United States District Court, S.D. California
COLUMBIA SPORTSWEAR NORTH AMERICA, INC., an Oregon Corporation, Plaintiff,
SEIRUS INNOVATIVE ACCESSORIES, INC., a Utah corporation, Defendant.
R. Boyajian David W. Axelrod Brenna K. Legaard Nicholas F.
Aldrich, Jr. Schwabe, Williamson & Wyatt, P.C. Attorneys
Christopher S. Marchese Seth M. Sproul Michael A. Amon
Garrett K. Sakimae Tucker N. Terhufen Fish & Richardson
P.C. Renée Rothauge Markowitz Herbold P.C.Attorneys
OPINION & ORDER
A. HERNÁNDEZ United States District Judge
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.
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 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 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.”
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
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).
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).
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' ...