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Edge-Works Manufacturing Co. v. HSG, LLC

United States District Court, E.D. North Carolina, Southern Division

January 11, 2018

HSG, LLC, Defendant.


          LOUISE W. FLANAGAN, United States District Judge

         This 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.[1]


         Plaintiff 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”).[2] Plaintiff was granted this patent in conjunction with the development of its own variable compression ammunition magazine pouches, known as the Hardshell Scorpion pouches.[3]

         Plaintiff 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.

         On 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.

         After 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.


         Plaintiff and defendant both manufacture and sell tactical gear, including ammunition magazine pouches, marketed to people serving in the military, law enforcement, and individual consumers.

         In 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”).[4] On October 12, 2015, plaintiff filed non-provisional application 14/881, 081(“the '081 application”).[5]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.

         While the '081 application was pending, plaintiff filed a continuation application 15/611, 922 (the '922 application”)[6] of the '081 application on June 2, 2017.[7] This continuation application matured into the instant patent at issue, the '210 patent, on October 24, 2017.

         Claim 1 of the '210 patent describes:[8]

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 wall;
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)).

         As 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.

         (Image Omitted)

(Id. at Figure 3).

         In 2009 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:

         (Image Omitted)


         A. Standard of Review

         The 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.”, Inc. v., Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001) (emphasis in original).[9]

         In 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).

         Infringement 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 (Fed. Cir.1997).

         “Claim 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)).

         While 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).[10]

         In the 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., 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 (Fed. Cir.1998).

         B. Analysis

         1. Effective Filing Date

         Preliminarily, 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 omitted).

         The 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).[11]However, on the application data sheet (“ADS”) submitted in conjunction with a patent application, plaintiff states only that ...

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