COMPLAINT
Plaintiff Hunter Fan Company (“Hunter”), for its Complaint against Defendant Luminex
1. This is an action by Hunter against Luminex for patent infringement arising under
THE PARTIES
2. Plaintiff Hunter Fan Company is a corporation organized and existing under the
laws of the State of Delaware, having its principal place of business located at 7130 Goodlett
company organized and existing under the laws of Taiwan and having its principal place of
business located at 5F, No. 30, Yee Shien Road, Taipei, Taiwan. Luminex does business in
Wisconsin, directly or through intermediaries, including at least the importation, sale, and offer
for sale of its products, including those accused herein of patent infringement, to customers
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products are then resold and distributed throughout the United States.
4. This Court has subject matter jurisdiction over this action under 28 U.S.C. §
1338(a), as it is a civil action arising under an Act of Congress relating to patents; under 28
U.S.C. § 1331 as it involves a federal question; and under 28 U.S.C. § 1332 as the action is
between citizens of a State and a nonresident alien, and the amount in controversy in this action,
5. This Court has personal jurisdiction over Luminex pursuant to Wis. Stat. § 801.05
based upon Luminex’s engagement in substantial and not isolated activities within the State of
Wisconsin, based upon the injury to Hunter arising out of Luminex’s patent infringement in the
State of Wisconsin, and based upon Luminex’s sufficient minimum contacts with the State of
Wisconsin. Upon information and belief, Luminex regularly imports infringing goods into the
United States and delivers those infringing goods to a retailer’s distribution center located at
4860 Menard Drive, Eau Claire, Wisconsin, where ownership of the infringing goods is then
transferred to the retailer. Luminex’s infringing products are then resold and distributed
throughout Wisconsin, including this District, and throughout the United States.
6. Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c) because a
substantial part of the events giving rise to the claim occurred in this District and because
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THE CONTROVERSY
A. HUNTER’S PATENTS
7. Since 1886, Hunter and/or its predecessors-in-interest and licensees have been,
and continue to be, engaged in the business of designing ceiling fans and other products, having
them produced, and then selling them throughout the United States.
8. In or about 2015, Hunter designed, had manufactured, and started offering for sale
and selling its PERSEUS ceiling fan in the United States. Hunter’s PERSEUS ceiling fan,
including its housing, its light kit, and its blades, have distinctive and eye-catching designs that
are innovative in the ceiling fan industry. Hunter’s PERSEUS ceiling fan is depicted below:
9. Hunter has protected the innovative designs of its PERSEUS ceiling fan through
three different design patents duly issued by the United States Patent and Trademark Office: U.S.
Patent No. D761,949 entitled “Ceiling Fan” issued on July 19, 2016 (“the ‘949 Patent”), U.S.
Patent No. D779,648 entitled “Ceiling Fan” issued on February 21, 2017 (“the ‘648 Patent”), and
U.S. Patent No. D811,578 entitled “Ceiling Fan Housing” issued on February 27, 2018 (“the
‘578 Patent”) (collectively, “the PERSEUS Design Patents”). Attached as Exhibits A-C are true
and correct copies of the ‘949 Patent, the ‘648 Patent, and the ‘578 Patent, respectively. The
PERSEUS Design Patents protect the ornamental features claimed in those patents, including the
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housing and the blades. The ornamental features protected by the PERSEUS Design Patents are
10. Hunter is the assignee and lawful owner of each of the PERSEUS Design Patents.
11. Upon information and belief, Luminex manufactures in Taiwan and then imports
into the United States, and offers for sale and sells in the United States, ceiling fans under the
name TURN OF THE CENTURY® “Innovator” brand ceiling fans (hereinafter “Luminex’s
Infringing Ceiling Fans”) that incorporate the innovative designs embodied in each of Hunter’s
PERSEUS Design Patents. One example of Luminex’s Infringing Ceiling Fan is depicted below:
12. Upon information and belief, Luminex delivers Luminex’s Infringing Ceiling
Fans to Menard’s distribution center in Eau Claire, Wisconsin, where ownership of Luminex’s
Infringing Ceiling Fans is transferred to Menard’s. Menard’s then sells and distributes
Luminex’s Infringing Ceiling Fans throughout the United States in Menard’s stores and on its
Menard’s website.
13. Luminex’s Infringing Ceiling Fans misappropriate the patented designs protected
by Hunter’s PERSEUS Design Patents, including the same innovative designs of curved blades
and a floating ring housing. A side-by-side comparison of the designs claimed in each of
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Hunter’s PERSEUS Design Patents and one of Luminex’s Infringing Ceiling Fans is shown
below:
Figure 1: Hunter’s ‘949 Patent, Fig. 2 Figure 2: Hunter’s ‘648 Patent, Fig. 1
Figure 3: Hunter’s ‘578 Patent, Fig. 2 Figure 4: Luminex’s Infringing Ceiling Fan
substantially the same as the designs protected in each of Hunter’s PERSEUS Design Patents.
with unique designs for Luminex’s ceiling fans that are the result of Hunter’s innovation, not
Luminex’s. Luminex has not obtained permission from Hunter to use Hunter’s PERSEUS
Design Patents.
16. Upon information and belief, Luminex has in the past and continues today, to
willfully infringe Hunter’s PERSEUS Design Patents through at least the importation, offer for
17. Luminex’s Infringing Ceiling Fans directly compete with Hunter’s PERSEUS
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CAUSES OF ACTION
18. Hunter incorporates and realleges the paragraphs above herein by reference.
19. Luminex has made or has had made, used, offered for sale, distributed, and/or
sold within the United States and imported into the United States Luminex’s Infringing Ceiling
Fans that infringe the ‘949 Patent. Upon information and belief, Luminex continues its
20. Luminex’s infringement has caused damage to Hunter in an amount not yet
ascertained.
this an exceptional case and justifying the imposition of treble damages and an award of
reasonable attorney fees to Hunter within the provisions of 35 U.S.C. §§ 284 and 285.
22. By reason of the acts of Luminex alleged herein, Hunter has suffered, is suffering
and will continue to suffer irreparable damage, and unless Luminex is restrained from continuing
24. Hunter incorporates and realleges the paragraphs above herein by reference.
25. Luminex has made or has had made, used, offered for sale, distributed, and/or
sold within the United States and imported into the United States Luminex’s Infringing Ceiling
Fans that infringe the ‘648 Patent. Upon information and belief, Luminex continues its
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26. Luminex’s infringement has caused damage to Hunter in an amount not yet
ascertained.
this an exceptional case and justifying the imposition of treble damages and an award of
reasonable attorney fees to Hunter within the provisions of 35 U.S.C. §§ 284 and 285.
28. By reason of the acts of Luminex alleged herein, Hunter has suffered, is suffering
and will continue to suffer irreparable damage, and unless Luminex is restrained from continuing
30. Hunter incorporates and realleges the paragraphs above herein by reference.
31. Luminex has made or has had made, used, offered for sale, distributed, and/or
sold within the United States and imported into the United States Luminex’s Infringing Ceiling
Fans that infringe the ‘578 Patent. Upon information and belief, Luminex continues its
32. Luminex’s infringement has caused damage to Hunter in an amount not yet
ascertained.
this an exceptional case and justifying the imposition of treble damages and an award of
reasonable attorney fees to Hunter within the provisions of 35 U.S.C. §§ 284 and 285.
34. By reason of the acts of Luminex alleged herein, Hunter has suffered, is suffering
and will continue to suffer irreparable damage, and unless Luminex is restrained from continuing
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a. That the Court adjudge and decree that Luminex has infringed the claims of each
attorneys, brokers, and all others acting in privity or in concert with Luminex, and its parents,
subsidiaries, divisions, successors and assigns, be forthwith preliminarily enjoined and restrained
from making, using, offering to sell, or selling within the United States or importing into the
United States Luminex’s Infringing Ceiling Fans, and any other product with a confusingly
similar appearance to the designs of Hunter’s PERSEUS Design Patents, during the pendency of
this civil action, and thereafter permanently enjoined and restrained from making, using, offering
to sell, or selling within the United States or importing into the United States Luminex’s
Infringing Ceiling Fans, and any other products with a confusingly similar appearance to the
c. That Luminex be directed to file with this Court and serve on Hunter within thirty
days after the service of an injunction, a report in writing under oath, setting forth in detail the
manner and form in which Luminex has complied with the injunction;
Ceiling Fans and all literature, advertisements and other materials displaying Luminex’s
Infringing Ceiling Fans or any ceiling fan confusingly similar to the designs of Hunter’s
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e. That the Court require a full and complete accounting of all monies received by
Luminex as a result of the wrongful making, using, offering to sell, or selling within the United
States or importing into the United States of Luminex’s Infringing Ceiling Fans, together with an
f. That Luminex account for and pay to Hunter all damages available to Hunter for
Luminex’s infringement of Hunter’s PERSEUS Design Patents, including all pre-judgment and
post-judgment interest at the maximum rate permitted by law and costs of suit, and that the Court
increase the amount of damages to three times the amount found or assessed by the Court
because of the willful and deliberate nature of the infringement, in accordance with 35 U.S.C. §
284;
g. That Luminex account for and pay to Hunter the extent of Luminex’s total profit
associated with Luminex’s Infringing Ceiling Fans, but not less than $250, and any other
h. That the Court declare this an exceptional case and that Hunter be granted its
i. That the Court require Luminex to notify its commercial licensees, dealers,
associates, suppliers, brokers, retailers and customers of said Court Order; and
j. That Hunter has such other and further relief as the Court may deem just.
Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Hunter hereby demands
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Respectfully submitted,
s/ Jennifer L. Gregor
Jennifer L. Gregor
Mark W. Hancock
GODFREY & KAHN S.C.
One East Main Street, Suite 500
Madison, Wisconsin 53703-3300
Telephone: 608.284.2629
Facsimile: 608.257.0609
jgregor@gklaw.com
mhancock@gklaw.com
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EXHIBIT A
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USOOD761949S
D268,521 S * 4, 1983 Clemente .................. 416, 169 A FIG. 1 is a perspective view of a ceiling fan showing my new
4,518,314 A 5, 1985 Schultz design;
D333,867 S 3, 1993 Markwardt FIG. 2 is an additional perspective view thereof;
D349,336 S 8/1994 Tsuji FIG. 3 is a side elevation view thereof;
5,575,624 A * 1 1/1996 Bogage ................. FO4D 29,384
416,235 FIG. 4 is an alternative side view thereof;
D376,845 S 12, 1996 Chen FIG. 5 is a top view thereof; and,
5,658,129 A * 8/1997 Pearce .................... FO4D 29/38 FIG. 6 is a bottom view thereof.
416,146R
D433,114 S * 10/2000 Liu .............................. D23,377 The broken lines in the drawings depict parts of the ceiling fan
D438,950 S 3/2001 Frampton that form no part of the claimed design.
D490,510 S * 5/2004 Cohen .......................... D23,379
6,733,241 B2 5, 2004 Bird 1 Claim, 6 Drawing Sheets
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US D761,949 S
Page 2
US D761,949 S
Page 3
F. :
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Fi.
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EXHIBIT B
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USOOD779648S
US D779,648 S
Page 2
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dl
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EXHIBIT C
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EXHIBIT D
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JS 44 (Rev. 06/17) CIVIL COVER SHEET
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
(b) County of Residence of First Listed Plaintiff County of Residence of First Listed Defendant
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
Godfrey & Kahn, S.C., 1 East Main Street, Ste. 500, Madison, WI
53703-3300, 608-284-3911
II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
u 1 U.S. Government u 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State u 1 u 1 Incorporated or Principal Place u 4 u 4
of Business In This State
u 2 U.S. Government u 4 Diversity Citizen of Another State u 2 u 2 Incorporated and Principal Place u 5 u 5
Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State
The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as
required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of
Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
I.(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and
then the official, giving both name and title.
(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
condemnation cases, the county of residence of the "defendant" is the location of the tract of land involved.)
(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
in this section "(see attachment)".
II. Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X"
in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.
Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment
to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes
precedence, and box 1 or 2 should be marked.
Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the
citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity
cases.)
III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this
section for each principal party.
IV. Nature of Suit. Place an "X" in the appropriate box. If there are multiple nature of suit codes associated with the case, pick the nature of suit code
that is most applicable. Click here for: Nature of Suit Code Descriptions.
VI. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service
VII. Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P.
Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket
numbers and the corresponding judge names for such cases.
Date and Attorney Signature. Date and sign the civil cover sheet.
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Within 21 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 officer 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 motion must be served on the plaintiff or plaintiff’s attorney,
whose name and address are:
Jennifer L. Gregor (jgregor@gklaw.com)
GODFREY & KAHN, S.C.
One East Main Street, Suite 500
Madison, WI 53703
Phone: 608-257-3911
If 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 court.
CLERK OF COURT
Date:
Signature of Clerk or Deputy Clerk
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PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
This summons for (name of individual and title, if any) Luminex International Co., Ltd.
was received by me on (date) .
u I left the summons at the individual’s residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date) , and mailed a copy to the individual’s last known address; or
u Other (specify):
.
My fees are $ for travel and $ for services, for a total of $ 0.00 .
Date:
Server’s signature
Server’s address