XEO v. Hookahzz - Complaint

8/20/2019 XEO v. Hookahzz - Complaint

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Daniel M. Cislo, Esq., No. 125,[email protected]

Mark D. Nielsen, Esq., No. 210,[email protected]

CISLO & THOMAS LLP 12100 Wilshire Blvd., Suite 1700Los Angeles, CA 90025Telephone: (310) 451-0647Telefax: (310) 394-4477

Attorneys for Plaintiff,XEO INT., LTD.

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

XEO INT., LTD, a us ness ent tyorganized under the laws of GreatBritain,

Plaintiff,

vs.

HOOKAHZZ, LLC, a California limited

liability company, and DOES 1-9,inclusive,

Defendants.

)))))))))))

)))))))

Case No.:

COMPLAINT FOR DESIGNPATENT INFRINGEMENT

[JURY DEMAND]

Case 2:15-cv-05213-GW-JPR Document 1 Filed 07/10/15 Page 1 of 9 Page ID #:1


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For its Complaint, Plaintiff XEO Int., Ltd. alleges as follows:

PARTIES

1.

Plaintiff XEO Int., Ltd. (“XEO”) is a Limited Company incorporated

in Hull, Great Britain, with its principal place of business at Sauerweinstr. 4, 30167

Hanover, Germany. XEO’s products are sold and offered for sale internationally

including in this judicial district.

2.

Defendant Hookahzz, LLC (“Hookahzz”) is a California limited

liability company with a business address of 2647 Gateway Road #105-202

Carlsbad, California 92009.

3. The true names and capacities, whether individual, corporate, o

otherwise of Defendants Does 1-9 inclusive, are unknown to XEO, who therefore

sues them by such fictitious names. XEO will seek leave to amend this complain

to allege their true names and capacities when they have been ascertained. XEO i

informed and believes and thereon alleges that each of the fictitiously named

Defendants is responsible in some manner for the occurrences herein alleged. A

all times herein mentioned, Defendants Does 1-9 inclusive were the agents

servants, employees or attorneys of their co-defendants, and in doing the things

hereinafter alleged were acting within the course and scope of their authority as

those agents, servants, employees or attorneys, and with the permission and consen

of their co-defendants.

JURISDICTION AND VENUE

4. This Court has subject matter jurisdiction over this action pursuant to

28 U.S.C. § 1331 and § 1338(a) as it arises under Acts of Congress related to

design patents.

5.

This Court has personal jurisdiction over Defendant Hookahzz in tha

it is a California limited liability company doing continuous and systematic



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business in this judicial district through its distributors located in this judicia

district.

6. Venue is proper in this judicial district as to Defendants pursuant to 2

U.S.C. § 1391(b)(2) and § 1391(c) in that Defendant are subject to persona

jurisdiction in this judicial district, and at least a substantial portion of the acts an

omissions giving rise to the asserted claims occurred in this district.

FACTUAL ALLEGATIONS

7. Markus Goch, XEO’s Chief Executive Officer, applied for a patent on

the design of an electronic smoking device on January 25, 2013. That applicatio

resulted in Design Patent No. D687,181, which issued on July 30, 2013 (the “‘18

patent”). Said patent is attached hereto as Exhibit 1. The patent was duly an

legally issued and assigned to XEO. Figure 2 of the ‘181 patent appears below:

8. Defendants Hookahzz has been, and is still, making, using, importing

offering to sell, and/or selling articles that are within the scope of the claim of th

‘181 Patent. In particular, Hookahzz is selling at least the following items to re

sellers within this judicial district and elsewhere, its: (1) Hemp CBD Hookah –

Double Applez; (2) Hemp CBD Hookah – Melon Madnezz; (3) Hemp CBD

Hookah – Fresh Mintzz; and, (4) Hemp CBD Hookah – Pink Diva (hereafte

collectively, the “Accused Products”). Such sales of the Accused Products ar

being effectuated by Hookahzz, on information and belief, through industry trad

shows, business-to-business contacts, and other means.

9. Hookahzz’ Accused Products appear as follows:



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Hemp CBD Hookah – Pink Diva Hemp CBD Hookah - Melon Madnezz

Hemp CBD Hookah - Double Applez Hemp CBD Hookah - Fresh Mintzz

10. XEO has not licensed or otherwise authorized Hookahzz (or its

dealers, customers, affiliates, or the like) to deal in articles within the scope of the

‘181 Patent, including the Accused Products. In other words, the making, using

importing, offering to sell, and selling of the Accused Products by Hookahzz and it

re-sellers in unauthorized.

11. Hookahzz infringement of XEO’s ‘181 Patent is willful. Hookahzz

was previously enjoined by a German court in Frankfurt, Germany, based on a non

U.S. counterpart of the ‘181 Patent, from selling the Accused Products or colorable



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imitations thereof. In addition, Mr. Goch spoke with Katarina Maloney, one o

Hookahzz’ principals, at the Frankfurt Fair in or about May of 2014 and made Ms

Maloney aware of XEO’s U.S. patent at that time. On information and belief, Ms

Maloney is an owner and/or officer/member of Hookahzz, LLC. As such

Hookahzz had actual, prior knowledge that the XEO possessed design paten

protection, including in the U.S., for the design depicted in the ‘181 Patent, and ye

continued to infringe the ‘181 Patent. Furthermore, for approximately severa

months prior to the filing of this lawsuit, XEO specifically placed Hookahzz on

notice of XEO’s ‘181 Patent (if Hookahzz did not already know about it), and

attempted through correspondence to cause Hookahzz to cease and desist from its

infringing actions. Hookahzz did not change its conduct in response to such letters

and the Accused Products remain continue to be sold.

12. For all of these reasons, Hookahzz is liable for money damages in the

form of a disgorgement of profits pursuant to 35 U.S.C. § 289 to XEO. In addition

Hookahzz must be deterred from any further violations of XEO’s rights in the ‘181

Patent through a permanent injunction. Hookahzz should also be required to pay

XEO’s attorneys’ fees, expenses, and costs for its willful and blatant disregard o

XEO’s patent rights.

COUNT I – DESIGN PATENT INFRINGEMENT

35 U.S.C. §§ 101 ET SEQ.

13. XEO hereby repeats and incorporates herein the allegations set forth in

paragraphs 1 through 12 above.

14. XEO’s ‘181 Patent (see, Exhibit 1 attached hereto) has at all relevan

times subsequent to its issue date been fully enforceable and is now fully

enforceable.

15.

Subsequent to the issuance of the ‘181 Patent, Hookahzz has infringed

the ‘181 Patent by making, using, importing, offering to sell, and/or selling, and



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continuing to make, use, import, offer to sell and/or sell products that come within

the scope of the claim of the patent, and/or that come within a range of equivalents

of the claim of the patent, and/or contributing to the infringing activities of others.

16.

The making, using, importing, offering to sell, and/or selling of the

Accused Products by Hookahzz, and/or contributing to the infringing activities of

others, has been without authority or license from XEO and is in violation o

XEO’s rights, thereby infringing the ‘181 Patent.

17.

For the reasons stated elsewhere herein, Hookahzz’ infringement o

XEO’s ‘181 Patent has been, and is, willful, with knowledge of, and in disregard

for the exclusive rights of XEO set forth in its patent, attached hereto as Exhibit 1.

18. The amount of money damages due XEO as a result of Hookahzz

infringing acts cannot be determined without an accounting of Hookahzz’ profits

and it is thus subject to proof at trial.

19.

XEO is entitled to a complete accounting of all revenue and profit

derived by Hookahzz from the unlawful conduct alleged herein.

20. The harm to XEO arising from Hookahzz’ acts of infringement o

XEO’s ‘181 Patent is not fully compensable by money damages. Rather, XEO ha

suffered and continues to suffer irreparable harm which has no adequate remedy at

law and which will continue unless Hookahzz’ conduct is enjoined.

21.

XEO is therefore also entitled to a preliminary injunction, to be made

permanent on entry of the judgment, preventing Hookahzz from further acts o

infringement.

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PRAYER FOR RELIEF

WHEREFORE, XEO demands judgment against Hookahzz, as follows:

A.

For an order preliminarily and permanently enjoining Hookahzz, and

its officers, directors, agents, servants, attorneys, and employees and all other

persons acting in concert with it from committing any further acts of infringement

including but not limited to, manufacturing, using, importing, offering to sell, and

selling the Accused Products (or products colorably similar thereto), or aiding or

abetting or assisting others in such infringing activities;

B.

For an order directing Hookahzz to file with this Court and to serve on

XEO within thirty (30) days after service on Hookahzz of the injunction granted

herein, or such extended period as the Court may direct, a report in writing, unde

oath, setting forth in detail the manner and form in which Hookahzz has complied

with the injunction and order of the Court;

C.

For an order seizing and impounding all Accused Products, including

those en route to the U.S. from Hookahzz’ overseas supplier(s);

D. For a judgment to be entered for XEO against Hookahzz in an amoun

equal to the profits Hookahzz made in connection with its sales of products tha

infringe the ‘181 Patent pursuant to 35 U.S.C. § 289 to be proven at trial, or in the

alternative, a reasonable royalty;

E.

For a judgment awarding to XEO prejudgment and postjudgmen

interest until the award is fully paid;

F. For a judgment that Hookahzz has willfully and deliberately infringed

XEO’s patent rights, such that it is determined that this is an exceptional case

entitling XEO to enhanced damages under the Patent Laws of the United States;

G. For an award to XEO of costs, expenses, and attorneys’ fees, incurred

in bringing this action under the Patent Laws of the United States; and,

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H. For such other and further relief as this Court may deem just and

equitable under the circumstances.

Respectfully submitted:

CISLO & THOMAS LLP

Dated: July 10, 2015 By: /s/Daniel M. Cislo

Daniel M. Cislo, Esq.

Mark D. Nielsen, Esq.

Attorneys for Plaintiff, XEO INT.,

LTD.

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DEMAND FOR JURY TRIAL

Plaintiff hereby demands a trial by jury on all issues raised by the Complaint

so triable.

Respectfully submitted:

CISLO & THOMAS LLP

Dated: July 10, 2015 By: /s/Daniel M. Cislo

Daniel M. Cislo, Esq.

Mark D. Nielsen, Esq.

Attorneys for Plaintiff, XEO INT.,

LTD.



10/13

Exhibit 1

Case 2:15-cv-05213-GW-JPR Document 1-1 Filed 07/10/15 Page 1 of 4 Page ID #:10


11/13

1 2 ) United

States

Design Patent 1 0 )

P a t e n t N 0 . :

USO0D687181S

US D 6 8 7 , 1 8 1 S

Goch

4 5 ) Date o f P a t e n t : 1 1 *

J u l .

3 0 , 2013

5 4 ) ELECTRONIC SMOKINGDEVICE 5 6 ) R e f e r e n c e s

C i t e d

7 1 )

A p p l i c a n t : XEO

n t . L t d . ,

B e r l i n D E )

US

ATENT

DOCUMENTS

D108,336 S *

2/1938

Lykos e t a 1 . . . . . . . . . . . . . . . . . . D27/170

_ D590,990S 4/2009Hon . . . . . . . . . . . . . . .. D27/101

7 2 )

I n v e n t o r .

Markus

Goch, Hannover (DE)

13590991

S

*

4/2009

Hon

“ “

“ D27/l0l

D644 375

S

8/2011 Zhou

. . . . . . . . . . . . . . . . .

.. D27/101

(73)

Assignee:

XEO

n t .

Ltd.,

Berlin (DE) D653,803

S

*

2/2012

Timmermans

. . . .

D27/163

D657,046S 4/2012

Terryetal. . . . . . . . . . . . . ..

D24/110

D657,047 S

*

4/2012 Minskoffet 1.

. . . . . .

. . D24/110

8,375,957 B2 2/2013 Hon . . . . . . . . . . . . . . . . . . . . . . . . . 131/194

* * ) Term:

14

Years 2010/0031968

A1

* 2 / 2 0 1 0

S h e i k h

e t a 1 . 1 3 1 / 3 4 7

2012/0260926 A1 10/2012 Tu et a 1 . 131/329

2 1 ) APPI NO : 29/444,108 2 0 1 3 / 0 0 6 8 2 3 9 A1 3 / 2 0 1 3 Youn 1 3 1 / 2 7 3

*

c i t e d by

examiner

2 2 ) F i l e d : J a n . 2 5 , 2 0 1 3

Primary Examiner usan

Bennett Hattan

5 1 )

LOC

9 ) C 1 .

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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Hallmark

5 2 ) US . C l . 7 4 ) A t t o r n e y , A g e n t ,

o r

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ark

T e r r y

USPC

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . D27/101 (57) CLAIM

5 8 )

F i e l d

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C l a s s i ? c a t i o n

S e a r c h

The o r n a m e n t a l

d e s i g n f o r a n e l e c t r o n i c s m o k i n g d e v i c e , a s

USPC . . . . . . . . 1327/103405, 1 0 8 , 1 2 5 , 1 7 2 ,

174*176,

Show“

and descnbed

D 2 7 / 1 8 3 , 1 8 6 4 1 9 2 , 1 9 4 , 1 0 0 , 1 0 1 , 1 7 0 ,

D 2 7 / l 6 3 i l 6 5 ,

1 8 4 , 1 8 5 ; D 3 4 / 2 ; 2 0 6 / 2 4 2 i 2 7 6 ;

D 3 / 1 1 , 2 1 5 , 2 2 0 ,

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DESCRIPTION

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12/13

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13/13

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XEO v. Hookahzz - Complaint

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