Pentair Water Pool and Spa, Inc. et al v. Hayward Industries, Inc. et al

Filing 119

ORDER denying 7 Motion for Preliminary Injunction. Counsel is reminded to read the order in its entirety for further detailed information. Signed by Senior Judge James C. Fox on 1/23/2012. (Edwards, S.)

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NORTH CAROLINA

WESTERN DIVISION

No. 5: ll-CV-459-F

PENTAIR WATER POOL AND SPA, INC.; )
and DANFOSS DRIVES A/S,
)
Plaintiffs & Counterdefendants, )

v.
HAYWARD INDUSTRIES, INC.; and
HAYWARD POOL PRODUCTS, INC.,
Defendants & Counterclaimants.

)
)
)
)
)
)

ORDER

This matter is before the court on motion [DE-7] filed by plaintiffs, Pentair Water Pool
and Spa, Inc., and Danfoss Drives, A/S (collectively "Pentair") for issuance of a preliminary
injunction against Hayward Industries, Inc., and Hayward Pool Products, Inc. (collectively
"Hayward"). This is a patent infringement action in which Pentair alleges that Hayward's
EcoStar@ line of variable speed water pumps, the Eco Star@ and EcoStar SVRS, and its
ProLogic controller, infringe on several of Pentair's patents that are commercialized in Pentair's
IntelliFlo@l and IntelliPro@ variable speed water pump systems and IntelliTouch@ controllers.
Of the five patents-in-suit, only three are the subject of this motion for preliminary injunctive
relief. Hayward contends that Pentair cannot show infringement and that there nevertheless
are serious questions of the validity of Pentair's asserted claims. Hayward further contends
Pentair cannot satisfy its burden to make a showing of a likelihood of irreparable harm and that
both the balance of the equities and the public interest disfavor entry of an injunction.
The issues pertinent to the court's inquiry on this motion for preliminary injunctive
relief have been fully briefed and were ably argued during a hearing conducted on January 12

1
Pentair also produces and markets an IntelliPro@ system under the brand, Sta-Rite
Industries, Inc. Herein, unless otherwise indicated, IntelliFlo@ includes IntelliPro@.

and 13, 2012. Pentair is anxious to receive a ruling prior to the January 24-26, 2012, Atlantic
City Pool & Spa Expo to be held in Atlantic City, New Jersey.
Pentair asserts that, "in general terms, the patents-in-suit relate to variable speed
swimming pool and spa pump technology, centralized control of the various components of
swimming pools and spa systems, and detection of and response to problems and conditions
that can arise in the operation of such systems." Pentair's Motion [DE-7], p.

2.

Pentair

contends that it, in collaboration with Danfoss, revolutionized the pool and spa pump industry
and created a whole new market with the introduction of its IntelliFlo® variable speed pump
system and IntelliTouch® controller.
I. Relevant Factual and Procedural History 2

Pentair and Hayward are direct competitors in the swimming pool and spa pump
market; there are other companies that also offer pool pumps but it appears that Pentair and
Hayward are by far the most successful in the United States. The technology at issue here is
relatively new, the industry having been virtually unchanged for about 50 years before
introduction of the IntelliFlo® and IntelliTouch® products. Both parties' confidential
materials tend to indicate that Pentair enjoys a significant majority of the market share but that
Hayward relentlessly is attempting to increase its own share. Both companies operate
production facilities in central North Carolina, but are out-of-state corporations.
A. Conventional Pool and Spa Pump Technology

Traditionally in the United States, most swimming pool and spa pumps are single-speed
and are designed to operate at a constant speed, or dual speed with one alternative speed. This
conventional system suffered from several drawbacks. For example, conventional pumps

2
Except where indicated, the recitation of facts and procedural history contained
herein rephrases generalities that are not currently in dispute or are not material to Pentair's
motion seeking preliminary injunctive relief. Findings of material facts are contained in a
separate section of this order.

2

offered only up to two predetermined speeds, one of which would be selected to correspond to
the maximum pumping demands of the individual pool or spa. The installer or customer had to
determine the appropriate horsepower of the pump to meet the needs and requirements of the
pool, as horsepower was a primary means of controlling flow rate, or use standard calibrations
that proved inappropriate for many applications. Variables, including volume and flow rate of
water to be pumped, pressure required to pump the required volume of water at the correct
rate, and other operational parameters, such as flow resistance from pipe friction, determined
not only the correct of size of pump but also the proper settings for that pump's operation in its
unique configuration and conditions. Once installed, conventional pumps typically may not
readily be changed to accommodate changes in pool conditions, auxiliary equipment or
pumping demands. The essentially wide-open-all-the-time operation of conventional pool
pumps very often proved inefficient and costly, both in energy consumption and environmental
impact.
B. Variable Speed Pump Technology

According to Pentair, beginning in the early 2000S, it embarked on a project to design a
swimming pool and spa pump that readily could be adapted to communicate with various
auxiliary devices to provide a suitable supply of water at a desired pressure and volume to
various-sized pools equipped with different types offeatures. Working with Danfoss Drives of
Denmark, Pentair designed a pumping system it named the IntelliFlo® pump and companion
IntelliTouch® controller. Pentair has described the process as follows:
This ground-breaking pump with an integrated digital controller was designed to
allow creation of entirely new features in water pumps: conserving energy as
never previously imagined or achieved; pumping water to multiple aquatic
applications and devices; and being variably adjustable to a number of user
defined speeds, quickly and repeatably [sic], over a range of operating speeds, to
pump the water as needed as conditions changed. The pump also was to be
responsive to a change of conditions (e.g., a blocked drain, clogged filter, jammed
pump), user input instructions and communication with the auxiliary devices.
Centralized control over a multitude of devices would allow the system to be
easily adjusted as the environment or requirements of auxiliary devices changed.
3

Pentair Memorandum [DE-22], p. 6.
Pentair announced and began selling the IntelliFlo@ variable speed pump and
IntelliTouch@ controller in 2006. Pentair contends it, together with Danfoss, started the
variable speed pool pump design and development from scratch, devoting hundreds of man­
hours and millions of dollars to the project. Additionally, Pentair has expended substantial
additional funds since 2006 marketing the IntelliFlo@ system, and maintains a large sales force
and support staff.
The three patents-in-suit3 at issue in Pentair's Motion for Preliminary Injunction are:
1. United States Patent No. 7,854,597 entitled PUMPING SYSTEM WITH Two WAY
COMMUNICATION (the" '597 Patent"), owned by Pentair and Danfoss;

2. United States Patent No. 7,815,420, entitled PUMP CONTROLLER SYSTEM AND
METHOD (the" '420 Patent"), owned by Pentair; and
3. United States Patent No. 7,857,600, ENTITLED PUMP CONTROLLER SYSTEM AND
METHOD (the" '600 patent").
Pentair has selected specific claims within each of the patents, upon which to base its motion for
preliminary injunction. Pentair contends Hayward is infringing claims 1, 2, 23, 24, 25, 29, 30
and 34 ofthe '597 Patent; claims 1 and 4 of the '420 Patent; and claims 1 and 4 ofthe '600
Patent.
Hayward contends it independently launched development of a variable speed pool
pump in October 2008, two years after Pentair's introduction of the IntelliFlo@ and
IntelliTouch@ inventions. It explains that six years earlier, it had developed and introduced a
variable speed version of its TriStar@ hydraulic pumps, called TriStar Energy Solution@. The
TriStar@ variable speed pump admittedly was not commercially successful.

3
Pentair withdrew a fourth patent from the instant motion - the so-called'587 Patent
- but it remains in the case for trial.

4

In order to compete with Pentair's Intelli-Flo@ technology and offer its own energy
efficient and environmentally-friendly pump, Hayward contends it built upon its TriStar@
variable speed pump technology. Hayward announced its EcoStar@ and EcoStar SVRS4
variable speed pumps and companion ProLogic@ controller in early August 2010.
Hayward adamantly denies copying Pentair's technology or marketing strategy. Each
party claims its respective variable speed pool and spa pump is the most efficient in energy and
cost savings and environmental responsibility in the market. Both the IntelliFlo@ and the
EcoStar@ pumps reportedly have been recognized by the industry for innovation and efficiency.
C. The Lead-Up to This Litigation
Documents produced and depositions taken during the limited discovery period
preceding the preliminary injunction hearing reveal generally that on August 3,

2010,

Hayward

issued a press release announcing the EcoStar@ and EcoStar SVRS variable speed pumps and
companion ProLogic@ controller. Hayward began shipping its new EcoStar@ pump system in
September 2010, and has sold the system ever since. Sales of the EcoStar SVRS pump began in
February 2011 and continue to the present.
Throughout the fall months of 2010, Hayward vigorously marketed its new line of
variable speed pumps in full-page advertisements in leading industry trade magazines; Pentair
continued to run its advertisements for the IntelliFlo@ system in most of the same publications.
In November 2010, both parties displayed and marketed their respective variable speed pool
pump systems at the International Pool, Spa & Patio Expo in Las Vegas, and the 2010 Piscine
World Swimming Pool Show in Lyon, France. In 2011, both parties again exhibited their
products at these and other trade shows. The parties are looking forward to the Atlantic City
and Orlando shows in early 2012.

4 The SVRS ("Safety Vacuum Release System") version of the EcoStar@ was not
available for purchase until early 2011.
5

Pentair's Product Manager for Pumps, Zack Pickard, first recalled hearing about the
EcoStar@ system from a Pentair sales representative in late 2010, about the time Hayward
announced the pump's availability. Packard reported that he had difficulty obtaining specific
information about the EcoStar@ products and had trouble acquiring an EcoStar@ pump until
late 2010, at which time Pentair engineers began analyzing the EcoStar@'s technology and
operation. In October and December 2010, Pentair's '420, ' 597 and '600 patents were issued.
In February or March of 2011, Hayward began also selling the EcoStar SVRS pumps.
Due to adjustments and improvements in its manufacturing and supply processes, Hayward's
EcoStar@ and EcoStar SVRS variable speed pump sales increased handsomely through the
summer of 2011, but did not meets the company's overly optimistic early internal projections
for 2011. E.g., Exhibit 4 to Dubis Decl. [DE-Bo], PX-111 (under seal).
About a year after Hayward began selling the EcoStar@ variable speed pump and
ProLogic@ controller in August 2010, Pentair hired Dr. Edward Randolph Collins, Jr. ("Dr.
Collins") to test and provide expert analysis of the technology and processes of the EcoStar@
system, and to offer opinions as to possible infringement of Pentair's patents commercialized in
the IntelliFlo@ and IntelliTouch@ products. On August 31, 2011, Pentair filed the Complaint
[DE-I] initiating this litigation, alleging infringement of the four patents-in-suit by Hayward's
sales ofthe EcoStar@ variable speed pumps and ProLogic@ controllers. On the same date,
Pentair provided a copy of the Complaint to Hayward and, noting time is ofthe essence,
requested that Hayward voluntarily and immediately cease and desist sales of the EcoStar@
systems. See Exhibits PX-25 and PX-26 to Declaration of Melanie Black Dubis in Support of
Pentair's Memorandum [DE-22].5 By letter dated September 20, 2011, Hayward declined to

5 Pentair's exhibits to Melanie Black Dubis's Declaration [DE-22] will be designated
herein by "PX-##."

6

withdraw the EcoStar@ products Pentair contends are infringing. Ten days later, Pentair filed
this Motion for Preliminary Injunction [DE-7].
D. The Litigation
Although the details are more fully set forth elsewhere in the record, see, e.g., Order
[DE-103], during the ensuing sixty days or so, Hayward filed an Answer [DE-32] to the
Complaint raising counterclaims seeking declaratory judgment that the four patents-in-suit are
invalid, and that Hayward's products did not infringe any of the subject patents. On the last day
it contends it could do so without first obtaining leave or consent, Hayward filed an Amended
Answer and Counterclaims [DE-50] identical to the original pleading [DE-32], except it added a
counterclaim alleging that Pentair is infringing its patent, United States Patent No. 6,026,804
(the" '804 Patent").
On October 13, 2011, Pentair instituted a lawsuit in the Central District of California,

Pentair Water Pool & Spa, Inc. v. Hayward Industries, Inc. and Hayward Pool Products, Inc.,
No. 2: 11-CV-10280-GW-FMO, seeking a declaratory judgment that Pentair is not infringing
Hayward's '804 Patent, and that the '804 Patent is invalid. The very next day, October 14, 2011,
Pentair filed a Motion to Strike [DE-72] Hayward's Amended Answer and Counterclaims, or, in
the Alternative, to Sever the '804 Patent counterclaim from this litigation and transfer it to the
Central District of California where Pentair had initiated the declaratory judgment action hours
earlier. 6 The court allowed Pentair's uncontested Motion to File Amended Complaint [DE-66]
adding an allegedly related patent infringement claim concerning United States Patent No.
8,043,070 (the" '070 Patent"), against Hayward. By leave of court, Pentair's Amended
Complaint [DE-112] was filed on January 17,2012.

6 This Motion to Strike still is in the briefing process and is not related to the patents at
issue in Pentair's preliminary injunction motion.

7

In the meantime, the parties were engaged in briefing and teleconferencing with
Magistrate Judge David Daniel, KD.N.C., concerning Pentair's requests for expedited discovery
on the preliminary injunction issues. Directing Hayward to forego exhibiting the accused
devices at the impending November 24, 2011, trade show in Las Vegas, Judge Daniel ordered
[DE-44] limited discovery under a tight time schedule. 7 The undersigned scheduled a hearing
on the Motion for Preliminary injunction on January 12, 2012
Declarations were filed and depositions taken. Reams and reams of pleadings and
supporting documentation were delivered to chambers as the parties supplied courtesy copies
of every oversized filing. Pentair filed its Reply [DE-78/89] over Hayward's Objection and
Motion to Strike [DE-94]. See Order [DE- 100] (denying Hayward's motion to Strike [DE-94]
Pentair's Reply and voluminous supporting documentation [DE-78, -79, -[8]0, -81, -82, -83,
-84, -85, -86, and -87]; court records revealed the mandatory electronic filing process had not
completed until 45 seconds after midnight on the discovery deadline, December 30th, 2011). In
preparation for the hearing on preliminary injunction, the court read all the motions and
memoranda and most of the supporting documentation that had been filed in the case.
The hearing began at 10:00 am before the undersigned on Thursday, January 12, 2012.
Extra tables and chairs were moved into the courtroom well to accommodate the bevy of
attorneys who turned out for both parties. The court recessed at 6:00 pm and reconvened the
next morning at 9:00. Prior to commencement of the hearing, Pentair had set up several
variable speed pumps in the courtroom, one of which purportedly was configured as a working
model of the IntelliFlo®, and one of which was an EcoStar® pump. Hayward objected to the

7
Hayward points out that it had offered to refrain from exhibiting at the Las Vegas
trade show in exchange for Pentair's agreement to a period of limited expedited discovery and
an enlarged period within which Hayward could respond to Pentair's preliminary injunction
motion. See Hayward's Memorandum [DE-34], p. 3. Hayward complained that Pentair refused
to accede to "any reasonable accommodation." ld.

8

presence of the pumps. The court did not compare the physical models to each other, but was
able, through the parties' responses to specific questions, to identify discrete components and to
better visualize the concepts described in the patents, the supporting literature, the
documentation before the court and the attorneys' arguments. Counsel presented well­
organized arguments in a manner that was admirably limited to the pertinent issues before the
court, and made excellent use of summaries, illustrations and diagrams.

II. Legal Standards
A. Patent Infringement

Title 35 U.S.C. § 271 defines patent infringement stating, "whoever without authority
makes, uses, offers to sell, or sells any patented invention, within the United States, or imports
into the United States any patented invention during the term of the patent therefor, infringes
the patent." 35 U.S.C. § 271(a). This showing requires a party "to perform each and every step
or element of a claimed method or product." BMC Resources, Inc. v. Paymentech, L.P., 498
F.3d 1373, 1378 (Fed. Cir. 2007) (citing Warner-Jenkinson Co., Inc. v. Hilton Davis Co.,

520

U.S. 17, 29 (1997)). Pentair contends that Hayward's EcoStar@ and EcoStar SVRS pumps and
companion ProLogic@ controller literally infringe the three patents pertinent to the motion for
preliminary injunction.
In patent cases, "a preliminary injunction ... involves substantive matters, unique to
patent law and, therefore, is governed by the law of [the Federal Circuit]." Hybritech, Inc. v.

Abbott Labs, 849 F.2d 1446, 1451 n.12 (Fed. Cir, 1988). Purely procedural questions, however,
are controlled by the law of the appropriate regional circuit. See id.
B. Preliminary Injunction Factors

A patentee is entitled to a preliminary injunction for alleged patent infringement if it can
establish four factors: (1) a likelihood of success on the merits; (2) a likelihood of irreparable
harm if an injunction is not granted; (3) a balance of hardships; and (4) the impact of an
9

injunction on the public interest. Winter v. Natural Res. De! Council, Inc., 555 U.S. 7, 20
(2008); Astrazeneca LP v. Apotex, Inc., 633 F.3d 1042, 1049 (Fed. Cir. 2010). A preliminary

injunction cannot issue, however, if the patentee fails to establish both of the first two factors.

Amazon.com, Inc. v. Barnesandnoble.com, Inc, 239 F.3d 1343, 1350 (Fed. Cir. 2001).
1.

Claim Construction

Before attempting to assess whether a defendant is infringing the patent at issue or if the
patentee can demonstrate that any showing of invalidity lacks substantial merit, the court must
construe the claims at issue, giving the claims the same meaning for purposes of both the
infringement and the validity analyses. Amazon.com, 239 F.3d at 1351 ("Only when a claim is
properly understood can a determination be made whether the claim 'reads on' an accused
device or method, or whether the prior art anticipates and/or renders obvious the claimed
invention"). If literal infringement is alleged, the patentee must demonstrate that the
defendant's device contains every limitation of the allegedly infringed claims. See Warner­

Jenkinson Co., 520 U.S. at 29, which is a question of fact, Bai v. L & L Wings, Inc., 160 F.3d
1350, 1353 (Fed. Cir. 1998). See also Searfoss v. Pioneer Conso!. Corp., 374 F.3d 1142, 1148
(Fed. Cir. 2004) (the court then must compare the patent claims as properly construed,
limitation-by-limitation, to the features of the allegedly infringing device).
Claim construction involves determining what the language of the claim means, and
courts generally use three sources to determine the meaning: the claims themselves, the
specification, and the prosecution history. These sources are the "intrinsic evidence" of a
claim's meaning. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979-80 (Fed. Cir.
1995) (citation omitted).
Claim terms should usually be given their ordinary and customary meaning, which is
"the meaning that the term would have to a person of ordinary skill in the art in question at the
time of the invention," who is likely to read the claim term in the context of the entire patent.
10

Phillips v. A WH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). It is elementary in the law of
patents that claims must be read and interpreted in the light of specifications. However, "in
looking to the specification to construe claim terms, care must be taken to avoid reading
'limitations appearing in the specification ... into [the] claims.' " Interactive Gift Exp., Inc. v.

Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (quoting Intervet Am. Inc. v. Kee-Vet
Labs, Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989)). "We recognize that there is sometimes a fine
line between reading a claim in light of the specification, and reading a limitation into the claim
from the specification." Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir.
1998). To locate that fine line, courts must look "to the specification to ascertain the meaning of
the claim term as it is used by the inventor in the context of the entirety of his invention." Id. at
1187.
Usually, the intrinsic evidence should suffice to enable one to determine the meaning of
a claim term. Markman, 52 F.3d at 986 (commenting that "ideally there should be no
'ambiguity' in claim language to one of ordinary skill in the art that would require resort to
evidence outside the specification and prosecution history," citing the disclosure requirements
of 24 U.S.C. § 112 (1994)). When intrinsic evidence is unambiguous, it is improper for the court
to rely on extrinsic evidence, such as expert testimony for purposes of claim construction.

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,1583 (Fed. Cir. 1996).
When necessary and in its discretion, a court may consider "extrinsic" evidence to
determine the meaning ofthe claim language. Markman, 52 F.3d at 980 (citation omitted).
Extrinsic evidence may be useful to explain scientific principles, technical terms, terms of art,
and the state of the prior art at the time of the invention. Id. "While extrinsic evidence may be
useful in shedding light on the relevant art, it is less significant than the intrinsic record in
determining the 'legally operative meaning of disputed claim language.' " Bushnell, Inc. v.

Brunton Co., 673 F. Supp. 2d 1241, 1251 (D. Kan. 2009) (quoting C.R. Bard, Inc. v. U.S.
11

Surgical Corp., 388 F.3d 858,862 (Fed. Cir. 2004))."Extrinsic evidence is that evidence which
is external to the patent and file history, such as expert testimony, inventor testimony,
dictionaries, and technical treatises and articles." Vitronics, 90 F.3d at 1584. Prior art also may
constitute extrinsic evidence. See id. at 1584-85.
2.

Likelihood ofSuccess on the Merits

Likelihood of success on the merits is the first factor for consideration. By definition, if
the patentee is not likely to succeed at trial in proving infringement of its patent by the accused
device, then the patentee cannot have been irreparably harmed thereby and is not entitled to a
preliminary injunction against the alleged infringer.
To prove a likelihood of success on the merits, a patentee such as Pentair must show,
first, that it likely will prove that the challenger, Hayward, infringes a patent-in-suit, and
second, that its infringement claims likely will withstand Hayward's challenges to the validity of
the patents-in-suit. Astrazeneca, 633 F.3d at 1050. The court views these matters in light of
the burdens and presumptions that will inhere at trial. See Gonzales v. 0 Centro Espirita

Beneficente Uniao do Vegetal, 546 U.S. 418, 429 (2006).
At the preliminary injunction stage, an issued patent enjoys the same presumption of
validity under 35 U.S.C. § 282 as at any other stage of the litigation. Canon Computer Sys., Inc.

v. Nu-Kote Int'l, Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1998). However, if the alleged infringer
raises a "substantial question" of either non-infringement or invalidity, the patentee, to carry its
burden of showing a likelihood of success at trial, must establish that the challenger's defenses
" 'lack[ ] substantial merit' " before an injunction may issue. Titan Tire Corp. v. Case New

Holland, Inc., 566 F.3d 1372, 1377 (Fed. Cir. 2009) (quoting New England Braiding Co. v. A. W.
Chesterton Co., 970 F.2d 878, 883 (Fed. Cir. 1992)). That is, the challenger may come forward
with evidence of patent invalidity and if it does so, the patentee then has the burden of

12

responding with rebuttal evidence that may include analysis and argument. Titan, 566 F.3d at
1377.
[T]he trial court "does not resolve the validity question, but rather must ... make
an assessment of the persuasiveness of the challenger's evidence, recognizing
that it is doing so without all evidence that may come out at trial." ... Instead of
the alleged infringer having to persuade the trial court that the patent is invalid,
at [the preliminary injunction] stage it is the patentee, the movant, who must
persuade the court that, despite the challenge presented to validity, the patentee
nevertheless is likely to succeed at trial on the validity issue.
Id. (quoting New England Braiding, 970 F.2d at 882-83).

The general rules applicable to injunctions in civil cases apply as well to
injunctions in patent cases, eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388,394 (2006), the
test for which places the burden on the plaintiff to prove likelihood of success. In analyzing the
likelihood of success factor, the court hears and carefully considers all the evidence at this early
stage of the litigation and determines whether it is more likely than not that the alleged infringer
will be able to prove by clear and convincing evidence at trial that the patents-in-suit are invalid.
Id. at 1379. If the court concludes that the patentee has not presented contrary evidence,

analysis and/or argument that establishes the challenger's "substantial question" regarding
invalidity "lacks substantial merit," then the patentee, by definition has not shown a likelihood
of success at trial on the merits, and a preliminary injunction may not issue. See id. at 1378.
3. Likelihood of Irreparable Harm
As the Supreme Court recently has articulated the preliminary injunction standard, a

plaintiff must demonstrate more than the possibility of irreparable harm; the plaintiff must
"demonstrate that irreparable injury is likely in the absence of an injunction." Winter, 555 U.S.
at 22 (emphasis in original). "[W]hen the failure to grant preliminary relief creates the
possibility of permanent loss of customers to a competitor or the loss of goodwill, the
irreparable injury prong is satisfied." Multi-Channel TV Cable Co. v. Charlottesville Quality
Cable Operating Co., 22 F.3d 546, 552 (4th Cir. 1994) (internal citation omitted). Nevertheless,

13

the Federal Circuit has made clear that, "[w]hile this court has repeatedly upheld the right of a
patentee to a preliminary injunction and sometimes spoken of the possible inadequacy of
money damages, there is no presumption that money damages will be inadequate in connection
with a motion for an injunction pendente lite. Some evidence and reasoned analysis for that

inadequacy should be proffered." Nutrition 21 v. United States, 930 F.2d 867, 871-72 (Fed. Cir.
1991) (citation omitted) (emphasis added); see also MicroAire Surgical Instruments, LLC v.

Arthrex, Inc., 726 F. Supp. 2d 604,636-39 (W.D. Va. 2010) (finding no irreparable harm to
goodwill when it was "logically and factually unclear" how introduction of a competing product
would injure the plaintiff's goodwill when plaintiff did not demonstrate more than the potential
or lost sales or give a reasonable basis for its conclusion that its training programs would lose
value).

4. Balance ofEguities
Next, the court is required to "balance the competing claims of injury and must consider
the effect on each party of the granting or withholding of the requested relief." Amoco Prod. Co.

v. Village ofGambell, 480 U.S. 531, 542 (1987). Should the plaintiff have met Winter's other
three requirements and the court finds that the balance of the equities favors the plaintiff, then
he is entitled to a preliminary injunction.

5. Public Interest
Finally, the court must "pay particular regard for the public consequences" in evaluating
whether preliminary injunctive relief is appropriate. See Weinberger v. Romero-Barcelo, 456
U.S. 305, 312 (1982) (citing Railroad Comm'n v. Pullman Co., 312 U.S. 496, 500 (1941). "The
patent system represents a carefully crafted bargain that encourages both the creation and the
public disclosure of new and useful advances in technology, in return for an exclusive monopoly
for a limited period of time." Pfaffv. Wells Elecs., Inc., 525 U.S. 55, 63 (1988) (citation
omitted); accord Pfizer, Inc. v. Teva Pharm., USA, Inc., 429 F.3d 1364, 1382 (Fed. Cir. 2005).
14

On the other hand, "[t]he public has a substantial interest in assuring free competition in the
marketplace" among non-infringing products, see World Health Prods., LLC v. Chelation
Specialists, LLC, No. 2:06 CV 633,2006 WL 2527428 (D. Utah Aug. 28, 2006) (UP), because

"the public benefits from lower prices resulting from free market competition," Canon, Inc. v.
GCC Int'l, Ltd, 263 Fed. App'x 57, 62 (Fed. Cir. 2008) (UP). Pentair recognizes that, although

rarely will the public interest be seriously affected by the grant or denial of an injunction, Rite­
Hite Corp. v. Kelley, Inc., 56 F.3d 1538,1547 (Fed. Cir. 1995), "examples of such critical public

interests include cases involving national security and public health and safety (e.g., a vaccine,
new cure or other vital medications)," Pentair Memorandum [DE-22] p. 28, none of which
Pentair contends is at issue in this case.

III. DISCUSSION
This order presumes at least a passing familiarity with the facts of this patent
infringement case, the parties' arguments, the motions pending, the complexity and volume of
materials presented to the court and the desire by everyone involved that an order issue on the
plaintiffs' Motion for Preliminary Injunction [DE-7] before the beginning of the Atlantic City,
Pool and Spa Expo on January 24, 2012. The parties and United States Magistrate Judge David
W. Daniel and his staff have done an extraordinary job of assembling, choreographing and

presenting a staggering array of motions, exhibits, declarations, depositions, charts, Power­
Point presentations, and kilos of supporting documentation materials culminating in a day and
a halfs worth of oral argument on January 12, 2012.
Before the instant motion even was ripe, in the weeks leading up to oral argument, and
in the eleven days thereafter, as permitted by the demands of the court's criminal docket, the
undersigned has been immersed in absorbing the pertinent facts, relevant issues, parties'
relative positions, and controlling patent law jurisprudence involved in this case. Thanks to the
parties' and Judge Daniel's inspired efforts, the court has reached a decision on the plaintiffs'
15

motion for preliminary injunction. Despite its own best efforts, however, there simply has been
insufficient time and resources available to the court to complete a properly constructed and
supported written order documenting and memorializing its decision.
In light of those circumstances, the court deems it to be in the best interests of the
parties, the administration of justice, and the most efficient use of judicial resources to enter
this summary order.
The court hereby enters the following:
IV. TENTATIVE FINDINGS & CONCLUSIONS

A. The '597 Patent
1.

Construction/Validity/Infringement
a. Pentair's construction ofthe Claim 1of the '597 Patent, as clarified in Dr.

Collins's Supplemental Declaration [DE-81] is correct in the critical conclusions that Claim 1:
i. Does not require that the remote "master" pump controller usurp total
or complete control of all capabilities and functions of the onboard "slave" pump controller
when the master remote is enabled or connected to the pump/motor unit; the onboard pump
controller at all times retains and maintains operation of variables not integral to the system's
"optimization of energy consumption" (flow as determined by time and speed) functions; and
ii. Does not require that the patented devices transmit or receive real­
time feedback from remotely located sensors in order to perform its "optimization of energy
consumption" functions.
b. To the extent Hayward's evidence reveals vulnerability in the '597 Patent's
Claim 1or raises questions of invalidity, or anticipation/obviousness based on the Ehlers
publication and/or the Danfoss Manuals, Pentair has presented credible rebuttal evidence
sufficient to demonstrate those defenses lack substantial merit. See Titan Tire, 566 F.3d at
1377·
16

c. Pentair is likely to succeed on the merits at trial of demonstrating that
Hayward's accused products infringe independent Claim 1 of the '597 Patent.
d. Because the court tentatively concludes that Pentair is likely to succeed on the
merits of Claim 1, Hayward's defenses of invalidity, anticipation/obviousness based on the
Ehlers publication and/or the Danfoss Manuals lack substantial merit as to the remaining seven
asserted dependent claims of the '597 Patent;
e. Accordingly, the court tentatively concludes that Pentair is likely to succeed on
the merits of the validity of the '597 Patent and Hayward's infringement of it by the EcoStar®
variable speed pumps and ProLogic® controller.
2.

Likelihood ofIrreparable Harm
a. Pentair's evidence of the likelihood that it has or will suffer "irreparable harm"

is entirely conclusory, speculative and unsupported by any reliable competent evidence that
reasonably is or should be available at this stage of the litigation; Pentair's pump products
manager was unable to provide either hard figures or a personal opinion of Pentair's current or
projected market share in the variable speed pump market, and could not guess what main
competitor Hayward's numbers might reflect;
b. Pentair's own evidence and argument that it is the leading supplier of variable
speed pump technology in an industry where owner brand-loyalty is the norm and in which its
name is synonymous with innovative high-quality variable speed pool and spa pumps, is out-of
sync with its simultaneous claim that it likely will suffer irreparable harm from Hayward's
continued sale of its products;
c. Hayward has presented confidential, tangible, well-supported and competent
evidence supporting its contention that Pentair has not and will not likely suffer irreparable
economic or intangible harm if a preliminary injunction is not entered; Hayward admitted
overly-optimistic initial sales projections and possible product supply shortcomings following
17

initial roll-out. Hayward produced concrete estimates of its past, current and projected sales
and market share, and offered opinions concerning those of its competitor, Pentair;
d. Hayward's evidence and argument concerning Pentair's delay in seeking
preliminary injunctive relief militates against a viable perception by Pentair of threatened
irreparable harm from Hayward's accused devices in the fourteen months it took for Pentair to
file its motion for preliminary injunction;
e. The evidence now before the court leads unmistakably to the tentative
conclusion that Pentair is has not shown that it is likely to suffer irreparable harm in the sense
or to the degree necessary to justify the imposition against Hayward of a preliminary injunction
concerning its EcoStar® and EcoStar SVRS variable pool pumps, and ProLogic® devices
pending trial. See, e.g., MicroAire Surgical Instruments, 726 F. Supp. 2d at 636-39.

3. Balance ofthe Equities
a. At this point, there does not appear to be much if any tipping of the scales one
way or the other;
b. The weight of Pentair's likelihood of success on the merits of the validity and
enforceability of '597 Patent is counterbalanced by such burden as Pentair's delay in pursuing
an injunction may have on Hayward's ability to move forward.

4. Public Interest
a. Pentair enjoys the strong public interest in the law's protection of an
inventor's right to exclusivity for a limited period of time that "encourages both the creation and
the public disclosure of new and useful advances in technology." Pfaff, 525 U.S. at 63.
b. Hayward's argument in favor of robust competition in the marketplace is
bolstered by the especially strong public interest in the development of technology that
conserves valuable environmental and economic resources.

18

c. Because the court has concluded that Pentair has not demonstrated the
necessary likelihood irreparable harm, and that the subject matter of the patents-in-suit and
accused devices address matters of public interest in cost and energy conservation, the court
tentatively finds that the public interest factor slightly favors Hayward.
The court's balancing of the factors leads to the conclusion that, on the present record,
Pentair's likelihood of success on prosecuting the merits of its infringement claims against
Hayward on the '597 Patent is substantially outweighed by Pentair's failure to project even a
colorable showing of the likelihood of irreparable harm, and the court's tentative conclusion
that the public interest slightly tips in favor of Hayward.

B. The '420 Patent
1.

Construction/Validity/Infringement
a. The '420 Patent describes a device and method for detecting an overheat

condition of a motor that shuts the motor off when a heat sink senses an operating temperature
that exceeds a (first) predetermined upper limit, then continues monitoring the temperature of
the motor until the heat sink senses that the motor temperature has cooled to or below a second
predetermined temperature ("limp mode temperature limit"), at which the device attempts to
restart the motor. The patent also calls for the generation of fault condition codes and alerts.

See Claim 4. The '420 Patent is a safety device and method.
i. The term "limp mode temperature limit" is a second, predetermined

temperature value at which a shut-down motor connected to a pump safely attempts to restart
after an overheating. Claim 1 of the '420 Patent requires monitoring motor temperature by a
heat sink on a controller physically attached to the motor; shutting down the drive to the motor
once the heat sink temperature [measuring motor temperature] is raised above a [first,
predetermined] temperature upper limit; continuing to monitor the heat sink temperature after
the drive is shut down; and attempting to restart the drive to the motor when the heat sink
19

temperature falls below a [second, predetermined] "limp mode temperature limit." Collins
Supp. Decl. [DE-81],

~

140.

ii. Claim 1 of the '420 Patent does not require a third, intermediate
operating mode, a "limp mode," to occur when the heat sink detects motor overheating prior to

shutting off the motor. Hayward's insistence that a motor actually enter into an intermediate
"limp mode" before shutting off is supported only by FIG.4 of the '420 Patent, which is directed
to a distinct embodiment that requires additional features not contained in the Claim 1
language. 2 The specifications explicitly note that, "the embodiments ... as disclosed in the
accompanying drawings are illustrated by example only. The various elements and
combinations of elements described... can be arranged and organized differently to result in
embodiments which are still within the spirit and scope of the present invention. '420 Patent,
Exh. PX-2 to Dubis Decl.[DE-22], col. 2,11.27-33.
iii. The language of Claim 1 plainly calls for a motor re-start attempt
after shut-down, once the heat sink detects that the motor temperature is at or below the
predetermined "limp mode temperature limit." Hayward's interpretation of the claim, as
illustrated by the embodiment depicted in FIG. 4, does not require the motor to attempt a
restart after operating in limp mode and then shutting down.
b. The parties agree that the EcoStar@ variable speed pumps do not operate in a
third "limp mode." See Hopkins Decl. [DE-53]

~

66-67. Rather, as Prof. Hopkins observed,

"[a]s temperature increased in each test, the motor speed was monitored. Based on my

2
The FIG. 4 illustrated embodiment is the only one of 12 illustrations that described "a
limp mode method of operation for use with the pump control system of FIG. I." '420 Patent,
Exh. PX-2 to Dubis Decl.[DE-22], col. 2,11.43-44; id. at FIG. 8, Sheet 7 of 12. Thus, while a
device may be configured to slow an overheated motor to a third, intermediate "limp mode"
before shutting the motor down as illustrated in FIG. 4, that step is not required by Claim 1 of
the patent. See, e.g., FIG. 8. "Limp mode temperature limit" is a measure oftemperature value,
not a distinct mode of motor operation.

20

observations, the motor speed remained substantially constant notwithstanding the increase in
sensed temperature up to the point at which the pump shut down." Hopkins Dec!. [DE-53], 1[
64, p. 21. Hopkins reported his tests revealed that the EcoStar@ pump motor shut down at
about 82 degrees C, and attempted a restart sequence when it had cooled to about 70 degrees C.
This operation is consistent with the method described in Claim 1 ofthe '420 Patent.
c. To the extent Hayward's evidence reveals vulnerability in the '420 Patent's
Claim 1 or raises questions of invalidity, or anticipation/obviousness based on the Commander
SE User Guide, Exh. DX-23 to Bromberg Dec!. Notice [DE- 60], Pentair has presented credible
rebuttal evidence sufficient to demonstrate those defenses lack substantial merit. See Titan
Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1377 (Fed. Cir. 2009).
i. The Commander SE3 User Guide lacks the element, required in Claim 1

ofthe '420 Patent, that the unit's controller be physically attached to the pump motor to detect
a fault condition in the motor; the Commander SE is designed as a stand-alone unit electrically
connected to the motor. See Collins Supp. Dec!. [DE-81] 1[153 (citing Exh. E to Hopkins Decl.,
p.1).
ii. The Commander SE User Guide does not disclose that the unit
continues to monitor motor temperature after an overheating condition has caused the motor to
shut down; if an overheating condition is detected, the drive continues to operate by
incrementally reducing switching frequencies within a range between two predetermined
temperatures before the drive is tripped and generates a fault code. See Exh. E, Claim Chart for

3 The Commander SE is a "variable speed drive for 3 phase induction motors from
0.24kW to 37 kW."
21

'420 Patent) to Hopkins Decl, [DE-53] p. 3 (copy of Table in Section 5.18, p. 44, of Commander
SE User Guide).4
iii. While the Commander SE's process of incrementally reducing
switching frequencies within a preset limit to avoid tripping the drive may be conceptually
analogous to Prof. Hopkins' example of an embodiment of the '420 Patent that employs an extra
"limp mode" speed of operation in an overheating event as illustrated by FIG. 4, the court has
rejected Hayward's insistence that Claim 1 of the '420 patent contains an element requiring
reduction to a separate mode of operation before motor shut-down on overheating.
iv. It does not appear that the term "reset" as used in the Commander SE
User Guide has the same meaning as the term "restart" in Claim 1 of the' 420 Patent, as Prof.
Hopkins assumes. See Collins Suppl. Decl. [DE-81] at ~ 161.
A. Dr. Collins notes the functional difference in the meaning of

the two terms as they would be understood by a person of ordinary skill in the art. Specifically
referring to the Commander SE, Dr. Collins explains, "the fault code generated by the trip will
prevent the drive from being restarted. By 'resetting' the drive, the error/fault code is cleared
from the controller. This does not restart the drive, but simply allows the drive to be restarted."
Collins Supp!. Decl. [DE-81] at ~ 160.

B. Moreover, the court is persuaded by Dr. Collins's explanation
that an automatic restart function on an industrial motor drive would be inherently dangerous.
He quotes Commander SE User Guide warning language that cautions, "[w]hen a trip occurs,
the Commander SE will automatically reset the control word [fault code] to o. This ensures

4 Rather, the Guide explains that the "Commander SE contains a heatsink thermistor
that monitors the temperature of the drive's heatsink. If the switching frequency is set above
3kHz and the heatsink temperature increases above set levels, the drive will reduce the
switching frequency in order to preventthe drivefrom tripping on heatsinkover-temperature
(OHt2). If the switching frequency is set to 3kHz and the heatsink temperature increases above
the maximum allowable level, the drive will trip on Oht2." Id. (Emphasis added).
22

that, for safety reasons, the Commander SE is in a safe, disabled state and cannot restart

immediately when it is reset." Id. at ~ 166 (emphasis added) (citation omitted).
d. Hayward's evidence supporting its argument that the Commander SE User's
Guide anticipated the '420 Patent lacks substantial merit; accordingly, the court tentatively
concludes that the '420 Patent is not invalid based on anticipation by the Commander SE User's
Guide.
e. The court tentatively concludes, therefore, that Pentair is likely to succeed on
the merits of its claim that the EcoStar infringes Claim 1 (and also Claim 4) of the '420 Patent.
2.

Likelihood ofIrreparable Harm and Balance of Equities
a. The court hereby ADOPTS and INCORPORATES as to the '420 Patent, its

tentative findings and conclusions set forth above concerning the '597 Patent. In short, Pentair
has failed to offer competent sufficient evidence suggesting a likelihood that it would suffer
irreparable harm if a preliminary injunction were not granted, or that the balance of equities
tips appreciably in its favor.

3. Public Interest
a. The court, in its discretion, tentatively finds that the public interest does not
support one party's position over the other, except as noted in the court's discussion of public
interest related to the '597 Patent. At this stage of the litigation, this factor is neutral.
For the foregoing reasons, therefore, the court tentatively concludes that, based on the
burdens applicable at this stage of the litigation but anticipating those that will inhere at trial,
the '420 likely will be found valid at trial and that the accused EcoStar@ device infringes it.
However, Pentair again has failed to make even a colorable showing of the likelihood it will
suffer irreparable harm, which is essential to demonstrating the propriety of a preliminary
injunction. The public interest factor is neutral.

23

c.

The '600 Patent
1.

Construction/Infringement/Validity
a. The '600 Patent, like the '420 Patent, was issued to Koehl in 2010. It

describes a "method of detecting a foreign object obstruction in a pool or spa." At issue here is
the following language contained in an element of Claim 1: "determining whether a fault
condition has occurred due to the presence of a foreign object obstruction in the pool or spa
based on the voltage, the current, and the power factor," Because both parties' technical
witnesses agree that the language of the patent requires that the device detect a foreign object in
the pool by measurement of three parameters, "voltage, current and the power factor," the court
tentatively concludes that use of all three parameters is required by Claim 1.
b. Hayward contends its EcoStar@ devices do not infringe the '600 Patent
because (1) the EcoStar@ variable speed pump does not include the feature at all, and (2) the
EcoStar SVRS variable speed pump including safety vacuum release system, detects the
presence of a foreign object in the pool by measuring only one parameter, that being current.

See Hopkins Decl. [DE-53] at ~ 92.
i. Prof. Hopkins did not actually test either the EcoStar@ or the EcoStar

SVRS variable sped pump. He relied for his conclusions on conversations he had with "Steve
the designer" at Hayward, who explained that the pump detected a "differential in current,"
Hopkins Depo" Exh. 17 to Dubis Decl. [DE-80] PX-138, at pp. 303-09, and ifthe current
dropped by ten per cent "based on a repetitively-measured ten-minute running current average,
the pump recognizes a fault condition and shuts down the motor." Hopkins Decl. [DE-53] at ~
92.
ii. After submitting his initial Declaration, Exh. to Pentair Memorandum
[DE-22], Dr. Collins was able to perform testing on an EcoStar SVRS variable speed pump. He

24

declares that his testing on the product independently confirmed his earlier conclusion that the
EcoStar@ and EcoStar SVRS (the EcoStar@ pumps) infringe the

'600

Patent.

iii. The court tentatively credits the detailed analysis contained in Dr.
Collins's Supplemental Declaration explaining the calculation and significance of the "power
factor" as one of three variables sensed by the EcoStar@ pumps and required by Claim 1 of the
'600

Patent. While the exact elements, processes and algorithms involved performing the

sensing operation are frankly beyond the court's current ability to fully understand, the court
perceives that Pentair has explained how the EcoStar@ pumps in fact make use of all three
required parameters in detecting a foreign object obstruction in the pool, generating a fault
code, and shutting down. The EcoStar@ pumps incorporate a power factor correction ("PFC")
circuit (or chip) that holds a power factor and the dc bus voltage nearly constant, so that if there
is an obstruction in the pool, the "load," measured in watts, will change, indicating a change
directly related to current. See id. at ~~ 178-81. Specifically, Dr. Collins states,
In the context of detecting a foreign object obstruction based on voltage, current
and power factor, as required by claim 1 of the 600 patent, the fact that the PFC
circuit determines a power factor and provides for a constant voltage, enables the
controller to compare the current to a threshold and shut down the motor if the
current exceeds the threshold. Without the PFC circuit, a linear mathematical
relationship among certain variables and the real power P would not be present,
potentially leading to faulty-operation and nuisance shutdowns.

Id. at ~ 181.
iv. At the hearing on motion for preliminary injunction, Hayward's
counsel argued, consistently with Prof Hopkins' theory, that Hayward's pumps do not infringe
because they sense only current, as the PFC chip is holding the power factor and voltage
constant.
c. The court has been unable to gain a sufficiently clear understanding of the
parties' contentions concerning the validity/infringement issues related to the '600 Patent,
because of the complexity of the scientific, mathematical and technical explanations and

25

differentiations offered in the materials produced and the arguments of counsel. In its
discretion for purposes of the instant order, the court affords Pentair the benefit of the doubt
and assumes the 600 Patent is valid, and that its is infringed by Hayward's EcoStar® and
EcoStar SVRS variable speed pumps. For this purpose, therefore, the court tentatively
concludes that Pentair has sufficiently demonstrated a likelihood of success on the merits with
regard to its claim that Hayward infringes the '600 Patent.
2.

Likelihood ofIrreparable Harm and Balance of Equities
a. The court hereby ADOPTS and INCORPORATES as to the '600 Patent, its

tentative findings and conclusions set forth above concerning the '597 Patent. In short, Pentair
has failed to offer evidence suggesting the likelihood it would suffer irreparable harm if a
preliminary injunction were not granted, or that the balance of equities tips appreciably in its
favor.

3. Public Interest
a. The public interest is served by both Pentair's Intelli-Flo® and Hayward's
EcoStar SVRS variable speed pumps, in that both are designed to implement life-saving
technology by permitting a pool or spa pump system to shut down when foreign object
obstruction (such as a human's body immobilized by suction over a pool drain) is detected.
Except to the extent that more widespread use of this technology is in the public interest, the
court in its discretion cannot say that this factor favors either of the parties. At this point in the
litigation, the court tentatively finds the public interest factor to be neutral.
For the foregoing reasons, therefore, the court tentatively concludes that, based on the
burdens applicable at this stage of the litigation but anticipating those that will inhere at trial,
the Pentair has demonstrated a likelihood of success with regard to the validity of the '600
Patent and that the accused EcoStar® devices are infringing. However, Pentair again has failed
to make even a colorable showing of irreparable harm, which is essential to demonstrating the

26

propriety of a preliminary injunction. The public's interest is well-served by the technology of
the '600 Patent's life-saving function, but for the present inquiry, it is a neutral factor.
V. ORDER
As explained herein, the court has concluded that, notwithstanding Pentair's likelihood

of success on the merits of its claims concerning the validity of the '597, '420 and '600 Patents
and Hayward's likely infringement at least of independent Claim 1 of each (and Claim 4 of the
'420

and '600 Patents), Pentair has not met its burden to demonstrate that it is likely to suffer

irreparable harm if a preliminary injunction does not issue. Consideration of these tentative
conclusions, the court's tentative conclusions concerning the balance of equities and public
interest factors leads to the ultimate conclusion that Pentair has not shown entitlement to a
preliminary injunction pendente lite against Hayward as to the '597, '420 and '600 Patents.
It therefore is ORDERED that Pentair's Motion for Preliminary Injunction [DE-7]

hereby is DENIED.
SO ORDERED.
This the

.A

)....1 day of January 2012.

27