United States District Court, D. Delaware
E.I. DUPONT DE NEMOURS AND COMPANY, Plaintiff,
UNIFRAX I LLC, Defendant
Richard L. Horwitz, David E. Moore, Bindu A. Palapura,
Stephanie E. O'Byrne, POTTER ANDERSON & CORROON LLP,
Wilmington, Delaware; Mark L. Levine, Christopher D.
Landgraff, Christopher R. Hagale, Sharon Desh, BARTLIT BECK
HERMAN PALENCHAR & SCOTT LLP, Chicago, Illinois.
Attorneys for Plaintiff .
Frederick L. Cottrell, III, Kelly E. Farnan, Jason J.
Rawnsley, Katharine L. Mowery, RICHARDS, LAYTON & FINGER,
P.A., Wilmington, Delaware; Joseph G. Curatolo, Salvatore A.
Sidoti, CURATOLO SIDOTI CO. L.P.A., Cleveland, Ohio; Jake M.
Holdreith, David A. Prange, Alyssa N. Lawson, Brenda L. Joly,
Emily E. Niles, George Ashenmacher, ROBINS KAPLAN LLP,
Minneapolis, Minnesota. Attorneys for Defendant
ANDREWS, U.S. DISTRICT JUDGE
Memorandum Opinion addresses Plaintiff E.I. du Pont de
Nemours and Company's Post-Trial Motion for a Permanent
Injunction, Supplemental Damages, and Interest. (D.I. 367). I
have reviewed the briefing for this motion. (D.I. 368; D.I.
376; D.I. 383). On May 19, 2017, 1 entered judgment for
Plaintiff that Defendant's FyreWrap Combi-Film 3G11
No. 8, 607, 926 (the '"926 patent"). (D.I.
346). I also entered judgment for Plaintiff that the '926
patent was not invalid. (Id.).
"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. "According to well-established
principles of equity, a plaintiff seeking a permanent
injunction must satisfy a four-factor test before a court may
grant such relief." eBay Inc. v. MercExchange,
LLC, 547 U.S. 388, 391 (2006). "A plaintiff must
demonstrate: (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. "The essential attribute
of a patent grant is that it provides a right to exclude
competitors from infringing the patent." Acumed LLC
v. Stryker Corp., 551 F.3d 1323, 1328 (Fed. Cir. 2008).
satisfy the first eBay factor, the patentee must
show that it is irreparably harmed by the infringement."
Apple Inc. v. Samsung Elecs. Co., 809 F.3d 633, 639
(Fed. Cir. 2015). "This requires proof that a
'causal nexus relates the alleged harm to the alleged
infringement.'" Id. "This just means
that there must be proof that the infringement causes the
harm." Id. "Where two companies are in
competition against one another, the patentee suffers the
harm-often irreparable -of being forced to compete against
products that incorporate and infringe its own patented
inventions." Douglas Dynamics, LLC v. Buyers Prods.
Co., l\l F.3d 1336, 1345 (Fed. Cir. 2013).
predecessor Combi-Film 396 product was dissatisfactory to
Boeing. (Tr. 286:7-24). There is evidence that the
predecessor product would not have qualified under
Boeing's new specification. (Tr. 946:20-947:4, 992:15-24,
847:12-22). Defendant's 3G11 product uses Plaintiffs
patented flame barrier laminate design to qualify for this
specification and compete in this market. (Tr. 747:16-748:3).
Defendant is Plaintiffs only competitor in Boeing's flame
barrier laminate market. (Tr. 1500:10-16). Plaintiff
projected that its Nomex XF would have sales of $32 million
in 2013 to 2015. (Tr. 193:4-194:9). Defendant's presence
in the market directly reduced Plaintiffs sales. (See,
e.g., Tr. 776:9-19, 199:9-200:4; PTX-259; PTX-388).
reduction in sales reflects a causal nexus relating the harm
to the infringement. Had Defendant not infringed Plaintiffs
design, Defendant would not have qualified its 3G11 product
and would not have been able to compete in the flame barrier
market under Boeing's new specification. Defendant thus
would not have cut into sales of Nomex XF. Plaintiff and
Defendant are direct competitors. There is sufficient
evidence establishing irreparable harm to Plaintiff. See
Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142,
1152 (Fed. Cir. 2011).
notes that Defendant took the 3G11 product off the market and
no longer offered it for sale as of May 19, 2017. (D.I. 377
¶ 4). This is not a persuasive reason to deny the
request for an injunction. See, e.g., Cartier, Inc. v.
Four Star Jewelry Creations, Inc., 2003 WL 21056809, at
*6 (S.D.N.Y.May 8, 2003) ("[A] bare promise by a party
in the course of litigation to discontinue past or ongoing
misconduct does not justify denial of injunctive relief,
since such unilateral action hardly suffices to ensure that
the party will not, in the future, reverse course and resume
its challenged activities."). Defendant fails to
"make an affirmative showing that continuing
infringement was, practically speaking, nearly
impossible." Lyons P'ship, L.P. v. Morris
Costumes, Inc., 243 F.3d 789, 800 (4th Cir. 2001).