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17 DISTRICT OF OREGON
18 DIVISION OF EUGENE
19
Case No.:
20
21 MIKE’S NOVELTIES, INC., a Texas COMPLAINT FOR:
corporation,
22 1) DECLARATION OF NON-
INFRINGEMENT OF PATENT;
23 Plaintiff,
2) DECLARATION OF PATENT
24 v. INVALIDITY; AND
25 3) DECLARATION OF NON-
EYCE, LLC, a Colorado company,
26 INFRINGEMENT OF TRADE
DRESS
27 Defendants.
DEMAND FOR JURY TRIAL
28
1
COMPLAINT
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1 PRELIMINARY STATEMENT
2 1. Plaintiff Mike’s Novelties, Inc., dba Mike’s Worldwide Imports,
3 (hereinafter “MWI”), brings this action against Defendant Eyce, LLC (hereinafter “Eyce”)
4 for declaratory judgment of (1) non-infringement of patents; (2) invalidity of patents; and
5 (3) non-infringement of trade dress, pursuant the Declaratory Judgment Act, 28 U.S.C.
6 §§2201-02, the America Invents Act, and the Lanham Act of the United States, and for
7 such other relief as the Court deems just and proper.
8 JURISDICTION AND VENUE
9 2. The Court has subject matter jurisdiction of the claims of this Complaint
10 pursuant to 28 U.S.C. §§1331, 1338(a), 2201, and 2202, the America Invents Act, and the
11 Lanham Act of the United States.
12 3. Venue is proper in this judicial district pursuant to 28 U.S.C. §§1391 and
13 1400.
14 4. Defendant purports to be the owner of rights in trade dress and design patent
15 related to different smoking apparatus as disclosed in U.S. Patent Nos. D825,101;
16 D872,357; D879,372; and D844,227. Attached hereto as Exhibits A-D, and incorporated
17 herein by reference, is a true and correct copy of each of Defendant’s design patents.
18 Through a series of verbal and written communications dating back to June 4, 2020,
19 Defendant has asserted that their trade dress and design patents are infringed by MWI.
20 Defendant has threatened to sue MWI for infringement of the design patents and related
21 trade dress on numerous occasions since June 4, 2020, the latest being a written
22 communication on August 4, 2020. MWI has not infringed and does not infringe, either
23 directly or indirectly, any valid and enforceable trade dress or design patent. A substantial
24 controversy exists between the parties which is of sufficient immediacy and reality to
25 warrant declaratory relief.
26 5. This Court has personal jurisdiction over Defendant. First, Defendant’s
27 principal place of business is located within this Judicial District. Second, at least two (2)
28 of Defendant’s officers reside within this Judicial District. Third, Defendant has engaged
in various acts in and directed to this Judicial District. Fourth, Defendant has advertised,
2
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EXHIBIT A
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EXHIBIT B
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EXHIBIT C
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EXHIBIT D
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EXHIBIT E
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EXHIBIT F
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CASE COLLARD
Partner
(303) 352-1116
FAX (303) 629-3450
collard.case@dorsey.com
August 4, 2020
Louis F. Teran
SLC Law Group
1055 E. Colorado Blvd.
Suite 500
Pasadena, CA 91106
Re: MWI’s Continued Infringement of Eyce’s Design Patents and Trade Dress
Mr. Teran:
I am writing to follow up on our phone conversation of July 27, 2020. Since Eyce’s initial
demand that MWI stop infringing on Eyce’s patents and that MWI make amends for past
infringement, we appreciate that MWI has apparently acknowledged fault and taken some steps
to address its infringement. Specifically, it is good that MWI has agreed to redesign certain
products and to eventually stop selling infringing products. While promising, the steps taken by
MWI so far are inadequate. In our call, you also indicated that MWI would take no further action
to comply with Eyce’s requests for an accounting and payment for past infringement. You also
indicated that MWI intends to continue selling some infringing products while it works on the
redesigns. This is not acceptable to Eyce. MWI must comply fully with Eyce’s requests. Eyce
is prepared to seek judicial intervention unless MWI provides the requested information and
compensates Eyce as specified below.
First, regarding ceasing sales of accused products, MWI must immediately stop sales.
Each additional sale of the infringing products during the redesign period is another sale that
Eyce loses and imposes harm on Eyce’s brand reputation and recognition.
Second, MWI must account for and compensate Eyce for past sales of accused
products. Eyce has evidence that MWI’s sales representatives have described MWI’s products
as being “exactly like Eyce” and have admitted that they “look just like Eyce” products. In effect,
MWI has admitted that its products infringe Eyce’s design patents. L.A. Gear, Inc. v. Thom
McAn Shoe Co., 988 F.2d 1117, 1124 (Fed. Cir. 1993). Eyce is entitled to recover its lost profits
or MWI’s total profits from the sale of the infringing products. 35 U.S.C. §§ 284, 289. While
MWI has not provided an accounting of its sales, Eyce estimates that MWI sold approximately
60,000 units of infringing product from the patent grant dates to present. Based on this
estimation, Eyce can establish it is entitled to recover lost profits of approximately $415,000.
The comments from the MWI sales representative not only help Eyce establish MWI’s
liability and entitlement to lost profits. By expressly marketing its products as copies of Eyce’s
1400 Wewatta Street | Suite 400 | Denver, CO | 80202‐5549 | T 303.629.3400 | F 303.629.3450 | dorsey.com
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August 4, 2020
Page 2
products, MWI was willfully infringing. MWI’s admission of infringement, pattern of prior
infringement, and continued sales of infringing products will establish that MWI willfully infringed
Eyce’s design patents. Accordingly, the $415,000 in lost profits may be trebled, entitling Eyce to
recover $1.25 Million in damages from MWI.
Eyce also estimates that it is separately entitled to recover for very significant damages
caused by MWI’s unfair competition practices. For example, the relationship with each
wholesale customer is very valuable and, once established, leads to follow-on sales of other
products. Eyce estimates that over 1000 wholesale customers may have been enticed to work
with MWI due to sales of the copycat products. Those relationships—even at a profit of
$50/month—would lead to millions more in damages.
If forced to seek judicial intervention, Eyce will also seek attorneys’ fees, which have
already been significant will increase if MWI fails to promptly communicate and comply with
Eyce’s requests.
If Eyce is required to seek judicial intervention it will seek compensation for each
category described above and any and all other categories of compensation to which it may be
entitled. But in light of the fact that MWI has taken some steps towards a potential agreement
by removing some products and agreeing to redesign, Eyce remains open to finding a business
solution. To settle this matter, Eyce requires that MWI (1) immediately cease all manufacture,
importation, use, sales, and offer of sale of the infringing products, including those that MWI
intends to redesign; (2) ship all remaining inventory of the infringing product to Eyce for
destruction or sign a certification for products for which there is no remaining inventory; (3)
provide an accounting of its sales of the infringing products; (4) make a settlement payment to
Eyce of $400,000; and (6) agree not to sale, offer for sale, import, manufacture, or distribute any
products that infringe upon or misappropriate one of Eyce’s designs in the future.
Please confirm receipt of this letter and provide us with MWI’s agreement to the terms
above by no later than August 11, 2020. Eyce reserves and does not waive any rights it has at
law or equity.
Best regards,
Case Collard
Partner
CC:cjh
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Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
whose name and address are: Louis F. Teran
SLC Law Group
1055 E. Colorado Blvd, Suite 500
Pasadena, CA 91106
If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
You also must file your answer or motion with the court.
CLERK OF COURT
Date:
Signature of Clerk or Deputy Clerk
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PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
’ I left the summons at the individual’s residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date) , and mailed a copy to the individual’s last known address; or
’ Other (specify):
.
My fees are $ for travel and $ for services, for a total of $ 0.00 .
Date:
Server’s signature
Server’s address