JPT Group v. Tory Burch - Complaint
JPT Group v. Tory Burch - Complaint
JPT Group, LLC (“Plaintiff” or “JPT”), for its complaint of patent infringement against
1. The Bernardo brand has inspired the women’s U.S. footwear market with its
sophisticated designs since 1946. Bernardo’s designs are the result of significant investments in
design work, product development and marketing. One such design is shown by Bernardo’s
long-selling Mojo sandals. The Mojo’s design is protected by U.S. Patent Nos. D581,149 and
D577,182, issued to Bernardo Footwear of Houston, Texas in 2008 (the “Mojo Patents”).
Rather than undertaking its own independent design and development, Tory Burch
THE PARTIES
3. JPT owns the Bernardo brand. JPT is a Delaware limited liability company having a
registered place of business in Texas at 5001 Spring Valley Road, Suite 600W in Dallas, Texas
75244.
4. On information and belief, Tory Burch LLC is a company organized and existing in
Delaware having a registered place of business in Texas at 211 E. 7th Street, Suite 620, Austin,
Texas 78701. Tory Burch LLC regularly conducts and transacts business from established places
of business in the South District of Texas, itself and/or though one or more subsidiaries,
affiliates, business units and has committed acts of infringement, within the meaning of 28
U.S.C. § 1400(b).
5. 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. §§
6. The court has personal jurisdiction over Tory Burch because it has conducted and does
conduct business within the State of Texas through multiple sales channels located within the
State of Texas and this District. In particular, Tory Burch represents on its website that it has
stores at the following locations in the Southern District of Texas: 5015 Westheimer Road Space
#A2360A Houston, Texas 77056, 9595 Six Pines Dr. Suite 400 Woodlands, Texas 77380, 820
Stacy Road Suite 522 Allen, Texas 75013, and 29300 Hempstead Road Cypress, Texas 77433.
7. Upon information and belief, Tory Burch has existing business relationships in this
District and has purposefully directed business activities to consumers in this District through its
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8. Upon information and belief, Tory Burch has committed and continues to commit acts of
infringement in violation of 35 U.S.C. § 271 and has and continues to purposefully place
infringing products into the stream of commerce. Upon information and belief, Tory Burch,
either directly or through distributors, franchisees, agents and/or others, ship, distribute, offer for
sale, sell and market products in the United States, the State of Texas and this District. Upon
information and belief, Tory Burch expects its actions to have consequences within this District
and derives substantial revenue from the sale of infringing products in interstate commerce and
this District. The acts by Tory Burch have caused and continue to cause injury to JPT within this
District.
9. Venue is properly within this District in accordance with 28 U.S.C. § 1391 (b) and (c)
10. On November 25, 2008, United States Patent No. D581,149 (the “‘D149 Patent”) entitled
Sandal was duly and legally issued to Bernardo Footwear, LLC of Houston, Texas. A copy of
11. On September 23, 2008, United States Patent No. D577,182 (the “‘D182 Patent”) entitled
Sandal was duly and legally issued to Bernardo Footwear, LLC of Houston, Texas. A copy of
12. These patents relate to the ornamental designs of a sandal claimed in the ‘D149 Patent
and ‘D182 Patent, which are embodied by Bernardo’s commercially successful Mojo sandals as
noted above.
13. JPT owns all right, title and interest in and to the Mojo Patents by assignment from
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14. JPT currently sells the Mojo sandal under the Bernardo brand.
15. As the representative side-by-side comparisons shown below reveal, Tory Burch USO0D581149S
misappropriated JPT’s patented ornamental sandal designs in their studded thong sandal line of
Comeau (45) Date of Patent: *9: Nov. 25, 2008
sandals, including at least the Emmy Pearl Sandal as depicted below (collectively, the “Accused
D553,840 S * 10/2007 WeitZman ....... .. D2/971
(**) Tenn 14 Years D572,456 S * 7/2008 Guers-Neyr'ud ............ .. D2/971
* cited by examiner
(21) Appl' NO': 29/318’535 Primary ExamineriStella M Reid
22 F1- d: M 21 2008 Assistant ExamineriKeli L Acker
( ) 1e ay ’ (74) Attorney, Agent, or FirmiN. Elton Dry; J. M. (Mark)
Related US. Application Data Gllbreth
(63) Continuation of application No. 29/297,780, ?led on (57) CLAIM
Products”).
Nov. 16, 2007.
The ornamental design for a sandal, as shoWn and described.
(51) LOC (8) Cl. .............. .. 02-04
(52) US. Cl. ....................................... .. D2/973; D2/917 DESCRIPTION
(58) Field of Classi?cation Search ................ .. D2/ 896, FIG. 1 is a perspective vieW of a sandal, embodying my new
D2/897, 9164919, 925, 9294934, 943, 9694972, design;
132/977: 978; 36/7~3*7~5’ 11-5’ 32298481956: FIG. 2 is a front elevation vieW thereof;
See application ?le for complete search history. FIG‘ 3 1S a rear elevanon VleW thereof;
16. On information and belief, Tory Burch imported and continues to import the Accused
17. On information and belief, Tory Burch displayed or caused to be displayed and
18. On further information and belief, Tory Burch sold significant volumes of the Accused
Products through sales outlets and distribution channels throughout the U.S., Texas and this
District.
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19. JPT’s Mojo sandals include a notice that they are covered by the Mojo Patents. On
information and belief, Tory Burch had notice of the Mojo Patents through at least JPT’s
statutory product marking, JPT’s enforcement of the Mojo Patents, Tory Burch’s product design
process, and/or any monitoring of third-party intellectual property rights by Tory Burch in
PATENT INFRINGEMENT
20. JPT incorporates herein the allegations set forth in Paragraphs 1 through 19 above.
21. Under 35 U.S.C. §§ 271 et seq., Tory Burch infringed the Mojo Patents by the sale, offer
for sale, and importation of the Accused Products or alternatively by contributing or inducing
others to sell, offer for sale, or import the Accused Products, literally and/or under the doctrine of
equivalents.
22. Upon information and belief, Tory Burch applied the design of the Mojo Patents, or a
colorable imitation thereof, to the Accused Products for the purpose of sale, and/or selling or
23. On information and belief, Tory Burch will continue to infringe the claims of the Mojo
24. JPT has been damaged and will continue to be damaged by Tory Burch’s infringing acts.
25. On information and belief, Tory Burch was actually aware of the Mojo Patents and
JURY DEMAND
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(b) award damages for Tory Burch’s infringement of the Mojo 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
Tory Burch’s 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
attorneys’ fees;
Respectfully submitted,
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