       NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
              __________________________

             MYTEE PRODUCTS, INC.,
                Plaintiff-Appellant,

                           v.
             HARRIS RESEARCH, INC.,
              Defendant-Cross Appellant,

                         and
               DOES 1 THROUGH 20,
                   Defendants.
              __________________________

                   2010-1207,-1226
              __________________________

   Appeal from the United States District Court for the
Southern District of California in case No. 06-CV-1854,
Magistrate Judge Cathy Ann Bencivengo.
              __________________________

             MYTEE PRODUCTS, INC.,
                Plaintiff-Appellant,

                           v.
             HARRIS RESEARCH, INC.,
                Defendant-Appellee,

                         and
MYTEE PRODUCTS   v. HARRIS RESEARCH                     2


                 DOES 1 THROUGH 20,
                     Defendants.
               __________________________

                       2010-1457
               __________________________

   Appeal from the United States District Court for the
Southern District of California in case No. 06-CV-1854,
Magistrate Judge Cathy Ann Bencivengo
             ___________________________

               Decided: September 2. 2011
              ___________________________

    FREDERICK K. TAYLOR, Procopio, Cory, Hargreaves &
Savitch LLP, of San Diego, California, argued for the
plaintiff-appellant. With him on the brief was ANTHONY
J. DAIN.

   PRESTON P. FRISCHKNECHT, Peck Hadfield Baxter &
Moore, LLC, of Logan, Utah, argued for defendant-cross
appellant. With him on the brief were SHAUN L. PECK,
KEELY SCHNEITER and SHAWN P. BAILEY.
             __________________________

 Before BRYSON, MAYER, and GAJARSA, 1 Circuit Judges.
BRYSON, Circuit Judge.

    Mytee Products, Inc., filed a declaratory judgment ac-
tion in the United States District Court for the Southern
District of California seeking declarations of patent

   1    Judge Gajarsa assumed senior status on July 31,
2011.
3                       MYTEE PRODUCTS   v. HARRIS RESEARCH


invalidity and noninfringement. The action targeted U.S.
Patent Nos. 6,298,577 (“the ’577 patent”) and 6,266,892
(“the ’892 patent”), both of which are assigned to Harris
Research, Inc. After summary judgment proceedings and
a jury trial, both patents were found to be not invalid and
infringed. Harris moved for a permanent injunction,
which the district court granted. Mytee appealed, and we
affirm.

                             I

    Mytee sought a declaratory judgment that certain
claims from the ’577 and ’892 patents were invalid and
not infringed by its vacuum-head attachments known as
“Banana Glides.” Each of the specified claims recites a
vacuum-head attachment with “apertures.” Mytee pro-
posed that the term “apertures” be construed to mean
“any holes, slots or openings that serve as liquid extrac-
tion nozzles,” and the district court adopted that construc-
tion.

     Each party filed summary judgment motions on inva-
lidity. Mytee argued that the claims were anticipated by
four prior art references known as Rowan, Campbell,
Wood, and Bjorkman. Harris moved for summary judg-
ment of non-anticipation on each of those references. The
district court determined that the Rowan and Campbell
references failed to disclose liquid extraction nozzles, and
the court therefore granted Harris’s motion with respect
to those references. With respect to the Wood and Bjork-
man references, the district court denied both parties’
summary judgment motions on anticipation.

   Harris also moved for summary judgment on obvious-
ness. Harris argued that summary judgment was war-
ranted because Mytee’s validity expert, James Sakaguchi,
MYTEE PRODUCTS   v. HARRIS RESEARCH                        4


had addressed only anticipation and because Mytee had
pointed to no other evidence on obviousness. Mytee
responded that it did not need to offer expert testimony on
obviousness, because “the art presented in this case was
readily understandable.” Instead, Mytee submitted a
claim chart for some of the claims from the ’577 patent
that identified certain claim limitations in each of the four
pieces of prior art. Without elaboration, Mytee asserted
that “it would have been obvious” to combine the elements
found in different references and that “one of ordinary
skill in the art would have been motivated” to combine
the teachings of different references.

    The district court granted summary judgment of
nonobviousness. The court explained that “[t]he ‘evi-
dence’ of obviousness offered by Mytee, in support of a
defense that requires undisputed clear and convincing
evidence, is little more than conclusory assertions, gross
generalities, and unsupported assumptions made by
counsel.”

     The case proceeded to trial on infringement and an-
ticipation as to the Wood and Bjorkman references. Each
side designated experts to testify at trial. Harris chose
two experts—Edward Durrant, who had experience in
carpet cleaning, and Jonathan Richards, who lacked
experience in carpet cleaning. Mytee chose two experts of
its own—Frederick Thompson, who had experience in
carpet cleaning, and Mr. Sakaguchi, who did not. Mytee
filed a motion in limine to exclude Mr. Richards and
Mytee’s own expert, Mr. Sakaguchi, from testifying on the
grounds that they were not persons of ordinary skill in
the art of carpet cleaning. The district court reviewed the
experts’ qualifications and concluded that both Mr. Rich-
ards and Mr. Sakaguchi “have educational training re-
garding various aspects of mechanical engineering and
5                      MYTEE PRODUCTS   v. HARRIS RESEARCH


knowledge gained from experience prosecuting patents for
mechanical devices that provide relevant technical exper-
tise in the pertinent art, as well, making their opinion
testimony admissible.” Accordingly, the court denied
Mytee’s motion and allowed Mr. Richards to testify at
trial on questions of infringement and validity.

    The jury found that Mytee infringed each of the
claims at issue and that none of the claims were antici-
pated by Wood or Bjorkman. The jury awarded Harris
$36,165 in damages based on a reasonable royalty calcu-
lation. On appeal from that judgment, Mytee challenges
the summary judgment of no anticipation with respect to
Rowan and Campbell as well as the summary judgment of
nonobviousness. 2 Mytee also seeks review of the district
court’s denial of its motion in limine to exclude Mr. Rich-
ards as an expert witness.

     After the jury reached its verdict on infringement and
validity, Harris moved for a permanent injunction. It
argued that sales of Mytee’s infringing Banana Glides
would cause it irreparable harm based on indirect compe-
tition in the market for carpet-cleaning service between
Mytee’s customers and Harris’s franchisees. The district
court found that Mytee’s continued sales of the infringing
devices would cause irreparable harm to Harris and
entered a permanent injunction. Mytee appealed from
the order issuing the injunction.

                            II

     Mytee’s primary argument on appeal is that the dis-
trict court erred by granting Harris’s motion for summary

    2    Mytee briefed the issues of infringement and an-
ticipation based on Wood and Bjorkman, but it withdrew
those issues at oral argument.
MYTEE PRODUCTS   v. HARRIS RESEARCH                        6


judgment that the selected claims were not anticipated by
Rowan and Campbell. The district court entered sum-
mary judgment based on its conclusion that neither
Rowan nor Campbell disclosed “apertures,” which the
court construed to mean “any holes, slots or openings that
serve as liquid extraction nozzles.” Mytee does not chal-
lenge that construction.

    Mytee argues that Rowan discloses apertures that
serve as liquid extraction nozzles. Rowan discloses a
vacuum-head with apertures. The district court con-
cluded that the apertures in Rowan did not serve as liquid
extraction nozzles because they did not satisfy the court’s
definition of a “liquid extraction nozzle” as “a tube or duct
through which fluid is pulled out.” The court explained
that the Rowan patent discloses that fluid is pulled out
through a central channel rather than through the dis-
closed apertures.

    We have reviewed the teachings of Rowan and find no
error in the district court’s characterization of that refer-
ence. Although Rowan states that the apertures are
“exposed . . . to freshly dampened carpet,” it does not
teach that fluid is pulled through the apertures.

    Mytee next argues that the district court erred by
concluding that Campbell fails to disclose “apertures.”
Campbell, however, does not disclose a vacuum-head
attachment that is used for fluid extraction. Instead, it
discloses a vacuum-head attachment that is used “for
cleaning . . . dandruff, or loose bits of hair from the scalp
and adjacent areas.” Mytee argues that even though
Campbell’s apertures were designed only to collect dan-
druff and hair, they are inherently capable of serving as
liquid extraction nozzles. Mytee contends the district
7                      MYTEE PRODUCTS   v. HARRIS RESEARCH


court therefore “incorrectly addressed the functional
limitations” of the term “apertures.”

    That argument has two flaws. First, Mytee has failed
to point to any evidence demonstrating that the Campbell
device would be inherently capable of fluid extraction.
Instead, Mytee relies on what it contends is a presump-
tion of inherency recognized by this court in In re Schrei-
ber, 128 F.3d 1473 (Fed. Cir. 1997), given that Campbell’s
structure is similar to the structure of the patented
device. The Schreiber case, however, did not establish a
presumption of inherency for issued patents. It held only
that after establishing a prima facie case of anticipation,
an examiner can shift the burden to the applicant “to
show that the prior art structure did not inherently
possess the functionally defined limitations of the claimed
apparatus.” Id. at 1478. Second, Mytee’s argument, if
accepted, would enable it to circumvent a limitation that
Mytee itself proposed during claim construction. Al-
though “the recitation of a new intended use for an old
product does not make a claim to that old product pat-
entable,” id. at 1477, Mytee waived any inherency argu-
ments when it proposed a functional definition for a
structural limitation.

                            III

    Mytee also appeals from the district court’s grant of
summary judgment of nonobviousness. Mytee argues
that Harris, as the moving party, bore the initial burden
of proving that there are no genuine issues of material
fact. Because Harris did not submit any evidence on
obviousness, Mytee contends that Harris did not meet its
burden and that the district court incorrectly required
Mytee to submit evidence demonstrating a genuine issue
of material fact.
MYTEE PRODUCTS   v. HARRIS RESEARCH                      8


    Mytee has misstated the standard that applies to the
party moving for summary judgment when the non-
moving party bears the ultimate burden of proof at trial.
As the moving party, Harris bore “the initial responsibil-
ity of informing the district court of the basis for its
motion, and identifying those portions of ‘the pleadings,
depositions, answers to interrogatories, and admissions
on file, together with the affidavits, if any,’ which it
believes demonstrate the absence of a genuine issue of
material fact.” Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986). Harris met that burden by informing the court
that Mytee had offered no evidence or reasoned argument
explaining why it would have been obvious to combine the
teachings of at least two of the Wood, Bjorkman, Rowan,
and Campbell references. At that point, the burden
shifted to Mytee, as the party with the ultimate burden of
proof on obviousness, to demonstrate why it would have
been obvious to combine the references. That does not
mean that Mytee was necessarily required to submit
expert testimony. Centricut, LLC v. Esab Grp., Inc., 390
F.3d 1361, 1369 (Fed. Cir. 2004). But “[b]road conclusory
statements” alone are insufficient. Ecolochem, Inc. v. S.
Cal. Edison Co., 227 F.3d 1361, 1372 (Fed. Cir. 2000).
Upon review of Mytee’s submissions, we agree with the
district court’s characterization that its obviousness
arguments are nothing more than “conclusory assertions,
gross generalities, and unsupported assumptions made by
counsel.” Mytee failed to provide any reason why a per-
son of ordinary skill would have been motivated to com-
bine the references.

                            IV

    Mytee next argues that the district court erred by de-
nying its motion in limine regarding Harris’s expert
witness, Mr. Richards. Mytee contends that Mr. Richards
9                       MYTEE PRODUCTS   v. HARRIS RESEARCH


was not a person of ordinary skill in the art of the inven-
tion in light of his lack of experience in carpet cleaning,
and that the district court violated our precedent by
allowing him to testify on the issues of infringement and
validity. See Sundance, Inc. v. DeMonte Fabricating Ltd.,
550 F.3d 1356, 1363 (Fed. Cir. 2008).

    Mr. Richards stated that a person of ordinary skill in
the art would have a high school diploma and two years of
experience in the carpet cleaning industry. Harris ac-
knowledges that Mr. Richards did not qualify as a person
of ordinary skill in the art under that definition because
he had no experience in the carpet cleaning industry.
However, Mr. Richards had additional qualifications,
including a degree in electrical engineering and experi-
ence prosecuting patents for mechanical devices. The
district court reviewed Mr. Richards’ expertise and con-
cluded that notwithstanding his lack of experience in
carpet cleaning, his experience with mechanical devices
would “provide relevant technical expertise in the perti-
nent art.” Thus, it appears that the district court believed
that Mr. Richards had experience relevant to the field of
the invention even if he had not actually cleaned carpets
or designed carpet-cleaning technology. See SEB S.A. v.
Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir.
2010) (expert testimony admissible where testimony
established an “adequate relationship” between witness’s
experience and the claimed invention), aff’d, 131 S. Ct.
2060 (May 31, 2011).

    In any event, the district court did not define a person
of ordinary skill in the art as needing to have carpet-
cleaning experience, so the court had no occasion to decide
whether Mr. Richards’ lack of experience in that occupa-
tion disqualified him as an expert witness in this case. In
fact, Mytee itself suggested that the level of skill in the
MYTEE PRODUCTS   v. HARRIS RESEARCH                     10


art did not require carpet-cleaning experience. At the
summary judgment stage, Mytee proposed that the level
of skill in the art could be that of “an ordinary layman
with average intelligence.” Moreover, Mytee proffered
Mr. Sakaguchi’s expert testimony even though he had no
experience in the carpet cleaning field. Under those
circumstances, Mytee cannot persuasively claim that it
was error to allow expert testimony from a person without
such experience. We therefore uphold the district court’s
decision to deny Mytee’s motion to prohibit Mr. Richards
and Mr. Sakaguchi from testifying.

                            V

     District court decisions to grant or deny permanent
injunctive relief are reviewed for abuse of discretion.
eBay, Inc. v. MercExchange, LLC, 547 U.S. 388, 391
(2006). Mytee argues that the district court abused its
discretion in entering an injunction, because the court’s
finding that Harris would be irreparably harmed was
based on insufficient evidence. According to Mytee, the
evidence fell short of what was required because Harris
did not submit a lost profits analysis and because Harris
is not in direct competition with Mytee. We have never
held, however, that in order to establish irreparable harm
a patentee must demonstrate that it is entitled to lost
profits or that it is in direct competition with the in-
fringer. In this case, the district court rationally con-
cluded that Harris had shown irreparable harm based on
its finding that Mytee and Harris were indirectly compet-
ing through their customers. 3 Harris operates a chain of

   3     This conclusion is flawed, according to Mytee, be-
cause Harris’s antitrust expert prepared a report stating
that Harris and Mytee were not in competition. That
report is not inconsistent with the facts found by the
district court; instead, it draws a different conclusion as
11                      MYTEE PRODUCTS   v. HARRIS RESEARCH


carpet-cleaning franchises and sells vacuum heads em-
bodying its patented technology to its franchisees. Mytee
sells its Banana Glides to independent carpet cleaners
that compete directly with Harris’s franchisees.

    The court found that the indirect competition would
cause irreparable harm to Harris because Harris’s pat-
ented technology was almost exclusively used by its
franchisees. Moreover, its franchisees used the technol-
ogy as their primary tool for cleaning carpets. Mytee does
not dispute either of those facts. Instead, it argues that
there was no evidence in the record showing that Harris’s
franchisees would be harmed. But Harris submitted
evidence demonstrating that its franchisees relied on the
advantages of its patented technology to gain an edge in
the marketplace. Based on that showing, it was not an
abuse of discretion for the court to conclude that the
market share enjoyed by Harris’s franchisees would be
threatened by the presence of a competitor using the
same technology.

    Mytee also argues that the district court erred by fail-
ing to consider Harris’s delay in moving for an injunction.
Mytee’s claim of delay refers to Harris’s decision not to
seek a preliminary injunction. While we have held that
delay in seeking an injunction is a factor to be considered
in determining whether to issue a preliminary injunction,
we have never held that failure to seek a preliminary
injunction must be considered as a factor weighing
against a court’s issuance of a permanent injunction. See
Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1457 (Fed.
Cir. 1988) (“The period of delay exercised by a party prior


to a different legal issue, i.e., that indirect competition
would be insufficient to serve as the basis for an antitrust
claim.
MYTEE PRODUCTS   v. HARRIS RESEARCH                     12


to seeking a preliminary injunction . . . . is but one cir-
cumstance that the district court must consider in the
context of the totality of the circumstances [in entering a
preliminary injunction].”). Mytee has failed to persuade
us that we should adopt such a rule. There are significant
differences in the requirements and uses of preliminary
and permanent injunctions. See Lermer Ger. GmbH v.
Lermer Corp., 94 F.3d 1575, 1577 (Fed. Cir. 1996) (“[Pre-
liminary and permanent injunctions] are distinct forms of
equitable relief that have different prerequisites and
serve entirely different purposes.”). Moreover, adopting a
rule such as that proposed by Mytee would likely result in
a substantial increase in the number of requests for
preliminary injunctions; in many cases, such requests
would be filed not because of the need for preliminary
injunctive relief, but merely to protect the patent owner’s
ultimate right to a permanent injunction. Accordingly, we
reject Mytee’s “delay” argument and conclude that the
district court did not abuse its discretion in entering a
permanent injunction in this case.

                       AFFIRMED
