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Judge Stark issued an interesting opinion last week, deciding not to grant a permanent injunction. Although these requests are denied more often than not, this particular opinion was interesting because it rested, in part, on the plaintiff's conduct in failing to pursue third-party (alleged) infringers.

When it came time to rule on the permanent injunction issue, the Court had already determined that the parties in AO Smith Corp. v. Bradford White Corp., C.A. No. 18-412-LPS, D.I. 244 (D. Del. July 9, 2021) were direct competitors. AO Smith, D.I. 220 at 13 (D. Del Mar. 31, 2020). The relevant market also had two other substantial players not involved in the suit.

Unfortunately for the plaintiff, it had shown (as part of its damages case) that products manufactured by these third parties also infringed the patent in suit, and thus were not acceptable non-infringing alternatives. See id. at 72-73. However, as of the bench trial in August of last year, they had not yet sued either of these third parties for infringement -- despite being aware of their infringement at least as of the time of expert reports. See A.O. Smith, D.I. 244 at 4. In fact, the Court noted that it was not until almost a year after trial, following a hearing on the injunction and other damages issues in June, that the plaintiff finally sued these two competitors. See A.O. Smith, D.I. 243 at 2 (joint status report).

Citing the Federal Circuit's decision in Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 1151 (Fed. Cir. 2011), Judge stark reasoned that if the "diligent pursuit of infringers other than the defendant weighed in favor of a finding of irreparable injury" then the failure to do so naturally weighed against a finding of irreparable harm, and ultimately the injunction. A.O. Smith, D.I. 244 at 4.

The Court did not specifically address the question of an acceptable time to bring suit after discovering the infringement, but future litigants would be advised to do so ASAP if they hope for a permanent injunction.

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