United States District Court, N.D. Texas, Dallas Division
UNICORN GLOBAL, INC., HANGZHOU CHIC INTELLIGENT TECHNOLOGY CO., LTD., and SHENZEN UNI-SUN ELECTRONIC CO., LTD., Plaintiffs and Counterdefendants,
GOLABS, INC., d/b/a GOTRAX, WALMART INC., WAL-MART STORES TEXAS, LLC, and WAL-MART.COM USA LLC, Defendants and Counterclaimants.
MEMORANDUM OPINION AND ORDER
C. GODBEY UNITED STATES DISTRICT JUDGE
Memorandum Opinion and Order addresses Defendant Golabs,
Inc.'s ("Golabs") motion for preliminary
injunction . Because Golabs has not established a
likelihood of success on the merits of its tortious
interference counterclaim or shown that Plaintiffs Unicorn
Global, Inc., Hangzhou Chic Intelligent Technology Company,
Ltd., and Shenzen Uni-Sun Electronic Company, Ltd.'s
(collectively, "Plaintiffs") infringement claims
are baseless, the Court denies Golabs's motion.
Origin of the Dispute
parties' litigation arises out of a dispute regarding
utility and design patents for hoverboard products.
Plaintiffs have the rights to three hoverboard patents:
patent numbers 9, 376, 155 ('155 patent); 9, 452, 802
('802 patent); andD737, 723 ('723 patent).
Pltfs.' Resp. Brief Opposing Golab's Mot. Prelim.
Inj. 2-3 . These patents claim a "three-layer
hoverboard" structure that Plaintiffs argue is unique
from prior hoverboard designs. Id. at 3. Golabs
sells several hoverboard models through online retailers,
primarily Amazon. Golab's Brief Support Mot. Prelim. Inj.
2 . These products are manufactured by Golabs's
parent company, to which Plaintiffs licensed the right to
manufacture hoverboards. Pltfs.' Resp. Brief Opposing
Golab's Mot. Prelim. Inj. 5 . Plaintiffs allege that
Golabs's parent company subsequently violated the
licensing restrictions. Id.
March 2019, Plaintiffs filed suit against Golabs, alleging
infringement of their hoverboard patents. Id. at 6.
Plaintiffs also filed claims against Amazon, which it had
previously asked to cease selling the accused products, but
nonsuited those claims after Amazon delisted Golabs's
hoverboards. Id. Golabs filed a counterclaim
alleging tortious interference with its contract with Amazon.
Golabs now seeks an injunction ordering Plaintiffs both to
refrain from filing complaints with Golabs's customers
alleging that Golabs's hoverboards infringe
Plaintiffs' patents and to inform Amazon that
Plaintiffs' retract their notices of infringement and
request that Golabs's products be reinstated.
obtain a preliminary injunction, a movant must show (1) a
substantial likelihood that it will prevail on the merits;
(2) a substantial threat that it will suffer irreparable
injury if the injunction is not granted; (3) that the
threatened injury to it outweighs the threatened harm to the
party it seeks to enjoin; and (4) that granting the
preliminary injunction will not disserve the public interest.
Bluefield Water Ass 'n, Inc. v. City of Starkville,
Miss., 577 F.3d 250, 252-53 (5th Cir. 2009). The party
seeking the injunction bears the burden of proof on all four
elements. Id. at 253. If a party requests a
mandatory injunction, the moving party must show "a
clear entitlement to the relief under the facts and the
law." Justin Indus., Inc. v. Choctaw Sees.,
L.P., 920 F.2d 262, 268 n.7 (5th Cir. 1990) (internal
citation omitted). "Mandatory preliminary relief, which
goes well beyond simply maintaining the status quo pendente
lite, is particularly disfavored." Martinez v.
Mathews, 544 F.2d 1233, 1243 (5th Cir. 1976).
litigant may seek a mandatory injunction ordering a patentee
to refrain from communicating about its patent with third
parties. Patent owners, however, have the "right to
inform potential infringers of a patent and potentially
infringing activity unless the communication is made in bad
faith." GP Indus., Inc. v. Eran Indus., Inc.,
500 F.3d 1369, 1374 (Fed. Cir. 2007); see 35 U.S.C.
§ 287(a). Thus, movants must show that the
patentee's infringement claims are "objectively
baseless." GP Indus., Inc., 500 F.3d at 1374. A
claim is objectively baseless if "no reasonable litigant
could realistically expect success on the merits."
Prof 7 Real Estate Inv'rs, Inc. v. Colum.
Pictures Indus., Inc., 508 U.S. 49, 60 (1993). The
standard is difficult to meet, and the Federal Circuit has
observed "the rarity of an injunction being granted
against communicating with others concerning one's patent
rights." GP Indus., Inc., 500 F.3d at 1373.
Tortious Interference with Contract
Texas law, a party claiming tortious interference with
contract must show "(1) an existing contract subject to
interference; (2) a willful and intentional act of
interference with the contract; (3) that proximately caused
the plaintiffs injury; and (4) caused actual damages or
loss." Prudential Ins. Co. of Am. v. Fin. Review
Servs., Inc., 29 S.W.3d 74, 77 (Tex. 2000). Some early
Texas cases suggest it is possible to tortiously interfere
with contracts even if they could be ended at-will without
breach. See Juliette Fowler Homes, Inc. v. Welch Assocs.,
Inc., 793 S.W.2d 660, 666 (Tex. 1990); Sterner v.
Marathon Oil Co., 767 S.W.2d 686, 689 (Tex. 1989). The
Texas Supreme Court has recently reiterated, however, that
tortious interference with contract requires a breach of
contract. El Paso Healthcare Ltd. v. Murphy, 518
S.W.3d 412, 421 (Tex. 2017). In El Paso Healthcare Ltd.
v. Murphy, the Court did not overrule its earlier cases
but did synthesize prior caselaw that suggested the
"terminable-at-will status of a contract is no defense
to an action for tortious interference with its
performance" by noting those cases "involved claims
for interference with prospective business
relations." Id. at 421 n.6.
The Court Denies Plaintiffs' Motion for Preliminary
obtain a preliminary injunction, Golabs must show it will
likely succeed on the merits of its underlying claim. In this
case, Golabs's claim for tortious interference centers on
Plaintiffs' communications with Amazon alleging
infringement of Plaintiffs' patents. Patentees generally
have a right to communicate about their patents to potential
infringers unless their infringement claims are objectively
baseless. Consequently, to show it will likely succeed on the
merits of its tortious interference claim, Golabs must both
show a likelihood of success in proving the elements of
tortious interference and show that Plaintiffs'
infringement claims are objectively baseless. The Court finds
that Golabs has not met either of these burdens.
Golabs Has Not Shown a Likelihood of Success on Its ...