Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories

Filing 397

ORDER Granting #393 Columbia's Motion for TRO. Additionally, the Court dispenses with the filing of a bond, finding that the issuance of a TRO will not harm Seirus. The Court will schedule a hearing with the parties regarding the issuance of a preliminary injunction. Signed by Judge Marco A. Hernandez on 11/16/2017. (jcj)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF CALIFORNIA

COLUMBIA SPORTSWEAR NORTH
AMERICA, INC., an Oregon Corporation,

No. 3:17-cv-01781-HZ
OPINION & ORDER

Plaintiff,
v.
SEIRUS INNOVATIVE ACCESSORIES,
INC., a Utah corporation,
Defendant.
David R. Boyajian
David W. Axelrod
Brenna K. Legaard
Nicholas F. Aldrich, Jr.
Schwabe, Williamson & Wyatt, P.C.
1211 SW 5th Ave., Suite 1900
Portland, Oregon 97204
Attorneys for Plaintiff
//

1- OPINION & ORDER

Christopher S. Marchese
Seth M. Sproul
Michael A. Amon
Garrett K. Sakimae
Tucker N. Terhufen
Fish & Richardson P.C.
12390 El Camino Real
San Diego, California 92130
Renée Rothauge
Markowitz Herbold P.C.
1211 SW Fifth Ave., Suite 3000
Portland, Oregon 97204
Attorneys for Defendant

HERNÁNDEZ, District Judge:
Before the Court is Columbia Sportswear North America, Inc.’s (“Columbia”) Motion for
a Temporary Restraining Order (“TRO”). Columbia seeks a TRO enjoining Seirus Innovative
Accessories, Inc. (“Seirus”), from initiating patent reexamination proceedings with the United
States Patent and Trademark Office (“PTO”) challenging the validity of Columbia’s Design
Patent, D657,093 (“Design Patent”). Because Columbia’s motion has satisfied the four
traditional factors warranting a TRO, the motion is GRANTED.
BACKGROUND
Columbia’s Design Patent has been at issue in this case for nearly three years. Seirus
initially sought declaratory judgment of invalidity on the Design Patent. The parties ultimately
filed a joint motion for judgment that the Design Patent was valid, dismissing Seirus’s invalidity
challenges with prejudice. See Joint Mot. for J. Re Design Patent, ECF 79; J. of Validity of
Design Patent Pursuant to FRCP 54(b), ECF 81. The Court granted summary judgment that
Seirus’s Heatwave products infringed the Design Patent. See Op. & Order, Aug. 10, 2016, ECF

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105. After a two-week trial, a jury unanimously determined that Seirus was liable to Columbia
for $3,018,175 in profits from its infringement of the Design Patent. See Jury Verdict Form, ECF
377. Now, Columbia has filed its TRO, claiming that Seirus plans to initiate a reexamination
proceeding with the PTO to challenge the validity of the Design Patent. See Pl.’s Mem. in
Support of TRO, ECF 393; Aldrich Decl. Exs. A & B, ECF 395.
STANDARD
The standard for a TRO is “essentially identical” to the standard for a preliminary
injunction. Chandler v. Williams, No. CV 08-962-ST, 2010 WL 3394675, at *1 (D. Or. Aug. 26,
2010) (citing Stuhlbarg Int'l Sales Co, v. John D. Brushy & Co., 240 F.3d 832, 839 n. 7 (9th Cir.
2001)); see also Daritech, Inc. v. Ward, No. CV–11-570–BR, 2011 WL 2150137, at * 1 (D. Or.
May 26, 2011) (applying preliminary injunction standard to motion for TRO).
A plaintiff seeking a preliminary injunction must establish that he
is likely to succeed on the merits, that he is likely to suffer
irreparable harm in the absence of preliminary relief, that the
balance of equities tips in his favor, and that an injunction is in the
public interest.
Am. Trucking Ass’ns Inc. v. City of L. A., 559 F.3d 1046, 1052 (9th Cir. 2009) (quoting Winter v.
Nat. Res. Defense Council, Inc., 555 U.S. 7, 21 (2008)). Additionally, under Rule 65(b), a TRO
may issue without notice to the opposing party or its attorney, only if the movant shows (1)
through “specific facts in an affidavit or a verified complaint” that “immediate and irreparable
injury, loss, or damage will result to the movant before the adverse party can be heard in
opposition[,]” and (2) that “the movant's attorney certifies in writing any efforts made to give
notice and the reasons why it should not be required.” Fed. R. Civ. P. 65(b)(1).
Finally, a TRO may issue only if the movant “gives security in an amount that the court
considers proper to pay the costs and damages sustained by any party found to have been

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wrongfully enjoined or restrained.” Fed. R. Civ. P. 65(c). However, while the rule’s language
indicates that security is mandatory, the Ninth Circuit has held that “Rule 65(c) invests the
district court with discretion as to the amount of security required, if any.” Johnson v. Couturier,
572 F.3d 1067, 1085 (9th Cir. 2009) (internal quotation marks omitted). The court “may dispense
with the filing of a bond when it concludes there is no realistic likelihood of harm to the
defendant from enjoining his or her conduct.” Id. (internal quotation marks omitted).
DISCUSSION
Columbia moves for a TRO on the ground that Seirus’s plan to initiate reexamination
proceedings with the PTO is designed solely to avoid the jury’s verdict in this case. Columbia
claims that Seirus is bound by its prior stipulation and the Court’s binding judgment of validity.
The following rulings are made for TRO purposes only. As a preliminary matter, the Court finds
that Columbia has met the requirements of Rule 65(b).
First, Columbia has demonstrated that it is likely to succeed on the merits. The parties’
consent judgment on the Design Patent’s validity is binding and likely precludes Seirus from
initiating proceedings with the PTO. See Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362, 1369 (Fed.
Cir. 2001) (recognizing that the parties’ stipulation of validity gave rise to res judicata, barring
subsequent challenges to patent validity).
Second, as to the likelihood of suffering irreparable harm, allowing Seirus to collaterally
attack the Design Patent at this very late juncture in litigation would undoubtedly cause
Columbia undue hardship. A reexamination of the Design Patent could potentially result in its
invalidation, which would moot Columbia’s fully-litigated infringement claims. See Fusion
Specialties, Inc. v. China Network Leader, Inc., No. 12-cv-00009-CMA-KMT, 2012 WL
3289077, *6 (D. Colo. Aug. 11, 2012) (recognizing that it was highly likely that reexamination

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of the patent at issue would leave the plaintiff “without a valid infringement claim or a
significantly modified one”).
Third, the balance of hardships weighs in Columbia’s favor. Seirus will not be harmed by
complying with its own stipulation of validity to which the Court has already ruled. Columbia,
by contrast, faces the burden of litigating the validity of the Design Patent and likely delay in
collecting the jury’s award from this case.
Lastly, the Court finds that the public’s interest in this matter lies with Columbia. The
public interest is served by enforcing the parties’ stipulation and protecting the validity of the
Court’s judgment. It is well established that the public’s interest is served by enforcing
settlement agreements. See Flex-Foot, 283 F.3d at 1369 (recognizing that the public’s interest in
upholding settlement of litigation is “more strongly favored by law” than the public policy
favoring challenges to validity).
On balance, a weighing of the factors discussed above warrants the issuance of a TRO.
CONCLUSION
Columbia’s Motion for a TRO [393] is GRANTED. Additionally, the Court dispenses
with the filing of a bond, finding that the issuance of a TRO will not harm Seirus. The Court will
schedule a hearing with the parties regarding the issuance of a preliminary injunction.

Dated this

day of ______________________, 2017.

MARCO A. HERNÁNDEZ
United States District Judge

5- OPINION & ORDER