How a baby goods maker won a ‘rare’ US injunction

Baby goods manufacturer Wonderland Group—the designer and manufacturer of Graco, Nuna and Joie child car seats—has managed an unusual feat by securing a US injunction against a competitor.

The development comes after a Delaware jury found in January that Ohio-based Evenflo had infringed a trio of patents owned by the Switzerland-based baby goods manufacturer.

Earlier this month, the US Court of Appeals for the Federal Circuit issued an order permanently barring Evenflo from selling its signature car seats—the EveryKid, EveryFit and All4One car seats—in the US.

This is a rare occurrence: there have only been a handful of permanent injunctions granted in non-pharma patent cases over the past five years.

Shamita Etienne-Cummings, a partner at Allen & Overy (A&O) who helped represent Wonderland, sat down with WIPR to explore the case and the strategies that led to her legal team’s success.

WIPR: Can you tell us about this case’s background?

Etienne-Cummings: Wonderland and its longtime go-to market partner, Graco, directly compete with Evenflo in the market for children’s convertible car seats. Indeed, their competing products are often presented side-by-side by retailers.

Wonderland’s continual investment in innovative product designs is reflected in its patent, US number 7,625,043, which resulted from Wonderland and its affiliates’ design and development of the Graco Nautilus convertible car seat.

These innovative technologies allowed caregivers to adjust the headrest and harness in a car seat without displacing a child, store the harness when it was no longer needed, and convert a car seat through every stage of the child's growth. The inventions revolutionised the car seat industry and set Graco up as the market leader.

How did the dispute emerge?

For a number of years, Evenflo infringed multiple Wonderland patents that covered technology incorporated in almost every part of Graco’s car seats.

Evenflo attempted to edge Wonderland and Graco out of the convertible car seat market by copying Wonderland’s technology to make a cheaper car seat using less durable materials.

The ’043 patent covers a car seat with a seat back that can be detached from the booster, while still maintaining the structural integrity essential to prevent the car seat from collapsing in the event of a crash.

To compete in this ‘backless booster’ product category, Evenflo made, offered, and sold several product lines that infringe the ’043 patent, and continued to do so even after a jury found that its products infringe the ’043 patent.

Wonderland and the A&O team understood that only a permanent injunction could protect the critical technology. However, injunctions are rare and we had an uphill battle.

How did the legal team achieve success?

Wonderland systematically filed a complaint after each time Evenflo released an infringing car seat. Although Wonderland was unsuccessful in obtaining injunctive relief after winning its first trial, Wonderland continued to a second trial.

The A&O team then carefully built a record to include testimony and evidence demonstrating how Evenflo’s infringement has, and continues to, irreparably harm Wonderland in a product category that Wonderland created.

Following the jury verdict in Wonderland’s favour, the A&O team moved for the injunction in post-trial briefing, leveraging the ample testimony evidence developed at trial.

After an oral argument, the district court granted Wonderland’s motion for injunctive relief, finding that Evenflo sealed its own fate by deciding to “enter the current one-year product cycle knowing that judgment had been entered finding that the accused products infringed Wonderland’s patents”.

The court further found that “[a]llowing Evenflo to use [its] business decision, undertaken with knowledge of the risks, as an argument that the court should subvert Wonderland’s property rights, would not serve the public interest”.

What happened next?

Evenflo did not accept the court’s admonition or the mounting evidence against it and continued to circumvent the injunction. Evenflo first asked the district court to stay the injunction for over a year, with a belatedly declared effort to redesign its infringing products.

Wonderland opposed Evenflo’s motion, and the district court denied the stay. Undeterred, Evenflo then immediately sought a stay from the US Court of Appeals for the Federal Circuit via an emergency motion.

The A&O team once again defended Wonderland’s injunction in an emergency response. The appellate court did temporarily stay the injunction while it considered Evenflo’s emergency motion, but it ultimately agreed that the injunction should be allowed to go into effect for the key Wonderland patent asserted at trial.

This means that Evenflo will no longer be able to sell seven of its car seats—three of which were its best-selling car seats: the EveryKid, EveryFit and All4One seats—because all the car seats infringe Wonderland’s patent and unfairly compete in a product category that Wonderland created.

With the district court’s permanent injunction now allowed to take effect, Evenflo’s infringement will cease and Wonderland will no longer be placed in the unfair position of competing with its own patented inventions.