United States District Court, D. Nevada
EMERGENCY MOTION FOR PRELIMINARY INJUNCTION [DOC. 6] AND GRANTING IN PART MOTION
TO DISREGARD CERTAIN REPLY MATERIALS OR, IN THE ALTERNATIVE, FOR LEAVE TO FILE A
SUR-REPLY [DOC. 32]
JENNIFER A. DORSEY, District Judge.
This is a patent-infringement case in which Gita Green, Inc. contends that WePe Industry, Inc. is infringing on its Air Filter Blaster patent no. 8, 668, 782 B2 (the "782 Patent") by manufacturing the WePe Air Filter Cleaner. Gita Green moves for a preliminary injunction enjoining WePe from "making, using, selling, offering to sell, or importing" the allegedly infringing product. Having considered all of the parties' submissions and their presentations at the September 3, 2014, oral argument on this motion, I find that defendant WePe has raised substantial issues of invalidity and that plaintiff has not provided me with enough evidence to perform even a tentative claim construction. These deficiencies prevent me from concluding at this time that Gita Green is likely to succeed on the merits of its claim, and I deny the preliminary injunction motion. Doc. 6.
Gita Green, Inc. is the assignee and owner of the 782 Patent, entitled "Apparatus and Method for Cleaning Air Filters, " issued on March 11, 2014. Doc. 1-1; 25-1 at 10. Plaintiff contends that the "Air Filter Blaster, " invented by Gita Green's President Dennis Grieve, is the commercial embodiment of the 782 Patent, and that Salmon River Innovations, Inc. is the manufacturer of this product and has the exclusive right to sell it in the United States. Doc. 6-1 at 3. Grieve attests that he first came up with the idea for the Air Filter Blaster as a construction foreman in 2007. Id. "After years of trial and error revising the design and fabricating the apparatus, " he had a functioning model in May 2011 and Salmon River started manufacturing it in September 2011. Id. at 4. The USPTO issued the 782 Patent on March 11, 2014. Doc. 6-1 at 9.
Shawn Peterson, President and owner of WePe Industry, LLC, has his own air-filtercleaning-apparatus invention story. He attests that he spent two years developing the WePe Air Filter Cleaner before bringing it to market in August 2012. Doc. 16-2 at ¶ 2, 23. Peterson himself has two patent applications related to the Air Filter Cleaner pending; the first was filed on August 3, 2012. Id. at ¶ 23.
In its approximately three-page complaint, Gita Green alleges that WePe's product has infringed at least claims 2, 3, 18, and 23 of the 782 Patent. Doc. 1 at 2. In its emergency motion for preliminary injunction, Gita Green summarily argues that the infringement relates to claims 1, 2, and 18 of the patent, Doc. 6 at 10, and in its reply, Gita Green distilled its infringement arguments down to one theory: the Air Filter Cleaner infringes because it has "a member having a hollow interior communicating a pressurized fluid flow and defining a longitudinal axis of said apparatus, " an essential element of the patented apparatus. Doc. 25 at 9; Doc. 1-1 at 9, column 4. By the time of oral argument, the theory was even more narrow: the infringement occurs because WePe's product uses a rigid pipe, which defines the apparatus's longitudinal axis, though the length of WePe's pipe differs from that on Gita Green's product. Gita Green argues that "claim 1 requires that the relevant member actually define the longitudinal axis of the claimed apparatus, " and a "flexible" or hose-like "member with no static axis line simply cannot" do that. Doc. 36 at 6.
WePe characterizes Gita Green's most recent iteration of its shifting infringement theory as "a grasping attempt to save the validity of claim 1 by pretending that the claim requires a relatively long' and rigid' member to define the longitudinal axis of the apparatus" because "[t]here are no such long' and rigid' restrictions... in the actual claim language." Doc. 37 at 5. WePe further points out that Gita Green's "own patent specification directly contradicts its argument" because it "contemplates that a flexible member, such as a hose, can serve as" the member. Id. at 4.
The Patent and Trademark Act authorizes courts to issue injunctions to prevent infringement during the pendency of a determination on the merits. A preliminary injunction is an "extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief." A court may only grant a preliminary injunction upon a showing that: (1) the petitioner is likely to succeed on the merits of his complaint; (2) irreparable harm will result in the absence of an injunction; (3) the balance of equities favors an injunction; and (4) an injunction is in the public's interest.
A. Establishing a Likelihood of Success on a Patent-Infringement Claim
To establish a likelihood of success on the merits of a patent-infringement claim, a plaintiff must demonstrate that it can "more likely than not" establish the presence of infringement. If the party opposing the injunction raises "a substantial question concerning infringement or invalidity [of the patent], meaning that it asserts a defense that [plaintiff] cannot prove lacks substantial merit, " then a plaintiff is not likely to succeed on the merits of its patent infringement claim, and a preliminary injunction should not issue. Both infringement claims and invalidity-by-anticipation defenses require the court to perform a two-part inquiry to assess the plaintiff's likelihood of success on the merits. The first step of each is to "determin[e] the meaning and scope of the patent claims." I turn first to the invalidity analysis and use that analysis to resolve whether Gita Green is likely to succeed on the merits of its infringement action.
B. Plaintiff Has Not Demonstrated the Likelihood of Success on the Merits
35 U.S.C. § 102(a)(1) provides that "A person shall be entitled to a patent unless... the claimed invention was patented... before the effective filing date of the claimed invention." "A determination that a patent is invalid as being anticipated under 35 U.S.C. 102 requires a finding that each and every limitation is found either expressly or inherently in a single prior art reference." "[W]hile the burden of proving invalidity is with the party attacking validity, the party seeking the injunction retains the burden of showing a reasonable likelihood that the attack on the patent's validity would fail." However, because an issued patent is presumed valid, both as a whole and on a claim-by-claim basis,  the movant need only point to the fact the patent was issued to shift the burden to the non-movant to "identify any persuasive evidence of invalidity." Because "[v]ulnerability is the issue at the preliminary injunction stage, " a showing of a substantial question of invalidity ...