Opinion
Case No. 1:03-CV-62TC
December 8, 2003
ORDER GRANTING LIFETIME'S MOTION FOR PRELIMINARY INJUNCTION AGAINST THE GSC "ENDURO 2" PERSONAL TABLE
I. INTRODUCTION
This matter is before the court on Plaintiff Lifetime Products, Inc.'s ("Lifetime") motion for a preliminary injunction to enjoin alleged infringement of United States Patent No. D470,352 ("the `352 patent") by the "Enduro 2" personal table manufactured by Defendant GSC Technology Corporation ("GSC"). Jurisdiction is proper under 28 U.S.C. § 1338(a)-(b), 1331 and § 1332(a)(2).
"Enduro 2," a short-cut term used for purposes of this litigation, refers to the second version of GSC's "Enduro Personal Table." "Enduro 2" is not the commercial name of GSC's product.
Both parties had the opportunity to fully brief the issues, and on October 22, 2003, the parties presented oral argument at a hearing on Lifetime's motion. At the conclusion of the hearing, the court orally issued an order finding that Lifetime was likely to prevail on the issues of validity and infringement, that it had established actual irreparable harm and was entitled to a presumption of irreparable harm, The court further held that the balance of hardships favors Lifetime, and that the public interest favors an injunction against the Enduro 2 personal table. Consequently, the court issued an oral order enjoining GSC, GSC's agents and those acting under GSC's direction or control from making, selling, or importing into the United States the Enduro 2 table, pendente lite. The court required a $20,000.00 security bond, which Lifetime posted on October 22, 2003. The court's injunction order became effective immediately upon posting of the bond by Lifetime. The court now issues its findings of fact and conclusions of law.
II. BACKGROUND
The court previously decided issues very similar to those raised by this present Motion. On June 12, 2003, Lifetime filed a Motion for Temporary Restraining Order and Preliminary Injunction ("previous motion") seeking to enjoin the sale, importation, and distribution of GSC's "Enduro I" personal table. Lifetime based its previous motion on, among other things, the infringement of Lifetime's `352 patent. Through a series of briefs and lengthy hearings, the parties extensively argued the issues of infringement and validity of the asserted patents, which included the issues of claim construction, points of novelty, ornamentality, functionality, application of the ordinary observer test, actual and presumed irreparable harm, and a weighing of the balance of hardships and public interest. In the course of briefing and argument, GSC submitted extensive arguments alleging the invalidity of the `352 patent claim based on functionality, and argued that significant differences existed between the Enduro 1 and the '352 patent design.
"Enduro 1," a short-cut term used for purposes of this litigation, refers to the first version of GSC's "Enduro Personal Table." "Enduro 1" is not the commercial name of GSC's product.
On September 10, 2003, the court issued an order ("Amended Order") granting Lifetime's motion for preliminary injunction. As part of the Amended Order, the court construed the claim of the `352 patent, identifying the points of novelty of the `352 patent and finding that the claimed features of the `352 patent, including the features on the bottom side of the table, are primarily ornamental, not functional, The court therefore found that GSC had not raised any substantial issue relating to the validity of the `352 claim. The issues of claim construction, ornamentality, functionality and validity involved in resolution of the current motion are largely the same as in the previous motion. The court confirms its rulings on claim construction, functionality, ornarnentality and validity as set forth in the Amended Order.
Although the Amended Order also discussed infringement of Lifetime's `994 patent and copyrights, the present motion is only directed to alleged infringement of the `352 patent, The discussion in this Order is directed to previous findings regarding the `352 patent only.
The Amended Order also dealt extensively with the issue of infringement by the Enduro 1 table. The court found that the Enduro 1 table includes substantially all of the points of novelty of the claim of the `352 patent and that under the ordinary observer test, an ordinary observer would be deceived into purchasing the Enduro 1 table, believing it to be the claimed table. It is undisputed that the Enduro 2 table is identical to the Enduro 1 table except for two small differences in one end of the underside of the table. The controlling question, then, is whether the changes made to the Enduro 2 table are sufficient to change the court's findings of infringement by the Enduro 1 table. Although GSC raises several new issues, examination of the record leads to the conclusion that the changes are insignificant and do not change the conclusion of infringement, for the reasons set forth below.
This Order presumes familiarity with the Amended Order on the Enduro 1 table. The court will not revisit or re-state the analysis and conclusions of that order, except to confirm that they are still valid and govern the common aspects of the two motions. As a result, this Order will be limited to addressing the new issues raised by GSC not previously addressed in the court's Amended Order.
III. LEGAL STANDARDS GOVERNING LIFETIME'S MOTION
An application for preliminary injunction predicated on patent infringement involves substantive issues unique to patent law, and is therefore controlled by the law of the United States Court of Appeals for the Federal Circuit. Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1451 n. 12 (Fed. Cir. 1988). `The decision to grant a preliminary injunction is within the discretion of the district court." Purdue Pharma L.P. v. Boehringer Ineelheim GMBH, 237 F.3d 1359, 1363 (Fed. Cir. 2001). "As the moving party, [Lifetime is] required to establish its right to a preliminary injunction in light of four factors: `(1) a reasonable likelihood of success on the merits; (2) irreparable harm if the injunction were not granted; (3) the balance of the hardships and (4) the impact of the injunction on the public interest." Purdue Pharma, 237 F.3d at 1363 (internal citations omitted).
IV. LIFETIME HAS ESTABLISHED A LIKELIHOOD OF SUCCESS ON THE ISSUES OF INFRINGEMENT AND VALIDITY OF ITS `352 PATENT.
A. Claim Construction
Before addressing the issue of infringement, the court must construe the claim of the `352 patent. The court adopts the claim construction in the Amended Order, including its findings on points of novelty, ornamentality, and functionality. (Amended Order at 3-9.)
B. Infringement by GSCs Enduro 2 Table
Infringement of a design patent requires a two step analysis. First, it must be determined whether the accused design incorporates substantially the same points of novelty as the claimed design. Goodyear Tire Rubber Co. v. Hercules Tire Rubber Co. Inc.. 162 F.3d 1113, 1118 (Fed. Cir. 1998). Second, the fact-finder must determine whether the patented design as a whole is substantially similar in appearance to the accused design. Oddzon Products. Inc. v. Just Toys. Inc., 122 R3d 1396, 1405 (Fed. Cir. 1997).
1. Points of Novelty
The inclusion of points of novelty in the accused device need not be complete. All that is required is that substantially the same points of novelty be found in the accused device, See Goodyear, 162 F.2d at 1118-19. The court previously found that the Enduro 1 table includes substantially all of the points of novelty of the `352 patent. The Enduro 2 table includes all of the same points of novelty relied on by the court in finding infringement by the Enduro 1 table, with two small exceptions. GSC changed the end of the underside of the Enduro 2 table opposite the side port to eliminate a cavity (see feature 6 of Figure 3 of the `352 Patent Depicting Underside of Table, infra) and in the process subsumed the raised truncated triangle (see feature 9 of Figure 3 of the 4352 Patent Depicting Underside of Table, infra). The differences between the Enduro 1 and Enduro 2 tables are shown below:
ENDURO 1 PERSONAL TABLE, ENDURO 2 PERSONAL TABLE
The court has already found that the Enduro 1 table includes substantially all of the points of novelty of the `352 patent. The differences between the Enduro 1 and Enduro 2 tables are insignificant.
The Enduro 2 table includes substantially all of the points of novelty of the `352 patent. The following figures demonstrate the substantial correspondence between the points of novelty of the `352 patent and the Enduro 2 table.
UNDER SIDE OF THE ENDURO 2 TABLE
FIGURE 3 OF THE `352 PATENT (DEPICTING UNDER SIDE OF TABLE) (with highlights and labeled features)
FIGURE 1 OF THE `352 PATENT (Top)
TOP OF ENDURO 2 TABLE
FIGURE 4 OF THE `352 PATENT (SIDE END)
SIDE END OF THE ENDURO 2 TABLE
The conclusion that the modifications made to the Enduro 2 table do not take it outside the scope of the `352 claim is confirmed by reference to other drawings of the `352 patent. Figure 10 of the `352 patent (see above) shows a configuration of the end on the under side of the table opposite the side port that is identical to the modifications made to the Enduro 2 table.
FIGURE 10 OF THE `352 PATENT (UNDER SIDE OF TABLE)
GSC argues that it is legally improper to compare the Enduro 2 table to Figure 3 of the `352 patent for some features and to Figure 10 for other features. That point is irrelevant, because the court's conclusions as to points of novelty are independent of Figure 10 of the `352 patent. Additionally, GSC's argument is incorrect as a matter of law, The U.S. Patent Trademark Office's Manual of Patent Examining Procedure ("MPEP") expressly states that
[i]t is permissible to illustrate more than one embodiment of a design invention in a single application. However, such embodiments may be presented only if they involve a single inventive concept and are not patentably distinct from one another.
U.S. Patent Trademark Office, Manual of Patent Examining Procedure § 1504.05(II)(A) ("Multiple Embodiments — Difference in Appearance") (8th ed. 2003) (internal citation omitted). Because design patents are limited to a single claim, the illustration of different embodiments can only serve to give scope to the "single inventive concept" of the claim, Here, the Patent Office granted Lifetime a claim including within its scope tables having slightly different design features, which includes the features of Figures 3 and 10. The Enduro 2 table falls squarely within the scope of the allowed claim. The few differences identified by GSC in the Enduro 2 table are minor and do not prevent a finding that the Enduro 2 table incorporates substantially all of the points of novelty of the `352 patent.
2. Ordinary Observer
"[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.'' Gorham Co. v. White. 81 U.S. (14 Wall.) 511, 528 (1871). "The patented and accused designs do not have to be identical in order for design patent infringement to be found. It is the appearance of a design as a whole which is controlling in determining infringement." Oddzon, 122 F.3d at 1405 (internal citations omitted). u[M]inor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement." Litton Sys. Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984), overruled in part on other grounds by Two Pesos. Inc. v. Taco Cabana. Inc., 505 U.S. 763 (1992); see also Payless Shoesource. Inc. v. Reebok Int'l Ltd. 998 F.2d 985, 991 (Fed. Cir. 1993) (quoting Litton Sys.)
The court has already found that an ordinary observer viewing the Enduro 1 table top as a whole would be deceived by the ornamental features of that table top into purchasing the Enduro 1 table, believing it to be the `352 patented table top. (Amended Order at 14-17.) Because the
Enduro 2 table is the same as the Enduro 1 table with the slight differences referenced above, the same conclusions reached in the Amended Order would control here, unless the slight changes in the Enduro 2 are so significant that they would tip the balance so that an ordinary observer would not be deceived. The modifications to the Enduro 2 table would not change the fact that an ordinary observer would be deceived into believing it to be the `352 patented design.
While a side by side comparison of the claimed and accused table tops is a more stringent test than that required by the Federal Circuit, such a comparison demonstrates beyond doubt the substantial similarity between the Enduro 2 table top and the claimed table top:
'352 PATENT TABLE: GSC ENDURO 2 TABLE:
It is clear that an ordinary observer would confuse the Enduro 2 and claimed table tops. Such an observer would be deceived into purchasing the Enduro 2 table believing it to be the claimed table top.
C. Lifetime Has Established a Likelihood of Success on the Merits of the Validity Issue.
GSC raises many of the same validity arguments in connection with this motion that it raised in connection with the proceedings related to the Enduro 1 table. The court rejects those arguments for the same reasons they were rejected in the Amended Order. (See Amended Order at 18-19.) Among other things, the court specifically confirms its identification of the points of novelty of the `352 patent and the fact that those points of novelty are primarily ornamental, not functional. The court will now address the additional validity issues raised by GSC.
1. Effect of the `121 Publication
Lifetime is the assignee of a published utility patent application, Pub. No. US 2003/0164121 Al, published on September 4, 2003 ("the `121 publication") (attached as Ex. 2 to GSC's Resp. to Lifetime's Mot. for T.R.O. and Prelim. Inj. of the GSC "Enduro 2" Personal Table). The `121 publication is directed to various aspects of the Lifetime personal table depicted in the `352 patent. GSC argues that the fact that Lifetime has claimed utility patent protection for various aspects of the same table depicted in the `352 patent renders the claimed design functional, and hence invalid. GSC contends that, because some of the features that constitute points of novelty in the `352 patent also are claimed to have utility in the `121 publication, those features cannot be ornamental and hence cannot be the subject of a design patent.
Contrary to GSC's contention, the existence of a utility application does not preclude design patent protection. An inventor may obtain both design and utility patent protection on a single device. See Elmer v. ICC Fabricating. Inc. 67 F.3d 1571, 1573 (Fed. Cir. 1995);Avia Group Int'l, Inc. v. L.A. Gear California. Inc., 853 F.2d 1557, 1563 (Fed. Cir. 1988). Under the patent laws, design and utility patents protect different aspects of an invention. Gross v. Norris, 18 F.2d 418, 420 (D. Md. 1927), rev'd on other grounds. 26 F.2d 898 (4th Cir. 1928) (clarifying that "a design patent and a mechanical patent relate to different subject matter. The first pertains to the appearance while the second relates to the mechanical structure of a device, and it is well settled that a design and a mechanical patent covering the same article of manufacture, [sic] may coexist."). A "distinction exists between the functionality of an article or features thereof and the functionality of the particular design of such article. . . . Were that not true, it would not be possible to obtain . . . both design and utility patents on the same article." See Avia Group Intl. Inc., 853 F.2d at 1563.
Elements of a design patent may be functional, and a court must maintain the distinction "between the ornamental design and the article in which the design is embodied. The design for the article cannot be assumed to lack ornamentality merely because the article of manufacture would seem to be primarily functional." U.S. Patent Trademark Office, Manual of Patent Examining Procedure § 1504.01(c) (8th ed. 2003) (emphasis added); see also Donald S. Chisum, Chisum on Patents § 1-04[2][d] (Matthew Bender 2003).
The patent statute states that "[w]hoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor. . . ." 35 U.S.C. § 171. "[T]he fact that the article of manufacture serves a function is a prerequisite of design patentability, not a defeat thereof," Hupp v. Siroflex of America, Inc., 122 F.3d 1456, 1460 (Fed. Cir. 1997) (emphasis added). The Federal Circuit recently restated the test for functionality inRosco. Inc. v, Mirror Lite Co. 304 F.3d 1373 (Fed. Cir. 2002). The Federal Circuit held that it is only when the appearance of an article of manufacture is dictated solely by function that the feature is functional, not ornamental. Id. at 1378.
This court has already found that the novel design features of the claim of the `352 patent are primarily ornamental, not functional. (Amended Order at 9.) That conclusion was based on the undisputed fact that, while the claimed features concededly perform certain functions, there are unquestionably other structures having a different appearance that are capable of performing the same functions. (Id. at 7-8.) Accordingly, the appearance of the claimed features of the `352 patent is ornamental because it is not dictated entirely by function. (Id.)
The standard Lifetime must meet for issuance of a preliminary injunction is likelihood of success. Where a design is "likely ornamental, not functional,"Rosco. Inc. 304 F.3d at 1378, that is sufficient to establish the likelihood of success required for a preliminary injunction. The * 121 publication of Lifetime's utility patent application does not render the features of the `352 patent functional and does not affect the validity of the `352 patent claim.
2. Double Patenting
GSC also claims that the 4352 patent is invalid on the ground of double patenting. In a nutshell, GSC argues that the features on the underside of the "352 table top are purely functional, and therefore cannot be claimed features. GSC then argues that if the features on the underside of the `352 table top are ignored, another of Lifetime's design patents, U.S. Patent No. D 469,996 ("the `996 patent"), is identical to the claim of the `352 patent According to GSC, if two patents claim the same subject matter, the later of the two design patents, here the `352 patent, is invalid for double patenting. GSC cites In re Vogel 422 F.2d 438, 441 (C.C.P.A, 1970), in support of its position.
GSC's double patenting argument incorrectly assumes that the features on the underside of the `352 table top are functional, not primarily ornamental, an argument this court has previously rejected. When the scope of the `352 patent is properly construed to include the features on the underside of the table top, the scope of the `352 patent and the `996 patent are not identical; indeed, they are significantly different. GSC's double patenting defense does not raise a substantial issue as to the validity of the `352 patent.
3. The Syroco Table Prior Art
GSC contends that an outdoor table sold under the name "Syroco" ("Syroco table") serves as prior art to the `352 patent. GSC asserts that the curved side design of the Syroco table is the same as the curved side feature of the claim of the `352 patent. It is not clear exactly what GSC believes is the effect of the Syroco table on the validity of the `352 patent. The Syroco table does not anticipate the `352 claim, as it does not identically disclose all of the features of the claim. Similarly, GSC has not produced any evidence of other references which in combination with the Syroco table might render the `352 claim obvious, nor has GSC offered any evidence of a suggestion to combine other references with the Syroco table so as to support of conclusion of obviousness. The Syroco table does not raise a substantial issue as to the validity of the `352 patent.
V. IRREPARABLE HARM
"Irreparable harm is presumed when a clear showing of patent validity and infringement has been made. `This presumption derives in part from the finite term of the patent grant, for patent expiration is not suspended during litigation, and the passage of time can work irremediable harm.'" Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001) (internal citations omitted). Moreover, "[i]t is well-settled [sic] that, because the principal value of a patent is its statutory right to exclude, the nature of the patent grant weighs against holding that monetary damages will always suffice to make the patentee whole." Hybritech, 849 F.2d at 1456-57. Lifetime has made a strong showing that it is likely to succeed on the merits of its patent infringement claims and is entitled to a presumption of irreparable harm. Purdue Pharma, 237 F.3d at 1363.
Beyond the presumption of irreparable harm, the Federal Circuit has expressly recognized that price erosion and loss of market share and good will constitute irreparable harm justifying a preliminary injunction.See Polymer Tech. Inc. v. Bridwell, 103 F.3d 970, 975-76 (Fed. Cir. 1996) ("Years after infringement has begun, it may be impossible to restore a patentee's . . . exclusive position by an award of damages and a permanent injunction. Requiring purchasers to pay higher prices after years of paying lower prices to infringers is not a reliable business option."); Genentech. Inc. v. Novo Nordisk A/S. 935 F. Supp. 260, 280-81 (S.D.N.Y. 1996), rev'd on other grounds. 108 F.3d 1361 (Fed. Cir. 1997) (the loss of goodwill and market share presents risk of irreparable harm).
GSC argues that Lifetime no longer sells a table having the features of the `352 patent, and therefore cannot show irreparable harm. GSC citesReebok Int'l Ltd., v. J. Baker. Inc., 32 F.3d 1552, 1557 (Fed. Cir. 1994) as support. The court disagrees.
The facts of this case are different from the facts inReebok. In Reebok, the defendant had stopped making the accused shoes before the patent issued, and only a limited number remained in inventory. Similarly, before the patent issued, the patent owner had stopped selling shoes within the scope of the design patent. Further, the defendant established that the patent owner did not have any of the shoes with the patented design in sales channels. Last, there is no indication in the Reebok opinion that the patent owner sold any product that competed with the accused product after the patent owner stopped selling the shoes covered by the patent.
In Reebok, the amount of sales of the infringing shoes was capped because the defendant stopped making the infringing shoes before the patent even issued. Here there is no cap, because unless enjoined, it is likely that GSC will continue to produce and sell as many of the infringing Enduro 2 tables as it can. In Reebok, there was a showing that the patent owner did not have any of the patented shoes in the market. Here, Lifetime still has the patented table in its own inventory as do its customers. (Dep. of Elmo V. Rhoton, Oct. 2, 2003, at 22-24.) In Reebok, there was no showing that the patent owner competed with the infringing shoe at all. Here, Lifetime competes for sales of personal tables with GSC's older and newer versions of the personal table. Because of the significant factual differences between this case and Reebok. the Reebok rationale does not assist GSC in its attempt to show no irreparable harm.
Further, the Federal Circuit's opinion in Rite-Hite Corp. v. Kelley Co. Inc., 56 F.3d 1538, 1547-48 (Fed. Cir. 1995) (en bane), instructs that, because Lifetime is competing with GSC for sales of personal tables, and because sales of the Enduro 2 table adversely impact Lifetime's ability to sell its own tables, Lifetime is suffering irreparable harm. In Rite-Hite, as here, the patent owner sold some products that were covered by its patent and others that were not. Both products competed with the infringing product. The patent owner argued that it should be entitled to lost profits on the non-covered product, because those profits were lost by reason of the infringement of the defendant. Rite-Hite, 56 F.3d at 1543. The defendant argued that because the patentee did not sell the claimed invention, it could not recover lost profits related to products not covered by the patent in the suit. The Federal Circuit disagreed, finding that because of the infringing sales, the patent owner was deprived of the ability to sell its competing, non-covered product. Id. at 1546-48. The harm recognized in Rite-Hite is the same harm being suffered by Lifetime. GSC's infringing sales are depriving Lifetime of the ability to sell its own tables, regardless of whether those tables are within the scope of the claims. GSC's conduct has violated Lifetime's right to exclude, and the resulting harm is in fact irreparable.
The GSC Enduro tables compete directly with the patented Lifetime personal folding tables, which are sold through a number of retailers including Sam's Club, Wal-Mart and Costco. (Decl. of Elmo V. Rhoton in Supp. of PL's Mot. for TRO and Prelim. Inj. ("Rhoton Dec!."), ¶¶ 21-23.) Lifetime has adequately established actual irreparable harm to warrant issuance of a preliminary injunction against the Enduro 2 personal table,
VI. PUBLIC INTEREST
"Generally, it may be said protecting patents from would-be infringers is always acting in the public interest." Pittway v. Black Decker, 667 F. Supp. 585, 593 (KD. Ill. 1987), For the same reasons identified in the court's Amended Order, the court finds that the public interest will be served by enjoining GSC from making, selling, and importing the Enduro 2 personal table.
VII BALANCE OF HARDSHIP
A patent holder who is denied an injunction suffers serious delay in the exercise of the limited-in-time right to exclude, which constitutes a serious hardship. Illinois Tool Works. Inc. v. Grip-Pak. Inc., 906 F.2d 679, 683 (Fed. Cir. 1990). Any overall loss GSC may claim "merits little equitable consideration and is insufficient to outweigh the continued wrongful infringement" of Lifetime's products. See Autoskill Inc. v. Nat'l Educ. Support Sys., Inc., 994 F.2d 1476, 1498 (10th Cir. 1993). For the same reasons identified in the court's Amended Order, the court finds that the balance of hardships weighs in favor of Lifetime and GSC is properly enjoined from continuing its sale of the infringing Enduro 2 table.
VIII. BOND
Rule 65 of the Federal Rules of Civil Procedure provides that no injunction shall issue without security. Fed.R.Civ.P. 65(c). The court has "wide discretion" in setting the amount of the preliminary injunction bond. Dominion Video Satellite. Inc. v. EchoStar Satellite Corp., 269 F.3d 1149, 1158 (10th Cir. 2001). Where the defendant fails to present evidence on the proper amount of the bond, requiring a nominal bond is not an abuse of discretion. Equifax Servs., Inc. v. Hitz. 905 F.2d 1355, 1362 (10th Cir. 1990) (upholding district court decision to enjoin defendant from violating non-competition agreement). GSC has not put forth any evidence on the appropriate amount of security. The court therefore imposes a nominal bond amount of $20,000.00. Lifetime posted the required $20,000.00 bond on October 22, 2003. This injunction was effective immediately upon posting of the bond by Lifetime.
At the hearing, the court granted GSC leave to seek modification of the bond amount. Soon thereafter, GSC filed a Motion for Additional Security, The court will address that motion in a separate order.
IX. SCOPE OF THE INJUNCTION
For the same reasons identified in the Amended Order, it is just and reasonable to require GSC to notify its customers of the issuance of this Order, to require GSC to offer to purchase Enduro 2 tables from its customers, and to provide notice to its customers as set forth hereinafter. (See Amended Order at 31-33.)
IT IS HEREBY ORDERED, ADJUDGED AND DECREED AS FOLLOWS:
1. GSC and its agents, servants, officers, employees and those acting under GSC's direction or control are enjoined as follows:
a. GSC is enjoined from making, selling, and offering to sell in the United States and importing into the United States the Enduro 2 tables and any colorable imitation thereof, pending the entry of final judgment in this action.
b. As of the date of this Order, GSC is ordered to provide notice immediately to Staples and all other purchasers from GSC of Enduro 2 tables ("Other Enduro 2 Purchasers") of the entry and terms of this injunction. Said notice shall give notice of this court's preliminary findings of infringement and validity and shall state that if those findings do not change at trial, all those who sell and offer to sell the Enduro 2 tables in the United States or its territories will be direct infringers.
c. On or before fourteen calendar days from the date this Order is signed, GSC is ordered to offer in writing to purchase all Enduro 2 tables sold to Staples and Other Enduro 2 Purchasers at the purchase price such purchasers purchased the aforementioned tables from GSC, plus all costs of removing the tables from inventory and costs of shipping the tables to GSC. The offer to purchase Enduro 2 tables shall be in the form set forth in the Notice to Purchasers attached as Exhibit A.
2. GSC is enjoined from further acts of infringement of the `352 patent.
3. The terms of this Order are effective as of the date of this Order.
NOTICE
You are hereby notified that the Honorable Tena Campbell, U.S. District Judge for the District of Utah, has entered a preliminary injunction prohibiting the sale, offer for sale, and manufacture in the United States of the enjoined Enduro Personal Table and any colorable imitation thereof by GSC Technology Corporation ("GSC"), GSC's agents and those acting under their direction or control. This injunction is in addition to Judge Campbell's previous injunction prohibiting the sale, offer for sale, manufacture and use in the United States of an earlier version of the Enduro table. The injunction also prohibits the importation of the Enduro Personal Tables into the United States, its possessions or territories. A copy of the injunction is attached hereto as Exhibit A. Photographs of the enjoined Enduro Personal Table are attached hereto as Exhibit B.The injunction entered by Judge Campbell is based on a preliminary finding that the Enduro Personal Tables infringe a U.S. patent owned by Lifetime Products, Inc. and that that patent is not likely to be found invalid. If those findings do not change at trial, all those who sell or offer such tables for sale in the United States or import the Enduro Personal Tables into the United States will be direct infringers of the Lifetime patent,
GSC hereby offers to purchase all enjoined Enduro Personal Tables in your possession, control or inventory at the purchase price you purchased such tables from GSC, plus all reasonable costs of removing the tables from inventory and costs of shipping the tables to GSC, Tables may be returned to the GSC Forwarding Company at 750 Route 9, Champlain, N.Y., 12919, Payment of the cost of such tables and related costs will be made within five (5) days of GSC's receipt of the tables in Canada. GSC encourages you to return the enjoined Enduro Personal Tables to it on these terms.
GSC is prohibited from manufacturing, selling or offering for sale the enjoined Enduro Personal Tables in the United States, its possessions and territories during the pendency of the litigation with Lifetime and may not sell or offer such tables for sale to you during that time.
GSC is prohibited from offering you any incentive, present or future, to sell the enjoined Enduro Personal Tables, and from encouraging you to do anything other than sell the tables back to GSC, GSC Technology Corporation