J-Star Industries, Inc. v. Oakley

720 F. Supp. 1291, 13 U.S.P.Q. 2d (BNA) 1993, 1989 U.S. Dist. LEXIS 10387, 1989 WL 100250
CourtDistrict Court, W.D. Michigan
DecidedAugust 25, 1989
DocketNo. L88-298-CA5
StatusPublished

This text of 720 F. Supp. 1291 (J-Star Industries, Inc. v. Oakley) is published on Counsel Stack Legal Research, covering District Court, W.D. Michigan primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
J-Star Industries, Inc. v. Oakley, 720 F. Supp. 1291, 13 U.S.P.Q. 2d (BNA) 1993, 1989 U.S. Dist. LEXIS 10387, 1989 WL 100250 (W.D. Mich. 1989).

Opinion

OPINION

ENSLEN, District Judge.

This matter is before the Court on Plaintiffs’ J-Star Industries (“J-Star”) and Ronald Dubbe’s Motion for Preliminary Injunction. The Court held a hearing in this matter on August 15, 1989, during which the parties’ counsel answered specific questions posed to them by the Court. After carefully considering the parties’ well-prepared briefs and exhibits, and their answers to my questions, I have concluded that plaintiffs have failed to demonstrate a reasonable likelihood of success on the merits of their' infringement claim. Accordingly, plaintiff’s motion for preliminary injunction is denied.

FACTS

This is a patent infringement action involving automatic feeding systems for dairy cattle. Plaintiffs are J-Star Industries, a manufacturer of farming equipment, and Ronald Dubbe, the inventor of plaintiffs’ product, the “Grain Brain Feeding System,” U.S. Patent No. 4,770,124 (“the ’124 patent”). The defendant, John Oakley, now markets an automatic feeding system for dairy cattle called the “Multi-Choice Feeding System.” Plaintiffs claim that Oakley’s product infringes claim 11 of the ’124 patent under the doctrine of equivalents. Mr. Oakley argues that the patent is invalid under 35 U.S.C. § 102(b), because plaintiff sold it to the public more than one year prior to filing their patent application. Defendant also denies infringement.

Sometime before January, 1987, Mr. Dubbe developed the feeding system which is the subject of the ’124 patent. He filed the patent application on January 12, 1987. Plaintiff’s Ex. C. The patent issued on September 13, 1988. Id. Mr. Dubbe originally licensed the product to Starline Products, Inc. Plaintiff’s Ex. A at ¶ 5 (Johnson Affidavit). While the patent application was pending, Starline formed plaintiff J-Star Industries, Inc. Id. at ¶ 2. The defendant was formerly a marketing representative for Starline. He indicates that he attended a meeting on October 19-21, 1986 where Starline introduced the “Grain Brain” system to its salesmen. Defendant’s Exhibit D at ¶12 (Oakley Affidavit). Oakley was not retained as an employee when Starlines changed to J-Star. Plaintiffs allege that Mr. Oakley began marketing his own feeding system, the “Multi-Choice Feeding System,” in August, 1987.

Mr. Oakley contends that he began to develop his feeding system in April, 1986. Throughout April and May, 1987, Mr. Oakley contacted a number of companies to secure parts for his prototype system. He first displayed the system at an agricultural exposition at Michigan State University on July 21-23, 1987. Developmental efforts continued until December, 1987. The first Multi-Choice Feeding System was installed on a customer’s farm in February, 1988. This system featured a grid covering its upper opening. Mr. Oakley contends that he manufactured and sold his original system until September, 1988, when he learned that Dubbe had secured a patent on the Grain Brain. Only one Mul-ti-Choice system was sold before September 23,1988 (the day Oakley learned of the patent) and one system embodying Oakley’s original design was delivered after that date. Mr. Oakley has since revised his feeding system. He contends that the new system does not infringe the ‘124 patent primarily because it has no grid covering the top opening.

Plaintiffs allege that the accused product, the Multi-Choice Feeding System, infringes claim 11 of the ’124 patent. Although plaintiffs originally did not assert infringement under the doctrine of equivalents, they now make the claim that Oakley’s product is designed to perform substantially the same function in substantial[1294]*1294ly the same way to obtain the same result as the patented invention. Claim 11 of the ’124 patent reads as follows:

11. An inexpensive cattle feeding system, comprising:
a feed container having an enlarged open top to facilitate loading of feed by a dairyman, a lower, reduced size dispersing opening, and a vertically movable, at least partially ball-like valve for selectively opening said dispensing opening; a grid secured to said container and extending across said enlarged open top to allow loading therethrough while preventing cattle from obtaining access to feed in the container;
a cable extending vertically through said grid into the container and affixed to the valve therein so that movement of said cable will open said valve or allow it to close;
a shield for said cable including a vertical tubular sleeve through which the cable extends, said sleeve having a lower end extending through said grid and into said container and being adapted to prevent cattle from tripping the associated cable to prematurely release feed from said container; and
means securing said lower end to said grid to prevent relative movement there-between so that cattle cannot jostle said tubular sleeve;
whereby said container may be manually and easily loaded through said enlarged open top and said grid while said valve cannot be prematurely opened by cattle.

Plaintiffs contend that Oakley’s product has the following elements which are also all the elements of claim 11 of the ’124 patent:

1. A feed container with an enlarged open top, a lower reduced size dispersing opening, and a ball-like valve.

2. A grid secured to the container and extending across the enlarged open top.

3. A cable extending vertically through the grid, into the container and affixed to the valve.

4. A shield for the cable including a vertical tubular sleeve through which the cable extends.

5. Means securing the lower end of the container to the grid, so that there is no relative movement between the two. See Plaintiff’s Exhibit A ¶ 9.

The defendant argues that his product cannot be said to infringe the ’124 patent because it does not have a grid covering the enlarged open top, an essential element of claim 11. Although the defendant admittedly sold feeding systems featuring a grid over the enlarged open top, the system he currently offers for sale uses a funnel-shaped container to send the feed into the dispensing end of the system. One of his revised systems, shown in defendant’s Exhibit 6, has a single side-to-side member mounted at the extreme periphery of the dispenser top to allow passage of the cable attached to the ball valve through the funnel. Another revised system shown in defendant’s Exhibit 6, which is apparently the current version of the system, has no side-to-side member at all. In this system, the cable attached to the ball valve is encased in a metal sleeve and passes through a hole in the funnel-shaped upper container to the lower, dispensing container.

STANDARD

The standard for preliminary injunc-tive relief in patent cases differs somewhat from the standard applied in other areas of the law. The Federal Circuit summarized the applicable inquiries as follows:

(1) Whether the plaintiff will have an adequate remedy at law or will be irreparably harmed if the injunction does not issue;
(2) whether the threatened injury to the plaintiff outweighs the threatened harm the injunction may inflict on the defendant;
(3) whether the plaintiff has at least a reasonable likelihood of success on the merits; and

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720 F. Supp. 1291, 13 U.S.P.Q. 2d (BNA) 1993, 1989 U.S. Dist. LEXIS 10387, 1989 WL 100250, Counsel Stack Legal Research, https://law.counselstack.com/opinion/j-star-industries-inc-v-oakley-miwd-1989.