H.H. Robertson, Co. v. United Steel Deck, Inc. (JWB)

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The Case

  • CAFC – H.H. ROBERTSON, COMPANY, Plaintiff/Appellee, v. UNITED STEEL DECK, INC., Defendants/Appellants
  • USD appealed injunction barring them from making, using, selling certain structures which were found to infringe Robertson patent (‘051 patent) in District Court of New Jersey
  • Patent: entitled “Bottomless Sub-Assembly for Producing an Underfloor Electrical Cable Trench”. The invention is a concrete deck structure sub-assembly for distributing electrical wiring
    • issued 3/20/1973 to Frank Fork, owned by Robertson
  • charged Bouras and USD with infringement of claims 1, 2, 4, 6, 9, 13, 14
  • moved for preliminary injunction because it had been held valid and infringed by Bargar, and accused structure of Bouras was ‘same or substantially the same as those in Bargar’
    • claimed harm could not be fully compensated by money damages
    • District Court held that Robertson had ‘established a basis for the relief it seeks’


  • Injunction is “to prevent the violation of any right secured by patent, on such terms as the court deems reasonable”
  • pendente lite = ruling until a trial occurs
  • Preliminary injunction is the discretion of the trial court, appellate court is just to decide whether lower court abused discretion or erred
  • Applicant for a preliminary injunction against patent infringement must show: (1) a reasonable probability of eventual success in the litigation and (2) that the movant will be irreparably injured pendente lite if relief is not granted, (3) the possibility of harm to other interested persons from the grant or denial of the injunction, and (4) the public interest.”

Patent Validity

  • Robertson retained the burden of showing a reasonable likelihood that the attack on its patent's validity would fail
  • USD and Bouras argued that all of the Fork patent claims at issue were invalid for obviousness in terms of 35 U.S.C. § 103, and that claim 2 was invalid in terms of 35 U.S.C. § 112
    • obvious due to references made in Bargar and during prosecution (and not repeated here)
  • district court stated that the “finding of validity of the Fork '051 patent in Bargar is persuasive evidence of validity”
  • as for claim 2, it was decided that the written description was enabling of someone skilled in the art, and therefore valid under section 112

Wiesmann Patent

  • brought as new ‘newly identified’ reference by USD, which was significant to validity
  • issued June 6, 1954, Robertson argued that even if this was considered, it would not change validity result
  • DC denied motion – CAFC rules that there was no error in their refusal to reopen proceedings


  • USD argued that the claims must be interpreted as a matter of law to exclude trenches that are only partially bottomless, like their Blue-Cross Blue Shield building
  • We are not persuaded of error in the district court's construction of the term “bottomless” to apply to the “key portion” of the trench, based on the evidence before it
  • We sustain the district court's conclusion that “there is a reasonable probability that Robertson will eventually establish that Bouras and USD induced infringement of the Fork '051 patent”

Equitable Considerations

  • The magnitude of the threatened injury to the patent owner is weighed, in the light of the strength of the showing of likelihood of success on the merits, against the injury to the accused infringer if the preliminary decision is in error.
  • When the movant has shown the likelihood that the acts complained of are unlawful, the preliminary injunction “preserves the status quo if it prevents future trespasses but does not undertake to assess the pecuniary or other consequences of past trespasses.”
  • The district court's conclusion reflects a reasonable consideration and balance of the pertinent factors, evaluated in accordance with the established jurisprudence, and does not exceed the court's discretionary authority.