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Case 3:16-cv-01757-BTM-JMA Document 1 Filed 07/07/16 Page 1 of 15

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Michael K. Friedland (SBN 157,217)


michael.friedland@knobbe.com
Ali S. Razai (SBN 246,922)
ali.razai@knobbe.com
Samantha Y. Hsu (SBN 285,853)
samantha.hsu@knobbe.com
KNOBBE, MARTENS, OLSON & BEAR, LLP
2040 Main Street, Fourteenth Floor
Irvine, CA 92614
Telephone: (949) 760-0404
Facsimile: (949) 760-9502
Attorneys for Plaintiff
OAKLEY, INC.

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IN THE UNITED STATES DISTRICT COURT

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FOR THE SOUTHERN DISTRICT OF CALIFORNIA

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OAKLEY, INC., a Washington


corporation,
Plaintiff,

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v.
SUNBELT U.S.A., INC. d/b/a Typhoon
Optics, a California corporation,
Defendant.

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Civil Action No. '16CV1757 BTM JMA


COMPLAINT FOR PATENT
INFRINGEMENT

DEMAND FOR JURY TRIAL

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COMPLAINT

Case 3:16-cv-01757-BTM-JMA Document 1 Filed 07/07/16 Page 2 of 15

Plaintiff Oakley, Inc. (Oakley) hereby complains of Sunbelt U.S.A.,

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Inc. d/b/a Typhoon Optics (Defendant) and alleges as follows:

I. JURISDICTION AND VENUE


1.

This Court has original subject matter jurisdiction over the claims

in this action pursuant to 35 U.S.C. 271 and 281 and 28 U.S.C. 1331 and

1338.
2.

This Court has personal jurisdiction over Defendant because

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

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

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

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

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

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

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

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Oakleys claim.

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3.

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

1391(d), and 1400(b).

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II. THE PARTIES


4.

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Plaintiff Oakley is a corporation organized and existing under the

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

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Icon, Foothill Ranch, California 92610.


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Plaintiff is informed and believes, and thereon alleges, that

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Defendant Sunbelt U.S.A., Inc. d/b/a Typhoon Optics is a corporation organized

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and existing under the laws of the State of California, having its principal place

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of business at 1941 Yeager Avenue, La Verne, California 91750.


6.

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Oakley is informed and believes, and thereon alleges, that

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

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COMPLAINT

Case 3:16-cv-01757-BTM-JMA Document 1 Filed 07/07/16 Page 3 of 15

III. GENERAL ALLEGATIONS


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Oakley is one of the worlds most iconic brands. The company and

its products, particularly in the realm of eyewear, are instantly and universally

recognized for their innovative technology and distinctive style.

founding, Oakleys engineers and designers have worked continuously to bring

new technology and breakthrough designs to the market.


8.

Since its

Oakley has been actively engaged in the manufacture and sale of

high quality eyewear since at least 1985.

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

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Oakley is the manufacturer and

protected by various intellectual property rights owned by Oakley.


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On December 4, 2007, the United States Patent and Trademark

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Office duly and lawfully issued United States Design Patent No. D556,818 (the

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D818 Patent), titled EYEGLASS COMPONENTS. Oakley is the owner by

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assignment of all right, title, and interest in the D818 Patent. A true and correct

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copy of the D818 Patent is attached hereto as Exhibit A.


10.

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

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into the United States eyewear that infringes Oakleys intellectual property

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rights, including the D818 Patent.


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Oakley has provided the public with constructive notice of its

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patent rights, including Oakleys rights in the D818, pursuant to 35 U.S.C.

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287.

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Oakley also provided Defendant with actual notice of the D818

Patent in a cease and desist letter dated March 29, 2016.


13.

Despite Oakleys request that Defendant stop its infringing

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activities, Defendant has continued to infringe Oakleys patent rights in the

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D818 Patent.

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14.

Defendants acts complained of herein have caused Oakley to

suffer irreparable injury to its business. Oakley will suffer substantial loss
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COMPLAINT

Case 3:16-cv-01757-BTM-JMA Document 1 Filed 07/07/16 Page 4 of 15

unless and until Defendant is enjoined from its wrongful actions complained of

herein.

FIRST CLAIM FOR RELIEF

(Patent Infringement)
(35 U.S.C. 271)

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15.

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

this Complaint as if set forth fully herein.

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This is a claim for patent infringement under 35 U.S.C. 271.

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Defendant, through its agents, employees, and servants has, and

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continues to, knowingly, intentionally, and willfully infringe the D818 Patent by

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making, using, selling, offering for sale, and/or importing eyewear having a

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design that would appear to an ordinary observer to be substantially similar to

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the claim of the D818 Patent, including for example, Defendants Aloha model

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sunglasses as shown below, which were sold and/or offered for sale on the

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website http://www.typhoonoptics.com by Defendant.

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Accused Product

Oakleys Patent

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Defendants Accused Product

U.S. Patent No. 556,818

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Aloha

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18.

Defendants acts of infringement of the D818 Patent were

undertaken without permission or license from Oakley. Upon information and


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COMPLAINT

Case 3:16-cv-01757-BTM-JMA Document 1 Filed 07/07/16 Page 5 of 15

belief, Defendant had actual knowledge of Oakleys rights in the design claimed

in the D818 Patent. Oakley and its iconic designs are well-known throughout

the eyewear industry and Defendants Aloha model sunglasses are nearly an

identical copy of Oakleys design. Accordingly, Defendants actions constitute

willful and intentional infringement of the D818 Patent. Defendant had actual

notice of Oakleys patent rights, including at least through the cease and desist

letter dated March 29, 2016, yet Defendant infringed the D818 Patent with

reckless disregard of Oakleys patent rights. Defendant knew, or it was so

obvious that Defendant should have known, that its actions constituted

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infringement of the D818 Patent. Defendants acts of infringement of the D818

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Patent were not consistent with the standards of commerce for its industry.

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As a direct and proximate result of Defendants acts of

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

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in an amount that is not presently known to Oakley.

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

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Defendants infringing acts and treble damages together with interests and costs

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as fixed by this Court.

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21.

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

attorneys fees for the necessity of bringing this claim.


22.

Pursuant to 35 U.S.C. 289, Oakley is entitled to Defendants total

profits from Defendants infringement of the D818 Patent.


23.

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

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


24.

Defendant will continue to infringe Oakleys patent rights to the

great and irreparable injury of Oakley, unless enjoined by this Court.


WHEREFORE, Oakley prays for judgment in its favor against
Defendant for the following relief:

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COMPLAINT

Case 3:16-cv-01757-BTM-JMA Document 1 Filed 07/07/16 Page 6 of 15

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A.

An Order adjudging Defendant to have willfully infringed the

D818 Patent under 35 U.S.C. 271;


B.

A preliminary and permanent injunction enjoining Defendant, its

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

those persons in active concert or participation with Defendant, from infringing

the D818 Patent in violation of 35 U.S.C. 271;

C.

That Defendant account for all gains, profits, and advantages

derived by Defendants infringement of the D818 in violation of

35 U.S.C. 271, and that Defendant pay to Oakley all damages suffered by

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Oakley and/or Defendants total profit from such infringement pursuant to 35

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U.S.C. 289;

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D.

An Order adjudging that this is an exceptional case;

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E.

An Order for a trebling of damages and/or exemplary damages

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because of Defendants willful conduct pursuant to 35 U.S.C. 284;


F.

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

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


G.

An award of pre-judgment and post-judgment interest and costs of

this action against Defendant; and,


H.

Such other and further relief as this Court may deem just and

proper.

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Respectfully submitted,

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KNOBBE, MARTENS, OLSON & BEAR, LLP

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Dated: July 7, 2016

By: /s/ Ali S. Razai


Michael K. Friedland
Ali S. Razai
Samantha Y. Hsu
Attorneys for Plaintiff
OAKLEY, INC

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COMPLAINT

Case 3:16-cv-01757-BTM-JMA Document 1 Filed 07/07/16 Page 7 of 15

DEMAND FOR JURY TRIAL


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

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triable.

Respectfully submitted,

KNOBBE, MARTENS, OLSON & BEAR, LLP

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Dated: July 7, 2016

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By: /s/ Ali S. Razai


Michael K. Friedland
Ali S. Razai
Samantha Y. Hsu
Attorneys for Plaintiff
OAKLEY, INC.

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COMPLAINT

Case 3:16-cv-01757-BTM-JMA Document 1 Filed 07/07/16 Page 8 of 15

TABLE OF EXHIBITS

Page #

Exhibit A ............................................................................................................... 1

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TABLE OF EXHIBITS

Case 3:16-cv-01757-BTM-JMA Document 1 Filed 07/07/16 Page 9 of 15

EXHIBIT A

Case 3:16-cv-01757-BTM-JMA Document 1 Filed 07/07/16 Page 10 of 15


USO0D556818S

(12) United States Design Patent (10) Patent N0.:


Jannard et a].
(54)

(75)

EYEGLASS COMPONENTS

Inventors: James H. Jannard, Spieden Island, WA

D481,063 S

10/2003

D500,781 S

1/2005

13534572 5 *

(US); Hans Karsten


_
Moritz,
Foothill
~

221E265 ms) Coll Baden Imne

Term:

14 Years

(21)

Appl. No.: 29/272,777

(22) Filed;

Dec. 4, 2007

Lane ....................... .. D16/326


Mage ..

1/2007 Teng

(Ting
uang
~ ~ ~ ~ ..
~~

1/2007 Bruck

D537,467 S

2/2007

.... .. D16/335

~~~~ ~~ 1316/337
~ ~ ~ ~ ..
....
~~

.... .. D16/326

Teng ....................... .. D16/326

OTHER PUBLICATIONS
Pending U.S. Appl. No. 29/227,719, ?led Apr. 13, 2005, Jannard.
* cited by examiner
_

Primary ExammeriRaphael Barkai

Feb 15, 2007

(74) Attorney, Agent, or FirmiGregory K. Nelson

Related US. Application Data


(62)

4*

D536,026 s *

(73) Assignee: Oakley, Inc., Foothill Ranch, CA (US)


(**)

US D556,818 S

(45) Date of Patent:

(57)

CLAIM

Division OfaPPliCatiOn NO- 29/227,719, ?led On AP1

The ornamental design for an eyeglass components, as

13,

Shown and described_

HOW Pat. NO. Des.

(51)

LOC (8) Cl.

(52)
(58)

US. Cl. ................................... .. D16/326; D16/335


Field of Classi?cation Search ..... .. Dl6/300i330,

............................................... .. 16-06

D16/101,332*338; D29/l09ill0; D24/110.2;


351/41, 44, 51452, 62, 158, 92, 1034111,

351/156, 61 114E119 121E123; 2/426i432


2/447i449, 441, 436, 4344437

See application ?le for Complete Search history.

(56)

References Cited

DESCRIPTION

FIG 1 is a from perspective View of the eyeglass COmpO_


Helm of the present invention;

FIG 21S a ers ective View thereof


'

FIG. 3 15 a front elevational VleW thereof;


FIG. 4 is a lateral left-side elevational View thereof, the

lateral right-side elevational View being a mirror image

thereof;
FIG. 5 is a medial left-side elevational View thereof, the

U.S. PATENT DOCUMENTS


D193,028
D199,150
D202,658
D209,862

S
S
S
S

6/1962
9/1964
10/1965
1/1968

Petitto
Carmichael
Petitto
McCracken

medial right-side elevational View being a mirror image

thereof;
FIG. 6 is a rear elevational View thereof;

FIG. 7 is a bottom plan View thereof; and,

D268,683 S

4/1983 Tenny

FIG. 8 is a top elevational View thereof.

D285,020
D372,726
D390,589
D397,351

8/1986
8/1996
2/1998
8/1998

Phantom lining, Where utilized, is for illustrative purposes


only and is not intended to limit the claimed design to the
features shoWn in phantom.

S
S
S
S

Schmidthaler
Simioni
Simioni
Simioni

D407,099 S

3/1999 Wang

D414,796 S

10/1999 Arnette

1 Claim, 5 Drawing Sheets

EXHIBIT A
Page 1

Case 3:16-cv-01757-BTM-JMA Document 1 Filed 07/07/16 Page 11 of 15

U.S. Patent

Dec. 4, 2007

Sheet 1 0f 5

EXHIBIT A
Page 2

US D556,818 S

Case 3:16-cv-01757-BTM-JMA Document 1 Filed 07/07/16 Page 12 of 15

U.S. Patent

Dec. 4, 2007

Sheet 2 0f 5

EXHIBIT A
Page 3

US D556,818 S

Case 3:16-cv-01757-BTM-JMA Document 1 Filed 07/07/16 Page 13 of 15

U.S. Patent

Dec. 4, 2007

Sheet 3 0f 5

EXHIBIT A
Page 4

US D556,818 S

Case 3:16-cv-01757-BTM-JMA Document 1 Filed 07/07/16 Page 14 of 15

U.S. Patent

Dec. 4, 2007

Sheet 4 0f 5

FIG. 7

EXHIBIT A
Page 5

US D556,818 S

Case 3:16-cv-01757-BTM-JMA Document 1 Filed 07/07/16 Page 15 of 15

U.S. Patent

Dec. 4, 2007

Sheet 5 0f 5

FIG. 8

EXHIBIT A
Page 6

US D556,818 S