BASF AGRO B.V., ARNHEM (NL), WADENSWIL BRANCH et al v. MAKHTESHIM AGAN OF NORTH AMERICA, INC. (MANA) et al
Filing
173
MEMORANDUM OPINION AND ORDER signed by JUDGE WILLIAM L. OSTEEN JR. on 5/27/11 that Plaintiffs' Motion for a Preliminary Injunction (see Docs. 8 , 73 , 89 ) is DENIED. IT IS FURTHER ORDERED that the temporary restraining order previously entered in this case (Doc. 127) is DISSOLVED. (Wilson, JoAnne)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
BASF AGRO B.V., ARNHEM (NL),
WADENSWIL BRANCH, et al.
Plaintiffs,
v.
MAKHTESHIM AGAN OF NORTH
AMERICA, INC. (MANA), et al.
Defendants.
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1:10CV276
MEMORANDUM OPINION AND ORDER
OSTEEN, JR., District Judge
Presently before the court is Plaintiffs’ Motion for a
Preliminary Injunction (see Docs. 8, 73, 89).
This court has
considered the relevant pleadings, and a hearing on the motion
was held on May 4-5, 2011.
For the reasons that follow, this
court will deny Plaintiffs’ motion.
Any findings or conclusions
in this Memorandum Opinion are based upon the record as it
relates to Plaintiffs’ Motion for a Preliminary Injunction and
are made for the limited purpose of deciding that motion.
These
findings and conclusions are made without prejudice to future
presentations of evidence or arguments by the parties.
I.
BACKGROUND
Plaintiffs BASF Agro B.V., Arnhem (NL), Wädenswil Branch
(“BASF”) and Bayer S.A.S. (collectively, “Plaintiffs”) allege
1
that Defendants Makhteshim Agan of North America, Inc. and
Control Solutions, Inc. (collectively, “Defendants”) will
infringe United States Patent Nos. 6,414,010 (“the ‘010 patent”)
and 6,835,743 (“the ‘743 patent”), in violation of 35 U.S.C. §
271.
Specifically, Plaintiffs assert that Defendants will
infringe claims 1, 2, 6, 8, 9, 10, 18, 19, 21, and 23 of the ‘010
patent and claims 1, 2, 5, 6, 7, and 14 of the ‘743 patent.
(Pls.’ Mem. Law Supp. Renewed Mot. Prelim. Inj. (Doc. 93) at
11.)1
Inventor Yasuo Kimura (“Mr. Kimura”) acquired the ‘010
patent in 2002 and the ‘743 patent in 2004.
Both patents are
entitled “Pesticidal Pyrazoles and Derivatives,” and both teach a
method of using certain insecticidal compounds.2
Bayer S.A.S. is
the assignee and owner of both the ‘010 patent and the ‘743
patent (collectively, “the Kimura patents”), and BASF is the
exclusive licensee of the Kimura patents in the United States
with respect to the insecticidal compound Fipronil.
(See Compl.
(Doc. 1) ¶¶ 13, 15.)
1
All citations in this Memorandum Opinion to documents
filed with the court refer to the page numbers located at the
bottom right-hand corner of the documents as they appear on
CM/ECF.
2
It is undisputed that the ‘743 patent is a divisional
patent with the same priority date and specification as the ‘010
patent. (See Markman Hr’g Tr. (Doc. 148) at 10-11.)
2
II.
LEGAL STANDARD
“A preliminary injunction is an extraordinary remedy
afforded prior to trial” that temporarily provides “the relief
that can be granted permanently after trial.”
Real Truth About
Obama, Inc. v. FEC, 575 F.3d 342, 345 (4th Cir. 2009), vacated on
other grounds, 130 S. Ct. 2371 (2010) (mem.).
To obtain a
preliminary injunction, a plaintiff “must establish ‘[1] that he
is likely to succeed on the merits, [2] that he is likely to
suffer irreparable harm in the absence of preliminary relief, [3]
that the balance of equities tips in his favor, and [4] that an
injunction is in the public interest.’”
Id. at 346 (alterations
in original) (quoting Winter v. NRDC, Inc., 129 S. Ct. 365, 374
(2008)).
“[I]njunctive relief [is] an extraordinary remedy that
may only be awarded upon a clear showing that the plaintiff is
entitled to such relief.”
Winter v. NRDC, Inc., 129 S. Ct. 365,
375-76 (2008) (citation omitted).
III. ANALYSIS
As an initial matter, this court concludes that it has
jurisdiction to decide Plaintiffs’ Motion for a Preliminary
Injunction at this time.
It is undisputed that, as of the filing
of the complaint in this case, Defendants had not yet engaged in
activities that potentially infringe the Kimura patents.
However, Plaintiffs assert, and this court agrees, that
jurisdiction is proper because Defendants have “taken concrete
3
steps” and “made meaningful preparation . . . with intent to
engage in potentially infringing activities” by, inter alia,
obtaining Fipronil technical material and securing EPA approval
of a master label3 for a Fipronil-related product.
See Sierra
Applied Scis., Inc. v. Advanced Energy Indus., Inc., 363 F.3d
1361, 1378 (Fed. Cir. 2004) (internal quotation marks omitted).
This court begins its substantive analysis by considering
whether Plaintiffs have satisfied the first prong of the test for
preliminary injunctions, that is, whether Plaintiffs have
established that they are likely to succeed on the merits.
Real Truth About Obama, Inc., 575 F.3d at 346.
See
In order to
demonstrate a likelihood of success, Plaintiffs must show that,
“in light of the presumptions and burdens that will inhere at
trial on the merits,” (1) they will likely prove that Defendants
infringe the Kimura patents and (2) Plaintiffs’ infringement
claims will likely withstand Defendants’ challenges to the
validity and enforceability of the Kimura patents.
Genentech,
Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1997)
(citation omitted).
Plaintiffs need only show that they will
likely prove that Defendants infringe “at least one valid and
enforceable patent claim.”
Abbott Labs. v. Andrx Pharm., Inc.,
3
“The [master] label of a termiticide provides important
use instructions that pest management professionals (‘PMPs’) must
follow in order to comply with federal . . . regulations.”
(Potter Decl. (Doc. 95-4) ¶ 28.)
4
473 F.3d 1196, 1201 (Fed. Cir. 2007) (citation omitted).
Plaintiffs contend that the Exterior Perimeter/Localized
Interior (“EP/LI”) treatment instructions that are contained in
the master label for Defendants’ Taurus SC product induce
infringement of the Kimura patents.
(Pls.’ Mem. Law Supp.
Renewed Mot. Prelim. Inj. (Doc. 93) at 11 (“Defendants’ Taurus
label provides instructions for customers to apply the product
using . . . the Exterior Perimeter/Localized Interior (EP/LI)
treatment methods covered by the ‘010 and ‘743 patents . . .
.”).)
Plaintiffs have produced declarations from expert
witnesses whose stated opinions support this argument.
(Potter
Decl. (Doc. 95-4) ¶¶ 31, 65, 143; see Davis Decl. (Doc. 10-3) ¶
31.)
This court will therefore consider the scope of the Kimura
patents in determining whether Plaintiffs are likely to succeed
on the merits.
All parties acknowledge that construction of some of the
Kimura patents’ claim terms is case-dispositive.
Hr’g Statement (Doc. 133) at 2, 19-20.)
(See Joint Pre-
Thus, this court’s
construction of disputed claim terms, and the resulting scope of
the relevant patent claims, substantially affects this court’s
analysis of Plaintiffs’ likelihood of success on the merits.
After this court’s consideration of the parties’ arguments as to
the Markman claim construction issues, particularly as to the
disputed claim term “Process for the protection of a [future]
5
building against damage caused by insects,”4 (Compl. Ex. B (Doc.
1-3) at 5, col. 5, ll. 51-52; id. at 6, col. 7, ll. 42-43; Compl.
Ex. C (Doc. 1-4) at 5, col. 5, ll. 54-55),5 this court concludes
that Plaintiffs have failed to show that they will likely prove
that the asserted claims of the Kimura patents cover the EP/LI
treatment methods described in Defendants’ Taurus SC master
label.
Thus, this court concludes that Plaintiffs have not
established that they are likely to succeed on the merits.
Federal Circuit precedent requires that construction begin
with the claim term itself and the ordinary meaning that would be
4
Determining the scope of patent claims requires
construction of the claims’ terms, which is a matter of law for
the court. See Markman v. Westview Instruments, Inc., 517 U.S.
370, 391 (1996). “Process for the protection of a [future]
building against damage caused by insects” is the disputed claim
term that best illustrates the disclaimer issues in this case,
which this court believes substantially limit the scope of the
Kimura patents for purposes of deciding Plaintiffs’ Motion for a
Preliminary Injunction. This court will enter a final order
construing all the disputed claim terms of the Kimura patents in
the near future.
5
Dependent claims 2, 6, 8, 9, 10, and 18 of the ‘010 patent
incorporate by reference all the limitations of claim 1 of the
‘010 patent. See 35 U.S.C. § 112 (“A claim in dependent form
shall be construed to incorporate by reference all the
limitations of the claim to which it refers.”). Dependent claims
21 and 23 of the ‘010 patent incorporate by reference all the
limitations of claim 19 of the ‘010 patent. See id. Dependent
claims 2, 5, 6, 7, and 14 of the ‘743 patent incorporate by
reference all the limitations of claim 1 of the ‘743 patent. See
id. Thus, this court’s preliminary construction and findings as
to the disclaimers relevant to this disputed claim term, which is
contained in claims 1 and 19 of the ‘010 patent and claim 1 of
the ‘743 patent, apply to all the asserted claims of the Kimura
patents.
6
attributed to the words by a person skilled in the relevant art.
Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 120102 (Fed. Cir. 2002).
Taken in isolation, “Process for the
protection of a [future] building against damage caused by
insects” is self-explanatory and appears to require no special
construction: the Kimura patents claim a process for the
protection of a building against damage caused by insects, and
the patents go on to describe how to practice that process.
Turning to the patents’ specification, however, see Markman v.
Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en
banc), aff’d, 517 U.S. 370 (1996), this court finds a significant
limitation of the claimed process, which is summarized in the
following specification language: “Another object of the instant
invention is to provide a termite treatment without barrier.”
(Compl. Ex. B (Doc. 1-3) at 3, col. 1, ll. 43-44.)
This court
finds the foregoing language to be an express, intrinsic
disclaimer of subject matter, such that this claim term will not
carry its ordinary meaning.
See CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366-67 (Fed. Cir. 2002).
The specification contains some important guidance as to
what Mr. Kimura meant when he disclaimed “barrier” treatments,
stating: “Conventional termite control operators apply the
chemical around or under the building or houses to form a barrier
against termites invasion.
However loopholes in the treatment
7
may cause failure of protection of the houses.”
(Doc. 1-3) at 3, col. 1, ll. 10-13.)
(Compl. Ex. B
Although this language is
helpful, neither the claims nor the specification make fully
clear what is meant by “without barrier,” and this court
therefore turns to the Kimura patents’ prosecution history.
See
Markman, 52 F.3d at 980.
In a Patent and Trademark Office Action dated February 2,
2001, Mr. Kimura’s patent application was rejected, in part
because the examiner deemed the invention unpatentable over
certain prior art.
(Crystal Decl. Ex. 5 (Doc. 51-5) at 5.)
Mr.
Kimura responded on August 2, 2001, with an Amendment in which he
sought to distinguish his invention from the prior art cited by
the examiner.
(Id. Ex. 6 (Doc. 51-6).)
Mr. Kimura summarized
his disagreement with the examiner as follows:
Although some of the documents cited by the Examiner
teach that the continuous barrier may be created by the
application of the insecticide at discrete locations
around the perimeter of the building, the insecticide
is still applied in a manner so that a continuous
barrier is created around the building to be protected.
None of these documents teaches the deliberate creation
of untreated locations (i.e., loopholes) through which
the crawling insect can reach the building without
being exposed to the insecticide.
(Id. at 15.)
Despite Mr. Kimura’s argument, his application was again
rejected in an Office Action dated September 20, 2001.
Decl. Ex. 7 (Doc. 51-7) at 3.)
(Crystal
Mr. Kimura responded on January
22, 2002, with an Amendment After Final Rejection, (id. Ex. 8
8
(Doc. 51-8)), and on January 30, 2002, with a Supplemental
Submission, the latter of which consisted of a Declaration by Dr.
Joe Hope (“Dr. Hope”), who represented himself as “skilled in the
art with respect to the control of termites in domestic
buildings, specifically the control of subterranean termites,”
(id. Ex. 9 (Doc. 51-9) ¶ 5).
Dr. Hope stated that the process
claimed in Mr. Kimura’s application “allows termites access to a
structure that is being protected.”
(Id. ¶ 11.)
He stated
further “[t]hat the teaching of the common general knowledge and
prior art as of [the priority date of Mr. Kimura’s application]
directs the skilled artisan to make a barrier treatment of
chemical insecticide around a structure in order to ensure that
the said chemical insecticide is unavoidable by termites (i.e.,
no untreated locations).”
(Id. ¶ 12.)
In light of the foregoing, this court preliminarily finds
that, in both the specification and during prosecution, Mr.
Kimura disclaimed insecticide application methods that “ensure
that the . . . chemical insecticide is unavoidable by termites.”
(Id.)
What Mr. Kimura claimed as his own invention is an
insecticide application method that “teaches the deliberate
creation of untreated locations (i.e., loopholes) through which
the crawling insect can reach the building without being exposed
to the insecticide.”
(Crystal Decl. Ex. 6 (Doc. 51-6) at 15.)
9
While the prosecution history clarifies that Mr. Kimura
disavowed insecticide application methods that aim to eliminate
“loopholes,” it is the patent specification that demonstrates the
extent to which Mr. Kimura disclaimed such methods.
As noted
above, the specification states: “Conventional termite control
operators apply the chemical around or under the building or
houses to form a barrier against termites invasion.
However
loopholes in the treatment may cause failure of protection of the
houses.”
(Compl. Ex. B (Doc. 1-3) at 3, col. 1, ll. 10-13
(emphasis added).)
This language makes it clear that Mr.
Kimura’s understanding was that applying insecticide without
loopholes either around or under a building would constitute a
barrier treatment.6
In other words, according to Mr. Kimura,
applying insecticide without loopholes around a building, but not
under the building, would constitute a barrier treatment.
Likewise, according to Mr. Kimura, applying insecticide without
loopholes under a building, but not around the building, would
constitute a barrier treatment.
Thus, when Mr. Kimura disclaimed
6
There is no dispute that “around” and “under” refer to
different treatment locations. (See Markman Hr’g Tr. (Doc. 148)
at 48 (“[A]round means exterior. We agree with that. Under
means interior, we agree with that.”).) Thus, this court finds
that “or” in the phrase “around or under” is used in its
disjunctive sense, not its explanatory sense.
Similarly, there is no dispute that, for purposes of
construing the Kimura patents, “around,” “exterior,” and
“outside” are all equivalent. Likewise, there is no dispute that
“under,” “interior,” and “inside” are all equivalent. (See id.)
10
barrier treatments, (id. at 3, col. 1, ll. 43-44 (“Another object
of the instant invention is to provide a termite treatment
without barrier.”)), he disclaimed applying insecticide without
loopholes around a building, and applying insecticide without
loopholes under a building, respectively.
The prosecution history supports this construction.
In
helping to distinguish Mr. Kimura’s application from the prior
art cited by the examiner, Dr. Hope stated:
12. That the teaching of the common general knowledge
and prior art as of [the priority date of Mr. Kimura’s
application] directs the skilled artisan to make a
barrier treatment of chemical insecticide around a
structure in order to ensure that the said chemical
insecticide is unavoidable by termites (i.e., no
untreated locations).
. . . .
14. That, for example, in US Patent 3,624,953 to Crosby,
Crosby recites a method wherein a volatile insecticide is
placed at discrete locations around a house with the
intention that the insecticide may vaporize and thus create
a barrier to termite ingress.
15. That for example, in US patent 5,347,749 to
Chitwood et al., Chitwood et al. recite a method of
resaturating a dirt layer beneath and around a
foundation of a house so as to renew a previously
applied barrier treatment against termites.
16. That, for example, in US patent 5,390,440 to
Mihealsick, Mihealsick recites a method of accurately
measuring the amount of extermination fluid that would
be placed under a concrete slab and/or around a house
to optimise the dose; and that this method is
understood by a person of ordinary skill in the art as
a method of creating or regenerating a barrier to
termites.
11
(Crystal Decl. Ex. 9 (Doc. 51-9) ¶¶ 12, 14-16 (emphases added).)
Dr. Hope’s description of the Crosby prior art demonstrates his
understanding that applying insecticide without loopholes only
around a building would constitute a barrier treatment.
His
description of the Chitwood prior art demonstrates his
understanding that applying insecticide without loopholes both
around and under a building would constitute a barrier treatment.
Finally, Dr. Hope’s description of the Mihealsick prior art
demonstrates his understanding that applying insecticide without
loopholes only around a building, only under a building, or both
around and under a building would constitute a barrier treatment.
Thus, the intrinsic record shows that when Mr. Kimura disclaimed
barrier treatments, (Compl. Ex. B (Doc. 1-3) at 3, col. 1, ll.
43-44 (“Another object of the instant invention is to provide a
termite treatment without barrier.”)), he disclaimed applying
insecticide without loopholes around a building, under a
building, and both around and under a building.
Plaintiffs have presented a good deal of extrinsic evidence
in support of the proposition that a person of ordinary skill in
the relevant art at the time of Mr. Kimura’s invention would have
understood “barrier” to mean only an insecticide application
without loopholes both around and under a building.
Pre-Hr’g Statement (Doc. 133) at 4-6.)
(See Joint
Even assuming, arguendo,
that such was the state of the art at the time of Mr. Kimura’s
12
invention, this court may not use extrinsic evidence to vary or
contradict the intrinsic record.
See Markman, 52 F.3d at 981.
The intrinsic evidence demonstrates clearly how Mr. Kimura
understood barrier treatments and, therefore, what Mr. Kimura
disclaimed when he disavowed such treatments.
Cf. CCS Fitness,
Inc., 288 F.3d at 1366-67 (stating that claim terms will not be
given their ordinary meaning if the patentee acted as his own
lexicographer in the intrinsic record or if the intrinsic
evidence shows that the patentee expressly disclaimed subject
matter).
For purposes of deciding Plaintiffs’ Motion for a
Preliminary Injunction, this court finds that the Kimura patents,
generally, and the specific claim term “Process for the
protection of a [future] building against damage caused by
insects” cover a process for the protection of a [future]
building against damage caused by insects that (a) teaches the
deliberate creation of untreated locations (i.e., loopholes)
through which the crawling insect can reach the building without
being exposed to the insecticide and (b) teaches away from
applying insecticide without loopholes around a [future]
building, under a [future] building, and both around a [future]
building and under a [future] building.
With this preliminary construction and finding as to the
disclaimers, this court proceeds to consider whether the asserted
13
claims of the Kimura patents read on the accused EP/LI method.
This court’s review of the Taurus SC label’s EP/LI section has
revealed no instructions to deliberately create untreated
locations (i.e., loopholes) through which the crawling insect can
reach the building without being exposed to the insecticide.
The
“Localized Interior Treatment” portion of the EP/LI instructions
directs:
As part of a complete treatment, targeted interior
applications may be made to vulnerable areas such as
around plumbing or utility services penetrating floors,
bath and/or shower traps, or along concrete expansion
joints or settlement cracks.
If know [sic] termite activity exists in areas inside
living spaces or in non-living spaces (such as crawl
spaces, plenums etc.) of the structure, a localized
interior treatment must be made at the immediate
vicinity of the termite activity and radiating out at
least 2 feet from the site in two or more directions.
(Defs.’ Resp. Opp’n Pls.’ Renewed Mot. Prelim. Inj. Ex. 4 (Doc.
123-4) at 12.)
While this language implies that a “barrier”
treatment is unnecessary on the structure’s interior, it focuses
on the treated locations rather than the untreated locations and
does not affirmatively indicate that “loopholes” in the treatment
are desirable.7
In contrast, the asserted claims of the Kimura
7
This court also notes that the “Exterior Perimeter
Treatment” portion of the EP/LI instructions twice directs the
user that “[f]or driveways, exterior drilling is necessary only
around building supports or wall elements permanently located at
driveway joints.” (Defs.’ Resp. Opp’n Pls.’ Renewed Mot. Prelim.
Inj. Ex. 4 (Doc. 123-4) at 10-11.) Although this language
indicates that a treatment gap corresponding with the location of
a driveway is acceptable, (Rotramel Decl. (Doc. 123-1) ¶ 33),
this court finds that it does not indicate that such gaps are
14
patents specifically teach the purposeful formation of “untreated
locations.”
(See Compl. Ex. B (Doc. 1-3) at 5, col. 5, l. 58;
id. at 6, col. 7, l. 52; Compl. Ex. C (Doc. 1-4) at 5, col. 5, l.
62.)8
Further, this court’s review of the Taurus SC label’s EP/LI
method has revealed no instructions to avoid applying insecticide
without loopholes around a [future] building, under a [future]
building, and both around a [future] building and under a
[future] building.
To the contrary, the EP/LI instructions
state: “This treatment method is designed to be non-invasive to
the interior of the structure with the establishment of a
continuous treated zone along the exterior of the foundation and
only treating interior spaces where termite activity has been
found.”
(Defs.’ Resp. Opp’n Pls.’ Renewed Mot. Prelim. Inj. Ex.
4 (Doc. 123-4) at 10 (emphasis added).)
The “Exterior Perimeter
desirable. Notably, this finding is supported by the declaration
of Defendants’ expert. (Id.)
8
Dependent claims 2, 6, 8, 9, 10, and 18 of the ‘010 patent
incorporate by reference all the limitations of claim 1 of the
‘010 patent. See 35 U.S.C. § 112 (“A claim in dependent form
shall be construed to incorporate by reference all the
limitations of the claim to which it refers.”). Dependent claims
21 and 23 of the ‘010 patent incorporate by reference all the
limitations of claim 19 of the ‘010 patent. See id. Dependent
claims 2, 5, 6, 7, and 14 of the ‘743 patent incorporate by
reference all the limitations of claim 1 of the ‘743 patent. See
id. Thus, the teaching of claims 1 and 19 of the ‘010 patent and
claim 1 of the ‘743 patent to purposefully form “untreated
locations” is incorporated in all the asserted claims of the
Kimura patents.
15
Treatment” portion of the EP/LI instructions states further: “To
prevent termite infestation of a structure, exterior perimeter
applications of Taurus SC must be made in a manner which will
create a continuous treated zone.”
(Id. (emphases added).)
Moreover, the EP/LI instructions go on to repeatedly call for the
establishment of a “continuous treated zone” along the exterior
of the structure, or a “complete exterior perimeter treatment
zone.”
(Id. at 10-12.)9
Based on their repeated directions to
create a “continuous treated zone” along the exterior of the
structure, this court finds that the EP/LI instructions call for
an application of insecticide without loopholes around a
building.
Although this finding is based on this court’s own
independent reading of the EP/LI instructions, it is noteworthy
that the declaration of Defendants’ expert supports this court’s
interpretation.
George Rotramel, Ph.D. (“Dr. Rotramel”) states
9
With respect to future buildings, the “Pre-Construction
Treatment” portion of the Taurus SC instructions states, in
pertinent part: “For an exterior perimeter pre-construction
treatment, Taurus SC must be applied in such a way as to create a
continuous treated zone along the exterior foundation of the
structure.” (Defs.’ Resp. Opp’n Pls.’ Renewed Mot. Prelim. Inj.
Ex. 4 (Doc. 123-4) at 6 (emphases added).) That portion of the
instructions goes on to direct: “Refer to the [EP/LI] section of
this label for instructions on applications to the exterior
perimeter of a structure and to critical areas in the interior of
the structure.” (Id.) Thus, with regard to future buildings,
the Taurus SC instructions incorporate the EP/LI section’s
requirements of a “continuous treated zone” along the exterior of
the structure, or a “complete exterior perimeter treatment zone.”
(Id. at 10-12.)
16
in his declaration that “the Taurus label instructs the [pest
control operator] to create, to the extent possible, a
continuous, unbroken line of insecticide around the outside of
the structure being treated.”
(Doc. 123-1 ¶ 31.)
He goes on to
state: “The Taurus label thus instructs the user to create a
complete exterior perimeter and not to deliberately form
untreated locations along the exterior boundary of the building
through which crawling insects can reach the building without
being exposed to an effective amount of insecticide.”
32.)
(Id. ¶
This court agrees with Dr. Rotramel that the EP/LI
instructions call for an application of insecticide without
loopholes around a building and, therefore, do not direct the
user to deliberately create untreated locations along the
exterior of the building through which the crawling insect can
reach the building without being exposed to the insecticide.
As
discussed above, this court further finds that the EP/LI
instructions likewise do not direct the user to deliberately
create such untreated locations along the interior of the
building.
For the foregoing reasons, this court finds, for purposes of
deciding Plaintiffs’ Motion for a Preliminary Injunction, that
the asserted claims of the Kimura patents, which (a) teach the
deliberate creation of untreated locations (i.e., loopholes)
through which the crawling insect can reach the building without
17
being exposed to the insecticide and (b) teach away from applying
insecticide without loopholes around a [future] building, under a
[future] building, and both around a [future] building and under
a [future] building, do not read on the accused EP/LI method.
Thus, this court concludes that Plaintiffs have failed to carry
their burden of making a clear showing that they will likely
prove that Defendants infringe at least one valid and enforceable
patent claim.
See Winter, 129 S. Ct. at 375-76; Abbott Labs.,
473 F.3d at 1201.
In view of this conclusion, and because a plaintiff must
satisfy all four prongs of the pertinent test in order to obtain
a preliminary injunction, see Real Truth About Obama, Inc., 575
F.3d at 346, it is unnecessary for this court to consider
irreparable harm, the balance of equities, and whether an
injunction would be in the public interest.
As Plaintiffs have
failed to demonstrate that they are likely to succeed on the
merits, their Motion for a Preliminary Injunction must be denied.
See id.
IV.
CONCLUSION
For the foregoing reasons, IT IS ORDERED that Plaintiffs’
Motion for a Preliminary Injunction (see Docs. 8, 73, 89) is
DENIED.
IT IS FURTHER ORDERED that the temporary restraining
order previously entered in this case (Doc. 127) is DISSOLVED.
18
This the 27th day of May 2011.
United States District Judge
19
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