The opinion of the court was delivered by: WAYNE D. BRAZIL
Plaintiff RasterOps filed the above-captioned action on November 23, 1993, alleging that defendant Radius has infringed and continues to infringe RasterOps' patent rights in United States patent No. 5,229,852 (the "'852 patent").
RasterOps simultaneously filed an action against SuperMac, RasterOps v. SuperMac Technology, Inc., Civil Action No. 93-4161 WHO, alleging that SuperMac also infringed the '852 patent.
RasterOps filed the instant motion for a preliminary injunction on April 14, 1994. Initially, RasterOps moved the court to "issue a preliminary injunction prohibiting defendant Radius from making, using or selling its VideoVisionTM and VideoVision StudioTM products and any other products which infringes [sic] the claims" of the '852 patent. Memo. in Support of Motion for Preliminary Injunction, filed under seal April 14, 1994, at 23. In its reply papers (filed under seal July 29, 1994 - one week before the hearing on the motion), however, RasterOps modified the scope of its motion, and at the hearing on the motion, counsel confirmed that for purposes of this motion, RasterOps alleges that only the VideoVision StudioTM products directly infringe the '852 patent. Accordingly, through this motion RasterOps seeks to enjoin (preliminarily) Radius from making, using, or selling only its VideoVision StudioTM product.
On August 5, 1994, the court received live testimony and documentary exhibits, viewed a demonstration by Radius, and entertained brief argument by counsel. On August, 15, 1994, the parties submitted final written closing arguments. After carefully considering the parties' pre-hearing briefing (including numerous declarations and evidentiary exhibits), various deposition transcripts, the evidence and argument presented at the hearing, and the argument contained in the parties' post-hearing briefs, the court DENIES RasterOps' motion for a preliminary injunction for the reasons set forth in this Opinion and Order.
The issuance of a preliminary injunction under 35 U.S.C. § 283 (1988) is a matter committed to the sound discretion of the district court. The Federal Circuit, however, has consistently cautioned that because such relief is granted before the defendant has had an opportunity to fully defend itself at trial, "a preliminary injunction is a drastic and extraordinary remedy that is not to be routinely granted." Intel Corporation v. ULSI System Technology, Inc., 995 F.2d 1566, 1568 (Fed. Cir. 1993) (citing Nutrition 21 v. United States, 930 F.2d 867, 869 (Fed. Cir. 1991); Illinois Tool Works, Inc. v. Grip-Pak, 906 F.2d 679, 683 (Fed. Cir. 1990)).
In Atlas Powder Company v. Ireco Chemicals, the Federal Circuit also made clear that the burden on the party seeking a preliminary injunction in a patent case should not be greater than the burden imposed in other kinds of cases. 773 F.2d 1230, 1233 (Fed. Cir. 1985). That is, "the grant of a preliminary injunction does not require that infringement be proved beyond all question, or that there be no evidence supporting the viewpoint of the alleged infringer. The grant turns on the likelihood that [the movant] will meet its burden at trial of proving infringement." H.H. Robertson Company v. United Steel Deck, Inc., 820 F.2d 384, 390 (Fed. Cir. 1987) (citing Atlas Powder, 773 F.2d at 1233, citation omitted).
To obtain a preliminary injunction, pursuant to 35 U.S.C. § 283, a party must establish a right thereto in light of four factors: (1) reasonable likelihood of success on the merits; (2) irreparable harm; (3) the balance of hardships tipping in its favor; and (4) the impact of the injunction on the public interest.
Hybritech, Inc. v. Abbott Laboratories, 849 F.2d 1446, 1451 & n.5 (Fed. Cir. 1988) ("Abbott") (also noting that the law of the Federal Circuit provides the standards governing the issuance of an injunction pursuant to § 283). Each factor must be considered and weighed against the other factors and against the form and magnitude of the relief requested. Intel, 995 F.2d at 1568 (citing Abbott, 849 F.2d at 1451).
In Intel, the Court of Appeals stated that "although none of the four factors alone is dispositive, the absence of a sufficient showing with regard to any one factor may, in light of the weight assigned to the other factors, preclude preliminary injunctive relief." Id. at 1570 (citing Chrysler Motors Corp. v. Auto Body Panels, 908 F.2d 951, 953 (Fed. Cir. 1990)) (emphasis added). In an opinion filed ten days after the hearing in the case at bar, however, the Court of Appeals apparently refined this relatively discretionary standard, plainly describing the mandatory nature of the movant's showing on the first two factors:
A movant seeking a preliminary injunction must establish a reasonable likelihood of success on the merits both with respect to validity and infringement of its patent. The movant is also required to establish that it will suffer irreparable harm if the preliminary injunction is not granted. Thus, a movant cannot be granted a preliminary injunction without findings by the district court that the movant carried its burden on both factors.
Reebok International Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1994 WL 423476, at *3 (Fed. Cir. 1994) (citing Abbott, 849 F.2d at 1451, 1456) (citations omitted, emphasis added).
A. Likelihood of Success on the Merits
Because it is impossible to justify imposing an injunction (and the attendant economic harm) on a defendant who has not had the benefit of a trial without a showing that the defendant is likely to lose on the merits, the primary factor on which the court must concentrate is the likelihood of plaintiff's success on the merits at trial. "A reasonable likelihood of success requires a showing of validity and infringement." Reebok International, 32 F.3d 1552, 1994 WL 423476, at *2 (citing Abbott, 849 F.2d at 1451). In assessing likelihood of success in these areas (as well as the area of enforceability, if put in issue) the court must bear in mind the location and magnitude of the burdens of proof at trial. H.H. Robertson, 820 F.2d at 388; New England Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878, 883 n.4 (Fed. Cir. 1992).
At the preliminary injunction stage, a plaintiff must make a "clear showing" that it is "reasonably likely" at trial to meet its burden of proving infringement by a preponderance of the evidence. Atlas Powder, 773 F.2d at 1233; H.H. Robertson, 820 F.2d at 390 (sustaining district court's conclusion that there was a "reasonable probability" that the movant would meet its burden).
Infringement analysis is a two-step process. "Claim interpretation is the first step . . ." Miles Laboratories, Inc. v. Shandon, Inc., 997 F.2d 870, 876 (Fed. Cir. 1993) (citing Charles Greiner & Co. v. Mari-Med Mfg., Inc., 962 F.2d 1031, 1034 (Fed. Cir. 1992)). "After interpreting the claim, the final step of the infringement analysis determines whether the accused device is within the scope of the claim. To infringe, an accused device must embody exactly each claim limitation or its equivalent." Id. (citing Charles Greiner, 962 F.2d at 1034, citation omitted).
The first requirement in claim interpretation is to examine the claim language. SmithKline Diagnostics, Inc. v. Helena Laboratories Corp., 859 F.2d 878, 882 (Fed. Cir. 1988). The terms of a claim will be given their ordinary meaning, unless it appears that the inventor used them differently. ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1579 (Fed. Cir. 1988). Thus, in construing the claims at issue in this case, the court may properly look to the claim language, the specification,
the prosecution history,
the other claims, and expert testimony.
SmithKline Diagnostics, 859 F.2d at 882. The claims should be construed as one skilled in the art would construe them. Id.
After carefully considering all the evidence and argument thus far presented, for reasons set forth in detail below, the court has concluded that there is a not inconsiderable prospect that there will be a finding at trial that persons skilled in the pertinent art would conclude that key passages of some elements of claims one and two of the '852 patent are infected with substantial ambiguity. That conclusion undermines appreciably the likelihood that plaintiff will prevail at trial on either the infringement or the validity issues.
The pertinent portions of the claims on which this discussion will focus include the following:
1. the part of claim one that reads: "non-interlaced raster frame buffer . . . for storing the video signal at a second scan rate differing from the first scan rate ;"
2. the part of claim two that reads: "providing the stored portion of the video signal to a frame buffer at a second scan rate differing from the first scan rate . . . ."
In the "Description of the Prior Art" in the "Background of the Invention" section of the '852 patent, the inventor offers the following information, apparently defining the crucial phrase "scan rate": "In the prior art there is no true real time video conversion available that provides a digital output signal for use by a host computer and to be displayed on a video monitor of a different scan rate, i.e., going from interlaced video to non-interlaced video. " (Emphasis added.) Significantly, the Abstract of the patent also uses the phrase "scan rate" with this same, most-commonly understood definition; the Abstract describes the claimed invention as: "[a] general purpose scan converter for converting video signals from one scan rate to another scan rate. The scan converter accepts . . . inputs in standard video formats and convert [sic] them to be displayed on a monitor."
That same, most common definition also appears to attach to "scan rate" as that phrase is used in at least some parts of the "Detailed Description of the Invention." For example, in column six, at lines 58 to 65, the Description states:
The size of pixel buffer 52 is determined by the difference between the absolutely lowest scan rate and the absolutely highest scan rate which must be dealt with. The larger this difference, the larger the size of pixel buffer 52 required. In accordance with one embodiment of the invention, pixel buffer 52 holds 64 pixels each of 24 bits going from a scan rate of 15.734 KHz to one of 64 KHz.
(Emphasis added.) This use of "scan rate" appears to refer to the speed at which a raster beam traverses a line or fills a frame on a monitor.
Plaintiff apparently takes the position that it is this same most common definition of the phrase "scan rate" that attaches to that phrase as it is used in the first two lines of claim one and the first two lines of claim two, the lines of the claims that fix their essential boundaries and define their center. The first two lines of the first claim read: "A converter for converting a video signal from a first to a second scan rate comprising: . . . ." The first two lines of the second claim read: "A method of converting a scan rate of a video signal comprising the steps of . . . ."
But plaintiff insists that this same phrase, "scan rate," is used with a different, less common definition in the two key (for our present purposes) elements of claims one and two. In those settings, plaintiff insists, "scan rate" really means the rate or speed at which data flows or moves first into and then, later, out of the pixel buffer (or into the pixel buffer and then, later, from the pixel buffer into the frame buffer).
Given the fact that the phrase "scan rate" is used not with this secondary meaning, but with the more commonly understood meaning (the rate or speed of the raster traversing or filling the screen) in those parts of the patent that identify its central thrust and that articulate the principal purpose of the claimed invention, one would expect the inventor and his agents to have explicitly set forth a second definition if they had actually intended to use this key phrase with a different meaning in some elements of some of the claims. But plaintiff has pointed to no such second definition in the patent documents. Nor has plaintiff presented persuasive testimony that persons skilled in the art would have understood, from the context or otherwise, that this key phrase was defined in some of the elements of claims one and two differently than it was defined in the Abstract, the Background of the Invention, or in the first clauses of those two claims. This failure by plaintiff to point to firm support, in text or context, for this second definition of "scan rate" is one troubling factor that buttresses the court's conclusion that it is likely that at trial there will be a finding that those skilled in the art would find substantial ambiguity in this phrase as plaintiff has insisted it is used in the key disputed elements of claims one and two.
A close examination of the phraseology in some of the elements of claims one and two yields additional support for this conclusion. After announcing in its first lines that claim one involves a "converter for converting a video signal from a first to a second scan rate," the language of an important sub-element speaks of using a "frame buffer . . . for storing the video signal at a second scan rate differing from the first scan rate. " (Emphasis added.) Similarly, elements of claim two speak of "storing a portion of the video signal which is at a first scan rate" and "providing the stored portion of the video signal to a frame buffer at a second scan rate . . . ." (Emphasis added.) As plaintiff concedes (see Plaintiff's Closing Statement, filed under seal August 15, 1994, at 7), no one skilled in the art would argue that video signals are "stored" at any rate at all. As defendant has argued for some time, a video signal that is being stored in a frame buffer simply has no scan rate - it is static - so it is nonsensical to talk about "storing" such a signal at "different" "rates." Thus plaintiff has conceded, as it apparently must, that the language of the claims quoted in this paragraph, if taken literally, makes no sense. The fact that the language taken literally makes no sense would not be fatal, of course, if it were clear that persons ...