Ecolab Inc. v. Johnsondiversey, Inc.

95 F. App'x 322
CourtCourt of Appeals for the Federal Circuit
DecidedApril 6, 2004
DocketNo. 03-1423
StatusPublished
Cited by3 cases

This text of 95 F. App'x 322 (Ecolab Inc. v. Johnsondiversey, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Ecolab Inc. v. Johnsondiversey, Inc., 95 F. App'x 322 (Fed. Cir. 2004).

Opinion

BRYSON, Circuit Judge.

This is an appeal from an order of the United States District Court for the District of Minnesota, No. 03-CV-2231, denying Ecolab’s motion for a preliminary injunction in a patent infringement suit. On appeal, Ecolab argues that the district court’s order denying preliminary injunctive relief was based on an incorrect claim construction. Although we do not agree with Ecolab’s principal claim construction argument, we agree that the record does not support the claim construction adopted by the district court. Moreover, the district court did not address a secondary claim construction argument that Ecolab advanced in support of its preliminary injunction motion and on which the parties presented conflicting evidence. Because we conclude that the court should have addressed that claim construction issue, we vacate the court’s order denying a preliminary injunction and remand this case to the district court for further consideration of Ecolab’s request for preliminary injunctive relief.

I

Ecolab Inc. is the assignee of United States Patent No. 6,495,494 (“the ’494 patent”), which covers the use of a particular lubricant composition in connection with high-speed conveyor lines such as those used in bottling plants. In 2002, Ecolab discovered that JohnsonDiversey, Inc., was marketing a product called Dicolube TPB, which Ecolab believed infringed the ’494 patent. As a result, Ecolab filed an action against JohnsonDiversey and sought a pre[324]*324liminary injunction to stop the sales of the allegedly infringing product.

Ecolab alleges that Dicolube infringes independent claims 1 and 21 of the ’494 patent, as well as dependent claims 10 and 11, which depend from claim 1. Claim 1 provides:

I. A method for lubricating the passage of a container along a conveyor, comprising applying a mixture of a water-miscible silicone material and a water-miscible lubricant to at least a portion of the container-contacting surface of the conveyor or to at least a portion of the conveyor-contacting surface of the container.

Claim 21 is similar, except that it recites a lubricated conveyor or container. It provides:

21. A lubricated conveyor or container, having a lubricant coating on a container contacting surface of the conveyor or on a conveyor-contacting surface of the container, wherein the coating comprises a mixture of a water-miscible silicone material and a water-miscible lubricant.

Dependent claims 10 and 11 provide:

10. A method according to claim 1, wherein the silicone material comprises a silicone emulsion and the mixture comprises water.
II. A method according to claim 1, wherein the water-miscible lubricant comprises a hydroxy-containing compound, polyalkylene glycol, copolymer of ethylene and propylene oxides, sorbitan ester or derivative of any of the foregoing.

The lubricant composition referred to in all four asserted claims contains at least two components: a water-miscible silicone material and a water-miscible lubricant.

Dicolube contains, among other components, a water-miscible silicone emulsion and Dowanol DPM, a product sold by the Dow Chemical Company, which the manufacturer identifies as a hydrophilic glycol ether. It is undisputed that Dicolube satisfies the first requirement of the ’494 patent, in that it contains a water-miscible silicone material. It is also undisputed that Dowanol is water-miscible. The issue in dispute is whether Dowanol is a lubricant within the meaning of any of the asserted claims.

In ruling on the motion for a preliminary injunction, the district court construed the term “lubricant,” as used in the claims, to mean a substance that significantly reduces the coefficient of friction of a particular composition below what the coefficient of friction of that composition would be in the absence of the lubricant. The court concluded that the evidence Ecolab proffered was insufficient to establish that Dowanol significantly lowered the coefficient of friction of the lubricant composition relative to the coefficient of friction of the composition in the absence of Dowanol. The court therefore concluded that Ecolab did not demonstrate a likelihood of success on the merits. In addition, the court concluded that Ecolab had failed to establish that it would suffer irreparable harm in the absence of a preliminary injunction. In support of that conclusion, the court found that Ecolab had “advanced no evidence to support the finding that money damages would be insufficient to compensate Ecolab for the alleged infringement,” and that it was likely that if a judgment were entered against JohnsonDiversey, “Ecolab could quantify its damages with substantial precision.” Having found that Ecolab had failed to establish either a likelihood of success on the merits or a likelihood that it would suffer irreparable harm from the denial of injunctive relief, the court concluded that it was unnecessary to consider whether the other two factors pertinent to granting prelimi[325]*325nary equitable relief-the balance of hardships and the public interest-cut in favor of issuing an injunction.

II

On appeal from an order granting or denying a preliminary injunction, we review the district court’s action for an abuse of discretion. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed.Cir.2001). In so doing, we review the district court’s assessment of the four traditional factors that bear on the propriety of preliminary injunctive relief: (1) the likelihood of the movant’s success on the merits; (2) the prospect that the movant will suffer irreparable harm if an injunction is not granted; (3) the balance of hardships between the parties; and (4) the public interest. Oakley, Inc. v. Sun-glass Hut Int’l, 316 F.3d 1331, 1338-39 (Fed.Cir.2003). An abuse of discretion may be established by showing that the district court “made a clear error of judgment in weighing relevant factors or exercised its discretion based upon an error of law or clearly erroneous factual findings.” Novo Nordisk of N. Am., Inc. v. Genentech, Inc., 77 F.3d 1364, 1367 (Fed.Cir. 1996).

The parties direct most of their attention on appeal to the first factor-the likelihood of the patentee’s success on the merits. They focus in particular on the definition of the term “lubricant” as used in the ’494 patent. In the district court, Ecolab acknowledged that the patent did not provide a general definition of “lubricant.” It then proffered both a definition of the term from a general dictionary (“a substance (as grease) capable of reducing friction” or “something that lessens or prevents friction or difficulty”), and a definition provided by one of its employees, Amy McBroom (“[A] lubricant is a substance that produces a COF [coefficient of friction] lower than that produced using water alone.”). In its brief on appeal, Ecolab mainly pressed the broad dictionary definition as the proper general definition of “lubricant,” but at oral argument Ecolab retreated to Ms.

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Bluebook (online)
95 F. App'x 322, Counsel Stack Legal Research, https://law.counselstack.com/opinion/ecolab-inc-v-johnsondiversey-inc-cafc-2004.