Teledyne Industries, Inc. v. Windmere Products, Inc.

• Decision Date: 29 April 1977
• Docket Number: No. 76-1931-Civ-JLK.,76-1931-Civ-JLK.
• Citation: 433 F. Supp. 710
• Parties: TELEDYNE INDUSTRIES, INC., d/b/a Teledyne Water Pik, a California Corp., Plaintiff, v. WINDMERE PRODUCTS, INC., a Florida Corporation, et al., Defendants.
• Court: U.S. District Court — Southern District of Florida

433 F. Supp. 710

TELEDYNE INDUSTRIES, INC., d/b/a Teledyne Water Pik, a California Corp., Plaintiff, v. WINDMERE PRODUCTS, INC., a Florida Corporation, et al., Defendants.

No. 76-1931-Civ-JLK.

United States District Court, S. D. Florida, Miami Division.

April 29, 1977.

COPYRIGHT MATERIAL OMITTED

Duane Burton, Burton & Darr, Denver, Colo., Peter L. Nimkoff, Miami, Fla., Hugh Drake, Fort Collins, Colo., for plaintiff.

Robert C. Ward, Miami Beach, Fla., Adams, George, Wood, Lee & Schulte, Miami, Fla., Harvey B. Jacobs, Jr., Washington, D. C., for defendants.

MEMORANDUM OPINION

JAMES LAWRENCE KING, District Judge.

Teledyne Corporation manufactures and markets a wall mounted adjustable spray nozzle or showerhead known as the "Water Pik SHOWER MASSAGE" Model SM-2. The chrome-colored unit is of a distinctive shape and appearance, and the internal mechanism of the nozzle is protected by three United States patents. Windmere Corporation began the importation and marketing of a device with a very similar appearance and virtually identical internal parts. Teledyne brought suit against Windmere and herein seeks a temporary injunction to prevent the marketing of the Windmere product, on the grounds that the Windmere product infringes Teledyne's United States patents, in violation of 35 U.S.C. Section 271(a), and the grounds that the similarity of appearance of the Windmere product constitutes unfair competition by creating confusion as to its origin, in violation of 15 U.S.C. 1051, et seq. and state unfair competition laws. Jurisdiction is founded on 28 U.S.C. Sections 1338(a), 1391, and 1400(b), and the court has pendent jurisdiction over the state unfair competition counts.

PROPRIETY OF A PRELIMINARY INJUNCTION

A preliminary injunction is an equitable remedy available at the sound discretion of the District Court. Dairy Queen, Inc. v. Wood, 369 U.S. 469, 82 S.Ct. 894, 8 L.Ed.2d 44 (1962). Factors that must be evaluated in granting a preliminary injunction are (1) likelihood of success on the merits; (2) irreparable injury; (3) competing equities; and (4) public interest. Mount Sinai Medical Center v. Mathews, 425 F.Supp. 5 (S.D.Fla.1976), Allison v. Froehlke, 470 F.2d 1123 (5th Cir. 1972).

Plaintiff seeks this preliminary injunction on grounds of both patent infringement and unfair competition. An injunction grounded in patent infringement would prevent the sale or marketing of spray nozzles with infringing internal structure, regardless of their appearance. Inversely, such an injunction would not prevent the sale of units that appear identical to plaintiff's if their internal structure were different. An injunction grounded in unfair competition would have precisely the opposite effect — that is, it would prevent sale of units confusingly similar in appearance even though their internal structure differed, but it would not prevent the sale of units with duplicate internal structure if their appearance was dissimilar. Of course an injunction grounded on both patent infringement and unfair competition would prevent the sale of units with infringing internal structure or confusingly similar appearance.

THE PATENT CLAIMS

In applications for preliminary injunctions in patent cases, there is authority in some circuits that "in the absence of long acquiescence or adjudication of the patent an injunction will not go. . . ." Carter-Wallace, Inc. v. Davis-Edwards Pharm. Corp., 443 F.2d 867 (2d Cir. 1971), quoting Rosenberg v. Groov-Pin Corp., 81 F.2d 46, 47 (2d Cir. 1936) (L. Hand, J.). Judge Hand stated the rationale behind this doctrine thusly:

Examiners have neither the time nor the assistance to exhaust the prior art; nothing is more common in a suit for infringement than to find that all the important references are turned up for the first time by the industry of a defendant whose interest animates his search. It is a reasonable caution not to tie the hands of a whole art until there is at least the reasonable assurance which comes from such an incentive. Id.

This idea — that an in-depth search for prior art will be made most vehemently by an adversary and not by the Patent Office — is in itself a sound principle.

Judge Hand's idea, however, cannot in itself support a doctrine as conservative as that expressed in Carter-Wallace. "Long acquiescence or adjudication" are not the only measures of insurance that all prior art has been dredged up before the court. In this action, the parties have been before the court almost six months. Numerous hearings on the issue of patent validity and infringement have been held. The parties have vehemently presented their positions. Both parties have submitted voluminous affidavits of experts arguing the technical merits of plaintiff's patents and the pertinent prior art. Lengthy depositions of these experts have been filed, during which they were subject to provocative cross-examination. After all this, the court is not so unfamiliar with the Teledyne patents and the prior art that it cannot rule upon the probable validity of the patents or upon their probable infringement.

Defendant urges that the widely-recognized "judicial mortality of patents" renders plaintiff's success on his patent claims unlikely. In this connection, defendant has carefully cataloged recent patent cases in this circuit and found that barely 37% survived the courtroom battle. Such statistics, while interesting in passing, are absolutely irrelevant to the issue of validity in this case. The court cannot see how the fate of other patents is related to the fate of this one at all. The high mortality rate may of course be explained by Judge Hand's observations on the interested opponent's thorough search of the prior art, but as the court said before, Hand's explanation alone is not cause to bar a preliminary injunction if there is evidence in this case of adversary search of the prior art.

In the Fifth Circuit the standard of review to be applied in applications for preliminary injunctions in patent cases was stated clearly in Eli Lilly & Co. v. Generix Drug Sales, 460 F.2d 1096, 1099 (5th Cir. 1972), aff'g. 324 F.Supp. 715 (S.D.Fla.1971): "The burden is ordinarily on the party seeking preliminary injunctive protection in a patent infringement suit to demonstrate beyond question that the patent he sues on is valid and infringed, as well as showing that other equitable grounds are present." The court must now consider whether plaintiff has met this burden.

A. PATENT VALIDITY

Ordinarily, a patent duly issued by the Patent Office is entitled to the presumption of validity. 35 U.S.C. Sec. 282. This presumption is controverted somewhat but not removed by the fact that the patent has not been previously adjudicated valid. Other facts may reinforce the presumption, however. Although this patent is relatively new and has not been the subject of longstanding acquiescence (as was the patent held presumptively valid in Eli Lilly), nevertheless plaintiff's invention appears, from the reaction it has caused in the marketplace, to be a significant step forward in the art. It has been a tremendous commercial success. Numerous favorable comments in trade and public publications have been introduced into evidence. Other manufacturers have sought plaintiff for licensing. Furthermore, until defendant's activity, plaintiff was the sole source of spray nozzles of this type. Even though defendant introduced several competing spray nozzles that advertised "massaging" or "pulsating" action, none, save defendant's, appeared to look like or work like the SM-2. Finally, defendant has paid plaintiff the "faithful tribute of imitation." This evidence suggests that in the brief time since its introduction, plaintiff's device has been treated by all, except defendant, as fully protected under the patent laws.

1. Patent 3,762,648

This patent, issued October 2, 1973 to Siegmund Deines, John Trenary, et al., is directed to a spray nozzle which delivers an intermittently interrupted or pulsating spray useful, for example, in a shower. The frequency of pulses and the volume of the spray may be adjusted by the user, independent of the water supply pressure. To achieve this end, water passing through the device is divided into two flow paths which are recombined prior to discharge through groups of nozzle orifices. Water flowing through one of the flow paths is directed axially against a turbine blade assembly to drive a rotatable valve rotor at a rotary speed dependent upon the pressure of water following this flow path. The second flow path bypasses the turbine blades, and hence water following the second path does not contribute the rotary speed of the valve rotor. By adjustably throttling flow through one of the flow paths, the rotary speed of the valve rotor may be varied independently of the supply pressure. Flow of water to each group of nozzle orifices is cyclically interrupted by the rotating valve rotor which connects only a portion of the orifices to the supply at a given time.

Plaintiff's application to the patent office discloses prior references Erwin (No. 2,878,066), Heitzman (No. 3,473,736 and 3,568,716), and others.

Defendant alleges that claims 1 and 12 of Teledyne's patent No. 3,762,648 are "anticipated" by a combination of the Lauter Patent 1,101,804 and the Erwin Patent 2,878,066. "Anticipation" is indeed a ground for denying or invalidating a patent under 35 U.S.C. Sec. 102(a), which states essentially that a prior patent of an invention precludes a later patent of the same invention. The courts have held that anticipation refers only to inventions disclosed in a single prior patent, not to combinations of inventions that may be inferred from a variety of previous patents. See Walker v. General Motors Corp., 362 F.2d 56, 58 (9th Cir. 1966).

What defendant undoubtedly meant to allege is that in light of the teachings of the Lauter and Erwin patents, plaintiff's first patent was "obvious at the time the...