jpt group llc v aerogroup int'l - complaint

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS

HOUSTON DIVISION

JPT Group, LLC Plaintiff, v. Aerogroup International, LLC Defendant.

§ § § § § § § § § § § § §

CASE NO: JURY DEMANDED

PLAINTIFF JPT GROUP’S ORIGINAL COMPLAINT

JPT Group, LLC (“JPT”), for its complaint of patent infringement against defendant

Aerogroup International, LLC (“Aerogroup”), alleges as follows:

NATURE OF THE ACTION

1. JPT owns the Bernardo brand (“Bernardo”). Bernardo is an iconic American fashion

brand. Since 1946, the Bernardo brand has inspired the women’s sandal market with its

sophisticated and inspirational designs. Today Bernardo’s sandal designs are among the most

distinctive and well known in the footwear industry. Bernardo’s patented designs are the result

of significant investments in the Bernardo brand, innovative design work and product

development.

2. Under the Aerosoles brand name, the Aerogroup has copied the innovative designs of the

Bernardo brand and engaged in production and distribution of infringing products through

Aerosoles and third party branded retail and online stores. Rather than undertaking its own

Case 4:14-cv-02522 Document 1 Filed in TXSD on 09/02/14 of 6

2

independent development, the Aerogroup slavishly copied Bernardo’s innovative designs,

violating JPT’s valuable intellectual property rights embodied by Bernardo branded products.

THE PARTIES

3. Plaintiff JPT Group, LLC is a Delaware limited liability company having a principal

place of business in Winter Park, Colorado.

4. On information and belief, Aerogroup International, LLC is a Delaware limited liability

company with a principal place of business at 201 Meadow Road, Edison, New Jersey 08817.

JURISDICTION & VENUE

5. This action arises under the patent statutes of the United States, 35 U.S.C. § 271 et seq.

Accordingly, the Court has federal question jurisdiction over this matter under 28 U.S.C. §§

1331 and 1338(a).

6. The court has personal jurisdiction over the Aerogroup because it has conducted and does

conduct business within the State of Texas and this District.

7. Upon information and belief, the Aerogroup has existing business relationships in Texas

and the District through its expansive sales and distribution channels, which includes at least

Macy’s, DSW and Famous Footwear and their respective retail locations within the District. The

Aerogroup has purposefully directed business activities to Texas’ consumers through these

business relationships, their retail stores and various websites owned and/or controlled by the

Aerogroup and third parties.

8. Upon information and belief, the Aerogroup committed and continues to commit acts of

infringement in violation of 35 U.S.C. § 271 and has and continues to purposefully place

infringing products into the stream of commerce.

9. Upon information and belief, the Aerogroup, either directly or through distributors,

franchisees, resellers and/or others, ships, distributes, offers for sale, sells and markets products


3

in the United States, the State of Texas and this District. Upon information and belief, Aerogroup

expects their actions to have consequences within this District, derives substantial revenue from

the sale of infringing products and interstate commerce within this District. The acts by

Aerogroup caused injury to JPT within this District.

10. Venue is properly within this District in accordance with 28 U.S.C. § 1391 (b) and (c)

and § 1400 (b).

FACTS AND BACKGROUND

The JPT Patents

11. On November 25, 2008, United States Patent No. D581,149 (the “‘D149 Patent”)

entitled Sandal was duly and legally issued. A copy of the ’D149 Patent is attached as Exhibit A

and incorporated herein.

12. On September 23, 2008, United States Patent No. D577,182 (the “‘D182 Patent”)

entitled Sandal was duly and legally issued. A copy of the ’D182 Patent is attached as Exhibit B

and incorporated herein.

13. The above referenced patents relate to the sandal designs claimed in the ‘D149 Patent and

‘D182 Patent (collectively the “JPT Patents”). JPT owns all right, title and interest in and to the

JPT Patents by assignment dated February 11, 2014.


4

The Aerogroup Infringes the JPT Patents

14. As the representative side-by-side comparisons shown below reveal, the Aerogroup

misappropriated JPT’s patented sandal designs in the accused products, including through its

Chlambake sandals as depicted below (the “Accused Products”).

15. On information and belief, the Aerogroup contracted with suppliers to have manufactured

in China the Accused Products for sale in the U.S., Texas and this District. Shortly after

manufacturing, the Aerogroup began importing the Accused Products into the U.S., Texas and

this District for sale through Aerosoles and third party branded retail and online stores.

16. On information and belief, the Aerogroup prominently displayed and marketed, and

caused to be displayed and marketed, the Accused Products in retail store locations and online.

17. On information and belief, the Aerogroup has sold and continues to sell significant

volumes of the Accused Products through its expansive sales and distribution channels

throughout the U.S., Texas and this District.

18. JPT has complied with the statutory requirement of placing a notice of the JPT Patents on

its products that embody the JPT Patents. On information and belief, the Aerogroup had notice of

its infringement and the JPT Patents through JPT’s statutory product marking, the Aerogroup’s

procurement of related patent footwear patents, and/or the Aerogroup’s monitoring of patents in

connection with its release of new products.

‘D149 Patent

Chlambake

‘D149 Patent

‘D182 Patent

Chlambake

‘D149 Patent

Chlambake

‘D182 Patent

U S. Patent Nov. 25, 2008 Sheet 1 of3 US D581,149 S

8/5/14 11:36 AMAerosoles - CHLAMBAKE

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(12) United States Design Patent (10) Patent No.:

USO0D581149S

US D581,149 S Comeau (45) Date of Patent: *9: Nov. 25, 2008

(54) SANDAL D495,855 S * 9/2004 Comeau .................... .. D2/917 D496,147 S * 9/2004 Comeau D2/917

Inventor: Dennis FI Comeall’ Santa Fe’ D530,898 S * 10/2006 ....... .. 132/971 D534,713 S * 1/2007 WeitZman ....... .. D2/929

(73) Assignee: Bernardo Footwear, LLC, Houston, TX 13545939 S * 6/2007 wellzman et 31' ~ 132/971 (Us) D550,942 S * 9/2007 Chol .............. .. D2/969

D553,840 S * 10/2007 WeitZman ....... .. D2/971

(**) Tenn 14 Years D572,456 S * 7/2008 Guers-Neyr'ud ............ .. D2/971

* cited by examiner

(21) Appl' NO': 29/318’535 Primary ExamineriStella M Reid - Assistant ExamineriKeli L Acker 22 F1 d: M 21 2008

( ) 1e ay ’ (74) Attorney, Agent, or FirmiN. Elton Dry; J. M. (Mark) Related US. Application Data Gllbreth

(63) Continuation of application No. 29/297,780, ?led on (57) CLAIM Nov. 16, 2007.

The ornamental design for a sandal, as shoWn and described. (51) LOC (8) Cl. .............. .. 02-04 (52) US. Cl. ....................................... .. D2/973; D2/917 DESCRIPTION (58) Field of Classi?cation Search ................ .. D2/ 896, FIG. 1 is a perspective vieW of a sandal, embodying my new

D2/897, 9164919, 925, 9294934, 943, 9694972, design; 132/977: 978; 36/7~3*7~5’ 11-5’ 32298481956: FIG. 2 is a front elevation vieW thereof;

See application ?le for complete search history. FIG‘ 3 1S a rear elevanon VleW thereof; FIG. 4 is a right side elevation vieW thereof;

(56) References Cited

U.S. PATENT DOCUMENTS

1,977,995 A * 10/1934 Morali ..................... .. 36/115

D129,706 S * 9/1941 Grossman .................. .. D2/932

D147,308 S * 8/1947 Steel ......................... .. D2/917

FIG. 5 is a left side elevation vieW thereof;

FIG. 6 is a top vieW thereof; and, FIG. 7 is a bottom vieW thereof.

1 Claim, 3 Drawing Sheets




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Wedges

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Summer Sale

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LARGER VIEW




$59.00 Now $49.99


Size

5.0 5.5 6.0 6.5 7.0 7.5 8.0 8.5

9.0 9.5 10.0 10.5 11.0 12.0 .ÿ

Size Chart Width

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USO0D581149S





D553,840 S * 10/2007 WeitZman ....... .. D2/971


* cited by examiner









1,977,995 A * 10/1934 Morali ..................... .. 36/115

D129,706 S * 9/1941 Grossman .................. .. D2/932

D147,308 S * 8/1947 Steel ......................... .. D2/917







New Arrivals

Boots

Casual

Career

Dress

Flats

Sandals

Wides

Accessories

EXCLUSIVES

SALE

All

Boots

Career

Casual

Dress

Flats

Sandals

Wedges

Wides

Summer Sale

Clearance

EXCLUSIVES

LARGER VIEW




$59.00 Now $49.99


Size

5.0 5.5 6.0 6.5 7.0 7.5 8.0 8.5

9.0 9.5 10.0 10.5 11.0 12.0 .ÿ

Size Chart Width

Medium

TweetTweet 1 71


Quantity 1


97LikeLike

Web Browser$59.00

In Shape$89.00

Duble Trouble$89.00

Chlambake$59.00

$29.99 to $49.99





Checkout


5

Patent Infringement

19. JPT incorporates herein the allegations set forth in Paragraphs 1 through 18 above.

20. Under 35 U.S.C. §§ 271 et seq., the Aerogroup has directly infringed the JPT Patents by

the manufacture, use, sale, offer for sale, and importation of the Accused Products or

alternatively by contributing or inducing others to manufacture, use, sell, offer for sale, and

import the Accused Products, literally and/or under the doctrine of equivalents.

21. Upon information and belief, the Aerogroup has applied the designs of the JPT Patents,

or a colorable imitation thereof, to the Accused Products for the purpose of sale, and/or selling or

exposing for sale the Accused Products.

22. On information and belief, the Aerogroup will continue to infringe the claims of the JPT

Patents unless enjoined by this Court.

23. JPT has been damaged and will continue to be damaged by the Aerogroup’s infringing

acts.

24. On information and belief, the Aerogroup was actually aware of the JPT Patents and

willfully committed acts of infringement.

JURY DEMAND

25. JPT demands a trial by jury on all issues.

PRAYER FOR RELIEF

WHEREFORE, JPT prays the Court to:

(a) grant a permanent injunction against the Aerogroup’s continued infringement;

(b) award damages for the Aerogroup’s infringement of the JPT Patents under 35 U.S.C. § 284 or § 289;

(c) in the event JPT elects to collect damages under 35 U.S.C. § 284, find that the Aerogroup’s infringement has been willful and increase such damages to three times the awarded amount;


6

(d) award prejudgment and post judgment interest;

(e) find that this case is an exceptional case under 35 U.S.C. § 285 and award attorneys’ fees;

(f) award costs; and

(g) grant all other relief to which JPT is entitled.

Date: September 2, 2014

Respectfully submitted, /s/ J. Reid Bumgarner J. Reid Bumgarner State Bar No. 24053118 Bumgarner Law P.C. 3050 Post Oak Boulevard, Suite 640 Houston, Texas 77056 Telephone: 713/893-7255 Email: [email protected] For Plaintiff JPT


!!!!!!!!!!

Exhibit!A!! !

Case 4:14-cv-02522 Document 1-1 Filed in TXSD on 09/02/14 Page 1 of 5


USO0D581149S





D553,840 S * 10/2007 WeitZman ....... .. D2/971


* cited by examiner









1,977,995 A * 10/1934 Morali ..................... .. 36/115

D129,706 S * 9/1941 Grossman .................. .. D2/932

D147,308 S * 8/1947 Steel ......................... .. D2/917





U S. Patent Nov. 25, 2008 Sheet 1 of3 US D581,149 S


US. Patent Nov. 25, 2008 Sheet 2 of3 US D581,149 S


US. Patent Nov. 25, 2008 Sheet 3 of3 US D581,149 S

FIG. 7


!!!!!!!!!!

Exhibit!B!


jpt group llc v aerogroup int'l - complaint

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