United States District Court, D. Oregon
WORLD CLASS TECHNOLOGY CORPORATION, an Oregon corporation, Plaintiff,
ORMCO CORPORATION, a Delaware corporation, Defendant
[Copyrighted Material Omitted]
For World Class Technology Corporation, an Oregon corporation, Plaintiff: Brenna Kristine Legaard, LEAD ATTORNEY, Jay R. Smith-Hill, Peter D. Hawkes, Susan K. Eggum, Lane Powell PC, Portland, OR.
For Ormco Corporation, a Delaware corporation, Defendant: Christopher B. Mead, LEAD ATTORNEY, PRO HAC VICE, London & Mead, Washington, DC; Gregory F. Ahrens, Lisa M.A. Nolan, Paul J. Linden, LEAD ATTORNEY, PRO HAC VICE, Wood, Herron & Evans, L.L.P., Cincinnati, OH; Todd M. Siegel, LEAD ATTORNEY, Kristen P. Reichenbach, Klarquist Sparkman, LLP, Portland, OR.
For Ormco Corporation, a Delaware corporation, Counter Claimant: Christopher B. Mead, LEAD ATTORNEY, PRO HAC VICE, London & Mead, Washington, DC; Gregory F. Ahrens, Lisa M.A. Nolan, Paul J. Linden, LEAD ATTORNEY, PRO HAC VICE, Wood, Herron & Evans, L.L.P., Cincinnati, OH; Todd M. Siegel, LEAD ATTORNEY, Klarquist Sparkman, LLP, Portland, OR.
For World Class Technology Corporation, an Oregon corporation, Counter Defendant: Brenna Kristine Legaard, LEAD ATTORNEY, Jay R. Smith-Hill, Peter D. Hawkes, Susan K. Eggum, Lane Powell PC, Portland, OR.
OPINION AND ORDER
JOHN V. ACOSTA, United States Magistrate Judge.
World Class Technology Corporation (" WCT" ) seeks declaratory judgment of noninfringement of five patents owned by Ormco Corporation (" Ormco" ). Ormco asserts a counterclaim of infringement of its U.S. Patent No. 8,393,896 (" the '896 Patent" ), a sixth patent now the subject of this litigation. Relevant to the present motion, Ormco accuses WCT of marketing an infringing product, the H4 bracket. Ormco now moves for a preliminary injunction to halt sales of the allegedly infringing H4 bracket. The court concludes that Ormco has not met its burden to establish a likelihood of success on the merits of its infringement claim. Accordingly, Ormco has failed to make the showing necessary to justify a preliminary injunction and the motion is denied.
The '896 Patent is the latest in a series of patents that cover self-ligating orthodontic bracket technology. Self-ligating brackets differ from traditional brackets in that they permit attachment of the wire, known as the archwire, and the bracket without the use of traditional ligatures, such as rubber bands or additional wires. Instead, the self-ligating bracket features a slot with a sliding cover that permits an orthodontist to place the archwire in the slot and to secure it in the slot by sliding the cover into the closed position.
Ormco is well-established in the United States orthodontic market and possesses a loyal customer base and a positive reputation. Ormco owns several patents that feature self-ligating bracket technology and has developed a line of brackets known as the Damon brackets, named after inventor Dr. Dwight Damon. WCT, formerly a manufacturer of Ormco brackets, is now a competitor of Ormco and produces its own self-ligating bracket, the H4 bracket. According to WCT, the H4 bracket uses different manufacturing technology that gives it a competitive advantage over Ormco's brackets.
Ormco claims that two of its former employees, Dr. Thomas Pitts and Dr. Duncan Brown, have been instrumental in developing and promoting the H4 bracket, though neither doctor is currently employed by WCT. Ormco nonetheless attributes mach of the harm it has allegedly suffered as a result of the H4 bracket to the activities of these two individuals. Ormco also alleges collaboration between WCT and the doctors with regard to promotion of the H4 bracket and Ormco's proprietary information. According to Ormco, the H4 bracket's presence in the market has caused lost sales, price erosion, and damage to its customer relationships. Ormco does not currently market a product that embodies the technology covered by the '896 Patent.
The Patent and Trademark Act specifically authorizes a preliminary injunction in a patent case to prevent infringement pending a ruling on the merits. 35 U.S.C. § 283 (2013). This inquiry is governed by Federal Circuit law. Hybritech, Inc. v. Abbott Laboratories, 849 F.2d 1446, 1451 n.12 (Fed. Cir. 1988). In the
patent context, " [t]he four factors relevant to the district court's decision to grant or deny a preliminary injunction are[:] '(1) the likelihood of the patentee's success on the merits; (2) irreparable harm if the injunction is not granted; (3) the balance of hardships between the parties; and (4) the public interest.'" Abbott Labs. v. Andrx Pharms., Inc., 473 F.3d 1196, 1200-1201 (Fed. Cir. 2007) (quoting Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331, 1338-39 (Fed. Cir. 2003)). " Although the factors are not applied mechanically, a movant must establish the existence of both of the first two factors to be entitled to a preliminary injunction." Altana Pharma AG v. Teva Pharms. USA, Inc., 566 F.3d 999, 1005 (Fed. Cir. 2009) (citing Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001)). Thus, " because 'a movant must establish both a likelihood of success on the merits and irreparable harm . . . the district court may deny a preliminary injunction based on the movant's failure to establish either [likelihood of success on the merits or irreparable harm] without making additional findings respecting the other factors.'" Texas Instruments Inc. v. Tessera, Inc., 231 F.3d 1325, 1329 (Fed. Cir. 2000) (quoting Reebok Int'l Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1556 (Fed. Cir. 1994)). Finally, " [a] preliminary injunction is a 'drastic and extraordinary remedy that is not to be routinely granted.'" National Steel Car, Ltd. v. Canadian Pacific Railway, Ltd., 357 F.3d 1319, 1324 (Fed. Cir. 2004) (quoting Intel Corp. v. ULSI Sys. Tech., Inc., 995 F.2d 1566, 1568 (Fed. Cir. 1993)).
The parties' respective briefing and arguments make clear that the success of this motion turns on whether Ormco is likely to succeed on the merits of its infringement claim against WCT and, more specifically, the court's construction of " support surface." Ormco concedes that if the court adopts WCT's construction, its infringement claim will fail; WCT concedes that, under its own construction of " support surface," the patent is valid on all challenged grounds. It is well-established that " the patentee seeking a preliminary injunction in a patent infringement suit must show that it will likely prove infringement, and that it will likely withstand challenges, if any, to the validity of the patent." Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1376 (Fed. Cir. 2009) (emphasis added). Accordingly, upon a finding of noninfringement, the court need not examine validity.
A. Principles of Claim Construction
" It is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The analysis of a patent infringement action involves two steps: (1) the proper construction of the asserted claim; and (2) a determination of whether the accused method or product infringes the claims as properly construed. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). " To ascertain the scope and meaning of the asserted claims, we look to the words of the claims themselves, the specification, the prosecution history, and any relevant extrinsic evidence." Retractable Technologies, Inc. v. Becton, Dickinson and Co., 653 F.3d 1296, (Fed. Cir. 2011) (citing Phillips, 415 F.3d at 1315-1317).
In construing claim language, the words of a claim " are generally given their ordinary and customary meaning[.]" Vitronics Corp. v. Conceptronic, Inc.., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application. Phillips, 415 F.3d at 1313. " In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Id . at 1314.
The court looks at the words of the claims themselves, both asserted and unasserted. Id . " [T]he context in which a term is used in the asserted claim can be highly instructive." Id . For example, the Federal Circuit has consistently held that interpreting a claim term in a manner that renders subsequent claim language superfluous is improper. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (holding that a definition that renders claim language superfluous is " a methodology of claim construction that this court has denounced" ); see also Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (" A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so." ). Similarly, the doctrine of claim differentiation recites the principle that the limitations in each claim are presumed to be distinct from one another. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) (holding that the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim).
However, the claims " do not stand alone[,]" Phillips, 415 F.3d at 1315, and " must be read in view of the specification, of which they are a part." Markman, 52 F.3d at 978. Accordingly, the specification " is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582. The specification is especially important because " a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history." Id . As such, " it is always necessary to review the specification to determine whether the inventor has used any terms in a manner inconsistent with ...