United States District Court, E.D. Texas, Sherman Division
TEXAS ADVANCED OPTOELECTRONIC SOLUTIONS, INC.
RENESAS ELECTRONICS AMERICA INC. f/k/a INTERSIL CORPORATION
MEMORANDUM OPINION AND ORDER
L. MAZZANT, UNITED STATES DISTRICT JUDGE.
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.
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).
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).
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
Schelltransferred this case to the Court (Dkt.
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.
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
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)).
TAOS Is Not Entitled to Permanent-Injunctive Relief
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
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.
TAOS will not suffer irreparable harm absent a ...