After first winning a court battle against a Chinese counterfeiter almost a year ago, Oracle Lighting said it also won an appeal on the case. The court has now ordered the defendant to pay damages and cease selling a product deemed a knock off of Oracle’s Vector LED Grill System.
According to Oracle Lighting’s attorney, the defendant appealed the lower court’s decision claiming they had developed the design prior to Oracle Lighting. However, the defendant withdrew the appeal following a hearing in which the Appeals Court judge told the defendant that their position “can hardly be supported.”
The case began shortly after Oracle Lighting unveiled its Vector LED Grill System at a trade show in 2017, and Chinese knockoffs began appearing, said Oracle.
“After nearly a year of work designing and developing this product, it was honestly heartbreaking to find knockoff products pop up online,” said Justin Hartenstein, Oracle Director of Product Development. “I had seen this happen before to other manufacturers in our industry and decided that we were not going to stand for this blatant design theft. We worked with our IP attorney, Jeffrey Banyas of Edwin A. Sisson, LLC, to develop and execute a strategy to take action against the overseas knockoff producers…”
To win the case, Oracle had to conduct what amounted to a sting operation to obtain evidence.
“…the Chinese court explained that we had to first complete a ‘notarized purchase’, which basically translates to us having to conduct our own sting operation. Our attorney assisted us in hiring private investigators overseas who, after months of investigation, used a cover story to gain access to the factory and, with hidden cameras, obtained evidence of the counterfeit parts,” Hartenstein said.
The operation had to be covert because “these factories producing knockoff goods are often designed to be packed up and moved overnight, making them hard to pin down,” he said.
Once the evidence was presented, a 2-year litigation process began. “This was a massive undertaking for our company but I pursued this in the hope that it provides insight for other small businesses trying to protect their intellectual property rights overseas.”
He added, “.. we are willing to do whatever it takes to prevent the blatant theft of our patented designs.”
Banyas said the sting operation relied on his firm’s network of private investigators and international law firms. “We thank the Suzhou Intermediate People’s Court for giving us a fair day in court and we hope that this decision serves as a strong example to other American companies that they can enforce their Intellectual Property Rights in China…”
The court’s decision included an order for the defendant to immediately cease infringing upon Oracle Lighting’s patent. The court also ordered the defendant pay significant monetary damages and certain court costs. In doing so, the court also rejected the defendant’s arguments that they had come up with the design for this particular grill prior to Oracle Lighting filing its design patent application.
The Vector LED Grill won a 2018 Global Media Award and a runner-up award for the SEMA Best New Exterior Accessory Product of 2019.
I’m sure this cost Oracle far more than they’ll ever receive from the settlement. So thank you, Oracle. If more companies stood up hopefully we’d have fewer knock-offs of every nut and bolt the US makes.