" patent not only in terms of lost sales to American Permahedge, but also in its ability to enter exclusive distributorship deals that would serve to sell and promote the product. Specifically, Michael Paradise, American Permahedge's president, testified that American Permahedge (1) has been unable to secure financing for the business because "potential investors . . . won't invest in a patented product if it is not an exclusively patented product," Tr2. at 44; (2) is "having trouble getting exclusive distributorship for our product for the same reasons that they won't take on an exclusive distributorship of a product if there is another product on the market," id.; and (3) has lost substantial customers, including one of its largest distributors, National Metal, due to Barcana's product on the market, id. at 43. In addition, American Permahedge claims that, as Barcana's product is inferior, its presence in the market creates damage to American Permahedge's goodwill in the industry. Finally, American Permahedge maintains that a recovery of royalties of Barcana's past sales will not adequately compensate American Permahedge, as American Permahedge will, in all likelihood, be forced out of business.
In response, defendants raise several arguments in an effort to undercut plaintiff's showing of irreparable harm, namely, (1) such harm is belied by American Permahedge's delay in bringing this action; (2) monetary damages are adequate; (3) American Permahedge's product is not covered by the claims of the '647 patent and thus, Barcana is not competing with American Permahedge in the marketplace; and (4) American Permahedge has a poor reputation in the marketplace.
Barcana first contends that plaintiff's delay in bringing this action severely undercuts its claim of irreparable harm. In the instant case, plaintiff admits that it knew of the "Evergreen Hedge" in June 1991 but delayed filing this lawsuit until August 24, 1992, nearly 15 months later. During the 15 month interim, Barcana appeared at and exhibited its "Evergreen Hedge" product at trade shows where plaintiff was present or knew of Barcana's participation. See List of Attendees at the January 1992 IFIA Fence-Tech trade show in Dallas-Fort Worth, annexed to the Declaration of Richard Klar (the "Klar Dec."), as Exhs. "K-l" and Barcana also indicates that, at each trade show, plaintiff's counsel threatened to bring suit, but did not. See Declaration of Peter Barthelmess, executed on December 22, 1992, at 2. Barcana further alleges that, during the 15 month interval, it expended considerable monies marketing, advertising and developing its customer base for the "Evergreen Hedge." See Klar Dec. at Exh. "K-31."
American Permahedge replies that there has been no delay, as American Permahedge's counsel contacted Barcana promptly upon learning of the infringement, notified Barcana of the infringement, sent a copy of the '647 patent and told Barcana that American Permahedge intended to enforce its rights. This suit was filed as soon as the patent reexamination proceeding was complete.
Preliminary injunctions generally are granted where there is an urgent need for speedy action to protect a party's rights. Citibank, N.A. v. Citytrust, 756 F.2d 273, 276 (2d Cir. 1985). In this case, American Permahedge refrained from moving for preliminary relief until more than a year after it discovered Barcana's alleged infringement. American Permahedge's failure to act sooner "'undercuts the sense of urgency that ordinarily accompanies a motion for preliminary relief and suggests that there is, in fact, no irreparable injury."' Id. at 277 (quoting Le Sportsac, Inc. v. Dockside Research, Inc., 478 F. Supp. 602, 609 (S.D.N.Y. 1979)); see also T.J. Smith & Nephew, Ltd. v. Consol. Medical Equip., Inc., 821 F.2d 646, 648 (Fed. Cir. 1987) (fifteen month delay in seeking a preliminary injunction rebuts the presumption of irreparable harm); GTE Corp. v. Williams, 731 F.2d 676, 678 (10th Cir. 1984) ("delay in seeking relief, however, undercuts any presumption that infringement alone has caused irreparable harm pendente lite. . . and suggests that there is, in fact, no irreparable injury."); Nina Ricci S.A.R.L. v. Gemcraft Ltd., 612 F. Supp. 1520, 226 U.S.P.Q. 575, 583 (S.D.N.Y. 1985) (holding that plaintiff's inexplicable delay of six weeks in seeking a preliminary injunction is evidence that limited harm was incurred); Le Sportsac, Inc. v. Dockside Research Inc., 478 F. Supp. 602, 609 (S.D.N.Y. 1979); Rexnord. Inc. v. Laitram Corp., 628 F. Supp. 467, 473 (E.D. Wis. 1986) (holding that the defendant's "failure to promptly commence a suit is fatal to [their] contention of irreparable harm"). As American Permahedge has not offered an adequate excuse for its delay, the Court finds that such delay is fatal to plaintiff's claim of irreparable injury. Accordingly, the motion for a preliminary injunction is denied.
III. Motion for Summary Judgment
Barcana has also cross-moved for summary judgment, pursuant to Rule 56 of the Federal Rules of Civil Procedure, on the basis of non-infringement and invalidity of the '647 patent.
A. Standard of Law
Under Rule 56(c) of the Federal Rules of Civil Procedure, a motion for summary judgment must be granted "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). The moving party must initially satisfy a burden of demonstrating the absence of a genuine issue of material fact, which can be done merely by pointing out that there is an absence of evidence to support the nonmoving party's case. Celotex Corp. v. Catrett, 477 U.S. 317, 323-35, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986). The nonmoving party then must meet a burden of coming forward with "specific facts showing that there is a genuine issue for trial," Fed. R. Civ. P. 56(e), by "a showing sufficient to establish the existence of [every] element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. at 322.
The Court "must resolve all ambiguities and draw all reasonable inferences in favor of the party defending against the motion." Eastway Constr. Corp. v. New York, 762 F.2d 243, 249 (2d Cir. 1985); see also Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59, 26 L. Ed. 2d 142, 90 S. Ct. 1598 (1970); Hathaway v. Coughlin, 841 F.2d 48, 50 (2d Cir. 1988); Knight v. United States Fire Ins. Co., 804 F.2d 9, 11 (2d Cir. 1986), cert. denied, 480 U.S. 932, 94 L. Ed. 2d 762, 107 S. Ct. 1570 (1987). But the Court is to inquire whether "there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for the party," Anderson v. Liberty Lobby. Inc., 477 U.S. 242, 249, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986), and to grant summary judgment where the nonmovant's evidence is merely colorable, conclusory, speculative or not significantly probative. Id. at 249-50; Knight v. United States Fire Ins. Co., 804 F.2d at 12, 15; Argus Inc. v. Eastman Kodak Co., 801 F.2d 38, 45 (2d Cir. 1986), cert. denied, 479 U.S. 1088, 94 L. Ed. 2d 151, 107 S. Ct. 1295 (1987). To determine whether the nonmoving party has met his or her burden, the Court must focus on both the materiality and the genuineness of the factual issues raised by the nonmovant. As to materiality, "it is the substantive law's identification of which facts are critical and which facts are irrelevant that governs." Anderson v. Liberty Lobby, Inc., 477 U.S. at 248. A dispute over irrelevant or unnecessary facts will not preclude summary judgment, id., but the presence of unresolved factual issues that are material to the outcome of the litigation mandates a denial of the summary judgment motion. See, e.g., Knight v. United States Fire Ins. Co., 804 F.2d at 11-12.
Once the nonmoving party has successfully met the burden of establishing the existence of a genuine dispute as to an issue of material fact, summary judgment must be denied unless the moving party comes forward with additional evidence sufficient to satisfy his or her ultimate burden under Rule 56. See Celotex Corp. v. Catrett, 477 U.S. at 330, n.2 (Brennan, J. dissenting). In sum, if the Court determines that "the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no 'genuine issue for trial.'" First Nat'l Bank of Arizona v. Cities Serv. Co., 391 U.S. 253, 289, 20 L. Ed. 2d 569, 88 S. Ct. 1575 (1968); see also Weg v. Macchiarola, 654 F. Supp. 1189, 1191-92 (S.D.N.Y. 1987).
B. The Instant Action
Summary judgment is appropriate in a patent infringement case where, for example, "a properly interpreted claim with an uncontested description of the accused device reflects the absence of a genuine issue of material fact." Palumbo v. Don-Joy Co., 762 F.2d 969, 973 (Fed. Cir. 1985). When the meaning of the term of a patent claim is disputed and extrinsic evidence is necessary to explain that term, however, an underlying factual question arises and the claim construction must be left to the jury. Id. at 974; see also Union Carbide Corp. v. Tarancon Corp., 682 F. Supp. 535, 540 (N.D. Ga. 1988). Similarly, a finding of equivalence is a determination of fact. Grave Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. at 609-10.
In the case at hand, Barcana contends that there is no material fact in dispute as to non-infringement and invalidity of the '647 patent. The Court disagrees. First, with respect to the issue of invalidity, the Court has already determined that there is a reasonable likelihood that the patent is not invalid. See Discussion, supra, at 14-22. Second, with respect to infringement, although a reasonable juror could conclude that the plaintiff has not established a likelihood of infringement for purposes of obtaining a preliminary injunction, the record is simply replete with too many factual issues to make this determination as a matter of law. See Howes v. Medical Components, Inc., 814 F.2d 638, 646 (Fed. Cir. 1987) ("Summary judgment should not have been granted where there are "too many unresolved fact issues to properly construct the scope of [the] claims."); Palumbo v. Don-Joy Co., 762 F.2d at 976 ("if ambiguity is thought to surround the prosecution history in this case, that could give rise to a question of fact underlying the legal question of claim construction."). Accordingly, defendants' motion for summary judgment, pursuant to Rule 56 of the Federal Rules of Civil Procedure, is denied.
For the reasons set forth above, American Permahedge's motion, pursuant to Rule 65(a) of the Federal Rules of Civil Procedure, and Barcana's cross-motion for summary judgment under Rule 56 are denied.
SHIRLEY WOHL KRAM
UNITED STATES DISTRICT JUDGE
Dated: New York, New York
July 11, 1994