United States District Court, N.D. California
ORDER DENYING DEFENDANT'S MOTION FOR RELIEF PURSUANT TO FED. R. CIV. P. 60(b); ORDERING LIMITED DISCOVERY REGARDING PLAINTIFF'S MOTION FOR ORDER TO SHOW CAUSE WHY DEFENDANT SHOULD NOT BE HELD IN CONTEMPT Re: Dkt. Nos. 70, 73
WILLIAM H. ORRICK, District Judge.
On March 28, 2014, I granted plaintiff Blackberry Limited's motion for a preliminary injunction barring defendant Typo Products LLC from selling its add-on keyboard for the iPhone which, Blackberry alleges, violates Blackberry's patents. The parties now seek ironically divergent action on the preliminary injunction: Typo asks for relief from the preliminary injunction under Federal Rule of Civil Procedure 60(b) because it has introduced a new keyboard which, it contends, does not infringe. In contrast, Blackberry seeks an order to show cause why Typo should not be held in contempt for violating the preliminary injunction by selling and distributing the enjoined keyboard.
Typo's motion is DENIED because its introduction of a new keyboard is not grounds for lifting the preliminary injunction. The preliminary injunction remains in effect. Blackberry's motion is GRANTED IN PART. Typo has violated the preliminary injunction by providing replacement keyboards under its warranty program. Blackberry has raised significant questions suggesting that Typo's sales to foreign retailers after the injunction went into effect and SMI Investments's sales to consumers after the injunction went into effect, also violated the preliminary injunction. Blackberry is authorized to conduct additional discovery to determine whether Typo has in fact violated the preliminary injunction on these grounds and, if so, the extent of the violation. Blackberry's request for an order to show cause is continued until the results of this discovery can be presented to me.
The preliminary injunction which I issued provided that:
Upon the posting of a bond by Blackberry, Typo Products LLC and its officers, agents, affiliates, employees, and attorneys, and all those persons acting or attempting to act in concert or participation with them, ARE ENJOINED FROM:
a. making, using, offering to sell, or selling within the United States, or importing into the United States, or marketing, promoting, or distributing Typo Products's Typo Keyboard Case, which is depicted in BlackBerry's moving papers, and any product that is no more than colorably different from these specified products and embodies any design contained in U.S. Design Patent No. D685, 775; and
b. making, using, offering to sell, or selling within the United States, or importing into the United States, or marketing, promoting, or distributing Typo Products's Typo Keyboard Case, and any product that is no more than colorably different from the specified products and infringes U.S. Patent No. 7, 629, 964.
Dkt. No. 39 at 24. The preliminary injunction took effect when Blackberry posted the required bond on April 15, 2014. See Dkt. No. 55.
On June 11, 2014, Typo filed a motion for relief from the preliminary injunction, ostensibly pursuant to Federal Rule of Civil Procedure 60(b). Dkt. No. 70. Typo argues that relief is appropriate because it has developed a new non-infringing keyboard.
On July 23, 2014, Blackberry filed a motion for an order to show cause why Typo should not be held in contempt of the preliminary injunction order. Dkt. No. 73. Blackberry alleges that Typo has continued to sell and distribute the enjoined Typo keyboard.
I. TYPO'S MOTION FOR RELIEF FROM THE PRELIMINARY INJUNCTION PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 60(b)
Typo contends that it has developed a non-infringing design for its keyboard. It moves for relief from the preliminary injunction "pursuant to Rule 60(b)(6) to permit Typo to sell its new Typo keyboard." Dkt. No. 70 at 4. Blackberry opposes the motion. Dkt. No. 71. Typo did not file a reply brief.
Typo's motion is DENIED. Federal Rule of Civil Procedure 60(b)(6) provides that a court may relieve a party from an order for "any other reason that justifies relief." Fed.R.Civ.P. 60(b)(6). Typo's redesign of its keyboard does not justify relief from the preliminary injunction. The preliminary injunction covers Typo's keyboard as it existed at the time "and any product that is no more than colorably different" from that keyboard. Dkt. No. 39 at 24. Typo has presented no arguments that the order was erroneous or should otherwise be vacated. To the extent that Typo has designed a new keyboard which does not infringe the patents asserted by Blackberry, that new keyboard is not subject to the ...