Design Patent Infringement – From Las Vegas Tradeshow to the Chinese Factory

Normally, it is our policy to maintain client anonymity and sanitize case studies accordingly. However, in this instance and given the publicity around the outcome of the case involving all parties, we were given permission to identify our client in this case. 

Client’s Challenge:

China knockoffs of the Oracle Lighting Vector™ Grill were inundating the market. Misled by the substandard copies, customers were submitting complaints when the grill kit did not function as expected. In addition to concerns of patent infringement, the company was losing sales and was concerned about damage to the brand’s reputation. The law firm for Oracle Lighting, Sisson & Banyas Attorneys at Law, LLC, (formerly Edwin A. Sisson Attorneys at Law, LLC), requested our support to investigate a suspected factory and obtain the requisite evidence, including a product sample. The end objective was to file (and win) a civil action for patent infringement in China.

Vaudra’s Solution:

After the grills were featured at the SEMA (Specialty Equipment Market Association) Show in Las Vegas, online posts popped up referencing the copies that were in production. Starting with these leads and others provided by the client, we were engaged to fully identify and engage with the China-based manufacturer, as well as multiple China-based trading companies offering the knock-off grill. These efforts included:

  • Due diligence on initially identified subjects, including a suspect factory, and potential wholesalers, to evaluate viability and best approach to achieve the objectives.
  • Narrow scope and contact prioritized subjects using two-prong approach regarding product availability.
  • Focus on lead subject with highest potential of providing evidential sample in a timely fashion for inevitable civil action.

Secure Evidential Purchase

Utilizing undercover approaches, we made contact with the originally suspected China manufacturer, however it claimed not to have the related grill available. In reaching out to the wholesalers and evaluating viability of each, we developed rapport and narrowed the field to a primary target. After gathered additional intelligence on their operation, our efforts ultimately identified the factory involved in production. As part of undercover dialog, we obtained the necessary documentation and invoice to complete the purchase. Next, we coordinated local retrieval of the product in China using the client’s selected on-ground resources.

Continuing Beyond Initial Objectives

To ensure continuity as preparations were underway to file civil proceedings, we maintained regular contact with the subject to keep a pulse on current inventory levels along with new company and product developments. This intelligence was used to better inform local ground support from Chinese associates.

On-Ground Support

Building on the rapport previously established through undercover dialog and in making the introduction, the factory welcomed the local Chinese associates for a facility tour as planned. In the course of the exchange, the factory owner showcased samples of the infringing product to the local associates for photographs. At that time, the notarized purchase was completed and product retrieved to support the requirements for a civil filing in China.

Client’s Success:

In the summer of 2020, the First Instance Court in China decided the defendant infringed upon Oracle Lighting’s patent. It issued a permanent injunction (a.k.a. exclusion order), prohibiting the Chinese manufacturer from making or selling the infringed products. In addition, the court ordered the manufacturer to pay monetary damages and court fees. 

After the Chinese manufacturer filed an appeal in December 2020, the appeals court judge took the manufacturer to task. The Defendant surrendered its defense and withdrew its appeal, making the First Instance Court’s decision final. 

In addition to the positive outcome with the Chinese Court’s exclusion order and monetary damages award, word spread amongst any other current or would-be infringers and the fake grills disappeared from the market shortly after the ruling was announced.

To read more:

Chinese Court Sides With Oracle Lighting In Case Against Counterfeit Producers In China

Oracle Lighting Takes Legal Action Against Chinese Vector™ Grill Knockoffs

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