Columbia Machine Inc v. Besser Company, No. 3:2010cv05667 - Document 157 (W.D. Wash. 2012)
Court Description: ORDER denying 69 Plaintiff's Motion for Preliminary Injunction; denying 72 Plaintiff's Motion for TRO, signed by Judge Ronald B. Leighton.(DN) (Main Document 157 replaced on 4/5/2012) (DN).
Download PDF
<![CDATA[
Columbia Machine Inc v. Besser Company Doc. 157 1 HONORABLE RONALD B. LEIGHTON 2 3 4 5 6 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT TACOMA 7 8 COLUMBIA MACHINE, INC., a Washington corporation, No. 10-cv-5667 RBL 9 Plaintiff, 10 11 ORDER DENYING MOTION FOR PRELIMINARY INJUNCTION AND TEMPORARY RESTRAINING ORDER v. BESSER COMPANY, a Michigan corporation, 12 Defendant. [Dkts. #69, 72] 13 14 Before the Court is Plaintiff Columbia Machine Inc.’s Motion for a Preliminary 15 Injunction and Motion for a Temporary Restraining Order. Dkt. 69, 72. Columbia contends that 16 Defendant Besser Company sold at least two concrete products forming machines that infringe 17 three patents. Dkt. 69 at 1-2. Columbia claims that only injunctive relief can prevent further 18 harm. Id. at 2. Besser responds that Columbia has not made the requisite showing to merit entry 19 of the “nuclear bomb”—the injunction. Dkt. 83 at 1, 22, 23. Columbia’s motion for a temporary 20 restraining order and its motion for a preliminary injunction are denied. I. FACTUAL BACKGROUND 21 22 Columbia and Besser both manufacture concrete products machines. Dkt. 69 at 2, Dkt. 23 83 at 5-6. They are embroiled in this and a second suit both related to patent infringement. 1124 cv-05268 RBL. At issue in this case are three patents: U.S. Patent No. 5,807,691 (‘591), U.S. ORDER- 1 Dockets.Justia.com 1 Patent No. 6,177,039 (‘039), and U.S. Patent No. 6,352,236 (‘236). Dkt. 69 at 2. Columbia 2 maintains that Besser infringes Claim 1 of each of the above patents. Id. Claim 1 of the ‘591 3 Patent relates to a “mold box” for forming concrete products. Id. Claim 1 of the ‘236 Patent 4 relates to a method for aligning the mold assembly with a concrete products forming machine. 5 Id. Claim 1 of the ‘039 Patent relates to a method for forming concrete products in a products 6 forming machine respectively. Id. 7 Since 2007, Besser has manufactured and sold the SERVOPAC concrete products 8 machine. Dkt. 83 at 1. The SERVOPAC is a “top-flight, fully-automated machine” and is 9 Besser’s flagship concrete products machine. Dkt. 83 at 6, 1. Columbia claims that Besser’s 10 SERVOPAC machine and mold boxes literally or under the doctrine of equivalents, infringe the 11 above patents. Dkt. 69 at 3. Besser denies that its SERVOPAC and mold box infringe and 12 contend that the SERVOPAC is “far more automated and advanced than the machines 13 contemplated in Columbia’s patents.” Id. at 6. Columbia has not licensed any of its patents to 14 Besser. Id. at 2. 15 Columbia alleges that Besser recently sold two infringing SERVOPACs. Id. at 1-2. 16 Columbia states that it believes the delivery date of the infringing machines is imminent. Id. at 4 17 n.3. It asks the Court to enjoin the sale, arguing that it is likely to succeed on the merits of its 18 infringement claim and that it has met the other requirements for injunctive relief. Besser argues 19 that Columbia has neither shown it is likely to succeed on the merits of its infringement claim, 20 nor shown any of the other requirements to merit an injunction. 21 The Court has not yet construed the claims in the subject patents. A Markman claims- 22 construction hearing on the patents at issue is scheduled for April 12, 2012. 23 24 ORDER- 2 1 2 II. DISCUSSION The standard for the temporary restraining order and preliminary injunction are 3 “substantially identical.” Stuhlbarg Int’l Sales Co. v. John D. Brush & Co., 240 F.3d 832, 839 4 n.7 (9th Cir. 2001). To obtain a preliminary injunction, Columbia must show: (1) that it likely to 5 succeed on the merits, (2) that it is likely to suffer irreparable harm in the absence of preliminary 6 relief, (3) that the balance of equities tips in its favor, and (4) that an injunction is in the public 7 interest. Winter v. Natural Res. Def. Counsel, Inc., 555 U.S. 7, 20 (2008); Titan Tire Corp., v. 8 Case New Holland, Inc., 566 F.3d 1372, 1375-76 (Fed. Cir. 2009). Injunctive relief is an 9 “extraordinary remedy” that “may only be awarded upon a clear showing that the plaintiff is 10 entitled to such relief.” Winter, 555 U.S. at 20 (citing Mazurek v. Armstrong, 520 U.S. 968, 972 11 (1997)). 12 Granting injunctive relief is “an act of equitable discretion” on the part of the district 13 court. eBay, Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006). As such, no one factor is 14 necessarily dispositive, but “the absence of an adequate showing with regard to any one factor 15 may be sufficient, given the weight or lack of it assigned the other factors, to justify [denying the 16 motion].” Chrysler Motors Corp. v. Auto Body Panels of Ohio, Inc., 908 F.2d 951, 953 (Fed. 17 Cir. 1990); Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352, 1363 (Fed. Cir. 2002). 18 At this relatively early stage of the proceedings, the Court must “determine whether it is 19 more likely than not” that the plaintiff will meet its burden at trial. Titan Tire Corp., 566 F.3d at 20 1379. The burdens of proof in a preliminary injunction motion track those at trial. Genentech, 21 Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1987). 22 A. 23 24 ORDER- 3 Columbia Has Not Established a Likelihood of Success on the Merits. 1 Columbia argues that it has shown it is likely to succeed on the merits of its patent 2 infringement claims, despite the fact that the Court has not yet adopted its construction of the 3 claims. Dkt. 69 at 7. Failure to show likelihood of success on the merits is dispositive. Doe v. 4 Reed, 586 F.3d 671, 681 n. 14 (9th Cir. 2009). 5 To demonstrate that it is likely to succeed on the merits at trial, Columbia must 6 demonstrate that it “will likely prove infringement, and that it will likely withstand challenges, if 7 any, to the validity of the patent.” Genentech, 108 F.3d at 1376. In a two-step patent 8 infringement analysis, the Court must first construe the claim to determine its proper scope, and 9 second, evaluate whether the properly construed claims encompass the accused products. Solvay 10 S.A. v. Honeywell Int’l, Inc., 622 F.3d 1367, 1379 (Fed. Cir. 2010) (quoting Markman v. 11 Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995)). The first step in a patent 12 infringement analysis requires the Court to determine “the meaning and scope of the patent 13 claims asserted to be infringed.” Markman, 52 F.3d at 976. While claim construction is a matter 14 of law and therefore will be a task for the Court, it has not yet adopted its construction of the 15 claims. The parties vehemently disagree over the appropriate claim construction 16 Columbia asserts that under its construction of the claims, Besser’s products infringe in 17 three primary ways. First, Besser’s mold assembly’s corresponding “cups” in the adaptor bar 18 and “cones” on the machine shelf literally infringe, or are the functional equivalent of, the 19 alignment holes and dowels in the side walls of the unit that the patent claims. Dkt. 87 at 2-3. 20 Second, Columbia assert that hydraulically clamping the mold assembly to the concrete products 21 forming machine, as Besser’s machine does, is the functional equivalent of bolting the unit to the 22 machine, as the patent claims. Dkt. 87 at 3. And third, the feed drawer’s movement and 23 cessation of movement infringe under its proposed construction. Dkt. 87 at 6. 24 ORDER- 4 1 Besser denies these contentions. It maintains that the patent claim specifically states 2 “holes in the side walls” and there are no holes anywhere on the Besser product’s side wall. Dkt. 3 83 at 2. It contends that the hydraulic clamps it uses to attach the unit to the machine are 4 significantly more advanced than bolts and therefore materially different. Id. at 3. And, it claims 5 that the feed drawer moves horizontally as opposed to vertically and has no mechanism to lock 6 the drawer in place as the claim requires. Id. 7 On the record now before the Court, Besser’s alternate claim constructions seem facially 8 plausible. Consequently, Columbia has not shown it is likely to succeed on the merits. Even if 9 Columbia had shown it was likely to succeed, however, the remaining factors support the 10 conclusion that injunctive relief is inappropriate. 11 B. 12 Columbia alleges Besser irreparably harmed Columbia in three ways. First, it unfairly Columbia Has Not Established a Likelihood of Irreparable Harm. 13 competes for Columbia’s market share using Columbia’s patented technology. Dkt. 69 at 15. As 14 this is a brand-loyal market, every sale that Besser makes decreases Columbia’s market share. 15 Second, Besser decreases the value of Columbia’s technology by forcing Columbia to compete 16 with its own patented products. Dkt. 69 at 15. Third, Columbia alleges that monetary damages 17 are inadequate. The brand-loyal nature of this market renders monetary damages impossible to 18 calculate. And, even if the damages are calculable, Besser is unable to satisfy an award for 19 damages the Court may impose. Id. 20 Besser denies that it is financially unstable and responds that Columbia has provided 21 insufficient evidence that it is likely to suffer irreparable harm. Dkt. 83 at 21, 22-23. Further, 22 Columbia’s fourteen-month delay before seeking an injunction is evidence that Besser’s sales do 23 not irreparably harm Columbia. Dkt. 83 at 20. Columbia asserts that, though delay is not 24 ORDER- 5 1 determinative, it sought injunctive relief immediately upon discovering that Besser continued 2 selling the accused products. Dkt. 90 at 2-3. 3 Columbia must demonstrate that it faces imminent, irreparable harm. A mere possibility 4 of irreparable harm will not suffice. Caribbean Marine Services Co., Inc. v. Baldrige, 844 F.2d 5 668, 674 (9th Cir. 1988). Irreparable harm is harm that is not compensable by monetary 6 damages or equitable legal remedies. Los Angeles Memorial Coliseum Comm’n v. NFL, 634 F.2d 7 1197, 1202 (9th Cir. 1980) (monetary injury not normally considered irreparable); Campbell 8 Soup Co. v. ConAgra, Inc., 977 F.2d 86, 91 (3d Cir. 1992) (“preliminary injunction must be the 9 only way of protecting the plaintiff from harm”). 10 The fourteen-month delay between the initiation of these proceedings and the pending 11 motions is not determinative. Delay is “but one factor to be considered by a district court in its 12 analysis of irreparable harm.” Hybritech Inc. v. Abbott Laboratories, 849 F.2d 1446, 1457 (Fed. 13 Cir. 1988). Besser appears to have been less than forthcoming in interactions with Columbia. 14 Dkt. 71 at 4. Given these circumstances, Columbia’s delay in requesting a preliminary 15 injunction does not cast doubt on the imminent or irreparable nature of the harm it alleges. 16 Columbia put forth largely unsupported assertions of irreparable harm. In Robert Bosch 17 LLC v. Pylon Mfg. Corp., 659 F.3d 1142 (Fed. Cir. 2011) Bosch introduced evidence of direct 18 competition in specific market segments, loss of market share and access to potential customers, 19 and Pylon’s inability to satisfy a judgment that might be entered against it. Id. at 1152. Bosch 20 discussed specific evidence of direct competition between it and Pylon, including evidence that it 21 lost the business of one of the largest participants in the market to Pylon. Id. at 1153. In total, 22 Bosch introduced nineteen specific instances of competition between the parties. Id. 23 24 ORDER- 6 1 By comparison, Columbia made an extremely limited, theoretical showing of irreparable 2 harm. Columbia discussed the market alleging that the concrete products industry is small with 3 only eight to ten competitor companies. Columbia stated that only one company—Besser— 4 competes directly against Columbia using Columbia’s patented technology. Dkt. 87 at 10. 5 Columbia infers that each sale made by Besser is a sale lost by Columbia. Id. Columbia’s 6 showing falls far short of that put forth in Bosch. 7 Columbia alleges that Besser is unable to satisfy a judgment entered against it. Bosch 8 also argued that Pylon’s inability to satisfy a judgment favored holding Bosch was likely to 9 suffer irreparable harm. 659 F.3d at 1153-54. In Bosch, because the litigation was bifurcated 10 such that damages would be assessed in later proceedings, Bosch was unable to gain evidence of 11 Pylon’s financial position. Circumnavigating this evidentiary hurdle, Bosch presented specific 12 evidence of Pylon’s financial viability. Bosch submitted a “Risk Management Report” which 13 categorized Pylon in the 49th percentile nationally of “Financial Stress” and called it a moderate 14 risk of severe financial stress such as bankruptcy. Id. Bosch also presented a public filing 15 showing that Pylon’s parent company had recently taken a large loan at a high interest rate. Id. 16 Columbia similarly contends it is unable to gain access to evidence of Besser’s financial 17 position. Dkt. 87 at 11. Columbia relies on “rumors” and attorney statements that Besser laid 18 off staff over the past few years. Dkt. 69 at 17 (citing Aaseth Decl. Dkt. 70 at 4). Though Bosch 19 also faced difficulties marshalling evidence to demonstrate irreparable harm, it presented 20 significantly more concrete evidence than Columbia set forth. 21 Based on this limited showing of irreparable harm, Columbia has not shown it is likely to 22 suffer irreparable harm in the absence of an injunction. As a result, the Court will not delve into 23 the adequacy of available remedies. 24 ORDER- 7 1 C. Columbia Has Not Established Equitable Entitlement Sufficient to Justify an Injunction. 2 “Balancing the equities is within the discretion of the District Court.” Atlas Powder Co. 3 v. Ireco Chemicals, 773 F.2d 1230, 1234 (Fed. Cir. 1985). Both Columbia and Besser maintain 4 that the balance of hardships favors it. Columbia contends it is irreparably harmed as discussed 5 above, it has to compete with its own patented inventions, and it expends more resources and 6 suffers further harm as a result of Besser’s disingenuous litigation tactics. Dkt. 69 at 18-19. 7 Besser asserts that Columbia has suffered no demonstrated harm. It notes that the 8 SERVOPAC is its flagship product and is central to its continued success as a company. Dkt. 83 9 at 24-25. Further, the allegedly infringing aspects of its SERVOPAC machine are comparatively 10 small pieces. Therefore, enjoining sale of the whole machine because of minor infringing 11 elements would be like “enjoining the sale of a new line of [Mercedes] cars because of a dispute 12 about ownership of the valve stem on the tire.” Id. at 26. 13 The SERVOPAC is Besser’s flagship product. In a tough economy, enjoining a 14 company from producing its primary product could jeopardize its continued viability. This full 15 stop injunction on Besser’s flagship product potentially burdens Besser greatly. 16 On the other hand, if the SERVOPAC infringes, Columbia has been competing with its 17 own technology for the past four years. On balance, improper competition seems a lighter 18 burden on Columbia than a full stop of the SERVOPAC would be on Besser. 19 The balance of equities shows that the potential burden of an injunction on Besser is at 20 least equal to the burden that improperly denying relief would be on Columbia. Therefore, this 21 factor does not favor granting an injunction. 22 D. 23 24 ORDER- 8 Columbia Has Not Established that an Injunction Is in the Public Interest. 1 The parties cite different competing public-interest issues: Columbia cites the right to 2 exclude; Besser the right to free and open competition. Those interests are at odds in any patent 3 case. Neither party cites any critical public health or safety interest advanced by entering or 4 denying the injunction. This factor is therefore neutral. 5 6 III. CONCLUSION Columbia has not shown it is likely to succeed on the merits. Further, it has made only a 7 limited showing of irreparable harm. The balance of equities and public interest factors are 8 basically neutral in this case. 9 For these reasons, the Court ORDERS that Columbia’s motions for a preliminary 10 injunction and temporary restraining order are DENIED. (Dkts. #69, 72.) 11 12 13 DATED this 5th day of April, 2012. 14 15 A 16 RONALD B. LEIGHTON UNITED STATES DISTRICT JUDGE 17 18 19 20 21 22 23 24 ORDER- 9
]]>
Some case metadata and case summaries were written with the help of AI, which can produce inaccuracies. You
should read the full case before relying on it for legal research purposes.
This site is protected by reCAPTCHA and the Google
Privacy Policy and
Terms of Service apply.
