Injunction Granted to TiVo; Injunction Denied in Favor of Toyota.

TiVo v. EchoStar (E.D.Tex. 2006)

TiVo has been granted an injunction against EchoStar stopping it from installing or selling infringing DVR’s and ordering EchoStar to disable DVR functionality in the majority of its installed customer equipment. In granting the injunction, the most compelling factor appears to be that TiVo and EchoStar compete head to head in the DVR marketplace.

Defendants compete directly with Plaintiff – Defendants market their infringing products to potential DVR customers as an alternative to purchasing Plaintiff’s DVRs. The availability of the infringing products leads to loss of market share for Plaintiff’s products.

The court did not stay the injunction pending appeal. According to the district court, “[w]ithout a stronger showing that the jury’s verdict will be overturned in its entirety on appeal . . . allowing the ongoing infringement is not within the public’s interest.” However, in an emergency appeal, Chief Judge Michel has granted a temporary stay to “preserve the status quo while the court is considering the parties papers.” Briefing on the Stay will be completed by the end of August.

Paice v. Toyota (E.D.Tex. 2006).

One day earlier, the same Judge (Judge David Folsum) denied Paice its injunction against Toyota. Toyota was found to infringe Paice’s patents on hybrid vehicles under the doctrine of equivalents.  Paice, however, does not manufacture or sell any vehicles, but is geared toward licensing.  Because Paice could not show how its licensing activities would be irreparably harmed from the injunction (and because Toyota would certainly be irreparably harmed) the court denied the request for an injunction. In its findings, the Court made the following rulings:

  • A patentee has no presumption of irreparable harm even after the patent is found valid and infringed.
  • The patents relate to only a small portion of the Toyota products — thus an injunction would be quite onerous on Toyota.
  • Plaintiffs have offered to license the technology to Toyota — a demonstration that money is sufficient.

The court did not explicitly assign any weight to the fact that (1) infringement was only under the DOE and (2) infringement was not found to be willful.  There is some precedential weight, however, to the position that a strong showing of infringement should lead to a greater likelihood of a permanent injunction.