Free Consent Judgment - District Court of Delaware - Delaware

Case 1 :04-cv-01471-JJF Document 96 Filed 08/O2/2006 Page 1 of 4
CONSENT JUDGMENT
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
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THE SM COMPANY, a Delaware corporation )
3MINNOVA1`IVE PROPERTIES COMPANY, )
a Delaware Corporation; )
and Mz-. JEAN SILVESTRE. )
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Plninli.I'l's, ) Civil Action No. U4-l=I7I—JJF
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BOSS AUTO IMPORT, S.A. er ni )
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Delcndants. )
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CONSENT JUDGMENT BETWEEN PLAINTIFFQ AND
DEFFZNlIAN“TSlN1`ERTAPE POLYMER GROUP, INC., INTERTAPE l’OLYi'vIEI{ COILP., AND
IPG ADMlN1S‘1`RA'I‘I}’E SERVICES, INC.
The parties having considered the facts and applicable law and having; agreed to the
entry of this Judgment, it is El1&1'€fD1`& iound, adjudged, and decreed as follows:
FINDINGS OF FACT
1, Plaintiff` 3ivI Company ("3?l·I") is a Delaware corporation having ics principal `
place of business at BM Center, S1., Paul, Minnesota 55lUS-3427. BM Company is in the
business oi` manufactming and selling a wide vm·iet5· of consumer, commercial and
indust.1·ial products, including products for tho aulsomotive .El.fl”.E1'T1'lE`l1'l·{BiZ, such as foam
masking tape.
2. Plaintiff SM Innovative Properties Company ("3ivI IPC") is a Delaware
corporation having its principal place of business at BM Center, St. Paul, Minnesota 55133-

Case 1:04-cv-01471-JJF Document 96 Filed 08/O2/2006 Page 2 of 4
34*2.7. 3M IPC ie a wholly owned subsidiary of SM and is in the business of obtaining,
managing and licensing intellectual property.
3. l’laintit"l`Jean Siloeatre ("Silvestre") is an individual living at Grand Enclos 2t
¢11BO Hamoir, Belgium.
#1. Defendant lntertape Polymer Group, Inc- is a corporation organized under =
the lawn of Canada with its principal place of business in Canada located at 110 East V
Montes de Liesse, Montreal, Quebec H4T IN4 and its principal place of business in the
United States located at 3El¤l'? Cortez Road West., Bradenton, FL. 342lO. l
Defendant lntertepe Polymer Corp. is a corporation organized under the laws l
ot` l)elai·.*ai·e with its principal place of business located at 3647 Cortez Road West, Suite
1[l?., Bradenton, Fl. 34210.
6. Defenda nt lPG Adtninistrative Services, inc. is a corporation organized under l
the laws of Delaware with its principal place ol` business located at 3647 Cortez Road West, l
Suite 102, Bradenton, FL I·l4210. lntertape Polymer Group, inc., lntertape Polymer Corp.,
and IPC Jtdniinistmtive Services, [nc. shall be referred to collectively herein as "ll’(_l" or
“l)el`ent.lants"; however, this relerence is for convenience only in this Consent Judgment.
and shall not he construed to mean that any ol' these entities is the alter ego of the other.
7. . On November 9, 1993, UnitedStates Patent No. 5,2.60,0-DT ("`the ‘D97 patent")
entitled "Method for Masking a Surface by Adhesive Application of an `Eloneatecl,
Cornpreesible, Windowless Custtionf was issued to J can Silvestre, who owns all right, title
and interest in the patent. Ciivl is the exclusive licensee of the ‘09'7 patent.
8. Plaintiffs brought this action against IPS and others for alleged infringement
of the `OFJ7 patent. I
9. IPG has used, imporlzed, offered for sale andfor sold products that infringe
one or more claims of the ‘O9'7 patent.
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Case 1:04-cv-01471-JJF Document 96 Filed 08/O2/2006 Page 3 of 4
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tl). Any Finding of Fact which is deemed to be a.Conelusion of Law is hereby l
adopted as such. }
ll. The Parties seelt to terminate this litigation through this Consent Judgment.
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COi“·lCLU§1ONS OF LAW
12. This is an action for patent infringement arising under the patent laws of the
United States, 35 U.S.C. § 271 et seq. This Court has jurisdiction over the subject matter of
this action pursuant to 28 U.S.C. §§ H13! and 1338(zi).
13. 'l"his Court has personal jurisdiction over the parties. and venue is proper in
this district pursuant to 28 U-S.C. § l4DD(b).
l=l. All the claims of the 'O97 patent are valid and enforceable with regard to any

and all past, present and future foam masking tape products made, used, sold or offered for
sale by IPG that are within the scope of protection conferred by any and all the claims of
the ‘O9'7 patent.
]5_ IPG has infringed (directly, contributorily, or by intlucement) the `D97 patent
by its importation and sale of foam masking tape under the ShieldFsst“‘ nine.
IG. The parties intend and this Court explicitly orders that the issues of
infringement: are hereby finally concluded and disposed of and that this Consent Judgment
bars Delbndants from contending in this action or any other proceeding that the products in
suit and other products that are no more than merely colurably different do not infringe the
`D9'? patent.
17. This Judgment shall finally conclude and dispose of this litigation as to IPC,
and shall be entitled to issue and claim preelusion effect in future litigation or Patent Office
proceedings related to the *097 patent.
18. Any Conclusion of Law which is deemed to be a Finding of Fact is hereby
adopted as such.
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ceeeqmit-ev-o1.4}i;il.lF Document as Filed 08/02/2006 Page 4 of 4
lT ISIHEREBY FOUND. ORDERED, ADJ UDGED, AND DECREED THAT: _
A. IPG, including its ofiicers and directors, agen ts, servants, employees,
attorneys, and all persons in active concert or participation with them who receive actual
notice of this consent order are hereby enjoined from the sale of foam masking tape sold
under the Shieldliastm name or any other products no more than merely colorably diflierent
from the Shieldliastw product and any other acts that directly or indirectly infringe any `
claim ofthe 'OST patent, and from causing, inducing or contributing to the infringement of
that patent by others, unless and until. the ‘UEi'r' patent expires or has been adjudicated or '
found invalid or enforceable by an .~\.t·Lic1e lll Court of competent jurisdiction, provided such - l
finding or judgment has become final and non-t·evien·nble. _ l
B, This Court retains exclusive jurisdiction of this action for the purpose oi' _
insuring compliance with this Judgment and enforcement ofthe Settlement Agreement. :
C. No appeal shall be taken by any party from this Consent Judgment, the right
to appeal being expressly waived hy all parties. l Q
D. This Consent Judgment shall finally conclude and dispose of all claims and l
counterclaitns of all parties with prejuciice.
E. Each party shall bear its own costs and attorneys fees.
F. Final Judgment shall be entered hereto, l`ori;hwith, without further notice.
The Clerk is directed to enter this final Consent Judgment forthwith.
1TlS SO ORDERED. I
netett: _§ 7dQ@_
4 Honorublc I0scphJ,Faman J. _
United States District Judge
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