The opinion of the court was delivered by: Judge Conner
Presently before the court is a motion (Doc. 808) filed by Arlington Industries, Inc. ("Arlington") to lift the stay (see Doc. 776) of the permanent injunctions entered against Bridgeport Fittings, Inc. ("Bridgeport"). (See Doc. 270; Doc. 776). Arlington asserts that, subsequent to the January 20, 2011 opinion of the Federal Circuit (see Arlington Industries, Inc. v. Bridgeport Fittings, Inc., No. 2010-1025 (Fed. Cir. Jan. 20, 2011)) vacating judgment in favor of Bridgeport in parallel litigation brought before the Honorable A. Richard Caputo (see Arlington Industries, Inc. v. Bridgeport Fittings, Inc., Civ. No. 3:06-CV-1105 (M.D. Pa.)) ("Arlington II"), the bases for the stay no longer exist. Bridgeport counters that the Federal Circuit has yet to issue the mandate in Arlington II vacating judgment in its favor, thus Arlington's motion is premature. Bridgeport also contends that, should the mandate issue, maintenance of the stay is appropriate pending the appeal in the above-captioned case. For the reasons that follow, the court will grant Arlington's motion to lift stay effective upon issuance of the mandate from the Federal Circuit vacating the entry of summary judgment in favor of Bridgeport in Arlington II.
Arlington and Bridgeport are direct competitors in the electrical conduit
fittings market. In 1992, Arlington developed a new type of fitting and eventually obtained several patents on its design including the herein litigated '050 patent. In 1999, Bridgeport introduced its own product line of fittings similar to fittings developed by Arlington. Arlington believed Bridgeport's product infringed on its '050 patent and commenced litigation against Bridgeport on March 19, 2001 by filing a patent infringement suit. On the eve of trial, Arlington and Bridgeport entered into a consent decree wherein Bridgeport admitted to infringing the '050 patent and submitted to an entry of a permanent injunction. (See Doc. 270). The parties filed a stipulation of dismissal on April 15, 2004 (Doc. 251), and the court entered the confession of judgment as an injunction on June 30, 2006. (Doc. 270).
Litigation between the parties resumed in December 2005, when Bridgeport sought a declaratory judgment that its new fitting, denominated the "Whipper-Snap," did not infringe the '050 patent. See Bridgeport Fittings, Inc. v. Arlington Indus. Inc., No. 3:05-CV-2622 (M.D. Pa.). That matter was assigned to Judge Caputo. Arlington then countersued alleging patent infringement and breach of the parties' consent decree. The declaratory judgment action was transferred to the undersigned, consolidated with Arlington's suit, and the court reopened the above-captioned matter. (Doc. 267).
On May 31, 2006, Arlington instituted a separate patent infringement suit against Bridgeport alleging infringement of Arlington's '831 patent. See Arlington
II. The matter was assigned to Judge Caputo, presumably because it involved a different patent. Arlington later amended its complaint in the matter before Judge Caputo to include certain claims of infringement of the '050 patent. (Arlington II, Doc. 3). Neither party sought consolidation of the above-captioned matter with Arlington II, thus the cases proceeded on distinct but parallel tracks.
After separate Markman hearings, the undersigned and Judge Caputo issued differing claim constructions of claim 8 of the '050 patent. (Compare Doc. 376, at 14 (construing "spring metal adaptor" as "an adaptor made of spring metal"), with Arlington II, Doc. 98, at 17 (construing "spring metal adaptor" as "split spring metal adaptor")). On September 18, 2008, Judge Caputo granted Bridgeport's motion for summary judgment as to non-infringement on the '050 patent in Arlington II based in part on his claim construction. (Id. Doc. 307). The court did not enter final judgment in Arlington II until almost one year later on September 1, 2009. (Id. Docs. 349-351)
Meanwhile, the undersigned scheduled the instant matter for jury trial commencing on September 14, 2009. On September 1, 2009, the same day that Judge Caputo entered final judgment in favor of Bridgeport in Arlington II, Bridgeport filed a motion to stay trial in the above-captioned matter asserting claim and issue preclusion. (Doc. 561). In a memorandum and order dated September 10, 2009 (Doc. 584), the court denied the motion and the above-captioned matter proceeded to trial.
The jury returned a verdict in favor of Arlington, and Arlington moved for a permanent injunction. (Doc. 641). Bridgeport objected to imposition of a permanent injunction, and alternatively requested a stay of enforcement in the event that an injunction was imposed. (Doc. 649). In a memorandum and order (Doc. 776) dated March 9, 2010, this court simultaneously granted Arlington's permanent injunction request, and Bridgeport's request for stay of that injunction as well as the 2006 injunction pending appeal. On January 20, 2011, the Federal Circuit issued its opinion in Arlington II prompting Arlington's present motion (Doc. 808) to lift the stay of the permanent injunctions. To clarify the bases of the motion and the court's ruling, this court will briefly review its reasoning for issuing the stay, as well as the Federal Circuit's opinion in Arlington II.
A. The Court's Stay of Arlington's 2006 and 2010 Permanent Injunctions
In this court's memorandum and order granting Arlington's permanent injunction request and staying the enforcement of the 2006 and 2010 permanent injunctions, the court first weighed each factor of the four-factor test for a permanent injunction and concluded a permanent injunction was warranted. (Doc. 776, at 6-11). The court then analyzed whether a stay of the permanent injunction was appropriate given the unique circumstance of the conflicting judgment in Arlington II. Although, the court previously concluded that issue preclusion applied to the judgment reached in Arlington II, the court declined to apply the doctrine. (See Doc. 773, at 9-20). Given that holding, the undersigned concluded that Bridgeport had a reasonable possibility of success on appeal with respect to its res judicata arguments. (Doc. 776, at 12). The court stated "[i]t is not the inconsistent claim construction in Arlington II that weighs in favor of a stay, but the possibility that the final judgment in that matter precludes the jury verdict herein." (Id. at 13).
Balancing the other factors, the court noted the likelihood of irreparable injury to Bridgeport in the loss of customer goodwill and market share, and found that Arlington's injury with a stay was no greater than Bridgeport's injury without a stay. (Id. at 14). In the court's view, the conflicting infringement judgments simply outweighed Arlington's potential injury, and a stay would maintain the position Arlington has occupied since 2006. (Id.). Finally, the court concluded that the public interest favored a stay because inconsistent judgments inherently undermine the integrity of law. (Id. at 15). Thus, maintenance of the status quo was appropriate. (Id.) See Kawecki Berylco Indus., Inc. v. Fansteel, Inc., 571 F. Supp. 539, 540 (E.D. Pa. 1981) ("The purpose of staying an injunction pending appeal is to preserve the status quo.").
B. The Federal Circuit Opinion Vacating Arlington II
On January 20, 2011, the Federal Circuit issued its opinion in the appeal of Arlington II. The court vacated Judge Caputo's grant of summary judgment holding that Judge Caputo's claim construction misconstrued "spring metal adaptor" by importing a split limitation from the specifications into the claims. Arlington II, No. 2010-1025, slip op. at 3. The Federal Circuit explained that "the customary and ordinary meaning of the claim term, the specification, the Arlington I construction [which is the construction given by this court in the above-captioned matter], and Bridgeport's admissions all support the construction 'an adaptor made of spring metal.'" Id. at 10. The court declined to adopt Bridgeport's reading of "spring metal adaptor" in which it asserted that "spring" modifies "metal adaptor" rather than denoting the type of metal of which the adaptor is constructed. Id. at
11. The court further declined to import by implication a split limitation into claim 8 of the '050 patent. The court reasoned that the patent did not show a clear intent to limit the claims to "split" embodiments, noted that importing a split limitation improperly discounted substantive differences between the claims, and found that the patent prosecution history did not support a split limitation. Id. at 12-13. The Federal Circuit concluded that "spring metal adaptor" means "an adaptor made of spring metal." Id. at 15.
The decision, however, was not unanimous. Circuit Judge Lourie dissented with respect to the claim construction of the '050 patent. Judge Lourie noted the "muddy, conflicting, and overly formulaic rules" in Federal Circuit jurisprudence with respect to claim interpretation. Id. at 4. The real task, he asserted, is to determine what the inventors meant when they used the language they did. Id. Applying that principle, Judge Lourie concluded that the inventors of the '050 patent made clear that the spring metal adaptor has an opening or split. Id.
On January 24, 2011, Arlington filed the instant motion (Doc. 808) to lift the stay of the 2006 and 2010 permanent injunctions. Arlington asserts that final judgment in favor of Bridgeport has been vacated and, with it, the principal ground for the stay-the court's concern of inconsistent judgments-has evaporated. In its brief in opposition (Doc. 821), filed on February 7, 2010, pursuant to an expedited briefing schedule (see Doc. 819), Bridgeport counters that until the Federal Circuit issues the mandate, final judgment in its favor still exists. Furthermore, Bridgeport claims that should the mandate issue, maintenance of the ...