Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3446144 (N.D. Ill. Nov. 29, 2006) (St. Eve, J.).*

In this opinion, Judge St. Eve issued what I believe is the first permanent injunction in the Northern District pursuant to the "new" Supreme Court standard set forth in eBay Inc. v. MercExchange, L.L.C., __ U.S. __, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006).  The Court found irreparable harm, satisfying the first prong of the injunction standard, based on the possibility of continuing sales (although defendant stated that it had stopped producing and selling the infringing product), harm to plaintiff’s reputation as an innovator in the relevant market and plaintiff’s loss of market share. 

The Court held that monetary damages were not adequate to compensate for plaintiff’s harmed reputation and lost market share, satisfying the second prong of the injunction standard.  Because defendant stated it had stopped producing and selling the infringing products, the Court held that the balance of hardship favored plaintiff, satisfying the third prong of the injunction standard.  And finally, because public policy favors enforcing patents, the Court held that the public interest was not disserved by a permanent injunction, meeting the final prong of the injunction standard.

Additionally, the Court refused to add defendant’s new product to the permanent injunction because evidence in the record indicated that defendant had made a good-faith effort to modify the new product to avoid the plaintiff’s claims.  The Court noted that the issue was best resolved by the case plaintiff had already filed in the Northern District, before another judge, claiming infringement of defendant’s new product.

* This case is a bit out of order, but I could not resist getting it posted quickly.  I currently have a minor backlog (for reasons which I hope to explain soon), which I will clear out quickly.  Also, you can see previous posts on this case here and here.