On September 11, 2019, Judge J. Paul Oetken issued an order illustrating key factors a patentee is required to prove in order to obtain an injunction barring sales of a defendant’s allegedly infringing products pending the conclusion of the litigation.

In Ever Victory Tech., plaintiff Ever Victory asserted infringement of its patent-in-suit by defendant SAS Group’s sale of its toy-car racing kit. Approximately a month after the lawsuit was filed, Ever Victory moved for a preliminary injunction barring the sales of the accused products during the pendency of the case.

Judge Oetken stated that to obtain a preliminary injunction, a patentee bears the burden of demonstrating that an injunction is warranted under a four-factor test: (1) there is a reasonable likelihood that the lawsuit will succeed on the merits; (2) the patentee would be irreparably harmed if an injunction is not granted; (3) the balance of hardships tips in the patentee’s favor; and (4) the injunction would have a favorable impact on the public interest.

Judge Oetken denied the patentee‘s motion, finding that neither of the first two factors favored granting injunctive relief.  The Court reasoned that plaintiff had not demonstrated that it was likely to succeed on the merits both because it had not shown that that the accused toy-car racing kits included several elements of the asserted patent claims, and because an image previously posted on the defendant’s website was not sufficient to show that a product including the feature depicted in the image was ever sold by the defendant.  Further, the court ruled that plaintiff had not shown it was likely to be irreparably harmed absent an injunction because while it produced evidence showing that the retail price of the plaintiff’s own products had fallen since the introduction of the defendant’s accused products, plaintiff did not show either that the drop in price was irreversible or that the price drop was attributable to the sale of the defendant’s accused products.

Ever Victory Tech. Ltd. v. SAS Group, Inc., No. 19-CV-486 (JPO) (S.D.N.Y Sept. 11, 2019)