March 24, 2008
AG Design sued Trainman Lantern for infringing 7,118,245. The west Washington district court judge granted a preliminary injunction on the likelihood of infringement under doctrine of equivalents (DOE), the accused device missing a claimed feature of multiple plug-in ports. The appeals court found fault on a few fronts.
AG Design & Associates v. Trainman Lantern (TLC) et al (CAFC 2007-1481) (non-precedential)
Drawing the lines:
"To establish entitlement to a preliminary injunction a movant must establish a reasonable likelihood of success on the merits." Somerset Pharms., Inc. v. Dudas, 500 F.3d 1344, 1346 (Fed. Cir. 2007) (citing Nat'l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1325 (Fed. Cir. 2004) ("[A] movant is not entitled to a preliminary injunction if he fails to demonstrate a likelihood of success on the merits."). To establish a likelihood of success on the merits as to patent infringement, AG must show that it will likely prove that TLC infringes at least one valid and enforceable claim of the '245 patent either literally or under the doctrine of equivalents. See Abbott Labs., 473 F.3d at 1201. As the party bearing the burden of proof as to invalidity and unenforceability at trial, TLC can defeat the preliminary injunction by establishing a substantial question as to invalidity or unenforceability. See id.
Prosecution estoppel sucked the wind out of the DOE sails:
In response to a rejection based on prior art during prosecution, AG made a narrowing amendment adding several claim limitations to claim one of the '245 patent, including "a plurality of ports" formed in the reflector. Accordingly, equivalents are presumptively not available with respect to the limitation of "a plurality of ports" formed in the reflector. Biagro W. Sales, Inc. v. Grow More, Inc., 423 F.3d 1296, 1305 (Fed. Cir. 2005) ("If the narrowing amendment was the addition of a new claim limitation, as in the case before us, equivalents are presumptively not available with respect to that limitation.").
AG argued, without rationale, that the "ports" amendment was tangential. The CAFC gave that short shrift.
TLC faulted the district court for not investigating an AG prototype that may have served as self-created prior art. The CAFC agreed.
The district court explained this determination by stating that "the lantern of which Defendant spoke was shown to be a prototype and not the Patented Device." Id... The district court... did not articulate its findings in terms of the prototype lacking any of the limitations of the '245 patent. Preliminary Injunction Order, slip op. at 11. At a minimum, the district court should have made a finding as to whether the prototype contains all of the limitations of any of the asserted claims of the '245 patent.
A non-compete covenant, which AG argued as a basis for maintaining the preliminary injunction, had expired. The CAFC mooted that as thin gruel.
Preliminary injunction vacated. Remanded.
Professor Crouch thought that this should be a precedential opinion. Though a straight-forward decision with little heft, what the appeals court has against adding to the stack of case law is beyond me.
And the good professor reminds that: "under 28 U.S.C. § 1292(c)(1), the grant or denial of a preliminary injunction is immediately appealable to the Federal Circuit."
Posted by Patent Hawk at March 24, 2008 1:42 PM | Injunction
Great article and the summary of the CAFC's ruling was on point. The only comment I have is a correction...this case originated from the District Court in Western Washington and not Wisconsin.
Posted by: marcus mukai at March 25, 2008 4:24 PM
Plaintiff's attorney, Robert Christie, needs to take a patent law primer...or go back to law school and let a second-year law student handle his patent cases! Judge R. Leighton (Western WA District Court) just ruled against AG Design on summary judgment as a matter of law. Trainman Lantern Co. won another round in this battle...pointing out even more that Christie should have conducted an infringement analysis before filing AG Design's lawsuit...but didn't. He should be nailed for sanctions for costing his client and the defendants a whole lot of money for nothing! I'm sure he made out just fine, though.
Posted by: AGD at June 28, 2008 10:51 AM