Peng v. The Partnerships and Unincorporated Assocs. Identified on Schedule “A,” No. 21 C 1344, Slip Op. (N.D. Ill. Sep. 14, 2021) (Dow, J.).

Judge Dow converted the previously entered Temporary Restraining Order (TRO) into a Preliminary Injunction (PI) against the challenging defendants in this design patent dispute involving wireless earphone headbands.

As an initial matter, the Court noted that the Supreme Court’s eBay decision removed the presumption of irreparable harm where a plaintiff showed a likelihood of success as to proving patent infringement. But the Court also noted that removal of the presumption did not allow consideration of the patentholder’s right to exclude in determining whether defendant’s alleged infringement caused irreparable harm. Plaintiff showed irreparable harm because defendants’ sales of infringing product was likely to cause consumer confusion with genuine parts and harm plaintiff’s reputation. Plaintiff also raised the issue that because defendants reside in China, any monetary judgments were likely uncollectable. Plaintiff’s six month delay in filing suit and seeking an injunction did not prevent preliminary injunctive relief. During those six months, plaintiff also used Amazon’s patent dispute resolution program. Plaintiff filed this suit only a few months after instituting the Amazon action and sought a TRO and then conversion of the TRO to a PI shortly thereafter.

While defendants’ products did not have every design element of the claimed headband design, the overall look was sufficiently similar to the claimed design that “an ordinary observer could be induced to purchase Defendants’ product believing it to be Plaintiff’s.”

Defendants did not sufficiently prove that their alleged prior art was, in fact, prior art to plaintiff’s design patent. The balance of harm tilted in plaintiff’s favor because it is difficult to quantify the harm to a patentholder in terms of customer confusion over similar products in the marketplace.

The Court, therefore, granted plaintiff a PI as to the challenging defendants.

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