United States District Court, D. Delaware
DASSO INTERNATIONAL, INC. and EASOON USA, LLC, Plaintiffs,
MOSO NORTH AMERICA, INC. and MOSO INTERNATIONAL BV, Defendants.
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
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
ANDREWS, U.S. DISTRICT JUDGE
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).
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 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 ¶
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).
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
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. "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).
plaintiff seeking a preliminary injunction must establish 
that he is likely to succeed on the merits,  that he is
likely to suffer irreparable harm in the absence of
preliminary relief,  that the balance of equities tips in
his favor, and  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.").
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. 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.
Loss of Goodwill and ...