1. Whether a brochure distributed at a trade show by a patentee more than one year prior to patenting anticipates or invalidates the patented invention under § 102(b) sufficiently to warrant summary judgment of invalidity.
2. Whether denial of injunctive relief is proper based solely on a lack of likelihood of success on the merits without considering the other preliminary injunction factors.
1. Perhaps. An alleged infringer bears the burden to prove by clear and convincing evidence that the brochure anticipates or invalidates the claim; without sufficient proof, a genuine issue of fact remains and summary judgment is improper.
2. Yes. A court concluding that the movant cannot establish a likelihood of success on the merits may deny injunctive relief without considering the other preliminary injunction factors.
Masonry Patent, U.S. Patent No. 5, 687, 801 (the '801 patent), teaches a method of securing layers of masonry using a "helical tie member." It further states that different tools can be used to drive the tie, "so long as the tie is permitted to rotate." The patent issued from an application that was filed on September 28, 1994, listing Helifix Limited ("Helifix") as the assignee. In January of 1993, representatives of Helifix attended the World of Concrete trade show, where they displayed and distributed a brochure describing the Helifix ties and their use in masonry refacing and new construction. The brochure also described the use of the ties in both "DriFix" and "Dry-Chemical Fix" methods of construction with diagrams and descriptions. The brochure contained a warranty and a telephone number and address "for further information."
On June 4, 1998, Helifix filed suit against Blok-Lok Limited ("Blok-Lok") alleging infringement and inducing infringement of the '801 patent, and seeking a preliminary injunction. Blok-Lok counterclaimed, seeking a declaratory judgment of patent invalidity. Blok-Lok asserted that the method claimed in the '801 patent was invalid under 35 U.S.C. § 102(b) because the 1993 brochure described the method claimed in the patent more than one year before the application was filed. The district court granted summary judgment in favor of Blok-Lok, declared the patent invalid, and consequently denied Helifix's request for a preliminary injunction. Helifix appealed both rulings.
In a de novo review, the Federal Circuit agreed with the district court's finding that the claimed method was not limited to use of the specific tool described in the specifications. The Court noted that anticipation requires a prior art reference to describe the invention "sufficiently to have placed it in possession of a person of ordinary skill in the field." The Court held that the district court erred in its characterization of the person of ordinary skill in the art. Instead of assuming the person of ordinary skill was one familiar with the pertinent literature and likely to attend trade shows, the court should have considered "the educational level of the inventor, the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of workers in the field." Helifix at para. 26. Neither Helifix nor Blok-Lok presented evidence on how a person of ordinary skill would understand the brochure; therefore, a genuine issue of material fact remained as to whether the 1993 brochure anticipated the invention.
The Federal Circuit held that summary judgment based on the on-sale bar was improper because a material issue of fact existed as to whether the product was indeed ready for patenting at the time of the Trade Show when the 1993 brochure was distributed. In order to establish that the method had been reduced to practice, Blok-Lok needed to prove that Helifix had a tool into which a tie could be inserted and that would "impactingly drive the tie and rotatably permit the same to rotate." The testimony offered by Blok-Lok did not sufficiently demonstrate that the tool could meet the limitations recited in the '801 patent. Thus, the Federal Circuit reversed the summary judgment, finding a genuine issue of material fact as to whether a tool meeting the claim limitations had been developed.
Addressing the preliminary injunction, the court recited four elements a party must establish to obtain a preliminary injunction: (1) that it has a reasonable likelihood of success on the merits; (2) that it will suffer irreparable harm if the injunction is not granted; (3) that the balance of hardships tips in its favor; and (4) that an injunction would be consistent with the public interest. By granting summary judgment of patent invalidity, the district court thereby determined that there was no likelihood of success on the merits, and thus refused the preliminary injunction without addressing the other three factors. The Federal Circuit upheld the denial of a preliminary injunction, holding that if a party fails to first establish a likelihood of success on the merits, the court need not reach the other relevant factors. Although material issues of fact remained as to the issue of patent validity, Helifix failed to carry its burden of likelihood of success on the merits and therefore the district court did not err in denying Helifix's request for a preliminary injunction.
Prepared by the liibulletin-patent Editorial Board.