Mytee Products v. Harris Research et al (CAFC 2010-1207, -1226) nonprecedential; Judges Bryson (author), Mayer and Gajarsa

The CAFC portrays that Mytee's lawyers were lacking.

Each party filed summary judgment motions on invalidity. Mytee argued that the claims were anticipated by four prior art references known as Rowan, Campbell, Wood, and Bjorkman. Harris moved for summary judgment of non-anticipation on each of those references. The district court determined that the Rowan and Campbell references failed to disclose liquid extraction nozzles, and the court therefore granted Harris's motion with respect to those references. With respect to the Wood and Bjorkman references, the district court denied both parties' summary judgment motions on anticipation.

Harris also moved for summary judgment on obviousness. Harris argued that summary judgment was warranted because Mytee's validity expert, James Sakaguchi, had addressed only anticipation and because Mytee had pointed to no other evidence on obviousness. Mytee responded that it did not need to offer expert testimony on obviousness, because "the art presented in this case was readily understandable." Instead, Mytee submitted a claim chart for some of the claims from the '577 patent that identified certain claim limitations in each of the four pieces of prior art. Without elaboration, Mytee asserted that "it would have been obvious" to combine the elements found in different references and that "one of ordinary skill in the art would have been motivated" to combine the teachings of different references.

The district court granted summary judgment of nonobviousness. The court explained that "[t]he 'evidence' of obviousness offered by Mytee, in support of a defense that requires undisputed clear and convincing evidence, is little more than conclusory assertions, gross generalities, and unsupported assumptions made by counsel."

The jury found that Mytee infringed each of the claims at issue and that none of the claims were anticipated by Wood or Bjorkman. The jury awarded Harris $36,165 in damages based on a reasonable royalty calculation.

After the jury reached its verdict on infringement and validity, Harris moved for a permanent injunction. It argued that sales of Mytee's infringing Banana Glides would cause it irreparable harm based on indirect competition in the market for carpet-cleaning service between Mytee's customers and Harris's franchisees. The district court found that Mytee's continued sales of the infringing devices would cause irreparable harm to Harris and entered a permanent injunction. Mytee appealed from the order issuing the injunction.

Mytee's lawyers bet on the Rowan and Campbell references on appeal. A bad bet, partly because it was not the best choice of prior art, and partly owing to plutocratic corruption by the courts. Harris is owned by Home Depot. Mytee is a pipsqueak company. Might makes right.

Although Rowan states that the apertures are "exposed . . . to freshly dampened carpet," it does not teach that fluid is pulled through the apertures.

Rowan, an Australian patent, "discloses a vacuum-head with apertures," the court observed. What could the apertures be for except sucking fluid?! What's obvious, besides the prior art being sufficiently on-point, is the court disregarding evidence.

Campbell was a vacuum head for "for cleaning . . . dandruff, or loose bits of hair from the scalp and adjacent areas." Poor choice of prior art by counsel.

A document prepared by Patent Hawk shows the '892 and '577 Harris patents invalid, using better prior art than Mytee lawyers employed. Mytee's attorneys offered nothing of Patent Hawk caliber. Instead, Mytee spit second-rate art and a vacuous "inherency" argument.

Mytee relies on what it contends is a presumption of inherency recognized by this court in In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997), given that Campbell's structure is similar to the structure of the patented device. The Schreiber case, however, did not establish a presumption of inherency for issued patents. It held only that after establishing a prima facie case of anticipation, an examiner can shift the burden to the applicant "to show that the prior art structure did not inherently possess the functionally defined limitations of the claimed apparatus." Id. at 1478. Second, Mytee's argument, if accepted, would enable it to circumvent a limitation that Mytee itself proposed during claim construction. Although "the recitation of a new intended use for an old product does not make a claim to that old product patentable," id. at 1477, Mytee waived any inherency arguments when it proposed a functional definition for a structural limitation.

Mytee was clearly not the party in favor. But the courts' characterizations of Mytee's arguments are of incompetent counsel.

Mytee also appeals from the district court's grant of summary judgment of nonobviousness. Mytee argues that Harris, as the moving party, bore the initial burden of proving that there are no genuine issues of material fact. Because Harris did not submit any evidence on obviousness, Mytee contends that Harris did not meet its burden and that the district court incorrectly required Mytee to submit evidence demonstrating a genuine issue of material fact.

Mytee has misstated the standard that applies to the party moving for summary judgment when the nonmoving party bears the ultimate burden of proof at trial. As the moving party, Harris bore "the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of 'the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,' which it believes demonstrate the absence of a genuine issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Harris met that burden by informing the court that Mytee had offered no evidence or reasoned argument explaining why it would have been obvious to combine the teachings of at least two of the Wood, Bjorkman, Rowan, and Campbell references. At that point, the burden shifted to Mytee, as the party with the ultimate burden of proof on obviousness, to demonstrate why it would have been obvious to combine the references. That does not mean that Mytee was necessarily required to submit expert testimony. Centricut, LLC v. Esab Grp., Inc., 390 F.3d 1361, 1369 (Fed. Cir. 2004). But "[b]road conclusory statements" alone are insufficient. Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1372 (Fed. Cir. 2000). Upon review of Mytee's submissions, we agree with the district court's characterization that its obviousness arguments are nothing more than "conclusory assertions, gross generalities, and unsupported assumptions made by counsel." Mytee failed to provide any reason why a person of ordinary skill would have been motivated to combine the references.

The injunction was justified by competitive pressure.

The court found that the indirect competition would cause irreparable harm to Harris because Harris's patented technology was almost exclusively used by its franchisees. Moreover, its franchisees used the technology as their primary tool for cleaning carpets. Mytee does not dispute either of those facts. Instead, it argues that there was no evidence in the record showing that Harris's franchisees would be harmed. But Harris submitted evidence demonstrating that its franchisees relied on the advantages of its patented technology to gain an edge in the marketplace. Based on that showing, it was not an abuse of discretion for the court to conclude that the market share enjoyed by Harris's franchisees would be threatened by the presence of a competitor using the same technology.

Mytee also argues that the district court erred by failing to consider Harris's delay in moving for an injunction. Mytee's claim of delay refers to Harris's decision not to seek a preliminary injunction. While we have held that delay in seeking an injunction is a factor to be considered in determining whether to issue a preliminary injunction, we have never held that failure to seek a preliminary injunction must be considered as a factor weighing against a court's issuance of a permanent injunction. See Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1457 (Fed. Cir. 1988) ("The period of delay exercised by a party prior to seeking a preliminary injunction . . . . is but one circumstance that the district court must consider in the context of the totality of the circumstances [in entering a preliminary injunction]."). Mytee has failed to persuade us that we should adopt such a rule. There are significant differences in the requirements and uses of preliminary and permanent injunctions. See Lermer Ger. GmbH v. Lermer Corp., 94 F.3d 1575, 1577 (Fed. Cir. 1996) ("[Preliminary and permanent injunctions] are distinct forms of equitable relief that have different prerequisites and serve entirely different purposes."). Moreover, adopting a rule such as that proposed by Mytee would likely result in a substantial increase in the number of requests for preliminary injunctions; in many cases, such requests would be filed not because of the need for preliminary injunctive relief, but merely to protect the patent owner's ultimate right to a permanent injunction. Accordingly, we reject Mytee's "delay" argument and conclude that the district court did not abuse its discretion in entering a permanent injunction in this case.

Affirmed.

This is another instance of invalid patents issued by the PTO raising costs to consumers by destroying competition, and of the courts ignoring evidence to bolster corporate power. It is also a caution to companies to retain competent counsel, which is much easier said than done.