The opinion of the court was delivered by: LEGROME DAVIS, District Judge
Presently before the Court are the Motion for Preliminary Injunction
filed on December 24, 2004 by CF Inflight, LTD ("Plaintiff")(Doc. No. 5),
the Motion for Expedited Discovery filed on December 29, 2004 by
Plaintiff (Doc. No. 6), the Answering Brief in Opposition to Plaintiffs
Motion for Preliminary Injunction filed on January 16, 2004 by Cablecam
Systems, LTD. ("Defendant")(Doc. No. 16), the Reply Brief in Support of
Preliminary Injunction filed on January 20, 2004 by Plaintiff (Doc. No.
17), the Proposed Findings of Fact and Conclusions of Law filed on
January 26, 2004 by Plaintiff (Doc. No. 25), the Proposed Findings of
Fact and Conclusions of Law filed on January 27, 2004 by Defendant (Doc.
No. 26), and the Transcript of the Evidentiary Hearing conducted on
January 26, 2004 (Doc. No. 28). Also before the Court are the Motion to
Strike the Post Hearing Findings of Fact and Conclusions of Law filed on
January 28, 2004 by Defendant (Doc. No. 30), and the Response in
Opposition to the Motion to Strike filed on January 28, 2004 by Plaintiff
(Doc. No. 29).
For the reasons set forth herein, Plaintiffs Motion for Preliminary
Injunction (Doc. No. 5) is DENIED. Plaintiffs Motion for Expedited
Discovery (Doc. No. 6) is DENIED as moot
because it is subsumed by the Amended Scheduling Order issued by
the Court on January 12, 2004 (Doc. No. 14). Defendant's Motion to Strike
On September 24, 2003, Plaintiff filed a Complaint against Cablecam
International and Cablecam Systems, Ltd. alleging that Cablecam's Multi-V
camera suspension system infringes Plaintiffs U.S. Patent No. 4,710,819
("`819 Patent") (Doc. No. 1). CF Inflight filed an Amended Complaint on
November 24, 2003 naming Cablecam as the sole defendant. (Doc. No. 4). On
December 24, 2003, Plaintiff filed a Motion for Preliminary Injunction
seeking to prevent Cablecam from operating its Multi-V system at the CBS
Sports ("CBS") televised Super Bowl scheduled to air on February 1, 2004.
Pursuant to this Court's Order of January 12, 2004 (Doc. No. 14), the
parties conducted discovery and submitted briefing on Plaintiffs Motion.
On January 26, 2004, the Court heard oral arguments and testimony
regarding the parties' positions and, having been fully briefed thereon,
renders the following findings of fact and conclusions of law.
1. CF InFlight develops novel camera systems for
the entertainment industry, particularly for
athletic broadcasting. As the patent assignee
from the inventor of the Skycam®, Mr.
Garrett Brown ("Mr. Brown"), CF Inflight, has
the right to assert all causes of action and
equitable or legal remedies for
infringement of the `819 Patent through its
principal, Roland Thompson ("Mr. Thompson").
2. Among many other camera devices for which he
holds approximately fifty patents, Mr. Brown,
a Philadelphia inventor and cinematographer,
invented the Skycam®, a camera system that
operates suspended from a computerized
transport device. Pl.'s Mem. at 2.
3. Mr. Brown is a member of the American Society
of Cinematographers, the Directors Guild, the
Screen Actors Guild and the Academy of Motion
Picture Arts and Sciences. Pl.'s Mem at Ex. C.
He has published numerous articles relating to
cinematography and has lectured at film
festivals and schools. Id. In
addition to filming professional and amateur
sporting events, his work has been used in
films such as "The Shining," "Rocky," and
"Return of the Jedi." Hr'g Tr. at 100. He has
won an Academy Award®, Emmy Awards, and
numerous international awards. Id.
4. Mr. Brown conceived of the Skycam® after a
discussion with Merlin Olson and he deployed
the first commercial system in 1984. Hr'g Tr.
5. Cablecam International, Inc. ("Cablecam") is
a corporation engaged in the development and
deployment of various camera suspension
systems. Cablecam focuses its business
primarily in the area of television, film,
commercials and professional sports. D.'s
Opp'n at 8.
6. James Rodnunsky ("Mr. Rodnunsky"), Cablecam's
principal and designer of the Multi V
camera system, has developed innovative camera
systems for nineteen years. Some of the
Cablecam systems designed by Mr. Rodnunsky
include the Traveling High Line, Dial High
Line, Flying-V and the Manned A to B. D.'s
Opp'n at Ex. 1. In addition to filming
professional and amateur sporting events, his
work has been used in films such as "Hook,"
"Terminator 2," "Con Air," "Dudley
Doright," "Spiderman," and "Daredevil." Hr'g
Tr. at 186-187. He has earned an award for
technical achievement from the Academy of
Motion Picture Arts and Sciences and six Emmy
awards. Id. at 188.
7. Mr. Rodnunsky first conceived of the Multi-V
when asked to develop a system to provide
aerial coverage for Fox Sports. According to
Mr. Rodnunsky, the Multi-V camera system
evolved from combining the principles of the
Flying V (a system deployed by Cablecam at NBA
basketball games) with the rolling tag system
(a concept developed by Cablecam during the
filming of a movie in Prague). Hr'g Tr. at
8. The United States Patent and Trademark Office
("PTO") issued the `819 Patent, titled
"Suspension System for Supporting and
Conveying Equipment Such as a Camera," to Mr.
Brown in compliance with the Patent Statute
and without defect or informality in issuance.
U.S. Patent No. 4,710,819 (issued Dec. 1,
9. The term of the `819 Patent is seventeen
years and expires on December 1, 2004. Claim 1
of the `819 Patent is as follows:
A suspension system for supporting and
conveying equipment, said system comprising: at
least three elongate, flexible members; mounting
means spaced-apart from each other for
extendably and retractably supporting said
an equipment support member attached to each
of the flexible members, wherein the equipment
support member is adapted to be moved in three
directions in response to movement of the
flexible members; and
means for operatively connecting said
equipment with said equipment support member so
that said equipment is in controllable isolation
from angular movement of said equipment support
Claim 58 of the `819 Patent is as follows:
In a suspension system for supporting
equipment in three-dimensionally adjustable
positions by means of at least three cables
which are operatively
connected to said equipment and which
extend away from said equipment in different
directions, the combination of:
at least three elevated support means, one for
each of said cables, spaced from said equipment
and defining the corners of a three-dimensional
space above the surface over which they are
means for adjusting the lengths of the cables
between the respective support means and the
equipment in such relationships as to move said
equipment in three directions to place the
equipment in any desired position within said
three-dimensional space; and
means for providing controllable angular
isolation of said equipment from the cables
which support said equipment.
U.S. Patent No. 4,710,819 (issued Dec. 1, 1987).
10. In July 2003, CF Inflight entered into an
exclusive contract with ESPN for the ESPN
Sunday Night Football and ABC Monday Night
Football telecasts. Pl.'s Mem. at 4.
11. The exclusivity contract precluded
Plaintiff from providing similar services
to Fox Sports ("Fox") or CBS who had both
expressed interest in obtaining aerial
footage of NFL games without the express
permission of ESPN. Id.
12. Upon request by Fox, Cablecam has been
using its Multi-V system since August 2003
for televising NFL Football games. D.'s
Opp'n at 8.
13. Beginning in October 2003, CBS was awarded
the rights to televise many of the 2003-2004
NFL playoff games and the February 2004 Super
Bowl and sought to award Plaintiff the
contract to provide aerial camera perspective
for the post-season NFL football games. Pl.'s
Reply at Ex. A.
14. After lengthy negotiation for permission
to enter into contract with CBS despite the
exclusivity contract with ESPN, Mr. Thompson
and CBS were unable to come to an agreement.
Pl.'s Reply at Ex. A; Hr'g at 53.
15. Via e-mail correspondence, CBS
communicated to Plaintiff its intention
to negotiate with both Cablecam and
Spydercam, another competitor. CBS awarded
a contract to Cablecam for all but one
post-season NFL games on or about Wednesday,
December 17, 2003. Hr'g Tr. at 46.
A. Standard for Preliminary Injunction
The standard for a preliminary injunction is the same as that for a
temporary restraining order. Bieros v. Police Chief Nicola,
857 F. Supp. 445, 446 (E.D.Pa. 1994). A party to a patent dispute, must
convince the Court that the following factors favor granting preliminary
injunctive relief: "(1) the likelihood that the moving party will succeed
on the merits; (2) the extent to which the moving party will suffer
irreparable harm without injunctive relief; (3) the extent to which the
nonmoving party will suffer irreparable harm if the injunction is issued;
and (4) the public interest." Novartis Consumer Health, Inc. v.
Johnson & Johnson-Merk Consumer Pharms. Co., 290 F.3d 578
(3d Cir. 2002) citing Clean Ocean Action v. York, 57 F.3d 328
331 (3d Cir. 1995); see also Impax Laboratories, Inc. v. Aventis
Pharmaceuticals, Inc., 235 F. Supp.2d 390 (D.Del. 2002); Merrill
Lynch v. Napolitano, 85 F. Supp.2d 491, 496 (E.D.Pa. 2000).
B. Likelihood of CF Inflight's Success on the
In order for CF Inflight to obtain a preliminary injunction to enjoin
Cablecam from providing the Super Bowl coverage, it must establish that
it will likely succeed on the merits of its patent infringement claim.
The Third Circuit has recognized that "[i]t is not necessary that the
moving party's right to a final decision after trial be wholly without
doubt; rather, the burden is on the party seeking [injunctive]
relief to make a prima facie case showing a reasonable probability that
it will prevail on the merits." Oburn v. Shapp, 521 F.2d 142,
148 (3d Cir. 1975): see also Acierno v. New Castle County,
40 F.3d 645, 653 (3d Cir. 1994). "`Reasonable' probability is used in the
opinions interchangeably with `substantial' likelihood of success."
Gucci Am., Inc. v. Daffy's, Inc., 2000 WL 1720738, at *7
(D.N.J. Nov. 14, 2000) citing Instant Air Freight Co. v. C.F. Air
Freight, Inc., 882 F.2d 797, 800 (3d Cir. 1989). "`Probability of
success' implies that the moving party, usually the plaintiff, must have
a very clear and strong case." J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 30:45 at 30-80. In the
patent infringement context, to establish likelihood of success on the
merits, the moving party must show, consistent with the burdens of proof
required at trial, that (1) its patent was infringed, and (2) ...