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
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 ...