Makita Corporation et al v. Kastar (U.S.A.) Inc.
Filing
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CONSENT JUDGMENT AND PERMANENT INJUNCTION in favor of Makita Corporation, Makita U.S.A., Inc. against Kastar (U.S.A.) Inc. by Judge S. James Otero. (SEE DOCUMENT FOR SPECIFICS) ( MD JS-6. Case Terminated ) (lc)
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Michael K. Friedland (SBN 157,217)
michael.friedland@knobbe.com
Benjamin A. Katzenellenbogen (SBN 208,527)
ben.katzenellenbogen@knobbe.com
KNOBBE, MARTENS, OLSON & BEAR, LLP
2040 Main Street
Fourteenth Floor
Irvine, CA 92614
Phone: (949) 760-0404
Facsimile: (949) 760-9502
JS-6
April 25, 2017
VC
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Attorneys for Plaintiffs MAKITA U.S.A., INC.
and MAKITA CORPORATION
Jason T. Yu
jyu@swlaw.com
SNELL & WILMER L.L.P.
350 South Grand Avenue Suite 3100
Two California Plaza
Los Angeles, California 90071
Telephone: 213.929.2500
Facsimile: 213.929.2525
Attorneys for Defendant
KASTAR (U.S.A.) INC.
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IN THE UNITED STATES DISTRICT COURT
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FOR THE CENTRAL DISTRICT OF CALIFORNIA
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MAKITA CORPORATION and
MAKITA U.S.A., INC.,
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Plaintiffs,
v.
KASTAR (U.S.A.) INC.,
Defendant.
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Civil Action No.
2:17-cv-01537-SJO-AJW
CONSENT JUDGMENT
AND
PERMANENT INJUNCTION
Honorable S. James Otero
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Plaintiff Makita U.S.A., Inc. and Makita Corporation (“Makita”) and
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Defendant Kastar (USA) Inc. (“Defendant”) consent and agree to the terms and
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conditions of this Consent Judgment and Permanent Injunction.
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THE PARTIES DO NOT DISPUTE THE FOLLOWING:
1.
The Court has personal jurisdiction over each of the parties to this
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action. The Court also has subject matter jurisdiction over this action pursuant
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to 35 U.S.C. §§ 271 and 281, 15 U.S.C. §§ 1116(a), 1121, and 28 U.S.C.
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§§ 1331 and 1338. Venue is proper in this Judicial District pursuant to 28
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U.S.C. §§ 1391(b), 1391(d), and 1400(b).
2.
Plaintiff Makita U.S.A., Inc., is a corporation organized and
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existing under the laws of the State of California and having its principal place
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of business at 14930 Northam Drive, La Mirada, California 90638.
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3.
Plaintiff Makita Corporation is a corporation organized and
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existing under the laws of Japan, having its principal place of business at 3-11-
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8, Sumiyoshi-cho, Anjo, Aichi 446-8502, Japan.
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4.
Defendant Kastar (U.S.A.) Inc. is a company organized and
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existing under the laws of the State of California, having a place of business at
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12981 Ramona Blvd., Units H&I, Baldwin Park, California 91706.
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5.
Plaintiff Makita Corporation is the owner by assignment of all
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right, title, and interest in United States Design Patent No. D516,504, titled
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“Battery Pack.”
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6.
Plaintiff Makita Corporation is the owner by assignment of all
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right, title, and interest in United States Patent No. 6,350,149, titled, “Structure
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of Electrical Terminals for Establishing Electrical Contact Between a Battery
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Pack and an Electrical Device.”
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7.
Defendant has sold, offered for sale, and/or imported into the
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United States batteries that infringe Makita’s intellectual property rights,
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including United States Design Patent No. D516,504, United States Patent
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No. 6,350,149, the BL1830 trademark, and the BL series of trademarks.
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8.
Defendant has represented that its total revenue from all sales of
infringing products was approximately $19,500.00.
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NOW, THEREFORE, IT IS ORDERED, ADJUDGED, AND DECREED,
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AS FOLLOWS:
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A.
Judgment is entered in favor of Makita and against Defendant that
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Defendant infringed United States Design Patent No. D516,504 in violation of
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35 U.S.C. § 271.
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B.
Judgment is entered in favor of Makita and against Defendant that
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Defendant infringed United States Patent No. 6,350,149 in violation of 35
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U.S.C. § 271.
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C.
Judgment is entered in favor of Makita and against Defendant that
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Defendant committed acts of false designation of origin, false advertising, and
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unfair competition with regard to Defendant’s use of Makita’s BL1830
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trademark and BL series of trademarks in violation of 15 U.S.C. 1125(a).
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D.
Within ten days, Defendant shall pay to Makita the amount of
$15,000.00 pursuant to 35 U.S.C. §§ 284 and 289 and 15 U.S.C. § 1117.
E.
Within ten days, Defendant shall provide to Makita either
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(i) evidence that all infringing batteries in Defendant’s possession as of the
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filing date of the Complaint have been tendered to a recycling facility for
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destruction, or (ii) written certification that Defendant did not have possession
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or control of any infringing batteries as of the filing date of the Complaint.
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F.
Defendant’s “BL1830” battery infringed United States Design
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Patent No. D516,504 because an ordinary observer would consider it
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substantially the same as the battery depicted in the figures of United States
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Design Patent No. D516,504, which are set forth below:
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G.
Defendant’s “BL1830” battery infringed at least Claim 1 of United
States Patent No. 6,350,149 because it comprised:
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A structure of electrical terminals for establishing electrical contact
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between a battery pack and an electrical device by attachment of
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the battery pack to the electrical device, the structure comprising,
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a plurality of female terminals provided in the battery
pack, and
a plurality of male terminals provided in the electrical
device and adapted to be coupled to the female terminals,
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wherein each of the female terminals includes at least two
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pairs of elastic plates, each pair of elastic plates being
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capable of holding one of the male terminals therebetween
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when the battery pack is attached to the electrical device, the
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elastic plate pairs of each female terminal being disposed
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along the path of movement of the male terminal when the
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battery pack is attached to the electrical device such that the
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number of elastic plate pairs of each female terminal that
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hold each male terminal therebetween is determined by the
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length of the male terminal along said path of movement.
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H.
Defendant, and its officers, agents, servants, employees, attorneys,
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and other persons in active concert or participation with them, who receive
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actual notice of this injunction by personal service or otherwise, are
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permanently restrained and enjoined from manufacturing, importing, marketing,
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displaying, distributing, offering to sell, and/or selling Defendant’s “BL1830”
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battery, or any batteries that are not colorably different from Defendant’s
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“BL1830” battery, which is depicted below:
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I.
Defendant, and its officers, agents, servants, employees, attorneys,
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and other persons in active concert or participation with them, who receive
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actual notice of this injunction by personal service or otherwise, are
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permanently restrained and enjoined from manufacturing, importing, marketing,
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displaying, distributing, offering to sell, and/or selling any battery using
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Makita’s BL1830 trademark, Makita’s BL series of trademarks, and any other
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trademarks that are confusingly similar to the Makita BL1830 or BL series of
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trademarks;
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J.
This Court shall retain jurisdiction over this matter for all purposes,
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including for the purpose of enforcing the terms and provisions of this Consent
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Judgment and Permanent Injunction.
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K.
The parties agree to submit to the personal jurisdiction of this Court
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and to venue in this Court in connection with this matter for all purposes,
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including for the purpose of enforcing the terms and provisions of this Consent
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Judgment and Permanent Injunction.
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IT IS SO ORDERED.
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Dated: April 26, 2017
Hon. S. James Otero
United States District Judge
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APPROVED AS TO FORM:
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KNOBBE, MARTENS, OLSON & BEAR, LLP
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Dated: April 20, 2017
By:
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Michael K. Friedland
Benjamin A. Katzenellenbogen
Attorneys for Plaintiffs MAKITA U.S.A., INC.
and MAKITA CORPORATION
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SNELL & WILMER L.L.P.
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Dated:
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By:
Jason T. Yu
Attorneys for Defendant Kastar (U.S.A.) Inc.
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