Razer Auto v. Omix-ADA - Complaint

8/20/2019 Razer Auto v. Omix-ADA - Complaint

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Eric A. Kelly (California SBN 292241)

[email protected]

5535 Westlawn Ave., No. 180

Los Angeles, CA 90066

310-486-2698 phone or text msg

310-943-1432 fax

Attorney for Plaintiff Razer Auto, Inc.

IN THE UNITED STATES DISTRICT COURT

FOR THE CENTRAL DISTRICT OF CALIFORNIA

EASTERN DIVISION

RAZER AUTO, INC.,

Plaintiff,

v.

OMIX-ADA, INC.,

Defendant.

Civil Action No. 5:16-CV-00300

COMPLAINT FOR DECLATORYJUDGMENT OF PATENT NON-INFRINGEMENT AND INVALIDITY OFU.S. DESIGN PATENT D712,324

DEMAND FOR JURY TRIAL

COMPLAINT FOR DECLARATORY RELIEF

Plaintiff Razer Auto, Inc. (“Razer”) alleges, through its undersigned counsel, as

follows for this Complaint for Declaratory Judgment of Patent Non-Infringement and

Invalidity or Unenforceability (“Complaint”) against Defendant Omix-ADA, Inc. (“Omix”):

NATURE OF ACTION

1.

Razer seeks in this action a declaratory judgment that Razer is not liable for

infringement of a properly construed, valid, and enforceable claim of U.S. Design Patent

D712,324 (the “‘324 Patent”) and that the properly construed claim of the ‘324 Patent is

invalid or unenforceable.

Case 5:16-cv-00300 Document 1 Filed 02/19/16 Page 1 of 12 Page ID #:1


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2. A true and correct copy of the ‘324 Patent is attached hereto as Exhibit A.

PARTIES

3. Plaintiff Razer is a state of California corporation with a principal place of

business at 1042 N. Mountain Ave STE B764, Upland, CA 91786; and a warehouse physical

address located at 1951 S. Parco Ave., Suite B, Ontario, CA 91761. Both Razer locations are

within San Bernardino County, CA; as well as within the Central District of California.

4. Defendant Omix is a state of Georgia corporation, with a Georgia Secretary of

State Control Number of K222936, and reported principal office address of 460 Horizon

Drive, Suite 400, Suwanee, GA 30024 and a registered agent address of 3184 St. Ives

Country Club Pkwy, Gwinnett, Duluth, GA 30097.

5. An address of 460 Horizon Drive, Suwanee, GA 30024 for Omix was admitted

to by Omix on a SEMA Tradeshow Complaint Form dated November 11, 2015, by an Alain

Eboli, an employee of Omix. This SEMA Tradeshow Complaint Form is attached as Exhibit

B. Note, “SEMA” is an acronym for the “Specialty Equipment Market Association.” Both

parties attended this SEMA Tradeshow in November, 2015, in Las Vegas, NV. Note, this

460 Horizon Drive, Suwanee, GA 30024, address for Omix as reported by Omix in Exhibit B

only differs from the reported principal office address, in that the principal office address also

includes a suite number of 400.

6. Based on information and belief, Omix uses a business phone number of 770-

614-6101; wherein the area code of “770” is an area code serving at least portions of Atlanta,

GA; which agrees with Omix having a domicile in Georgia. This phone number is displayed

upon a website of www.omix-ada.com, and this website was reported as the website for Omix

by Omix as their website in the SEMA Tradeshow Complaint Form as depicted in Exhibit B.



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JURISDICTION AND VENUE

7. This action arise under the laws of the United States (“U.S.”), including the

U.S. patent laws as codified in Title 35 of the United States Code (“U.S.C.”) §§ 1 et seq.; and

with specific remedies sought under the Federal Declaratory Judgment Act, Title 28 U.S.C.

§§ 2201 and 2202. An actual, substantial, and continuing justiciable controversy exists

between Razer and Omix that requires a declaration of rights by this Court.

8. This Court has subject matter jurisdiction over this action pursuant to Title 28

U.S.C. § 1331 and pursuant to Title 28 U.S.C. § 1338(a).

9.

This Court has personal jurisdiction over Omix by virtue of Omix’s purposeful

and presently ongoing contacts with the State of California, including but not limited to,

selling and offering to sell to California residents various Omix products, including products,

such as fender flares, for use on various makes and models of Jeeps.

10. This Court has personal jurisdiction over Omix by virtue of Omix’s purposeful

and presently ongoing contacts with the State of California, including but not limited to,

Omix supporting numerous dealers of Omix products, wherein such numerous dealers have

retail physical addresses within California. For example, Omix’s website www.omix-

ada.com includes a “Find A Dealer” function, wherein that function returns the following

dealers located in the Central District of California: a 4Wheel Parts located in Redondo

Beach, CA; a 4Wheel Parts located in Compton, CA; a Jeep Solutions, Inc. located in Long

Beach, CA; a 4Wheels Parts located in Van Nuys, CA; a 4Wheel Parts located in Thousand

Oaks, CA; a 4Wheel Parts located in Azusa, CA; a Rack N Road located in Costa Mesa, CA;

a 4Wheel Parts located in Santa Ana, CA; and a Brothers 4X4 located in Montclair, CA.



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Thus, Omix is specifically servicing consumer retail locations within the Central District of

California, as well as California in general.

11. This Court has personal jurisdiction over Omix, at least with respect to the

specific subject matter of this action, by virtue of Omix’s purposeful contacts with the Central

District of California, including, without limitation, Omix’s Cease and Desist Letter, dated,

February 4, 2016, directed into the Central District of California, at Razer, as exemplified in

Exhibit C, such that Omix should and could reasonably be expected to be haled into Court in

the Central District of California.

12.

Venue is proper in this judicial district pursuant to Title 28 U.S.C. §§ 1391 and

1400(b) because substantial parts of events giving rise to the claims presented in this

Complaint occurred in the Central District of California, including, without limitation,

Omix’s attempts to enforce the ‘324 Patent against Razer, wherein Razer resides in the

Central District of California, see e.g., Exhibit C. Further, substantial parts of events giving

rise to the claims presented in this Complaint occur in the Central District of California,

including, without limitation, Razer’s warehousing of inventory of products in Ontario, CA,

that Omix alleges infringes the ‘324 Patent; as well as Razer selling and offering to sell such

products from Ontario, CA; wherein Ontario, CA, is in the Central District of California.

Note, Upland, CA, the city of Razer’s principal place of business, where some sales and

marketing efforts are directed from is also within the Central District of California. Further,

substantially all of the property that is the subject of this action is situated in the Central

District of California, in that Razer carries inventory of the alleged infringing products at

Razer’s Ontario, CA, warehouse location.



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13. Venue is further proper because Omix is subject to personal jurisdiction in the

Central District of California and Razer’s principal place of business is located within the

Central District of California, then Omix is deemed to reside in the Central District of

California pursuant to Title 28 U.S.C. § 1391(c)(2).

FACTUAL BACKGROUND

14. Razer within U.S. markets, offers to sell, has sold, and continues to sell a

product that Omix alleges infringes the ‘324 Patent, hereinafter, Razer’s “stubby fender

flares.” This alleged product of Razer, these stubby fender flares, are described as a pocket

style or stubby style of fender flare for attachment to a Jeep Wrangler vehicle, replacing

existing fender flares on the Jeep Wrangler. These stubby fender flares are generally sold as a

kit of four stubby fender flares, with two stubby fender flares for the front wheel wells of the

Jeep Wrangler and the remaining two stubby fender flares for the rear wheel wells of the Jeep

Wrangler; and the kits are sold with ornamental rivets.

15. Since April 13, 2015, Razer has offered these stubby fender flares for sale in

the U.S.

16. Since April 29, 2015, Razer has sold these stubby fender flares in the U.S.

17. Razer sells their stubby fender flares in the U.S. via Amazon, the well known

online retailer.

18. Omix owns the ‘324 Patent; wherein the ‘324 Patent issued on September 2,

2014. See Exhibit A and Exhibit C.

19. Since “at least as early as 2013, Omix developed and introduced a [allegedly]

new, original, and ornamental design for fender flares for vehicles.” See Exhibit C



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(annotation of “allegedly” added). These introduced Omix fender flares products embodies

the designs of the ‘624 Patent.

20. Omix has sold, offers to sell, and currently sells fender flare products in the

U.S. Omix and Razer are direct competitors in that both companies sell particular types of

fender flare products for attachment to some Jeep vehicles. Omix and Razer have adverse

interests.

21. Omix’s Cease and Desist Letter, as shown in Exhibit C, alleges that “Razer’s

marketing of its fender flares constitutes infringement of the ‘324 Patent.” Further, in this

Cease and Desist Letter, Omix demands that Razer cease manufacturing, using, selling,

offering to sell, and/or importing into the U.S. Razer’s stubby fender flares. Omix in this

Cease and Desist Letter also demands that Razer destroy all existing inventory of the stubby

fender flares. And Omix further demands in this Cease and Desist Letter that Razer provide

stubby fender flares sales information for a purpose of ascertaining money damages. See

generally, Exhibit C.

22. Additionally, on Friday, December 11, 2015, Razer received an email from

Amazon’s counsel, that a “Rugged Ridge” had filed a complaint with Amazon, which stated,

“[w]e have received notice alleging that one or more products sold by you on Amazon.com

infringe patents purportedly owned by Rugged Ridge.” RUGGED RIDGE is a trademark

owned by Omix. Omix offers some of their products for sale on Amazon under the trademark

of RUGGED RIDGE. Omix has initiated steps with Amazon to prevent or hamper Razer’s

ability to market and sell Razer’s stubby fender flares via Amazon.

23. However, Razer contends that is has not infringed and is not infringing any

properly construed, valid, and enforceable claim of the ‘324 Patent.



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24. Razer further contends that the properly construed claim of the ‘324 Patent is

invalid for failure to comply with the requirements for patentability of, inter alia, Title 35

U.S.C. §§ 101, 102, 103, and/or 112. Razer further contends that the properly construed

claim of the ‘324 Patent is unenforceable for inequitable conduct of Omix.

25. A U.S. design patent application that issued into the ‘324 Patent was filed on

August 7, 2013, with the United States Patent and Trademark Office (“USPTO”). Both

before filing this U.S. design patent application, including more than a year before the filing

of this U.S. design patent application, as well as while this U.S. design patent application was

pending before the USPTO, Omix was aware of or should have been aware of various fender

flare products available in at least U.S. markets, including Omix supplied fender flare

products and competitor supplied fender flare products. Omix should have been aware of

various fender flare products, particularly those for Jeeps, because Omix has been

incorporated since 1992 and asserts that they are the “World's Largest Jeep Parts &

Accessories Manufacturer!” per their www.omix-ada.com website. With respect to Omix’s

website of www.omix-ada.com, Razer last visited this website on February 18, 2016. Yet

Omix failed to notify the USPTO, as required to do so under Title 37 Code of Federal

Regulations (“CFR”) § 1.56 of such information that is material to patentability. For

example, based on information and belief, Omix was providing fender flare products for

Jeeps under the “Rugged Ridge” brand at least as early as February 2011.

26. By virtue of Omix’s actions and statements directed at or against Razer,

including, without limitation, the SEMA Tradeshow Complaint Form attached as Exhibit B

and the Cease and Desist Letter attached as Exhibit C, as well as the email notice from



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Amazon, there is an actual and substantial controversy between Razer and Omix regarding

Razer’s liability for patent infringement, validity, and enforceability of the ‘324 Patent.

FIRST CAUSE OF ACTION

(Declaratory Judgment of Non-Infringement of U.S. Design Patent D712,324)

27. Razer restates and incorporates by reference as if fully set forth herein the

allegations of the foregoing Paragraphs 1 – 26.

28. Omix has asserted and continues to assert that “Razer’s marketing of its fender

flares constitutes infringement of the ‘324 Patent”; that Razer must cease manufacturing,

using, selling, offering to sell, and/or importing into the U.S. Razer’s stubby fender flares;

that Razer must destroy all existing inventory of the stubby fender flares; and that Razer

provide stubby fender flares sales information to Omix for a purpose of ascertaining money

damages. See generally, Exhibit C.

29. Razer disputes that Razer has infringed any properly construed, valid, and

enforceable claim of the ‘324 Patent.

30. An ordinary observer would not consider the design of Razer’s Stubby fender

flares and the designs embodied in the ‘624 Patent to be substantially similar. In fact, there

are numerous differences between Razer’s Stubby fender flares and the claimed designs in the

‘624 Patent.

31. An actual and substantial controversy exists between Razer and Omix, the

parties having adverse interests, of sufficient immediacy and reality to warrant the issuance of

a declaratory judgment that Razer has not infringed and does not infringe any properly

construed, valid, and enforceable claim of the ‘624 Patent.



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32. Razer accordingly requests a judicial determination of Razer’s rights, duties,

and obligations with respect to the ‘624 Patent.

33. A judicial declaration is necessary and appropriate so that Razer may ascertain

its rights relative to the ‘624 Patent; otherwise, Razer has no practical recourse but to meet

Omix’s demands, such as paying Omix’s demand for money damages, destroying valuable

inventory, and ceasing sales and marketing activities of the Stubby fender flares.

SECOND CAUSE OF ACTION

(Declaratory Judgment of Invalidity of U.S. Design Patent D712,324)

34.

Razer restates and incorporates by reference as if fully set forth herein the

allegations of the foregoing Paragraphs 1 – 33.

35. Omix has asserted and continues to assert that “Razer’s marketing of its fender

flares constitutes infringement of the ‘324 Patent”; that Razer must cease manufacturing,

using, selling, offering to sell, and/or importing into the U.S. Razer’s stubby fender flares;

that Razer must destroy all existing inventory of the stubby fender flares; and that Razer

provide stubby fender flares sales information to Omix for a purpose of ascertaining money

damages. See generally, Exhibit C.

36. Razer disputes that Razer has infringed any properly construed, valid, and

enforceable claim of the ‘324 Patent; and Razer affirmatively alleges that the claim of the

‘324 Patent is invalid for failure to meet one or more requirements for patentability under,

inter alia, Title 35 U.S.C. §§ 101, 102, 103, and/or 112. Razer further affirmatively alleges

that the properly construed claim of the ‘324 Patent is unenforceable for inequitable conduct

of Omix.



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37. Therefore, an actual and substantial controversy exists between Razer and

Omix, with such parties having adverse legal interests, of sufficient immediacy and reality to

warrant the issuance of a declaratory judgment that the properly construed claim of the ‘624

Patent is invalid for failure to meet one or more of the requirements for patentability under,

inter alia, Title 35 U.S.C. §§ 101, 102, 103, and/or 112; or that the properly construed claim

of the ‘624 Patent is unenforceable for inequitable conduct of Omix.

38. Accordingly, Razer requests a judicial determination of Razer’s rights, duties,

and obligations with respect to the ‘324 Patent.

39.

A judicial declaration is necessary and appropriate so that Razer may ascertain

Razer’s rights relative to the ‘324 Patent.

PRAYER FOR RELIEF

WHEREFORE, Razer respectfully requests the Court to enter judgment in Razer’s

favor as to all claims asserted in this Complaint and, specifically, to enter judgment as

follows:

A. Declaring that Razer is not liable for any infringement of any properly

construed, valid, and enforceable claim of the ‘324 Patent;

B. Declaring that the ‘324 Patent is invalid;

C. Declaring that the ‘324 Patent is unenforceable;

D. Finding that this case is exceptional pursuant to Title 35 U.S.C. § 285, entitling

Razer to an award against Omix of Razer’s reasonable attorney’s fees;

E. Awarding to Razer its costs and disbursements of this action; and

F. Awarding to Razer such other and further relief as this Court deems just and

proper.



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DEMAND FOR JURY TRIAL

Pursuant to Fed. R. Civ. P. 38(b) and L.R. 38-1, Razer hereby demands a trial by jury

on all issues so triable.

Dated: February 19, 2016

Respectfully submitted,

/s/ Eric Kelly

Eric A. Kelly (California SBN 292241)[email protected] Westlawn Ave., No. 180Los Angeles, CA 90066310-486-2698 phone or text msg

310-943-1432 fax Attorney for Plaintiff , Razer Auto, Inc.

///

///

///



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VERIFICATION

I. Samuel

Chi,

declare

as

follows:

1.

I am

a citizen

of the

United

States

of

America

and

I am

over

the

age

of

eighteen.

2.

I currently

hold

the

position

of

Chief Executive

Office

of Plaintiff

Razer

Auto,

Inc. and

I have

held that

position

at

all

pertinent times

herein.

3.

I have

read

the

foregoing

Complaint

and I declare

that the

facts

alleged

therein

are true and

correct

to

best

of

my knowledge

and

belief.

I

understand

that

a false statement

in

this

Verification

will

subject me

to penalties of

perjury.

I declare

under

penalty

ofperjury

under

the

law

ofthe

united

states

of

America

that

the

foregoing

is

true

and

correct.

Executed

on:

February

19,2016

Samuel

Chi

12



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EXHIBIT A

Copy of U.S. Design Patent D712,324

Case 5:16-cv-00300 Document 1-1 Filed 02/19/16 Page 1 of 9 Page ID #:13


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EXHIBIT B

SEMA Tradeshow Complaint Form



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EXHIBIT C

Defendant Omix’s Cease and Desist Letter



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H?YtrZ

SeNnruocr

s.

RtcE

'lhis

firm represents

Omix-ADA, Inc.

(OMIX)

in

intellectual

propedy

matters.

At least

as

early as

2013,

OMIX

developed

and introduced a new, original,

and

omamental design

for l'ender

flares

for vehicles that

provide

an

aggressive off-road look with

additional

tire

coverage and clearance.

OMIX

owns

United States

Design Patent

No.

US

D7l2-324

(the'324

Patent)

that

issued

on

September 2,2014, and which protects

the design

of

its

fender fla.es. A copy of the

'324

Patent

is

included

as

Attachment

A.

The

'324

Patent

gives

OMIX

the

ght

to

prevent

others from making,

using, impofiing, and/or

selling

fender flares thar

fill

within the scope ofthe design

palent.

At

the November 2015 SEMA

Show

in

Las

Vegas, NV,

OMIX employees

noted

that

your

company,

Razer

Auto, Inc.

(Razer),

had an exhibition

booth in which vehicle

fender

flares

viftually

identical to

those

of

OMIX were

on display both

separately and mounted

to a

vehicle.

,A subsequent

search of

your

company's website revealed

that

Razer

was actively

offering for

sale five

different

modols

(RZCMFF-3000/3001/3002/3003/3004)

of the

same fender flare

design, with variatiotN

between

the product

models based only on color

or

sulbce finish. We

have

rcviewed

these fender flare

products

and detemined that

they

fall

within the scope of

the

'324

Patel\t. Thus, Razer's marketing

of its

lender flares

constitutes iniingement

of the

'324

Patent.

OMIX

notified

the

staff attomey

at

SEMA

ofRazer's

exhibition

ofthe

infringing

feirder

flares

and

provided

a copy of the '324 Patent.

The SEMA

attomey then

conveyed this

information

to

Razer

personnel

with

the

request

to

stop displaying the fender llares.

Upon

receipt

of

the requcst the

separate display

of

infringing

fender flares was removed

fiom the

exhibition

booth. but the fender llares mounted

to the

display

vehicle werc not. Futhemore,

dcspite

actual notice of OMIX'S

design

patelt

at the

SEMA show, Razer has

since

continued

to

make,

use,

import,

sell,

or offer for

sale the

infringing

fender flare products

on its website

and on

Amazon.com.

and

upon inlbrmation

and

beiief, continued

to

provide

the

infringing

i'ender flare

WCSR

35566512v1

Suire 2400

Add6, CA 10363 I017

Telelhone:

(a0a)

872

7000

Biadlcy

P

C&d.'

Dncct Dial:

( Ol)888

7405

Dt€ct

Fd:

{,104)

870-8216

F

mail:b@don@scsr

com

February

4.2016

I

IA

('LRTITIED

MAIL. RETUNV

RECEIPT

REOUESTED

Samuel

Chi,

President

i95l

S. Parco Ave..

Suite B

Onrario,

CA 9176I

Re:

Dear

Sir:

Our Client: Omix-ADA. Inc.

U.S. Design Patent

No.

D'712,324



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ffi7

s\Drux;E

&

RIcr

Samuel Chi, President

February 4,2016

Page 2

products

to

distributom to

sellon

their

respective websites and on Amazon.com.

This

continued

infringement

of OMIX'S

prcprietary

fender flare

design

creates

confusion

in consumers and

OMIX customers

that

is

difficult to

quantify

and expensive

to reverse.

Remedies

afforded to

an

owner

of

a

U.S.

patent

that is infringed

can

include

the

owner's

lost

profits-

an inliinger's

profits,

and/or an injunction against

further

sales and infringing

uses.

Under appropriate

circumstances,

such

as

willful infiingement,

a Court will treble

a damage

award

and

order

an

infringer to

pay

attomeys'

fees. As

the

'324

Patent

issued on

September

2,

2014-

a court

can

award

darnages for infringing

actions occuring since this

date.

OMIX cannot

tolerate infringement

of

its

pateDts.

Accordingly,

we

demand

immediate

cessation by

Razer

and

its

agents and

affiliates

ofthe manufacture,

use, sale, offer for

saie and-/or

importation

into the United States of any fender

flare that falls

within

the scope

of

the

'324

Patent.

We

also

demand

that Razer deshoy

ail

existing inventory

of

the same. We

flrther

demand

that

Razer

provide

inibrmation

regarding the numbers of its fender flare products

that

have

been

made,

used,

and/or sold

since

the'324

Patent issued, and

to whom they

were

sold.

so

that

\"/e

may

determine the

amount ofmoney damages suffered

by OMIX as a result ofRazer's

infringing

activities.

We

expect a

response

to this

letter,

or a reasonable

request

for

futher

time, from

Razer

within

fowteen

(14)

days

of its receipt.

Although we hope that this

matter can be

resolved

between

the

companies

on an amicable business

basis,

absent

such

a response

OMIX

will

assume

that

Razer intends

to

continue

its

inliinging

activity and will

proceed

with

further

action

to

protect

its valuable

patent

rights.

Very

truly

yours,

WOMBLE

CARLYLE

SANDRIDGE

&

RICE

A Prolbssional Limited

Liability Company

,/

lk

/,p

(J"2,*,flU

u-zt'-

BradJey

P.

Cardon

BPC/ajc

Enclosures


Razer Auto v. Omix-ADA - Complaint

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Transcript of Razer Auto v. Omix-ADA - Complaint