Judge Netburn Grants Preliminary Anti-Suit Injunction "Zipping Up" Suit Pending in Japan

by Patterson Belknap Webb & Tyler LLP

On May 8, 2018, United States Magistrate Judge Sarah Netburn (S.D.N.Y.) granted plaintiffs AU New Haven, LLC's ("AU") and Trelleborg Coated Systems US, Inc.'s ("Trelleborg") motion for a preliminary anti-suit injunction concerning an action pending in Japan.

AU is the owner by assignment of U.S. and Japanese patents directed to a water-resistant zipper.  Prior to the patents being assigned to AU, the inventors of the patents granted YKK Corp. ("YKK") an exclusive license (under an exclusive license agreement, hereinafter "ELA") to practice the invention in certain markets.

Plaintiffs filed this case in 2015, alleging that YKK infringed the U.S. patent and breached the ELA by selling patented zippers in excluded markets. Two years later, YKK filed an action in Japan, seeking a declaratory judgment that it did not infringe the Japanese patent, which would then be used to inform the U.S. court that YKK had, due to non-infringement, not breached the ELA in Japan.

The court noted that "principles of comity counsel that injunctions restraining foreign litigation be used sparingly and granted only with care and great restraint." The court then held that the two threshold requirements for an injunction—that the parties be the same in both matters and that resolution of the U.S. action be dispositive of the foreign action to be enjoined—were met. Specifically, the court found that although YKK had filed the Japanese action against Trelleborg (not AU), AU's interests were sufficiently aligned with Trelleborg's to be the "same parties," and that because the court must determine whether YKK practiced the Japanese patent in violation of the ELA, this action would be dispositive of the Japanese action.

Upon finding the two threshold requirements met, the court then found that four of the five discretionary factors set out in China Trade & Dev. Corp. v. M.V. Choon Yong, 837 F.2d 33, 35 (2d Cir. 1987) weigh in favor of an injunction. Specifically the court found that the Japanese action: (1) would frustrate public policy disfavoring forum shopping given that the parties had agreed to resolve all disputes arising out of the ELA in New York courts; (2) is vexatious; (3) appears to be a last-ditch effort to circumvent this court's decision making process, distract plaintiffs in this case, and obtain a more favorable result; and (4) may result in inconvenience, expense, inconsistency, and a race to judgment.

Finally, the court found the traditional test for a preliminary injunction to be satisfied, i.e., that plaintiffs had showed irreparable harm, a likelihood of success on the merits, and sufficiently serious questions going to the merits to make them a fair ground for litigation, and a balance of hardships tipping decidedly in plaintiffs' favor.

Case:  AU New Haven, LLC et al. v. YKK Corp., et al., No. 15-CV-3411 (GHW)(SN), Dkt. No. 356 (S.D.N.Y. May 8, 2018).


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Patterson Belknap Webb & Tyler LLP | Attorney Advertising

Written by:

Patterson Belknap Webb & Tyler LLP

Patterson Belknap Webb & Tyler LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.