1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 763311.11 NOTICE OF MOTION AND MOTION UNDER RULE 11AGAINST PLAINTIFF’S COMPLAINTJames Juo (State Bar No. 193852) [email protected]FULWIDER PATTON, LLP Howard Hughes Center 6060 Center Drive, Tenth Floor Los Angeles, California 90045 Telephone: (310) 824-5555 Facsimile: (310) 824-9696 Attorney for Defendants, JNC WHEEL COLLECTION UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA JAT WHEELS, INC. d/b/a STR RACING Plaintiff, v. JNC WHEEL COLLECTION, and DOES 1 through 10, Defendants. CASE NO. CV14-04898 JFW (MRWx) NOTICE OF MOTION AND MOTION UNDER RULE 11 AGAINST PLAINTIFF’S COMPLAINT Date: September 8, 2014 Time: 10:00 AM Ctrm: 16 Judge John F. Walter TO THE COURT, PLAINTIFF AND ITS COUNSEL OF RECORD: PLEASE TAKE NOTICEthat on September 8, 2014, at 1:30 P.M., or as soon thereafter as the matter may be heard in Courtroom 16 of the above Court, located at 312 North Spring Street, Los Angeles, CA 90012-4701, in the Courtroom of Judge John F. Walter, Defendant JNC WHEEL COLLECTION (“Defendant” or “JNC”) will move and hereby does move for sanctions against Plaintiff JAT WHEELS, INC. d/b/a STR RACING (“Plaintiff” or “STR”) and its counsel Tommy Wang for violating Federal Rule of Civil Procedure 11. Case 2:14-cv-04898-JVS-MRW Document 15 Filed 08/06/14 Page 1 of 2 Page ID #:122 James V. Selna 1:30 P.M. 10C
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[PROPOSED] ORDER GRANTINGDEFENDANT’S RULE 11 MOTIONAGAINST PLAINTIFF’SCOMPLAINT
Date: September 8, 2014Time: 10:00 AMCtrm: 16
Judge John F. Walter
The motion for sanctions under Federal Rule of Civil Procedure 11 brought
by Defendant JNC Wheel Collection (“JNC”) against Plaintiff JAT Wheels, Inc.
d/b/a STR Racing (“STR”) is granted.
Rule 11 requires a court to determine (1) whether the complaint is legally orfactually baseless from an objective perspective, and (2) if the attorney has
conducted a reasonable and competent inquiry before signing and filing it. Holgate
v. Baldwin, 425 F.3d 671, 676 (9th Cir. 2005). A complaint is “frivolous,” and
sanctions are justified, if it is both baseless and made without a reasonable and
Case 2:14-cv-04898-JVS-MRW Document 15-1 Filed 08/06/14 Page 1 of 3 Page ID #:124
The complaint filed by STR contains false statements and frivolous claims.
For example, STR falsely states that it owns “U.S. Design Patents,” and attempts to
assert patent infringement based on pending patent applications that have not issued.
STR also falsely states that it owns a “registered” trademark, and improperly claims
that it owns the copyrights and ownership rights to certain unidentified photographs.
This case is but one of four patent infringement lawsuits that STR has
recently filed that are based on pending patent applications, instead of a patent
actually issued by the USPTO. STR’s pattern of filing frivolous lawsuits based on
non-existent patent rights is an abuse of the judicial system. See Eon-Net , 653 F.3d
at 1326 (inferring that a patent lawsuit was filed in bad faith and for an improper
purpose because the plaintiff’s case had “indicia of extortion”).
Counsel’s legal experience may be considered in determining whether a pre-
filing inquiry was reasonable or not. Huettig & Schromm, Inc. v. Landscape
Contractors Council of N. Cal., 790 F.2d 1421, 1426 (9th Cir. 1986); see also
Phonometrics Inc. v. Econ. Inns of Am., 349 F.3d 1356, 1366 (Fed. Cir. 2003).
STR’s counsel, Tommy Wang, is a registered patent attorney who claims to have
extensive litigation and patent experience. As such, he should have been aware of
the fundamental flaws and false statements in STR’s Complaint which he signed and
filed with this Court.
STR has failed to show that it had an objectively reasonable basis for its
asserted claims before filing suit, and STR’s Complaint is hereby dismissed.JNC is awarded its attorneys’ fees and costs in connection with this action as
a monetary sanction against both STR and its counsel Tommy Wang jointly to stop
this abuse of the judicial system. See Business Guides, Inc. v. Chiromatic Comm’ns
Enters., Inc., 498 U.S. 533, 111 S. Ct. 922, 933, 112 L. Ed. 2d 1140 (1991); B&H
Med., LLC v. ABP Admin., Inc., 526 F.3d 257, 271 (6th Cir. 2008) (both the client
Case 2:14-cv-04898-JVS-MRW Document 15-1 Filed 08/06/14 Page 2 of 3 Page ID #:125
Legal Standards Under Rule 11 .............................................................. 4
B.
STR’s Claims For Patent Infringement Are Frivolous BecauseSTR Is Asserting Pending Patent Applications Instead of Patents ......... 5
C.
STR’s Trademark Claims Are Frivolous ................................................ 6
1.
STR Falsely Asserts That It Owns A RegisteredTrademark ..................................................................................... 6
2.
STR Has Refused To Disclose the Pre-Filing Basis For ItsOther Trademark and Unfair Competition Claims ....................... 7
D.
STR’s Copyright Claim Is Frivolous ...................................................... 7
E. An Appropriate Sanction Is To Dismiss STR’s Complaint, AndAward JNC Its Fees And Expenses ........................................................ 8
Business Guides, Inc. v. Chiromatic Comm’ns Enters., Inc.. 498 U.S. 533, 111 S. Ct. 922, 112 L. Ed. 2d 1140 (1991) ................................... 9
Cal. Architectural Bldg. Products, Inc. v. Franciscan Ceramics, Inc.,818 F.2d 1466 (9th Cir. 1987) .............................................................................. 5
Cel-Tech Comms. & Cel-Comms., Inc. v. Los Angeles Cellular Tel. Co.,20 Cal.4th 163 (1999) ........................................................................................... 7
Cooter & Gell v. Hartmarx Corp.,496 U.S. 384, 110 S. Ct. 2447, 110 L. Ed. 2d 359 (1990) ................................... 5
Huettig & Schromm, Inc. v. Landscape Contractors Council of N. Cal.,790 F.2d 1421 (9th Cir. 1986) .............................................................................. 5
Judin v. United States,110 F.3d 780 (Fed. Cir. 1997) .............................................................................. 8
Kendrick v. Zanides,609 F. Supp. 1162 (N.D. Cal. 1985) ..................................................................... 9
Mercury Air Group, Inc. v. Mansour,237 F.3d 542 (5th Cir. 2001) ................................................................................ 8
Morris v. Wachovia Sec., Inc. ,448 F.3d 268 (4th Cir. 2006) ................................................................................ 5
Petrella v. Metro-Goldwyn-Mayer, Inc.,__ U.S. __, 134 S. Ct. 1962 (2014) .................................................................... 7
Phonometrics Inc. v. Economy Inns of Am.,349 F.3d 1356 (Fed. Cir. 2003) ............................................................................ 5
Q-Pharma, Inc. v. Andrew Jergens Co. ,360 F.3d 1295 (Fed. Cir. 2004) ............................................................................ 4
View Eng’g, Inc. v. Robotic Vision Sys., Inc.,208 F.3d 981 (Fed. Cir. 2000) ...................................................................... 4, 5, 8
Case 2:14-cv-04898-JVS-MRW Document 15-2 Filed 08/06/14 Page 3 of 13 Page ID #:129
(copy attached as Juo Exh. H). The following week, STR filed two more patent
infringement lawsuits based on the pending patent applications. Complaint, JAT
Wheels, Inc. d/b/a STR Racing v. DB Motoring Group, Inc., No. 14-5097 (C.D. Cal.
Jul. 1, 2014), ECF No. 1 (copy attached as Juo Exh. I); Complaint, JAT Wheels, Inc.
d/b/a STR Racing v. Trade Union Int’l, Inc., No. 14-5172 (C.D. Cal. Jul. 3, 2014),
ECF No. 1 (copy attached as Juo Exh. J). Thus, in the span of a week, STR has filed
four patent infringement lawsuits based on patent applications instead of an actual
patent.
B.
STR’s Complaint Against JNC Alleging Federal Trademark
Infringement, Patent Infringement, And Copyright Infringement
STR’s complaint against JNC, alleged a number of claims including patent
infringement, trademark infringement, and copyright infringement. [ECF 1].
1. STR’s Alleged “U.S. Design Patents”
In paragraph 15 of its Complaint, STR states that it owns “U.S. Design
Patents.” [ECF 1]. This is false. The numbers identified in STR’s Complaint areactually the application numbers for patent applications that STR filed with the
USPTO about a month before filing its Complaint.2 Juo Decl. at ¶ 2. These are not
2 They follow the numbering convention for design patent applications (which
currently begin with the numerical series prefix “29”) instead of that for an issueddesign patent (which begin with the letter "D"). Juo Decl. at ¶¶ 2 and 8.
Case 2:14-cv-04898-JVS-MRW Document 15-2 Filed 08/06/14 Page 6 of 13 Page ID #:132
763006.1 5MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF DEFENDANT’S MOTION UNDER RULE 11
Before filing a patent lawsuit, a competent pre-filing infringement analysis by
the lawyer must “conclude that there is a reasonable basis for a finding of
infringement of at least one claim of each patent so asserted.” View Eng’g., 208
F.3d at 984. Counsel’s legal experience may be considered in determining whether
a pre-filing inquiry was reasonable or not. Huettig & Schromm, Inc. v. Landscape
Contractors Council of N. Cal., 790 F.2d 1421, 1426 (9th Cir. 1986); see also
Phonometrics Inc. v. Econ. Inns of Am., 349 F.3d 1356, 1366 (Fed. Cir. 2003).
Furthermore, a reasonable pre-filing inquiry requires that the lawyer seek
credible information rather than proceed on mere suspicions or supposition for the
claims being asserted in the complaint. Fed. R. Civ. P. 11(b); Cooter & Gell v.
Hartmarx Corp., 496 U.S. 384, 401-2, 110 S. Ct. 2447, 2459, 110 L. Ed. 2d 359
(1990); Cal. Architectural Bldg. Products, Inc. v. Franciscan Ceramics, Inc., 818
F.2d 1466, 1472 (9th Cir. 1987). The complaint must be well-founded with
evidentiary support for its factual contentions from an objective prospective. Fed.
R. Civ. P. 11(b)(3); Morris v. Wachovia Sec., Inc., 448 F.3d 268, 277 (4th Cir. 2006)
(“Factual allegations fail to satisfy Rule 11(b)(3) when they are ‘unsupported by any
information obtained prior to filing.’”).
B. STR’s Claims For Patent Infringement Are Frivolous Because STR
Is Asserting Pending Patent Applications Instead of Patents
An invention is not patented merely by filing a patent application. The
USPTO does not issue a patent until after it is examined. 35 U.S.C. § 131
(“Examination of application”). “Patent pending” is not the same as “patented.” 35
U.S.C. § 292 (“False marking”). There must be an issued patent before one canassert patent infringement. 35 U.S.C. § 271 (“Infringement of patent”). Without an
issued patent, there are no enforceable patent rights.
Case 2:14-cv-04898-JVS-MRW Document 15-2 Filed 08/06/14 Page 9 of 13 Page ID #:135
763006.1 6MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF DEFENDANT’S MOTION UNDER RULE 11
This is a fundamental aspect of patent law that every patent attorney knows.
Counsel for STR, Tommy Wang,4 is a registered patent attorney, yet he signed
STR’s Complaint asserting claims of patent infringement based on pending patent
applications (while obscuring that fact by falsely referring to them as “U.S. Design
Patents” or “Patents” in STR’s Complaint). With no issued patent, there is utterly
no basis for STR’s claims of patent infringement. STR has refused to disclose any
legal or factual basis to support its frivolous claims of patent infringement based on
pending patent applications. Sanctions against STR and its counsel, Tommy Wang,
who signed its frivolous Complaint asserting non-existent patents, are appropriate
and warranted.
C. STR’s Trademark Claims Are Frivolous
1. STR Falsely Asserts That It Owns A Registered Trademark
In its Complaint, STR falsely states that it owns a “registered” trademark.
[ECF 1 at ¶ 14]. In reality, STR has only filed a trademark application which is
still pending with the USPTO. There is no registered trademark.
STR’s Count I asserting claims of federal trademark infringement and
trademark counterfeiting under 15 U.S.C. §§ 1114 and 1116, respectively, requires a
registered trademark. With no issued trademark registration, there is no basis for
these claims. STR has refused to disclose any legal or factual basis to support its
claims of trademark infringement and counterfeiting based on a pending trademark
application. Because there is no good faith basis for asserting these causes of action
sanctions against STR and its counsel, Tommy Wang, who signed its frivolous
Complaint falsely asserting a registered trademark, are appropriate and warranted.
4 On his law firm’s website, Mr. Wang touts that he "is a Registered Patent Attorney
who is licensed to practice law in California, the U.S. District Court for the CentralDistrict of California, and the U.S. Patent and Trademark Office with extensiveexperience representing clients in federal and state courts throughout the country."Juo Exh. K.
Case 2:14-cv-04898-JVS-MRW Document 15-2 Filed 08/06/14 Page 10 of 13 Page ID #:136
763006.1 7MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF DEFENDANT’S MOTION UNDER RULE 11
2.
STR Has Refused To Disclose the Pre-Filing Basis For Its
Other Trademark and Unfair Competition Claims
In view of the frivolous nature of STR’s patent claims, and its false statement
about owning a “registered” trademark, JNC demanded that STR disclose the pre-
filing basis for its other trademark and unfair competition claims. This included
STR’s claims for false designation of origin, federal trademark dilution,5 federal
unfair competition, California common law unfair competition, and the Unfair
Competition Law (“UCL”) under California Business and Professions Code
§ 17200.6
STR, however, has refused to do so. A reasonable inference for STR’s
refusal is that STR had no objectively reasonable basis for asserting its claims
against JNC. Sanctions against STR and its counsel, Tommy Wang, who signed its
frivolous Complaint, are appropriate and warranted.
D. STR’s Copyright Claim Is Frivolous
In its Complaint, STR fails to assert that it owns a copyright registration
which is a prerequisite for filing a copyright infringement lawsuit. Petrella v.
Metro-Goldwyn-Mayer, Inc., __ U.S. __, 134 S. Ct. 1962, 1977 (2014) (citing 17
U.S.C. §§ 408(b), 411(a)).
In view of the aforementioned frivolous nature of STR’s patent claims and its
false statement regarding owning a “registered” trademark, JNC demanded that STR
disclose the pre-filing basis for its copyright infringement claim, such as an
identification of the copyright registration, and copies of the photograph in question
and the alleged infringement.
5 There also appears to be no basis to assert that the STR RACING mark is“famous” under 15 U.S.C. 1125(c)(2)) (setting forth various factors to consider). 6 A UCL claim under Section 17200 requires an unlawful business act or practice,namely a business practice that violates another law. Cel-Tech Comms. & Cel-Comms., Inc. v. Los Angeles Cellular Tel. Co., 20 Cal.4th 163, 180 (1999). Thereappears to be no basis for STR’s allegations that JNC has violated any law.
Case 2:14-cv-04898-JVS-MRW Document 15-2 Filed 08/06/14 Page 11 of 13 Page ID #:137
763006.1 8MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF DEFENDANT’S MOTION UNDER RULE 11
Because STR has refused to do so, a reasonable inference is that STR had no
objectively reasonable basis for its claims against JNC, so sanctions against STR
and its counsel, Tommy Wang, who signed its frivolous Complaint improperly
asserting copyright infringement, are appropriate and warranted.
E. An Appropriate Sanction Is To Dismiss STR’s Complaint, And
Award JNC Its Fees And Expenses
This case is but one of four patent infringement lawsuits that STR has
recently filed that are based on pending patent applications, instead of a patent
actually issued by the USPTO. STR’s pattern of filing frivolous lawsuits based on
false and non-existent patent rights is an abuse of the judicial system which has the
indicia of extortion. See Eon-Net , 653 F.3d at 1326 (inferring that a patent lawsuit
was filed in bad faith and for an improper purpose because the plaintiff’s case had
“indicia of extortion”).
The Court should dismiss STR’s Complaint under Rule 41(b) because of
STR’s failure to comply with Rule 11.
Furthermore, an award of attorneys’ fees and expenses is appropriate when an
attorney has failed to make a reasonable investigation of the facts and the law before
filing a complaint. Fed. R. Civ. P. 11(c)(2); see also Mercury Air Group, Inc. v.
Mansour , 237 F.3d 542, 548 (5th Cir. 2001) (the purpose of Rule 11 is to deter
baseless filings, and “the award of attorney’s fees approximates optimal
deterrence”); Judin v. United States, 110 F.3d 780, 785 (Fed. Cir. 1997) (suggesting
“the amount of the reasonable expenses incurred because of the filing of the
[complaint], including a reasonable attorney’s fee” would be an appropriate sanctionunder Rule 11); View Eng’g, 208 F.3d at 988 (affirming $97,825.48 in attorney’s
fees against patentee’s counsel for failing to conduct a proper pre-filing patent
infringement analysis). As previously discussed, STR has refused to disclose any
information regarding whether its pre-filing investigation was competent or not.
Case 2:14-cv-04898-JVS-MRW Document 15-2 Filed 08/06/14 Page 12 of 13 Page ID #:138
DECLARATION OF JAMES JUO IN SUPPORT OF DEFENDANT’S MOTION UNDER RULE 11 AGAINST PLAINTIFF’S COMPLAINT
James Juo (State Bar No. 193852) [email protected] PATTON, LLPHoward Hughes Center6060 Center Drive, Tenth FloorLos Angeles, California 90045Telephone: (310) 824-5555Facsimile: (310) 824-9696
Attorney for Defendants,JNC WHEEL COLLECTION
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
JAT WHEELS, INC.d/b/a STR RACING
Plaintiff,
v.
JNC WHEEL COLLECTION, andDOES 1 through 10,
Defendants.
CASE NO. CV14-04898 JFW (MRWx)
DECLARATION OF JAMES JUO INSUPPORT OF DEFENDANT’SMOTION UNDER RULE 11AGAINST PLAINTIFF’SCOMPLAINT
Judge John F. Walter
Case 2:14-cv-04898-JVS-MRW Document 15-3 Filed 08/06/14 Page 1 of 4 Page ID #:140
DECLARATION OF JAMES JUO IN SUPPORT OF DEFENDANT’S MOTION UNDER RULE 11 AGAINST PLAINTIFF’S COMPLAINT
examining attorney approximately 3 months after filing date.” Thus, application
serial no. 86256705 is not expected to even be assigned to an trademark examiner
for examination until mid-July 2014.
5. Attached as Exhibit D is a copy of an email dated July 7, 2014 from
myself as counsel for JNC, to Tommy Wang, counsel for plaintiff JAT Wheels, Inc.
d/b/a STR Racing. This email was sent about an hour after a telephone conversation
with Mr. Wang in which I had identified myself as counsel for Defendant JNC, and
questioned Mr. Wang about the basis for the claims in STR’s Complaint. Mr. Wang
requested that I send him something in writing rather than engage in a verbal
discussion. This July 7 email attached as Exhibit D is a copy of that writing
requested by Mr. Wang.
6. Attached as Exhibit E is a copy of an email dated July 8, 2014 from
Tommy Wang, counsel for STR, to me as counsel for JNC. In this July 8 email, Mr.
Wang declined to address the substance of the issues raised in the email that he had
requested from me.
7. Attached as Exhibit F is a copy of an Order for Preliminary Injunction
issued against STR in Vossen Wheels, Inc. v. Toprich (U.S.A.), Inc., No. 13-7747, by
Judge Audrey B. Collins of the U.S. District Court for the Central District of
California on December 9, 2013.
8. Attached as Exhibit G is a copy of U.S. Design Patent No. D681,541
which was the patent-in-suit in Vossen Wheels, Inc. v. Toprich (U.S.A.), Inc. The
numbering convention for design patents is to begin the patent number with a letter
prefix, namely the letter “D.” Also, as shown on the face of the design patent, the
application number for a design patent application begins with a two-digit numericalseries prefix. For U.S. Design Patent No. D681,541, its application had “29” as its
series prefix.
Case 2:14-cv-04898-JVS-MRW Document 15-3 Filed 08/06/14 Page 3 of 4 Page ID #:142
This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
Post Card, as described in MPEP 503.
New Applications Under 35 U.S.C. 111
If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
Acknowledgement Receipt will establish the filing date of the application.
National Stage of an International Application under 35 U.S.C. 371
If a timely submission to enter the national stage of an international application is compliant with the conditions of 35U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
New International Application Filed with the USPTO as a Receiving Office
If a new international application is being filed and the international application includes the necessary components for
an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Numberand of the International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning
national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
the application.
EXHIBIT APage 36 of 69
Case 2:14-cv-04898-JVS-MRW Document 15-4 Filed 08/06/14 Page 36 of 69 Page ID #:179
This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
Post Card, as described in MPEP 503.
New Applications Under 35 U.S.C. 111
If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
Acknowledgement Receipt will establish the filing date of the application.
National Stage of an International Application under 35 U.S.C. 371
If a timely submission to enter the national stage of an international application is compliant with the conditions of 35U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
New International Application Filed with the USPTO as a Receiving Office
If a new international application is being filed and the international application includes the necessary components for
an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Numberand of the International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning
national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
the application.
EXHIBIT APage 45 of 69
Case 2:14-cv-04898-JVS-MRW Document 15-4 Filed 08/06/14 Page 45 of 69 Page ID #:188
This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
Post Card, as described in MPEP 503.
New Applications Under 35 U.S.C. 111
If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
Acknowledgement Receipt will establish the filing date of the application.
National Stage of an International Application under 35 U.S.C. 371
If a timely submission to enter the national stage of an international application is compliant with the conditions of 35U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
New International Application Filed with the USPTO as a Receiving Office
If a new international application is being filed and the international application includes the necessary components for
an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Numberand of the International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning
national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
the application.
EXHIBIT APage 54 of 69
Case 2:14-cv-04898-JVS-MRW Document 15-4 Filed 08/06/14 Page 54 of 69 Page ID #:197
Please be advised that I will not be replying to your emails with a point-by-point rebuttal. Both emailscontain so many factual inaccuracies and unrelated issues that attempting to address each one wouldbe an inefficient use of my firm’s time and our client’s money.
From your emails, it appears that you represent JNC Wheels Collection, even though you neverconfirm that in writing. If this is not correct, please let me know.
Again, as indicated in our letter to JNC Wheels Collection, we are willing to dismiss this case on thefollowing conditions:
1. JNC Wheels Collection must stop selling the STR 513 immediately.
2. JNC Wheels Collection must hand over all remaining inventory of the STR 513 to us orprovide proof that they destroyed them.
3. JNC Wheels Collection must stop referring to, or designating themselves as an authorizedSTR manufacturer, seller, or dealer.
4. JNC Wheels Collection, from here on out, must not infringe on any other patents JAT currentlyholds or will hold in the future.
5. JNC Wheels Collection must pay for the cost of litigation, attorney’s fees, damages, andanything else that JAT is monetarily entitled to.
We have yet to formally effectuate service of process of JNC. Please advise if you are willingto accept service on their behalf by July 11, 2014.
The foregoing is written for purposes of comprise and settlement, and is covered by Federal
Rule of Evidence 408. Additionally, nothing herein shall limit or be constructed to limit any position,right, or claim that our client may have, all of which are expressly reserved.
Regards,
EXHIBIT EPage 1 of 5
79
Case 2:14-cv-04898-JVS-MRW Document 15-8 Filed 08/06/14 Page 1 of 5 Page ID #:218
On Tue, Jul 8, 2014 at 10:03 AM, James Juo < [email protected]> wrote:
Tommy,
Following up on my earlier email, please note that before filing a patent lawsuit, Rule 11 requires a competent
pre-filing infringement analysis by a lawyer to find “a reasonable basis for a finding of infringement of at least
one claim of each patent so asserted.” View Eng'g., 208 F.3d at 984. Furthermore, a reasonable pre-filing
inquiry requires that the lawyer seek credible information rather than proceed on mere suspicions or supposition
for the claims being asserted in the complaint. Fed. R. Civ. P. 11(b); Cooter & Gell v. Hartmarx Corp., 496
U.S. 384, 401-2, 110 S. Ct. 2447, 2459, 110 L. Ed. 2d 359 (1990); Cal. Architectural Bldg. Products, Inc. v.
Franciscan Ceramics, Inc., 818 F.2d 1466, 1472 (9th Cir. 1987). The complaint must be well-founded with
evidentiary support for its factual contentions from an objective prospective. Fed. R. Civ. P. 11(b)(3); Morris v.
Wachovia Sec., Inc., 448 F.3d 268, 277 (4th Cir. 2006) (“Factual allegations fail to satisfy Rule 11(b)(3) whenthey are ‘unsupported by any information obtained prior to filing.’”).
In addition to my prior inquiry as to whether JAT is asserting any issued patents for its patent infringementclaims (since no issued patents are identified in the complaint), please let me know if you inspected any of the
actual accused products as part of your pre-filing infringement analysis (and, if so, please identify those
products).
James Juo
PartnerFULWIDER • PATTON LLP
Intellectual Property Law
6060 Center Drive, Tenth Floor, Los Angeles, CA 90045
If you have received this communication in error, please notify us immediately by return e-mail or by telephone, 310-824-5555, and delete and/or destroy all copies of
the message.
EXHIBIT EPage 2 of 5
80
Case 2:14-cv-04898-JVS-MRW Document 15-8 Filed 08/06/14 Page 2 of 5 Page ID #:219
Following up our earlier telephone conversation (in which I was immediately transferred from you to
your associate Andrew, and then back to you again), there are severe deficiencies in the complaint JAT
filed against JNC.
The complaint was not clear on what “trademark rights” were being asserted. Andrew confirmed that
the “STR RACING” work mark is the only trademark being asserted by JAT in this litigation. Please
confirm that is correct.
The complaint asserts that “Plaintiff registered its trademark on April 18, 2014,” the “STR Trademark
registration number is 86256705,” and JNC infringed “Plaintiff’s registered STR Trademark in violation
of 15 U.S.C. § 1114(1).” Those are false statements. Although a trademark application for STR
RACING was filed on April 18, 2014, the USPTO has not issued a trademark registration. You have no
basis to assert “federal trademark infringement and trademark counterfeiting” under the Lanham Actwhich require a registered trademark.
To the extent you are asserting unregistered rights under a different statute, please identify the specific
factual and legal basis for your claim. The complaint only makes general allegations against JNC.
During our short telephone conversation, Andrew asserted that JNC used the STR RACING mark on the
JNC website and on its Facebook page. I am unaware of any such use. Please provide me with the Rule
11 factual basis, including any screenshots, to support your assertion that JNC has infringed the STRRACING mark.
The complaint also asserts dilution, but there appears to be no basis to assert that the STR RACING
mark is “famous” as required by the Lanham Act . Please provide me with the Rule 11 factual basis foryour assertion that the STR RACING mark is famous (i.e., “widely recognized by the general
consuming public” under 15 U.S.C. 1125(c)(2)).
The complaint also asserts copyright infringement of an unidentified photograph, but provides no
identification or sample of the alleged work. Nor does the complaint assert that JAT has obtained a
copyright registration (which is a prerequisite for filing suit). Petrella v. Metro-Goldwyn-Mayer, Inc.,
134 S. Ct. 1962, 1977 (2014) (citing 17 U.S.C. §§ 408(b), 411(a)). Again, you appear to have no basis
to assert copyright infringement. Please provide me with the Rule 11 factual basis for your assertion
that JNC has infringed any copyright.
EXHIBIT EPage 3 of 5
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This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
Post Card, as described in MPEP 503.
New Applications Under 35 U.S.C. 111
If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
Acknowledgement Receipt will establish the filing date of the application.
National Stage of an International Application under 35 U.S.C. 371
If a timely submission to enter the national stage of an international application is compliant with the conditions of 35U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
New International Application Filed with the USPTO as a Receiving Office
If a new international application is being filed and the international application includes the necessary components for
an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Numberand of the International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning
national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
the application.
Case 2:14-cv-04897-DMG-MAN Document 1 Filed 06/24/14 Page 27 of 71 Page ID #:33
EXHIBIT HPage 27 of 71
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Case 2:14-cv-04898-JVS-MRW Document 15-11 Filed 08/06/14 Page 27 of 71 Page ID #:255
This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
Post Card, as described in MPEP 503.
New Applications Under 35 U.S.C. 111
If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
Acknowledgement Receipt will establish the filing date of the application.
National Stage of an International Application under 35 U.S.C. 371
If a timely submission to enter the national stage of an international application is compliant with the conditions of 35U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
New International Application Filed with the USPTO as a Receiving Office
If a new international application is being filed and the international application includes the necessary components for
an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Numberand of the International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning
national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
the application.
Case 2:14-cv-04897-DMG-MAN Document 1 Filed 06/24/14 Page 36 of 71 Page ID #:42
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This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
Post Card, as described in MPEP 503.
New Applications Under 35 U.S.C. 111
If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
Acknowledgement Receipt will establish the filing date of the application.
National Stage of an International Application under 35 U.S.C. 371
If a timely submission to enter the national stage of an international application is compliant with the conditions of 35U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
New International Application Filed with the USPTO as a Receiving Office
If a new international application is being filed and the international application includes the necessary components for
an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Numberand of the International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning
national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
the application.
Case 2:14-cv-04897-DMG-MAN Document 1 Filed 06/24/14 Page 45 of 71 Page ID #:51
EXHIBIT HPage 45 of 71
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This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
Post Card, as described in MPEP 503.
New Applications Under 35 U.S.C. 111
If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
Acknowledgement Receipt will establish the filing date of the application.
National Stage of an International Application under 35 U.S.C. 371
If a timely submission to enter the national stage of an international application is compliant with the conditions of 35U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
New International Application Filed with the USPTO as a Receiving Office
If a new international application is being filed and the international application includes the necessary components for
an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Numberand of the International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning
national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
the application.
Case 2:14-cv-04897-DMG-MAN Document 1 Filed 06/24/14 Page 54 of 71 Page ID #:60
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Volkswagen GTI on 18″ Spec-1 Racing SP-8 Concave Wheels (http://spec1wheels.com/volkswagen-gti-18-spec-1-racing-sp-8-concave-wheels/)Posted April 17, 2014
By Spec1Wheels (http://spec1wheels.com/author/admin/)
This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
Post Card, as described in MPEP 503.
New Applications Under 35 U.S.C. 111
If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
Acknowledgement Receipt will establish the filing date of the application.
National Stage of an International Application under 35 U.S.C. 371
If a timely submission to enter the national stage of an international application is compliant with the conditions of 35U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
New International Application Filed with the USPTO as a Receiving Office
If a new international application is being filed and the international application includes the necessary components for
an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Numberand of the International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning
national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
the application.
Case 2:14-cv-04897-DMG-MAN Document 1 Filed 06/24/14 Page 65 of 71 Page ID #:71
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