A federal judge from the Eastern District of Michigan has granted a lacrosse equipment manufacturer’s motion for a preliminary injunction against a competitor in a patent infringement case.
The court found specifically that Warrior Sports, Inc. demonstrated “a strong likelihood of success on the merits” of the claim and that it “will suffer irreparable harm without an injunction.” Summit County Democratic Cent. & Executive Co. v. Blackwell, 388 F.3d 547, 550 (6th Cir. 2004); Connection Distrib. Co. v. Reno, 154 F.3d 281, 288 (6th Cir. 1998).
The court, however, held the decision in abeyance until the proper amount of bond can be determined. “Warrior must pay a bond ‘in an amount that the court [determines] proper to pay the costs and damages sustained [if defendant STX, LLC is] found to have been wrongfully enjoined or restrained.’” FED. R. CIV. P. 65(c).
“This amount will include the value of STX’s lost sales between issuance of the injunction and the approximate time STX can reach the Federal Circuit on appeal. Although STX will inevitably lose a market share during this time, the Court has already affirmed the inability to accurately compensate this injury with monetary damages within the specific context of the young and growing lacrosse industry. It will not attempt to calculate, nor ask STX to calculate, a value that it cannot accurately estimate. In addition, this would give STX an opportunity to re-litigate the issue after already having had the opportunity to do so.
“Pointedly, STX did not submit information or offer any argument upon which the Court could attempt to calculate the value of any lost profits. Although this Court has wide discretion to determine the amount or need for bond, it must make this determination before granting the injunction. See Corning Inc. v. PicVue Elecs., Ltd., 365 F.3d 156, 158-159 (2d Cir. 2004). The Court orders STX to submit an estimate of lost profits by March 24, 2008. Warrior may also submit a counter-estimate by the same date.”
The impetus for the opinion was a claim of patent infringement against STX, LLC. The court wrote that Warrior applied for the patent in question with the Patent and Trademark Office on September 21, 2004. The ‘924 patent was subsequently issued to Warrior on September 12, 2006.
According to Warrior, it has incorporated its ‘924 patent into “most” of its “protective shoulder pads products on the market today.” Warrior alleged infringement through STX’s manufacture and sale of two models of protective lacrosse shoulder pads: the “Shogun” and “Chopper.”
The court wrote that when deciding motions for preliminary injunction, it must consider: “(1) whether the plaintiff has a strong likelihood of success on the merits; (2) whether the plaintiff will suffer irreparable harm without the injunction; (3) whether granting the injunction will cause substantial harm to others; and (4) the impact of the injunction on the public interest. Summit County Democratic Cent. & Executive Co. v. Blackwell, 388 F.3d 547, 550 (6th Cir. 2004); Connection Distrib. Co. v. Reno, 154 F.3d 281, 288 (6th Cir. 1998). No single factor is dispositive. Connection, 154 F.3d at 288. The court must balance each factor to determine whether they weigh in favor of an injunction. Id.”
In addressing the first question, the court wrote that “to defeat Warrior’s motion, STX modified its products and argues the versions it now produces do not infringe the ‘924 patent. The modification is the addition of a hot glue gun adhesive to impede the natural function of the telescoping inner and outer shoulder pads. STX maintains that now ‘the modified Chopper and Shogun outer pads can not [sic] move inwardly with respect to the inner pad, such that the inner pad would overlap more of the outer pad.’ Def.’s Sur. at Ex. 4, Third Emala Decl. P 8. However, this ‘modification’ is clearly temporary, and reverts to the infringing form as the glue bond separates.
“The evidentiary hearing further informed the Court’s understanding of the ineffectiveness of STX’s ‘modification.’ During the hearing defense counsel approached the bench to present the modified product to the Court. Counsel briefly gave the exemplar to the Court to examine. The glue holding the shoulders together promptly broke apart in the Court’s hands. This experience, along with the record in evidence, put to rest all speculation about the effectiveness of STX’s purported modification. Although STX submitted affidavits attesting to the sturdiness of the modified products when used for several days by professional lacrosse players, the Court’s inspection and Warrior’s declarations make clear the modification is an ineffective means to avoid infringement. The Court also notes STX could have made a more durable modification by weaving the pads together or severing the central strap that enables telescopic movement. It chose to do neither.
“Even if the glue used to modify the products was more effective, STX’s products nonetheless infringe the ‘924 patent.”
Based on the above and other findings, the court concluded that Warrior has met its burden to show a strong likelihood of success on the merits with respect to infringement or any invalidity or unenforceability defenses asserted by STX.”
Turning to whether the plaintiff would suffer irreparable harm, the court found that Warrior “makes a convincing, unrebutted argument (that) it will suffer irreparable harm during the course of this litigation if the preliminary injunction is denied.”
The court deemed the final two factors to be something of a wash. But given Warrior’s successful argument on the first two points, it opted to grant the motion for a preliminary injunction.
Warrior Sports, INC., v. STX, L.L.C.: E.D. Mich.; Case No: 07-14597, 2008 U.S. Dist. LEXIS 21387; 3/19/08
Attorneys of Record: (for plaintiff) John A. Artz, LEAD ATTORNEY, John S. Artz, LEAD ATTORNEY, Dickinson Wright, Bloomfield Hill, MI. (for defendant): George A. Sumnik, Jaffe, Raitt, Southfield, MI; James K. Archibald, STX LLC, Baltimore, MD; Peter M. Falkenstein, Jaffe Raitt Heuer & Weiss, PC, Ann Arbor, MI.
