Opinion
Case No. SACV11-00305-AG -(FMOx)
08-11-2011
SULZER MIXPAC USA, INC., a New Hampshire corporation, and SULZER MIXPAC AG, a Swiss corporation, Plaintiffs, c v. DENT MART INT'L INC., a California corporation, and KENNY S. LEE, an individual, and L&C DENTAL SUPPLY, INC., a California corporation, and SUNG H. LEE, an individual, and SAEYANG MICROTECH CO. LTD., a Korean corporation, Defendants.
Christopher J. Kondon(SBN 172339) Christina N. Goodrich "(SBN 261722) K&L Gates LLP Michael T. Murphy K&L Gates LLP Attorneys for Plaintiffs John Axtel J.J. Kim & Associates, PC
K&L GATES, LLP
10100 Santa Monica Boulevard
Seventh Floor
Los Angeles, California 90067
Telephone: (310) 552-5000
Facsimile: (310)552-5001
Christopher J. Kondon (SBN 172339)
Christopher. kondon@klgates. com
Christina Goodrich (SBN 261722)
christina.goodrich@klgates.com
K&L GATES, LLP
1601 K Street, N.W.
Washington, D.C. 20006-1600
Telephone: (202) 778-9000
Facsimile: (202) 778-9100
Michael T. Murphy
michael. murphy@klgates. com
Attorneys for Plaintiffs, SULZER MIXPAC USA, INC. and SULZER MIXPAC AG
[PROPOSED ORDER] CONSENT DECREE AND PERMANENT INJUNCTION
1. WHEREAS, the Plaintiffs, Sulzer Mixpac USA, Inc., and Sulzer Mixpac AG ("Plaintiffs") filed a complaint alleging, among other things, that Saeyang Microtech Co. Ltd ("Defendant") has infringed its trademarks, tirade dress and patents; and
2. WHEREAS,.the Plaintiffs and Defendant (and collectively, the "Parties") having compromised their claims pursuant to a Settlement Agreement entered into contemporaneously herewith, how desire to settle the controversies between them, and they request entry of the following Stipulation of Facts arid Consent Decree and Permanent Injunction.
3. NOW THEREFORE, based on consideration arising to the Parties, and in furtherance of the complaint and the exhibits, the Parties request that this Court accept and approve the request of' the Parties and find and order 'as follows:
STIPULATED FACTS
4. This Court has jurisdiction over the subject matter and over the Parties to this action pursuant to 15 U.S.C. .§ 1121, 28 U.&.C. § 1.331. and 1338(a) & (b)
5. Sulzer Mixpac AG is the owner of U.S. Patent Nos. 5,918;772. and 6,186,363, and such patents are valid and enforceable.
6. U.S. Patent Nos. 5,918,772 and 6,186,363 are infringed by the mixing tips imported, made, used, or offered for sale by the Defendant.
7. The Mixpac Colored Dome Mark and Trade Dress for its mixing tips is distinctive, well known, non-functional and has acquired secondary meaning. Customers recognize the Mixpac Colored Dome Mark and Trade Dress as a indicator of source and purchase based on that look.
8. Sulzer Mixpac is the owner of U.S. Trademark registration Nos. 3,762,232 (yellow), 3,762,233 (teal), 3976379 (blue), 3976380 (pink) and 3976381 (purple) and such registrations are valid and enforceable.
9. The mixing tips imported, sold, distributed or advertised by Defendant infringe the Mixpac Colored Dome Mark and Trade Dress or U.S. Trademark Registration Nos. 3,762,232, 3,762,233, 3976379, 3976380 and 3976381.
CONSENT DECREE AND PERMANENT INJUNCTION
10. IT IS THEREFORE ORDERED that judgment be entered against the Defendant as to all Claims within Plaintiffs' complaint.
11. IT IS ORDERED that Defendant Saeyang Microtech Co. Ltd, a Korean company, as well as its principals officers, members agents, servants, employees, and those persons under their control in active concert or participation with them who receive actual notice of this Order by personal service or otherwise, are hereby enjoined and permanently restrained from:
(i) making, using, importing, selling and/or offering for sale any mixing tips that infringe any claims of U.S. Patent Nos. 5,918,772 or 6,186,363;
(ii) selling, offering for sale, distributing or advertising any mixing tips that infringe U.S. Trademark Registration No. 3,762,232 (yellow) and 3,762,233 (teal), 3976379 (blue), 3976380 (pink) and 3976381 (purple) or the Colored Dome Mark and Mixpac Trade Dress, or any colorable imitations thereof;
(iii) assisting, aiding, or abetting any other person or entity in engaging in or performing any of the activities described in paragraphs (i) through (ii) above.
12. IT IS ORDERED that this Decree constitutes a final judgment as to all claims asserted in this action by Plaintiffs against Defendant or by Defendant against Plaintiffs and the Parties shall bear their own costs.
13. IT IS ORDERED that this Court retains jurisdiction for the purposes of making any further orders necessary or proper for the construction, modification or the enforcement of the Consent Decree and Permanent Injunction, or the Settlement Agreement between the Parties which is incorporated herein. If Defendants are alleged to have breached the terms of the Consent Decree and Permanent Injunction or the Settlement Agreement, Plaintiffs shall have the right to reopen this matter upon motion filed and heard on an expedited basis, subject to the Court's schedule and approval. If this matter is so reopened, Plaintiffs may pursue any and all remedies it may have against Defendants, and shall be entitled to recover its attorneys' fees and costs incurred in pursuing such breach of the terms of this Consent Decree and Permanent Injunction or Settlement Agreement.
ENTERED:
Hon. Andrew Guilford
United States District Judge
APPROVED AND CONSENTED TO:
Christopher J. Kondon(SBN 172339)
Christina N. Goodrich "(SBN 261722)
K&L Gates LLP
Michael T. Murphy
K&L Gates LLP
Attorneys for Plaintiffs
John Axtel
J.J. Kim & Associates, PC