oakley v. milner distribution alliance

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Michael K. Friedland (SBN 157,217) [email protected] Ali S. Razal (SBN 246,922) [email protected]

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Reza Mirzaie (SBN 246,953) reza.mirzaie(a)lmobbe.com Samantha Y.tfsu (SBN 285 ,853) samantha.hsu(a)knobbe.com

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---1 •. ( KNOBBE, MARTENS, OLSON & BEAR, LLP 2040 Main Street, Fourteenth Floor

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Irvine, CA 92614 Telephone: (949) 760-0404 Facsimile: (949) 760-9502 I

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I Attorneys for Plaintiff Oakley, Inc.

IN THE UNITED STATES DISTRICT COURT

FOR THE CENTRAL DISTRICT OF CALIFORNIA

SOUTHERN DIVISION

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SACV13 - 00572 JVS (ANx)

OAKLEY, INC., a Washington corporatton,

Civil Action No.

COMPLAINT FOR

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Plaintiff, PATENT INFRINGEMENT

v.

MILNER DISTRIBUTION ALLIANCE, INC. d/b/a MAXX HD SUNGLASSES, a Colorado corporation,

Defendant.

DEMAND FOR JURY TRIAL

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Case 8:13-cv-00572-JVS-AN Document 1 Filed 04/10/13 of 13 Page ID #:1

1 Plaintiff Oakley, Inc. ("Oakley") hereby complains of Defendant Milner

2 Distribution Alliance, Inc. d/b/a Maxx HD Sunglasses ("Defendant" or

3 "Milner") and alleges as follows:

4 I. JURISDICTION AND VENUE

5 1. This Court has subject matter jurisdiction over this action pursuant

6 to 28 U.S.C. § 1331 and 1338, as it arises under the patent laws of the United

7 States.

8 2. This Court has personal jurisdiction over Defendant because

9 Defendant has a continuous, systematic, and substantial presence within this

10 judicial district including by selling and offering for sale infringing products in

11 this judicial district, and by committing acts of patent infringement in this

12 judicial district, including but not limited to selling infringing eyewear directly

13 to consumers and/or retailers in this district and selling into the stream of

14 commerce knowing such products would be sold in California and this district,

15 which acts form a substantial part of the events or omissions giving rise to

16 Oakley's claim.

17 3. Venue is proper in this judicial district under 28 U.S.C. §1391 (b)

18 and (c), and 28 U.S.C. § 1400(b).

19 II. THE PARTIES

20 4. Oakley is a corporation organized and existing under the laws of

21 the State of Washington, having its principal place of business at One Icon,

22 Foothill Ranch, California 92610.

23 5. Oakley is informed and believes, and thereon alleges, that

24 Defendant Milner is a corporation organized and existing under the laws of the

25 state of Colorado and has a principal place of business at 738 Synthes Avenue,

26 Monument, Colorado 80132.

27 6. Oakley is informed and believes, and thereon alleges, that

28 Defendant has committed the acts alleged herein within this judicial district.

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III. GENERAL ALLEGATIONS

7. Oakley has been actively engaged in the manufacture and sale of

high quality eyewear since at least 1985. Oakley is the manufacturer and

retailer of several lines of eyewear that have enjoyed substantial success and are

protected by various intellectual property rights owned by Oakley.

8. On May 20, 2008, the United States Patent and Trademark Office

duly and lawfully issued United States Design Patent No. D569,412 ("the D412

patent"), entitled "Eyeglass and Eyeglass Components." Oakley is the owner by

assignment of all right, title, and interest in the D412 patent. A true and correct

copy of the D412 patent is attached hereto as Exhibit A.

9. On November 25, 2008, the United States Patent and Trademark

Office duly and lawfully issued United States Design PatentNo. D581,443 ("the

D443 patent"), entitled "Eyeglasses Components." Oakley is the owner by


copy of the D443 patent is attached hereto as Exhibit B.

10. On November 25, 2008, the United States Patent and Trademark

Office duly and lawfully issued United States Design Patent No. D581 ,444 ("the

D444 patent"), entitled "Eyeglass Components." Oakley is the owner by


copy of the D444 patent is attached hereto as Exhibit C.

11. On March 18, 2008, the United States Patent and Trademark Office

duly and lawfully issued United States Design Patent No. D564,571 ("the D571

patent"), entitled "Eyeglass and Eyeglass Components." Oakley is the owner by


copy of the D571 patent is attached hereto as Exhibit D.

12. Defendant manufactures, uses, sells, offers for sale and/or imports

into the United States eyewear that infringes Oakley's intellectual property

rights.

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1 13. Oakley has provided the public with constructive notice of its

2 patent rights pursuant to 35 U.S.C. § 287.

3 IV. CLAIM FOR RELIEF

4 (Patent Infringement)

5 (35 U.S.C. § 271)

6 14. Oakley repeats and re-alleges the allegations of paragraphs 1-13 of

7 this Complaint as if set forth fully herein.

8 15. This is a claim for patent infringement under 35 U.S.C. § 27l.

9 16. Defendant, through its agents, employees and servants, have, and

10 continue to, knowingly, intentionally and willfully directly infringe, engage in

11 acts of contributory infringement, and/or induce the infringement of the D412

12 patent by directly and/or indirectly making, using, selling, offering for sale

13 and/or importing eyewear which are covered by the D412 patent, including

14 Defendant's Maxx lID sunglass model "Python."

15 17. Defendant's acts of infringement of the D412 patent were

16 undertaken without permission or license from Oakley. Defendant had actual

17 and/or constructive knowledge of the D412 patent, and its actions constitute

18 willful and intentional infringement of the D412 patent. Defendant infringed

19 the D412 patent with reckless disregard of Oakley's patent rights. Defendant

20 knew, or it was so obvious that Defendant should have known, that its actions

21 constituted infringement of the D412 patent. Defendant's acts of infringement

22 of the D412 patent were not consistent with the standards of commerce for its

23 industry.






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10 industry.







1 7 21. Defendant's acts of infringement of the D444 patent were








25 industry.




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1 patent by directly and/or indirectly making, usmg, selling, offering for sale

2 and/or importing eyewear which are covered by one or more claims of the D571

3 patent, including Defendant's Maxx HD sunglass model "Stealth."









12 industry.

13 24. As a direct and proximate result of Defendant's patent

14 infringement, Defendant has derived and received gains, profits, and advantages

15 in an amount not presently known to Oakley.

16 25. Pursuant to 35 U.S.C. § 284, Oakley is entitled to damages for

17 Defendant's infringing acts and treble damages together with interests and costs

18 as fixed by this Court.

19 26. Pursuant to 35 U.S.C. § 289, Oakley is entitled to Defendant's total

20 profits from the sale of eyewear that infringe anyone of Oakley's design

21 patents.

22 27. Pursuant to 35 U.S.C. § 285, Oakley is entitled to reasonable

23 attorneys' fees for the necessity of bringing this claim.

24 28. Due to the aforesaid infringing acts, Oakley has suffered great and

25 irreparable injury, for which Oakley has no adequate remedy at law.

26 29. Defendant continues to directly and/or indirectly infringe Oakley's

27 patents to the great and irreparable injury of Oakley, unless enjoined by this

28 Court.

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1 WHEREFORE, Oakley prays for judgment III its favor against

2 Defendant for the following relief:

3 A. An Order adjudging Defendant to have willfully infringed the

4 D412 patent, the D443 patent, the D444 patent, and the D571 patent under 35

5 U.S.C. § 271;

6 B. A preliminary and permanent injunction enjoining Defendant, its

7 respective officers, directors, agents, servants, employees and attorneys, and

8 those persons in active concert or participation with Defendant, from directly or

9 indirectly infringing any of the D412 patent, the D443 patent, the D444 patent,

10 and the D571 patent under in violation of35 U.S.C. § 271;

11 C. That Defendant account for all gains, profits, and advantages

12 derived by Defendant's infringement of the D412 patent, the D443 patent, the

13 D444 patent, and the D571 patent in violation of 35 U.S.C. § 271, and that

14 Defendant pay to Oakley all damages suffered by Oakley and/or Defendant's

15 total profit from such infringement;

16 D. An Order for a trebling of damages and/or exemplary damages

17 because of Defendant's willful conduct pursuant to 35 U.S.C. § 284;

18 E. An Order adjudging that this is an exceptional case;

19 F. An award to Oakley of the attorney fees, expenses, and costs

20 incurred by Oakley in connection with this action pursuant to 35 U.S.C. § 285;

21 G. An award of pre-judgment and post-judgment interest and costs of

22 this action against Defendant;

23 H. That Oakley have and recover the costs of this civil action,

24 including reasonable attorneys' fees;

25 1. An award of pre-judgment and post-judgment interest and costs of

26 this action against Defendant; and,

27 / / /

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1 J. Such other and further relief as this Court may deem just and

2 proper.

3 Respectfully submitted,

4 KNOBBE, MARTENS, OLSON & BEAR, LLP

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By:-=~~~~==~ ______________ ___ 1 . Friedland

Ali . Razai Reza Mirzaie

- Samantha Y. Hsu Attorneys for Plaintiff Oakley, Inc.

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1 DEMAND FOR JURy TRIAL

2 Plaintiff Oakley, Inc. hereby demands a trial by jury on all issues so

3 triable.

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KNOBBE, MARTENS, OLSON & BEAR, LLP

B:C ~ ~~n~'e-dl-a-nd------------------Ali S. Razai Reza Mirzaie Samantha Y. Hsu

Attorneys for Plaintiff Oakley, Inc

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UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA

NOTICE OF ASSIGNMENT TO UNITED STATES MAGISTRATE JUDGE FOR DISCOVERY

This case has been assigned to District Judge James V. Selna and the assigned discovery Magistrate Judge is Arthur Nakazato.

The case number on all documents filed with the Court should read as follows:

SACV13- 572 JVS (ANx)

Pursuant to General Order 05-07 of the United States District Court for the Central District of California, the Magistrate Judge has been designated to hear discovery related motions.

All discovery related motions should be noticed on the calendar of the Magistrate Judge

---------------------------------------- - - - - - - - - - - "-- - - - - - - .. _- - - - - -- - - - - - _. - - - - -,,- - --

NOTICE TO COUNSEL

A copy of this notice must be served with the summons and complaint on all defendants (if a removal action is filed, a copy of this notice must be served on all plaintiffs).

Subsequent documents must be filed at the following location:

U Western Division 312 N. Spring St., Rm. G-8 Los Angeles, CA 90012

U Southern Division 411 West Fourth St., Rm. 1-053 Santa Ana, CA 92701-4516

Failure to file at the proper location will result in your documents being returned to you.

U Eastern Division 3470 Twelfth St., Rm. 134 RiverSide, CA 92501

CV-18 (03/06) NOTICE OF ASSIGNMENT TO UNITED STATES MAGISTRATE JUDGE FOR DISCOVERY


AO 440 (Rev. 06/12) SUirunons in a Civi l Act ion

UNITED STATES DISTRICT COURT for the

Central District of California

OAKLEY, INC., a Washington corporation

Plaintiff(s)

v .

) ) ) ) ) ) ) ) ) ) ) )

SACV13 - 00572 JVS (ANx) Civil Action No.

MILNER DISTRIBUTION ALLIANCE, INC. d/b/a MAXX HD SUNGLASSES, a Colorado

corporation

Defendant(s)

SUMMONS IN A CIVIL ACTION

To: (Defendal11's name and address} MILNER DISTRIBUTION ALLIANCE, INC. d/b/a MAXX HD SUNGLASSES 738 Synthes Avenue Monument, Colorado 80132

A lawsuit has been filed against you.

Within 2 1 days after service of this summons on you (not counting the day you received it) - or 60 days if you are the United States or a United States agency, or an offi cer or employee of the United States described in Fed. R. Civ. P . 12 (a)(2) or (3) - you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of the Federal Rules of Civil Procedure. The answer or Illotion must be served on the plaintiff or plaint iFrs attorney, whose name and address are: Michael K. Friedland

KNOBBE, MARTENS, OLSON & BEAR, LLP 2040 Main Street, Suite 1400 Irvine, CA 92614

J f you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint. You also must file your answer or motion with the courl. .

Date: [APR '1 '0 2013'

CLERK OF COURT

PJ01lrt1;~ DODJIE


UNITED STATES DISTRICT COU RT, CENTRAL DISTRICT OF CALIFORN~ «:» [Of» WI CIVIL COVER SHEET ~ U

I. (a) PLAINTIFFS ( Check box if you are representing yoursel f D OAKLEY INc., a Wash ington corporation

(b) Attorneys (F irm Name, Address and Telephone Number. If you are representing yourself, provide same.) Michae l K. Friedland Ali S. Razai KNOBBE, MARTENS, OLSON & BEAR, LLP 2040 Ma in Street, 14th Floor, Irvine, CA 92614, Te lephone: 949-760-0404

II . BA SIS OF JURI SDICTION (P lace an X in one box only.)

D 1. U.S. Government Plaintiff

D 2. U.S. Government Defendant

~ 3, Federa l Quest ion (U.s. Government Not a Party)

D 4. Diversity (Indica te Citizenship of Parties in Item III)

IV. ORIGIN (Place an X In one box only.)

DEFENDANTS ( Check box if you are representing yourself 0 ) MILNER DISTRIBUTION ALLIANCE INC. d/b/a MAXX HD SUNGLASSES, a Co lorado corporation

(b) Attorneys (F irm Name, Address and Telephone Number. [fyou are representing yourse lf, provide same.) Unknown

III. CITIZENSH IP OF PRINCIPAL PARTIES'For Diversity Cases Only (Place an X in one box for plai"ntiff and one for defendant)

Citizen ofThis State

Citizen of Another State

Citizen or Subject of a Foreign Count ry

D

PTF DEF o 1 0 1 Incorporated or Principal Place o f Business in th is State

o 2 0 2 Incorporated and Principal Place of Business in Another State

o 3 0 Foreign Nation

PTF DEF 04 0 4

1. 0rig ina l

Proceeding D 2. Removed from State Court D 3. Remanded from

Appellate Court D 4. Re instated or Reopened

S. rans errea rom Anotner District (Specify)

b.MUl tl

D District litigation

V. REQUESTED IN COMPLAINT: JURY DEMAND: ~ Yes D No (Check "Yes" only if demanded in complaint.)

CLASS ACTION u nder F.R.Cv .P. 23: DYes ~ No til MONEY DEMANDED IN COMPLAINT: $ TBD attrial

V I. CAUSE OF ACTION (Cite the U.S. Civil Statute under which you are filing and w rite a brief statement of cause. Do not cite jurisdictional statutes unless diversity.)

Patent Infringement arising under 35 U.S.c. Section 27 1

VII . NATURE OF SUIT (P la ce an X in one box only).

OTHER STATUTES CONTRACT REAL PROPERTY CONT IMMIGRATION PRISONER PETITIONS PROPERTY RIGHTS

0 375 False Claims Act 0 110 Insurance 0 240 Torts to land 0

462 Naturalization Habeas Corpus: 0 820 Copyrights Applica t ion 0 463 Alien Detainee

400 State 0 245 Tort Product o 830 Patent 0 0 120 Marine l iability 465 Other 0 510 Motions to Vacate

Reapportionment 0 0 130 Mi ller Act 290 All Other Real

Immigration Actions Sentence o 840 Trademark 0 410 Antitrust 0 0 530 General

0 430 8anks and Banking 140 Negotiable Property TORTS SOCIAL SECURITY 0 Instrument TORTS 0 535 Death Penalty o 861 HIA (139Sff)

0 450 Commerce/ICC 150 Recovery of PERSONAL INJURY 0 370 Other Fraud Other: o 862 Black Lung (923) Rates/Etc. 0 Overpayment & 0 310 Airplane 0 540 MandamuslOther

0 460 Deportation Enforcement of 315 Airplane 0 371 Truth in l ending 0 550 Civil Rights 0 863 DIWCJDIWW 1405 (g))

Judgment 0 0

470 Racketeer Influ- Product Liability 0

380 Other Pe rso nal 0 555 Prison Cond ition 0 864 SSID Title XVI

enced & Corrupt Org. 0 151 Medicare Act 320 Assault, Libel & Property Damage 0 Slander 560 Civil Detainee 0 865 RSI (405 (g))

0 480 Consumer Credit 152 Recove ry of 330 Fed. Employers' 0 385 Property Damage D Conditions of

0 Defaulted Student 0 liability Product Liability Confi nement FEDERAL TAX SUITS

0 490 Cable/Sat TV Loan (Excl. Vet.) BANKRUPTCY FORFEITURE/PENALTY 870 Taxes (U .S. Plaintiff or 850 Securities/Com- O 340 Marine 422 Appea l 28 625 Drug Related

0 Defendant) 0 153 Recovery of 0 modities/Exchange 0 Overpayment of 0 345 Marine Product USC 158 0 Seizu re of Property 21 0 871 IRS-Thi rd Party 26 USC

890 Other Statutory Vet. Benefits liability

0 '423 Withdrawa l 28 USC 88 1 7609 0 USC 157 Act ions 160 Stockho lders' 0 350 Motor Vehicle

0 891 Agricultural Acts 0 Su its 355 Motor Veh icle CIVIL RIGHTS 0 690 Other 0 Product Liability 0 440 Other Civil Rights

0 893 Environmenta l 0 190 Other 360 Other Personal LABOR

Matters Contract 0 Injury 0 441 Voting 0 710 Fa ir labor Standards

0 895 Freedom of Info. 195 Contract 362 Personal Inj ury- 0 442 Employment

Act Act 0 Product Liability 0 Med Malpratice o 720 labor/Mgmt.

0 896 Arbitration o 196 Franchise 365 Persona l Injury- 0 443 Housing/ Relations

0 Product liability Accomodations D 740 Rai lway Labor Act 899 Admin. Procedu res

REAL PROPERTY 367 Hea lth Carel 445 American with

D Act/Review of Appeal of 0 210 Land Pharmaceutical 0 Disabilit ies- o 751 Family and Medica l

Agency Decision Condemnation 0 Personal Inj ury Employment ,Leave Act

0 220 Foreclosure Product liabi lity 0 446 America n w ith 0 790 Other Labor

o 950 Constitutiona lity of 368 Asbestos Disabilities-Other Lit igation

0 230 Rent Lease &

o ~~~~~~~I~ i~bi~Ytv 0 448 Education 0 791 Emp loyee Ret. Inc. State Statutes Ejectment Secu rity Act

ANx) FOR OFFICE USE ONLY. Case Number:... _~SJiA~Gb:\¥r-ll.>.3~--"O",O",57.:.:2=--.JV_S_( ____ _

AFTER COMPLETING PAGEl OF FORM CV-7l, COMPLETE THE INFORMATION REQUESTED ON PAGE 2.

CV-7 1 (02113) CIVil COVER SHEET Page 1 of 2


UNITED STATES DISTRICT COURT, CENTRAL DISTRICT OF CALIFORNIA CIVIL COVER SHEET

VlIl(a). IDENTICAL CASES: Has this action been previously filed in this court and dismissed, remanded or closed? ~ NO DYES

If yes, list case number(s}:

VlIl(b). RELATED CASES: Have any cases been previously filed in this court that are related to the present case? ~ NO DYES

If yes, list case number(s}:

Civif cases are deemed related if a previously filed case and the present case:

(Check all boxes that apply) D A. Arise from the same or closely related transactions, happenings, or events; or

D B. Call for determination of the same or substantially related or similar questions of law and fact; or

D c. For other reasons would entail substantial duplication of labor if heard by different judges; or

D D. Involve the same patent, trademark or copyright and one of the factors identified above in a, b or c also is present.

IX. VENUE: (When completing the following information, use an additional sheet if necessary.)

(a) Ust the County in this District; California County outside of this District; State if other than California; or Foreign Country, in which EACH named plaintiff resides.

D Check here if the government, its agencies or employees is a named plaintiff. If this box is checked, go to item (b).

County in this District:*

Orange County

California County outside of this District; State, if other than California; or Foreign Country

(b) Ust the County in this District; California County outside of this District; State if other than California; or Foreign Country, in which EACH named defendant resides.

o Check here if the government, its agencies or employees is a named defendant. If this box is checked, go to item (c).

County in this Oistrict:* California County outside of this District; State, if other than California; or Foreign Countr

Colorado

(c) Ust the County in this District; California County outside ofthis District; State if other than California; or Foreign Country, in which EACH claim arose. NOTE: In land condemnation cases, use the location of the tract of land involved.

County in this Oistrlct:* California County outside of this District; State, if other than California; or Foreign CountrY

Orange County United States

*L05 Angeles, Orange, San Bernardino, Riverside, Ventura, Santa Barbara, or S,~iS Obispo Counties Note: In land condemnation cases, use the location of the tract of land involved .

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/ X. SIGNATURE OF ATTORNEY (OR SELF-REPRESENTED LITIGANT' -'~ DATE: AerillO,2013

Notke to Counsel/Parties: The CV-71 (JS-44) Civil Cover Sheet and the inf&ation contained herein neither replace nor sup lernent the filin and service of leadin s or p g p g other papers as required by law. This form, approved by the Judicial Conference of the United States in September 1974, is required pursuant to Local Rule 3-1 is not filed but is used by the Clerk of the Court forthe purpose of statistics, venue and initiating the civil docket sheet. (For more detailed instructions, see separate instructions sheet).

Key to Statistical codes relating to Social Security Cases: Nature of Suit Code Abbreviation Substantive Statement of Cause of Action

861 HIA

862 BL

863 DIWC

863 DIWW

864 SSIO

865 RSI

CV-71 (02113)

All claims for health insurance benefits (Medicare) under Title 18, Part A, of the Socia! Security Act, as amended. Also, include claims by hospitals, skilled nursing facilities, etc., for certification as providers of services under the program. (42 U5"C 1935FF(b))

All claims for "Black Lung" benefits under Title 4, Part S, of the Federal Coal Mine Health and Safety Ad of 1969. (30 USc. 923)

All claims filed by insured workers for disability insurance benefits under Title 2 of the Social Security Act, as amended; plus all claims filed for child's insurance benefits based on disability. (42 U.S.c. 405 (g))

All claims filed for widows or widowers insurance benefits based on disability under Title 2 of the Social Security Act, as amended. (42 U.s.c. 405 (g))

All claims for supplemental security income payments based upon disability filed under Title 16 of the Social Security Act, as amended.

All claims for retirement (old age) and survivors benefits under Title 2 of the Social Security Act, as amended. (42 U5"C 405 (g))

CIVIL COVER SHEET Page20f2


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