Oakley v. Jay-Y Enterprise

COMPLAINT
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Michael K. Friedland (SBN 157,217)
mfriedland@knobbe.com
Lauren K. Katzenellenbogen (SBN 223,370)
lauren.katzenellenbogen@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
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF CALIFORNIA

OAKLEY, INC., a Washington
corporation,
Plaintiff,
v.
J AY-Y ENTERPRISE CO., INC, a
California corporation,
Defendant.

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Civil Action No.
COMPLAI NT FOR
PATENT I NFRI NGEMENT

DEMAND FOR J URY TRI AL
'13CV0866 JMA GPC
Case 3:13-cv-00866-GPC-JMA Document 1 Filed 04/10/13 Page 1 of 36

-1- COMPLAINT
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Plaintiff Oakley, Inc. (Oakley) hereby complains of Defendant J ay-Y
Enterprise Co., Inc. (Defendant or J ay-Y) and alleges as follows:
I . J URI SDI CTI ON AND VENUE
1. This Court has subject matter jurisdiction over this action pursuant
to 28 U.S.C. 1331 and 1338, as it arises under the patent laws of the United
States.
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
this judicial district, and by committing acts of patent infringement in this
judicial district, including but not limited to selling infringing eyewear directly
to consumers and/or retailers in this district and selling into the stream of
commerce knowing such products would be sold in California and this district,
which acts form a substantial part of the events or omissions giving rise to
Oakleys claim.
3. Venue is proper in this judicial district under 28 U.S.C. 1391 (b)
and (c), and 28 U.S.C. 1400(b).
I I . THE PARTI ES
4. Oakley is a corporation organized and existing under the laws of
the State of Washington, having its principal place of business at One Icon,
Foothill Ranch, California 92610.
5. Oakley is informed and believes, and thereon alleges, that Defendant
J ay-Y is a corporation organized and existing under the laws of the state of
California, having its principal place of business at 632 New York Drive,
Pomona, California 91768.
6. Oakley is informed and believes, and thereon alleges, that Defendant
has committed the acts alleged herein within this judicial district.
/ / /

-2- COMPLAINT
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I I I . GENERAL ALLEGATI ONS
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 J une 10, 1997, the United States Patent and Trademark Office
duly and lawfully issued United States Patent No. 5,638,145 (the 145 patent),
entitled Vented Eyeglass Lens. Oakley is the owner by assignment of all
right, title, and interest in the 145 patent. A true and correct copy of the 145
patent is attached hereto as Exhibit A.
9. On May 29, 2007, the United States Patent and Trademark Office
duly and lawfully issued United States Design Patent No. D543,572 (the D572
patent), entitled Eyeglass. Oakley is the owner by assignment of all right,
title, and interest in the D572 patent. A true and correct copy of the D572 patent
is attached hereto as Exhibit B.
10. On J une 1, 2010, the United States Patent and Trademark Office
duly and lawfully issued United States Design Patent No. D616,919 (the D919
patent), entitled Eyeglass Front. Oakley is the owner by assignment of all
right, title, and interest in the D919 patent. A true and correct copy of the D919
patent is attached hereto as Exhibit C.
11. On August 26, 2003, the United States Patent and Trademark
Office duly and lawfully issued United States Design Patent No. D478,929 (the
D929 patent), entitled Eyeglass. Oakley is the owner by assignment of all
right, title, and interest in the D929 patent. A true and correct copy of the D929
patent is attached hereto as Exhibit D.
12. Defendant manufactures, uses, sells, offers for sale and/or imports
into the United States eyewear that infringe Oakleys intellectual property
rights.

-3- COMPLAINT
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13. Oakley has provided the public with constructive notice of its
patent rights pursuant to 35 U.S.C. 287.
I V. CLAI M FOR RELI EF
(Patent Infringement)
(35 U.S.C. 271)
14. Oakley repeats and re-alleges the allegations of paragraphs 1-13 of
this Complaint as if set forth fully herein.
15. This is a claim for patent infringement under 35 U.S.C. 271.
16. Defendant, through its agents, employees and servants, has, and
continues to, knowingly, intentionally and willfully directly infringe, engage in
acts of contributory infringement, and/or induce the infringement of the 145
patent by directly and/or indirectly making, using, selling, offering for sale
and/or importing eyewear that are covered by the 145 patent, including
Defendants XLoop sunglass model 8X3579.
17. Defendants acts of infringement of the 145 patent were
undertaken without permission or license from Oakley. Defendant had actual
and/or constructive knowledge of the 145 patent and its actions constitute
willful and intentional infringement of the 145 patent. Defendant infringed the
145 patent with reckless disregard of Oakleys patent rights. Defendant knew,
or it was so obvious that Defendant should have known, that its actions
constituted infringement of the 145 patent. Defendants acts of infringement of
the 145 patent were not consistent with the standards of commerce for its
industry.
acts of contributory infringement, and/or induce the infringement of the D572
/ / /

-4- COMPLAINT
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and/or importing eyewear that are covered by the D572 patent, including
Defendants XLoop sunglass model 8X2292.
19. Defendants acts of infringement of the D572 patent were
and/or constructive knowledge of the D572 patent and its actions constitute
willful and intentional infringement of the D572 patent. Defendant infringed
the D572 patent with reckless disregard of Oakleys patent rights. Defendant
knew, or it was so obvious that Defendant should have known, that its actions
constituted infringement of the D572 patent. Defendants acts of infringement
of the D572 patent were not consistent with the standards of commerce for its
industry.
and/or importing eyewear that are covered by the D919 patent, including
Defendants Biohazard sunglass model 8BZ66121.
industry.

-5- COMPLAINT
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and/or importing eyewear that are covered by one or more claims of the D929
patent, including Defendants Polarized XLoop sunglass model PZ/X2056
and XLoop sunglass model 8X2056.
industry.
24. As a direct and proximate result of Defendants patent
infringement, Defendant has derived and received gains, profits, and advantages
in an amount not presently known to Oakley.
25. Pursuant to 35 U.S.C. 284, Oakley is entitled to damages for
Defendants infringing acts and treble damages together with interests and costs
as fixed by this Court.
26. Pursuant to 35 U.S.C. 289, Oakley is entitled to Defendants total
profits from the sale of eyewear that infringe any one of Oakleys design
patents.
27. Pursuant to 35 U.S.C. 285, Oakley is entitled to reasonable
attorneys fees for the necessity of bringing this claim.
28. Due to the aforesaid infringing acts, Oakley has suffered great and
irreparable injury, for which Oakley has no adequate remedy at law.
/ / /

-6- COMPLAINT
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29. Defendant continues to directly and/or indirectly infringe Oakleys
patents 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:
A. An Order adjudging Defendant to have willfully infringed the 145
patent, the D572 patent, the D919 patent, and the D929 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 directly or
indirectly infringing the 145 patent, the D572 patent, the D919 patent, or the
D929 patent patents in violation of 35 U.S.C. 271;
C. That pursuant to 35 U.S.C. 284, Defendant account for all gains,
profits, and advantages derived from Defendants infringement and that
Defendant pay to Oakley all damages suffered by Oakley as a result of
Defendants infringement;
D. That pursuant to 35 U.S.C. 289, Defendant account for its total
profit from Defendants infringement of any of Oakleys design patents;
E. An Order for a trebling of damages and/or exemplary damages
because of Defendants willful conduct pursuant to 35 U.S.C. 284;
F. An Order adjudging that this is an exceptional case;
F. An award to Oakley of the attorneys fees, expenses, and costs
incurred by Oakley in connection with this action pursuant to 35 U.S.C. 285;
H. An award of pre-judgment and post-judgment interest and costs of
this action against Defendant;
I. That Oakley have and recover the costs of this civil action,
including reasonable attorneys fees;

-7- COMPLAINT
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J . An award of pre-judgment and post-judgment interest and costs of
this action against Defendant; and,
K. Such other and further relief as this Court may deem just and
proper.

Dated: April 10, 2013 By: /s/ Ali S. Razai
Michael K. Friedland
Lauren Keller Katzenellenbogen
Ali S. Razai
Samantha Y. Hsu

OAKLEY, INC

-8- COMPLAINT
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DEMAND FOR J URY TRI AL
Plaintiff Oakley, Inc. hereby demands a trial by jury on all issues so
triable.
Dated: April 10, 2013 By: /s/ Ali S. Razai
Michael K. Friedland
Lauren Keller Katzenellenbogen
Samantha Y. Hsu
Ali S. Razai

OAKLEY, INC

15198452


-i- Table of Exhibits
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TABLE OF EXHI BI TS
Page #
Exhibit A ............................................................................................................... 1
Exhibit B ............................................................................................................... 7
Exhibit C ............................................................................................................. 12
Exhibit D ............................................................................................................. 16

15197503


EXHI BI T A
Exhibit A
Page 1
Exhibit A
Page 2
Exhibit A
Page 3
Exhibit A
Page 4
Exhibit A
Page 5
Exhibit A
Page 6

EXHI BI T B
Exhibit B
Page 7
Exhibit B
Page 8
Exhibit B
Page 9
Exhibit B
Page 10
Exhibit B
Page 11

EXHI BI T C
Exhibit C
Page 12
Exhibit C
Page 13
Exhibit C
Page 14
Exhibit C
Page 15

EXHI BI T D
Exhibit D
Page 16
Exhibit D
Page 17
Exhibit D
Page 18
Exhibit D
Page 19
Exhibit D
Page 20
JS 44 (Rev. 12/12)
CIVIL COVER SHEET
The JS 44 civil cover sheet and the inIormation contained herein neither replace nor supplement the Iiling and service oI pleadings or other papers as required by law, except as
provided by local rules oI court. This Iorm, approved by the Judicial ConIerence oI the United States in September 1974, is required Ior the use oI the Clerk oI Court Ior the
purpose oI initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
I. (a) PLAINTIFFS DEFENDANTS
(b) County oI Residence oI First Listed PlaintiII County oI Residence oI First Listed DeIendant
(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)
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
PlaintiII (U.S. Government Not a Party) Citizen oI This State u 1 u 1 Incorporated or Principal Place u 4 u 4
oI Business In This State
u 2 U.S. Government u 4 Diversity Citizen oI Another State u 2 u 2 Incorporated and Principal Place u 5 u 5
DeIendant (Indicate Citizenship of Parties in Item III) oI Business In Another State
Citizen or Subject oI a u 3 u 3 Foreign Nation u 6 u 6
Foreign Country
IV. NATURE OF SUIT (Place an X in One Box Only)
CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
u 110 Insurance PERSONAL INJURY PERSONAL INJURY u 625 Drug Related Seizure u 422 Appeal 28 USC 158 u 375 False Claims Act
u 120 Marine u 310 Airplane u 365 Personal Injury - oI Property 21 USC 881 u 423 Withdrawal u 400 State Reapportionment
u 130 Miller Act u 315 Airplane Product Product Liability u 690 Other 28 USC 157 u 410 Antitrust
u 140 Negotiable Instrument Liability u 367 Health Care/ u 430 Banks and Banking
u 150 Recovery oI Overpayment u 320 Assault, Libel & Pharmaceutical PROPERTY RIGHTS u 450 Commerce
& EnIorcement oI Judgment Slander Personal Injury u 820 Copyrights u 460 Deportation
u 151 Medicare Act u 330 Federal Employers` Product Liability u 830 Patent u 470 Racketeer InIluenced and
u 152 Recovery oI DeIaulted Liability u 368 Asbestos Personal u 840 Trademark Corrupt Organizations
Student Loans u 340 Marine Injury Product u 480 Consumer Credit
(Excludes Veterans) u 345 Marine Product Liability LABOR SOCIAL SECURITY u 490 Cable/Sat TV
u 153 Recovery oI Overpayment Liability PERSONAL PROPERTY u 710 Fair Labor Standards u 861 HIA (1395II) u 850 Securities/Commodities/
oI Veteran`s BeneIits u 350 Motor Vehicle u 370 Other Fraud Act u 862 Black Lung (923) Exchange
u 160 Stockholders` Suits u 355 Motor Vehicle u 371 Truth in Lending u 720 Labor/Management u 863 DIWC/DIWW (405(g)) u 890 Other Statutory Actions
u 190 Other Contract Product Liability u 380 Other Personal Relations u 864 SSID Title XVI u 891 Agricultural Acts
u 195 Contract Product Liability u 360 Other Personal Property Damage u 740 Railway Labor Act u 865 RSI (405(g)) u 893 Environmental Matters
u 196 Franchise Injury u 385 Property Damage u 751 Family and Medical u 895 Freedom oI InIormation
u 362 Personal Injury - Product Liability Leave Act Act
Medical Malpractice u 790 Other Labor Litigation u 896 Arbitration
REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS u 791 Employee Retirement FEDERAL TAX SUITS u 899 Administrative Procedure
u 210 Land Condemnation u 440 Other Civil Rights Habeas Corpus: Income Security Act u 870 Taxes (U.S. PlaintiII Act/Review or Appeal oI
u 220 Foreclosure u 441 Voting u 463 Alien Detainee or DeIendant) Agency Decision
u 230 Rent Lease & Ejectment u 442 Employment u 510 Motions to Vacate u 871 IRSThird Party u 950 Constitutionality oI
u 240 Torts to Land u 443 Housing/ Sentence 26 USC 7609 State Statutes
u 245 Tort Product Liability Accommodations u 530 General
u 290 All Other Real Property u 445 Amer. w/Disabilities - u 535 Death Penalty IMMIGRATION
Employment Other: u 462 Naturalization Application
u 446 Amer. w/Disabilities - u 540 Mandamus & Other u 465 Other Immigration
Other u 550 Civil Rights Actions
u 448 Education u 555 Prison Condition
u 560 Civil Detainee -
Conditions oI
ConIinement
V. ORIGIN (Place an X in One Box Only)
u 1 Original
Proceeding
u 2 Removed Irom
State Court
u 3 Remanded Irom
Appellate Court
u 4 Reinstated or
Reopened
u 5 TransIerred Irom
Another District
(specify)
u 6 Multidistrict
Litigation
VI. CAUSE OF ACTION
Cite the U.S. Civil Statute under which you are Iiling (Do not cite jurisdictional statutes unless diversity):

BrieI description oI cause:
VII. REQUESTED IN
COMPLAINT:
u CHECK IF THIS IS A CLASS ACTION
UNDER RULE 23, F.R.Cv.P.
DEMAND $ CHECK YES only iI demanded in complaint:
JURY DEMAND: u Yes u No
VIII. RELATED CASE(S)
IF ANY
(See instructions):
JUDGE DOCKET NUMBER
DATE SIGNATURE OF ATTORNEY OF RECORD
FOR OFFICE USE ONLY
RECEIPT # AMOUNT APPLYING IFP JUDGE MAG. JUDGE
OAKLEY, INC., a Washington corporation
Michael K. Friedland, Lauren K. Katzenellenbogen, Ali S. Razai
KNOBBE, MARTENS, OLSON & BEAR LLP
2040 Main St., 14th Fl., Irvine, CA 92614
JAY Y ENTERPRISES CO., INC., a California corporation
35 U.S.C. Sec. 271
Patent Infringement of U.S Patent Nos. 5638145, D543572, D616919, and D478929
Cathy Ann Bencivengo 12-CV-2458
04/10/2013 /s/Ali S. Razai
To be determined
'13CV0866 JMA GPC
JS 44 Reverse (Rev. 12/12)
INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
Authority For Civil Cover Sheet
The JS 44 civil cover sheet and the inIormation contained herein neither replaces nor supplements the Iilings and service oI pleading or other papers as
required by law, except as provided by local rules oI court. This Iorm, approved by the Judicial ConIerence oI the United States in September 1974, is
required Ior the use oI the Clerk oI Court Ior the purpose oI initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk oI
Court Ior each civil complaint Iiled. The attorney Iiling a case should complete the Iorm as Iollows:
I.(a) Plaintiffs-Defendants. Enter names (last, Iirst, middle initial) oI plaintiII and deIendant. II the plaintiII or deIendant is a government agency, use
only the Iull name or standard abbreviations. II the plaintiII or deIendant is an oIIicial within a government agency, identiIy Iirst the agency and
then the oIIicial, giving both name and title.
(b) County of Residence. For each civil case Iiled, except U.S. plaintiII cases, enter the name oI the county where the Iirst listed plaintiII resides at the
time oI Iiling. In U.S. plaintiII cases, enter the name oI the county in which the Iirst listed deIendant resides at the time oI Iiling. (NOTE: In land
condemnation cases, the county oI residence oI the "deIendant" is the location oI the tract oI land involved.)
(c) Attorneys. Enter the Iirm name, address, telephone number, and attorney oI record. II there are several attorneys, list them on an attachment, noting
in this section "(see attachment)".
II. Jurisdiction. The basis oI jurisdiction is set Iorth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X"
in one oI the boxes. II there is more than one basis oI jurisdiction, precedence is given in the order shown below.
United States plaintiII. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and oIIicers oI the United States are included here.
United States deIendant. (2) When the plaintiII is suing the United States, its oIIicers or agencies, place an "X" in this box.
Federal question. (3) This reIers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution oI the United States, an amendment
to the Constitution, an act oI Congress or a treaty oI the United States. In cases where the U.S. is a party, the U.S. plaintiII or deIendant code takes
precedence, and box 1 or 2 should be marked.
Diversity oI citizenship. (4) This reIers to suits under 28 U.S.C. 1332, where parties are citizens oI diIIerent states. When Box 4 is checked, the
citizenship oI the diIIerent 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 oI the JS 44 is to be completed iI diversity oI citizenship was indicated above. Mark this
section Ior each principal party.
IV. Nature of Suit. Place an "X" in the appropriate box. II the nature oI suit cannot be determined, be sure the cause oI action, in Section VI below, is
suIIicient to enable the deputy clerk or the statistical clerk(s) in the Administrative OIIice to determine the nature oI suit. II the cause Iits more than
one nature oI suit, select the most deIinitive.
V. Origin. Place an "X" in one oI the six boxes.
Original Proceedings. (1) Cases which originate in the United States district courts.
Removed Irom State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441.
When the petition Ior removal is granted, check this box.
Remanded Irom Appellate Court. (3) Check this box Ior cases remanded to the district court Ior Iurther action. Use the date oI remand as the Iiling
date.
Reinstated or Reopened. (4) Check this box Ior cases reinstated or reopened in the district court. Use the reopening date as the Iiling date.
TransIerred Irom Another District. (5) For cases transIerred under Title 28 U.S.C. Section 1404(a). Do not use this Ior within district transIers or
multidistrict litigation transIers.
Multidistrict Litigation. (6) Check this box when a multidistrict case is transIerred into the district under authority oI Title 28 U.S.C. Section 1407.
When this box is checked, do not check (5) above.
VI. Cause of Action. Report the civil statute directly related to the cause oI action and give a brieI description oI the cause. Do not cite jurisdictional
statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 BrieI Description: Unauthorized reception oI cable service
VII. Requested in Complaint. Class Action. Place an "X" in this box iI you are Iiling 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 oI the JS 44 is used to reIerence related pending cases, iI any. II there are related pending cases, insert the docket
numbers and the corresponding judge names Ior such cases.
Date and Attorney Signature. Date and sign the civil cover sheet.

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