The opinion of the court was delivered by: Michael A. Telesca United States District Judge
Plaintiff Caldwell Manufacturing Company North America, LLC, ("Caldwell"), brings this action against defendant Amesbury Group, Inc. ("Amesbury"), claiming that Amesbury has infringed upon two patents owned by Caldwell: U.S. Patents 5,353,548 (the '548 patent) and 5,463,793 (the '793 patent). Both Caldwell and Amesbury are manufactures of hardware used in windows and doors, and the companies are direct competitors. The asserted patents generally disclose window balance systems that utilize a curl spring used in sash windows, including tilting sash windows.
Caldwell now moves the court for a preliminary injunction against Amesbury asking the court to prohibit Amesbury from infringing on the asserted patents. Caldwell contends that it will likely succeed on the merits of its infringement claims, and that it will be subjected to irreparable harm if the defendant is allowed to continue infringing the '548 and '793 patents. Amesbury opposes plaintiff's motion on grounds that plaintiff has failed to establish that it will likely succeed on the merits or that it is subject to irreparable harm if an injunction is not issued. Amesbury further claims that because Caldwell has unreasonably delayed its request for injunctive relief, it is not entitled to such relief. For the reasons set forth below, I find that plaintiff has failed to establish that it is subject to irreparable harm in the absence of injunctive relief, and I therefore deny plaintiff's motion for a preliminary injunction.
Plaintiff Caldwell Manufacturing Company North America, LLC is a manufacturer of hardware used in windows and doors. Caldwell's primary customers are commercial manufacturers of windows and doors. Defendant Amesbury Group, Inc. is the plaintiff's primary competitor. Together, the companies hold approximately an 80% share of the market for window and door hardware sold to commercial manufacturers.
According to the plaintiff, in an attempt to provide the best technology available, and to gain a competitive edge over its competitor Amesbury, Caldwell has continuously devoted significant time and financial resources to developing improved hardware for use in windows and doors. Caldwell claims that as a result of its research and development, it was awarded two patents, one in 1994 and one in 1995, for improved balance mechanisms to be used in sash windows. Balance mechanisms are used in sash windows to allow window sashes to stay in place once opened, and to allow for easy, even lifting and lowering of window sashes. In older windows, actual weights connected to sashes via ropes were used to counterbalance window sashes. Later, mechanisms using curled springs were used to hold window sashes in place.
According to the specifications of the '548 and '793 patents, curled spring mechanisms suffered from several drawbacks, including the fact that they could not be used in tilting windows if the mechanisms were placed in the window sash, and they took up excessive space if they were placed in the window shoe. The '548 and '793 patents claimed to solve these problems by disclosing a curled spring counterbalance mechanism that could be mounted in the sash shoe, that would allow the window sash to tilt, and did not take up excessive space. See U.S. Patent 5,353,548 entitled "Curl Spring Shoe Based Window, Balance System" and U.S. Patent 5,463,793 Entitled "Sash Shoe System for Curl Spring Window Balance." The disclosed inventions also claimed to be superior to previous curled spring designs by reducing friction, noise and wear, and preventing dirt and dust from contaminating the disclosed mechanisms.
According to Caldwell, in September, 2010, a Caldwell employee attending a trade show observed hardware made by Amesbury that appeared to infringe on Caldwell's '548 and '793 patents. Amesbury was allegedly displaying the hardware to prospective customers, and was providing literature to prospective customers about its new hardware. Thereafter, Caldwell received samples of Amesbury's hardware, and determined that it infringed the asserted patents. On April, 11, 2011, Caldwell filed the instant infringement action, and by Amended Motion dated June 23, 2011, moves for a preliminary injunction, asking the court to prevent Amesbury from infringing the '548 and '793 patents. Presumably Caldwell seeks an order prohibiting Amesbury from manufacturing or selling hardware that infringes the asserted patents. Amesbury opposes plaintiff's motion contending that the asserted patents are invalid, and that plaintiff has failed to establish that it will likely succeed on the merits, or that it is subject to irreparable harm absent issuance of an injunction. Amesbury also alleges that Caldwell has unreasonably delayed its request for injunctive relief.
For a party to be entitled to a preliminary injunction, the party must demonstrate: (1) that it is subject to irreparable harm; and (2) that it will either likely succeed on the merits of the case, or that there are sufficiently serious questions going to the merits of the case to make them a fair ground for litigation, and that a balancing of the hardships between the parties weighs decidedly in favor of the party requesting the relief. Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2nd Cir. 1979). A preliminary injunction is "extraordinary relief," and a "patentee's entitlement to such an injunction is a matter largely within the discretion of the trial court." Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375 (Fed.Cir.2009); The Research Foundation of State University of New York v. Mylan Pharmaceuticals Inc., 723 F.Supp.2d 638, 646 (D.Del.,2010)
A. Standard for establishing Irreparable Harm in a ...