On March 30, 2010, Individual inventor, Red Judkins, filed a motion for a permanent injunction, prejudgment interest, attorney’s fees and enhanced damages.  Judkins filed this motion four months after a jury awarded him $154,000 in damages because HT Window Fashions Corp. they believed had willfully infringed one of  Judkins’ patents and would infringe another if it began selling another product.

The Court granted Judkins’ permanent injunction request and prejudgment interest request, but denied his motion for attorney’s fees and enhanced damages.

In determining whether a permanent injunction was warranted, the Court applied a four-factor test:  whether Judkins suffered an irreparable injury; whether legal remedies, such as damages, are inadequate compensation; whether the hardships to Judkins resulting from the infringement are greater than to HT’s; and whether a permanent injunction would result in a public disservice.

In considering these factors, the Court found the permanent injunction warranted, in part because Judkins did prove his reputation would be harmed citing Judkins’ licensing agreement with Nien Made, in which Judkins promised not to license the technology-at-issue to any other third party.  If the permanent junction were not granted, Judkins would be in violation of that agreement, which would cause irreparable harm to his business reputation.

The Court further determined that Judkins had developed long-term relationships with business leaders in the industry, relationships that could not be remedied with money.

As for the final factor, the Court determined that because window blinds are not of “serious importance to the public’s health, welfare, or safety,” a permanent injunction from HT selling infringing product would not cause a public disservice.

The case is interesting because in the landscape of patent infringement litigation, it is becoming more difficult for plaintiffs to obtain permanent injunctions.  Here Judkins, an individual inventor who himself was not commercially practicing the patent invention (although he was licensing the invention), was successful in obtaining a permanent injunction against the defendant's infringing activities. 

The Court discussed all the eBay factors, but seemed to put the most weight on the fact that Judkins had an exclusive licensing agreement for the patent at issue.  Thus, were the Court not to grant the injunction, Judkins would inadvertently be in breach of that exclusive license arrangement.  At least the court did not blindly apply the test to Judkins and decide an injunction inappropriate simply because Judkins did not practice the invention himself.

SOURCE:  Ren Judkins v. HT Window Fashions Corp., No. 07-0251 (W.D. Penn. Mar. 30, 2010) (Memorandum).