United States District Court, D. Oregon, Portland Division
ROBERT M. LYDEN, Plaintiff,
adidas AMERICA, INC., a Delaware corporation, adidas AG, a German entity, adidas INTERNATIONAL MARKETING B. V. a Dutch entity, THE FINISH LINE INC., an Indiana corporation, FOOT LOCKER, INC., a New York corporation, and DICK'S SPORTING GOODS, INC., a Delaware corporation, Defendants.
OPINION AND ORDER
MICHAEL W. MOSMAN, District Judge.
On January 14, 2015, Plaintiff Robert Lyden filed a Motion for Preliminary Injunction . Mr. Lyden seeks to enjoin Defendants and their officers, directors, employees, agents, affiliates, divisions, branches, subsidiaries and all others acting in concert with Defendants or on their behalf from making, using, or selling the infringing adidas shoes, and in particular, the adidas Springblade shoes, in the United States.
"A preliminary injunction is an extraordinary and drastic remedy, one that should not be granted unless the movant, by a clear showing, carries the burden of persuasion.'" Lopez v. Brewer, 680 F.3d 1068, 1072 (9th Cir. 2012) (quoting Mazurek v. Armstrong, 520 U.S. 968, 972 (1997)). To obtain a preliminary injunction, the movant "must establish  that he is likely to succeed on the merits,  that he is likely to suffer irreparable harm in the absence of preliminary relief,  that the balance of equities tips in his favor, and  that an injunction is in the public interest." Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1144 (9th Cir. 2011) (internal quotation marks omitted) (reversing preliminary injunction); see also Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7, 20 (2008); World Class Tech. Corp. v. Ormco Corp., 964 F.Supp.2d 1273, 1277 (D. Or. 2013) (denying purported patent owner's motion for preliminary injunction).
I. Likelihood of Success on the Merits
A. Trademark Claims
With respect to Mr. Lyden's trademark claims, there are serious questions regarding whether or not Mr. Lyden has any enforceable trademark rights. It is unclear whether or not Mr. Lyden's purported uses of the claimed marks in commerce are sufficient to establish protectable interests in the mark. As discussed in my Opinion and Order , Mr. Lyden has only ever tried to market and sell his Springshoes to companies in the footwear industry; he has never marketed or sold them to the general public. In addition, the only sales of the Springshoe were in connection with a 2002 Intellectual Property and Prototype Agreement with Nike, Inc., and only about a dozen pairs were sold. Given the current state of the law, it is unclear whether or not these actions constitute a prior "use in commerce" sufficient to create protectable rights in the Springshoe marks. See 15 U.S.C. § 1127. Although it is certainly possible that Mr. Lyden will win on the merits, he has failed to show that it is likely he will win, and therefore this factor weighs against Mr. Lyden's request for a permanent injunction with respect to his trademark claims.
B. U.S. Patent No. 6, 449, 878
With respect to the alleged infringement of patent No. 6, 449, 878 ("'878 patent"), Mr. Lyden has not shown he is likely to win on the merits. Defendants argue Mr. Lyden is not likely to win on the merits because the '878 patent's claims are indefinite and therefore the patent is invalid, and even if the claims were definite, the Springblade shoe lacks the claimed elements.
Claims 27 and 30 require a "transverse axis" for the "article of footwear" and a "transverse axis" for the "inferior spring element." U.S. Patent No. 6, 449, 878 claims 27, 30 (filed Sep. 17, 2002). The claims go on to require "greater concavity downwards adjacent said transverse axis on said medial side than on said lateral side." Id. (emphasis added). Defendants argue that the claims are indefinite because it is impossible to tell which transverse axis "said transverse axis" applies to. In the face of the ambiguity they allege, Defendants propose two potential interpretations of claims 27 and 30, and argue that the Springblade shoes fail to infringe either of those interpretations. Mr. Lyden argues that although the claims appear to refer to two separate transverse axes, they in fact are only referencing one transverse axis, and therefore the claims are not indefinite. Mr. Lyden then applies his interpretation of the claims, and argues that the Springblade shoe embodies each claim of the '878 patent, thus infringing it.
At this stage, it is unclear which party's interpretation of the claims is correct. Both sides make valid arguments in favor of their respective interpretations-neither position is without merit. I am not yet in a position to be able to choose between the parties' competing claim constructions. I believe making that choice would be premature without the benefit of a Markman hearing, and the accompanying briefing. I believe that claims 27 and 30 are sufficiently vague at this stage such that Mr. Lyden has failed to show that he is likely to win on the merits with respect to his '878 patent infringement claim.
C. U.S. Patent No. 8, 209, 883
With respect to the alleged infringement of patent No. 8, 209, 883 ("'883 patent"), Mr. Lyden has not shown he is likely to win on the merits. All of the claims of the '883 patent were rejected upon reexamination. See Roettig Decl. [52-3] at 1. Although the decision is on appeal to the Patent Trial and Appeal Board, I agree with Defendants' argument that this rejection raises a substantial question regarding the validity of the '883 patent. Given this substantial question of ...