Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA1003266
`
`Filing date:
`
`09/19/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92064459
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Defendant
`TASER International, Inc.
`
`RYAN T SANTURRI
`ALLEN DYER DOPPELT & GILCHRIST PA
`255 SOUTH ORANGE AVENUE, SUITE 1401
`ORLANDO, FL 32801
`UNITED STATES
`rsanturri@allendyer.com, mleavy@allendyer.com
`407-841-2330
`
`Other Motions/Papers
`
`Ryan T. Santurri
`
`rsanturri@allendyer.com, mleavy@allendyer.com
`
`/Ryan T. Santurri/
`
`09/19/2019
`
`Attachments
`
`Status Report and Exs.pdf(464279 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Phazzer Electronics, Inc.
`
`
`
`
`
`
`v.
`
`
`
`
`TASER International, Inc.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner,
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`
`
`
`Registrant.
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`
`
`
`
`
`
`
`
`
`
`
`
`Cancellation Action No.: 92064459
`Involving U.S. Registration No. 4,423,789
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`REGISTRANT’S STATUS REPORT ON RELATED PROCEEDINGS
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`Registrant TASER International, Inc. (“Registrant”), now known as Axon Enterprise, Inc.,
`
`
`
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`hereby provides the following status report to the Board.
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`PROCEDURAL HISTORY
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`1.
`
`On October 28, 2016, the Board entered an Order staying these proceedings
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`pending the first-filed litigation between the parties in the United States District Court for the
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`Middle District of Florida in Case No. 6:16-cv-00366-PGB.
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`2.
`
`On July 21, 2017, the District Court granted TASER’s Motion for Sanctions and
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`entered both a Default Judgment and Permanent Injunction (Doc. 183, Ex. A attached)1
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`(“Judgment/Injunction Order”). Pertinent to this proceeding, the Court found: “Taser’s U.S.
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`Trademark Registration No. 4,423,789, issued on October 29, 2013, for the non-functional shape
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`of cartridges used to launch darts, is deemed valid and enforceable, not generic, functional, or
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`merely descriptive, and infringed by Phazzer.” The Court’s Order also directed that “Phazzer shall
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`not challenge or continue to challenge the validity or enforceability of the ‘789 Registration in any
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`manner in any forum, including the USPTO.”
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`
`1 Doc. Nos. are to the District Court’s docket.
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`

`

`2
`On August 10, 2017, Phazzer filed its notice of appeal as to the Judgment/Injunction
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`3.
`
`Order (Doc. 192) (U.S. Fed. Circuit Case No. 17-2637).
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`4.
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`On April 4, 2018, the Court entered its damages accounting and fee award in favor
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`of TASER based on Phazzer’s willful infringement and intentional disregard of Court Rules and
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`Orders throughout the litigation (Doc. 267) (“Damages Order”).
`
`5.
`
`On April 30, 2018, Phazzer filed its notice of appeal as to the Damages Order (Doc.
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`269) (U.S. Fed. Circuit Case No. 18-1914).
`
`6.
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`On May 4, 2018, the Court entered an Order holding both Phazzer and its executive
`
`Steven Abboud (“Abboud”) in civil contempt of the Injunction (Doc. 271) (“Contempt Order”).
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`7.
`
`On May 11, 2018, the District Court entered final judgment in favor of TASER
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`(Doc. 273).
`
`8.
`
`On June 4, 2018, Phazzer filed a notice of appeal as to the Contempt Order (Doc.
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`282) (U.S. Fed. Circuit Case No. 18-2059).2
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`9.
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`On October 26, 2018, the Federal Circuit Court of Appeals affirmed “in its entirety”
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`the District Court’s Judgment and Injunction in favor of TASER in appeal No. 17-2637 (Doc. 300,
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`Ex. B attached).
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`10.
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`On January 11, 2019, the mandate issued on appeal No. 17-2637 (Doc. 316), after
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`the denial of Phazzer’s Petition for Rehearing En Banc of the Judgment/Injunction Order.
`
`
`2 Abboud similarly appealed the Contempt Order pro per (Doc. 283) (U.S. Fed. Circuit Case No.
`18-2057), which was dismissed by the Federal Circuit for lack of standing on July 23, 2019 (Doc.
`349), with the mandate issuing on August 30, 2019 (Doc. 354).
`
`
`
`

`

`3
`On July 23, 2019, the Federal Circuit affirmed the District Court’s Damages Order
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`11.
`
`in appeal No. 18-1914 (Doc. 351). The mandate issued on August 30, 2019 (Doc. 355), after
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`denial of Phazzer’s Petition for Panel Rehearing.
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`12.
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`On July 23, 2019, the Federal Circuit affirmed the District Court’s Contempt Order
`
`in appeal No. 18-2059 (Doc. 350). The mandate issued on August 30, 2019 (Doc. 356), after
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`denial of Phazzer’s Petition for Panel Rehearing.
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`13.
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`No further appeals remain related to U.S. Registration No. 4,423,789.
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`RES JUDICATA BARS PHAZZER’S COLLATERAL ATTACK ON DEFAULT
`JUDGMENT AND INJUNCTION
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`14. With appeals exhausted, the Judgment/Injunction Order finding U.S. Registration
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`No. 4,423,789 valid and enforceable is conclusively established with regard to Phazzer and all
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`those in privity with Phazzer. International Nutrition Co. v. Horphag Research, Ltd., 220 F.3d
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`1325, 1328 (Fed. Cir. 2000) (stating that default judgment can preclude subsequent actions by the
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`same party or those in privity with it).
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`15.
`
`The purpose of res judicata is to protect a party from “being required to relitigate
`
`the same issue against the same party in a separate action.” Sharp Kabushiki Kaisha v. ThinkSharp,
`
`Inc., 448 F.3d 1368, 1372 (Fed. Cir. 2006). Accordingly, TASER submits that this proceeding
`
`should be dismissed with prejudice as precluded by res judicata as a result of the final judicial
`
`determination as to the ‘789 Registration’s validity. See Nasalok Coating Corp. v. Nylok Corp.,
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`522 F.3d 1320, 1329-30 (Fed. Cir. 2008) (upholding dismissal of cancellation petition as
`
`impermissible collateral attack on default judgment and injunction).
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`
`
`
`
`
`
`

`

`4
`Respectfully submitted this September 19, 2019.
`
`
`
`
`
`
`/s/Ryan T. Santurri
`Ryan T. Santurri, Esquire
`Florida Bar No. 015698
`rsanturri@allendyer.com
`Allen, Dyer, Doppelt & Gilchrist P.A.
`255 South Orange Avenue, Suite 1401
`Orlando, FL 32801
`Telephone: (407) 841-2330
`Facsimile: (407) 841-2343
`Attorneys for Registrant TASER International, Inc.
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing has been served by email
`
`
`
`
`
`
`
`
`/s/ Ryan T. Santurri
`Ryan T. Santurri, Esq.
`
`
`
`
`
`on September 19, 2019 to:
`
`Adam R. Stephenson, Esq.
`IPTechLaw
`8350 E Raintree Dr., Ste 245
`Scottsdale, AZ 85260
`ipdocket@iptech.law
`adam@iptech.law
`
`
`
`
`
`

`

`
`
`
`
`Exhibit A
`Exhibit A
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 183 Filed 07/21/17 Page 1 of 15 PageID 1727
`
`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION
`
`TASER INTERNATIONAL, INC.,
`
`Plaintiff,
`
`v.
`
`Case No: 6:16-cv-366-Orl-40KRS
`
`/ O
`
`RDER
`
`PHAZZER ELECTRONICS, INC.,
`
`Defendant.
`
`This cause comes before the Court on Plaintiff’s, Taser International, Inc. (“Taser”),
`
`Motion for Sanctions. (Doc. 174). Defendant, Phazzer Electronics, Inc. (“Phazzer”)
`
`responded in opposition to the motion. (Doc. 178). After consideration and review, the
`
`Court finds that sanctions are appropriate in this case and grants Plaintiff’s Motion for
`
`Sanctions and for a Permanent Injunction.
`
`I.
`
`BACKGROUND
`
`Plaintiff Taser International, Inc. filed this action for patent and trademark
`
`infringement, false advertising, and unfair competition against Defendant Phazzer on
`
`March 2, 2016. (Doc. 1). Taser filed its Amended Complaint on February 13, 2017,
`
`asserting the same causes of action. (Doc. 95). Since the outset of this litigation, Phazzer
`
`has engaged in a pattern of bad faith conduct designed and intended to delay, stall, and
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`increase the cost of this litigation. Defendant Phazzer has repeatedly disregarded the
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`Orders of this Court, and no sanction short of entry of a default judgment in favor of Taser,
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`along with an award of compensatory and treble damages, an award of reasonable
`
`attorneys’ fees and costs, and injunctive relief is adequate to address these violations.
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 183 Filed 07/21/17 Page 2 of 15 PageID 1728
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`A.
`
`Phazzer’s Abusive Litigation Practices
`
`On December 27, 2016, Taser filed a motion to compel the production of
`
`documents by Phazzer. (Doc. 72). Notwithstanding the execution of a confidentiality
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`agreement, Phazzer refused to produce documents relevant to the design, manufacture,
`
`and sale of the allegedly infringing products. (Id.). Magistrate Judge Spaulding thereafter
`
`directed Phazzer to supplement its response to the motion to compel by “stating
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`succinctly on a request-by-request basis whether it has possession, custody, or control
`
`over any documents responsive to each discovery request,” and ordered Phazzer to
`
`submit a privilege log to support each privilege asserted. (Doc. 75). Taser filed a second
`
`motion to compel documents on February 20, 2017.1 (Doc. 94). The Plaintiff asserted that
`
`the Defendant failed to produce documents reflecting sales of the allegedly infringing
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`products, and produced a single page summary of sales along with heavily redacted
`
`invoices that made it impossible for Taser to identify customers. (Id.). Eight-days later,
`
`the Magistrate Judge entered an Order granting the motion to compel documents
`
`responsive to certain requests.2 (Doc. 98).
`
`On March 6, 2017, six-days after the Magistrate Judge entered the order granting
`
`the second motion to compel, Plaintiff filed its third motion to compel documents. (Doc.
`
`99). Taser averred that “[a]lthough this case has been ongoing for nearly a year, TASER
`
`still has not received the most basic information regarding the details and relationships
`
`between Phazzer and its manufacturer/suppliers/distributors of the accused .
`
`. .
`
`[infringing] product.” (Id.). Plaintiff did report, however, that Phazzer produced fifteen (15)
`
`1 The Amended Case Management and Scheduling Order established September 27,
`2017, as the deadline for fact discovery. (Doc. 91, p. 3).
`2 An amended order was entered on February 20, 2017. (Doc. 112).
`
`2
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 183 Filed 07/21/17 Page 3 of 15 PageID 1729
`
`documents
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`that
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`identify a
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`joint relationship between Phazzer, Double Dragon
`
`Development and Trading Corporation, and Sang Min. (Id.). The translated document
`
`was attached to the motion to compel and demonstrates a joint relationship contrary to
`
`Phazzer’s prior representations about their relationship. (Doc. 99-1). Accordingly, Taser
`
`propounded requests for production designed to ascertain the extent of the relationship
`
`between Phazzer and the nonparties. (Doc. 99, pp. 3-4). The requests were served
`
`January 19, 2017, and Phazzer did not object nor did they respond to the discovery
`
`requests. (Id. at p. 4). The Magistrate Judge granted Plaintiff’s Third Motion to Compel.
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`(Doc. 120). This time the Court Ordered Phazzer’s counsel and corporate representative
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`to verify the discovery response. (Id. at pp. 2-3).
`
`On May 19, 2017, Taser requested a discovery conference before the Court to
`
`resolve disputes as to deposition scheduling. (Doc. 135). The Plaintiff represented to the
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`Court that “[e]very one of the handful of critical witnesses associated with Phazzer, a
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`small, closely-held company, are represented to be on vacation, out of the country, in
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`surgery, or convalescing.” (Id. at p. 1). As of the filing of the motion for a discovery
`
`conference, Taser had been attempting to schedule depositions for five (5) months. (Id.).
`
`A discovery conference was set for May 26, 2017. (Docs. 136, 137). The Court instructed
`
`the parties to confer in advance of the discovery conference to agree upon the identity
`
`and availability of potential deponents. (Doc. 137). On June 15, 2017, the Magistrate
`
`Judge entered an Order setting dates for the deposition of Phazzer’s Rule 30(b)(6)
`
`representative, and the depositions of five fact witnesses. (Doc. 152). The Court further
`
`ordered the parties and their counsel to attend the Technology Tutorial scheduled before
`
`the undersigned on June 19, 2017. (Id. at p. 2). The parties were cautioned that failure to
`
`3
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 183 Filed 07/21/17 Page 4 of 15 PageID 1730
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`comply with that Order may result in the imposition of sanctions, including entry of default
`
`judgement against the Defendant. (Id.). The day the Court entered that Order, counsel
`
`for Phazzer moved to withdraw, (Doc. 153), and the Court denied the motion. (Doc. 155).
`
`On June 19, 2017, the undersigned presided over the technology tutorial and
`
`observed that the corporate representative for Phazzer was not in attendance, in clear
`
`violation of Magistrate Judge Spaulding’s Order. (Doc. 158). On June 21, 2017, counsel
`
`for Taser reported to the Court that Defendant Phazzer Electronics, Inc.’s corporate
`
`representative failed to appear at the scheduled deposition. (Doc. 161). Likewise, neither
`
`Mr. Brandon Womack nor Jason Abboud, a licensed attorney, appeared for their
`
`scheduled depositions. (Id.). On June 22, 2017, Magistrate Judge Spaulding scheduled
`
`a hearing to address the Renewed Motion to Withdraw as Counsel filed by Phazzer’s
`
`attorney. (Doc. 164). The Court specifically ordered that a representative of Phazzer
`
`Electronics must attend the hearing, cautioning that “[f]ailure to comply with this Order
`
`may result in imposition of sanctions, including entry of a default or default
`
`judgment against the offending party or counsel.” (Id. at p. 2) (emphasis in original).
`
`No representative from Phazzer Electronics attended the hearing in clear violation of the
`
`Court’s Order. (Doc. 172).
`
`In addition to the flagrant discovery abuse and contemptuous behavior exhibited
`
`by Phazzer, the Plaintiff details in their Motion for Sanctions the numerous attempts by
`
`Phazzer to derail this litigation by repeatedly attempting to stay the proceedings, (Doc.
`
`174, p. 3), and by filing a last minute emergency motion for a protective order. (Id.).
`
`Similarly, Phazzer objected to the Plaintiff’s discovery requests based on its
`
`proceedings with the USPTO, despite the Court ruling that these objections were
`
`4
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 183 Filed 07/21/17 Page 5 of 15 PageID 1731
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`meritless.3 Phazzer also objected to discovery on the basis of Local Rule 3.05(c)(2)(B),
`
`even after the Court denied this objection in its Order granting Taser’s first Motion to
`
`Compel. (Doc. 98). All of this misconduct rightly caused Magistrate Judge Spaulding, in
`
`denying Defendant’s motion to stay the case, to remark that “it appears that Phazzer, with
`
`the assistance of its counsel, is attempting in bad faith to further delay this litigation.” The
`
`undersigned agrees with Judge Spaulding’s assessment of the Defendant’s intentional
`
`obstructionist behavior.
`
`II.
`
`LEGAL STANDARD
`
`Rule 37 allows district court judges broad discretion to fashion appropriate
`
`sanctions for the violation of discovery orders. Malautea v. Suzuki Motor Co., 987 F.2d
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`1536, 1542 (11th Cir. 1993). This Rule allows for sanctions when a party fails to comply
`
`with a discovery order or fails to attend its own deposition. See Fed. R. Civ. P. 37(b)(2)(A),
`
`(d)(1)(A)(i). For both of these offenses, the Rule authorizes a variety of sanctions, such
`
`as, striking pleadings, rendering a default judgment, and holding the disobeying party in
`
`contempt of court. Id. at 37(b)(2)(A)(iii), (vi), (vii); 37(d)(3). See also United States v.
`
`Certain Real Prop. Located at Route 1, Bryant, 126 F.3d 1314, 1317 (11th Cir. 1997).
`
`Furthermore, Rule 37 provides that “the court must order the disobedient party, attorney
`
`advising that party, or both to pay the reasonable expenses, including attorney’s fees,
`
`caused by the failure, unless the failure was substantially justified or other circumstances
`
`make an award of expenses unjust.” Fed. R. Civ. P. 37(b)(2)(C), (d)(3); See also Alyeska
`
`Pipeline Serv. Co. v. Wilderness Soc’y, 421 U.S. 240, 258 (1975). The Supreme Court
`
`3 For Phazzer’s motions to stay the case, see Docs. 41, 44, 57, 104, 139 and 150. For
`Phazzer’s meritless objections to the discovery requests, see Docs. 20, 45, 57 and 104.
`
`5
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 183 Filed 07/21/17 Page 6 of 15 PageID 1732
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`has also held that the intent behind Rule 37 sanctions is both “to penalize those whose
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`conduct may be deemed to warrant such a sanction, [and] to deter those who might be
`
`tempted to such conduct in the absence of such a deterrent.” Roadway Exp., Inc. v. Piper,
`
`447 U.S. 752, 763–64 (1980) (quoting National Hockey League v. Metropolitan Hockey
`
`Club, Inc., 427 U.S. 639,643 (1976) (per curiam). This deterrence is necessary because
`
`“it is not the court’s function to drag a party kicking and screaming through discovery.”
`
`Telectron, Inc. v. Overhead Door Corp., 116 F.R.D. 107, 134 (S.D. Fla. 1987).
`
`Specifically, the sanction of default is seen as a “last resort” but a party’s “willfull
`
`or bad faith disregard” for discovery orders may call for this type of sanction especially in
`
`cases where the party failed to comply with a court order compelling discovery and
`
`warning that the failure to comply might result in a default judgment. See Certain Real
`
`Prop. Located at Route 1, 126 F.3d at 1317–18; See also BankAtlantic v. Blythe Eastman
`
`Paine Webber, Inc., 12 F.3d 1045, 1050 (11th Cir. 1994). Bad faith may be found through
`
`“delaying or disrupting the litigation or hampering enforcement of a court order.” Eagle
`
`Hosp. Physicians, LLC V. SRG Consulting, Inc., 561 F.3d 1298, 1306 (11th Cir. 2009).
`
`The Court finds that Defendant Phazzer engaged in the above-described misconduct with
`
`the subjective intent to abuse the judicial process. Purchasing Power, LLC v. Bluestem
`
`Brands, Inc., 851 F.3d 1218, 1223-24 (11th Cir. 2017) (“The key to unlocking a court’s
`
`inherent power is a finding of bad faith.”).
`
`B.
`
`Sanctions
`
`Based upon the Defendant’s egregious conduct, which was undertaken in bad
`
`faith, IT IS ORDERED AND ADJUDGED AS FOLLOWS:
`
`6
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 183 Filed 07/21/17 Page 7 of 15 PageID 1733
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`1.
`
`The Court Strikes Phazzer’s pending Motion to Dismiss the
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`Amended Complaint (Doc. 104), filed on March 10, 2017;
`
`2.
`
`The Court hereby enters default in favor Taser and against Phazzer
`
`on all claims set forth in the Amended Complaint. (Doc. 95);
`
`3.
`
`The Court awards compensatory damages in an amount to be
`
`determined in accordance with an expedited briefing and hearing schedule;
`
`4.
`
`The Court will award treble damages for Defendant’s willful
`
`infringement of the ‘262 patent and willful false advertisement once the
`
`compensatory damages have been established;4
`
`5.
`
`The Court awards Taser International, Inc. its attorneys’ fees and
`
`costs pursuant to 35 U.S.C. § 285, 15 U.S.C. § 1117(a), as sanctions for
`
`Phazzer’s bad faith conduct, in an amount to be determined in accordance
`
`with an expedited briefing and hearing schedule, and
`
`6.
`
`The Court enters an immediate permanent injunction discussed
`
`more fully below.
`
`The Court finds the imposition of these sanctions to be necessary to adequately
`
`punish Phazzer for its wanton and repetitive disregard of this Court’s orders and as a
`
`4 Taser’s Amended Complaint alleges Phazzer’s infringement of the ‘262 Patent was
`willful. Halo Electronics, Inc. v. Pulse Electronics, Inc, 136 S. Ct. 1923 (2016) (Enhanced
`damages under patent law “should generally be reserved for egregious cases typified by
`willful misconduct.”). Similarly, Taser alleged that Phazzer intentionally engaged in false
`advertising. Vector Products, Inc. v. Hartford Fire Ins., 397 F.3d 1316 (11th Cir. 2005)
`(Treble damages under the Lanham Act requires proof of intent or knowledge of falsity.).
`Plaintiff’s allegations are accepted as true by virtue of the default judgment. Hence, treble
`damages are warranted in this case.
`
`7
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 183 Filed 07/21/17 Page 8 of 15 PageID 1734
`
`consequence of its willful abuse of the discovery process. The imposition of lesser
`
`sanctions would underrepresent the seriousness of the offensive conduct.
`
`C.
`
`Permanent Injunction
`
`A party seeking a permanent injunction must demonstrate:
`
`(1) that is has suffered an irreparable injury;
`
`(2) that remedies available at law, such as monetary
`damages, are inadequate to compensate for that injury;
`
`(3) that, considering the balance of hardships between
`plaintiff and defendant, a remedy in equity is warranted; and
`
`that the public interest would not be disserved by a
`(4)
`permanent injunction.
`
`Apple Inc. v. Samsung Electrs Co., 809 F.3d 633, 639 (Fed. Cir. 2015). Historically, the
`
`courts have “granted injunctive relief upon a finding of infringement in the vast majority of
`
`patent cases.” Id. (citing eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 395 (2006)).
`
`In the instant case, the entry of default against Phazzer establishes the existence of an
`
`irreparable injury; that is, the default satisfies the first eBay factor by showing a “causal
`
`nexus relates the alleged harm to the alleged infringement.” Id. (citing Apple Inc, 695 F.3d
`
`at 1374). The Court finds monetary damages are inadequate to compensate for the
`
`infringement of the Taser patent, and considering the balance of harms between Taser
`
`and the infringing party—Phazzer—a permanent injunction is warranted. Simply put, an
`
`infringing party has no right to continue its wrongful acts, absent a compelling public
`
`interest which is absent in this case.
`
`1.
`
`Scope of the Permanent Injunction: nonparties
`
`Generally, due process prohibits an injunction that enjoins persons who have not
`
`participated in the suit and have acted independent of the parties of the suit. See Additive
`
`8
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 183 Filed 07/21/17 Page 9 of 15 PageID 1735
`
`Controls & Measurement Sys., Inc. v. Flowdata, Inc., 96 F.3d 1390, 1394-95 (Fed. Cir.
`
`1998) (“Adcon I”). Federal Rule of Civil Procedure 65(d) provides an exception to this
`
`prohibition, allowing courts to enter an injunction which binds the following:
`
`(A) the parties;
`
`(B) the parties’ officers, agents, servants, employees, and
`attorneys; and
`
`(C) other persons who are in active concert or participation
`with anyone described in Rule 65(d)(2)(A) or (B).
`
`The plain text of subsection (d) limits its application to non-parties who either “abet the
`
`[enjoined] defendant, or are legally identified with him.” Additive Controls & Measurement
`
`Sys., Inc., v. Flowdata, Inc., 154 F.3d 1345, 1351 (Fed. Cir. 1998) (“Adconir”). When the
`
`nonparty is not in legal privity with the party subject to the permanent injunction, the court
`
`must find by clear and convincing evidence that the nonparty “acted in concert” with the
`
`party “in a scheme to allow … [the party] to continue: activities “in violation of the
`
`injunction” Travelhost, Inc. v. Blandford, 68 F.3d 958, 962 (5th Cir. 1995). Therefore, Rule
`
`65(d) provides that nonparties in can be bound by an injunction or face contempt for
`
`assisting a named party’s violation of an injunction. Adcon I, 96 F.3d at 1395.
`
`In Forest Laboratories, Inc. v. Ivax Pharmaceuticals, Inc., 501 F.3d 1263, 1272
`
`(Fed. Cir. 2007), the Court ruled the district court properly included a commercial
`
`manufacturer of an accused generic drug in its injunction order against the planned seller
`
`of the drug who submitted the infringing product, since by manufacturing the infringing
`
`drug with knowledge of the patent, the manufacturer would be inducing infringement of
`
`the patent. The Court reasoned that “[a]n inquiry into induced infringement focuses on the
`
`party accused of inducement as the prime mover in the chain of events leading to
`
`infringement . . . . Under the standards for inducement which we apply to 35 U.S.C.A. §
`
`9
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`Case 6:16-cv-00366-PGB-KRS Document 183 Filed 07/21/17 Page 10 of 15 PageID 1736
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`271(b), . . . it was thus not inappropriate for the district court to include [the manufacturer]
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`within the scope of the injunction.”5 A manufacture is but one example of an entity which
`
`acts in concert with the enjoined party. While this Court lacks the authority to specifically
`
`name Double Dragon Development and Trading Corporation, Sang Min International
`
`Company, LTD, and Scott Hensler in the injunction, it is clear that nonparties who assist
`
`the enjoined party in violating the injunction may be held in contempt by this Court.
`
`2.
`
`The Enjoined Conduct and Products
`
`Taser brought suit, in part, to address the infringement of its patent 7,234,262 (“the
`
`‘262’ patent”). (Doc. 95, ¶ 17). Taser averred in its Amended Complaint that the Phazzer
`
`Enforcer infringes at least claim 13 of the ‘262 Patent.6 (Id. ¶ 27). The crux of Taser’s
`
`infringement allegations is that “Phazzer’s Enforcer CEWs include non-volatile memory
`
`that stores information regarding the weapon’s past use. The stored information appears
`
`to record the date and time of each operation of the trigger and the duration of the stimulus
`
`signal provided by the Enforcer.” (Id. at ¶ 29). Claim 13 of the ‘262 Patent states:
`
`An apparatus for causing involuntary contractions of skeletal
`muscles of a human or animal target, the apparatus
`comprising:
`
`A circuit having a microprocessor that is
`
`(1) programmed to track date and time;
`
`(2) programmed to initiate a high voltage pulsed
`current from the circuit, and
`
`(3) programmed to record tracked date and time in
`accordance with each initiation of the current, wherein
`
`5 In Forest Laboratories, Inc., the manufacturer was a named party who had appeared in
`the litigation which allowed the court to name the manufacturer in the injunction.
`6 Taser further alleged “upon information and belief” that Phazzer product also infringed
`“other claims of the 262 Patent,” without specifying the infringed claims. (Doc. 95, ¶ 27).
`
`10
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`Case 6:16-cv-00366-PGB-KRS Document 183 Filed 07/21/17 Page 11 of 15 PageID 1737
`
`the current launches a provided wire-tethered dart
`toward the target to conduct the current through the
`target and, when passing through the target, causes
`involuntary contractions of skeletal muscles of the
`target.
`
`(Doc. 95-2, Column 8, Line 58 through Column 9, Line 13).
`
`3.
`
`The Permanent Injunction
`
`In that a default judgment has been entered in favor of Plaintiff, the Court finds that
`
`the Phazzer Enforcer CEW violates claim 13 of the ‘262 patent. Therefore, IT IS
`
`ORDERED AND ADJUDGED THAT:
`
`1.
`
`Taser’s U.S. Patent No. 7,234,262, titled “Electrical Weapon Having
`
`Controller for Timed Current Through Target and Date/Time Recording” issued June 26,
`
`2007, is deemed valid, enforceable, and infringed by Phazzer. Specifically, the Phazzer
`
`Enforcer CEW violates claim 13 of the ‘262 patent.
`
`2.
`
`Phazzer and its officers, agents, servants, employees, and attorneys; and
`
`any other persons who are in active concert or participation with Phazzer or its officers,
`
`agents, servants, employees, or attorneys, are hereby enjoined from:
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`h.
`
`Making or causing to be made,
`
`Using or causing to be used,
`
`Offering for sale, or causing to be offered for sale,
`
`Selling or causing to be sold,
`
`Donating or causing to be donated,
`
`distributing or causing to be distributed,
`
`Importing or causing to be imported,
`
`Exporting or causing to be exported
`
`11
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`

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`Case 6:16-cv-00366-PGB-KRS Document 183 Filed 07/21/17 Page 12 of 15 PageID 1738
`
`the Phazzer Enforcer CEW, and any other conducted electrical weapon (“CEW”) or
`
`device which infringed upon claim 13 of the ‘262 Patent, and any device not colorably
`
`different from the Enforcer CEW. The effect of this injunction shall continue through
`
`October 14, 2019, the expiration of the ‘262 Patent.
`
`D.
`
`Permanent Injunction Trademark – ‘789 Registration
`
`Taser is the owner of a federal trademark registration. Registration No. 4,423,789,
`
`issued by the United States Patent and Trademark Office on October 29, 2013, for the
`
`non-functional shape, as show below, of cartridges used to launch darts (“Taser
`
`Trademark”). (Doc. 95, ¶ 36).
`
`Taser averred in their Amended Complaint that Sang Min and/or Double Dragon
`
`manufacture CEW cartridges for Phazzer that bear a confusingly similar shape to the
`
`Taser Trademark. (Id. ¶ 38). Furthermore, Phazzer sells via E-commerce several
`
`versions of cartridges that bear a confusingly similar shape to the shape of the Taser
`
`Trademark. (Id. ¶ 39). Such conduct by Phazzer is likely to deceive, confuse, and mislead
`
`prospective purchasers into believing that cartridges sold by Phazzer are manufactured
`
`by, authorized by, or are associated with Taser, resulting in irreparable harm to the
`
`12
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`

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`Case 6:16-cv-00366-PGB-KRS Document 183 Filed 07/21/17 Page 13 of 15 PageID 1739
`
`goodwill symbolized by the Taser Trademark and Taser’s reputation for quality. (Id. at ¶
`
`43).
`
`Accordingly, the Court finds that a permanent injunction is warranted, because
`
`Taser has suffered irreparable injury, remedies available at law to include monetary
`
`damages are inadequate to compensate for the injury, and the balance of hardships leads
`
`the Court to conclude that a remedy in equity is warranted. The public interest would not
`
`be disserved by a permanent injunction, because law enforcement agencies are able to
`
`fulfill their need to non-lethal weapons by purchasing such devices from Taser, as
`
`opposed to being the recipient of an infringing device.
`
`Therefore, IT IS ORDERED AND ADJUDGED THAT:
`
`1.
`
`Taser’s U.S. Trademark Registration No. 4,423,789, issued on October 29,
`
`2013, for the non-functional shape of cartridges used to launch darts, is deemed valid
`
`and enforceable, not generic, functional, or merely descriptive, and infringed by Phazzer.
`
`2.
`
`Phazzer and its officers, agents, servants, employees, and attorneys; and
`
`any other persons who are in active concert or participation with Phazzer or its officers,
`
`agents, servants, employees, or attorneys, are hereby enjoined from:
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`Making or causing to be made,
`
`Using or causing to be used,
`
`Offering for sale, or causing to be offered for sale,
`
`Selling or causing to be sold,
`
`Donating or causing to be donated,
`
`distributing or causing to be distributed,
`
`Importing or causing to be imported,
`
`13
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`

`Case 6:16-cv-00366-PGB-KRS Document 183 Filed 07/21/17 Page 14 of 15 PageID 1740
`
`h.
`
`Exporting or causing to be exported
`
`Phazzer product numbers 1-DC15, 1-DC21, 1-DC25, 1-DC21-SIDT, 1-PB30, 1-PB8F, 1-
`
`PB15943, 1-RB30, 1-PA30, 1-LOWIMPT2015, or any other CEW cartridge that is
`
`confusingly similar or not more than a colorable imitation of the cartridge shown in the
`
`‘789 Registration and below:
`
`3.
`
`Phazzer cartridges currently marketed and sold as compatible with
`
`TASER® brand CEWs embody the protected appearance, are confusingly similar, and
`
`constitute infringing products enjoined under this Order.
`
`4.
`
`Phazzer shall not challenge or continue to challenge the validity or
`
`enforceability of the ‘789 Registration in any manner in any forum, including the USTPO.
`
`5.
`
`Phazzer is further enjoined from directing or causing any of its employees,
`
`officers, agents, servants, and attorneys, and other persons who are in active concert or
`
`participation with Phazzer’s employees, officers, agents, servants, and attorneys, to
`
`perform any prohibited act set forth in paragraph 2, page 11 of this order (pertaining to
`
`the ‘262 Patent), paragraph 2, page 13 of this order (pertaining to the ‘789 Registration),
`
`or paragraph 4 above that Phazzer cannot itself perform under this injunction.
`
`14
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`

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`Case 6:16-cv-00366-PGB-KRS Document 183 Filed 07/21/17 Page 15 of 15 PageID 1741
`
`6.
`
`This Court retains jurisdiction to enforce the injunctions set forth herein, to
`
`include the commencement of contempt proceedings if warranted.
`
`DONE AND ORDERED in Orlando, Florida, on July 21, 2017.
`
`Copies furnished to:
`
`Counsel of Record
`Unrepresented Parties
`
`15
`
`

`

`
`
`
`
`Exhibit B
`Exhibit B
`
`

`

`
`
`Case: 17-2637 Document: 64 Page: 1 Filed: 10/26/2018Case 6:16-cv-00366-PGB-KRS Document 300 Filed 10/26/18 Page 1 of 19 PageID 4240
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`TASER INTERNATIONAL, INC.,
`Plaintiff-Appellee
`
`v.
`
`PHAZZER ELECTRONICS, INC.,
`Defendant-Appellant
`______________________
`
`2017-2637
`______________________
`
`Appeal from the United States District Court for the
`Middle District of Florida in No. 6:16-cv-00366-PGB-KRS,
`Judge Paul G. Byron.
`______________________
`
`Decided: October 26, 2018
`______________________
`
`P