringement of a patent," citing Signode Corp. v. Weld-Loc Systems, Inc., 700 F.2d 1108, 218 USPQ 293 (7th Cir.1983), in which the court said, at 1111, "[a]s a general rule, 'a defendant's ability to compensate plaintiff in money damages precludes issuance of a preliminary injunction'." (Emphasis added.) 2
Because Litton chose not to contest validity, and believing that infringement had been clearly established, Roper said it was entitled to a presumption of irreparable harm, citing Smith International v. Hughes Tool Company, 718 F.2d 1573, 1581, 219 USPQ 686, 692 (Fed.Cir.1983). The district court held that Smith International was distinguishable and that Roper had failed to present "such a strong showing" of validity and infringement as would warrant a presumption of irreparable harm.
Noting that Litton had not contested validity in response to Roper's motion, the district court stated that "unlike Smith [Litton] has had no opportunity to challenge the validity of the patent in this suit or in a separate action."
Although it entered no finding on infringement, the district court stated that In a footnote, the district court stated, "Because this Court may be called upon to decide the infringement issue at a later date, a detailed discussion of the merits of Litton's defense will be reserved."
In viewing Roper's allegations of irreparable injury, the district court noted that Litton was no longer manufacturing the accused ovens, that Roper had failed to prove Litton "financially irresponsible," and that Litton has more than sufficient assets to satisfy any conceivable judgment. It therefore concluded that Roper had "clearly failed" to demonstrate that it would suffer irreparable injury if an injunction did not issue.
OPINIONAs it did in the district court, Roper argues here that validity has been overwhelmingly established by the decision in Raytheon, supra, and by the absence of challenge by Litton in response to the motion. Roper asserts that the district court's statement on noninfringement, unsupported by findings, was erroneous. Because it has thus prevailed on validity and infringement, says Roper, it is entitled to a presumption of irreparable harm, citing Smith International. Roper also says Litton's solvency was not a proper ground for denying injunctive relief.
Litton says the issue is whether the district court abused its discretion in denying the motion, that Roper failed to establish a likelihood of success on infringement, that no accused range had been made since April, 1984, and that it is financially responsible. Further, Litton argues that because Roper is not presently practicing the invention, and has not done so for several years, absence of irreparable injury must be presumed.
Litton says its failure to contest validity before this court or the district court "is a far cry from an admission of validity," that it has "serious reservations" about validity, and that question must wait "for another day". Because it was not a party in Raytheon, Litton says, correctly but irrelevantly on this appeal, the decision in that case is not binding on it.
The patent statute, 35 U.S.C. Sec. 282, is unambiguous: A patent is born valid. It remains valid until a challenger proves it was stillborn or had birth defects, or it is no longer viable as an enforceable right. 3 Litton's silence leaves untouched at this stage what the statute presumes, namely, that Roper's patent is valid.
The district court mistakenly and irrelevantly stated that Litton "has had no opportunity to challenge the validity of the patent in this suit or in a separate action." Litton had full opportunity to show, in response to the motion, if it could, that Roper had no reasonable likelihood of success on the issue of validity. That was its burden. Its failure to grasp its opportunity means that the district court should have treated, and this court must treat, Roper's likelihood of success on validity as having been established.
As above indicated, the district court...
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