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Eric A. Kelly (California SBN 292241)
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.
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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
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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
Case 5:16-cv-00300 Document 1-3 Filed 02/19/16 Page 2 of 3 Page ID #:31
8/20/2019 Razer Auto v. Omix-ADA - Complaint
32/32
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
Case 5:16-cv-00300 Document 1-3 Filed 02/19/16 Page 3 of 3 Page ID #:32