Canon Inc. v. Digital Marketing Corporation

Filing 17

JOINT STIPULATION, CONSENT JUDGMENT, AND PERMANENT INJUNCTION by Judge Andre Birotte Jr.: Upon Stipulation #16 , IT IS ORDERED, AND ADJUDGED that Judgement is entered for Plaintiff and against Defendant on the claims asserted in Plaintiff's complaint. Defendant and its subsidiaries, affiliates, officers, directors, agents, servants, employees, successors, and assigns, and all other persons and organizations in active concert or participation with any of the foregoing, are hereby permanently enjoined and restrained re Asserted Patents, Named Products, any other toner supply container that has a pump or track as depicted in the Appendices, etc. Defendant and Plaintiff shall bear their own costs and attorney fees. This Consent Judgment constitutes a final judgment concerning the subject matter of this action. Upon entry of this Consent Judgment, this action is dismissed, with prejudice; provided, however, that this Court shall retain jurisdiction to enforce the terms and provisions of this Consent Judgment. See document for further details. (MD JS-6. Case Terminated) (gk)

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UNITED STATES DISTRICT COURT

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FOR THE CENTRAL DISTRICT OF CALIFORNIA

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310-229-9900

LOS ANGELES, CA 90067

VENABLE LLP

2049 CENTURY PARK EAST, SUITE 2300

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CANON INC., a Japanese corporation,
Plaintiff,
v.
DIGITAL MARKETING
CORPORATION, a Delaware
corporation,

Case No. 2:21-cv-02094 AB (PDx)
Honorable André Birotte Jr.
JOINT STIPULATION, CONSENT
JUDGMENT, AND PERMANENT
INJUNCTION

Defendant.

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JOINT STIPULATION, CONSENT JUDGMENT, AND PERMANENT INJUNCTION

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WHEREAS, Plaintiff brought this suit against Defendant for infringement of

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Plaintiff’s U.S. Patent Nos. 8,565,649 (the “’649 patent”); 9,354,551 (the “’551

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patent”); 9,753,402 (the “’402 patent”); 10,209,667 (the “’667 patent”); 10,289,060

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(the “’060 patent”); 10,289,061 (the “’061 patent”); 10,295,957 (the “’957

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patent”); 10,488,814 (the “’814 patent”); 10,496,032 (the “’032 patent”);

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10,496,033 (the “’033 patent”); 10,514,654 (the “’654 patent”); 10,520,881 (the

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“’881 patent”); and 10,520,882 (the “’882 patent”) (collectively, “Asserted

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Patents”) based on Defendant’s unauthorized importation, sale, and/or offer for

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sale of certain toner supply containers, including toner supply containers having
the following product designations: CCGPR51K; CCGPR51C; CCGPR51M;

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CCGPR51Y; CCGPR53K; and CCGPR53M (“Named Products”);

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310-229-9900

LOS ANGELES, CA 90067

VENABLE LLP

2049 CENTURY PARK EAST, SUITE 2300

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WHEREAS, Defendant wishes to conclude this litigation at Plaintiff’s initial

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pleading stage without contesting infringement, validity, or enforceability of any

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claims of the Asserted Patents; and

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WHEREAS, Plaintiff and Defendant, through their respective counsel,

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hereby agree to entry of this Joint Stipulation, Consent Judgment, and Permanent

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Injunction (“Consent Judgment”), subject to the approval of the Court;

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NOW, THEREFORE, IT IS HEREBY STIPULATED, ORDERED, AND

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ADJUDGED:

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1.

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This is an action for patent infringement under the patent laws of the

United States, Title 35 of the United States Code.
2.

This Court has jurisdiction over Defendant and the subject matter of

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this action under 28 U.S.C §§ 1331 and 1338(a). Venue is proper in this Court

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pursuant to 28 U.S.C § 1400(b).

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3.

Plaintiff is the owner of all right, title, and interest in and to the

Asserted Patents.
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Defendant has imported, sold, and/or offered for sale in the United

States the toner supply containers accused of infringement in this action, including
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JOINT STIPULATION, CONSENT JUDGMENT, AND PERMANENT INJUNCTION

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but not limited to the Named Products.
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Solely for purposes of this lawsuit and any proceeding to enforce this

19, and 23 of the ’667 patent, claims 1, 2, 6-8, 11, 12, and 16-18 of the ’060 patent,

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claims 1-3, 6-8, 11-14, 17-19, and 23 of the ’061 patent, claims 1, 2, 4, 7-9, 12-14,

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16, 19-21, and 25 of the ’957 patent, claims 1, 4, 7-9, 12, 13, 16, 19-21, and 25 of

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the ’814 patent, claims 1, 4, 7-9, 12, 13, 16, 19-21, 25, 26, 29, 32-34, 37, 38, 41,

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44-46, 49, 50, 53, 56-58, and 61 of the ’032 patent, claims 1, 5, 8-10, 13, 14, 18,

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21-23, and 26-28 of the ’033 patent, claims 1, 3-5, 8, 10-12, 46, 48-50, 53, and 55-

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310-229-9900

25-27, 32, 36, 37, 39-41, and 46 of the ’402 patent, claims 1, 3, 6-8, 11, 12, 14, 17-

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LOS ANGELES, CA 90067

and 26 of the ’649 patent, claims 1-7 of the ’551 patent, claims 1, 15-18, 22, 23,

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VENABLE LLP

Consent Judgment, Defendant does not contest that all of claims 1, 2, 6, 7, 12, 25,

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2049 CENTURY PARK EAST, SUITE 2300

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57 of the ’654 patent, claims 1, 5, 8-10, 13, 14, 18, 21-23, and 25 of the ’881

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patent, and claims 1, 6-8, 11, and 16-18 of the ’882 patent are valid, enforceable,

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and infringed by the Named Products.

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6.

Judgement is entered for Plaintiff and against Defendant on the claims

asserted in Plaintiff’s complaint.
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Effective as of the date this Consent Judgment is entered by the Court,

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Defendant and its subsidiaries, affiliates, officers, directors, agents, servants,

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employees, successors, and assigns, and all other persons and organizations in

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active concert or participation with any of the foregoing, are hereby permanently

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enjoined and restrained from engaging in any of the following activities:

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(a)

making, using, selling, or offering for sale in the United States,

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or importing into the United States, during the remaining term of the Asserted

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Patents, (i) any of the Named Products, (ii) any other toner supply container that

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has a pump as depicted in attached Appendix A and falls within the scope of at

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least one claim of at least one of the ’649, ’551, and ’402 patents, (iii) any other

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toner supply container that has a track as depicted in attached Appendix B and falls

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within the scope of at least one claim of at least one of the ’667, ’060, ’061, ’957,
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JOINT STIPULATION, CONSENT JUDGMENT, AND PERMANENT INJUNCTION

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’814, ’032, ’033, ’654, ’881, and ’882 patents, and (iv) any other toner supply

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container that is not more than colorably different from (i), (ii), or (iii) and falls

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within the scope of at least one claim of at least one Asserted Patent;
(b)

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otherwise directly infringing, contributorily infringing, or

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inducing infringement of any of the claims of the Asserted Patents with respect to

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(i) any of the Named Products, (ii) any other toner supply container that has a

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pump as depicted in attached Appendix A and falls within the scope of at least one

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claim of at least one of the ’649, ’551, and ’402 patents, (iii) any other toner supply

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container that has a track as depicted in attached Appendix B and falls within the
’033, ’654, ’881, and ’882 patents, and (iv) any other toner supply container that is

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310-229-9900

scope of at least one claim of at least one of the ’667, ’060, ’061, ’957, ’814, ’032,

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LOS ANGELES, CA 90067

VENABLE LLP

2049 CENTURY PARK EAST, SUITE 2300

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not more than colorably different from (i), (ii), or (iii) and falls within the scope of

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at least one claim of at least one Asserted Patent; and
(c)

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assisting, aiding, or abetting any other person or business entity

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in engaging in or performing any of the activities referred to in subparagraphs (a)

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and (b) above.

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8.

Defendant and Plaintiff shall bear their own costs and attorney fees.

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9.

This Consent Judgment constitutes a final judgment concerning the

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subject matter of this action.

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10.

Defendant waives any right to appeal from this Consent Judgment.

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11.

Upon entry of this Consent Judgment, this action is dismissed, with

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prejudice; provided, however, that this Court shall retain jurisdiction to enforce the

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terms and provisions of this Consent Judgment.

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DATED: April 27, 2021

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___________________________________
André Birotte Jr.
U.S. District Judge

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JOINT STIPULATION, CONSENT JUDGMENT, AND PERMANENT INJUNCTION