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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

CF INFLIGHT, LTD, : CIVIL ACTION

Plaintiff, :

 :

 v. :

 : 

CABLECAM SYSTEMS, LTD, et al. : NO. 03-CV-5374

Defendants. :

 

MEMORANDUM AND ORDER

LEGROME D. DAVIS, J. JANUARY , 2004

I. INTRODUCTION

Presently before the Court are the Motion for Preliminary Injunction filed on December

24, 2004 by CF Inflight, LTD (“Plaintiff”)(Doc. No. 5), the Motion for Expedited Discovery filed

on December 29, 2004 by Plaintiff (Doc. No. 6), the Answering Brief in Opposition to Plaintiff’s

Motion for Preliminary Injunction filed on January 16, 2004 by Cablecam Systems, LTD.

(“Defendant”)(Doc. No. 16), the Reply Brief in Support of Preliminary Injunction filed on

January 20, 2004 by Plaintiff (Doc. No. 17), the Proposed Findings of Fact and Conclusions of

Law filed on January 26, 2004 by Plaintiff (Doc. No. 25), the Proposed Findings of Fact and

Conclusions of Law filed on January 27, 2004 by Defendant (Doc. No. 26), and the Transcript of

the Evidentiary Hearing conducted on January 26, 2004 (Doc. No. 28). Also before the Court are

the Motion to Strike the Post Hearing Findings of Fact and Conclusions of Law filed on January

28, 2004 by Defendant (Doc. No. 30), and the Response in Opposition to the Motion to Strike

filed on January 28, 2004 by Plaintiff (Doc. No. 29). 

For the reasons set forth herein, Plaintiff’s Motion for Preliminary Injunction (Doc. No.

5) is DENIED. Plaintiff’s Motion for Expedited Discovery (Doc. No. 6) is DENIED as moot

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Contrary to CF Inflight’s suggestion, the Court did not request nor issue an Order granting the parties

permission to file such findings. Pl.’s Opp’n at 1. Plaintiff erroneously interpreted the Court’s comment regarding

the submission of any relevant post-hearing motions only with respect to the issue of bond as a request for posthearing findings. Hr’g Tr. at 275. The Post Hearing Findings of Fact and Conclusions of Law filed on January 28,

2004 by Plaintiff (Doc. No. 27) is stricken in accordance with Rule 12(f) and was not considered in rendering this

decision. Fed. R. Civ. Pro. 12(f). 

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because it is subsumed by the Amended Scheduling Order issued by the Court on January 12,

2004 (Doc. No. 14). Defendant’s Motion to Strike is GRANTED.1

II. PROCEDURAL HISTORY

On September 24, 2003, Plaintiff filed a Complaint against Cablecam International and

Cablecam Systems, Ltd. alleging that Cablecam’s Multi-V camera suspension system infringes

Plaintiff’s U.S. Patent No. 4,710,819 (“‘819 Patent”) (Doc. No. 1). CF Inflight filed an Amended

Complaint on November 24, 2003 naming Cablecam as the sole defendant. (Doc. No. 4). On

December 24, 2003, Plaintiff filed a Motion for Preliminary Injunction seeking to prevent

Cablecam from operating its Multi-V system at the CBS Sports (“CBS”) televised Super Bowl

scheduled to air on February 1, 2004. Pursuant to this Court’s Order of January 12, 2004 (Doc.

No. 14), the parties conducted discovery and submitted briefing on Plaintiff’s Motion. On

January 26, 2004, the Court heard oral arguments and testimony regarding the parties’ positions

and, having been fully briefed thereon, renders the following findings of fact and conclusions of

law.

III. FINDINGS OF FACT

1. CF InFlight develops novel camera systems for the entertainment industry, particularly for

athletic broadcasting. As the patent assignee from the inventor of the Skycam®, Mr. Garrett

Brown (“Mr. Brown”), CF Inflight, has the right to assert all causes of action and seek

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equitable or legal remedies for infringement of the ‘819 Patent through its principal, Roland

Thompson (“Mr. Thompson”). 

2. Among many other camera devices for which he holds approximately fifty patents, Mr.

Brown, a Philadelphia inventor and cinematographer, invented the Skycam®, a camera

system that operates suspended from a computerized transport device. Pl.’s Mem. at 2.

3. Mr. Brown is a member of the American Society of Cinematographers, the Directors Guild,

the Screen Actors Guild and the Academy of Motion Picture Arts and Sciences. Pl’s Mem at

Ex. C. He has published numerous articles relating to cinematography and has lectured at

film festivals and schools. Id. In addition to filming professional and amateur sporting

events, his work has been used in films such as “The Shining,” “Rocky,” and “Return of the

Jedi.” Hr’g Tr. at 100. He has won an Academy Award®, Emmy Awards, and numerous

international awards. Id.

4. Mr. Brown conceived of the Skycam® after a discussion with Merlin Olson and he deployed

the first commercial system in 1984. Hr’g Tr. at 102. 

5. Cablecam International, Inc. (“Cablecam”) is a corporation engaged in the development and

deployment of various camera suspension systems. Cablecam focuses its business primarily

in the area of television, film, commercials and professional sports. D.’s Opp’n at 8.

6. James Rodnunsky (“Mr. Rodnunsky”), Cablecam’s principal and designer of the Multi – V

camera system, has developed innovative camera systems for nineteen years. Some of the

Cablecam systems designed by Mr. Rodnunsky include the Traveling High Line, Dial High

Line, Flying-V and the Manned A to B. D.’s Opp’n at Ex. 1. In addition to filming

professional and amateur sporting events, his work has been used in films such as “Hook,”

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“Terminator 2,” “Con Air,” “Dudley Doright,” “Spiderman,” and “Daredevil.” Hr’g Tr. at

186-187. He has earned an award for technical achievement from the Academy of Motion

Picture Arts and Sciences and six Emmy awards. Id. at 188.

7. Mr. Rodnunsky first conceived of the Multi-V when asked to develop a system to provide

aerial coverage for Fox Sports. According to Mr. Rodnunsky, the Multi-V camera system

evolved from combining the principles of the Flying V (a system deployed by Cablecam at

NBA basketball games) with the rolling tag system (a concept developed by Cablecam during

the filming of a movie in Prague). Hr’g Tr. at 214-215. 

8. The United States Patent and Trademark Office (“PTO”) issued the ‘819 Patent, titled

“Suspension System for Supporting and Conveying Equipment Such as a Camera,” to Mr.

Brown in compliance with the Patent Statute and without defect or informality in issuance. 

U.S. Patent No. 4,710,819 (issued Dec. 1, 1987).

9. The term of the ‘819 Patent is seventeen years and expires on December 1, 2004. Claim 1 of

the ‘819 Patent is as follows:

A suspension system for supporting and conveying equipment, said system

comprising: at least three elongate, flexible members; mounting means spacedapart from each other for extendably and retractably supporting said flexible

members;

an equipment support member attached to each of the flexible members,

wherein the equipment support member is adapted to be moved in three directions

in response to movement of the flexible members; and

means for operatively connecting said equipment with said equipment support

member so that said equipment is in controllable isolation from angular

movement of said equipment support member. 

Claim 58 of the ‘819 Patent is as follows:

In a suspension system for supporting equipment in three-dimensionally

adjustable positions by means of at least three cables which are operatively

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connected to said equipment and which extend away from said equipment in

different directions, the combination of: 

at least three elevated support means, one for each of said cables, spaced from

said equipment and defining the corners of a three-dimensional space above the

surface over which they are elevated;

means for adjusting the lengths of the cables between the respective support

means and the equipment in such relationships as to move said equipment in three

directions to place the equipment in any desired position within said threedimensional space; and 

means for providing controllable angular isolation of said equipment from the

cables which support said equipment.

U.S. Patent No. 4,710,819 (issued Dec. 1, 1987).

10. In July 2003, CF Inflight entered into an exclusive contract with ESPN for the ESPN

Sunday Night Football and ABC Monday Night Football telecasts. Pl.’s Mem. at 4. 

11. The exclusivity contract precluded Plaintiff from providing similar services to Fox

Sports (“Fox”) or CBS who had both expressed interest in obtaining aerial footage of

NFL games without the express permission of ESPN. Id. . 

12. Upon request by Fox, Cablecam has been using its Multi-V system since August 2003

for televising NFL Football games. D.’s Opp’n at 8.

13. Beginning in October 2003, CBS was awarded the rights to televise many of the

2003-2004 NFL playoff games and the February 2004 Super Bowl and sought to

award Plaintiff the contract to provide aerial camera perspective for the post-season

NFL football games. Pl.’s Reply at Ex. A.

14. After lengthy negotiation for permission to enter into contract with CBS despite the

exclusivity contract with ESPN, Mr. Thompson and CBS were unable to come to an

agreement. Pl.’s Reply at Ex. A; Hr’g at 53.

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15. Via e-mail correspondence, CBS communicated to Plaintiff its intention to negotiate

with both Cablecam and Spydercam, another competitor. CBS awarded a contract to

Cablecam for all but one post-season NFL games on or about Wednesday, December

17, 2003. Hr’g Tr. at 46.

IV. DISCUSSION

A. Standard for Preliminary Injunction

The standard for a preliminary injunction is the same as that for a temporary

restraining order. Bieros v. Police Chief Nicola, 857 F. Supp. 445, 446 (E.D.Pa. 1994). 

A party to a patent dispute, must convince the Court that the following factors favor

granting preliminary injunctive relief: “(1) the likelihood that the moving party will

succeed on the merits; (2) the extent to which the moving party will suffer irreparable

harm without injunctive relief; (3) the extent to which the nonmoving party will suffer

irreparable harm if the injunction is issued; and (4) the public interest.” Novartis

Consumer Health, Inc. v. Johnson & Johnson-Merk Consumer Pharms. Co., 290 F.3d

578, 586 (3d Cir. 2002) citing Clean Ocean Action v. York, 57 F.3d 328, 331 (3d Cir.

1995); see also Impax Laboratories, Inc. v. Aventis Pharmaceuticals, Inc., 235 F.Supp.2d

390 (D.Del. 2002); Merrill Lynch v. Napolitano, 85 F. Supp. 2d 491, 496 (E.D.Pa. 2000). 

B. Likelihood of CF Inflight’s Success on the Merits

In order for CF Inflight to obtain a preliminary injunction to enjoin Cablecam

from providing the Super Bowl coverage, it must establish that it will likely succeed on

the merits of its patent infringement claim. The Third Circuit has recognized that “[i]t is

not necessary that the moving party’s right to a final decision after trial be wholly without

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doubt; rather, the burden is on the party seeking [injunctive] relief to make a prima facie

case showing a reasonable probability that it will prevail on the merits.” Oburn v. Shapp,

521 F.2d 142, 148 (3d Cir. 1975); see also Acierno v. New Castle County, 40 F.3d 645,

653 (3d Cir. 1994). “‘Reasonable’ probability is used in the opinions interchangeably

with ‘substantial’ likelihood of success.” Gucci Am., Inc. v. Daffy’s, Inc., 2000 WL

1720738, at *7 (D.N.J. Nov. 14, 2000) citing Instant Air Freight Co. v. C.F. Air Freight,

Inc., 882 F.2d 797, 800 (3d Cir. 1989). “‘Probability of success’ implies that the moving

party, usually the plaintiff, must have a very clear and strong case.” J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition § 30:45 at 30-80. In the patent

infringement context, to establish likelihood of success on the merits, the moving party

must show, consistent with the burdens of proof required at trial, that (1) its patent was

infringed, and (2) any challenges to the validity and enforceability of its patent “lack

substantial merit.” Purdue Pharma L.P. v. Boehringer Ingelheim GmbH, 237 F.3d 1359,

1366 (Fed. Cir. 2001). The written submissions, exhibits, and testimony presented to the

Court do not clearly and substantially establish the likelihood of CF Inflight’s success on

the merits. 

1. Validity of the ‘819 Patent

CF Inflight must establish more than the patent’s validity in order to succeed; it

must also show Cablecam’s infringement and rebut the challenges to the ‘819 Patent

advanced by Cablecam. CF Inflight argues that Cablecam’s device infringes “virtually

every element of the Skycam® camera system” in violation of the ‘819 Patent Claims 1

and 58; it further infringes, proposes Plaintiff, under the Doctrine of Equivalents. See

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 As Plaintiff summarizes, “this statutory presumption derives in part from recognition of the technological

expertise of the patent examiners.” Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1139 (Fed. Cir. 1985). The

presumption is also based on “the basic proposition that a government agency such as the ... Patent Office [is]

presumed to do its job.” American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 (Fed. Cir.). 

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Pl’s. Mem. at 7. It infringes the Skycam® patented technology because it embodies each

claim element or its equivalent. Hilton Davis Chemical Co. v. Warner-Jenkinson Co., 62

F.3d 1512, 1517-18 (Fed. Cir. 1995) (en banc), rev’d on other grounds, 520 U.S. 17

(1997). A patent is presumed valid and this presumption exists at every stage of the

litigation. Canon Computer Systems, Inc. v. Nu-Kote Intern., Inc., 134 F.3d 1085, 1088

(3d Cir. 1998) citing PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1566 (Fed.

Cir.1996); H.H. Robertson, Co. v. United Steel Deck, Inc., 820 F.2d 384, 387-88 (Fed.

Cir.1987), overruled on other grounds by Markman v. Westview Instruments, Inc., 52

F.3d 967 (Fed. Cir.1995) (en banc), aff'd, 517 U.S. 370 (1996). Because of the

presumption that the patent is valid, the patentee responding to a challenge to patent's

validity need only submit sufficient evidence to rebut any proof of invalidity offered by a

challenger. 35 U.S.C.A. § 282. Thus, where the challenger fails to identify any

persuasive evidence of invalidity, the very existence of the patent satisfies the patentee's

burden on the validity issue. H.H. Robertson, Co., 820 F.2d at 388 (stating that a

preliminary injunction is determined “in the context of the presumptions and burdens that

inhere at trial on the merits”).2 At the preliminary injunction stage, it is the defendant’s

burden to show that there is a “substantial question” of invalidity, at which point the

burden shifts to the patentee to show that the argument “lacks substantial merit.”

Genentech, Inc. v. Novo Nordsik, A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1997); New

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England Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878, 882-83 (Fed. Cir. 1992). 

To establish a substantial question, Cablecam challenges the validity of Claim 1 under 35

U.S.C. § 103 in view of French Patent No. FR 2,318,664 issued to Kennedy and in view

of U.S. Patent No. 2,446,096 issued to Moore, both of which are prior art to the ‘819

Patent. D.’s Opp’n at 34-44. Cablecam challenges the validity of Claim 58 with the same

references and by arguing that Claim 58 is unpatentable under 35 U.S.C. § 103 in view of

U.S. Patent No. 3,043,444 issued to Melton and in view of U.S. Patent No. 1,634,950 to

Lucian. Id. CF Inflight questions the merits of Cablecam’s challenge by arguing that “the

additional cited art is merely duplicative of the prior art provided to the Patent Office by

Garrett Brown and has already been considered by the Patent Office.” Pl.’s Mem. at 9. 

CF Inflight further argues that these references do not combine to provide a sufficient

showing of invalidity. Id. at 10. Cablecam has identified persuasive evidence of

invalidity; as such, the existence of the ‘819 Patent is insufficient to establish validity. 

But, even were the Court to presume validity of the ‘819 Patent, that does not end the

inquiry.

2. Cablecam’s Alleged Literal Infringement

CF Inflight has claimed that Cablecam’s Multi-V product “literally infringes” its

‘819 patent. Literal infringement of a claim exists when every limitation recited in the

claim is found in the accused device; that is, when the properly construed claim reads on

the accused device exactly. Amhil Enterprises v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed.

Cir.1996). Literal infringement of means-plus-function claim limitation requires that

accused device employ structure identical or equivalent to structure disclosed in patent

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and that the accused device performs the identical function specified in claim. Sunrise

Medical HHG, Inc. v. AirSep Corp., 95 F.Supp.2d 348 (W.D.Pa. 2000) citing 35

U.S.C.A. § 112. One cannot avoid infringement merely by adding elements if each

element recited in the claims is found in the accused device. A.B. Dick Co. v. Burroughs

Corp., 713 F.2d 700, 703 (Fed. Cir.1983) (“It is fundamental that one cannot avoid

infringement merely by adding elements if each element recited in the claims is found in

the accused device.”); AstraZeneca AB v. Mutual Pharmaceutical Co., Inc., 250

F.Supp.2d 506, 515 (E.D.Pa. 2003)(“The presence of additional elements is irrelevant if

all the claimed elements are present in the accused structure.”).

CF Inflight argues that a “flexible member,” any number of which may be

comprised by one cable, extends from mounting means that supports the camera to the

pulleys, winches, and reels; the “flexible members” are those portions of the cable within

the three-dimensional space. Pl.’s Mem. at 9; Hr’g Tr. at 131. That the support

structures or attachment points are multiple should not require the interpretation to mean

the cables are also are multiple. Hr’g Tr. at 174. To the extent that the same function

could be achieved by less than three total cables does not obviate the requirements and

the functionality as described in the ‘819 Patent. Pl.’s Mem. at 24. Cablecam disputes

the suggestion that a “member” is only that “segment” that connects the mounting means

support for the camera to the pulleys, etc. Hr’g Tr. at 288. At the hearing on January 26,

2004, in order to demonstrate the operational differences between the Skycam® and the

Multi-V to the Court, Cablecam assembled an exhibit of the Multi-V framework. Hr’g

Tr. at 210. By using two cables, woven through a complicated system of pulleys,

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Cablecam argues that the Multi-V does not violate the “three elongate, flexible members”

language of Claim 1 of the ‘819 Patent that requires the flexible members be connected to

the camera gimbals themselves. D.’s Opp’n at 21, 26; Hr’g Tr. at 210-216. In contrast,

the Multi-V system floats the cable segments through pulleys that attach to the equipment

support member in which the camera is housed. Id. As a result of its elaborate pulley

system, Cablecam argues that the cables it employs do not change length nor create

independent members within the three-dimensional space in violation of the ‘819 Patent. 

Hr’g Tr. at 221. Most significantly, Cablecam argues that the ‘819 Patent relies on

longstanding technology in the field and that the Multi-V system employs innovative

techniques intended to remedy the known disadvantages to the prior technology. D.’s

Opp’n at 35. A conclusion of literal infringement at this juncture would prematurely

determine whether the Multi-V operational structure is fundamentally similar to the

Skycam® device; understandably, the two camera systems provide a comparable

function, but the intricacies of their operation, design, and construction may prove

different from those identified in the ‘819 Patent. 

3. Cablecam’s Alleged Infringement Under Doctrine of Equivalents

CF Inflight claims, in the alternative, that the Multi-V infringes the ‘819 Patent

under the Doctrine of Equivalents by performing the same function in the same way. An

accused product infringes if it embodies each claim element or its equivalent. Hilton

Davis Chemical Co., 62 F.3d at 1517-18. If the differences between the patent and the

infringing device are insubstantial, infringement will be found under this doctrine if the

accused product performs substantially the same function as the claimed invention, in

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substantially the same way, to achieve substantially the same result. Graver Tank & Mfg.

Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950); Warner-Jenkinson Co. v. Hilton

Davis Chemical Co., 520 U.S. 17, 39 (1997). If a claim element or its equivalent is

missing, there is no infringement under the Doctrine of Equivalents. Hilton Davis Chem.

Co., 62 F.3d at 1518. The test for determining equivalents of a “means for” limitation

under 35 U.S.C. § 112 ¶ 6 is “whether the differences between the structure in the

accused device and any disclosed in the specification are insubstantial.” Chiuminatta

Concrete Concepts, Inc. v. Cardinal Indus. Inc., 145 F.3d 1303, 1309 (Fed. Cir. 1998).

The question of function when discussing video footage seems resolvable; naturally, two

cameras when positioned similarly will capture images in a like manner. Whether the

means to accomplish this task employed by the Multi-V are so imitative of the patented

Skycam® technology, however, is a more complicated question.

CF Inflight points to Mr. Rodnunsky’s U.S. Patent No. 5,224,426 (“426 Patent”)

to illustrate that the language allows for an interpretation whereby one continuous cable

can be perceived in segments such that each segment is an independent part. Hr’g Tr. at

229-245. CF Inflight argues that Mr. Rodnunsky was aware of Mr. Brown’s previous

technology because he cited to Brown’s U.S. Patent No. 4,625,938 in his own ‘426

Patent. The referenced Brown patent depicts a diagram that is identical to that in the ‘819

Patent, the one he allegedly infringed. Hr’g Tr. 229-245. Mr. Rodnunsky testified that he

never saw nor was he involved in the writing and construction of the ‘426 Patent such

that he would have inspected the references cited therein. Id. CF Inflight also argues that

Mr. Rodnunsky’s deposition testimony and declaration both demonstrate his knowledge

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and awareness of angular isolation technology as referenced in the ‘819 Patent. Pl.’s Hr’g

Ex. 23. Despite his testimony to the contrary, it is CFInflight’s position that Mr.

Rodnunsky does understand and employ the technology by using a camera that relies on

the technology for its system. 

In order to conclusively resolve the dispute with respect to either the literal

infringement or infringement under the Doctrine of Equivalents of the ‘819 Patent, this

Court would need to engage in a claim construction analysis. U.S. Surgical Corp. v.

Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.Cir. 1997) (“Claim construction is a matter of

resolution of disputed meanings and technical scope, to clarify and when necessary to

explain what the patentee covered by the claims, for use in the determination of

infringement.” (emphasis added)). In general, “a patent must describe the exact scope of

an invention and its manufacture to ‘secure to [the patentee] all to which he is entitled,

[and] to apprize the public of what is still open to them.’” Markman v. Westview

Instruments, Inc., 517 U.S. 370, 373 (1996) (quoting Art. I, § 8, cl. 8) (citation omitted). 

In a preliminary injunction context, a court may, in exercising its discretion, decide to

interpret the claim conclusively. Boehringer Ingelheim Animal Health, Inc. v. ScheringPlough Corp., 984 F. Supp. 239, 245 (D.N.J. 1997) citing Sofamor Danek Group, Inc. v.

DePuy-Motech, Inc., 74 F.3d 1216 (Fed. Cir. 1996) (Although “the trial court has no

obligation to interpret [a claim] conclusively and finally during a preliminary injunction

proceeding.... [It] may exercise its discretion to interpret claims at a time when the parties

have presented a full picture of the claimed invention.”). Consistent with the Supreme

Court decision in Markman, many courts hold a “Markman hearing” in order to construe

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 On the basis of his extensive experience inventing, developing, and utilizing camera systems, the Court

accepted Mr. Brown as an expert of ordinary skill in the art only for purposes of the preliminary injunction hearing. 

Hr’g Tr. at 120. Though Mr. Brown’s expertise in cinematography is unquestioned and generally helpful to the

Court in that regard, the substance and manner of his testimony made clear his interest in the outcome of this matter

and the long-standing business relationship he has with the Mr. Rodnunsky as competitors. The Court concludes that

Mr. Brown’s testimony, viewed in its entirety, is of little guidance on claim construction and patent language

interpretation. 

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the terms of a claim. Id. It is this Court’s practice to hold such a hearing prior to

interpreting a claim, particularly as is the case here, where the material terms of the claim

are in dispute.3 Based on the written submissions of the parties, the testimony and

exhibits presented at the evidentiary hearing on January 26, 2004, and a preliminary

reading of the ‘819 Patent, the Court concludes that both the Skycam® and the Multi-V

perform essentially the same function in that they both provide aerial footage within a

defined three-dimensional space. At this stage in the proceeding, however, that similarity

is insufficient to conclude that the two camera systems employ the same elements or

equivalents under the terms of the ‘819 Patent. Therefore, the first prong of the

preliminary injunction analysis, likelihood of success on the merits, has not been clearly

established. 

C. Likelihood of Irreparable Harm

Plaintiff claims that Defendants’ illegal entry into the small market has affected

the Plaintiff’s business, caused confusion among viewers of sporting events, and

prevented Plaintiff from televising the Super Bowl. Pl’s Mem. at 26. It will likely also

impact future potential contracts with the NCAA and the NBA. Id. 

A preliminary injunction does not issue unless there is a threat of irreparable

injury. Cinema Patents Co., Inc., v. Craft Film Laboratories, Inc., 42 F.2d 749 (D. Del.

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1930); Best Foods, Inc., v. Hemphill Packing Co., 295 F. 425 (D. Del. 1924). The

threatened damage to plaintiffs must be irremediable. Hand v. Missouri-Kansas Pipe

Line Co., 54 F.Supp. 649, 651 (D. Del. 1944). Where a patentee makes a strong showing

of likelihood of success on merits of its infringement claim, for the purpose of

preliminary injunction, the patentee is entitled to a presumption of irreparable harm. 

Atlas Powder Co. v. Ireco Chems., 773 F.2d 1230, 1232-33 (Fed.Cir.1985). “This

presumption derives in part from the finite term of the patent grant, for patent expiration

is not suspended during litigation, and the passage of time can work irremediable harm.” 

Impax, 235 F. Supp at 396. If a patent holder makes a “clear showing” of ownership,

validity, enforceability, and infringement, the Court may presume irreparable harm. 

Sunrise Medical HHG, Inc., 95 F.Supp.2d at 435. If the patentee does not make such a

clear showing but can establish only a “reasonable” likelihood of success on the merits,

then he also must make a separate showing of irreparable injury. Id. While CF Inflight

has made a reasonable showing of validity and infringement of the ‘819 Patent, Cablecam

has also provided evidence of invalidity and non-infringement sufficient to require further

exploration of these issues through a proper claim construction hearing. As such, the

presumption of irreparable harm cannot extend and the Court turns its inquiry to the

substantive arguments of irreparable harm. 

Plaintiff claims that allowing the Defendants’ allegedly infringing system to

operate at the Super Bowl will cause irreparable harm by denying Plaintiff the

opportunity to showcase its technology, offering Defendants’ system advertisement worth

millions of dollars irreplaceable through monetary compensation. Pl’s. Mem. at 26. CF

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Inflight claims to have been drastically affected by Cablecam’s alleged intrusion into the

market place, including lost opportunities to infuse additional capital into the company

and detriment to longstanding business relationships. Hr’g Tr. at 38. Based only on

conversations with industry executives, Mr. Thompson testified to confusion in the

marketplace between the Skycam® and the Multi-V. Hr’g Tr. at 38-39. Defendant

counters that Plaintiff was aware of Defendant’s business activities as early as August

2003; during the 2003-04 NFL football season, Defendant’s system operated at twenty

two football games. Def.’s Opp’n at 2. To support this contention, Defendant cites to

Citibank, N.A. v. Citytrust, 756 F.2d 273, 275 (2nd Cir. 1985) in which the court notes

that delay in seeking injunctive relief may show the absence of irreparable harm. 

Citibank, 756 F.2d at 276. Defendant further argues that Plaintiff’s claims that price

erosion, loss of market share and customers, and advertising constituting irreparable harm

are easily calculable in monetary damages and are due, in part, to Plaintiff’s own choice

to enter an exclusive contract. Id. 

Cablecam argues that CF Inflight’s failure to allege that the Multi-V system

infringed the ‘819 Patent throughout the 2003 NFL season and post-season playoffs,

cautions against a finding of irreparable harm from its use at the Super Bowl. Hr’g Tr. at

286. Mr. Thompson’s testimony confirmed that the exclusivity contract extends until

June 2005, which includes the 2004 NFL football season. Hr’g Tr. at 62. That CF

Inflight’s contract will preclude it from obtaining additional work until six months after

the expiration of the patent further cuts against the argument of irreparable harm

warranting preliminary injunction. The Court acknowledges the inherent harm in patent

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infringement, but the threat to CF Inflight is not so imminent as to warrant such an

extreme injunctive relief.

D. Balance of Hardships

Conversely, an examination of the hardships that may befall Cablecam as a result

of an injunction demonstrates a likelihood of more widespread harm than that suffered by

CF Inflight at this juncture. Before granting an injunction, a district court must balance

the relative harm to the parties, i.e., the potential injury to the plaintiff if an injunction

does not issue versus the potential injury to the defendant if the injunction is issued. 

Novartis Consumer Health, Inc., 290 F.3d at 596. Important considerations in weighing

the balance of hardship include, but are not limited to, whether the hardship to the alleged

infringer would be merely temporary in duration and whether the infringer had yet entered

the market. Ortho Pharm. Corp. v. Smith, 15 U.S.P.Q.2d 1856 (E.D.Pa.1990). 

Plaintiff proposes that because Defendants have only recently introduced their

product to the market, the harm suffered is less severe. Plaintiff cites to Atlas Powder

Co. v. Ireco Chems., 773 F.2d 1230, 1234 (Fed. Cir. 1985) for the proposition that a

patent’s short duration is not a factor in favor of Defendant in the balance of the equities. 

Defendant counters that punitive injunctive action would force both CBS and Cablecam

to incur substantial damages as a result of Plaintiff’s own poor business choice. Hr’g Tr.

at 13. Mr. Rodnunsky testified that as of January 26, 2004 the Multi-V system had been

assembled in preparation for the Super Bowl. Hr’g Tr. at 217. Cablecam has incurred the

expense of transporting its crew and equipment to the Super Bowl game site in Houston. 

Id. As a consequence of injunction, Cablecam would likely lose the 2004-05 football

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season contract with Fox, absorb the expense incurred by preparing the Super Bowl

equipment, and forfeit the contract with CBS. Hr’g Tr. at 218. Failure to complete the 

contract as agreed would damage the company’s reputation in this cottage industry. Hr’g

Tr. at 218. 

Finally, the Court rejects CF Inflight’s suggestion that it could fill the gap by

making the Skycam® available to CBS for the Super Bowl. Hr’g Tr. at 46. To do so

binds a third party to employ CF Inflight’s system and make a choice it had already

rejected. Pl.’s Reply at Ex. A The immediacy of the harm likely to affect Cablecam and

third parties dissuades the Court from issuing the injunction. 

E. Impact on Public Interest

Lastly, in order to obtain a preliminary injunction, CF Inflight must establish that

doing so outweighs the public interest in experiencing aerial footage of the 2004 Super

Bowl. Plaintiff provides only minimal support for this point, focusing on the public

interest inherent in protecting patent rights. “Typically, in a patent infringement case,

although there exists a public interest in protecting rights secured by valid patents, the

focus of the district court's public interest analysis should be whether there exists some

critical public interest that would be injured by the grant of preliminary relief.” Hybritech

Inc. v. Abbott Laboratories, 849 F.2d 1446, 1458 (Fed.Cir.1988) (footnotes omitted)

(finding the public interest in enforcing valid patents outweighed the adverse impact on

the market caused by the alleged infringer's absence). In patent cases, “the focus of the

district court's public interest analysis should be whether there exists some critical public

interest that would be injured by the grant of preliminary relief.” Lawman Armor Corp.

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19

v. Winner Intern., Inc. 2002 WL 123342, 20 (E.D.Pa., January 28, 2002). While courts

rarely deny injunctive relief in order to protect solely the public interest, where a

likelihood of infringement has been shown, the public interest may be served by

vindicating a patentee’s rights. Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1547-48

(Fed.Cir.1995) (en banc) (citing instances); Smith Int'l, Inc. v. Hughes Tool Co., 718

F.2d 1573, 1581 (Fed.Cir.l983). This is not always presumed, however. Zacchini

v.Scripps-Howard Broadcasting Co., 433 U.S. 562, n. 12 (1977)(conjecturing that the

broadcast of the film in question might stimulate the public interest in seeing the act live).

Were the injunction issued, the viewing public would lose the footage provided by

the aerial three-dimensional camera angles at the most significant NFL football game of

the season. The Court is not persuaded by CF Inflight’s argument that the public interest

is minimal because prior to the use of Skycam® during the 2003 Super Bowl, no such

camera perspective existed. Hr’g Tr. at 277. The mere suggestion that because the aerial

view is novel, the public will not be disadvantaged by its absence cuts against CF

Inflight’s own argument that because it is the most widely viewed sporting event, the

Super Bowl provides international exposure and notoriety. Pl.’s Mem. at 5. If it would

confer such a tremendous benefit to CF Inflight from public exposure, it stands to reason

that inherent in the public demand for aerial footage is a public interest. It was, CF

Inflight argues, precisely that public interest when combined with persuasion from CF

Inflight and the television networks that led the NFL to agree to flying camera system use

at all. Pl.’s Reply at 3. While there may not exist a compelling concern for public health,

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there is most certainly a public demand and interest in experiencing this visual

perspective.

V. CONCLUSIONS OF LAW

1. Plaintiff has not established the existence of likelihood of success on the merits

independent of a claim construction analysis by the Court. The testimony provided at

the hearing on January 26, 2004 demonstrates the clear need for a formal Markman

hearing. 

2. CF Inflight has not satisfied the irreparable harm requirement for the issuance of a

preliminary injunction.

3. Cablecam will suffer irreparable harm if an injunction is issued. If an injunction is

issued, Cablecam will be forced to breach its contract with CBS. Cablecam and CBS

have expended significant financial resources in anticipation that the Multi–V will be

utilized during the 2004 Super Bowl. These expenses cannot be recouped if an

injunction is issued.

4. The public interest leans toward denying the injunction. Granting injunctive relief

will deny the public the unique perspective provided by an aerial camera system

during the Super Bowl. Granting the relief requested will also impact the rights of

third parties, including CBS and the NFL.

5. Accordingly, the Court denies Plaintiff’s Motion for Preliminary Injunction

prohibiting the sale, manufacture, use, or offer for sale of the camera systems by

Defendants and those associated with them, thereby preventing additional irreparable

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harm to Plaintiff through infringement of the ‘819 Patent, including use of the system

at the upcoming Super Bowl in February 2004 (Doc. No. 5).

6. To the extend that any of the foregoing conclusions of law constitute a finding of fact, 

such conclusion or conclusions shall be deemed included in the finding of fact herein.

VI. CONCLUSION

For all of these reasons, Plaintiff’s Motion for Preliminary Injunction is DENIED. 

The Motion for Expedited Discovery is DENIED as moot, and The Motion to Strike

(Doc. No. 30) is GRANTED. An appropriate Order follows.

BY THE COURT:

 

Legrome D. Davis, J.

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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

CF INFLIGHT, LTD, : CIVIL ACTION

Plaintiff, :

 :

 v. :

 : 

CABLECAM SYSTEMS, LTD, et al. : NO. 03-CV-5374

Defendants. : 

ORDER 

AND NOW, this day of January, 2004, upon consideration of the Motion for

Preliminary Injunction filed on December 24, 2004 by CF Inflight, LTD (“Plaintiff”)

(Doc. No. 5) and all related written submissions and exhibits, the Motion for Expedited

Discovery filed on December 29, 2004 by Plaintiff (Doc. No. 6), the Transcript of the

Evidentiary Hearing conducted on January 26, 2004 (Doc. No. 28), the Motion to Strike

the Post Hearing Findings of Fact and Conclusions of Law filed on January 28, 2004 by

Defendant (Doc. No. 30), and the Response in Opposition to the Motion to Strike filed on

January 28, 2004 by Plaintiff (Doc. No. 29), it is hereby ordered that:

1. Plaintiff’s Motion for Preliminary Injunction (Doc. No. 5) is DENIED.

2. The Motion for Expedited Discovery (Doc. No. 6) is DENIED as moot.

3. The Motion to Strike (Doc. No. 30) is GRANTED.

BY THE COURT:

 

Legrome D. Davis, J.

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