Patent Lawyer Blog
A federal district court in Texas has permanently enjoined a defendant from selling its accused products after the defendant told the jury it had voluntarily withdrawn those products from the market, received a modest damages award with no willfulness finding, and then announced it would resume selling the products anyway.
In Barco, Inc. v. Yealink (USA) Network Technology Co., Ltd., the Court granted Barco’s motion for a permanent injunction, calling Yealink’s conduct a “bait-and-switch” and warning that denying the injunction “could be viewed as sanctioning Yealink’s gamesmanship, which would undermine the public’s interest in enforcing patent rights.”
Barco sued Yealink in November 2023 on six patents covering wireless presentation technology. Before trial, Yealink conceded direct and indirect infringement. The case was tried in November 2025, and the jury found that Yealink did not induce its customers to infringe after April 25, 2024, and did not willfully infringe. The jury awarded Barco a lump sum royalty of $907,360 for Yealink’s admitted infringement from May 17, 2023, to April 25, 2024.
The damages period was no accident. Before trial, Yealink represented, in a joint trial exhibit, that it planned to “no longer sell WPP20/WPP30 products as standalone devices or in combination with corresponding video conferencing systems in the United States market.” The verdict form reflected that position, asking the jury to award damages only through April 25, 2024. Yealink’s counsel leaned on the withdrawal in closing, arguing that Yealink “removed voluntarily and stopped selling the products from the U.S. market” and that “[t]he dongle is just a small part to our whole videoconference solution.”
After trial, Yealink changed course. It submitted a declaration stating that “now that the trial has concluded and the jury has decided that Yealink should pay Barco $907,360 for its past infringement, Yealink has decided to reintroduce its WPP30 in the United States, and will resume selling its WPP30 dongle in 2026.”
That reversal drove the Court’s analysis of all four eBay factors. On irreparable harm, the Court found that Barco and Yealink are the two competitors practicing the patented technology and that Yealink’s announced return to the market “strongly counsels in favor of a finding of irreparable harm.” The Court rejected Yealink’s argument that Barco’s license to Crestron and its 2023 license offer to Yealink defeated irreparable harm, quoting the Federal Circuit’s holding that “[a] plaintiff’s past willingness to license its patent is not sufficient per se to establish a lack of irreparable harm.” Barco had licensed only Crestron, under terms it negotiated before Crestron launched its product, and the Court noted that “[a]dding a new competitor to the market may create an irreparable harm that the prior licenses did not.”
On the balance of hardships, the Court was blunt about the trial strategy. It observed that “[t]he manner in which Yealink positioned itself at trial—as having withdrawn from the market—seems likely to have impacted the jury’s finding of Yealink’s liability and damages,” and that the jury then found no willfulness and awarded “a fraction of Barco’s damages ask.” The Court explained that “[t]o deny Barco’s requested injunction would indirectly reward Yealink’s bait-and-switch tactic, and would cause material hardship for Barco.” In a footnote, the Court spelled out the label. The “bait” was the representation that Yealink had stopped making and selling the infringing dongle, and the “switch” came when the damages award made renewed sales economically attractive. The Court added that it was “equally convinced that Yealink would not have reversed the position it presented at trial” if the damages award “had not made such economically inviting,” and it quoted a 1904 Second Circuit decision for the proposition that “[i]f the defendant be honest in his protestations an injunction will do him no harm; if he be dishonest the court should place a strong hand upon him in limine.”
The Court also noted that an injunction would have been proper even if Yealink had kept its word and stayed out of the market, quoting the Federal Circuit’s guidance that “[t]he fact that the defendant has stopped infringing is generally not a reason for denying an injunction against future infringement unless the evidence is very persuasive that further infringement will not take place.”
The order contains one unusual feature. Although Rule 65(c) requires security only for temporary restraining orders and preliminary injunctions, the Court ordered Barco, the prevailing patent owner, to post a bond of $907,360, the same amount as the jury’s award. The asserted patents are subject to post-grant review proceedings at the USPTO, and the Court reasoned that a final and non-appealable finding of unenforceability would mean Yealink had been “wrongfully enjoined or restrained.” The bond amount matched the jury’s valuation of about one year of Yealink’s infringing sales.
The lesson here cuts both ways. A defendant that tells the jury it has left the market to blunt willfulness and damages should expect the court to hold it to that story, and a post-verdict decision to resume sales because the royalty turned out to be cheap can hand the patent owner the injunction it might not otherwise have won. For patent owners, the case also shows that a limited licensing history does not foreclose injunctive relief where the parties compete and the infringer plans to keep selling.
Barco, Inc. and Barco NV v. Yealink (USA) Network Technology Co., Ltd. and Yealink Network Technology Co., Ltd., Case No. 2:23-cv-00521-JRG-RSP (E.D. Tex. Aug. 27, 2026)
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels & Mitchell LLP. For more information about this case, contact Stan Gibson at SGibson@Jeffer.com.