HH Robertson, Co. v. United Steel Deck, Inc.
820 F.2d 384, 2 U.S.P.Q.2d 1926 (1987)
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Rule of Law:
A party seeking a preliminary injunction in a patent infringement case must establish a reasonable probability of success on the merits, irreparable harm if the injunction is not granted, that the balance of hardships tips in its favor, and that the injunction serves the public interest. A prior adjudication upholding the patent's validity after a full trial, combined with a strong showing of infringement, creates a presumption of irreparable harm.
Facts:
- H.H. Robertson Company (Robertson) is the owner of U.S. Patent No. 3,721,051 (the '051 or Fork patent), issued on March 20, 1973.
- The patent covers a 'Bottomless Sub-Assembly for Producing an Underfloor Electrical Cable Trench,' a structure used in concrete decks for distributing electrical wiring.
- United Steel Deck, Inc. (USD) and its affiliated company, Nicholas J. Bouras, Inc. (Bouras), began manufacturing and selling similar sub-assemblies for use in concrete decks.
- These sub-assemblies were installed in several buildings, including the Maiden Lane, Daily News, and Blue Cross-Blue Shield buildings.
- Robertson believed that the structures manufactured and sold by USD and Bouras infringed upon its '051 patent.
Procedural Posture:
- H.H. Robertson Company (Robertson) sued United Steel Deck, Inc. (USD) and Nicholas J. Bouras, Inc. (Bouras) in the U.S. District Court for the District of New Jersey, alleging patent infringement.
- Robertson filed a motion for a preliminary injunction to stop USD and Bouras from making, using, and selling the accused products while the case was pending.
- The district court held a four-day evidentiary hearing on the motion.
- The district court granted Robertson's motion for a preliminary injunction, enjoining USD and Bouras from the accused activities.
- USD and Bouras, as appellants, appealed the district court's order granting the preliminary injunction to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Did the district court abuse its discretion in granting a preliminary injunction by finding that the patent holder established a reasonable likelihood of success on the merits regarding patent validity and infringement, irreparable harm, and a favorable balance of equities?
Opinions:
Majority - Pauline Newman
No. The district court did not abuse its discretion in granting the preliminary injunction. To obtain a preliminary injunction, a patentee must establish a reasonable likelihood of success on the merits, irreparable harm, a balance of hardships tipping in its favor, and that the injunction is in the public interest. First, Robertson showed a reasonable likelihood of success on validity, as the court correctly gave substantial weight to a prior federal court decision that upheld the patent's validity after a fully litigated trial. Second, Robertson demonstrated a reasonable likelihood of proving infringement, as the district court's construction of the patent claim term 'bottomless' and its application to the accused devices were not clearly erroneous. Third, irreparable harm is presumed when a patentee makes a clear showing of validity and infringement, a presumption that was not rebutted here. Finally, the district court reasonably balanced the equities and public interest, noting the patent was near expiration and that protecting patent rights serves a strong public policy.
Analysis:
This case solidified the modern standard for granting preliminary injunctions in patent law, confirming that the standard is no more or less stringent than in other areas of law. The decision emphasizes the significant evidentiary weight a court may give to a prior adjudication of the patent's validity, making it easier for a patentee who has already successfully defended their patent to obtain an injunction against a new infringer. Furthermore, it reinforces the principle that irreparable harm is presumed once a strong showing of validity and infringement is made, strengthening a patent owner's ability to secure immediate injunctive relief to protect their right to exclude.
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