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Plaintiff,
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vs.
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SUPPLEMENTAL BRIEF ON
MONETARY DAMAGES FOR
DEFAULT JUDGMENT
JUDGE: HON. GEORGE H. WU
DATE: 1/25/16
TIME: 8:30AM
DEPT: 10
Defendant.
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PLAINTIFFS SUPPLEMENTAL BRIEF
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I.
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INTRODUCTION
award treble damages in the amount of $100,000.00 and attorney fees in the
Under 35 U.S.C. 284, upon finding for the claimant the court shall award the
less than a reasonable royalty for the use made of the invention by the infringer,
together with interest and costs as fixed by the court the court may increase the
damages up to three times the amount found or assessed. The statute further reads,
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the court in exceptional cases may award reasonable attorney fees to the
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mean that if the infringement was willful, treble damages and attorney fees may be
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II.
STATEMENT OF FACTS
Plaintiff is the owner of all rights, titles, and interests in the U.S. Design
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Patent Application No. 29,492,155 (STR 513 Wheel or Design Patent), which
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and sold automobile parts on the Internet that infringe on the Design Patent. In
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May 2014, Plaintiff published photographs to its website displaying the STR 513
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Plaintiffs images of the STR 513 Wheel to promote and sell the infringing
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the STR 513 Wheel from 2014-2015. Attached is an itemized sales summary of
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Plaintiffs STR 513 Wheel marked as Exhibit 1. In 2014, the total quantity of the
STR 513 Wheel sold was 3,200. In 2015, the total quantity of sales declined to
Defendant cease all infringing activity, but Defendant failed to respond and stop
and desist letter to Defendant. However, Defendant did not respond or cease its
infringing activity. Since filing the present suit, Defendant has once again failed to
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III.
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which includes at least reasonable royalties together with interest and costs fixed
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by the court. Further, under 35 U.S.C. 285, reasonable attorneys fees may be
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awarded in exceptional cases to the prevailing party. Courts have interpreted this
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is found to be willful.
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infringing behavior is willful. See Read Corp. v. Portec, Inc., 970 F.2d 816, 826
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(Fed. Cir. 1992). In Read, the defendant infringers device infringed upon each
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patent held by plaintiff and the device contained all but one of the limitations
specified in the claims and one limitation that was not literally met was met
equivalently. Id. at 820. As such, a jury found the infringement to have been
Although on appeal, the court found the infringement to not have been
willful, the lower courts definition for willfulness still stands. The lower court
patentee's patent rights. Id. at 826. Once willfulness has been established, it is to
the discretion of the trial court to determine the extent of enhancement of damages
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but in any event, an award may be increased up to three times the compensatory
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damages amount. Lost profits are the preferred method of ascertaining damages.
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IPVX Patent Holdings, Inc. v. Taridium, LLC, No. 12-CV-5251 KAM SMG, 2014
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recovery is the amount of reasonable royalty due to the patentee by the infringer. Id.
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whether to increase the damages for patent infringement. Read, supra, 970 F.2d
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816 at 827. These include: (1) whether the infringer deliberately copied the designs
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of the patentee, (2) whether the infringer had knowledge of the patentees patent
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protection, investigated the scope of the patent, and formed a good faith belief that
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it was invalid or not infringed upon through the infringers acts, (3) the infringers
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litigation behavior, (4) defendants size and financial condition, (5) closeness of
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the case, that is, whether it is clear on the evidence, whether the infringer acted
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steps taken by infringer, (8) whether infringer had a motivation to harm the
patentee, and (9) whether defendant made attempts to hide misconduct. Id. at 827.
These factors aid the court in determining the degree of the infringers culpability
and thus, whether to award enhanced damages. Id. at 828. Further, a consideration
of these factors helps the court to decide to what extent the infringer should be
liable. Id.
The Federal Circuit Court of Appeals later delineated a two-step process for
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McFerran Home Furnishings, Inc., 301 F.R.D. 487, 490 (C.D. Cal. 2014) (citing
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Jurgens v. CBK, Ltd., 80 F.3d 1566, 1570 (Fed. Cir. 1996)). The first step entails a
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damages may be based. Id. A consideration of the Read factors and a jurys finding
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of willfulness normally satisfy this step. See Jurgens, 80 F.3d 1566 at 1570. The
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totality of the circumstances. Amini Innovation Corp., 301 F.R.D. 487 at 490.
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conduct based on all the facts and circumstances. Read, supra, 970 F.2d 816 at
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826.
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Here, it is evident that Defendant was aware of its infringing conduct, and
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cease all infringing activity, but Defendant failed to respond and stop the
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desist letter to Defendant. However, Defendant did not respond or cease its
infringing activity. Since filing the present suit, Defendant has once again failed to
attorneys fees is up to the discretion of the district court. Lam, Inc. v. Johns-
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Manville Corp., 718 F.2d 1056, 1068 (Fed. Cir. 1983). A determination of whether
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whether attorney fees are also proper. As such, exceptional circumstances exist
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when the case involves a willful, intentional, and deliberate patent infringement.
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Am. Safety Table Co. v. Schreiber, 415 F.2d 373, 380 (2d Cir. 1969). It thus
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follows that if the court, in its discretion, has found willful conduct, attorney fees
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As stated above, Defendant was aware of its infringing conduct, and refused
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retention of counsel, Plaintiff notified and requested that Defendant cease all
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infringing activity, but Defendant failed to respond and stop the infringement.
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Subsequently, on July 1, 2014, Plaintiffs counsel sent a cease and desist letter to
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Defendant. However, Defendant did not respond or cease its infringing activity.
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Since filing the present suit, Defendant has once again failed to respond to the
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Plaintiffs patent.
In determining whether the amount of attorney fees sought is reasonable,
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there must be some evidence to substantiate the billing rate and the number of
hours expended. Codex Corp. v. Milgo Electronic Corp., 717 F.2d 622 at 631632
(1st Cir.1983), aff'g Codex Corp. v. Milgo Electronic Corp., 541 F.Supp. 1198
case.
IV.
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CONCLUSION
For the above reasons, Plaintiff respectfully requests this court to award
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treble damages in the amount of $100,000.00 and attorney fees in the amount of
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$3,300.00.
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DATED: 1/14/16
Respectfully submitted,
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CERTIFICATE OF SERVICE
I hereby certify that on January 14, 2016, a copy of the foregoing Motion
For Entry of Default Judgment was filed electronically and served on the
Parties in this action addressed as:
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Plaintiff,
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vs.
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Defendant.
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I, Tommy SF Wang, declare that the following is true and correct, and if
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called as a witness, I could competently testify to the matters herein which are
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I am the managing partner of the law firm Yang & Wang, P.C. located
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DECLARATION
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We are the counsel of record for the Plaintiff in this matter, JAT
letter to Defendant DB Motoring Group, requesting that they cease the infringing
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Our office has expended ten (11) hours on this matter, in drafting the
demand letter, the Complaint, the Request for Entry of Default, Motion for Default
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By:
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DECLARATION
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EXHIBIT 1