United States District Court, S.D. West Virginia, Bluefield
A. Faber Senior United States District Judge
Order entered on March 30, 2018, the court granted
plaintiff's motion for a permanent injunction and denied
its motion for enhanced damages, attorney fees, and
prejudgment and post-judgment interest. The reasons for that
Hafco Foundry and Machine Company, Inc. (“Hafco”)
filed the instant action for patent infringement on December
15, 2015. Hafco owns the patent for a Rock Dust Blower, U.S.
Design Patent No. D681, 684S. In 2014, Hafco entered into an
agreement with Pioneer Conveyor, an affiliate of GMS Mine
Repair and Maintenance, Inc. (“GMS”), by which
Pioneer Conveyor was to distribute Hafco rock dust blowers to
mining customers. The distribution agreement between Hafco
and Pioneer Conveyor was terminated in or around early May
2015. According to Hafco, following termination of the
aforementioned distribution agreement, GMS began selling
infringing rock dust blowers within the Southern District of
West Virginia. GMS, on the other hand, contends that its rock
dust blower did not infringe the ‘684 design patent.
of this matter began on May 15, 2017. After a three-day
trial, the jury returned a verdict finding that GMS had
infringed Hafco's `684 patent and that the infringement
was willful. The jury awarded Hafco damages in the amount of
$123, 650.00. On May 18, 2017, the court entered judgment in
plaintiff's favor in the amount of $123, 650.00. The
instant motion followed.
Patent Act gives courts the power to “grant injunctions
in accordance with the principles of equity to prevent the
violation of any right secured by patent, on such terms as
the court deems reasonable.” 35 U.S.C. § 283.
“[A] plaintiff seeking a permanent injunction must
satisfy a four-factor test before a court may grant such
relief. A plaintiff must demonstrate: (1) that it has
suffered an irreparable injury; (2) that remedies available
at law, such as monetary damages, are inadequate to
compensate for that injury; (3) that, considering the balance
of hardships between the plaintiff and defendant, a remedy in
equity is warranted; and (4) that the public interest would
not be disserved by a permanent injunction.”
Monsanto Co. v. Geertson Seed Farms, 561 U.S. 139,
156-57 (2010) (quoting eBay Inc. v.
MercExchange, L.L.C., 547 U.S. 388, 391 (2006)).
“An injunction should issue only where the intervention
of a court of equity ‘is essential in order effectually
to protect property rights against injuries otherwise
irremediable.'” Weinberger v.
Romero-Barcelo, 456 U.S. 305, 312 (1982)(quoting
Cavanaugh v. Looney, 248 U.S. 453, 456 (1919)).
course, the axiomatic remedy for trespass on property rights
is removal of the trespasser.” Presidio Components,
Inc. v. American Technical Ceramics Corp., 702 F.3d
1351, 1362 (Fed. Cir. 2012).
Equity sets forth the four-factor test for removal of a
trespasser from property infringement. eBay, 547
U.S. at 391, 126 S.Ct. 1837. This analysis proceeds with an
eye to the “long tradition of equity practice”
granting “injunctive relief upon a finding of
infringement in the vast majority of patent cases.”
Id. at 395, 126 S.Ct. 1837 (Roberts, C.J.,
concurring). This historical practice of protecting the right
to exclude through injunctive relief is not surprising given
the difficulties of protecting this right solely with
monetary relief. Indeed, a calculating infringer may thus
decide to risk a delayed payment to obtain use of valuable
property without prior negotiation or the owner's
permission. While a patentee is not entitled to an injunction
in every case, “it does not follow that courts should
entirely ignore the fundamental nature of patents as property
rights granting the owner the right to exclude.”
Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142,
1149 (Fed. Cir. 2011).
Id. at 1362-63.
propriety of an injunction in this case will now be
considered under the rubric of the four-factor test set out
argues that it will be irreparably harmed if a permanent
injunction is not granted because it will continue to lose
sales to GMS. The court agrees.
evidence adduced at trial showed that Hafco and GMS are
direct competitors in the can duster market. “Direct
competition in the same market is certainly one factor
suggesting strongly the potential for irreparable harm
without enforcement for the right to exclude.”
Presidio Components, Inc. v. Am. Tech. Ceramics
Corp., 702 F.3d 1351, 1363 (Fed. Cir. 2012); see
also Trebro Mfg., Inc. v. Firefly Equip., LLC, 748 F.3d
1159, 1171 (Fed. Cir. 2014) (“Trebro and FireFly are
direct competitors selling competing products in this market.
Thus, the record strongly shows a probability for irreparable
harm.”); Douglas Dynamics, LLC v. Buyers Prods.
Co., 717 F.3d 1336, 1345 (Fed. Cir. 2013) (“Where
two companies are in competition against one another, the
patentee suffers the harm - often irreparable - of being
forced to compete against products that incorporate and
infringe its own patented inventions.”); I4I Ltd.
P'ship v. Microsoft Corp., 598 F.3d 831, 861 (Fed.
Cir. 2010) (“The district court concluded that i4i was
irreparably injured by Microsoft's infringement, based on
its factual findings that Microsoft and i4i were direct
competitors . . . and that i4i lost market share as a result
of the infringing Word products.”). The potential for