Opinion
CIVIL ACTION NO. 03-5405
November 19, 2003
MEMORANDUM AND ORDER
Plaintiff seeks a preliminary injunction to prevent the defendant from infringing plaintiff's Patent No. 6,520,862 ("the 862 patent"). Plaintiff asserts that defendant is infringing claims 6 and 7 of that patent.
Claim 6 covers:
"An infant swing comprising:
An upwardly extending frame support post; a swing arm pivotally coupled to an upper end of said frame support post and extending in a downward direction from said upper end of said frame support post; a seat coupled to said swing arm and having an upper seating surface; said swing arm and said frame support post defining a reconfigurable swing area therebetween; and a shield coupled to said seat and extending upwardly from said seat and disposed between said reconfigurable swing area and said seating area." Claim 7, dependent upon claim 6, covers: "The infant swing of claim 6, wherein said shield is formed of open mesh fabric."
In order to obtain a preliminary injunction, plaintiff must establish a reasonable likelihood of success on the merits, irreparable harm if an injunction is denied, a favorable balance of hardships, and absence of adverse impact upon the public interest. Amazon.com v. BarnesandNoble.com, 239 F.3d 1343, 1350 (Fed. Cir. 2001).
The applicable standard of proof is reasonably clear: "A preliminary injunction is a drastic and extraordinary remedy that is not to be routinely granted," Intel Corp. v. USLI System Technologies, 995 F.2d 1566, 1568 (Fed. Cir. 1993). Plaintiff is required to make a clear showing that the patent is valid, enforceable and infringed, Sprinturf v. Southwest Recreational Industries, 277 F. Supp.2d 508, 512 (E.D. Pa. 2003). If defendant raises a substantial question about any of these issues, the injunction must be denied. Amazon.com, 239 F.3d at 1350-51.
After carefully reviewing the evidence presented at the hearing of this matter on November 13, 2003, I have concluded that there are, indeed, substantial questions as to the validity of the patent in suit, as well as substantial questions concerning whether defendant is infringing any valid claim of plaintiff's patent. I am, therefore, unable to state with confidence that plaintiff has a reasonable chance of success on the merits.
Both plaintiff and defendant have long been involved in designing and marketing various juvenile products, including such items as children's swings, baby strollers, portable bassinets, etc. Although plaintiff's patent, having been issued, is presumed to be valid, defendant's witnesses Peter Tuckey and Brian J. Lempia have presented strong evidence to the effect that the patented features of plaintiff's swing would have been obvious to anyone familiar with the industry; that at least some of the features are disclosed in prior art not considered by the patent examiner; and that claim 6 (and therefore dependent claim 7) is, in many respects, invalid for indefiniteness, under 35 U.S.C. § 112. The claims in a patent must be "sufficiently precise to permit a potential competitor to determine whether or not he is infringing." Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003). Defendant concentrates upon the lack of clarity with respect to the terms "upper seating surface," "reconfigurable swing area" and "seating area." There is also, as noted by Mr. Lempia, a lack of clarity as to whether the "shield" is to be coupled with the seat itself, the (undefined) "seating area", or the padded seat cover (if that is what is meant by "upper seating surface." (The specifications state that it would be "undesirable" to attach the shield to the padding which seems to constitute the "upper seating surface.")
Although neither party has mentioned this issue, and it may seem significant to me only because of lack of expertise in construing patents, I note that, according to claim 6, the infant swing in question comprises "an upwardly extending frame support post," whereas my inspection of the physical object itself, and my review of the specifications and accompanying drawings, suggest that plaintiff's device has not one, but two, "upwardly extending frame support posts."
Needless to say, I reach no final conclusions as to any of these matters. My ruling is merely that defendant's challenges to the patent's validity appear sufficiently substantial to require denial of a preliminary injunction. Moreover, while infringement of a patent is presumed to give rise to irreparable harm, it seems reasonably clear in the present case that plaintiff would have an adequate damages remedy if validity and infringement are eventually established.
An Order follows.
ORDER
AND NOW, this day of November 2003, upon consideration of plaintiff's Motion for Preliminary Injunction, and defendant's response, IT IS ORDERED:That the plaintiff's Motion for Preliminary Injunction is DENIED.