By SEMA Editors
manufacturer of imitation products for its Vector LED Grill System.
Oracle Lighting has announced that it has won its legal battle against a Chinese-based manufacturer of imitation products after a failed appeal process by the defendant. According to Oracle Lighting’s attorney, the defendant appealed the lower court’s decision in a last-ditch effort to circumvent Oracle Lighting’s patent based on their argument that they had developed the design prior to Oracle Lighting. However, the defendant withdrew the appeal following an appeal hearing in which the Appeals Court judge told the defendant that their position “can hardly be supported”.
Shortly after Oracle Lighting unveiled its Vector LED Grill System at a trade show in 2017, Chinese knockoffs began appearing. “After nearly a year of work designing and developing this product, it was honestly heartbreaking to find knockoff products pop up online,” explained Justin Hartenstein, director of product development at Oracle Lighting. “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, Attorney at Law LLC, to develop and execute a strategy to take action against the overseas knockoff producers. I knew it would not be easy but I had no idea where this journey would take us.”
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 to Oracle Lighting, and ordered that the defendant pay certain court costs associated with the litigation. 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.
“In order for us to file litigation against the infringing company, 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,” Hartenstein continued. “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. The entire 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. Once our legal team in China presented this evidence to the judge, the court issued a demand to the factory to shut down production and the nearly two-year-long 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. It was not easy but these results demonstrate that even overseas counterfeiters can be held accountable. Oracle Lighting takes our intellectual property rights very seriously and we are willing to do whatever it takes to prevent the blatant theft of our patented designs.”
Banyas explained that Oracle Lighting asked his firm to develop and implement a plan to protect its products against overseas knockoffs and counterfeits. “This was no easy task as those who deal in illegal products often take extensive measures to insulate themselves from liability and accountability,” he explained. “Through our firms’ extensive network of private investigators and international law firms, we identified the factory making the knockoff products and obtained all of the evidence we needed to enforce Oracle Lighting’s Intellectual Property Rights. 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, and they do not simply have to accept lost market share to Chinese knockoffs and counterfeit products as an inevitable cost of doing business. I applaud the folks at Oracle Lighting for bucking that trend, and I am proud to have spearheaded the efforts that lead to these successful results.”
Designed for use on the Jeep Wrangler, Oracle Lighting’s Vector Grill has earned the company awards from SEMA, including a 2018 Global Media Award and a runner-up award for the SEMA Best New Exterior Accessory Product of 2019.