A judge in the Western District of Michigan enjoined a roofing manufacturer’s infringing and directly-competing vented soffit product, but denied the patentee’s request for a complete product recall.
The court considered the four eBay factors to determine whether an injunction was warranted. First, under the irreparable injury factor, the court found that the direct competitor had caused a loss of market share for both the patented product and related accessories. Furthermore, the infringer damaged the patentee’s reputation by disparaging the patented product. The infringer’s “negative marketing” efforts against one product line would also impact a purchaser’s decision whether to carry the patentee’s entire product line. Accordingly, under the second factor, the court found that money damages could not compensate for loss of market share and reputational damage.
Turning to the balance of hardships, the court found that the infringer would not suffer significant hardship because, on its own admission, it had a diverse range of products. Moreover, the “infringer’s investment in an infringing product [was] hardly a worthy basis for denying injunctive relief.” Conversely, the patentee would suffer ongoing and non-compensable harm in the absence of an injunction. For the final factor, public interest, the court found that the “interest in the patent system and judicial protection of property rights” sufficiently outweighed other considerations. The court noted that neither health and safety nor product shortages were at issue.
For the scope of injunctive relief, the court refused the victor’s – plaintiff’s request for “the recall and destruction of product in the hands of distributors.” The court was persuaded by the infringer’s arguments that it lacked control over the products in “geographically-disperse locations,” and the costs and burdens of effecting a recall “would be incalculable.”
Quality Edge, Inc. v. Rollex Corp., No. 1:10-CV-278, 2016 WL 4536327 (W.D. Mich. Aug. 31, 2016) (Neff, J.).
