Varex Imaging Corp. v. Richardson Elecs., Ltd., No. 18 C 6911, Slip Op. (N.D. Ill. Sep. 30, 2019) (Blakey, J.).
Judge Blakey denied defendant Richardson Electronics’ motion for preliminary injunction in this dispute involving x-ray tubes.
Varex claimed that Richardson Electronics sale of refurbished x-ray tubes infringed its patents and irreparably harmed Varex. As an initial matter, the Court noted that both parties claimed claim construction was unnecessary and ignored the Court’s request to decide the liability issues on a complete evidentiary record. Instead, the Court was left with a conflicting record that prevented the Court from making a clear assessment of likelihood of infringement or validity.
But that was secondary because Varex was unable to show irreparable harm. Varex has an exclusive contract to sell the x-ray tubes at issue to Toshiba / Canon. But Richardson did not sell to Toshiba / Canon. As a result, the parties were not competitors. And for the same reason, Varex could not show lost sales to Richardson because Richardson did not sell to Varex’s customer. Additionally, Varex claimed that Richardson sold in the refurbished parts market where Varex only sold original parts. The Court noted that it would have to reconsider its decision if Varex conceded there was a market for refurbished x-ray tubes.
Varex’s alleged lost reputation was not sufficient to show irreparable harm because Varex did not explain how its innovation reputation could be harmed by Richardson’s presence in a separate market. Similarly, Varex was not irreparably harm because its patent was expiring in a few years and its ability to exclude others was nearing an end.
Finally, in a prior motion, Richardson raised a substantial question about whether Varex’s patent rights were exhausted as to Richardson product.