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Case 4:17-cv-02793 Document 1 Filed in TXSD on 09/15/17 Page 1 of 6

UNITED STATES DISTRICT COURT


FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION

JPT Group, LLC


Plaintiff,

v.

Steven Madden Retail, Inc., and CASE NO: 4:17-cv-2793
Steven Madden, Ltd.


Defendants. JURY DEMANDED


PLAINTIFF JPT GROUPS ORIGINAL COMPLAINT

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:

NATURE OF THE ACTION

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

innovative design work and product development.

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

rights, which are embodied in Bernardo branded products.


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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

conduct business in Texas and continues to conduct business of Bernardo in Houston.

4. On information and belief, Defendant Steven Madden Retail Inc. is a Delaware

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

conduct business in the State of Texas and this judicial district.

5. On information and belief, Defendant Steven Madden, Ltd. is a Delaware corporation

having an office and place of business at 52-16 Barnett Avenue, Long Island City, New York

11104.

JURISDICTION & VENUE

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.

1331 and 1338(a).

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.

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Through these channels, Madden has and continues to purposefully place its products into the

stream of commerce in Texas and the Southern District of Texas.

8. Madden has committed and continues to commit acts of infringement in violation of 35

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

acts by Madden caused injury to JPT within this district.

9. Venue is properly within this district in accordance with 28 U.S.C. 1391 (b) and (c) and

1400 (b).

FACTS AND BACKGROUND

The JPT Patents

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

and to the JPT Patents by assignment dated February 11, 2014.

13. The ornamental designs of the JPT Patents are embodied in the successful MOJO sandal,

which is sold by JPT under its Bernardo brand.

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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

prejudice on February 16, 2017. Id., at 2.

Steven Maddens Infringement of the JPT Patents


2/18/2015 Balenciaga Giant Nickel Studded Thong Sandal, Blue

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

as depicted below (the Accused Products).

D182D182 D149
D149 Steve Madden - Pamela
Balenciaga #___

U S. Patent Nov. 25, 2008 Sheet 1 of3 US D581,149 S

zoom video

Balenciaga
Giant Nickel Studded Thong Sandal, Blue

16. On information and belief, Madden contracted with Balenciaga


suppliers to have manufactured
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

district, for sale through the channels described herein.

-1- CONFIDENTIAL

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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

and this district.

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

the Prior Case.

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

exposing for sale the Accused Products.

24. On information and belief, Madden will continue to infringe the claims of the JPT Patents

unless enjoined by this Court.

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

committed acts of infringement.

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JURY DEMAND

27. JPT demands a trial by jury on all issues.

PRAYER FOR RELIEF

WHEREFORE, JPT prays the Court to:

(a) grant a permanent injunction against Maddens continued infringement;

(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;

(d) award prejudgment and post judgment interest;

(e) find that this case is an exceptional case under 35 U.S.C. 285 and award
attorney fees;

(f) award costs; and

(g) grant all other relief to which JPT is entitled.

Date: September 15, 2017

Respectfully submitted,

PORT & BUMGARNER LLP

/s/ J. Reid Bumgarner


J. Reid Bumgarner
State Bar No. 24053118
S.D. Tex. ID No. 631284
6750 West Loop South, Suite 748
Houston, Texas 77401
Telephone: 713/893-7255
Email: RBumgarner@PortBumgarner.com

ATTORNEY IN CHARGE FOR JPT GROUP, LLC

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Exhibit!A!
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Exhibit!B!
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USO0D581149S

(12) United States Design Patent (10) Patent No.: US D581,149 S


Comeau (45) Date of Patent: *9: Nov. 25, 2008

(54) SANDAL D495,855 S * 9/2004 Comeau .................... .. D2/917


D496,147 S * 9/2004 Comeau D2/917
Inventor: Dennis FI Comeall Santa Fe D530,898 S * 10/2006 ....... .. 132/971
D534,713 S * 1/2007 WeitZman ....... .. D2/929
(73) Assignee: Bernardo Footwear, LLC, Houston, TX 13545939 S * 6/2007 wellzman et 31' ~ 132/971
(Us) D550,942 S * 9/2007 Chol .............. .. D2/969
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': 29/318535 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
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;
FIG. 4 is a right side elevation vieW thereof;
(56) References Cited
FIG. 5 is a left side elevation vieW thereof;
U.S. PATENT DOCUMENTS FIG. 6 is a top vieW thereof; and,
1,977,995 A * 10/1934 Morali ..................... .. 36/115 FIG. 7 is a bottom vieW thereof.
D129,706 S * 9/1941 Grossman .................. .. D2/932
D147,308 S * 8/1947 Steel ......................... .. D2/917 1 Claim, 3 Drawing Sheets
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U S. Patent Nov. 25, 2008 Sheet 1 of3 US D581,149 S


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US. Patent Nov. 25, 2008 Sheet 2 of3 US D581,149 S


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US. Patent Nov. 25, 2008 Sheet 3 of3 US D581,149 S

FIG. 7
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Exhibit C
Case 4:17-cv-02793
Case 4:15-cv-03264 Document
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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

JPT Group, LLC,



Plaintiff,

v. CIVIL ACTION 4:15cv03264

Steven Madden Retail, Inc.,, et al.

Defendant.

CONDITIONAL ORDER OF DISMISSAL

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.

Signed at Houston, Texas on December 13, 2016.


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Case 4:15-cv-03264 Document
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United States District Court
Southern District of Texas

ENTERED
February 16, 2017
UNITED STATES DISTRICT COURT
David J. Bradley, Clerk
SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION

JPT GROUP , LLC,



Plaintiff,

v. CIVIL ACTION H-15-3264

STEVEN MADDEN RETAIL, INC., et al.,

Defendants.

O RDER

Plaintiffs unopposed motion to modify conditional order of dismissal (Dkt. 50) is

GRANTED. It is therefore ORDERED that the conditional order of dismissal previously entered

is extended up to and including February 17, 2017.

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

own costs and attorneys fees.

Signed at Houston, Texas on February 16, 2017.

___________________________________
Gray H. Miller
United States District Judge