Case 5:19-cv-02462 Document 1 Filed 12/20/19 Page 1 of 7 Page ID #:1

1 Wei-ting Chen (CA SBN 278799)

tim.chen@platinum-ip.com
2 PLATINUM INTELLECTUAL PROPERTY LLP
3 1346 The Alameda, Suite 7245
San Jose, CA 95126
4
Telephone: (408) 887-8051
5 Facsimile: (877) 463-0654
6
Attorneys for Plaintiffs
7 Free-Free Industrial Corp. and
8 Free- Free (USA), Inc.

9
10 UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
11
12 FREE-FREE INDUSTRIAL Case No.: 5:19-cv-2462
CORP., and FREE-FREE
13 (USA) INC., COMPLAINT FOR INFRINGEMENT
14 Plaintiffs, OF U.S. PATENT NO. D858,180
vs.
15
FIRST DESIGN GLOBAL, DEMAND FOR JURY TRIAL
16
Defendant.
17
18
19
20
21
COMPLAINT FOR PATENT INFRINGEMENT
22
23
FREE-FREE INDUSTRIAL CORP. (“Free-Free”), and FREE-FREE (USA)
24
INC. (“Free-Free USA”)(collectively, “Plaintiffs”) file this Complaint for Patent
25
Infringement against Defendant FIRST DESIGN GLOBAL (“First Design” or
26
“Defendant”), and state as follows:
27
28

-1-
 Case 5:19-cv-02462 Document 1 Filed 12/20/19 Page 2 of 7 Page ID #:2

1 THE PARTIES

2 1. Plaintiff Free-Free is a Taiwan company with its principal place of business

3 in 19F., No. 76, Sec. 2, Hunhua S. Road Da-an District, Taipei City 10683,
4 Taiwan. Free-Free is involved in the design, manufacture, and sale of the
5 plastic products, including but not limited to the plastic pitchers. Free-Free’s
6 subsidiary in United States is Free-Free USA.
7 2. Plaintiff Free-Free USA is a California corporation with its principal place
8 of business at 1890 S. Carlos Ave., Ontario California 91761. Free-Free
9 USA distributes, markets, and sells plastic products, including but not
10 limited to the plastic ptichers in the United States.
11
3. Plaintiffs are informed and believes, and thereupon alleges, that Defendant
12
First Design is a New York corporation with its principal place of business
13
at 55 Old Nyack Turnpike #212, Nanuet, New York 10954.
14
15
SUBJECT MATTER JURISDICTION
16
4. This action arises under the Patent Laws of the United States, 35 U.S.C. § 1
17
et seq., including, without limitation, 35 U.S.C. §§ 271, 281, 284, and 285.
18
As a result, this Court has subject matter jurisdiction over this case pursuant
19
to 28 U.S.C. §§ 1331 and 1338(a).
20
21
22 PERSONAL JURISDICTION

23 5. This Court has personal jurisdiction over Defendant in this action pursuant
24 to California and federal law on the grounds that, upon information and
25 belief, (i) Defendant has committed acts of patent infringement within the
26 State of California; (ii) the causes of action set forth herein arise from or
27 relate to Defendant’s activities in or directed toward the State of California;
28

-2-
 Case 5:19-cv-02462 Document 1 Filed 12/20/19 Page 3 of 7 Page ID #:3

1 and/or (iii) the exercise of jurisdiction over Defendant will not offend

2 traditional notions of fair play and substantial justice.

3 6. Defendant is also subject to personal jurisdiction in this Court pursuant to
4 California and federal law because Defendant has made, used, shipped,
5 imported, distributed, offered for sale, sold, and/or advertised infringing
6 products in the United States, the State of California, and this judicial district
7 directly, jointly, and/or through intermediaries.
8 7. Defendant does, has done, substantial business in this Judicial District,
9 including: (i) regularly doing business or soliciting business by virtue of
10 Dedendant’s nationwide sales and offers to sell through interactive and
11
commercial website(s) which direct(s) Defendant’s services and/or products
12
to California residents; and (ii) engaging in other persistent courses of
13
conduct, and/or deriving substantial revenue from products and/or services
14
provided to person in this District and State.
15
16
VENUE
17
8. Venue is proper in the Central District of California pursuant to 28 U.S.C. §
18
1391(b)(2) and/or (3) because, on information and belief, (a) a substantial
19
part of the events giving rise to this claim occurred in this Judicial District in
20
21
that Defendants have sold or actively and intentionally induced the selling of

22 infringing products in this Dudicial District, and (b) Defendant is subject to

23 this Court’s personal jurisdiction as set forth above.

24
25 FACTUAL BACKGROUND
26 9. Free-Free is the owner by assignment of all right, title and interest in and to
27 United States Patent Design Patent Number US D858,180 S, entitled LID
28 FOR A POT (“the ’180 Patent”), including the right to sue for all past,

-3-
 Case 5:19-cv-02462 Document 1 Filed 12/20/19 Page 4 of 7 Page ID #:4

1 present, and future infringement, which assignment was duly recorded in the

2 United States Patent and Trademark Office (“USPTO”).

3 10. A true and correct copy of the ’D180 Patent is attached hereto as Exhibit A.
4 11. The application that became the ’D180 Patent was filed on July 13, 2017,
5 and assigned U.S. patent application number 29/610,586 (“the ’586
6 Application”).
7 12.The ’180 Patent issued on September 3, 2019, after full and fair examination
8 by the United States Patent and Trademark Office.
9 13.The ’180 Patent is valid and enforceable.
10 14.The term of the ’180 Patent extends through July 13, 2032.
11
15.The Claim of the ’180 Patent claims:
12
The ornamental design for a lid for a pot, as shown and described.
13
16.Plaintiffs notified Defendant of the ’180 Patent and Defendant’s
14
infringement of the ’180 Patent prior to filing this action, but Defendant has
15
not yet ceased and desisted the infrinment of the ’180 Patent.
16
17
COUNT I – DIRECT PATENT INFRINGEMENT
18
17.Plaintiffs reallege and incorporate by reference the allegations set forth
19
above, as if set forth verbatim herein.
20
21
18.Defendant has directly infringed the ’180 Patent in violation of 35 U.S.C. §

22 271(a) by making, importing, using, selling, or offering for sale in the

23 United States products that embody the patented invention, and Defendant
24 will continue to do so unless enjoined by this court.
25 19.Defendant’s infringing products include, without limitation, Mainstays Ms
26 3qt Infusion Pitcher Turquoise products, Mainstays Ms Infusion/ice Pitcher,
27 and other as-yet-unknown products that similarly satisfy each element of the
28 ’180 Patent (“Accused Products”).

-4-
 Case 5:19-cv-02462 Document 1 Filed 12/20/19 Page 5 of 7 Page ID #:5

1
2 20.The Accused Products satisfy each and every element of asserted claim of
3 the ’180 Patent, as detailed in the preliminary comparison chart attached
4 hereto as Exhibit B, and incorporated herein by reference, either literally or
5 under the doctrine of equivalents.
6 21.Defendant’s infringing activities are and have been without authority or
7 license under the ’180 Patent.
8 22.Defendant has had actual knowledge of the ’180 Patent and Plaintiffs’
9 claims of infringement prior to the filing of this action, at least since
10 receiving pre-suit notice of the ’180 Patent from Plaintiffs.
11
23.Defendant’s infringement of the ’180 Patent has been and continues to be
12
willful and deliberate.
13
24.Plaintiffs are entitled to recover from Defendant the damages sustained by
14
Plaintiffs as a result of Defendant’s infringing acts in an amount subject to
15
proof at trial, which, by law, cannot be less than a reasonable royalty,
16
together with interest and costs as fixed by this Court, pursuant to 35 U.S.C.
17
§ 284.
18
25.Defendant’s past and continuing infringement of the ’180 Patent has
19
irreparably harmed, and continues irreparably to harm, Plaintiffs.
20
21
26.Defendant’s infringing activities will continue unless enjoined by this Court

22 pursuant to 35 U.S.C. § 283.

23
24 COUNT II – INDUCED PATENT INFRINGEMENT
25
26 27.Plaintiffs reallege and incorporate by reference the allegations set forth
27 above, as if set forth verbatim herein.
28

-5-
 Case 5:19-cv-02462 Document 1 Filed 12/20/19 Page 6 of 7 Page ID #:6

1
2 28.Upon information and belief, Defendant, individually and/or collectively,
3 has actively and intentionally, with prior knowledge of the ’180 Patent and
4 Plaintiffs’ claims of infringement, induced the direct infringement by others
5 of the ’180 patent in violation of 35 U.S.C. § 271(b), in making, importing,
6 using, selling, or offering for sale in the United States products that embody
7 the patented invention as described in Count I, above.
8 PRAYER FOR RELIEF
9 Plaintiffs respectfully request that the Court find in its favor and against
10 Defendant, and that the Court grant Plaintiffs the following relief:
11
A. An adjudication that the ’180 Patent has been infringed, either literally
12
and/or under the doctrine of equivalents, by Defendant;
13
B. A permanent injunction pursuant to 35 U.S.C. § 283, enjoining
14
Defendant from further acts of infringement with respect to the claims of
15
the ’180 Patent;
16
C. An accounting and an award to Plaintiffs of damages adequate to
17
compensate Plaintiffs for the Defendant’s acts of infringement, together
18
with pre-judgment and post-judgment interest and costs pursuant to 35
19
U.S.C. § 284;
20
21
D. That Defendant’s infringement be found to be willful, and that the Court

22 award enhanced damages pursuant to 35 U.S.C. § 284;

23 E. That this Court declare this to be an exceptional case and award Plaintiffs
24 its reasonable attorneys’ fees and expenses in accordance with 35 U.S.C.
25 § 285; and
26 F. Any further relief that this Court deems just and proper.
27
28

-6-
 Case 5:19-cv-02462 Document 1 Filed 12/20/19 Page 7 of 7 Page ID #:7

1 JURY DEMAND

2 Plaintiffs hereby demand a trial by jury of all issues so triable pursuant to

3 Fed. R. Civ. Proc., Rule 38.
4
Respectfully submitted,
5
Dated: December 20, 2019 PLATINUM IP LLP
6
7
By: /s/Wei-ting Chen
Wei-ting Chen
8 1346 The Alameda, Suite 7245
9 San Jose, CA 95126
Tel: (408) 887-8051
10 Fax: (877) 463-0654
11 Attorneys for Plaintiffs
Free-Free Industrial Corp. and
12
Free- Free (USA), Inc.
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

-7-
Case 5:19-cv-02462 Document 1-1 Filed 12/20/19 Page 1 of 8 Page ID #:8

EXHIBIT A
U.S. Patent No. D858,180

LID FOR A POT

Case 5:19-cv-02462 Document 1-1 Filed 12/20/19 Page 2 of 8 Page ID #:9
Case 5:19-cv-02462 Document 1-1 Filed 12/20/19 Page 3 of 8 Page ID #:10
Case 5:19-cv-02462 Document 1-1 Filed 12/20/19 Page 4 of 8 Page ID #:11
Case 5:19-cv-02462 Document 1-1 Filed 12/20/19 Page 5 of 8 Page ID #:12
Case 5:19-cv-02462 Document 1-1 Filed 12/20/19 Page 6 of 8 Page ID #:13
Case 5:19-cv-02462 Document 1-1 Filed 12/20/19 Page 7 of 8 Page ID #:14
Case 5:19-cv-02462 Document 1-1 Filed 12/20/19 Page 8 of 8 Page ID #:15
 Case 5:19-cv-02462 Document 1-2 Filed 12/20/19 Page 1 of 4 Page ID #:16

Preliminary Comparison Chart

U.S. Patent No. D858,180
Title: LID FOR A POT

Infringing Product Description:

Walmart Mainstays Infusion Pitcher Turquoise

U.S. Patent No. D858,180 Accused Product: Walmart Mainstays Ms 3qt

Infusion Pitcher Turquoise

1
Case 5:19-cv-02462 Document 1-2 Filed 12/20/19 Page 2 of 4 Page ID #:17

U.S. Patent No. D858,180 Walmart Mainstays Ms 3qt Infusion Pitcher

Turquoise

2
Case 5:19-cv-02462 Document 1-2 Filed 12/20/19 Page 3 of 4 Page ID #:18

U.S. Patent No. D858,180 Walmart Mainstays Ms 3qt Infusion Pitcher

Turquoise

3
Case 5:19-cv-02462 Document 1-2 Filed 12/20/19 Page 4 of 4 Page ID #:19