H & M Gopher Control, et al v. Benchmark Pest Control, Inc., et al

Filing 29

STIPULATED FINAL CONSENT JUDGMENT AND PERMANENT INJUNCTION signed by Magistrate Judge Jennifer L. Thurston on 4/8/2019. CASE CLOSED. (Jessen, A)

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EASTMAN MCCARTNEY DALLMANN LLP
Mathew C. McCartney (SBN 226687)
N. Thomas McCartney (SBN 066758)
Andrew S. Dallmann (SBN 206771)
1430 Truxtun Avenue, Suite 700
Bakersfield, California 93301
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]; [e-mail]; [e-mail]

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Attorneys for Plaintiffs, H & M Gopher Control and Allen Hurlburt

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UNITED STATES DISTRICT COURT -EASTERN DISTRICT OF CALIFORNIA

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H & M GOPHER CONTROL, a California
general partnership, ALLEN HURLBURT,
an individual
Plaintiffs,
vs.

Case No. 1:17-CV-01700-LJO-JLT
STIPULATED FINAL CONSENT
JUDGMENT AND PERMANENT
INJUNCTION
(Doc. 28)

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BENCHMARK PEST CONTROL, INC, a
California corporation; ANDREW
OZANICH, an individual,
Defendants.

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Plaintiffs H & M Gopher Control (“H & M Gopher”) and Allen Hurlburt (“Hurlburt”) on

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the one hand and defendants Benchmark Pest Control, Inc., (“Benchmark”) and Andrew

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Ozanich (“Ozanich”) on the other hand, having entered into a confidential settlement agreement

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dated March 29, 2019, (“Settlement Agreement”) having considered the facts and applicable law

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and having agreed to the entry of this stipulated final consent judgment and permanent

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injunction (“Consent Judgment”),

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IT IS HEREBY ORDERED, ADJUDGED, AND DECREED as follows:
Findings of Fact

STIPULATED FINAL CONSENT JUDGMENT AND PERMANENT INJUNCTION
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1.

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This is an action for, inter alia, patent infringement, trademark infringement,

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unfair competition, and false designation of origin arising under the laws of the United States

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and this Court has jurisdiction over the subject matter pursuant to 28 U.S.C. §§ 1331 and

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1338(a)-(b) and supplemental jurisdiction over the state law claims under 28 U.S.C. § 1367.
2.

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Venue lies in this district pursuant to 28 U.S.C. §§ 1391(b) and/or 1401(b) in that

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the Defendants reside in this district and/or a substantial part of the events at issue in this case

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occurred within this district.
3.

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business in of Modoc County, California.
4.

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Hurlburt is an individual residing in Modoc County, California and is a general

partner in H&M along with his wife Virginia Massey.
5.

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H & M Gopher is a California general partnership with its principal place of

Benchmark is a corporation organized under the laws of the State of California

with a principal place of business in Bakersfield, California.

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6.

Defendant Ozanich is the sole shareholder and an officer, director and employee

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of Benchmark.

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7.

On September 1, 2009, the United States Patent and Trademark Office issued

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United States Patent Number 7,581,349, titled “Method and Apparatus for using Pressurized

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Exhaust Gases to Control Rodents” (hereinafter the “‘349 Patent”).
8.

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Hurlburt is the owner and sole inventor of the ‘349 Patent and is the president of

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The ‘349 Patent pertains to devices and methods for controlling rodents using

H&M.

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pressurized exhaust gases from an internal combustion engine. The gasses are compressed and

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injected under pressure into underground burrows of rodents. The rodent tunnels fill with a very

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high concentration of injected exhaust gases, such as carbon monoxide, within just a few

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seconds, quickly overwhelming and exterminating all rodents within the rodent tunnels.

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10.

In 2005, Hurlburt developed the tradename H & M GOPHER CONTROL and the

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trademark PERC. Hurlburt authorized his business H&M to act as an exclusive licensee to use

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the tradename H & M GOPHER CONTROL in connection with its business activities and the

STIPULATED FINAL CONSENT JUDGMENT AND PERMANENT INJUNCTION
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trademark PERC in connection with the gopher control systems sold by H&M and protected by

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the ‘349 Patent.

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In addition to its longstanding common law rights in the H & M GOPHER

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CONTROL trade name. Hurlburt owns United States trademark registration number 4097962

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for the trade name H & M GOPHER CONTROL and United States trademark registration

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number 4086472 for the trademark PERC. Both registrations have become incontestable under

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the provisions of 15 U.S.C. § 1065. Both trademarks are valid and subsisting and neither

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registration has ever been cancelled and are hereinafter collectively referred to as the

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“trademarks-in-suit.”

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H&M is the exclusive licensee for the trademarks-in-suit and is also the exclusive

licensee of the ‘349 Patent.
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Ozanich and Benchmark have manufactured and used eight pressurized exhaust

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gas rodent control machines (hereinafter “Accused Products”), as depicted in Exhibit 5 to the

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complaint filed on December 18, 2017, and further set forth in the photographs attached as

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Exhibit A-1 hereto. {Attach photos BENCHMARK_00901, 00902, 00903}

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H & M GOPHER CONTROL tradename prominently displayed on them.

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The Accused Products have were used in commerce with the PERC trademark and

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Permanent Injunction
Benchmark and Ozanich shall disassemble the eight Accused Devices and shall

deliver to H&M the eight motors, cooling coils, compressors and belt guards from the
disassembled Accused Devices.
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Pursuant to the Patent Act, 35 U.S.C. §283 and the Lanham Act, 15 U.S.C. § 1121

and 28 U.S.C. §§ 1331 and 1338(a)and 35 U.S.C. Sec 1 et seq, Benchmark and Ozanich,
together with their officers, members, directors, agents, servants, employees, and affiliates
thereof, representatives and attorneys, and all persons acting or attempting to act in concert or
participation with them, are permanently enjoined and restrained from making, using, offering to
sell, selling, or distributing within the United States, its territories and possession, or by
importing into the United States, its territories and possession, the Accused Products, or any

STIPULATED FINAL CONSENT JUDGMENT AND PERMANENT INJUNCTION
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other goods that are no more than colorable variations thereof and that infringe the ‘349 Patent
or trademarks-in-suit, during the life of the ‘349 Patent or trademarks-in-suit.
Miscellaneous Provisions

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This Consent Judgment shall finally conclude and dispose of this litigation, and, as

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to Plaintiff and Defendants, this Consent Judgment shall be entitled to issue and claim

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preclusion effect in future litigation or future proceedings before the United States Patent &

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Trademark Office related to the Accused Products and trademarks-in-suit.

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18.

This Court retains exclusive jurisdiction of this action for the purpose of insuring

compliance with this Consent Judgment.
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No appeal shall be taken by any party from this Consent Judgment, the right to

appeal from this Consent Judgment being expressly waived by the Parties.

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20.

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

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Nothing herein shall be construed as a release as to any third party.

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Final Judgment shall be entered hereto, forthwith, without further notice.

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The Clerk is directed to enter this Final Consent Judgment and Permanent Injunction forthwith

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and to close this action.

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IT IS SO ORDERED.
Dated:

April 8, 2019

/s/ Jennifer L. Thurston
UNITED STATES MAGISTRATE JUDGE

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STIPULATED FINAL CONSENT JUDGMENT AND PERMANENT INJUNCTION
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