Unicorn Global, Inc. et al v. Hillo America, Inc.

Filing 121

CONSENT JUDGMENT by Judge John A. Kronstadt in favor of the Plaintiffs and against the Defendant. The parties agree that damages in the amount of $3,000,000 should be awarded and are hereby awarded to Plaintiffs against Defendant pursuant 35 US C section 284 for past infringement of the Asserted Patents. Defendant shall satisfy the Damages Award on or before 3/1/2022. Each party shall bear its own attorney's fees and costs.. (MD JS-6. Case Terminated.) (See Consent Judgment for further specifics). (jp)

1

UNITED STATES DISTRICT COURT

2
3
4
5
6
7
8

CENTRAL DISTRICT OF CALIFORNIA
UNICORN GLOBAL, INC., et al.
Plaintiffs,
v.
HILLO AMERICA, INC. d/b/a
HOVERHEART,
Defendant.

9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
CONSENT JUDGMENT
Case No. 2:19-cv-03028 JAK (AFMx)

Case No. 2:19-cv-03028 JAK (AFMx)
CONSENT JUDGMENT
JS-6

1
2
3

CONSENT JUDGMENT AND PERMANENT INJUNCTION
The parties have filed a “Joint Motion for Entry of Consent Judgment” that

4 resolves this matter (“Joint Motion” (Dkt. 120)). The parties identified a hearing date
5 of April 5, 2021 for the Joint Motion, but that date was not properly designated by
6
7

them. However, in the interest of party and judicial efficiency it has been determined

8 that the Joint Motion is appropriate for decision without oral argument and that a
9 corrected hearing date is unnecessary. See Fed. R. Civ. P. 78; Local Rule 7-15.
10
11

Plaintiffs Unicorn Global, Inc. (“Unicorn”), Hangzhou Chic Intelligent

12 Technology Co., Ltd. (“Chic”), and Shenzhen Uni-Sun Electronic Co., Ltd. (“Uni13 Sun”) (collectively, “Plaintiffs”) and Defendant HAI, stipulate and consent as
14
15
16

follows:
WHEREAS, Plaintiffs are the owner or exclusive licensees of U.S. Patent Nos.

17 9,376,155, 9,452,802, D737,723, and D784,196 (the “Asserted Patents”);
18
WHEREAS, Defendant has been accused of infringing the Asserted Patents
19
20 by making, using, importing, offering to sell, or selling the Hoverheart and/or
21 Hoverheart-branded products, including the Hoverheart HS450, Hoverheart LBW11,
22
Hoverheart T580, Hoverheart HAI-K6, and Hoverheart LBW12 hoverboards;
23
WHEREAS, the parties desire to settle and amicably resolve their dispute to
24
25 each party’s satisfaction. Each party represents that it has had a full opportunity to
26
confer with counsel about this dispute and the terms of this Consent Judgment, and
27
28 each party enters into this Consent Judgment without relying on any statements or
CONSENT JUDGMENT
Case No. 2:19-cv-03028 JAK (AFMx)

1 representations by the opposing parties or their attorneys.
2
3

Accordingly, it is ORDERED AND ADJUDGED that the Joint Motion for

4 Entry of Consent Judgment is GRANTED, including as to the proposed findings of
5 fact and conclusions of law stated in this Judgment.
6
7

Judgment is hereby entered in favor of the Plaintiffs and against the Defendant

8 as follows:
9
10
11

1.

The parties agree that HAI has failed to prove by clear and convincing

evidence that U.S. Patent Nos. 9,376,155, 9,452,802, D737,723, and D784,196

12 (collectively, the “Asserted Patents”) are invalid under 35 U.S.C. §§ 101, 102, 103,
13 or 112 as asserted in its affirmative defenses and counterclaims; and Hai’s following
14
15

theories fail as a matter of law: (1) anticipation, (2) obviousness, (3) lack of eligible-

16 subject matter, (4) lack of written description, (5) enablement, (6) indefiniteness, (7)
17 public use or on sale bar, and (8) improper inventorship or derivation. Accordingly,
18
no finding is warranted that the Asserted Patents are invalid as anticipated, obvious,
19
20 for lack of eligible-subject matter, for lack of written description, enablement or
21 indefiniteness under 35 U.S.C. §§ 101, 102, 103, or 112.
22
2.
The parties further agree that HAI has failed to prove by clear and
23
24 convincing evidence that U.S. Patent Nos. 9,376,155, 9,452,802, D737,723, and
25 D784,196 are unenforceable due to inequitable conduct as asserted in its affirmative
26
defenses.
27
3.
The parties agree that the following products of Defendant Hillo
28
CONSENT JUDGMENT
Case No. 2:19-cv-03028 JAK (AFMx)

1 America, Inc. d/b/a Hoverheart infringe the following claims:
2
3

4.

The Hillo Hoverheart HS450 hoverboard infringes Claims 1, 2, 3, 5, 6,

4 7, 8, 11, 13, 14, and 16 of U.S. Patent No. 9,376,155 and Claims 1, 2, 4, 5, 9, 11, 12,
5 and 14 of U.S. Patent No. 9,452,802.
6
7

5.

The Hillo Hoverheart LBW11 hoverboard infringes Claims 1, 2, 3, 4, 5,

8 6, 7, 8, 11, 13, and 16 of US Patent No. 9,376,155 and Claims 1, 2, 3, 4, 5, 6, 9, 11,
9 and 14 of U.S. Patent No. 9,452,802.
10
11

6.

The Hillo Hoverheart T580 hoverboard infringes Claims 1, 2, 3, 4, 7, 8,

12 11, 12, 14, and 16 of U.S. Patent No. 9,376,155.
13
14
15

7.

The Hillo Hoverheart LBW12 hoverboard infringes Claims 1, 2, 3, 4, 5,

6, 7, 8, 11, 13, 14, and 16 of U.S. Patent No. 9,376,155, Claims 1, 2, 3, 4, 5, 6, 9, 11,

16 12 and 14 of U.S. Patent No. 9,452,802 and the one Claim of U.S. Patent No.
17 D737,723.
18
8.
The Hillo Hoverheart HAI-K6 hoverboard infringes Claims 1, 2, 3, 4, 5,
19
20 6, 7, 8, 11, 13, 14, and 16 of U.S. Patent No. 9,376,155, Claims 1, 2, 3, 4, 5, 6, 9, 11,
21 12, and 14 of U.S. Patent No. 9,452,802 and the one Claim of U.S. Patent No.
22
D784,196.
23
9.
The parties agree that damages in the amount of $3,000,000 (“Damages
24
25 Award”) should be awarded and are hereby awarded to Plaintiffs against Defendant
26
pursuant 35 U.S.C. § 284 for past infringement of the Asserted Patents. Defendant
27
28 shall satisfy the Damages Award on or before March 1, 2022.
CONSENT JUDGMENT
Case No. 2:19-cv-03028 JAK (AFMx)

1
2
3

10.

Pursuant to the parties’ agreement, Defendant and its officers, agents,

servants, and employees, and all persons in active concert and participation with them

4 are hereby permanently restrained and enjoined from intentionally and/or knowingly
5 manufacturing or causing to be manufactured, importing, advertising, promoting,
6
7

distributing, selling or offering to sell any infringing products unauthorized by

8 Plaintiffs.
9
10
11

11.

Civil Code Section 1542 Waiver. The parties, on behalf of themselves

and their heirs, agents, representatives, successors, and assigns, hereby waive any and

12 all rights that they may have pursuant to California Civil Code section 1542, which
13 reads as follows:
14
15

A GENERAL RELEASE DOES NOT EXTEND TO CLAIMS THAT

16 THE CREDITOR OR RELEASING PARTY DOES NOT KNOW OR
17 SUSPECT TO EXIST IN HIS OR HER FAVOR AT THE TIME OF
18
EXECUTING THE RELEASE, AND THAT IF KNOWN BY HIM OR HER
19
20 WOULD HAVE MATERIALLY AFFECTED HIS OR HER SETTLEMENT
21 WITH THE DEBTOR OR RELEASED PARTY.
22
The parties waive any rights that they might have to invoke section 1542
23
24 now or in the future with respect to the releases set out in this consent judgment. The
25 parties also recognize and acknowledge that factors that have induced them to enter
26
into this consent judgment may be different from what they had previously anticipated,
27
28 and the parties expressly assume the risks of this waiver of Section 1542.
CONSENT JUDGMENT
Case No. 2:19-cv-03028 JAK (AFMx)

1
2
3

12.

This Consent Judgment shall be conclusive for purposes of collateral

estoppel regarding all issues that have been or could have been brought on the same

4 operative facts.
5
6
7

13.

Each party shall bear its own attorney’s fees and costs.

14.

This Court will retain continuing jurisdiction to enforce the terms of this

8 Consent Judgment.
9
10
11

IT IS SO ORDERED.
Dated:

March 31, 2021

12
John A. Kronstadt
United States District Judge

13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
CONSENT JUDGMENT
Case No. 2:19-cv-03028 JAK (AFMx)