The opinion of the court was delivered by: Judge Conner
Presently before the court is a motion for a preliminary injunction (Doc. 369) filed by Arlington Industries, Inc. ("Arlington") on July 1, 2011. Arlington seeks to enjoin Bridgeport Fittings, Inc. ("Bridgeport") from making, using, selling, offering to sale or importing, or causing or inducing others to make, use, sell, offer to sell, or import Bridgeport's Whipper-Snap Duplex products ("the duplex connectors"), catalog numbers 3838ASP and 3838SP. Arlington claims that the duplex connectors infringe Arlington's patent number 5,266,050 ("the '050 patent"). The court conducted an evidentiary hearing on the motion on July 14, 2011. For the reasons that follow, the court will grant the motion.*fn1
Arlington and Bridgeport are fierce competitors in the electrical conduit fitting industry. This case concerns a particular type of electrical conduit fitting with a snap-in feature. Litigation between the parties over the patent underlying this type of fitting has been ongoing since 2001. See Arlington Indus., Inc. v. Bridgeport Fittings, Inc., Civ. A. No. 3:01-CV-0485 (M.D. Pa.) (hereinafter "Arlington I"). The Arlington I litigation instituted in 2001 originally concerned only Bridgeport's single connector snap-in products. The Bridgeport duplex connectors that form the basis of Arlington's present motion for preliminary injunction were first asserted as infringing products in the above-captioned case in 2006 ("Arlington II"). (Doc. 3). The Duplex Connectors became a part of the Arlington I litigation during the discovery phase of that litigation, but after the same claim was asserted in the instant litigation. Unbeknownst to Honorable A. Richard Caputo, who was initially assigned to the above-captioned case,*fn2 and the undersigned, who presided over the Arlington I litigation, the Duplex Connectors were subject to litigation in two cases for identical allegations of infringement of Claim 8 of the '050 patent. Neither party sought immediate consolidation, and this matter and Arlington I proceeded on parallel tracks. Suffice it to say, for purposes of the pending motion, that the procedural path leading to Arlington's request for preliminary injunctive relief has been rather complicated.
A. Arlington's '050 Patent
In 1992, Arlington developed and manufactured a new type of electrical conduit fitting, intended to replace previous units whose installation required the use of two hands to screw the device into an electrical junction box.*fn3 (See Doc. 102, Ex. B). This connector features a circular spring metal adaptor, to which at least two outwardly sprung members are attached at the trailing end. (See id. at col. 10). When the adaptor is inserted into the knock-out hole of an electrical junction box, its outwardly sprung members lock the adaptor into place. (See id.) Thus, Arlington's connector allows a user to quickly connect the device to a junction box using one hand instead of two, thereby reducing the time and effort required during installation. (See id. at col. 1).
On December 15, 1992, Arlington was awarded United States Patent Number 5,171,164 ("the '164 patent") which covered the design of the above-described device. (Arlington I, Doc. 404 ¶ 2; Doc. 432 ¶ 2). Arlington acquired the '050 patent the following year. (Doc. 102, Ex. B). The '050 patent is a "continuation patent," meaning that it shares a common specification with the '164 patent, but includes different claims. (Arlington I, Doc. 404 ¶ 2; Doc. 432 ¶ 2.) The '050 patent encompasses eight claims, only one of which is the focus of the instant litigation. The claim at issue-Claim 8-reads as follows:
A quick connect fitting for an electrical junction box comprising: a hollow electrical connector through which an electrical conductor may be inserted having a leading end thereof for insertion in a hole in an electrical junction box; a circular spring metal adaptor surrounding said leading end of said electrical connector which has a leading end, a trailing end, and an intermediate body; at least two outwardly sprung members carried by said metal adaptor near said trailing end of said adaptor which engage the side walls of the hole in the junction box into which said adaptor is inserted; at least two spring locking members carried by said metal adaptor that spring inward to a retracted position to permit said adaptor and locking members to be inserted in a hole in an electrical junction box and spring outward to lock said electrical connector from being withdrawn through the hole; and an arrangement on said connector for limiting the distance said connector can be inserted into the hole in the junction box.
In 1999, Bridgeport introduced its own product line of quick-connect fittings called the "Snap-In Fitting." (See Arlington I, Doc. 170 at 7-10). The "Snap-In Fittings" were designed with characteristics nearly identical to those featured in Arlington's patented products. (See Arlington I, Doc. 310 ¶ 2.5). Arlington filed the Arlington I litigation in March 2001, alleging that the "Snap-In Fittings" infringed both the '164 and the '050 patents. (See Arlington I, Doc. 1).
B. The Whipper-Snap Duplex Connectors and Subsequent Litigation
In September 2005, Bridgeport designed a new quick-connect electrical fitting, which it called the "Whipper-Snap." (Arlington I, Doc. 404 ¶ 14; Doc. 432 ¶ 14). The Whipper-Snap is similar to the '050 patent, in that it features a circular spring metal adaptor that is affixed atop a hollow connector body. (See Arlington I, Doc. 383 ¶ 9(a); Doc. 438 at 1; Doc. 439 ¶ 9(a)). Attached to the leading end of the adaptor are a total of four tensioning tangs and two anchoring tabs. (See Arlington I, Doc. 307, at 5). The tensioning tangs' purpose is twofold: (1) to lock the adaptor securely in position when the fitting is inserted into a knock-out hole, and (2) to thereafter "maintain good electrical continuity, or ground, between the electrical connector, the junction box and the electrical source leading to the box." (See Arlington I, Doc. 384, Ex. K ¶¶ 17, 20; Doc. 394, Ex. A ¶¶ 36, 44; Doc. 401 at 16-18; Doc. 425, Ex. M at 85-88; Doc. 439 ¶ 11(d)). The purpose of the anchoring tabs is to fasten the spring metal adaptor durably to the hollow connector body. (See Arlington I, Doc. 394, Ex. A ¶ 38).
On May 31, 2006, Arlington filed the instant litigation alleging that
Bridgeport's duplex connectors-two products in the Whipper-Snap
product line-infringed a separate Arlington patent, number 6,521,831.
(Doc. 1). By amended complaint dated June 27, 2006, Arlington asserted
a second claim against the duplex connectors, alleging that the duplex
connectors infringed Claim 8 of the '050 patent. (Doc. 3).*fn4
The above-captioned matter (hereinafter "Arlington II") was
initially assigned to the Honorable A. Richard Caputo. Shortly after
commencing this litigation, Arlington also amended its complaint in
Arlington I adding the duplex connectors as products infringing the
On December 4, 2007, Judge Caputo issued his Markman claim construction ruling on the '050 patent. (Doc. 98). Nearly three months later, on February 25, 2008, the Arlington I court issued its Markman ruling in which it construed certain terms of Claim 8 of the '050 patent in a manner materially different from the construction issued by Judge Caputo. (Arlington I, Doc. 376). The parties filed motions for summary judgment in each case. (Docs. 382, 385; Arlington II, Docs. 110, 112, 113). On September 18, 2008, Judge Caputo granted Bridgeport's motions for summary judgment in the above-captioned case, concluding that Arlington could not prove infringement of the '050 patent by Bridgeport's duplex connectors. (Doc. 307). However, on February 4, 2009, the Arlington I court denied the parties' cross-motions for summary judgment on the issue of infringement and set trial for September 2009. (See Arlington I, Docs. 471, 474).
Days before trial in Arlington I, Bridgeport filed a motion to stay the trial in Arlington I on collateral estoppel grounds as a result of Judge Caputo's judgment of non-infringement of the duplex connectors in the above-captioned case. (Arlington I, Doc. 561). The undersigned denied the motion, but excised the duplex connectors from trial. (Arlington I, Doc. 584). A jury returned a verdict in favor of Arlington, finding that thirty of Bridgeport's single connector products infringed the '050 patent. The parties appealed both cases to the United States Court of Appeals for the Federal Circuit.
On January 20, 2011, the Federal Circuit issued its opinion with respect to the above-captioned matter. See Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246 (Fed. Cir. 2011). The Federal Circuit vacated the grant of summary judgment of non-infringement of the '050 patent by the duplex connectors due to an erroneous claim construction of the '050 patent. (Id.) The mandate issued on April 21, 2011. (Doc. 365). Judge Caputo subsequently re-opened the above captioned matter on June 24, 2011 and re-assigned the case to the undersigned for all further proceedings. (Doc. 368). The appeal of the Arlington I matter is presently pending before the Federal Circuit.
C. Motion for Preliminary Injunction and Evidentiary Hearing
On July 1, 2011, Arlington filed the present motion for a preliminary injunction. (Doc. 369). The motion is unique in the context of the Arlington I and Arlington II litigation. The request for preliminary injunctive relief comes over five years after the initiation of the litigation against Bridgeport's duplex connectors. Unlike the typical motion for preliminary injunctive relief in a patent case, the court has already conducted a Markman hearing and construed the terms of the disputed claim of the patent at issue. Additionally, with one exception, the parties agree that the accused duplex connector products meet each of the limitations identified in Claim 8 of the '050 patent. (See Arlington I, Doc. 438 at 1; Doc. 453 at 1). The sole disputed limitation concerns whether Bridgeport's duplex connectors contain "outwardly sprung members." In the Arlington I litigation, the undersigned construed "outwardly sprung members" to mean "members bent outward at an angle relative to the normal plane of the adaptor." (Arlington I, Doc. 376). In the instant litigation, Judge Caputo construed "outwardly sprung members" to mean "resilient members which are toward the outside of the adaptor." (Doc. 98, at 33).
The parties thoroughly briefed the matter and submitted declarations and exhibits in support of their respective positions. On July 14, 2011, the court conducted an evidentiary hearing on the motion*fn5 during which Arlington proffered the expert testimony of Dr. Christopher D. Rahn ("Dr. Rahn"), and Thomas Gretz, one of the named inventors of the '050 patent and Vice President of Arlington. On the basis of the record evidence and the testimony put forth at the preliminary injunction hearing, the court makes the following findings of fact.
Arlington and Bridgeport are the only competitors in the market for electrical conduit fittings with respect to the quick-connect or snap-in feature at issue in this litigation. (Hr'g Tr. at 77, 89-91, 93-99; Doc. 386 ¶¶ 9-17). Other similar products on the market identified by Bridgeport do not practice the features practiced by the Arlington and Bridgeport duplex connectors. (Hr'g Tr. at 77, 89-91, 93-99; Doc. 386 ¶¶ 9-17). Since 1999, when the duplex connectors were introduced into the market, Arlington has sold approximately 40 million units, comprising eight percent of Arlington's total sales. (Hr'g Tr. at 79; Doc. 386 ¶ 5). Arlington does not license its high volume products and it vigorously enforces its patent right to exclude competitors from practicing the '050 patent. (Doc. 371 ¶ 8).
In determining whether Bridgeport's duplex connectors infringe Claim 8 of the '050 patent, the relevant state of the connector for the infringement analysis is a connector that is fully assembled-a connector with the tensioning tang ring attached to the connector body. (Hr'g Tr. at 68; see also Doc. 387 ¶ 22). The applicable claim construction of "outwardly sprung members" is the one issued by the undersigned in the Arlington I matter. (See Arlington I, Doc. 376). Therefore, outwardly sprung members are "members bent outward at an angle relative to the normal plane of the adaptor." (Id.)
Arlington's expert, Dr. Rahn presents credible evidence that fully-assembled Bridgeport duplex connectors infringe the '050 patent. The methodology employed by Dr. Rahn is identical to that used by Dr. Rahn for his expert opinion in the September 2009 Arlington I trial and which the court expressly found to be admissible. (Arlington I, Doc. 582). Dr. Rahn did not conduct any measurements of the duplex connectors prior to assembly or subsequent to disassembly. (Hr'g Tr. at 68). Measurements conducted on 89 fully-assembled Bridgeport duplex connectors establish that the tension tangs meet the "outwardly sprung members" limitation of Claim 8 of the '050 patent. (Hr'g Tr. at 20-32; see also Doc. 387 ¶¶ 10-12). Dr. Rahn's measurements and calculations demonstrate that the tension tangs of the Bridgeport duplex connectors are bent outward at an average angle of 3.17 degrees relative to the normal plane of the adaptor. (Hr'g Tr. at 20-32; see also Doc. 387 ¶¶ 10-12). In contrast, Bridgeport's expert, John Brian Peter Williamson, presents measurements indicating that Bridgeport's duplex connectors do not practice the "outwardly sprung members" limitation of Claim 8 of the '050 patent. (See Doc. 381 ¶¶ 9, 11-17, 22-25). Williamson's ...