Oracle Lighting, maker of automotive LED lights, said it won a court battle with a Chinese manufacturer it sued for “knocking off” its products.
Oracle claimed that soon after it introduced its Vector LED Grill System at a trade show in 2017, it began seeing copy cat products. The company decided to sue, the imitator, which lead it to the Chinese court system and an actual sting operation to obtain evidence. The story of Oracle’s journey reads like a spy novel.
Said Justin Hartenstein, Director of Product Development at Oracle Lighting. “After nearly a year of work designing and developing this product, it was honestly heartbreaking to find knockoff products pop up online. 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.”
A court in China ruled on June 28 that Oracle’s design patents were violated by a company manufacturing in China. The ruling was made by the Intellectual Property Division of the Suzhou Intermediate People’s Court (Case No.  Suzhou 05 Intellectual Property First Instance No.580). The defendant was ordered to immediately cease infringing on the Oracle’s patent and Oracle was awarded “significant monetary damages.”
Hartenstein said, “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.” He 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.”
“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,” continued Hartenstein. “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….”
Banyas said, “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.”
The Court’s decision is still subject to an appeal to the Jiangsu Higher Court.
Oracle Lighting’s Vector™ Grill for the Jeep Wrangler was a runner up for the SEMA Best New Exterior Accessory Product of 2019 and it won a 2018 Global Media Award.