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Dasso International, Inc. v. Moso North America, Inc.

United States District Court, D. Delaware

August 14, 2019

DASSO INTERNATIONAL, INC. and EASOON USA, LLC, Plaintiffs,
v.
MOSO NORTH AMERICA, INC. and MOSO INTERNATIONAL BV, Defendants.

          Sean T. O'Kelly and Thomas H. Kramer, O'KELLY ERNST & JOYCE, LLC, Wilmington, DE; Gerard M. O'Rourke, O'ROURKE LAW OFFICE, LLC, Wilmington, DE; Scott R. Hoopes, MILLS & HOOPES, LLC, Lawrenceville, GA. Attorneys for Plaintiffs.

          David E. Moore, Bindu A. Palapura, and Stephanie E. O'Byrne, POTTER ANDERSON & CORROON, LLP. Wilmington, DE; Thomas G. Pasternak and John M. Schafer, AKERMAN LLP, Chicago, IL; Evelina Gentry, AKERMAN LLP, Los Angeles, CA. Attorneys for Defendants.

          MEMORANDUM OPINION

          ANDREWS, U.S. DISTRICT JUDGE

         Presently before me is Plaintiffs' Motion for Preliminary Injunction. (D.I. 50). The Parties have briefed the motion. (D.I. 51, 60, 81). On July 2, 2019, 1 held a hearing on the issue of irreparable harm. (D.I. 144 ("Tr.")). As expert reports were not finalized at that time, I have not heard the Parties' expert testimony on likelihood of success. (See Tr. at 114:20-115:10).

         I. Background

         Plaintiff Easoon USA, LLC ("Easoon"), founded in 2008, is in the U.S. bamboo decking business. (D.I. 1 at ¶ 8; Tr. at 6:6-13). It is the exclusive licensee of U.S. Patent No. 8, 709, 578 ('"578 Patent") titled "Bamboo scrimber[1] and manufacturing method thereof," which is owned by Plaintiff Dasso International, Inc. ("Dasso"). (D.I. 1 at ¶¶ 5, 8). The Dasso commercial bamboo decking products relevant to this case are sold under the brand name dasso.XTR. (Id. at ¶ 7).

         Defendant MOSO North America, Inc. ("MOSO NA") is a recent entrant into the North American bamboo decking business. (Tr. at 57:14-18; 76:25-77:1). It was founded in 2017 by Brett Kelly, Easoon's former director of business development, shortly after he left his position with Easoon. (Id. at 77:17-78:6). Since MOSO NA's founding, a handful of Easoon customers moved their business to MOSO NA. (Id. at 105:15-106:19). At least one of those customers, Disdero Lumber, returned its business to Easoon in November 2018. (See Id. at 104:2-17).

         Plaintiffs filed suit on February 11, 2017, alleging that Defendants' Bamboo X-Treme decking products infringe the '578 Patent. (D.I. 1). They also alleged claims of tortious interference with contract and violation of Delaware's Deceptive Trade Practices Act. (Id. at ¶¶ 53-64). They subsequently amended their complaint to add a claim of aiding and abetting breach of fiduciary duty. (D.I. 25 at ¶¶ 139-149). Over a year after filing the original complaint, following the breakdown of settlement discussions, Plaintiffs filed this motion for a preliminary injunction. (See D.I. 81 at 1-3).

         II. Legal Standard

         Pursuant to 35 U.S.C. § 283, a court in a patent case "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.[2] "The grant or denial of a preliminary injunction pursuant to 35 U.S.C. § 283 is within the discretion of the district court." Novo Nordisk of N.A., Inc. v. Genentech, Inc., 11 F.3d 1364, 1367 (Fed. Cir. 1996) (citation omitted). The Federal Circuit has "cautioned, however, that a preliminary injunction is a drastic and extraordinary remedy that is not to be routinely granted." Intel Corp. v. ULSI Sys. Tech., Inc., 995 F.2d 1566, 1568 (Fed. Cir. 1993) (citation omitted).

         "A plaintiff seeking a preliminary injunction must establish [1] that he is likely to succeed on the merits, [2] that he is likely to suffer irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in his favor, and [4] that an injunction is in the public interest." Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008). "These factors, taken individually, are not dispositive; rather, the district court must weigh and measure each factor against the other factors and against the form and magnitude of the relief requested." Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1451 (Fed. Cir. 1988). The Federal Circuit, however, has placed particular emphasis on the first two factors: "a movant cannot be granted a preliminary injunction unless it establishes both of the first two factors, i.e., likelihood of success on the merits and irreparable harm." Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001) (emphasis in original). Accordingly, "[w]hile granting a preliminary injunction requires analysis of all four factors, a trial court may . . . deny a motion based on a patentee's failure to show any one of the four factors-especially either of the first two-without analyzing the others." Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352, 1356 (Fed. Cir. 2002); see also Chrysler Motors Corp. v. Auto Body Panels of Ohio, Inc., 908 F.2d 951, 953 (Fed. Cir. 1990) ("If the injunction is denied, the absence of an adequate showing with regard to any one factor may be sufficient, given the weight or lack of it assigned the other factors, to justify the denial.").

         III. Analysis

         Plaintiffs have not carried their burden to prove that they are being irreparably harmed by MOSO NA's presence in the U.S. bamboo decking market.[3] Plaintiffs present four harms they argue will prove irreparable if Defendants are allowed to persist in the market: (1) loss of goodwill and reputational harm, (2) price erosion, (3) loss of market share, and (4) disparaging statements. (D.I. 51 at 15-18). I address each harm in turn.

         A. Loss of Goodwill and ...


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