United States District Court, N.D. California, San Francisco Division
September 21, 2005.
LASER DESIGN INTERNATIONAL, LLC and NORWOOD OPERATING COMPANY, Plaintiffs,
BJ CRYSTAL, INC., a California corporation; CRYSTAL MAGIC, INC., a Florida corporation; U.C. LASER, INC., a New Jersey corporation; VITRO LASER GROUP U.S.A., INC., a Nevada corporation; JIMAC MARKETING, INC., a Canadian corporation; HIRSCH GIFT INC., a Connecticut corporation; C. STIEFELMAYER GMBH & Co. KG, a German limited liability partnership; CERION GMBH, a German limited liability company; CRYSTAL CAPTURE INC., a Texas corporation; CRYSTAL CAPTURE INTERNATIONAL, LLC, a Nevada limited liability company; G.W. PARTNERS INTERNATIONAL, INC., a California corporation; HIRSCH GIFT INC., a Texas corporation; VISIONS IN CRYSTAL, INC., a California corporation; VITRO LASER GMBH, a German limited liability company; VITRO INTERNATIONAL, LLC, a Nevada limited liability company; VITRO USA, LLC, a Nevada limited liability company; MERITAGE GRAPHICS, INC., a Nevada corporation; 3DLI, Inc., a Nevada corporation; and DOES 1-20, Defendant. AND RELATED COUNTERCLAIMS.
The opinion of the court was delivered by: JEFFREY WHITE, District Judge
CONSENT JUDGMENT AGAINST HIRSCH GIFT INC.
Thomas J. Friel, Jr., Brian E. Mitchell, and Anthony J. Patek
of Cooley Godward LLP for Plaintiffs, and Kenneth B. Wilson, K.C.
Allan, Sarah Piepmeirer, and Stefani Shanberg for Hirsch Gift
Inc. The Honorable Jeffrey S. White, U.S. District Court Judge,
This case involves a dispute over the alleged infringement of
U.S. Patent No. 5,206,496 C1 by Hirsch Gift Inc. of Texas
("Hirsch") and other defendants through their manufacture and
sale of "Laser Crystal Products" and/or the devices used to make
those products. "Laser Crystal Products" are decorative objects
that contain internal images that have been created inside a
transparent medium (including without limitation a glass cube)
using a laser.
In general terms, plaintiffs Laser Design International, LLC
("LDI") and Norwood Operating Company ("Norwood") (collectively,
"Plaintiffs") allege that the patent-in-suit discloses and claims
an invention entitled "Sub-Surface Marking"; that it teaches how
to make controlled marks within the interior space of transparent
materials such as glass without altering any of the surfaces of
the material using sub-surface marking technology. The
patent-in-suit was originally issued as U.S. Patent No. 5,206,496
on April 27, 1993; it was subsequently reexamined and deemed
patentable with a reexamination certificate (U.S. Patent No.
5,206,496 C1 or the "'496-C1 patent"), which issued on November
Plaintiffs allege that LDI is the owner of and Norwood is the
exclusive licensee (in certain market segments) of the '496-C1
patent. Plaintiffs have filed a consolidated action against
Hirsch and other defendants, alleging that defendants infringe
one or more claims of the '496-C1 patent.
LDI, Norwood, and Hirsch ("the Parties") have now agreed to
settle the controversy between them based on certain terms and
conditions, have agreed to this Consent Judgment, and request
that this Consent Judgment be entered by this Court. II. CONSENT JUDGMENT
Rather than continuing with the litigation, the Parties have
agreed to settle the controversy between them and have consented
to the entry of the following judgment by this Court. However,
should this Court decline to enter this Consent Judgment (in
unmodified form) within 90 days of its submission or should this
Court enter a modified Consent Judgment, Plaintiffs may, at their
election, decide to (1) treat this as a failure of a material
condition of settlement, (2) submit a modified Consent Judgment,
in accordance with the Court's instruction (if any), or (3) waive
this condition (with the effect of keeping the settlement in
A. CONCLUSIONS OF LAW
HIRSCH ADMITS, AND ON THAT BASIS IT IS FOUND, ORDERED, ADJUDGED
AND DECREED that:
1. This is an action for patent infringement arising under the
patent laws of the United States.
2. Jurisdiction of this Court is proper pursuant to
28 U.S.C. §§ 1331 and 1338.
3. This Court has personal jurisdiction over Hirsch, and venue
is proper in this district pursuant to 28 U.S.C. §§ 1400(b) and
4. All claims of the '496-C1 patent are valid and enforceable
in this cause of action or any different causes of action with
respect to Hirsch.
5. Plaintiffs have standing to sue Hirsch for infringement of
the '496-C1 patent.
6. With respect to Hirsch, the patent rights of Plaintiffs are
not barred or limited by laches, waiver, estoppel, inequitable
conduct, patent misuse, or fraud.
7. Hirsch infringes the '496-C1 patent if it directly or
indirectly imports, manufactures, causes to be made, offers for
sale, sells, or uses Laser Crystal Products, or the apparatus
used to make such products, that are covered by the claims of the
'496-C1 patent, or any colorable variation thereof (unless under
rights granted by license).
8. Hirsch has infringed one or more claims of the '496-C1
patent by making, causing to be made, offering to sell, and
selling Laser Crystal Products that are covered by those '496-C1
patent's claims. 9. With respect to Hirsch, Plaintiffs have no adequate remedy
at law and are entitled to an injunction.
10. Any Conclusion of Law, which is deemed to be a Finding of
Fact is hereby, adopted as such.
B. PLAINTIFFS' RELIEF
IT IS FURTHER FOUND, ORDERED, ADJUDGED AND DECREED that:
1. Damages of $10,000.00 are awarded to Norwood as compensation
for Hirsch's past infringement.
2. Unless Hirsch has a valid license to practice the '496-C1
patent, Hirsch (and its proprietors, subsidiaries, affiliates,
successors, assigns, directors, officers, agents, servants,
employees, attorneys, and all persons or entities in concert or
participation with them who receive actual notice of this Order)
is permanently restrained and enjoined during the unexpired term
of the '496-C1 patent from directly, contributory or by
inducement, importing or causing to be imported, making or
causing to be made, offering for sale, selling or causing to be
sold, using or causing to be used in the United States any Laser
Crystal Product or any manufacturing apparatus used to make those
products that infringes any claim of the '496-C1 patent,
literally or under the doctrine of equivalents, including any
colorable imitation thereof.
3. Hirsch has entered into a non-exclusive written license
agreement with LDI and Norwood for the right to practice the
'496-C1 patent under specific terms and conditions. Therefore,
Hirsch is not currently enjoined by this judgment from practicing
the '496-C1 patent in the Market Segments that it is permitted to
operate in under the terms of that agreement for as long as the
license is in effect and is not terminated.
C. TERMINATION OF THIS ACTION
IT IS FURTHER FOUND, ORDERED, ADJUDGED AND DECREED that:
1. Judgment is hereby entered for Plaintiffs and against Hirsch
on the terms described above.
2. This judgment shall finally conclude and dispose of this
litigation as between Plaintiffs and Hirsch. The Parties shall be
entitled to issue preclusion, claim preclusion, res judicata, and collateral estoppel effect in future litigation or
patent office proceedings related to the '496-C1 patent, whether
involving the methods, apparatus, or articles of manufacture
covered by this judgment, or materially different methods,
processes, or articles of manufacture. The Parties and this Court
explicitly intend such issue preclusion, claim preclusion, res
judicata, and collateral estoppel effects to extend to the issues
of claim construction, validity, and enforceability regarding any
claim of the '496-C1 patent whether raised in a court proceeding,
patent office proceeding, reexamination, reissue or other
dispute, even with respect to materially different methods,
apparatus, or articles of manufacture.
3. This Court retains exclusive jurisdiction of this action for
purposes of ensuring compliance with this judgment and
4. No appeal shall be taken by any party from this Judgment,
the right to appeal being expressly waived by all Parties.
5. This Court finds and determines that there is no just reason
for delay of entry of this Judgment and injunction and hereby
directs that this Judgment and injunction be entered.
1. All issues pertaining to damages, costs and attorneys fees
have been settled between Plaintiffs and Hirsch.
2. None of the Parties shall recover any additional damages,
costs, or attorney's fees over or above that which they have
agreed, and each side shall bear its own costs and attorneys
fees. All remaining costs shall be assumed by the side incurring
Judgment is hereby entered on the terms described above. The
Clerk is directed to enter this Consent Judgment forthwith.
IT IS SO ORDERED.
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