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LASER DESIGN INTERNATIONAL, LLC v. BJ CRYSTAL

United States District Court, N.D. California, San Francisco Division


September 21, 2005.

LASER DESIGN INTERNATIONAL, LLC and NORWOOD OPERATING COMPANY, Plaintiffs,
v.
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, presiding.

  I. BACKGROUND

  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 19, 2002.

  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 force).

  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 1391(c).

  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 injunction.

  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.

  D. COSTS

  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 them.

  Judgment is hereby entered on the terms described above. The Clerk is directed to enter this Consent Judgment forthwith.

  IT IS SO ORDERED.

20050921

© 1992-2005 VersusLaw Inc.



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