Woods v DeAngelo - 8-81579-Flsd

UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF FLORIDA

CASE NO. 08-81579-CIV-HURLEY/HOPKINS

WOODROW WOODS, et al.,

Plaintiffs,

vs.

DEANGELO MARINE EXHAUST, INC.,

Defendant._______________________________________/

ORDER GRANTING IN PART PLAINTIFFS’ MOTION FOR PERMANENT INJUNCTION

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

part plaintiffs’ motion.

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

preventing corrosion and engine failure.

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

Case 9:08-cv-81579-DTKH Document 260 Entered on FLSD Docket 06/30/2010 Page 1 of 6

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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

to analyze the merits of plaintiffs’ motion.

B. Motion for Permanent Injunction

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


DeAngelo argues that plaintiffs face no threat of future infringement, because it has1

voluntarily ceased its infringing activities. However, “[w]hile cessation of unlawful conduct mayrender a request for injunctive relief moot, the [defendant must show that the reform is] irrefutableand total.” See Funai Elec. Co., Ltd. v. Daewoo Elecs. Corp., 593 F.Supp.2d 1088, 1109-10 (N.D.

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in equity is warranted; and (4) that the public interest would not be disserved by apermanent injunction.

Id. The determination of whether to “grant or deny permanent injunctive relief is an act of equitable

discretion by the district court .” Id.

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

continue infringing is the greatest.”).

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

goodwill and reputation, to the detriment of plaintiffs.

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. As discussed above, the parties compete1


Cal. 2009). DeAngelo has not made such a showing here.

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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

patent[s] should be readily enforceable.” Id.

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

favors injunctive relief.

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

Plaintiffs’ proposed injunction reads as follows:


The injunction in Int’l Rectifier provided that: 2

“[Defendant] and its officers, agents, servants, employees and attorneys, and allpersons in active concert or participation with them who receive actual notice of thisJudgment, are hereby prohibited and enjoined from making, using, offering for saleor selling in, or importing into, the United States, any device covered by one or moreof Claims 1 through 5 of U.S. Patent No. 6,476,481.”

Int’l Rectifier, 383 F.3d at 1315.

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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 areprohibited from making, using, selling, offering to sell, or importing any device thatinfringes either the ‘670 or the ‘633 patent until the expiration of the term of thosepatents.

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. According to the2

Federal Circuit, such language “does not meet the specificity requirements of Rule 65(d)” and


Order Granting in Part Plaintiffs’ Motion for Permanent Injunction

Woods v. DeAngelo Marine Exhaust, Inc.

Case No. 08-81579-CIV-HURLEY/HOPKINS

6

“applies to many more devices than those actually adjudicated.” Id. at 1316. Consequently, the

court declines to issue the proposed injunction.

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

Federal Circuit case law and Rule 65(d).

CONCLUSION

For the reasons given above, it is hereby ORDERED and ADJUDGED that:

1. Plaintiffs’ motion to amend or alter final judgment to include a permanent injunction

[DE # 253] is GRANTED IN PART. Plaintiffs are entitled to injunctive relief. However, the

language of the proposed injunction is rejected as overly broad.

2. Plaintiffs SHALL submit, by 5:00 PM on Wednesday, June 30, 2010, a proposed

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 30 day of June,th

2010.

____________________________________Daniel T. K. HurleyU.S. District Judge

Copies provided to counsel of record


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Woods v DeAngelo - 8-81579-Flsd