Inguran, LLC et al v. ABS Global, Inc. et al

Filing 607

FINAL JUDGMENT. (voc)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
INGURAN, LLC d/b/a STGENETICS,
XY, LLC, and CYTONOME/ ST, LLC,
Plaintiff/Counterclaim Defendant,

Case No. 17-cv-446-wmc

V.

ABS, GLOBAL, INC., GENUS PLC, and
PREMIUM GENETICSS (UK) LTD.,
Defen dan ts/Counterclaim Plain ti ffs.

FINAL JUDGMENT

IT IS ORDERED AND ADJUDGED that
1) Judgment is entered in favor of plaintiffs/counterclaim defendants Inguran, LLC
d/b/a Sexing Technologies ("ST") and Cytonome/ ST, LLC ("Cytonome"), and
against defendants/counterclaim plaintiffs ABS Global, Inc. ("ABS") and Genus
plc ("Genus"), jointly and severally, on ST and Cytonome's claims of
infringement of claims 1, 11, and 15 of U.S. Patent No. 7,311,476 (the '"476
patent") and claim 14 of U.S. Patent No. 7,611,309 (the '"309 patent") based
on ABS's "GSS" and "SSC-A" microfluidic chips.

ST and Cytonome shall

recover for their past damages caused by ABS and Genus's infringement as set
forth below:
a) ABS and Genus shall pay damages both for (i) sales made by ABS or any
ABS affiliate or licensee of sexed semen straws that were processed in the
United States with infringing microfluidic chips (specifically including sales

Judgment in a Civil Case

Page 2

and/or transfers of such straws to any ABS affiliate) (the "U.S.-Processed
Straws"), and (ii) sales made by ABS or any ABS affiliate or licensee of sexed
semen straws that were processed outside the United States with infringing
microfluidic chips that were either manufactured in or at any time prior to
the production of such straws imported into the United States (the "ForeignProcessed Straws").
b) For sales of U.S.-Processed Straws that took place on or before September
10, 2019, and sales of Foreign-Processed Straws that took place on or before
June 30, 2019, ABS and Genus shall pay ST and Cytonome damages in the
amount of $10,295,196.60, along with prejudgment interest in the amount
of $653,664.12.
c) For sales of Foreign-Processed Straws that took place between July 1, 2019,
and September 10, 2019, ABS and Genus shall pay ST and Cytonome
damages at the rate of $2.60 per sexed semen straw, along with prejudgment
interest (calculated at the prime rate, compounded annually) . ABS and
Genus shall provide a royalty report accounting for the number of royaltybearing sales and showing how prejudgment interest was calculated, and pay
for such damages to ST and Cytonome within 60 days of the entry of this
judgment.
d) To the extent applicable, ABS and Genus shall pay ST and Cytonome postjudgment interest on the above damages amounts, as provided for in 28
U .S.C. § 1961.

Judgm ent in a Civil Case

Page 3

2) Judgment is entered in favor of ST and Cytonome for ABS or Genus's
infringement of the '476 patent and '309 patent on or after September 11, 2019,
granting ST and Cytonome an ongoing royalty of (a) $2.60 for every sale by
ABS or any ABS affiliate or licensee of a U.S .-Processed Straw or ForeignProcessed Straw, where the infringing chip that produced the straw was
manufactured in or imported into the United States before January 22, 2020,
and (b) $3.25 for every sale by ABS or any ABS affiliate or licensee of a U.S.Processed Straw or Foreign-Processed Straw, where the infringing chip that
produced the straw was manufactured in or imported into the United States on
or after the January 22, 2020. This ongoing royalty obligation shall run through
the remaining life of the '476 and '309 patents. Any ongoing royalty payments
shall be made on a quarterly basis with a report that includes an accounting of
the number of royalty-bearing straws that were sold during that quarter. Such
payment and report shall be made within 60 days of the end of the calendar
quarter for which payment and reporting are made, except that the first report
and payment -- covering pre-judgment sales between September 11, 2019 and
the date of this judgment -- will be due 60 days after the entry of judgment.
3) Judgment is entered in favor of ST and against ABS and Genus on ABS and
Genus's claims of invalidity of claims 1, 11 , and 15 of the '4 76 patent.
4) Judgment is entered in favor of ST and against ABS and Genus on ABS and
Genus's claims of invalidity of claim 14 of the '309 patent.

Page 4

Judgment in a Civil Case

5) Judgment is entered in favor of ST and against ABS on ABS's claim that ST
breached the quality control provisions of ST and ABS's 2012 Semen Sorting
Agreement.
6) Judgment is entered in favor of ABS and Genus and against ST and Cytonome
on ST and Cytonome's claims of infringement of U.S. Patent No. 8,529,161
and U.S. Patent No. 9,446,912.
7) Judgment is entered in favor of ABS and Genus and against ST and XY, LLC
("XY") on ABS and Genus's claim for declaratory judgment of invalidity of
claims 1-7, 17-19, 21-22, 28, 30-32, and 38-44 of the U.S. Patent No.
6,524,860 (the '"860 patent").
8) Judgment is entered in favor of ABS, Genus, and Premium Genetics (UK) Ltd
on XY's claims of trade secret misappropriation under state and federal law.
9) Judgment is entered in favor of ABS, Genus, and Premium Genetics (UK) Ltd
on ST's breach of contract claim.

Approved as to form this 5th day of June, 2020.

Peter Oppeneer
Clerk of Court

Date