Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. May 22, 2008) (Moran, Sen. J.).*
After a jury held that certain of defendants’ (collectively "eSpeed") products willfuly infringed two of plaintiff Trading Technologies’ (“TT”) futures trading software patents (the Court previously reversed the willfulness finding), the Court entered a permanent injunction preventing future sales of the infringing software — a previous opinion granted summary judgment of noninfringement of eSpeed’s current software and all software except that sold during a six month period shortly after TT’s patents issued. The Court looked at each of the four standard injunction elements, as required by the Supreme Court in eBay Inc. v. MercExchange, LLC.
The Court held that TT would be irreparably harmed by any continued sales of infringing product because TT’s successful business was built around its patented technology and, therefore, direct competitors with infringing products irreparably harmed TT. The Court agreed with eSpeed that general claims of competition were insufficient pursuant to eBay, but the Court held that TT’s direct competition assertions were supported by trial testimony.
Inadequate Remedy at Law
eSpeed argued that TT’s numerous licenses proved that monetary damages could compensate TT, as the eBay district court held after remand. but the Court distinguished eBay. eBay was premised upon a combination of plaintiff MercExchange’s:
- willingness to license;
- choice not to practice the patent;
- failure to seek preliminary injuctive relief; and
- consistent, clear statements that it desired monetary damages.
In contrast, TT manufactured a patented product and only licensed as an alternative to litigation. And the Court acknowledged TT’s concern that providing monetary damages after trial without an injuction would force a compulsory license on TT.
Balance of Hardships
The Court held that TT would be more harmed without an injunction than eSpeed would be harmed by an injunction. eSpeed no longer made or sold the infringing software, so an injunction would cause eSpeed little or no harm. Furthermore, eSpeed manufactured numerous non-infringing products. So, the extent of any harm was further minimized.
eSpeed argued that the public interest weighed against granting injunctions regarding patents in reexamination. But TT’s patents had since been upheld in the reexam. So, the only public interest factor was enforcement of TT’s patent rights.
For these reasons, the Court entered a permanent injunction. Click here to read the Permanent Injunction Order.