The opinion of the court was delivered by: Judge Vanaskie
At issue in this litigation is a patent licensed to Plaintiff Laminations, Inc. ("Laminations"), for a plant cultivation apparatus, also known as a self-watering planter. Laminations alleges that Defendants Roma Direct Marketing LLC ("Roma Direct"), John T. Hawkins, and Kenneth McDowell (collectively, "Defendants"), designed, marketed, and sold a competing product -- The Garden Patch -- that infringes upon its patent.
Presently before the Court is Laminations' Motion for Preliminary Injunction. (Dkt. Entry 8.) Because it has failed to demonstrate either a reasonable likelihood of success on the merits as to its claim of infringement or irreparable harm, Laminations' Motion for Preliminary Injunction will be denied.
Laminations commenced this litigation on or about October 25, 2006, by filing a three- count Complaint in this Court. (Dkt. Entry 1.) As relevant here, Laminations alleges in Count I that Defendants' product, The Garden Patch, infringes upon its rights as exclusive licensee of United States Patent No. 5,193,306 ("the '306 Patent").*fn1 Specifically, Laminations contends that Messrs. Hawkins and McDowell, former employees of Laminations, used their knowledge of the '306 Patent to create a competing business that designed, marketed, and sold The Garden Patch.
On December 20, 2006, almost two months after initiating this action,, Laminations filed its Motion for Preliminary Injunction, along with a memorandum of law and supporting declarations, including an expert report from Dr. James A. Kirk. (Dkt. Entries 8, 8-3, 9, 11-12, & 14-15.) A telephonic conference on the preliminary injunction motion was held on January 3, 2007, resulting in the issuance of an order providing a deadline for the presentation of an opposition brief and the scheduling of an evidentiary hearing on the motion. (Dkt. Entry 21.) In accordance with that order, Defendants filed a brief in opposition to the motion on January 31, 2007, (Dkt. Entry 24), and a purported expert report from Thomas E. Toner, Esquire, on February 8, 2007. (Dkt. Entry 25.) On February 14, 2007, Laminations filed a reply memorandum of law and a reply declaration of Dr. Kirk. (Dkt. Entry 28.) A hearing on Laminations' motion was held on February 22, 2007, and the parties subsequently submitted proposed findings of fact. (Dkt. Entries 34-35 & 37.) The parties' submissions were completed on March 22, 2007.
1. Laminations is a Pennsylvania corporation with its principal place of business in Scranton, Pennsylvania. Since its formation in the late 1940's, Laminations' primary business has been the manufacture of plastic products. (Tr. of Hr'g, Feb. 22, 2007 ("Tr."), Dkt. Entry 33, at 6.)
2. Roma Direct is a Florida limited liability company with its principal place of business in St. Petersburg, Florida. Roma Direct markets The Garden Patch, a self-watering planter. (Id. at 205.) Roma Direct operates the website www.agardenpatch.com. (LX-1,*fn2 Decl. of Frank DiPaolo, ¶ 4.)
3. Mr. Hawkins was hired by Laminations in the mid 1990's to work in its marketing department, primarily in Florida. (Tr. at 8.) Mr. Hawkins was a member of Laminations' Executive Committee. (Id. at 18.) He resigned from Laminations in the fall of 2004. (Id. at 19.) Mr. Hawkins is now associated with Roma Direct.
4. Mr. McDowell was hired by Laminations in the mid 1990's to work in its marketing department, primarily in Florida. (Id. at 8, 205.) Mr. McDowell resigned from Laminations in October 2004. (Id. at 205.) He is now associated with Roma Direct. (Id.)
5. The inventor of the '306 Patent is Blake Whisenant. (LX-16.) Mr. Whisenant worked closely with the father of Michael T. Lynch, Jr., current Vice-President and Chief Executive Officer of Laminations, in the conception and design of the '306 Patent. (Tr. at 6-7.) Laminations is the exclusive licensee of the '306 Patent. (Id. at 7.)
6. The subject of the '306 Patent is a plant cultivation apparatus and method. (LX-16.) The invention includes a "reservoir container assembly." (Id.)
7. The "Invention Preferred Embodiment" is depicted in the annotated version of Figure 1 of the '306 Patent, reproduced below.
As explained in Column 4, Lines 16 through 36:
It is the bag container 16 itself which is filled with the growing medium 40, such as soil, in which two plants 22A, 22B are grown. This soil may be mixed with a number of different nutrients depending upon the type of plant to be cultivated. The first plant 22A grows from a first opening 20A in the top surface 18 of bag container 16, whereas the second plant 22B grows from a second opening 20B in the top surface 18 of bag container 16. In FIG. 1, the first opening 20A is shown to be located in the top surface 18 at one end of the oblong bag container 16. The second opening 20B is shown to be located at the other end of the bag container 16.
In addition to the first and second openings, the top surface of the bag container also contains a third opening 24. This third opening facilitates the evaporation of excess moisture which may be present inside the bag container 16. The third opening 24 is located at a site remote from both the first and second openings 20A, 20B. Accordingly, salt and minerals which build up at the site of evaporation are kept away from the roots of developing plants 22A, 22B. [emphasis added]
8. Annotated version of Figure 5 of the '306 Patent, reproduced below, depicts the Second Embodiment of the reservoir container assembly.
As described in Column 6, Lines 60, through Column 7, Line 6, of the '306 Patent:
As shown in [FIG. 5], second embodiment 110 includes a reservoir container 112 and a bag container 116. As in the preferred embodiment, container 116 contains a plant growing medium. The top surface of bag 116 is provided with an opening 120 through which a plant stem 122 extends as the plant increases in size. A separate opening 124 is spaced remotely from opening 120. Second opening 124 is provided to facilitate evaporation of excess moisture that accumulates in the interior of bag 116. . . . [L]eaching of minerals that are unfavorable to plant growth occurs at a site in the bag remote from the developing roots of the plant 122. If desired, opening 124 can be placed in the opposite walls 127 or 125 or both walls of bag 116. [emphasis added]
The openings are further explained at Column 7, Lines 47 though 57 and 59 through 63:
Because opening 124 is of larger surface area than is opening 120, leaching of minerals takes place substantially in the vicinity of opening 124 and not in the vicinity of opening 120 through which plant growth occurs. By using a flexible rim for opening 120, the edge of the opening is maintained in intimate contact with the stem growing therethrough. As a result, evaporation of water through opening 120 is minimized. A second evaporation opening 124a indicated in broken lines may also be provided adjacent to the opposite end wall 127 of bag 116. . . . The location of opening 120 relative to the upper surface of bag 16 [sic] is, of course, arbitrary. The only limitation that must be observed is that opening 120 be spaced a suitable distance from each of the evaporation openings. [emphasis added]
9. The annotated version of Figure 7 of the '306 Patent, reproduced below, depicts the Third Embodiment.
As described at Column 8, Lines 10 through 13, "[e]nds walls 225 and 227 of box 216 are formed of screen mesh through which evaporation and the leaching of undesirable minerals takes place."
a) The Prosecution History
10. An application for the '306 Patent was filed on July 2, 1990. (LX-6, Application for U. S. Patent.) At the time of its submission, the patent application contained fifty-one (51) claims. (Id. at 18-28.)
11. As to the "Field of the Invention," the patent application stated: The present invention relates to a cultivation apparatus and method which greatly minimizes the quantity of water and amount of labor required to grow plants to maturity. In particular, the invention relates to a water efficient and labor efficient apparatus and method for commercially growing tomatoes. (Id. at 1.) As to the "Background of the Invention," the patent application discussed the shortfalls of the prior art:
These prior growing containers have also suffered the severe disadvantage of promoting the growth of undesirable parasites and fungi due to confinement of the growing medium in the containers. In addition, salt and mineral accumulation resulting from localized evaporation from the container has resulted in stunted plant growth or death of the plant. The only known solution to this detrimental mineral buildup has involved a significant investment in labor for attending to the condition of the soil in the container during the growing period. Accordingly, the disadvantages of such prior art growing containers have offset any advantages realized by their use. (Id. at 1-2 (emphasis added).) Thus, the cultivation apparatus proposed in the patent application is intended to reduce the accumulation of salt and other minerals by (1) maintaining the smallest opening possible around the plant's stem to minimize localized evaporation, and (2) utilizing another opening remote from the plant growth that "serves as an evaporation opening or vent" such that "salt deposits from evaporation will be maintained at [this] opening remote from [the] plant's roots." (Id. at 3-4.) 12. The Information Disclosure Statement filed with the patent application revealed twelve United States Patents as prior art. (LX-6, Information Disclosure Statement.)
13. On February 11, 1992, the United States Patent and Trademark Office issued an "Examiner's Action," notifying Mr. Whisenant that his claims were subject to a restriction or election requirement. (LX-6, Examiner's Action, at 1.) Mr. Whisenant's claims were subject to a restriction or election requirement because the inventions of certain groups were (1) "related as product and process of use," or (2) "related as combination and subcombination." (Id. at 2-3.) Ultimately, Mr Whisenant elected the invention of "Group V," comprised of Claims 1 through 33. (LX-6, Resp. to Election Requirement.) 14. On August 14, 1992, the patent examiner issued a "Notice of Allowability" as to Claims 1 through 33. (LX-6, Notice of Allowability.) Appended to the Notice of Allowability was a "Notice ...