United States District Court, E.D. North Carolina, Southern Division
W. FLANAGAN, United States District Judge
matter is before the court on plaintiff's motion for
preliminary injunction. (DE 7). The issues raised have been
briefed fully and in this posture are ripe for adjudication.
For the reasons that follow, plaintiff's motion for
preliminary injunction is denied.
OF THE CASE
initiated this case by complaint filed November 22, 2017,
alleging that defendant's variable compression ammunition
magazine pouches, known as the Polymer Taco pouches
(“accused products”), infringe upon U.S. Patent
No. 9, 795, 210 (“the '210
patent”). Plaintiff was granted this patent in
conjunction with the development of its own variable
compression ammunition magazine pouches, known as the
Hardshell Scorpion pouches.
filed the instant motion on December 1, 2017, seeking an
order prohibiting defendant from further sales of its accused
products. In support of the motion, plaintiff submitted an
affidavit of Scott Evans, president of Edge-Works; articles
from Defense Review and Soldier Systems, mailers for the
softshell and hardshell Scorpion pouches, U.S. Patent
Application No. 14/881, 081; U.S. Patent No. 9, 668, 568;
U.S. Patent Application No. 15/611, 922; U.S. Patent No. 9,
795, 210; printouts of HSG's website; Soldier
Systems' advertisement of the Polymer Taco; Shot Show
Advertisement; November 10, 2017 letter from Edge-Works to
HSG; declaration of Christina Chamberlain, patent attorney;
and a claims chart.
December 14, 2017, the court held a telephonic conference
with the parties and, following the conference, entered an
order denying plaintiff's motion as to its request for
temporary restraining order and directing defendant to file a
response to plaintiff's motion for preliminary injunction
by December 18, 2017. Defendant filed a timely response and
submitted in support of its response the following:
manually-filed nylon and polymer Taco pouches; December 1-3,
2017 email exchange between the parties; declaration of
Matthew J. Gadams, managing member of HSG; U.S. Patent No. 9,
759, 536; article from Soldier Systems; declaration of
Frederick W. Storms, Jr., director of research and
development at HSG; declaration of Darrell A. Fruth,
attorney; dictionary definition of “covered”; and
various prosecution history records.
receiving leave to file a reply to defendant's response
in excess of 10 pages, plaintiff submitted reply to
defendant's response on December 29, 2017. In support of
its reply, plaintiff offered supplemental declaration of
Scott Evans; confirmatory patent assignment; filing receipt
of confirmatory patent assignment at the Patent and Trademark
Office (“PTO”); declaration of Stephen Kepper,
attorney; dictionary definition of “cover”; U.S.
Patent No. 3, 053, 005; U.S. Patent Application No. 14/770,
855; and various prosecution history records.
and defendant both manufacture and sell tactical gear,
including ammunition magazine pouches, marketed to people
serving in the military, law enforcement, and individual
2014, plaintiff released its line of Hardshell Scorpion
pouches. Additionally, on October 13, 2014, plaintiff filed
provisional patent application 62/063, 133 (“the
'133 application”). On October 12, 2015, plaintiff
filed non-provisional application 14/881, 081(“the
'081 application”).This non-provisional application
matured into U.S. Patent No. 9, 668, 568 (“the '568
patent”) on June 6, 2017. Both the '081 application
and '568 patent are entitled “expandable carry
pouch with variable compression” and include Figure 3
reproduced below in conjunction with the '210 patent.
the '081 application was pending, plaintiff filed a
continuation application 15/611, 922 (the '922
application”) of the '081 application on June 2,
2017. This continuation application matured into
the instant patent at issue, the '210 patent, on October
of the '210 patent describes:
1. An expandable carry carrier defining an interior
compartment defined by
a. a front wall with an interior and exterior surface with
apertures along a perimeter of the front wall;
b. a back wall opposed to the front wall with an interior and
exterior surface with apertures along a perimeter of the back
c. a pair of opposing side walls;
d. at least one covered recessed vertical channel
molded into the interior surface of the front or back wall
between the apertures along the perimeter of the front or
back wall extending longitudinally along the length of the
front or back wall with openings on opposite ends
and molded into the front wall or back wall; and
e. a top open end; wherein the front wall and back wall are
compressed towards one another using a binding device weaved
or laced through the apertures in the perimeter of the front
and back wall and the recessed vertical channel and the
openings of the vertical channel.
('210 patent (DE 8-9) col. 4 ll. 28-47 (emphasis added)).
stated above, the '210 patent contains a limitation for
“at least one covered recessed vertical channel . . .
with openings on opposite ends.” In Figure 3 found
below of the '210 patent the notation “70” is
used to identify vertical channels.
(Id. at Figure 3).
defendant released its line of Taco ammunition magazine pouch
products made primarily of nylon fabric. On or around
November 6, 2017, defendant introduced its accused products,
the Polymer Taco pouches, which plaintiff alleges infringes
its '210 patent. Below are images of the front and back
of one of defendant's accused products:
Standard of Review
grant or denial of a motion for preliminary injunction in the
context of patent infringement litigation is in the
discretion of the district court. See 35 U.S.C.
§ 283. A preliminary injunction is “an
extraordinary remedy that may only be awarded upon a clear
showing that the plaintiff is entitled to such relief . . .
.” Winter v. Nat. Res. Def. Council, Inc., 555
U.S. 7, 24 (2008). “A plaintiff seeking a preliminary
injunction 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.” Id. at 20. Although no single
factor is dispositive as to the issuance of a preliminary
injunction, “a movant cannot be granted a preliminary
injunction unless it establishes both of the first
two factors, i.e., likelihood of success on the
merits and irreparable harm.” Amazon.com, Inc. v.
Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir.
2001) (emphasis in original).
order to establish a likelihood of success on the merits,
plaintiff must show, in light of the presumptions and burdens
that will inhere at trial, that 1) plaintiff will likely
prove that defendant infringed the '210 patent, and 2)
the infringement claim will likely survive any challenges by
defendant to the validity and enforceability of the '210
patent. See Genentech, Inc. v. Novo Nordisk, 108
F.3d 1361, 1364 (Fed. Cir.1997). An accused infringer
“can defeat a showing of likelihood of success on the
merits by demonstrating a substantial question of validity or
infringement.” Trebro Mfg., Inc. v. Firefly Equip.,
LLC, 748 F.3d 1159, 1165 (Fed. Cir. 2014).
entails a two-step analysis. First, the court must determine
the meaning and scope of the patent claims asserted to be
infringed. See Markman v. Westview Instruments,
Inc., 52 F.3d 967, 976 (Fed. Cir.1995). This first step
is commonly called claims construction. Id. Second,
the asserted infringed claim “as properly construed
must be compared to the accused device or process.”
Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1302
construction seeks to ascribe the ordinary and customary
meaning to claim terms as a person of ordinary skill in the
art would have understood them at the time of
invention.” MasterMine Software, Inc. v. Microsoft
Corp., 874 F.3d 1307, 1310 (Fed. Cir. 2017) (citing
Phillips v. AWH Corp., 415 F.3d 1303, 1312-14 (Fed.
Cir. 2005) (en banc)). “[T]he claims themselves provide
substantial guidance as to the meaning of particular claim
terms.” Id. (citing Phillips, 415
F.3d at 1314). In addition, “the person of ordinary
skill in the art is deemed to read the claim term not only in
the context of the particular claim in which the disputed
term appears, but in the context of the entire patent,
including the specification.” Id. (citing
Phillips, 415 F.3d at 1313). But “[w]hile we
read claims in view of the specification, of which they are a
part, we do not read limitations from the embodiments in the
specification into the claims.” Id. (citing
Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d
1367, 1371 (Fed. Cir. 2014)).
the specification is the principal source of the meaning of a
disputed term, the prosecution history may also be relevant.
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996). “The prosecution history . . .
consists of the complete record of the proceedings before the
PTO and includes the prior art cited during the examination
of the patent. Like the specification, the prosecution
history provides evidence of how the PTO and the inventor
understood the patent.” Phillips, 415 F.3d at
1317 (citation omitted).
second step of the infringement analysis, the properly
construed patent claims are compared to the allegedly
infringing product. In order to show infringement, plaintiffs
must show that each element of the patent claims is present
in the accused device either literally or under the doctrine
of equivalents. See Catalina Marketing Int'l v.
Coolsavings.com, 289 F.3d 801, 812 (Fed. Cir. 2002).
“To establish literal infringement, all of the elements
of the claim, as correctly construed, must be present in the
accused system.” TechSearch, L.L.C. v. Intel
Corp., 286 F.3d 1360, 1361 (Fed. Cir. 2002). In order to
establish infringement under the doctrine of equivalents,
plaintiffs must show that any differences between the accused
product and the patent claims are insubstantial. See
Mas-Hamilton Group v. LaGard Inc., 156 F.3d 1206, 1212
Effective Filing Date
the court must resolve the dispute between the parties as to
the effective filing date of the '210 patent to identify
the scope of potentially invalidating prior art. The
effective filing date is the “filing date of the
earliest application for which the patent or application is
entitled . . . to a right of priority.” 35 U.S.C.
§ 100(i). A patent's effective filing date, the
“priority date, ” is usually the date on which
the patent application is filed with the PTO, unless the
patentee claims the benefit of an earlier-filed application.
See, e.g., Cordis Corp. v. Boston Scientific
Corp., 561 F.3d 1319, 1331-32 (Fed. Cir. 2009).
“Determination of a priority date is purely a question
of law if the facts underlying that determination are
undisputed.” Bradford Co. v. Conteyor N. Am.,
Inc., 603 F.3d 1262, 1268 (Fed. Cir. 2010) (citation
patent application for the '210 patent states as the
first sentence in its specification that that it is a
continuation of the '081 application, filed on October
12, 2015 and that the '081 application claims the benefit
of the '133 application filed October 13, 2014. (DE 8-8
at 8).However, on the application data sheet
(“ADS”) submitted in conjunction with a patent
application, plaintiff states only that ...