Makita Corporation et al v. Kastar (U.S.A.) Inc.

Filing 16

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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1 2 3 4 5 6 7 8 9 10 11 12 13 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 P 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. 14 15 16 IN THE UNITED STATES DISTRICT COURT 17 FOR THE CENTRAL DISTRICT OF CALIFORNIA 18 19 20 MAKITA CORPORATION and MAKITA U.S.A., INC., 21 22 23 24 25 26 27 28 Plaintiffs, v. KASTAR (U.S.A.) INC., Defendant. ) ) ) ) ) ) ) ) ) ) ) ) ) ) Civil Action No. 2:17-cv-01537-SJO-AJW CONSENT JUDGMENT AND PERMANENT INJUNCTION Honorable S. James Otero 1 Plaintiff Makita U.S.A., Inc. and Makita Corporation (“Makita”) and 2 Defendant Kastar (USA) Inc. (“Defendant”) consent and agree to the terms and 3 conditions of this Consent Judgment and Permanent Injunction. 4 5 6 THE PARTIES DO NOT DISPUTE THE FOLLOWING: 1. The Court has personal jurisdiction over each of the parties to this 7 action. The Court also has subject matter jurisdiction over this action pursuant 8 to 35 U.S.C. §§ 271 and 281, 15 U.S.C. §§ 1116(a), 1121, and 28 U.S.C. 9 §§ 1331 and 1338. Venue is proper in this Judicial District pursuant to 28 10 11 U.S.C. §§ 1391(b), 1391(d), and 1400(b). 2. Plaintiff Makita U.S.A., Inc., is a corporation organized and 12 existing under the laws of the State of California and having its principal place 13 of business at 14930 Northam Drive, La Mirada, California 90638. 14 3. Plaintiff Makita Corporation is a corporation organized and 15 existing under the laws of Japan, having its principal place of business at 3-11- 16 8, Sumiyoshi-cho, Anjo, Aichi 446-8502, Japan. 17 4. Defendant Kastar (U.S.A.) Inc. is a company organized and 18 existing under the laws of the State of California, having a place of business at 19 12981 Ramona Blvd., Units H&I, Baldwin Park, California 91706. 20 5. Plaintiff Makita Corporation is the owner by assignment of all 21 right, title, and interest in United States Design Patent No. D516,504, titled 22 “Battery Pack.” 23 6. Plaintiff Makita Corporation is the owner by assignment of all 24 right, title, and interest in United States Patent No. 6,350,149, titled, “Structure 25 of Electrical Terminals for Establishing Electrical Contact Between a Battery 26 Pack and an Electrical Device.” 27 7. Defendant has sold, offered for sale, and/or imported into the 28 -1- 1 United States batteries that infringe Makita’s intellectual property rights, 2 including United States Design Patent No. D516,504, United States Patent 3 No. 6,350,149, the BL1830 trademark, and the BL series of trademarks. 4 5 8. Defendant has represented that its total revenue from all sales of infringing products was approximately $19,500.00. 6 7 NOW, THEREFORE, IT IS ORDERED, ADJUDGED, AND DECREED, 8 AS FOLLOWS: 9 A. Judgment is entered in favor of Makita and against Defendant that 10 Defendant infringed United States Design Patent No. D516,504 in violation of 11 35 U.S.C. § 271. 12 B. Judgment is entered in favor of Makita and against Defendant that 13 Defendant infringed United States Patent No. 6,350,149 in violation of 35 14 U.S.C. § 271. 15 C. Judgment is entered in favor of Makita and against Defendant that 16 Defendant committed acts of false designation of origin, false advertising, and 17 unfair competition with regard to Defendant’s use of Makita’s BL1830 18 trademark and BL series of trademarks in violation of 15 U.S.C. 1125(a). 19 20 21 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 22 (i) evidence that all infringing batteries in Defendant’s possession as of the 23 filing date of the Complaint have been tendered to a recycling facility for 24 destruction, or (ii) written certification that Defendant did not have possession 25 or control of any infringing batteries as of the filing date of the Complaint. 26 27 28 -2- 1 F. Defendant’s “BL1830” battery infringed United States Design 2 Patent No. D516,504 because an ordinary observer would consider it 3 substantially the same as the battery depicted in the figures of United States 4 Design Patent No. D516,504, which are set forth below: 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -3- 1 2 G. Defendant’s “BL1830” battery infringed at least Claim 1 of United States Patent No. 6,350,149 because it comprised: 3 A structure of electrical terminals for establishing electrical contact 4 between a battery pack and an electrical device by attachment of 5 the battery pack to the electrical device, the structure comprising, 6 7 8 9 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, 10 wherein each of the female terminals includes at least two 11 pairs of elastic plates, each pair of elastic plates being 12 capable of holding one of the male terminals therebetween 13 when the battery pack is attached to the electrical device, the 14 elastic plate pairs of each female terminal being disposed 15 along the path of movement of the male terminal when the 16 battery pack is attached to the electrical device such that the 17 number of elastic plate pairs of each female terminal that 18 hold each male terminal therebetween is determined by the 19 length of the male terminal along said path of movement. 20 21 22 23 24 25 26 27 28 -4- 1 H. Defendant, and its officers, agents, servants, employees, attorneys, 2 and other persons in active concert or participation with them, who receive 3 actual notice of this injunction by personal service or otherwise, are 4 permanently restrained and enjoined from manufacturing, importing, marketing, 5 displaying, distributing, offering to sell, and/or selling Defendant’s “BL1830” 6 battery, or any batteries that are not colorably different from Defendant’s 7 “BL1830” battery, which is depicted below: 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -5- 1 I. Defendant, and its officers, agents, servants, employees, attorneys, 2 and other persons in active concert or participation with them, who receive 3 actual notice of this injunction by personal service or otherwise, are 4 permanently restrained and enjoined from manufacturing, importing, marketing, 5 displaying, distributing, offering to sell, and/or selling any battery using 6 Makita’s BL1830 trademark, Makita’s BL series of trademarks, and any other 7 trademarks that are confusingly similar to the Makita BL1830 or BL series of 8 trademarks; 9 J. This Court shall retain jurisdiction over this matter for all purposes, 10 including for the purpose of enforcing the terms and provisions of this Consent 11 Judgment and Permanent Injunction. 12 K. The parties agree to submit to the personal jurisdiction of this Court 13 and to venue in this Court in connection with this matter for all purposes, 14 including for the purpose of enforcing the terms and provisions of this Consent 15 Judgment and Permanent Injunction. 16 17 IT IS SO ORDERED. 18 19 20 Dated: April 26, 2017 Hon. S. James Otero United States District Judge 21 22 23 24 25 26 27 28 -6- 1 APPROVED AS TO FORM: 2 KNOBBE, MARTENS, OLSON & BEAR, LLP 3 4 5 Dated: April 20, 2017 By: 6 Michael K. Friedland Benjamin A. Katzenellenbogen Attorneys for Plaintiffs MAKITA U.S.A., INC. and MAKITA CORPORATION 7 8 9 SNELL & WILMER L.L.P. 10 11 12 Dated: 13 By: Jason T. Yu Attorneys for Defendant Kastar (U.S.A.) Inc. 14 15 25594465_9 16 17 18 19 20 21 22 23 24 25 26 27 28 -7-

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