7 UNITED STATES DISTRICT COURT 8
9 CENTRAL DISTRICT OF CALIFORNIA 10 IMPRENTA SERVICES, INC., a Texas Case No. CV 20-6177-GW-PVCx 11 corporation; MIKE SANCHEZ, an 12 individual, FINAL JUDGMENT AND 13 Plaintiffs, PERMANENT INJUNCTION 14 vs. Hon. George H. Wu 15 United States District Judge 16 NICHOLAS PATRICK KARLL, an individual; ECO-PACKAGING 17 SOLUTIONS, INC., a California 18 corporation; and DOES 1-10, inclusive,
19 Defendants. 20
21 22 23 24 25 26 27 1 FINAL JUDGMENT AND PERMANENT INJUNCTION 2 Plaintiffs Imprenta Services, Inc. (“Imprenta”) and Mike Sanchez (“Sanchez”; 3 collectively with Imprenta, “Plaintiffs”) filed this action seeking declaratory 4 judgment of non-infringement of U.S. Patent No. 10,513,375 (“the ’375 Patent”), a 5 finding of inequitable conduct against Defendants, and to have Sanchez declared the 6 sole inventor or a co-inventor of the ’375 Patent. See generally Dkt. No. 1. 7 Defendants Nicholas Patrick Karll (“Karll”) and Eco Packaging Solutions (“Eco 8 Packaging”; collectively with Karll, “Defendants”) filed their answer and 9 counterclaims alleging, inter alia, that Plaintiffs infringe at least Claim 1 of the ’375 10 Patent. See generally Dkt. No. 41 (“Answer”). 11 The Court granted Defendants’ motion for summary judgment as to Plaintiffs’ 12 claims for inequitable conduct and correction of inventorship, granted Defendants’ 13 motion for summary judgment as to Plaintiffs’ willful infringement of the ’375 Patent, 14 and granted-in-part Defendants’ motion for Rule 11 sanctions. See generally Dkt. 15 No. 95. The Court imposed Rule 11 sanctions against Plaintiffs and their counsel 16 jointly and severally in the amount of $103,722.13. See Dkt. No. 106, p. 12. The 17 Court also granted Defendants’ motion to dismiss without prejudice their state law 18 counterclaims pursuant to 28 U.S.C. § 1367(c), and Defendants’ motion for a 19 permanent injunction. See Dkt. Nos. 146, 154 & 156. The Court further granted 20 Defendants’ motion for partial summary judgment of infringement damages in the 21 amount of $53,810.10, and granted-in-part Defendants’ motion for determination of 22 the willfulness multiplier, applying a willfulness multiplier of 2.0 and thus increasing 23 the lost profits award to $107,620.20. See Dkt. Nos. 154 & 156. 24 Under 35 U.S.C. § 284 and Supreme Court precedent, Defendants are entitled 25 to prejudgment interest on the actual damages award of $53,810.10 from the date of 26 first infringement, which was December 24, 2019, until the date judgment is entered. 27 See General Motors Corp. v. Devex Corp., 461 U.S. 648, 657 (1983) (“prejudgment 1 an award.”); Nickson Indus., Inc. v. Rol Mfg. Co., Ltd., 847 F.2d 795, 800 (Fed. Cir. 2 1988) (citing Devex, 461 U.S. at 656) (other citation omitted) (“prejudgment interest 3 should be awarded from the date of infringement to the date of judgment.”). 4 In an exercise of its discretion, the Court finds that the California state statutory 5 rate of 7% per annum is appropriate for this prejudgment interest; the Court concludes 6 that using the much lower T-Bill rate, as advocated by Plaintiffs, would not even 7 cover inflation let alone a conservative rate of return. See, e.g., Evolusion Concepts, 8 Inc. v. HOC Events, Inc., No. 2:19-cv-02736-JLS-DFM, 2022 U.S. Dist. LEXIS 9 204666, at *31 (C.D. Cal. Oct. 28, 2022) (citing EcoServices, LLC v. Certified 10 Aviation Servs., LLC, 340 F. Supp. 3d 1004, 1033 (C.D. Cal. Oct. 26, 2018) (rejecting 11 accused infringer’s request to apply T-Bill rate, and noting that “[m]any courts in the 12 Ninth Circuit have calculated prejudgment interest based upon the California state 13 statutory rate of seven percent”), aff’d in part, vacated in part on other grounds, and 14 remanded, 830 F. App’x 634 (Fed. Cir. 2020)). 15 NOW, THEREFORE, IT IS ORDERED, ADJUDGED AND DECREED 16 THAT JUDGMENT IS HEREBY ENTERED IN THIS MATTER AS 17 FOLLOWS: 18 1. The Court has subject matter jurisdiction over this action and personal 19 jurisdiction over the parties. 20 2. Once this Final Judgment and Permanent Injunction is signed by the 21 Court and served upon Plaintiffs, any failure by Plaintiffs to comply herewith shall 22 constitute contempt of court. 23 3. Plaintiffs have received actual notice of the entire contents of this Final 24 Judgment and Permanent Injunction and, upon entry of this Final Judgment and 25 Permanent Injunction by the Court, Plaintiffs will be served via the Court’s CM/ECF 26 system, whether directly or through Plaintiffs’ attorney. Defendants need not take 27 any further action to serve this Final Judgment and Permanent Injunction on any of 1 Plaintiffs. This Final Judgment and Permanent Injunction is valid and enforceable 2 against each of Plaintiffs immediately upon entry by the Court. 3 4. Plaintiffs Imprenta Services, Inc. and Mike Sanchez (aka Mike C. 4 Sanchez, Michael C. Sanchez, Miguel Sanchez and Miguel C. Sanchez) have willfully 5 infringed at least claim 1 of the ’375 Patent by way of making, using, offering to sell 6 and/or selling within the United States, and/or importing into the United States, each 7 of the following products (referred to herein by Plaintiffs’ Model Nos.): CRC301, 8 CRC302, CRC303, CRC304, CRC305, CRC306, CRC307, CRC308, CRC310, 9 CRC311, CRC312, CRC313, CRC314, CRC315, CRC316, CRC317, CRC318, 10 CRC703, CRC704, CRC705, CRC706, CRC707 (collectively, the “Infringing 11 Products”). 12 5. Plaintiffs Imprenta Services, Inc. and Mike Sanchez (aka Mike C. 13 Sanchez, Michael C. Sanchez, Miguel Sanchez and Miguel C. Sanchez), together with 14 their respective officers, agents, servants, employees, and attorneys, and those persons 15 in active concert or participation with any of them, who receive actual notice of this 16 Final Judgment and Permanent Injunction by personal service or otherwise, are and 17 shall remain restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 18 65, from making, using, offering to sell, and/or selling within the United States, and 19 from importing into the United States, any of the Infringing Products, and from 20 otherwise infringing or inducing others to infringe the ’375 Patent. 21 6. Plaintiffs Imprenta Services, Inc. and Mike Sanchez (aka Mike C. 22 Sanchez, Michael C. Sanchez, Miguel Sanchez and Miguel C. Sanchez), together with 23 their respective officers, agents, servants, employees, and attorneys, and those persons 24 in active concert or participation with any of them, who receive actual notice of this 25 Final Judgment and Permanent Injunction by personal service or otherwise, are and 26 shall forever remain restrained and enjoined from knowingly causing, aiding, 27 assisting or abetting any other person or entity to take any action prohibited by the 1 7. The foregoing paragraphs 5-6 of this Final Judgment and Permanent 2 Injunction shall expire upon expiration of the ’375 Patent. 3 8. Plaintiffs shall take nothing by their Complaint. Judgment is entered 4 against Plaintiffs on their claims and/or defenses for non-infringement of the ’375 5 Patent, for a finding of inequitable conduct against Defendants, and to have Sanchez 6 declared the sole inventor or a co-inventor of the ’375 Patent. 7 9.
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7 UNITED STATES DISTRICT COURT 8
9 CENTRAL DISTRICT OF CALIFORNIA 10 IMPRENTA SERVICES, INC., a Texas Case No. CV 20-6177-GW-PVCx 11 corporation; MIKE SANCHEZ, an 12 individual, FINAL JUDGMENT AND 13 Plaintiffs, PERMANENT INJUNCTION 14 vs. Hon. George H. Wu 15 United States District Judge 16 NICHOLAS PATRICK KARLL, an individual; ECO-PACKAGING 17 SOLUTIONS, INC., a California 18 corporation; and DOES 1-10, inclusive,
19 Defendants. 20
21 22 23 24 25 26 27 1 FINAL JUDGMENT AND PERMANENT INJUNCTION 2 Plaintiffs Imprenta Services, Inc. (“Imprenta”) and Mike Sanchez (“Sanchez”; 3 collectively with Imprenta, “Plaintiffs”) filed this action seeking declaratory 4 judgment of non-infringement of U.S. Patent No. 10,513,375 (“the ’375 Patent”), a 5 finding of inequitable conduct against Defendants, and to have Sanchez declared the 6 sole inventor or a co-inventor of the ’375 Patent. See generally Dkt. No. 1. 7 Defendants Nicholas Patrick Karll (“Karll”) and Eco Packaging Solutions (“Eco 8 Packaging”; collectively with Karll, “Defendants”) filed their answer and 9 counterclaims alleging, inter alia, that Plaintiffs infringe at least Claim 1 of the ’375 10 Patent. See generally Dkt. No. 41 (“Answer”). 11 The Court granted Defendants’ motion for summary judgment as to Plaintiffs’ 12 claims for inequitable conduct and correction of inventorship, granted Defendants’ 13 motion for summary judgment as to Plaintiffs’ willful infringement of the ’375 Patent, 14 and granted-in-part Defendants’ motion for Rule 11 sanctions. See generally Dkt. 15 No. 95. The Court imposed Rule 11 sanctions against Plaintiffs and their counsel 16 jointly and severally in the amount of $103,722.13. See Dkt. No. 106, p. 12. The 17 Court also granted Defendants’ motion to dismiss without prejudice their state law 18 counterclaims pursuant to 28 U.S.C. § 1367(c), and Defendants’ motion for a 19 permanent injunction. See Dkt. Nos. 146, 154 & 156. The Court further granted 20 Defendants’ motion for partial summary judgment of infringement damages in the 21 amount of $53,810.10, and granted-in-part Defendants’ motion for determination of 22 the willfulness multiplier, applying a willfulness multiplier of 2.0 and thus increasing 23 the lost profits award to $107,620.20. See Dkt. Nos. 154 & 156. 24 Under 35 U.S.C. § 284 and Supreme Court precedent, Defendants are entitled 25 to prejudgment interest on the actual damages award of $53,810.10 from the date of 26 first infringement, which was December 24, 2019, until the date judgment is entered. 27 See General Motors Corp. v. Devex Corp., 461 U.S. 648, 657 (1983) (“prejudgment 1 an award.”); Nickson Indus., Inc. v. Rol Mfg. Co., Ltd., 847 F.2d 795, 800 (Fed. Cir. 2 1988) (citing Devex, 461 U.S. at 656) (other citation omitted) (“prejudgment interest 3 should be awarded from the date of infringement to the date of judgment.”). 4 In an exercise of its discretion, the Court finds that the California state statutory 5 rate of 7% per annum is appropriate for this prejudgment interest; the Court concludes 6 that using the much lower T-Bill rate, as advocated by Plaintiffs, would not even 7 cover inflation let alone a conservative rate of return. See, e.g., Evolusion Concepts, 8 Inc. v. HOC Events, Inc., No. 2:19-cv-02736-JLS-DFM, 2022 U.S. Dist. LEXIS 9 204666, at *31 (C.D. Cal. Oct. 28, 2022) (citing EcoServices, LLC v. Certified 10 Aviation Servs., LLC, 340 F. Supp. 3d 1004, 1033 (C.D. Cal. Oct. 26, 2018) (rejecting 11 accused infringer’s request to apply T-Bill rate, and noting that “[m]any courts in the 12 Ninth Circuit have calculated prejudgment interest based upon the California state 13 statutory rate of seven percent”), aff’d in part, vacated in part on other grounds, and 14 remanded, 830 F. App’x 634 (Fed. Cir. 2020)). 15 NOW, THEREFORE, IT IS ORDERED, ADJUDGED AND DECREED 16 THAT JUDGMENT IS HEREBY ENTERED IN THIS MATTER AS 17 FOLLOWS: 18 1. The Court has subject matter jurisdiction over this action and personal 19 jurisdiction over the parties. 20 2. Once this Final Judgment and Permanent Injunction is signed by the 21 Court and served upon Plaintiffs, any failure by Plaintiffs to comply herewith shall 22 constitute contempt of court. 23 3. Plaintiffs have received actual notice of the entire contents of this Final 24 Judgment and Permanent Injunction and, upon entry of this Final Judgment and 25 Permanent Injunction by the Court, Plaintiffs will be served via the Court’s CM/ECF 26 system, whether directly or through Plaintiffs’ attorney. Defendants need not take 27 any further action to serve this Final Judgment and Permanent Injunction on any of 1 Plaintiffs. This Final Judgment and Permanent Injunction is valid and enforceable 2 against each of Plaintiffs immediately upon entry by the Court. 3 4. Plaintiffs Imprenta Services, Inc. and Mike Sanchez (aka Mike C. 4 Sanchez, Michael C. Sanchez, Miguel Sanchez and Miguel C. Sanchez) have willfully 5 infringed at least claim 1 of the ’375 Patent by way of making, using, offering to sell 6 and/or selling within the United States, and/or importing into the United States, each 7 of the following products (referred to herein by Plaintiffs’ Model Nos.): CRC301, 8 CRC302, CRC303, CRC304, CRC305, CRC306, CRC307, CRC308, CRC310, 9 CRC311, CRC312, CRC313, CRC314, CRC315, CRC316, CRC317, CRC318, 10 CRC703, CRC704, CRC705, CRC706, CRC707 (collectively, the “Infringing 11 Products”). 12 5. Plaintiffs Imprenta Services, Inc. and Mike Sanchez (aka Mike C. 13 Sanchez, Michael C. Sanchez, Miguel Sanchez and Miguel C. Sanchez), together with 14 their respective officers, agents, servants, employees, and attorneys, and those persons 15 in active concert or participation with any of them, who receive actual notice of this 16 Final Judgment and Permanent Injunction by personal service or otherwise, are and 17 shall remain restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 18 65, from making, using, offering to sell, and/or selling within the United States, and 19 from importing into the United States, any of the Infringing Products, and from 20 otherwise infringing or inducing others to infringe the ’375 Patent. 21 6. Plaintiffs Imprenta Services, Inc. and Mike Sanchez (aka Mike C. 22 Sanchez, Michael C. Sanchez, Miguel Sanchez and Miguel C. Sanchez), together with 23 their respective officers, agents, servants, employees, and attorneys, and those persons 24 in active concert or participation with any of them, who receive actual notice of this 25 Final Judgment and Permanent Injunction by personal service or otherwise, are and 26 shall forever remain restrained and enjoined from knowingly causing, aiding, 27 assisting or abetting any other person or entity to take any action prohibited by the 1 7. The foregoing paragraphs 5-6 of this Final Judgment and Permanent 2 Injunction shall expire upon expiration of the ’375 Patent. 3 8. Plaintiffs shall take nothing by their Complaint. Judgment is entered 4 against Plaintiffs on their claims and/or defenses for non-infringement of the ’375 5 Patent, for a finding of inequitable conduct against Defendants, and to have Sanchez 6 declared the sole inventor or a co-inventor of the ’375 Patent. 7 9. Pursuant to Rule 11 of the Federal Rules of Civil Procedure, Defendants 8 shall recover from Plaintiffs and their counsel, Frederic M. Douglas, jointly and 9 severally, $103,722.13 in sanctions. 10 10. Pursuant to 35 U.S.C. § 284, Defendants shall recover from Plaintiffs, 11 jointly and severally, $107,620.20, as damages owing to Plaintiffs’ willful patent 12 infringement. 13 11. Pursuant to 35 U.S.C. § 284, Defendants shall also recover from 14 Plaintiffs, jointly and severally, pre-judgment interest on the actual damages amount 15 of $53,810.10, based on the California state statutory rate of 7% per annum and 16 starting from December 24, 2019 until the date this Final Judgment and Permanent 17 Injunction is entered, for a pre-judgment interest award of: 18 a. $13,089.31, if entered on June 15, 2023. 19 b. $13,120.70, if entered on June 18, 2023. 20 c. $13,131.16, if entered on June 19, 2023. 21 d. $13,141.62, if entered on June 20, 2023. 22 e. $13,152.09, if entered on June 21, 2023. 23 f. $13,162.55, if entered on June 22, 2023. 24 See L.R. 58-7. 25 12. Pursuant to 28 U.S.C. § 1961, Defendants shall also recover from 26 Plaintiffs, jointly and severally, post-judgment interest on all amounts awarded in 27 paragraphs 10-11 above, running from the date of this Final Judgment and Permanent 1 || maturity Treasury yield for the calendar week preceding the date of this Final 2 || Judgment and Permanent Injunction, compounded annually, as provided in 28 U.S.C. 3 || § 1961. 4 13. Pursuant to 28 U.S.C. § 1367(c), Defendants’ state law counterclaims are 5 || dismissed without prejudice. 6 14. Defendants are the prevailing parties, and may file with the Clerk an 7 || Application to Tax Costs, along with a Bill of Costs, for an award of costs, pursuant 8 || to Rule 54(d)(1) of the Federal Rules of Civil Procedure and Local Rules 54-1 and 9 || 54-2. 10 15. The Court shall retain jurisdiction to enforce this Final Judgment and 11 {| Permanent Injunction. 12 16. All relief not expressly granted herein is hereby denied. 13 17. This isa FINAL JUDGMENT. 14 15 IT IS SO ORDERED. 16 17 || Dated: June 22, 2023 “forge fo tle HON. GEORGE H. WU 18 UNITED STATES DISTRICT JUDGE 19 20 21 22 23 24 25 26 27 28