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JPT Group, LLC (JPT), for its complaint of patent infringement against defendants
Steven Madden Retail, Inc. and Steven Madden, Ltd. (collectively Madden), alleges as
follows:
1. JPT owns the Bernardo brand (Bernardo). Bernardo is an iconic American fashion
brand. Since 1946, the Bernardo brand has inspired the womens sandal market with its
sophisticated designs. Today, Bernardos sandal designs are distinctive and well-known in the
footwear industry. Bernardos patented designs are the result of significant investments in
2. Rather than undertaking its own independent development, Madden copied patented
designs of the Bernardo brand and engaged in production and distribution of infringing products
through retail and online sales outlets. Maddens acts violate JPTs valuable intellectual property
THE PARTIES
3. Plaintiff JPT is a Delaware limited liability company having a principal place of business
in Bend, Oregon. JPTs Bernardo shoe brand was established in Stafford, Texas in October 2001
by a predecessor, and later moved its headquarters to Houston, Texas. JPT is registered to
corporation having an office and place of business at 52-16 Barnett Avenue, Long Island City,
New York 11104. Defendant Steven Madden Retail, Inc. is registered to conduct and does
having an office and place of business at 52-16 Barnett Avenue, Long Island City, New York
11104.
6. This action arises under the patent statutes of the United States, 35 U.S.C. 271 et seq.
Accordingly, the Court has federal question jurisdiction over this matter under 28 U.S.C.
7. The court has personal jurisdiction over Madden because Madden regularly conducts
business through at least thirteen Steven Madden stores in Texas, at least three of which are in
the Southern District of Texas. Madden also conducts business with and through retailers located
in this judicial district including DSW, Macys and Dillards. Madden also maintains an
importation and distribution center at a port in Texas. On information and belief, Madden
employs a large staff and maintains multiple business relationships in Texas and the Southern
District of Texas to facilitate its importation, distribution, marketing and sales in the region.
2
Case 4:17-cv-02793 Document 1 Filed in TXSD on 09/15/17 Page 3 of 6
Through these channels, Madden has and continues to purposefully place its products into the
U.S.C. 271. Upon information and belief, Madden, either directly or through affiliates,
distributors, franchisees and/or others, import, ship, distribute, offer for sale, sell and market
products in the United States, the State of Texas and the Southern District of Texas. Upon
information and belief, Madden expects its actions to have consequences within this district and
to derive substantial sales of infringing products in interstate commerce and this district. The
9. Venue is properly within this district in accordance with 28 U.S.C. 1391 (b) and (c) and
1400 (b).
10. On September 23, 2008, United States Patent No. D577,182 (the D182 Patent) entitled
Sandal was duly and legally issued. A copy of the D182 Patent is attached as Exhibit A and
incorporated herein.
11. On November 25, 2008, United States Patent No. D581,149 (the D149 Patent) entitled
Sandal was duly and legally issued. A copy of the D149 Patent is attached as Exhibit B and
incorporated herein.
12. The above referenced patents relate to the ornamental designs claimed in the D182
Patent and D149 Patent (collectively the JPT Patents). JPT owns all right, title and interest in
13. The ornamental designs of the JPT Patents are embodied in the successful MOJO sandal,
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Case 4:17-cv-02793 Document 1 Filed in TXSD on 09/15/17 Page 4 of 6
14. On November 5, 2015, JPT sued Madden in this court for infringing the JPT Patents
though its VIRRTUE THONG sandal line. JPT Group LLC v. Steven Madden Retail, Inc., et al.,
H-15-3264 (Judge Miller) (the Prior Case). The Prior Case settled by written agreement, over
which this court retained jurisdiction, see Exhibit C, at 1, and was finally dismissed with
15. As the representative side-by-side comparisons shown below reveal, Madden FREE SHIPPING! PLUS, RETURNS WITH NM CARD
misappropriated JPTs patented ornamental sandal designs, through its PAMELA line of sandals,
DESIGNERS : BALENCIAGA : SHOES
D182D182 D149
D149 Steve Madden - Pamela
Balenciaga #___
zoom video
Balenciaga
Giant Nickel Studded Thong Sandal, Blue
http://www.neimanmarcus.com/Balenciaga-Giant-Nickel-Studded-Thong-Sandal-Blue-Shoes/prod168740467_cat41540748__/p.prod
overseas the Accused Products for sale in the U.S., Texas and this district. Shortly after
manufacturing, Madden began importing the Accused Products into the U.S., Texas and this
-1- CONFIDENTIAL
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Case 4:17-cv-02793 Document 1 Filed in TXSD on 09/15/17 Page 5 of 6
17. On information and belief, Madden displayed or caused to be displayed the Accused
Products in sales outlets and marketed them on their company website and third party websites.
18. On further information and belief, Madden sold significant volumes of the Accused
Products through its expansive sales outlets and distribution channels throughout the U.S., Texas
19. JPT has complied with the statutory requirement of placing a notice of the JPT Patents on
its MOJO sandals, which are sold under its Bernardo brand and embody the JPT Patents.
20. Madden had actual knowledge of the JPT Patents at least by November 5, 2015 through
Patent Infringement
21. JPT incorporates herein the allegations set forth in paragraphs 1 through 20 above.
22. Under 35 U.S.C. 271 et seq., Madden infringed the JPT Patents by the use, sale, offer
for sale, and importation of the Accused Products or alternatively by contributing or inducing
others to use, sell, offer for sale, or import the Accused Products, literally and/or under the
doctrine of equivalents.
23. Upon information and belief, Madden applied the design of the JPT Patents, or a
colorable imitation thereof, to the Accused Products for the purpose of sale, and/or selling or
24. On information and belief, Madden will continue to infringe the claims of the JPT Patents
25. JPT has been damaged and will continue to be damaged by Maddens infringing acts.
26. On information and belief, Madden was actually aware of the JPT Patents and willfully
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Case 4:17-cv-02793 Document 1 Filed in TXSD on 09/15/17 Page 6 of 6
JURY DEMAND
(b) award damages for Maddens infringement of the JPT Patents under 35
U.S.C. 284 or 289;
(c) in the event JPT elects to collect damages under 35 U.S.C. 284, find that
Maddens infringement has been willful and increase such damages to
three times the awarded amount;
(e) find that this case is an exceptional case under 35 U.S.C. 285 and award
attorney fees;
Respectfully submitted,
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Exhibit!B!
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USO0D581149S
FIG. 7
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Exhibit C
Case 4:17-cv-02793
Case 4:15-cv-03264 Document
Document 1-3
47 Filed
Filed in
in TXSD
TXSD on
on 12/13/16
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United States District Court
Southern District of Texas
ENTERED
UNITED STATES DISTRICT COURT December 13, 2016
FOR THE SOUTHERN DISTRICT OF TEXAS David J. Bradley, Clerk
HOUSTON DIVISION
Having been advised that a settlement has been reached between plaintiff and
defendant, the Court dismisses this case without prejudice to reinstatement of plaintiff's
claims if any party represents to the Court within 30 days from the date of this order
that the settlement could not be completely documented. The court retains jurisdiction
over any settlement agreements.
ENTERED
February 16, 2017
UNITED STATES DISTRICT COURT
David J. Bradley, Clerk
SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
O RDER
GRANTED. It is therefore ORDERED that the conditional order of dismissal previously entered
The joint stipulation of dismissal with prejudice (Dkt. 51) is GRANTED. It is therefore
ORDERED that all claims in this matter are DISMISSED with prejudice. Each party shall bear its
___________________________________
Gray H. Miller
United States District Judge