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Plaintiffs,
vs.
Defendant.
_______________________________________/
THIS CAUSE is before the court upon plaintiffs’ motion to amend or alter final judgment
to include a permanent injunction [DE # 253]. For the reasons given below, the court will grant in
BACKGROUND
This is a patent infringement case involving technology for marine exhaust systems. Plaintiff
Woodrow Woods is the named inventor of U.S. Patent Nos. 5,740,670 and 6,035,633 (collectively,
“the patents-in-suit”) and is the owner of Plaintiff Marine Exhaust Systems, Inc., the exclusive
licensee of the patents. Generally, the patents-in-suit teach the inward tapering of marine exhaust
pipes, a design improvement that helps cool exhaust gas and prevent water migration, thus
In December 2008, plaintiffs filed suit aginst Defendant DeAngelo Marine Exhaust, Inc.
(“DeAngelo”), a competitor of plaintiffs. On April 21, 2010, a jury found that DeAngelo wilfully
infringed the patents-in-suit and awarded plaintiffs $92,804.00 in damages. The parties filed a series
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of post-trial motions, which the court denied on June 3, 2010. The court entered final judgment on
June 8, 2010. The same day, plaintiffs filed the instant motion to amend final judgment and for
permanent injunction.
DISCUSSION
A. Timeliness of Motion
DeAngelo first argues that plaintiffs’ motion should be denied as untimely, since it was filed
after entry of judgment and more than six weeks after the conclusion of trial. Although the court
agrees that plaintiffs should have filed this motion earlier, plaintiffs’ slight delay in moving for
injunctive relief does not warrant denying the motion as untimely, given that the “principal value”
of the patents-in-suit is the “statutory right to exclude.” Honeywell Int'l, Inc. v. Universal Avionics
Sys. Corp., 397 F.Supp.2d 537, 546 (D.Del. 2005). In addition, DeAngelo has not shown that
consideration of the motion at this time would result in unfair prejudice. Thus, the court proceeds
Section 283 of the Patent Act provides that district courts “may grant injunctions in
accordance with the principles of equity to prevent the violation of any right secured by patent, on
such terms as the court deems reasonable.” 35 U.S.C. 283. Under “well-established principles of
equity, . . . plaintiff[s] seeking a permanent injunction must satisfy a four-factor test before a court
may grant such relief.” eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006). They must
prove:
(1) that [they have] 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[s] and defendant, a remedy
2
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in equity is warranted; and (4) that the public interest would not be disserved by a
permanent injunction.
Id. The determination of whether to “grant or deny permanent injunctive relief is an act of equitable
In eBay, the Supreme Court cautioned against the application of set rules and assumptions
in the analysis of whether to grant an injunction. Id. at 1840. Nonetheless, “[c]ourts awarding
permanent injunctions typically do so under circumstances where plaintiff practices its invention and
is a direct market competitor.” See TruePosition v. Andrew Corp., 568 F.Supp.2d 500, 531 (D.Del.
2008); see Smtih & Nephew, Inc. v. Arthrex, Inc., 2010 WL 2522428, at * 2 (E.D. Tex June 18,
2010) (“The best case for obtaining a permanent injunction often occurs when the plaintiff and
defendant are competing in the same market. In that context, the harm in allowing the defendant to
In this case, plaintiffs face irreparable harm if DeAngelo is not enjoined from making and
selling products that infringe the patents-in-suit. The parties are direct competitors in the market for
marine exhaust products and, as a result, future infringing sales by DeAngelo would cause plaintiffs
to lose sales and customers, thus reducing plaintiffs’ market share and improving DeAngelo’s
Monetary damages alone are inadequate to compensate plaintiffs for the irreparable harm
caused by DeAngelo’s infringement. While the jury awarded plaintiffs damages for past
infringement, the threat of future infringement remains.1 As discussed above, the parties compete
1
DeAngelo argues that plaintiffs face no threat of future infringement, because it has
voluntarily ceased its infringing activities. However, “[w]hile cessation of unlawful conduct may
render a request for injunctive relief moot, the [defendant must show that the reform is] irrefutable
and total.” See Funai Elec. Co., Ltd. v. Daewoo Elecs. Corp., 593 F.Supp.2d 1088, 1109-10 (N.D.
3
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in the same market, and the sale of infringing products affects both parties’ goodwill and market
share. The future loss associated with these effects are difficult to quantify, which is evidence that
remedies at law are inadequate. See Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 703 (Fed.
Cir.2008).
The balance of hardships weighs in favor of injunctive relief. The “burden placed on
Defendant[] by an injunction would consist only of the cost of forgoing infringing conduct,” while
plaintiffs, without injunctive relief, face the loss of market share and sales. See Flexiteek Ams. Inc.
v. PlasTEAK, Inc., 2009 WL 2957310, at * 9 (S.D. Fla. Sept. 15, 2009). In addition, plaintiffs have
“spent considerable time and effort to obtain the [patents-in-suit] and the legal rights attached to the
Finally, the grant of a permanent injunction would serve the public interest. The public
interest is usually served by strong patent protection. See i4i Partnership v. Microsoft Corp., 598
F.3d 831, 863 (Fed. Cir. 2010); Abbott Labs. v. Andrx Pharms., Inc., 452 F.3d 1331, 1348 (Fed. Cir.
2006). Further, where, as here, the “products do not relate to a significant compelling public interest,
such as health or safety, this factor weighs heavily in favor of an injunction.” Mass Engineered
Design, Inc. v. Ergotron, Inc., 633 F.Supp.2d 361, 394 (E.D. Tex. 2009). Thus, the public interest
In sum, each of the four factors discussed above weigh in favor of permanent injunctive
relief. The court will thus grant plaintiffs’ request for an injunction.
C. Scope of Injunction
4
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Defendant DeAngelo Marine Exhaust, Inc., its principals, officers, managers, agents,
and all those in active concert therewith who receive actual notice of this Order are
prohibited from making, using, selling, offering to sell, or importing any device that
infringes either the ‘670 or the ‘633 patent until the expiration of the term of those
patents.
See DE # 247-1.
DeAngelo argues that the language of the proposed injunction is overly broad and
impermissibly vague because it fails to identify the products DeAngelo is enjoined from making and
selling. The court agrees. Fed. R. Civ. P. 65(d) instructs that: “ Every order granting an injunction
. . . shall be specific in terms [and] shall describe in reasonable detail, and not by reference to the
complaint or other document, the act or acts sought to be restrained.” Although district courts “have
wide latitude in framing injunctions to meet particular circumstances,” they do not have “license to
fashion injunctions that fall outside the dictates of Rule 65(d).” Int’l Rectifier Corp. v. IXYS Corp.,
383 F.3d 1312, 1317 (Fed. Cir. 2004). Thus, to comply with Rule 65(d), “the only acts the
injunction may prohibit are infringement of the patent by the adjudicated devices and infringement
by devices not more than colorably different from the adjudicated devices.” Id. at 1316.
In Int’l Rectifier, the Federal Circuit rejected as overly broad a permanent injunction that was
virtually a mirror imagine of proposed injunction in this case. Id. at 1316-18.2 According to the
Federal Circuit, such language “does not meet the specificity requirements of Rule 65(d)” and
2
The injunction in Int’l Rectifier provided that:
“[Defendant] and its officers, agents, servants, employees and attorneys, and all
persons in active concert or participation with them who receive actual notice of this
Judgment, are hereby prohibited and enjoined from making, using, offering for sale
or selling in, or importing into, the United States, any device covered by one or more
of Claims 1 through 5 of U.S. Patent No. 6,476,481.”
5
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“applies to many more devices than those actually adjudicated.” Id. at 1316. Consequently, the
At this time, the court is without sufficient information to redraft the language of the
injunction. Thus, the court will direct plaintiffs to submit a proposed injunction that complies with
CONCLUSION
For the reasons given above, it is hereby ORDERED and ADJUDGED that:
[DE # 253] is GRANTED IN PART. Plaintiffs are entitled to injunctive relief. However, the
injunction that complies with the above-mentioned authority. Defendant may, by 5:00 on Thursday,
July 1, 2010, respond to the proposed injunction or submit a proposed injunction that is consistent
with this order, the jury verdict, and the above-mentioned authority.
DONE and ORDERED in Chambers in West Palm Beach, Florida, this 30th day of June,
2010.
____________________________________
Daniel T. K. Hurley
U.S. District Judge
Copies provided to counsel of record