Opinion
No. 04 C 2999.
November 24, 2004
MEMORANDUM OPINION
This is an action for infringement under 35 U.S.C. § 271 based on Defendants', Zyliss Haushaltwaren AG and Zyliss USA Corporation (collectively "Zyliss"), purported infringement of Plaintiff OXO's U.S. Patent No. 6,018,883 ("the `883 patent"). OXO claims that without permission or license from it, Zyliss has infringed the `883 patent. The present matter comes before the court on OXO's motion for a preliminary injunction. For the reasons set forth below, the motion is denied.
On July 22, 2004 World Kitchen (GHC), LLC amended its May 21, 2004 preliminary injunction motion to substitute OXO International, Ltd. ("OXO") as the movant. Plaintiffs and movant are hereinafter collectively referred to together as "OXO" unless otherwise indicated.
BACKGROUND
OXO sells many kitchenware products, including the "OXO Good Grips Salad Spinner" (the "OXO spinner"), that incorporates the invention described in the `883 patent. At the Chicago International Housewares Show, held between March 19 and March 23, 2004, OXO became aware of a product marketed and sold by Zyliss known as the "Easy Spin — Salad Spinner with Glidewheel Motion" (the "Zyliss spinner"). Zyliss introduced this product as a re-engineered version of its very popular pull-cord salad spinner. The new salad spinner still operated via use of a pull-cord but also featured a braking system. OXO asserts that the Zyliss spinner infringes upon the `883 patent.
The invention described in the `883 patent relates to spinning devices for drying wet food, such as lettuce and other salad ingredients, and more particularly to braking systems for halting the rotation of the spinning device. According to the patent's specifications, the patented invention consists of a cover and container that enclose a rotatable basket. A lid couples with the basket and rotates the basket by virtue of engagement with various ribs. The cover carries a brake assembly that stops the rotation of the lid and the basket when the user pushes a button.
OXO alleges that the Zyliss spinner infringes independent claim one of the `883 patent which provides:
A device for drying food comprising:
a. a container including a bowl having a sidewall terminating at a top edge defining an opening and a cover removably connected to the bowl and substantially covering the opening;
b. a basket assembly disposed in the bowl and rotatable relative to the container about an axis, the basket assembly including a basket having a sidewall terminating at a top edge and a lid reasonably coupled to the top edge of the basket; and
c. a brake assembly carried by the cover and engageable with the lid to apply a frictional force to the lid for stopping rotation of the basket assembly.
The Zyliss spinner has an outer clear plastic bowl with a clear plastic cover that carries a device with a handle pull ring and a circular "stop" button. The Zyliss spinner's cover engages the side of the bowl and covers the opening of the bowl. A basket having numerous openings in its walls is enclosed within the bowl. When the user depresses the stop button, a foot, or upper brake pad, connected to the stop button, moves downward, making contact with a disc (which is connected via a plastic hub device to the rotating lid) that sits upon another foot, or lower brake pad. Thus, when the downward moving upper brake pad contacts the rotating disc and compresses it against the lower brake pad on the disc's bottom side, the lid stops rotating, which in turn stops the rotation of the basket.
OXO, pursuant to Fed.R.Civ.P. 65, now moves this court for entry of a preliminary injunction against Zyliss. OXO asserts that it is entitled to preliminary relief because a) its complaint for injunction and other relief filed with this court on April 27, 2004, is reasonably likely to succeed on the merits; b) if Zyliss is allowed to continue to infringe the `883 patent during the pendency of this action, OXO will be irreparably harmed and has no adequate remedy at law; c) Zyliss will suffer minimal harm, if any, should the preliminary injunction be granted; and d) the injunction will serve the public interest.
Zyliss counters that the accused product lacks essential claim elements. Further, Zyliss contends that OXO has failed to make out a prima facie case of patent infringement and accordingly cannot satisfy the requisite showing of likelihood of success on the merits to warrant equitable relief.
LEGAL STANDARD
As this motion requests an injunction involving the rights of a patent, Federal Circuit law controls. Hybritech, Inc. v. Abbot Laboratories, 849 F.2d 1446, 1451 n. 12 (Fed. Cir. 1988). When a patentee "clearly shows" that the patent in question is valid and infringed, a court may, after balancing of all of the competing equities, preliminarily enjoin a party from violating the rights secured by the patent. Atlas Powder Co. v. Ireco Chemicals, 773 F.2d 1230, 1233 (Fed. Cir. 1985). It is important to note that a preliminary injunction is a "drastic and extraordinary remedy that is not to be routinely granted."Intel. Corp. v. ULSI Sys, Tech., Inc., 995 F.2d 1566, 1568 (Fed. Cir. 1993) (citing Nutrition 21 v. U.S., 930 F.2d 867, 869 (Fed. Cir. 1991) and Illinois Tool Works, Inc. v. Grip-Pak, Inc., 906 F.2d 679, 683 (Fed. Cir. 1990)). However, "statements that a preliminary injunction is a drastic and extraordinary remedy do not imply that it must be rare or practically unattainable in [a] patent case, only that it is not granted as a matter of right; it must be thoroughly justified." Polymer Technologies, Inc. v. Birdwell, 103 F.3d 970, 977 (Fed. Cir. 1996) (emphasis added).
To be entitled to a preliminary injunction, the party moving for preliminary injunction bears the burden of proving that: "(1) it has a reasonable likelihood of succeeding on the merits; (2) it will suffer irreparable harm if the injunction is not granted; (3) the balance of hardships tips in its favor; and (4) an injunction would be consistent with the public interest." Helfix Ltd. v. Blok-Lok Ltd., 208 F.3d 1339, 1350-51 (Fed. Cir. 2000). These factors, taken individually, are not dispositive; rather, the district court must weigh and measure each factor against the other factors and against the form and magnitude of the relief requested. Hybritech, 849 F.2d at 1451. A preliminary injunction should also be denied if the alleged infringer asserts a non-infringement or invalidity defense that the patentee cannot prove "lacks substantial merit." Helfix, 208 F.3d at 1351;Genetech, Inc. v. Novo Nordisk, 108 F.3d 1361, 1364 (Fed. Cir. 1997). With these considerations in mind, we turn to the present motion.
DISCUSSION
As a preliminary matter, during the pendency of this motion, OXO requested an evidentiary hearing in order to facilitate the court in its understanding of the technical aspects relating to the motion. On October 25, 2004, we took OXO's motion under advisement. In examining the parties' papers and physical exhibits of the accused product, we conclude that an evidentiary hearing is unnecessary to aid the court's disposition of the present motion and we deny OXO's motion for an evidentiary hearing.
A. Likelihood of Success on the Merits
The movant bears the burden to "clearly show" that it will likely succeed on the merits with respect to patent validity, enforceability, and infringement. Nutrition 21, 930 F.2d at 870-71.
1. Validity and Enforceability
OXO argues that it will likely succeed on the merits that the `883 patent is valid. Pursuant to 35 U.S.C. § 282, OXO is entitled to the statutory presumption that the `883 patent is valid and to rely on that presumption in order to "clearly show" a reasonable likelihood of success as to the validity of the patent. Roper Corp. v. Litton Systems, Inc., 757 F.2d 1266, 1270 (Fed. Cir. 1985). Zyliss has made no argument that the issued patent is unenforceable, so we assume for purposes of this motion that it is enforceable.
2. Infringement
Relying upon the presumption that the `883 patent is valid, OXO argues that the Zyliss spinner infringes the patent. Under 35 U.S.C. § 271(a), "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefore, infringes the patent."
The court's analysis of infringement involves two step process.Scanner Technologies Corp. v. ICOS Vision Systems Corp., 365 F.3d 1299, 1302 (Fed. Cir. 2004). First, the court must determine the scope and meaning of the asserted claims. Id. Second, the claims as construed by the court are compared to the allegedly infringing device." Id. If the accused product is within the scope of the claims, then the product infringes the patent.Genetech Inc. v. Wellcome Foundation, Ltd., 29 F.3d 1555, 1561 n. 6 (Fed. Cir. 1994). The court is not obligated to conclusively and finally interpret patent claims during a preliminary injunction proceeding. Sofamor Danek Group, Inc. v. DePuy-Motech, Inc., 74 F.3d 1216, 1221 (Fed. Cir. 1996). In construing a patent claim, a court should refer to the intrinsic evidence, that is, the patent specification, the prosecution history, and the other claims in the patent. Vivitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996). Words or terms are given their ordinary and accepted meaning, unless it appears that they are used to mean something else in the claim. Id. at 1582.
a. Literal Infringement
OXO argues that when the accused Zyliss spinner is compared to claim one of the `883 patent, the Zyliss spinner has each element of the claim.
First, Zyliss counters by arguing that the Zyliss spinner does not literally infringe the `883 patent as it does not have a cover that is "removably connected" to the bowl. With regards to the meaning of the phrase "removably connected," we are not convinced that the phrase means something that "essentially rests on the top edge of the bowl and covers the opening of the bowl," as OXO contends.
While OXO points out that the Federal Circuit recently interpreted the meaning of the phrase "operatively connected" inInnova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1117-18 (Fed. Cir. 2004), this does not aid in our determination of the meaning of the phrase "removably connected," as the two phrases are inherently different. InInnova/Pure Water, Inc., the patent in question, involving a water bottle filter assembly, required that the tube be "operatively connected" to the cap. Id. at 1119-21. The court construed this phrase to mean that only that the cap and the tube had to be arranged in a manner capable of performing the filtering function, thus comporting with the meaning of the term "operative." Id. The components did not need "to be affixed in type of tenacious physical engagement shown in the preferred embodiment." Id. However, the ordinary meaning of the phrase "operatively connected" can substantially differ from "removably connected." The use of the term "removably" before the term "connected" implies a more permanent connection than a cover that simply rests on a bowl and is removable as is the case with the Zyliss spinner. Use of the term "removably" also implies a more permanent connection than one arranged in a manner capable of performing the product's function, as in the Innova/Pure Water, Inc. decision. The ordinary meaning of the term "connected" is "joined or linked together." See e.g., WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY 480 (1993). OXO, through its expert Mr. Olson, attempts to equate the term "connected" with different unclaimed terms such as "engages," "surrounds," and "nests." (Olson Dep. pp. 129, 132 (Zyliss Exhibit 28)). The `883 patent makes a clear distinction between the terms "engaged" and "connected." It appears that the word "engaged" in the `883 patent is used to mean mere contact. OXO could have used the term "engaged" in the claim embodiment rather than the word "connected," if OXO intended that the cover solely to make contact with the bowl. By using the term "connected" however, some type of contact more than that of mere contact seems inferred, particularly when predicated by the term "removable."
Analysis of the intrinsic evidence further confirms the conclusion that the ordinary meaning of "removably connected" requires a tighter interface than simply laying one thing on top of another. The specification expressly discloses a "friction fit" between the cover and the bowl of the preferred embodiment, or, put another way, a connection between the cover and the bowl. There is no "friction fit" between the cover and the bowl of the Zyliss spinner. OXO makes mention of the fact that a friction fit or a tight fit is not present in the OXO spinner, but this is irrelevant to our analysis. Our analysis must focus upon the comparison between elements of the patent claim and corresponding elements of the allegedly infringing device. Thus, the Zyliss spinner does not have a cover that is "removably connected" to the bowl.
Next, Zyliss argues that OXO mischaracterizes the brake disc of the Zyliss spinner as constituting part of the lid because the accused product does not have a brake assembly that is "engageable with the lid to apply a frictional force to the lid," as required by claim one. Zyliss contends, based upon the definition provided by its expert Dr. Karvelis, that the ordinary meaning of the term "lid" is "something that covers the opening of a hollow container" and something that "does not contemplate any interconnected or non-connected additional structure." This is significant because the claim states that the brake assembly is engageable with the lid to apply a frictional force to the lid. This language along with analysis of Figure 22 of the `883 patent indicates some form of direct contact between the brake assembly and the lid. Conversely, the Zyliss spinner does not use direct contact between the brake assembly and the lid in order to stop rotation of the basket assembly. Instead, the Zyliss spinner uses indirect contact via the brake disc, which is a separate and distinct apparatus from the lid itself.
The ordinary meaning of the word "lid" is "something that covers the opening of a hollow container." See, e.g., WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY 1305 (1993). OXO states that the "lid" of the Zyliss spinner includes both the brake disc and the clear portion that spins the basket. OXO's assertion fails as OXO does not explain how its description of the "lid" of the accused product takes into account the ordinary meaning of the term or how the intrinsic evidence justifies straying from the ordinary meaning to include other objects that do not fall within the common definition of "lid." When viewing the accused product, it is evident that the lid is the clear plastic object that makes contact with the basket. The lid is secondarily attached to the disc, that in turn makes contact with the brake assembly. To assert that the disc is actually part of the lid itself, constitutes a leap in logic that we are not convinced we should take. b. Doctrine of Equivalents
Next, OXO argues in the alternative that if the Zyliss spinner is held to avoid literally infringing claim one of the `883 patent, the product infringes under the doctrine of equivalents. Under the doctrine of equivalents, even if an element of a patent claim is not literally met by a corresponding element of a particular device, that device may nonetheless infringe the patent claim if the device includes every claimed element or its equivalent. Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 21, 117 S. Ct. 1040, 1045 (1997). The general standard for infringement under the doctrine of equivalents is substantiality. Id. at 40, 117 S. Ct. at 1054. If the differences between the claimed element and the corresponding element of the device are insubstantial, then there is infringement under the doctrine. Id. OXO alleges that the Zyliss spinner performs substantially the same function, in substantially the same way, and achieves substantially the same result as the invention claimed in the `883 patent. Zyliss refutes this argument by asserting that OXO cannot show substantiality between the Zyliss spinner and the claimed elements.
The difference between a cover "removably connected" to a bowl, as claimed in the `883 patent, and a cover that rests on the bowl of the accused product is not insubstantial. In the `883 patent, the summary of the invention indicates that a connection such as a friction fit between the cover and the bowl in order to achieve one-handed operation, is an important objective of the invention. In contrast, the Zyliss spinner requires two hands, one to pull the string actuator and the other to hold the cover against the bowl as a counter-force to the pull of the string. Since one hand is holding the cover to the bowl, there is no need for them to be "connected" as the claim requires. As to this portion of the claim, the accused product is not substantially the same.
Neither does the braking mechanism of the Zyliss spinner operate in substantially the same way as the brake assembly recited in claim one of the `883 patent. The `883 patent describes a brake assembly that applies a frictional force to the lid for stopping rotation of the basket assembly. The braking mechanism of the Zyliss spinner is not substantially the same as it utilizes two braking elements, or pads, that squeeze the two opposing surfaces of the brake disc. According to specifications, the disc interfaces with a one-way clutch mechanism, a hub, a male hexagonal boss, and a female hexagonal coupling to stop the rotation of the basket. As to this portion of the claim, the accused product is not substantially the same.
Finally, while the braking mechanism brings about substantially the same result of stopping rotation of the basket assembly, other differences between the Zyliss spinner and the claimed elements mentioned above are not insubstantial and thus OXO is not likely to show infringement under the doctrine of equivalents.
OXO has not made a clear showing of the likelihood of success on the merits of an infringement claim, either under its literal infringement or doctrine of equivalents theories.
3. Defenses
Even if we were convinced that OXO has shown that it would likely succeed on the merits of an infringement claim, Zyliss has raised various invalidity defenses that appear to have arguable merit. Specifically, Zyliss argues that the `883 patent is invalid under the on-sale bar of 35 U.S.C. § 102(b), for incorrect inventorship under 35 U.S.C. § 102(f), and for obviousness under 35 U.S.C. § 103. While the record must be more fully developed for fair consideration of these invalidity defenses, these arguments are sufficiently raised and supported for purposes of defeating preliminary injunction. Ultimately, OXO has not proved that all three of these defenses "lack substantial merit." See Helfix, 208 F.3d at 1351.
In sum, upon consideration of all of the above, we are unconvinced that OXO has demonstrated that it is likely to succeed on the merits of its infringement claim.
B. Irreparable Harm
To successfully show irreparable harm, the movant must prove that it cannot be compensated with monetary damages. See Sampson v. Murray, 415 U.S. 61, 90 (1974). Irreparable harm cannot be presumed unless there is a "strong showing" of validity and infringement. Chrysler Motors Corp. v. Auto Body Panels of Ohio, Inc., 908 F.2d 951, 954 (Fed. Cir. 1990). OXO relies upon, and is correct that, a clear showing of likely success on the merits entitles a patentee to a rebuttable presumption of irreparable harm. See Jack Guttman, Inc. v. Kopykake Enterprises, Inc., 302 F.3d 1352, 1356 (Fed. Cir. 2002). Zyliss responds that OXO is not entitled to the presumption of irreparable harm as OXO has failed to present a clear showing of both patent validity and patent infringement. We agree with Zyliss' assessment.
Of the cases relied upon by OXO, only one involved a patentee who successfully relied upon a presumption of irreparable harm.Smith Int'l v. Hughes Tool Co., 718 F.2d 1573 (Fed. Cir. 1983). The facts in present case, however, indicate that Smith Int'l is distinguishable. Smith Int'l dealt with patents that were declared valid in a previous proceeding and involved an infringer who admitted that its products were within the scope of the patents at issue. Id. at 1579-80. While the court found that a presumption of irreparable harm existed on those facts, it noted that "[i]n cases where the showing of validity and infringement is less forceful than here, or in cases where equitable or public policy considerations are in favor of the infringer, a movant would have to make a stronger showing of irreparable harm in order to tip the balance of equity in his favor." Id. at 1581 n. 7. Subsequent Federal Circuit decisions have commented on the holding of Smith Int'l. See e.g., Roper Corp., 757 F.2d at 1272 (disagreeing with appellant that a district court had read Smith Int'l too narrowly when distinguishing its facts as not having an earlier determination of patent validity and as not involving an accused infringer that failed to contest infringement). Here, Zyliss has denied that its product infringes upon the `883 patent, and has accordingly presented evidence calling the validity of the `883 patent into question. OXO relies upon the rebuttable presumption of irreparable harm, but this assumes its success regarding the likelihood of success on the merits. However, as discussed earlier, we find that OXO has failed to make a clear showing of the likelihood of success on the merits. Therefore, as OXO has not made a clear showing of patent validity and infringement, it is not entitled to a presumption of irreparable harm. Further, even assuming that OXO were entitled to such a presumption, OXO has failed to clearly show that it is in need of equitable relief, even in the face of possible lost sales, that would render a monetary award inadequate.
C. Balancing of Hardships
A court should deny a preliminary injunction as a remedy if its impact on the enjoined party if granted would be more severe that the impact on the moving party if not granted. Litton Sys., Inc. v. Sundstrand Corp., 750 F.2d 952, 959 (Fed. Cir. 1984).
OXO contends that it has gone to great lengths and has invested substantial sums of time, money, and resources in obtaining the `883 patent and enforcing its exclusive rights, title, and interests therein. OXO further argues that the burden placed upon Zyliss if an injunction were granted would be minimal. Zyliss manufactures and sells many other types of spinners, which are not alleged to infringe the `883 patent and would not be affected by the granting of a preliminary injunction.
Zyliss argues that the balancing of hardships indicates that the impact upon Zyliss if an injunction was granted would be more severe that the impact upon OXO if no injunction were granted. Zyliss points out that the OXO spinner is one of over 500 other products that OXO offers, many of which are completely unrelated to salad spinners. In contrast, Zyliss argues that its business success hinges primarily upon the success of its salad spinners and that it is currently promoting the availability of its new spinners on the front page of its website. Similar to the position proffered by OXO, Zyliss claims that it too has invested a substantial amount of time, money, and effort into the development and marketing of its newest salad spinners and will lose good will, suffer diminished reputation for technological innovation, lose credibility, incur expenses, and lose sales if the injunction is granted.
Both parties have valid claims as to the threat of lost time, lost money, lost good will, diminished reputation for technological innovation, and lost credibility with customers. However, given the relative dominance of salad spinners in the overall product lines of both parties, it appears that the scales tip in favor of Zyliss suffering the greater burden if we granted an injunction. Therefore, consideration of the balance of hardships weighs in favor of Zyliss and constitutes another factor counseling denial of a preliminary injunction.
D. Public Interest
OXO asserts that the public interest is best served when infringement of valid patents is enjoined. See Hybritech, 849 F.2d at 1458. OXO argues that the public interest analysis generally focuses on whether there exists some critical public interest that would be harmed by the grant of a preliminary injunction. See id. OXO stresses that the public's health and welfare are not at issue in the present case and therefore this element requires minimal consideration.
Zyliss argues that granting a preliminary injunction would prevent healthy competition in the marketplace. Zyliss further argues that its product is non-infringing and that it is against the public interest to deprive members of the public of the opportunity to choose between two competing products.
While we are not obligated to conclusively and finally interpret patent claims during a preliminary injunction proceeding, we have found that OXO has failed to clearly show the likelihood of success on the merits. Sofamor Danek Group, Inc., 74 F.3d at 1216. For purposes of this motion, assuming that the `883 patent has not been infringed, it would be against the public interest to deprive members of the public of the opportunity to choose between two competing products. Accordingly, we find that consideration of the public interest factor weighs in favor of Zyliss.
CONCLUSION
For the foregoing reasons, we deny OXO's motion for a preliminary injunction. OXO's motion for an evidentiary hearing is also denied.