Case 1:15-cv-00128-EJF Document 2 Filed 09/25/15 Page 1 of 12 Karl R. Cannon (USB No. 6508 CLAYTON, HOWARTH & CANNON, P.C. 6985 Union Park Center, Suite 200 Cottonwood Heights, Utah 84047 Telephone: (801 255-5335 Fax: (801 255-5338 Email: kcannon@chcpat.com Attorney for Plaintiff GuraGear, LLC Attorney Docket No. T13056.A IN THE UNITED STATES DISTRICT COURT DISTRICT OF UTAH GuraGear, LLC, a Delaware limited liability company, Plaintiff, Peak Design, LLC, a California limited liability company, Defendant. COMPLAINT Jury Trial Demanded Civil No. 1:15-cv-00128-EJF Magistrate Judge: Evelyn J. Furse Plaintiff GuraGear, LLC (hereinafter GuraGear or Plaintiff hereby complains and alleges against the named Defendant as follows: 1. This is an action for the following counts: patent infringement of United States Patent No. 6,206,567 (hereinafter the 567 patent, and for unfair competition in violation of Utah and California state law.
Case 1:15-cv-00128-EJF Document 2 Filed 09/25/15 Page 2 of 12 PARTIES, JURISDICTION. AND VENUE Plaintiff GuraGear, is a Delaware limited liability company with its principle place of business located at 2036 Lincoln Avenue. Suite 104, Ogden, Utah 84401. 3. On information and belief. Defendant Peak Design, LLC (hereinafter "Defendant" or "Peak Design" is a California limited liability company. 4. On information and belief. Defendant Peak Design's principal place of business is located at 2325 3,,1Street, Suite 410, San Francisco, California. 94107. 5. This Court has original jurisdiction of the patent infringement claim pursuant to one or both of 28 U.s.c. 1331 and 1338(a in that the count for patent infringement arises under the patent laws of the United States including title 35 U.S.c. 271 & 281, et seq., and more specifically, 35 u.s.c. 271. 281. 283, 284, and 285. 6. This Court has supplemental jurisdiction of the state law claims for unfair competition pursuant to 28 U.S.C. 1367. 7. On information and belief. this Court has personal jurisdiction over Defendant Peak Design by virtue of Defendant's continuous and systematic business contacts in this state, as well as Defendant's conducting of infringing activity in this state. 8. Venue is laid in the U.S. District Court for the district of Utah. Central Division pursuant to 28 U.S.C. 1391 and 1400(b. 2
Case 1:15-cv-00128-EJF Document 2 Filed 09/25/15 Page 3 of 12 FACTUAL BACKGROUND 9. Plaintiff GuraGear is engaged in, inter alia, the business of developing, manufacturing and marketing photography equipment, including camera bags. Plaintiff GuraGear has sole legal ownership of the' 567 patent. lo. On March 27,2001, the '567 patent was granted to Tamrac, Inc., a California Corporation (hereinafter "Tarnrac", for a "CONTAINER HAVING DUAL OPENINGS FOR FACILITATING RAPID ACCESS TO THE INTERIOR OF THE CONTAINER." A true and correct copy of the' 567 patent is attached hereto as Exhibit A. 11. In May of 2014, Plaintiff GuraGear purchased Tamrac and its intellectual property assets, including sole legal ownership of the' 567 patent. as evidenced by an Intellectual Property Assignment Agreement effective June 26,2014, attached hereto as Exhibit B. 12. On inforrnation and belief. Defendant Peak. Design is engaged in the business of developing, making, using, marketing and selling a camera bag, among other photography equipment. 13. On information and belief. Defendant Peak Design competes with PlaintiffGuraGear in the selling of photography equipment, including camera bags, and intends to continue doing so. 14. On information and belief. Defendant Peak Design has been offering for sale camera bag products (hereinafter "Accused Products", including a camera bag identified as 'The Everyday Messenger" shown in the copy of Defendant Peak Design's website attached hereto as Exhibit C. 3
Case 1:15-cv-00128-EJF Document 2 Filed 09/25/15 Page 4 of 12 15. On information and belief. Defendant Peak Design has been offering for sale its Accused Products. which fall within the scope of one or more claims of the' 567 patent. after the issue date of the '567 patent. 16. On information and belief. Defendant Peak Design has sold many units of the Accused Products after the issue date of the' 567 patent. 17. Defendant Peak Design's manufacture, promotion and sales of the Accused Products constitutes unlawful infringement of the' 567 patent. 18. On information and belief. Defendant Peak Design knew of Tamrac 's U.S. patented TurboTop product, and knew of the existence of the '567 patent. 19. Defendant Peak Design's manfuacture, promotion and sales of the Accused Products. which like Tarnrac 's U.S. patented TurboTop product. is covered by at least one claim of the '567 patent, constitutes willful infringement of the' 567 patent. 20. On information and belief. Defendant Peak Design has intentionally made, used. marketed, promoted. offered for sale. and sold the Accused Products, which incorporate the innovations protected in a patent owned by Plaintiff GuraGear, without having to engage in all of the associated work or expenditures of developing a product having the uniqueness reserved for things known to be patented, and the added merits and marketability associated with such uniqueness, regardless of whether the public is made aware that the competing product is covered by a patent. 21. Defendant Peak Design's intentional business acts and practices constitute unlawful unfair competition. 4
Case 1:15-cv-00128-EJF Document 2 Filed 09/25/15 Page 5 of 12 22. As a result of Defendant Peak Design's wrongful conduct. Plaintiff GuraGear has suffered damages in an amount to be proven at trial. 23. The damage and harm to Plaintiff GuraGear arising from Defendant Peak Design's acts of willful infringement of the' 567 patent and unfair competition is not fully compensable by money damages. but rather has resulted in irreparable harm to Plaintiff GuraGear. FIRST CLAIM FOR RELIEF (Infringement of the' 567 Patent 24. Plaintiff GuraGear reallcgcs and incorporates by reference. as if fully set forth herein. the allegations contained in Paragraphs I through 2~ above. 25. Plaintiff GuraGear is the owner of the '567 patent by virtue of an assignment from the original assignee. Tamrac. 26. On information and belief. subsequent to the issue date of the '567 patent. and prior to commencement of this action. Defendant Peak Design infringed the' 567 patent by making, using. offering to sell. or selling to customers the Accused Products. which embody each and every element, or the equi valent thereof. of at least one claim of the' 567 patent. 27. By reason of the actions of Defendant Peak Design, PlaintiffGuraGear has been and will continue to be. seriously damaged and irreparably harmed unless Defendant is enjoined by this Court from the actions complained of herein. Plaintiff GuraGear has suffered monetary damages due to Defendant Peak Design's acts of patent infringement in an amount which cannot be determined without an accounting. and is thus subject to proof at trial. Further. the damage and harm to Plaintiff GuraGear arising from Defendant Peak Design' s acts of infringement of the' 567 patent 5
Case 1:15-cv-00128-EJF Document 2 Filed 09/25/15 Page 6 of 12 is not fully compensable by money damages, but rather results in irreparable harm to Plaintiff GuraGear. 28. On information and belief. the infringement by Defendant Peak Design was done with actual knowledge of the existence of the '567 patent. and is unlawful, deliberate. reckless, and willful. making this an exceptional case within the meaning of 35 C.s.c. 2X5. Thus. Plaintiff GuraGear is entitled to an award of enhanced damages and recovery of its attorney fees. SECOND CLAIM FOR RELIEF (Violation of Utah's Unfair Competition Act (Utah Codl! Ann. 13-5a-IOI to -103 29. Plaintiff GuraGear realleges and incorporates by reference. as if fully set forth herein. the allegations contained in paragraphs 1 through 28 above. 30. Defendant Peak Design's conduct alleged above constitutes unlawful. unfair. or fraudulent business acts or practices that have lead to the diminution of value of the intellectual property of Plaintiff GuraGear, all in violation of Utah's Unfair Competition Act (Utah Code Ann. 13-5a-ll to -103. 31. These wrongful acts have proximately caused and will continue to cause Plaintiff GuraGear substantial injury. including loss of customers, dilution of its goodwill. confusion of existing and potential customers. injury to its reputation and diminution of the value of its products. 32. The harm these wrongful acts have caused and will cause to Plaintiff GuraGear is both imminent and irreparable. and the amount of damage sustained by Plaintiff may be difficult to ascertain if these acts continue.
Case 1:15-cv-00128-EJF Document 2 Filed 09/25/15 Page 7 of 12 :13. To the extent Plaintiff GuraGear has no adequate remedy at law. Plaintiff is entitled to an injunction restraining Defendant Peak Design. and all persons acting in concert therewith. from engagmg further in such unlawful conduct. THIRD CLAIM FOR RELIEF (Violation of California's Unfair Competition Law (California Business & Professions Code * 17200 et seq.i 34. Plaintiff GuraGear realleges and incorporates by reference, as if fully set forth herein, the allegations contained in paragraphs 1 through 33 above. 35. Defendant Peak Design's conduct alleged above constitutes unlawful. unfair. or fraudulent business acts or practices that have lead to the diminution of value of the intellectual property of Plaintiff GuruGcar. all in violation of California' s Unfair Competition Law at Cali fornia Business & Professions Code 17200 et seq. 36. These wrongful acts have proximately caused and will continue to cause Plaintiff GuraGear substantial injury, including loss of customers, dilution of its goodwill. confusion of existing and potential customers. injury to its reputation and diminution of the value of its products. 37. The harm these wrongful acts have caused and will cause to Plaintiff GuraGear is both imminent and irreparable, and the amount of damage sustained by Plaintiff may be difficult to ascertain if these acts continue. 38. To the extent Plaintiff GuraGear has no adequate remedy at law. Plaintiff is entitled to an injunction restraining Defendant Peak Design, and all persons acting in concert therewith, from engaging further in such unlawful conduct. 7
Case 1:15-cv-00128-EJF Document 2 Filed 09/25/15 Page 8 of 12 ALLEGATION OF DAMAGES 39. Plaintiff GuraGear rcalleges and incorporates by reference. as iffull y set forth herein. the allegations contained in paragraphs I through 38 above. 40. On information and belief. Defendant Peak Design has unlawfully derived. and will continue to unlawfully dcri ve, profits by the infringement of the' 567 patent. 41. By reason of the actions of Defendant Peak Design. Plaintiff GuraGear has been. and will continue to be. seriously damaged and irreparably harmed unless Defendant is enjoined by this Court from the actions complained of herein. 42. Plaintiff GuraGear has suffered monetary damages due to Defendant Peak Design' s acts in an amount that cannot he determined without an accounting. and is thus subject to proof at trial. 43. The damage and harm to Plaintiff GuraGear arising from Defendant Peak Design's acts is not fully compensable by money damages. hut rather results in irreparable harm to Plaintiff GuraGear. 44. By reason of Defendant Peak Design's acts alleged herein. Plaintiff GuraGear has suffered damage to its business, and will continue to suffer damage to its business unless Defendant's unlawful actions and violations of Plaintiff s rights cease. 8
Case 1:15-cv-00128-EJF Document 2 Filed 09/25/15 Page 9 of 12 PRA YER FOR RELIEF 45. WHEREFORE. Plaintiff GuraGear prays for judgement of this Court against Defendant as follows: 46. That the Court enter a judgment that the '567 patent is valid and infringed by Defendant Peak Design: 47. That the Court enter a judgment that Defendant Peak Design has engaged in unfair competition pursuant to Utah's Unfair Competition Act (Utah Code Ann. 13-5a-101 to -103: 4X. That the Court enter a judgment that Defendant Peak Design has engaged in unfair competition pursuant to California's Unfair Competition Law (California Business & Professions Code ~ 17200 et seq.: 49. That Defendant Peak Design and all of Defendant's agents. servants. employees. attorneys. directors. and those persons in active concert or participation with them. be preliminarily and permanently enjoined under applicable authority from (i violating Plaintiff GuraGears patent rights. or causing others to violate said patent rights. on such terms as the Court deems reasonable, (ii continuing any and all acts of unfair competition as herein alleged. or causing others to commit such acts, and (iii further violation of Plaintiff's rights on such terms as the Court deems reasonable: 50. That Defendant Peak Design be ordered to deliver up to this Court. for such disposition as it sees fit. all infringing Accused Products and materials in its possession or control. all means for making the Accused Products, and all labels. packages, receptacles. wrappers, advertisements, literature. documents or other things in its possession or control bearing any designation. description or representation pertaining to the infringement of the '567 patent or to Defendant Peak Design' s violation of Plaintiff GuraGcar's rights under state unfair competition laws:
Case 1:15-cv-00128-EJF Document 2 Filed 09/25/15 Page 10 of 12 51. That Defendant Peak Design be ordered to file with this COUlt and serve on Plaintiff GuraGear within twenty (20 days after service on Defendant of the injunction granted herein. or such extended period as the Court may direct. a report in writing, under oath, setting forth in detail the manner and form in which Defendant has complied with the injunction and order of the Court; 52. That Defendant Peak Design be required to account to Plaintiff GuraUear for any and all profits, gains, and advantages derived by Defendant Peak Design and for all damages sustained by Plaintiff GuraGear by reason of the infringement and violation of rights complained of herein, and that the Court award Plaintiff GuraGear the amount of actual damages suffered by Plaintiff: 53. That Defendant Peak Design be required to pay prejudgment and post judgment interest until such awards arc paid: 54. That Defendant Peak Design, if warranted. be assessed enhanced damages up to treble damages. due to the deliberate and willful nature of its infringement of Plaintiff GuraGear's rights: 55. That, if warranted, this case be deemed an exceptional case and that Defendant Peak Design be assessed Plaintiff GuraGear's reasonable attorneys fees and costs for this action: and 56. That the Court grant such other and further relief as deemed equitable and just. 10
Case 1:15-cv-00128-EJF Document 2 Filed 09/25/15 Page 11 of 12 lcry DEMAND Plaintiff hereby demands a trial by jury of all issues so triable. DATED this 1Sdayof September, 2015. CLAYTON. HOWARTH & CANNON. P.c. Karl R. Cannon (CSB No. 6508 6985 Union Park Center. Suite 200 Cottonwood Heights. Utah 84047 Telephone: (801 255-5335 Cell phone: (801 671-1316 Fax: (801 255-5338 Email: kcannon@chcpat.com Attorney for Plaintiff. GuraGcar. LLC S:\CIIC Flle,\T1 J. \TI30\TI3056'v\\I\Colllplalnl.wpd
Case 1:15-cv-00128-EJF Document 2 Filed 09/25/15 Page 12 of 12 VERIFICATION PF COMPLAINT Gregory Schern declares under any applicable penalties that he is the President of GuraGear. LLC. and is authorized to make this declaration and verification; that the facts set forth in this complaint are true and correct to the best of his knowledge: and that all statements made herein of his own knowledge arc true and correct and that all statements made on information and belief are believed to be true and correct. Executed on this _25th day of September. 2015. GuraGear. LLC Gregory Schern, President 12