A. PLAINTIFFS HAVE FAILED TO DEMONSTRATE THAT THEY WILL BE IRREPARABLY HARMED IF AN INJUNCTION DOES NOT ISSUE

Plaintiffs have the burden of proving they are being irreparably harmed. See Rondeau v. Mosinee Paper Corp., 422 U.S. 49, 61 (1975) (plaintiff must “satisfy the traditional prerequisites of extraordinary equitable relief by establishing irreparable harm”); MercExchange L.L.C. v. eBay, Inc., 2007 U.S. Dist. LEXIS 54642, at *31 (E.D. Va., July 27, 2007) (plaintiff must prove irreparable harm because after eBay the presumption of irreparable harm “no longer exists”).

Moreover, “[t]he key word in this consideration is irreparable. Mere injuries, however substantial, in terms of money, time and energy . . . are not enough.” Sampson v. Murray, 415 U.S. 61, 90 (1974) (internal quotation omitted).

Plaintiffs falsely assert, however, that by merely proving “patent validity and infringement . . . [they must have] suffered immediate irreparable harm.” P.I. Memo at 17. To support their false assertion, they cite to a pre-eBay Federal Circuit case that stated the Federal Circuit’s old rule that irreparable harm could be presumed if a patent was valid and infringed. P.I. Memo at 19. But as Plaintiffs know, that rule was reversed by the Supreme Court in eBay, 126 S. Ct. at 1837. In eBay, the Supreme Court explicitly held that the Federal Circuit “erred in its categorical grant of [permanent injunctions] after a patent has been found valid and infringed.” Id. at 1841. Instead the “plaintiff must demonstrate [inter alia] that it has suffered an irreparable injury.” Id. at 1840. Therefore, after eBay, “the burden of proving irreparable injury is placed on a plaintiff.” z4 Tech., Inc. v. Microsoft Corp., 434 F. Supp. 2d 437, 440 (E.D. Tex. 2006).

To decide whether a plaintiff is being irreparably harmed, courts look to the following factors: (1) whether the patentee delayed bringing its lawsuit, T.J. Smith & Nephew, Ltd. v. Consol. Med. Equip., Inc., 821 F.2d 646, 648 (Fed. Cir. 1987); (2) whether the patentee is not practicing its own patent, High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551, 1556-57 (Fed. Cir. 1995); and (3) whether the patentee has licensed its patent to others. Id. While SkyHawke need only meet one of these factors to succeed in showing that Plaintiffs are not being irreparably harmed, here all three factors show no irreparable harm.
Dispositively, Plaintiffs knew of the allegedly infringing product over six years before they filed suit. Edmonson Decl. at ¶ 4, Exh. Z, App. 235. Even Plaintiffs admit in their motion that they waited over two years after learning of the allegedly infringing product before filing suit. See P.I. Memo at 17. But the Federal Circuit has explained that a “delay of 17 months is a substantial period of delay that militates against the issuance of a preliminary injunction by demonstrating that there is no apparent urgency to the request for injunctive relief.” High-Tech, 49 F.3d at 1557 (emphasis added); accord T.J. Smith, 821 F.2d at 648 (a patentee can not prove irreparable harm where it waited 15 months to seek a preliminary injunction); Abbott Labs. v. Selfcare, Inc., 17 F. Supp. 2d 43, 49 (D. Mass. 1998) (refusing to grant an injunction where plaintiff waited nine months after first learning of the infringing activity before requesting a preliminary injunction). Accordingly, where a plaintiff waited two years after first learning of allegedly infringing activities before filing for a preliminary injunction, another judge in this district found that the delay was “of itself sufficient to rebut the presumption of irreparable harm.” Wireless Agents, L.L. C. v. T-Mobile USA, Inc., 2006 U.S. Dist. LEXIS 36590 at *14-15 (N.D. Tex. June 6, 2006).

Two commentators who extensively studied the issue of whether courts will grant preliminary injunctions where the patentee delayed in moving for an injunction stated that, in general:
(1) a delay of at least five to six months may be considered excessive, (2) any delay over nine months tended to raise concern with the court regardless of the circumstances, and injunctions were thus rarely granted, (3) even short delay periods of a few weeks or months, without any justifiable reason, will rebut the presumption of irreparable harm.
Bryan E. Webster & Steven Walmley, Unclean Hands and Preliminary Injunctions: The Effects of Delay in Bringing Patent Infringement Cases, 84 J. Pat. & Trademark Off. Soc’y 291, 301 (2002) (emphasis added).

Here, the issue is not even close. Plaintiffs did not wait a matter “of a few weeks or months,” or “five to six months” or even “nine months,” but rather over six years (at the very least Plaintiffs concede over two years). Thus, Plaintiffs can not prove irreparable harm.

Moreover, Plaintiffs have offered to license their patent to numerous manufacturers, including SkyHawke. P.I. Memo at 17. The Federal Circuit has held that when a plaintiff has offered to license its patent to the defendant, “any injury suffered by [plaintiff] would be compensable in damages.” High Tech., 49 F.3d at 1557. Thus, this is a classic case of injury being fully compensable by money. See T.J. Smith., 821 F.2d at 648 (licensing is “incompatible with the emphasis on the right to exclude that is the basis for the presumption” of irreparable harm).

Plaintiffs and SkyHawke do not compete in the same markets. Although Plaintiffs allege that they do compete with SkyHawke, their allegations ring hollow. They claim that sales from their golf-cart mounted GPS system are being adversely impacted by SkyHawke’s “consumer handheld golf GPS devices.” P.I. Memo at 20-21. But golf cart mounted systems are a completely different market than consumer handheld golf GPS devices. Edmonson Decl. at ¶ 6, Exh. Z, App. 235. Thus, it is not surprising that they have been trying to license their patent to SkyHawke, P.I. Memo at 22, and indeed, they complain that “[SkyHawke] simply refused to entertain any reasonable agreement.” Id. at 23. If SkyHawke were truly a competitor that was destroying Plaintiffs’ market, however, Plaintiffs would not be trying to sell SkyHawke a license.

Finally, even Plaintiffs concede that virtually all the harm that SkyHawke allegedly causes is “direct economic harm.” Id. at 21 (emphasis in original). But “[m]ere injuries, however substantial, in terms of money, time and energy . . . are not enough [to merit injunctive relief].” Sampson v. Murray, 415 U.S. 61, 90 (1974) (internal quotation omitted). The only non-economic harm that Plaintiffs allege is that SkyHawke’s refusal to take a license “[prevents it] from concluding licensing agreements with other potential licensees.” P.I. Memo at 22. Yet Plaintiffs admit that they have “[s]everal current licensees.” Id. at 20. Further, Plaintiffs have now sued virtually every major manufacturer of golf GPS equipment that has not taken a license. Thus, Plaintiffs have failed to demonstrate any non-economic harm. Therefore, if Plaintiffs were to prevail on the merits of this case, Plaintiffs can be fully compensated by monetary damages, and Plaintiffs are not being irreparably harmed. Accordingly, the Court should deny the motion for a preliminary injunction.

B. PLAINTIFFS HAVE FAILED TO DEMONSTRATE A REASONABLE LIKELIHOOD OF SUCCESS ON INFRINGEMENT, VALIDITY, OR ENFORCEABILITY, OR WHETHER AN INJUNCTION SHOULD ISSUE, LET ALONE ALL FOUR, AS THEY ARE REQUIRED TO DEMONSTRATE

1. Plaintiffs Have Failed to Meet Their Burden of Proving They Are Likely to Prove Infringement

Plaintiffs’ claim charts do not demonstrate a substantial likelihood of success on the merits. For example, for the limitation “memory means for storing the position of a golf cup,” Plaintiffs argue that the limitation is met because the allegedly infringing device contains “memory.” P.I. Memo at 11. Plaintiffs’ assertion, however, provides no evidence that there is “memory means for storing the position of the golf cup.” This is due to the fact that SkyHawke’s devices do not “store the position of the golf cup.”

Every asserted claim in U.S. Patent No. 5,364,093 (“the ‘093 patent”) requires that the method or apparatus “store the position of the golf cup.” See ‘093 patent claims, 1, 8-18 (Plaintiffs’ App. at 92 1-22). SkyHawke’s products do not store nor do they even know the position of the golf cup, which, as set forth in the ‘093 patent specification, changes on a daily basis. See ‘093 Patent, col. 1, lines 32-38 (Id. at 918). Thus, Plaintiffs’ statement that SkyHawke “admitted” that “the SG Devices practice every step of Independent Claim 1” is flatly false. Consequently, SkyHawke’s products do not literally infringe any asserted claim. See Dr. Dana Decl., App. 8-9 (Exh. A).

None of the alleged “evidence” listed in the Jacobson report is to the contrary. Although a golfer can use the SkyHawke device to ascertain the distance to “the approximate flag location, using a pinsheet supplied by your course or visual observation,” Jacobson Rep. Exh. F. at 2 (emphasis partially removed), no patent claim covers “approximate flag locations” (especially using visual guesses); rather, the patent claim requires storing “the location of the cup.” In fact, the ‘093 patent specification disparages the shortcomings of prior art yardage books that provide such approximations and touts as its main advantage the accuracy provided by storing the daily golf cup location. See ‘093 Patent, col. 1, lines 32-38 (Plaintiffs’ App. at 918).

Realizing that they can not prove direct infringement because the SkyHawke product only “locates positions to the center, front or back of the green,” Jacobson Rep. at ¶ 46, Plaintiffs argue that SkyHawke infringes under the doctrine of equivalents. P.I. Memo at 8-16. But SkyHawke’s products do not infringe any asserted claim under the doctrine of equivalents, for at least three reasons. First, the doctrine of equivalents is not available to Plaintiffs because “[i]f a theory of equivalence would vitiate a claim limitation . . . there can be no infringement under the doctrine of equivalents as a matter of law.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160 (Fed. Cir 1998) (citing Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n.8 (1997)). Stating that the front, back and center of the green is equivalent to the cup is like stating that landing a ball on the green is equivalent to a hole-in-one. Thus, Plaintiffs are trying to vitiate the claim limitations that require the location of the cup, which is not the location of the front, center or back of the green. As discussed above, the ‘093 patent touts as the invention its improvement over the “disadvantages to known techniques for distance determination on golf courses,” which includes yardage books that state the distances to the front, back and center of the green. See ‘093 Patent, col. 1, lines 32-38 (Plaintiffs’ App. at 918).

Second, even if the doctrine of equivalents was available to Plaintiffs, there are substantial differences between SkyHawke’s products and the asserted claims. As discussed supra, every asserted claim requires “storing the location of the cup.” But SkyHawke’s products do not even know the location of the cup, let alone store that location. Rather, as shown by the manual for SkyHawke’s products, SkyHawke stores only the position of the front, center, and back of the green. SkyCaddie User Guide for SG1 and SG2 Models (“SkyCaddie”), Exh. J, App. 101-104.

Realizing that there is no evidence to support their contention that SkyHawke “stores the position of the cup,” Mr. Jacobson argues “there would be an insubstantial difference between storing the position of the ‘cup’ versus ‘center, front or back of the green as these terms are essentially synonymous.” Id. at ¶ 46. Mr. Jacobson goes on to argue, without any support, that the SkyHawke products infringe because “within the normal accuracy of civilian GPS measurements, [the front, center and back of the green] would overlap [the golf cup.]” Id. at ¶ 100. But a green can be over 50 yards long, and the SkyHawke products can be accurate to within one yard, so there is no overlap between the front, center and back of the green and the golf cup.
Further evidence that the SkyHawke product substantially differs from the ‘093 patent is shown by the specification of the ‘093 patent. One of the advantages claimed by the ‘093 patent is that, unlike yardage books and pin sheets (which must be manually updated every time the hole position changes), see ‘093 Patent, col. 1, lines 32-34 (Plaintiffs’ App. at 918), with the patented method, “the position of the golf cup on the greens are determined when cup position is changed by placing a GPS receiver in the cup.” Id. at col. 2 lines 44-46. Because the patented method requires storing the location of the golf cup, the position of the golf cup must be recomputed each time the pin placements are changed, which is often on a daily basis. Thus, the ‘093 patent requires 18 new measurements be taken every day to account for the moving of the pin around the green. Therefore, either an employee of the golf course must place a GPS device in all 18 golf cups before the course opens or the individual golfer must walk up to each and every green before his round to place a GPS device in all 18 golf cups (if the golf course does not support the method of the ‘093 patent). Instead of storing the location of the golf cup, however, the SkyHawke devices store, inter alia, the location of the entire circumference of the green.2 Edmonson Decl. ¶ 9, Exh. Z, App. 236. Since the location of the green never changes, as opposed to the golf cup, that mapping need only be done once per hole per golf course.3 Thus, to say that there are substantial differences between the method of the ‘093 patent and the SkyHawke devices is an understatement.

In any event, Plaintiffs have waived arguing that measuring to a particular point on the green, rather than to the golf cup, infringes under the doctrine of equivalents. The ‘093 patent explicitly states that measuring to the “center of the green” is part of the prior art:

“There are several disadvantages to known techniques for distance determination on golf courses. ... Typically the distances follow some unknown line in the fairway and are calculated for the middle of the green. . . . Therefore, a method and apparatus which could accurately and quickly determine the distance between the
ball and the golf cup on the green would contribute to lower scores and faster play. ’093 Patent Col. 1, line 51 - col. 2, line 1 (emphasis added) (Plaintiffs’ App. at 918).

Plaintiffs cannot state that measuring to the “center of the green” infringes under the doctrine of equivalents, when their specification states that measuring to “the middle of the green was in the prior art and is inferior to their invention. “Admissions in the specification regarding the prior art are binding on the patentee for purposes of a later inquiry into obviousness.” 4 PharmaStem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1359 (Fed. Cir. 2007); accord Constant v. Advanced Micro Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in the patent that something is in the prior art is binding on the applicant and patentee for determinations of anticipation and obviousness.”). Thus, there is at least a substantial issue whether Plaintiffs are estopped from asserting infringement under the doctrine of equivalents.

Plaintiffs’ statement that “infringement ha[s] been clearly shown,” P. I. Memo at 17, is flatly false. See Dr. Dana Decl., App. 8-9 (Exh. A). The Court should deny the motion for a preliminary injunction for this independently sufficient reason.

2. Plaintiffs Have Failed to Meet Their Burden of Proving That the Patented Claims Are Likely to Be Found Valid

Plaintiffs flatly misstate the law on invalidity in the context of a preliminary injunction. The law is not that Plaintiffs have “establishe[d] a likelihood of success on validity unless Defendants can demonstrate by clear and convincing evidence that each and every asserted patent claim is invalid.” P.I. Memo at 4. Indeed, the law is the exact opposite of Plaintiffs’ contention, as shown by both cases Plaintiffs list in support on the very pages that they cite: “[Plaintiff] retained the burden of showing a reasonable likelihood that the attack on its patent's validity would fail;” and “[Plaintiff] carries the burden of establishing a likelihood of success on the validity issue and thus must show that [Defendant] will not likely prove that the patent is invalid.” H.H. Robertson Co. v. United Steel Deck, Inc., 820 F.2d 384, 387 (Fed. Cir. 1987); Canon Computer Sys., Inc. v. Nu-Kote Int'l, Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1998) (respectively). Contrary to Plaintiffs’ misstatement, the law is that “[i]n resisting a preliminary injunction, however, one need not make out a case of actual invalidity. . . . The showing of a substantial question as to invalidity thus requires less proof than the clear and convincing showing necessary to establish invalidity itself.” Amazon. com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1358 (Fed. Cir. 2001) (emphasis added).

a. The Prior Litigation Involving the ‘093 Patent Demonstrates that There Is A Substantial Question Regarding Whether the Claims of the ‘093 Patent Are Valid

Plaintiffs assert that “validity is also presumed where the patent has been previously adjudicated.” P.I. Memo at 5. But that statement is disingenuous: the case cited states that, in the context of a preliminary injunction, validity is assumed where a patent “has previously been adjudicated valid.” Smith Int'l, Inc. v. Hughes Tool Co., 718 F.2d 1573, 1578 (Fed. Cir. 1983) (emphasis added).

The ‘093 patent has never “been adjudicated valid.” Plaintiffs neglect to mention that, in the previous litigation, the district court found there were issues of material fact for trial regarding whether the patent claims were valid. 10-04-99 Opinion, Exh. Q, App. 191. But after that court construed the claims, the parties stipulated that the patent was not infringed under that claim construction. Exh. R., App. 197 (Docket No. 227). After the Federal Circuit reversed the lower court’s claim construction, the parties settled without the issue of validity ever being adjudicated. Id. at App. 201 (Docket No. 293).

Although in the previous litigation the lower court did not grant summary judgment of invalidity, the fact that the court found issues of material fact as to whether the asserted patent claims were invalid demonstrates that the motion for a preliminary injunction should be denied. See Helifix, Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1351 (Fed. Cir. 2000). Helifix held that once an “alleged infringer raises a substantial question concerning validity, i.e., asserts an invalidity defense that the patentee cannot prove ‘lacks substantial merit,’ the preliminary injunction should not issue.” Id. (emphasis added) (quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1997)). In Helifix, the Federal Circuit explained that all that is necessary to defeat a preliminary injunction is to raise a substantial issue of invalidity, even though the defendant might not have enough evidence to prevail on summary judgment. Amazon.com, 239 F.3d at 1358. As the Amazon.com court explained: “Validity challenges during preliminary injunction proceedings can be successful, that is, they may raise substantial questions of invalidity, on evidence that would not suffice to support a judgment of invalidity at trial.” Id. (emphasis added).

In the previous litigation, the lower court held that there was a substantial issue of material fact regarding whether public use of a similar device by another anticipated the asserted claims of the ‘093 patent (discussed infra). The lower court also held that there was a substantial issue of material fact as to whether all the asserted patent claims were obvious. Therefore, the prior litigation provides dispositive proof that there is at least a substantial issue of whether the asserted patent claims are valid, and the Court should deny Plaintiffs’ motion for a preliminary injunction
on that basis alone.

b. Separate and Apart From the Previous Litigation, There Is a Substantial Issue as to Whether the Asserted Claims Are All Anticipated and Obvious

The activities of Colonel Gaylord Green (USAF, retired) in 1989-90 constitute anticipatory prior art under 35 U.S.C. § 102(b). As Dr. Dana demonstrates via claim charts, each and every element of the asserted claims is found in the public use by Colonel Gaylord Green of a GPS receiver mounted on a golf cart to measure the distance to a golf pin from a golf cart positioned next to a golf ball. Dr. Dana Decl., App. 14-16 (Exh. A). In the previous litigation, Plaintiffs did not contest that Green met every limitation of the asserted claims; instead, they argued that there was a fact issue regarding when Green used his product. Although the lower court found that there was an issue of material fact regarding the exact date of Colonel Green’s public use, Green’s public use raises a substantial issue of anticipation such that the Court should deny Plaintiffs’ motion for a preliminary injunction.

There is also a substantial issue of obviousness under 35 U.S.C. § 103. The PTO originally denied all of the claims of the ‘093 patent as being obvious over U.S. Patent No. 4,703,444 (“Storms”) in view of Takahata. Plaintiffs’ App. at 1025-26. As discussed infra, the inventors were able to overcome this rejection by swearing behind the September 6, 1991, date that the Examiner used for the Takahata reference. Id. In particular, they provided declarations that stated that they were diligent since prior to September 6, 1991, in completing their invention. Id. at 1028-32. But that date was wrong, as Plaintiffs admitted in the previous litigation. Exh. U, App. 218. The actual date of the Takahata reference was June 7, 1991. Id. Thus, there is no dispute that the Examiner's obviousness rejection of all claims of the '093 patent over the combination of Storms and Takahata was never overcome on the merits.5

In the previous proceedings, Plaintiffs merely argued that “[t]here is a genuine issue as to whether the inventors were reasonably diligent during the critical period.” Id. (initial capitalization omitted). That statement, by itself, is an admission that SkyHawke has raised a substantial issue regarding whether the patented claims are valid. Simply put, the PTO examiner was correct when she held that all the claims are obvious over Storms in view of Takahata because the inventors never met their burden of proving that they were reasonably diligent in completing their invention between June 7, 1991, and the filing date of the invention. For this additional reason, the Court should deny the motion for a preliminary injunction.

Moreover, SkyHawke has also raised a substantial issue of validity based on the fact that the PTO has rejected virtually identical claims in subsequent applications filed by the inventors. The patentees have, in effect, had both of the asserted independent claims of the ‘093 patent (claims 1 and 15) reexamined and rejected in a subsequent application, Serial No. 08/78908 1 (“the ‘081 Application”), which is a continuation-in-part of the ‘093 application.6

Claims 1 and 14 of the ‘081 Application were rejected by the Examiner in an Office Action dated July 24, 1996, as being obvious under 35 U.S.C. §103 over Wang in view of Fukushima. Serial No. 08/7840 1 Prosecution History, Exh. S, App. 208-211. That prior art rejection was never overcome by the inventors. The Examiner’s rejection of claims 1 and 14 (which correspond to the same invention as claims 1 and 15 of the ‘093 patent) is evidence of the unpatentability, and hence the invalidity, of those claims.7 Exh. T, App. 214-215 (comparing patent claims).8 Accordingly, SkyHawke has raised yet another substantial question of invalidity and thus, a further reason the Court should deny Plaintiffs’ motion.9

In addition to the prior art considered in the previous litigation, there is additional prior art that invalidates all the asserted claims. For example, Dr. Dana explains that Brusnighan, D.A., et al., “Orientation Aid Implementing The Global Positioning System,” Proceedings of the 1989 Fifteenth Annual Northeast Bioengineering Conference, 27-28 March 1989, pp. 33-34, IEEE (“Brusnighan”), anticipates or at least makes obvious all the asserted claims. Dr. Dana Decl., App. 10-13 (Exh. A). Thus, Brusnighan also raises a substantial question of invalidity and provides yet another reason the Court should deny Plaintiffs’ motion.

Finally, there is a more substantial issue of obviousness now than there was when another court decided the summary judgment motions and the PTO rejected the similar claims. Last spring, the Supreme Court expressly rejected the Federal Circuit’s “rigid” requirement of “teaching, suggestion or motivation” to determining obviousness under 35 U.S.C. § 103. KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007). Now it is proper for courts to use “common sense” to decide whether references can be combined to make a claim obvious, even if there is no “teaching, suggestion, or motivation” to combine them. Id. at 1742. Here, the ‘093 patented claims are nothing more than a combination of known elements that results in an expected outcome. Dana Decl., App. 10 (Exh. A). Thus, the claims of the ‘093 patent are invalid for obviousness.
 
For the foregoing reasons, Plaintiffs’ statement that “validity . . . ha[s] been clearly shown,” P.I. Memo at 17, is also flatly false. The Court should deny the motion for a preliminary injunction.

3. Plaintiffs Have Failed to Meet Their Burden of Proving that the Patented Claims Are Likely to Be Found Enforceable

a. Legal Standards For Proving Unenforceability

Inequitable conduct “during prosecution of the patent application, [renders] the entire patent unenforceable.” Kingsdown Med. Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 870 (Fed. Cir. 1988) (en banc). Inequitable conduct occurs during prosecution of a patent when an applicant fails to disclose material information, or submits false material information, with an intent to deceive. Id. at 872. “In contrast to cases where allegations of fraud are based on the withholding of prior art, there is no room to argue that submission of false affidavits is not material.” General Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 1411 (Fed. Cir. 1994) (internal quotation omitted). Moreover, the submission of false or deceptive affidavits or declarations to the USPTO that results in overcoming a rejection and an allowance of claims satisfies the materiality element of inequitable conduct. Paragon Podiatry Lab., Inc. v. KLM Laboratories, Inc., 984 F.2d 1182, 1189-90 (Fed. Cir. 1993).
To satisfy the intent to deceive element of inequitable conduct, “the involved conduct, viewed in light of all the evidence, including evidence indicative of good faith, must indicate sufficient culpability to require a finding of intent to deceive.” Kingsdown, 863 F.2d at 876. “Smoking gun” evidence is not required, however, to establish an intent to deceive. See Merck & Co., Inc. v. Danbury Pharmacal, Inc., 873 F.2d 1418, 1422 (Fed. Cir. 1989) (“direct evidence” is not necessary to prove intent).
 
b. The Prior Litigation Involving the ‘093 Patent Demonstrates that There Is a Substantial Question Regarding Whether the Claims of the ‘093 Patent Are Enforceable

In the previous litigation, the lower court held that there was a substantial issue of material fact regarding whether the patent was unenforceable due to inequitable conduct committed by one of the inventors who also was the attorney who prosecuted the patent. 10-04-99 Opinion, Exh. Q, App. 187-188. Plaintiff Optimal implicitly conceded in that litigation that there was a substantial issue regarding unenforceability, because while the defendant moved for summary judgment of unenforceability, Optimal never moved for summary judgment that the patent was enforceable. Instead, Optimal’s defense to the motion was that “genuine issues of material fact exist.” Exh. U, App. 218. Therefore, the prior litigation raises at least a substantial question of whether the asserted patent claims are enforceable, and the Court should deny Plaintiffs’ motion for a preliminary injunction. See Helifix, 208 F.3d at 1351 (defendant needs to raise only a substantial question, it does not need to prevail on a summary judgment motion); accord Amazon.com, 239 F.3d at 1358.

c. Separate and Apart From the Previous Litigation, There Is a Substantial Question as to Whether the Patent Is Enforceable

One of the inventors (Huston) was also the patent attorney who prosecuted the ‘093 patent. In prosecuting the patent, he deliberately and intentionally failed his duty of candor to the PTO. After the examiner accidentally dated a reference as being published in September rather than in June, the inventor deliberately capitalized on this error by swearing behind only the September date, as he was unable to swear behind the June date. Such deliberate conduct makes the patent unenforceable.

The examiner originally found all the claims obvious over Storms in view of a published Japanese patent application (“the Takahata application”). (Plaintiffs’ App. at 1025-26). Although the Takahata application was first published on June 7, 1991, the Examiner erroneously relied on the September 6, 1991, publication date of an English language abstract of the Takahata application. Huston then prepared and submitted declarations under 37 C.F.R. § 1.131 (“Rule 131 declarations”) for himself and his coinventor, Darryl J. Cornish (“Cornish”), to antedate or “swear behind” the Takahata application. Id. at 1029-32. Although the June 7, 1991, publication date of the Takahata application was the critical date that the inventors needed to antedate with the Rule 131 declarations, Huston prepared the two Rule 131 declarations based on the later, September 6, 1991, date.10
During an ex parte interview with the Examiner on April 21, 1994, Huston discussed the Rule 131 declarations with the Examiner and amended his declaration during the interview, reaffirming to the Examiner that the September 6, 1991, date of the Takahata English language abstract was the critical date to be overcome. See id. at 1028. Although there is evidence that Huston knew or should have known of the June 7, 1991, publication date of the Takahata application even before he prepared the Rule 131 declarations, the evidence demonstrates that, at the very least, he knew of the June 7, 1991, publication date as of April 25, 1994, just four days after his interview with the Examiner.11

Despite his knowledge of that earlier publication date, Huston remained silent and failed to inform the Examiner that the effective date of the Takahata application was June 7, 1991, and not September 6, 1991. The materiality of the June 7, 1991, publication date of the Takahata application is indisputable. It is also indisputable that Huston had in his physical possession three different documents, each of which sets forth the June 7, 1991, publication date of the Takahata patent application in immediate proximity to the publication number 3-134715--namely, the JPOABS printout (Exh. V, App. 223), the Pontius letter (Exh. X, App. 229), and the Takahata application itself (Exh. I, App. 85-97). Huston’s claim that he “did not notice” the June 7, 1991, date amounts to a “studied ignorance” of the kind of facts, i.e., publication dates, that patent attorneys, like Huston, deal with on a daily basis. Huston’s knowing failure to advise the Examiner of her mistake regarding that date and his failure to resubmit proper Rule 131 declarations is also indisputable and establishes his intent to mislead or deceive the USPTO. Accordingly, SkyHawke has raised at least a substantial question whether the ‘093 patent is unenforceable due to Huston’s inequitable conduct, and the Court should deny Plaintiffs’ motion for a preliminary injunction.

4. Plaintiffs Have Failed to Meet Their Burden of Proving that a Permanent Injunction Should Issue

In eBay, Inc. v. MercExchange L.L. C., 126 S. Ct. 1837 (2006), the Supreme Court held that a court must not automatically issue an injunction once it has found a patented claim valid and infringed. Id. at 1838-39. Instead, “a plaintiff seeking a permanent injunction must satisfy a four factor test before a court may grant [a permanent injunction].” Id. at 1840. The four-factors Plaintiffs must prove are:
(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. Id.

Here, Plaintiffs have provided no evidence that they are likely to prevail on a permanent injunction. Thus, even if the Court were to find that Plaintiffs are substantially likely to prevail on infringement, validity, and enforceability, it should still not issue a preliminary injunction because Plaintiffs are not substantially likely to prevail in their quest for a permanent injunction. As one court explained, “[i]n light of eBay, . . . [a court] may not presume that a patentee who is likely to succeed on the merits at trial will suffer irreparable harm in the absence of a preliminary injunction.” Torspo Hockey Int'l, Inc. v. Kor Hockey, Ltd., 491 F. Supp. 2d 871, 881 (D. Minn. 2007). As Plaintiffs have failed to prove even one of the necessary four factors, let alone all four as is required, the Court should deny their motion for a preliminary injunction.

C. PLAINTIFFS HAVE FAILED TO MEET THEIR BURDEN OF PROVING THAT THE BALANCE OF EQUITIES FAVORS ENJOINING SKYHAWKE

As Plaintiffs have failed to demonstrate either a likelihood of success or irreparable injury, the two remaining factors that bear on the grant of a preliminary injunction are moot and need not be addressed by the Court. Amazon.com, 239 F.3d at 1350; Reebok, 32 F.3d at 1556. Regardless, both factors favor denial of Plaintiffs’ motion.

Plaintiffs have failed to produce sufficient evidence that they would suffer hardship in the absence of an injunction. Here, Plaintiffs do not desire to protect or to grant an exclusive license to their alleged invention, but rather seek nonexclusive license agreements with others. P.I. Memo at 17, 20-21. Thus, an injunction does nothing to safeguard for Plaintiffs the “inherent technical advantages of the invention.” Mark R. Patterson, Inventions, Industry Standards, and Intellectual Property, 17 Berkeley Tech. L.J. 1043, 1043-44 (2002). Therefore, should Plaintiffs prevail at trial, they can be fully compensated by monetary damages, and the balance of equities does not favor granting an injunction.

By contrast, an injunction would force SkyHawke out of business. Edmonson Decl. at ¶ 12, Exh. Z, App. 237. SkyHawke will have to shut down its only product line, lose its market share to its competitors, lay off employees, and cancel relationships with suppliers and customers. Id.

SkyHawke has spent millions of dollars and over a decade to develop its handheld GPS golf business in the United States. Id. at ¶ 11, App. 236. That money and effort will be completely wasted if the Court grants the motion for a preliminary injunction, even if the Court or jury subsequently (and correctly) finds the asserted claims invalid, unenforceable, and/or not infringed. Therefore, if the Court grants the motion for a preliminary injunction, SkyHawke would be left with little more than a Pyrrhic victory. SkyHawke is hard pressed to think of a more clear-cut example of irreparable harm.

Plaintiffs claim, however, that they are not “attempting to ‘shut-down’ [SkyHawke]. To the extent [SkyHawke] can design around the broad scope enjoyed by the ‘093 Patent’s claims, Plaintiffs concede such devices will not violate Plaintiffs’ patent rights.” P.I. Memo at 22. Plaintiffs’ “concession” is not persuasive, however, because SkyHawke’s handheld devices are already fundamentally different from the claims of the ‘093 patent and yet Plaintiffs are still attempting to “shut-down SkyHawke.” Thus, the only alternative (other than shutting its doors) that an injunction would leave SkyHawke with, would be to pay [Plaintiffs] as much as it would cost to shift to a noninfringing product, an amount, given investment in infringing systems, perhaps far more than a reasonable royalty [as determined pre-investment]. . . .These incentives encourage patentees to adopt a strategy of ambush rather than . . . providing fair notice. Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1273 (Fed. Cir. 1999) (case involving patent holder who unreasonably delayed bringing patent enforcement suit). Here, Plaintiffs knew of SkyHawke’s accused products as early as 2001, but they lay in wait for over six years, until 2007, “to adopt a strategy of ambush rather than providing fair notice.” The Court should not reward such improper tactics by granting the preliminary injunction.

This case is very similar to the eBay case, except in that case, the patentee had proved infringement. Nevertheless, the eBay court, on remand from the Supreme Court, denied a permanent injunction. The eBay court denied a permanent injunction because the plaintiff: 1) did not practice the patent, 2) was not a competitor, 3) offered to license the patent to defendant and others, and 4) delayed for almost two years before filing suit. eBay, 2007 U.S. Dist. LEXIS 54642, *34-*73. As all these facts exist here (except Plaintiffs delayed six years before filing suit), even if the Court were to find a substantial likelihood of success, the Court should still deny the motion for a preliminary injunction.

D. PLAINTIFFS HAVE FAILED TO MEET THEIR BURDEN OF PROVING THAT THE PUBLIC INTEREST FAVORS ENJOINING SKYHAWKE

The public interest is best served by a denying a preliminary injunction where, as here, there are substantial questions regarding infringement, validity, and enforceability of the patent-in-suit. Abbott Labs., 452 F.3d at 1348. In addition, SkyHawke’s distributors and resellers, along with the golfers who rely on them, would be adversely affected because of the loss of SkyHawke products. See Paice L.L. C. v. Toyota Motor Corp., 2006 U.S. Dist. LEXIS 61600, * 16 (E.D. Tex. Aug. 16, 2006) (recognizing not just harm to the “[d]efendants’ business but that of related businesses, such as dealers and suppliers” of defendants). Apparently realizing that they could not combat SkyHawke’s arguments that the public interest weighs against granting an injunction, Plaintiffs were reduced to once again citing pre-eBay cases from the time when injunctions were virtually automatically granted after patents were found valid and infringed. P.I. Memo at 23-24 (citing cases from 1977, 1983, 1990, and 1991). Following eBay, those cases are no longer good law. Plaintiffs have failed to meet their burden of proving that the public interest will be served by enjoining SkyHawke.

IV. CONCLUSION

For the foregoing reasons, the Court should deny Plaintiffs’ motion for a preliminary injunction.