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Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America Inc.

United States District Court, E.D. Texas, Sherman Division

October 1, 2019




         Pending before the Court is Plaintiff Texas Advanced Optoelectronic Solutions, Inc.’s (“TAOS”) Renewed Motion for Entry of Permanent Injunction (Dkt. #618). Having considered the motion and the relevant pleadings, the Court finds that the motion should be denied.


         On June 3, 2004, the parties entered into a letter “Confidentiality Agreement” to explore a possible business relationship. Pursuant to the terms of the Confidentiality Agreement, the parties exchanged confidential information; however, the parties were ultimately unable to agree on the terms of a business relationship and discussions regarding acquisition of TAOS by Defendant Renesas Electronics America Inc. f/k/a Intersil Corporation (“Renesas”) ended. The Plaintiff subsequently reached the conclusion that the Defendant unfairly used the Plaintiff’s confidential information to create a line of digital ambient light sensors that compete with the Plaintiff’s ambient light sensors. As such, on November 25, 2008, the Plaintiff filed suit against the Defendant alleging claims for patent infringement, breach of contract, trade secret misappropriation, and tortious interference with prospective business relations (Dkt. #1).

         This case has come a long way since 2008. On October 13, 2009, the Defendant filed its original answer and counterclaims, asserting 14 affirmative defenses and five counterclaims (Dkt. #88). After extensive summary judgment briefing, the case proceeded to a jury trial on February 9, 2015. At the conclusion of the trial on March 6, 2015, the jury found that: (1) the Defendant breached its contract (the Confidentiality Agreement) with the Plaintiff; (2) the Defendant misappropriated the Plaintiff’s trade secrets; (3) the Defendant’s misappropriation of the Plaintiff’s trade secrets resulted from the Defendant’s fraud, malice, or gross negligence; (4) the Defendant did not prove that the Plaintiff must have known or must have been reasonably able to discover that the Defendant had used the Plaintiff’s proprietary information to create competing products before November 25, 2005; (5) the Plaintiff proved that the Defendant fraudulently concealed the facts upon which the Plaintiff’s misappropriation of trade secrets claim was based; (6) the Defendant intentionally interfered with the Plaintiff’s prospective business relations with Apple; (7) the Defendant’s tortious interference was the result of fraud, malice, or gross negligence; (8) the Defendant willfully infringed the ’981 patent; (9) the Defendant did not prove that any of the claims of the ’981 patent were invalid due to obviousness, for failing to satisfy the written description requirement, or for failing to contain a sufficiently full and clear description of how to make and use the full scope of the claimed invention; (10) the Defendant did not prove that the Defendant’s conduct was excused because of laches; and (11) the Defendant did not prove that the Plaintiff had unclean hands (Dkt. #511).

         Final judgment was entered on June 9, 2016 (Dkt. #596). Renesas appealed the final judgment to the United States Court of Appeals for the Federal Circuit on June 10, 2016 (Dkt. #598). The Federal Circuit affirmed in part, reversed in part, and vacated in part the final judgment and remanded the case (Dkt. #614, Attachment 1). On August 9, 2019, Judge Schell[1]transferred this case to the Court (Dkt. #662).

         On August 24, 2018, TAOS filed its Renewed Motion for Entry of Permanent Injunction (Dkt. #618). On November 5, 2018, Renesas filed its response in opposition to the motion (Dkt. #642). On November 12, 2018, TAOS filed its reply; Renesas filed its sur-reply on November 19, 2018 (Dkt. #644; Dkt. #649).


         A party seeking a permanent injunction must satisfy the traditional four-factor test before the Court may grant injunctive relief. E.g., eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006). The party must show:

(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.

Id. The Court’s decision to award or deny permanent-injunctive relief is an act of equitable discretion. Id. (citing Weinberger v. Romero-Barcelo, 456 U.S. 305, 320 (1982)).


         I. TAOS Is Not Entitled to Permanent-Injunctive Relief

         TAOS is not entitled to a permanent injunction as a remedy for Defendant’s willful infringement of its ’981 patent. First, TAOS has not shown that it suffered an irreparable injury. Other than pointing to one lost sale in 2008, TAOS provides no evidence of injury. Not only is a single lost sale in 2008 insufficient to prove that TAOS will suffer irreparable harm without an injunction, but TAOS fails to establish a causal nexus relating the harm to Defendant’s infringement. Second, TAOS has remedies available at law to compensate it for any injury caused by the Defendant’s infringement. TAOS presents no evidence of hard-to-measure harms and has accepted a reasonable royalty for the use of its technology on two occasions, indicating TAOS can be adequately compensated with monetary damages. Finally, TAOS has not shown that the balance of hardships and public interest factors weigh in favor of permanent-injunctive relief.

         A. Irreparable Injury

         TAOS cannot show that it will suffer irreparable injury in the absence of permanent-injunctive relief. In order to show irreparable injury, TAOS must prove that: (1) absent an injunction, it will suffer irreparable harm; and (2) a “causal nexus relates the alleged harm to the alleged infringement”-essentially, proof that the infringement causes the harm. Apple Inc. v. Samsung Elecs. Co., 809 F.3d 633, 639 (Fed. Cir. 2015) (quoting Apple Inc. v. Samsung Elecs. Co., 695 F.3d 1370, 1374 (Fed. Cir. 2012)). TAOS has proved neither.

         i. TAOS will not suffer irreparable harm absent a ...

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