Edge Systems LLC et al v. Image MicroDerm Inc.

Filing 81

FINAL CONSENT JUDGMENT OF WILLFUL INFRINGEMENT AND PERMANENT INJUNCTION by Judge Philip S. Gutierrez: IT IS SO ORDERED AND DECREED, AND FINAL JUDGMENT IS HEREBY ENTERED (see document for further details) (MD JS-6. Case Terminated) (bm)

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Paul Stewart (SBN 153,467)
[e-mail]
Ali S. Razai (SBN 246,922)
[e-mail]
KNOBBE, MARTENS, OLSON & BEAR, LLP
2040 Main Street, Fourteenth Floor
Irvine, CA 92614
Telephone: [phone]
Facsimile: [phone]

E-FILED 5/23/19
JS-6

Attorneys for Plaintiffs EDGE SYSTEMS LLC and
AXIA MEDSCIENCES, LLC
Marc E. Hankin (SBN 170,505)
[e-mail]
Anooj Patel (SBN 300.297)
[e-mail]
HANKIN PATENT LAW, APC
12400 Wilshire Boulevard, Suite 1265
Los Angeles, CA 90025
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant IMAGE MICRODERM, 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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WESTERN DIVISION

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EDGE SYSTEMS LLC, a California
limited liability company, and AXIA
MEDSCIENCES, LLC, a Delaware
limited liability company,

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Plaintiffs,
v.
IMAGE MICRODERM, INC., a Nevada
corporation,
Defendant.
AND RELATED COUNTERCLAIMS
AND COUNTERCLAIMS-IN-REPLY

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Civil Action No.
2:17-CV-08699-PSG-AGR
[PROPOSED]
FINAL CONSENT JUDGMENT
OF WILLFUL INFRINGEMENT
AND PERMANENT
INJUNCTION

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Plaintiffs Edge Systems LLC (“Edge”) and Axia Medsciences, LLC

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(collectively, “Plaintiffs”) and Defendant Image Microderm, Inc. (“Defendant”)

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hereby stipulate and jointly move for entry of final judgment as follows:
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That this Court has subject matter jurisdiction over this action as well

as personal jurisdiction over Plaintiffs and Defendant.

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2.

That venue is proper in this judicial district.

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3.

That Edge owns each of U.S. Patent Nos. 6,641,591 (“the 591

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Patent”), 7,789,886 (“the ’886 Patent”), 8,066,716 (“the ’716 Patent”), 8,337,513

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(“the ’513 Patent”), 9,468,464 (“the ’464 Patent”), 9,775,646 (“the ’646 Patent”)

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and 9,550,052 (“the ’052 Patent”) (collectively, the “patents-in-suit”).
4.

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That each of the patents-in-suit is valid and enforceable, and that

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Defendant shall not challenge the validity or enforceability of any of the patents-

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in-suit in any judicial, administrative, or other proceeding.
5.

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That Defendant has manufactured, used, sold, offered for sale,

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and/or imported into the United States the BioXFusion MD product shown in

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Exhibit A.

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6.

That Defendant has manufactured, used, sold, offered for sale,

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and/or imported into the United States the BioXFusion Mini product shown in

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Exhibit B.

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7.

That the manufacture, use, sale, offer for sale, and/or importation

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into the United States of the BioXFusion MD product shown in Exhibit A

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infringes each of the ’591 Patent, the ’886 Patent, the ’716 Patent, the ’513 Patent,

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the ’464 Patent, the ’646 Patent, and the ’052 Patent.
8.

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That the manufacture, use, sale, offer for sale, and/or importation

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into the United States of the BioXFusion Mini product shown in Exhibit B

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infringes each of the ’591 Patent, the ’886 Patent, the ’716 Patent, the ’513 Patent,

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the ’464 Patent, and the ’646 Patent.

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9.

That through the manufacture, use, sale, offer for sale, and/or

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importation into the United States of the BioXFusion MD product shown in

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Exhibit A, Defendant has infringed each of the ’591 Patent, the ’886 Patent, the

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’716 Patent, the ’513 Patent, the ’464 Patent, the ’646 Patent, and the ’052 Patent.

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10.

That through the manufacture, use, sale, offer for sale, and/or

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importation into the United States of the BioXFusion Mini product shown in

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Exhibit B, Defendant has infringed each of the ’591 Patent, the ’886 Patent, the

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’716 Patent, the ’513 Patent, the ’464 Patent, and the ’646 Patent.

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11.

That Defendant induced its customers to infringe each of the ’591

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Patent, the ’886 Patent, the ’716 Patent, the ’513 Patent, the ’464 Patent, and the

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’646 Patent, by using the BioXFusion MD product shown in Exhibit A because

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Defendant had knowledge of each of these patents-in-suit, Defendant knew that

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its customers would infringe each of these patents by using the BioXFusion MD

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product shown in Exhibit A, and Defendant had the specific intent to induce and

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did induce its customers to infringe each of these patents-in-suit by using the

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BioXFusion MD product shown in Exhibit A.

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12.

That Defendant induced distributors to infringe each of the ’591

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Patent, the ’886 Patent, the ’716 Patent, the ’513 Patent, the ’464 Patent, and the

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’646 Patent, by selling and/or offering for sale the BioXFusion MD product

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shown in Exhibit A, because Defendant had knowledge of each of these patents-

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in-suit, Defendant knew that distributors would infringe each of these patents by

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selling and/or offering for sale the BioXFusion MD product shown in Exhibit A,

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and Defendant had the specific intent to induce and did induce distributors to

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infringe each of these patents-in-suit by selling and/or offering for sale the

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BioXFusion MD product shown in Exhibit A.

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13.

That Defendant induced its customers to infringe each of the ’591

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Patent, the ’886 Patent, the ’716 Patent, the ’513 Patent, the ’464 Patent, and the

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’646 Patent by using the BioXFusion Mini product shown in Exhibit B because
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Defendant had knowledge of each of the ’591 Patent, the ’886 Patent, the ’716

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Patent, the ’513 Patent, the ’464 Patent, and the ’646 Patent, Defendant knew that

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its customers would infringe each of the ’591 Patent, the ’886 Patent, the ’716

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Patent, the ’513 Patent, the ’464 Patent, and the ’646 Patent by using the

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BioXFusion Mini product shown in Exhibit B, and Defendant had the specific

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intent to induce and did induce its customers to infringe each of the ’591 Patent,

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the ’886 Patent, the ’716 Patent, the ’513 Patent, the ’464 Patent, and the ’646

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Patent by using the BioXFusion Mini product shown in Exhibit B.

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That Defendant induced distributors to infringe each of the’591

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Patent, the ’886 Patent, the ’716 Patent, the ’513 Patent, the ’464 Patent, and the

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’646 Patent by selling and/or offering for sale the BioXFusion Mini product

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shown in Exhibit B because Defendant had knowledge of each of the patents-in-

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suit, Defendant knew that distributors would infringe each of the patents by

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selling and/or offering for sale the BioXFusion Mini product shown in Exhibit B,

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and Defendant had the specific intent to induce and did induce distributors to

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infringe each of the’591 Patent, the ’886 Patent, the ’716 Patent, the ’513 Patent,

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the ’464 Patent by selling and/or offering for sale the BioXFusion Mini product

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shown in Exhibit B.

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15.

That Defendant’s infringement of each of the ’591 Patent, the ’886

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Patent, the ’716 Patent, the ’513 Patent, the ’464 Patent, and the ’646 Patent was

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willful.

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16.

That, pursuant to the Patent Act, 35 U.S.C. § 283, Defendant,

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together with its officers, directors, agents, servants, employees and affiliates

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thereof, representatives and attorneys, and all other persons acting or attempting

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to act in concert or participation with them, are permanently enjoined and

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restrained from making, using, selling, offering to sell, or importing into the

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United States, the BioXFusion MD product shown in Exhibit A, the BioXFusion

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Mini product shown in Exhibit B, or any other goods that are infringements of
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the’591 Patent during the life of the ’591 Patent.
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That, pursuant to the Patent Act, 35 U.S.C. § 283, Defendant,

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together with its officers, directors, agents, servants, employees and affiliates

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thereof, representatives and attorneys, and all other persons acting or attempting

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to act in concert or participation with them, are permanently enjoined and

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restrained from making, using, selling, offering to sell, or importing into the

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United States, the BioXFusion MD product shown in Exhibit A, the BioXFusion

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Mini product shown in Exhibit B, or any other goods that are infringements of the

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’886 Patent during the life of the ’886 Patent.

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18.

That, pursuant to the Patent Act, 35 U.S.C. § 283, Defendant,

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together with its officers, directors, agents, servants, employees and affiliates

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thereof, representatives and attorneys, and all other persons acting or attempting

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to act in concert or participation with them, are permanently enjoined and

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restrained from making, using, selling, offering to sell, or importing into the

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United States, the BioXFusion MD product shown in Exhibit A, the BioXFusion

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Mini product shown in Exhibit B, or any other goods that are infringements of the

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’716 Patent during the life of the ’716 Patent.

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That, pursuant to the Patent Act, 35 U.S.C. § 283, Defendant,

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together with its officers, directors, agents, servants, employees and affiliates

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thereof, representatives and attorneys, and all other persons acting or attempting

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to act in concert or participation with them, are permanently enjoined and

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restrained from making, using, selling, offering to sell, or importing into the

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United States, the BioXFusion MD product shown in Exhibit A, the BioXFusion

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Mini product shown in Exhibit B, or any other goods that are infringements of the

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’513 Patent during the life of the ’513 Patent.

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20.

That, pursuant to the Patent Act, 35 U.S.C. § 283, Defendant,

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together with its officers, directors, agents, servants, employees and affiliates

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thereof, representatives and attorneys, and all other persons acting or attempting
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to act in concert or participation with them, are permanently enjoined and

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restrained from making, using, selling, offering to sell, or importing into the

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United States, the BioXFusion MD product shown in Exhibit A, the BioXFusion

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Mini product shown in Exhibit B, or any other goods that are infringements of the

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’464 Patent during the life of the ’464 Patent.

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21.

That, pursuant to the Patent Act, 35 U.S.C. § 283, Defendant,

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together with its officers, directors, agents, servants, employees and affiliates

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thereof, representatives and attorneys, and all other persons acting or attempting

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to act in concert or participation with them, are permanently enjoined and

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restrained from making, using, selling, offering to sell, or importing into the

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United States, the BioXFusion MD product shown in Exhibit A, the BioXFusion

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Mini product shown in Exhibit B, or any other goods that are infringements of the

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’646 Patent during the life of the ’646 Patent.

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That, pursuant to the Patent Act, 35 U.S.C. § 283, Defendant,

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together with its officers, directors, agents, servants, employees and affiliates

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thereof, representatives and attorneys, and all other persons acting or attempting

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to act in concert or participation with them, are permanently enjoined and

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restrained from making, using, selling, offering to sell, or importing into the

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United States, the BioXFusion MD product shown in Exhibit A or any other

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goods that are infringements of the ’052 Patent during the life of the ’052 Patent.

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That Defendant is enjoined from inducing others from undertaking

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any of the actions prohibited by any of Paragraphs 16-22 of this Final Consent

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Judgment and Permanent Injunction.

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24.

That Defendant has breached Paragraph 5 of the Parties’ August

2014 Settlement Agreement attached as Exhibit C (“2014 Agreement”).
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That the covenant not to sue granted to Defendant by Plaintiffs in

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Paragraph 5 of the 2014 Agreement is null and void, but that all other provisions

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of the 2014 Agreement remain in effect.
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26.

That Final Judgment be entered in favor of Plaintiffs and against

Defendant on all claims, counterclaims, and defenses in this action.
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That Defendant has not paid any compensation for the infringing acts

described herein.
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That no other or further relief, monetary or otherwise, be granted to

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Plaintiffs or Defendant with respect to each other, and that Plaintiffs will not seek

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any further relief, monetary or otherwise, from Defendant and/or from any of

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Defendant’s officers, directors, agents, servants, employees and affiliates,

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representatives and attorneys, and/or any and all other persons and/or entities

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acting and/or attempting to act in concert and/or participation with them,

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including but not limited to, any and all of Defendant’s distributors and/or

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customers, for any acts and/or omissions relating to the allegations of the

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Complaint in this matter. Plaintiff’s agreement not to seek further relief from

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Defendant’s distributors and/or customers shall be void against any distributor or

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customer who files an action for declaratory relief against Plaintiff relating to any

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of the patents in suit. For the avoidance of doubt, no license or release is hereby

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created in favor of Defendant’s distributors or customers, who are receiving only

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a conditional personal immunity from suit.

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29.

That Defendant affirmatively waives any and all rights to appeal this

Final Consent Judgment and Permanent Injunction.
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That this Court retain jurisdiction over this matter to enforce

compliance with the Permanent Injunction.

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31.

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action.

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That each party will bear its own costs and attorneys’ fees for this

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IT IS SO STIPULATED AND AGREED

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Respectfully submitted,

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KNOBBE, MARTENS, OLSON & BEAR, LLP

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Dated: May 20, 2019

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Attorneys for Plaintiffs
EDGE SYSTEMS LLC and
AXIA MEDSCIENCES, LLC

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HANKIN PATENT LAW, APC

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Dated: May 20, 2019

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IT IS SO ORDERED AND DECREED, AND FINAL JUDGMENT IS
HEREBY ENTERED

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5/23/19
Dated:

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By: /Marc E. Hankin/ (with permission)
Marc E. Hankin
[e-mail]
Anooj Patel
[e-mail]
Attorneys for Defendant,
IMAGE MICRODERM, INC.

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By: /s/ Paul A. Stewart
Paul A. Stewart
[e-mail]
Ali S. Razai
[e-mail]

Honorable Philip S. Gutierrez
United States District Judge

30557834

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