October 25, 2021

Volume XI, Number 298

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October 22, 2021

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Permanent Injunction Not Overly Broad Where Plaintiff Would Not Enforce Injunction Against Noninfringing Uses

UNITED CONSTRUCTION PRODUCTS  v. TILE TECH: Dec 15, 2016. Before Moore, Wallach, and Stoll.                                                            

Takeaway

The plain language of the permanent injunction is not overly broad where the injunction prevents the defendant from infringing the asserted patent under Federal Circuit law, and where the plaintiff asserts that it would not enforce the injunction against the defendant’s noninfringing uses of the enjoined device.

Procedural Posture

The C.D. Cal. granted default judgment and a permanent injunction to plaintiff United Construction. Defendant Tile Tech appealed. The CAFC affirmed.

Analysis

  • Default judgment: A decision to sanction a litigant by default judgment is not unique to patent law, so the regional circuit law applies. The CAFC held that a default judgment was warranted under Ninth Circuit law after balancing the following five factors: “(1) the public’s interest in expeditious resolution of litigation; (2) the court’s need to manage its docket; (3) the risk of prejudice to the [other party]; (4) the public policy favoring disposition of cases on their merits; and (5) the availability of less drastic sanctions.” Malone v. United States Postal Service, 833 F.2d 128, 130 (9th Cir. 1987).

  • Permanent injunction: The CAFC held that the permanent injunction was not overly broad. The plain language of the injunction prohibited all acts of infringement with specific hypothetical examples following the term “including.” The injunction’s use of the term “substantially similar” was not error because it prevented Tile Tech from infringing the asserted patent as assessed under Federal Circuit law. The requirement to surrender any “device, by which any notched washer utilized with the [asserted patent] was made” was an “acceptable means of preventing future infringement.” The notched washer was a crucial component of the patented feature. And United Construction stated it would not seek to enforce the injunction should Tile Tech use notched washers for non-infringing purposes. Lastly, it was not error to enjoin Tile Tech from “any and all acts of unfair competition, including using images of United’s products, projects, and drawings on its website and in any other marketing materials.”

Copyright © 2021, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VII, Number 10
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About this Author

Michael J. Block, Andrews Kurth, patent litigation lawyer, dispute resolution attorney
Associate

Michael is an Associate in the Intellectual Property section of the firm’s New York – Battery Park office. He focuses his practice on patent litigation and dispute resolution, especially in the field of electrical engineering.

Michael previously worked in-house at a company where he was engaged in the innovation, development, and monetization of intellectual property and mobile technologies. Michael also has experience in prosecuting patent applications and has written claims, responded to office actions, and participated in interviews with...

212-908-6407
 Vaibhav M. Sharma, Andrews Kurth, Trade Secret Enforcement Lawyer, Patent Litigation Attorney
Associate

Vaibhav is an Associate in the Intellectual Property section of the firm’s New York – Battery Park office. Intellectual property issues are critical to the success of any business, regardless of its size. Andrews Kurth Kenyon helps clients in virtually all industries obtain, protect and enforce patents, trademarks, copyrights, trade secrets and other intellectual property rights. Our IP lawyers have strong technical backgrounds and extensive legal and commercial experience as in-house IP counsel, patent and trademark examiners, engineers and scientists.

212-908-6250
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