Vossen Wheels v. Wheel World 3

7/27/2019 Vossen Wheels v. Wheel World 3

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UNITED STATES DISTRICT COURTFOR THE SOUTHERN DISTRICT OF FLORIDAMIAMI DIVISIONVossen Wheels,Inc.10460 SW 186 StreetMiami, Florida 33157

Plaintiff,V.

Wheel World 3,Incdlb/al DC Rims4690 NW 167th StreetMiami, Florida 33054

Civ. ActionNo.

Defendant

COMPLAINT ANDruRY TRIAL REQUESTCOMES NOW the Plaintiff, Vossen Wheels, Inc. (hereinafter "Vossen"), and for

its cause of action against Defendant, Wheel World 3, Inc., doing business as DC Rims,(hereinafter "Wheel World" or "Defendant") for patent infringement, Vossen alleges:

Parties and Jurisdiction1. Vossen is a corporation formed under the laws of Florida and having its

principal place of business at10460 SW 186 Street, Miami, Florida 33157.2. Upon information and belief, Wheel World is a corporation formed under

the laws of Florida and having its principal place of business at 4690 NW 167th Street,Miami, Florida 32811.

3. Wheel World imports, sells, offers to sell, and distributes products withinthis District, including the "DC Al1"; the "DC 3180"; andthe "DC Al5" wheels.


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4. This is a complaint for infringement of U.S. Patent No. D681,541 ("the'541 patent") and U.S. Patent No. D690,643 ("the'643 patent") under 35 U.S.C. 5271.

5. The Court has original and exclusive jurisdiction over the subject matterof the complaint under 28 U.S.C. $$ 1331, 1338(a). Venue is proper under 28 U.S.C. $$1391 and 1a00(a).

General Allegations6. Vossen is the owner of the entire right, title and interest in the '541 patent

and the '643 patent by virtue of an assignment, which has been duly recorded at theUnited States Patent and Trademark Office. A copy of the '541 patent is attached heretoas Exhibit 1, and a copy of the '643 patent is attached hereto as Exhibit 2.

7. The '541 patent was filed on October 26, 2012 and issued on May 07,20t3.

8. The '643 patent was filed on October 26,2012 and issued on October 01,2013.

9. The'541 patent and the '643 patent are presumed valid by virtue of 35u.s.c. $ 282.

10. The '541 patent and the '643 patent are still in full force and effect.1 1. Wheel World is in the business of manufacturing, distributing and selling

wheels, including the DC A11; the DC 3180; and the DC A15 wheels.


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COTINT IPatent Infringement; U.S. Patent No. D681.541

12. Paragraphs I through I I are adopted and incorporated herein by referenceas is fully set out in this paragraph 12.

13. Vossen is the owner of the '541 patent.14. Wheel World imports, sells, distributes, and offers for sale within this

judicial District wheels, e.g., the DC Al 1 wheel, covered by the '541 patent.15. Wheel World has infringed upon the '541 patent in violation of Title 35

U.S.C. $271 by making, using, selling, offering to sell, and/or importing wheels thatinfringe the '541 patent, all to the damage and injury of the Plaintiff Vossen.

16. Wheel World has sold and offered for sale wheels that infringe the '541patent after constructive notice of the '54I patent, and upon information and beliefcontinues to sell the accused DC A11 wheel after having notice of the infringement.

17. Wheel World sells and has sold infringing wheels within the United Statesincluding this District without license from Vossen.

18. Upon information and belief Wheel World's actions were willful and indisregard of Vossen's rights in the '541 patent.

19. Plaintiff Vossen has suffered and continues to suffer irreparable damageand injury for which there is no adequate remedy at law against the Defendant WheelWorld on account of its infringement of the '541 patent.


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COUNT IIPatent Infringement; U.S. Patent No. D690.643

20. Paragraphs 1 through 11 are adopted and incorporated herein by referenceas is fully set out in this paragraph2}.

21. Vossen is the owner of the '643 patent.22. Wheel World imports, sells, distributes, and offers for sale within this

judicial District wheels, e.g., the DC 3180 and DC A15 wheels, covered by the'643patent.

23. Wheel World has infringed upon the '643 patent in violation of Title 35U.S.C. $271 by making, using, selling, offering to sell, and/or importing wheels thatffiinge the'643 patent, all to the damage and injury of the Plaintiff Vossen.

24. Wheel World has sold and offered for sale wheels that infringe the'643patent after constructive notice of the '643 patent, and upon information and beliefcontinues to sell the accused DC 3180 and DC A15 wheels after having notice of theinfringement.

25. Wheel World sells and has sold infringing wheels within the United Statesincluding this District without license from Vossen.

26. Upon information and belief Wheel World's actions were willful and indisregard of Vossen's rights in the '643 patent.

27. Plaintiff Vossen has suffered and continues to suffer irreparable damageand injury for which there is no adequate remedy at iaw against the Defendant WheelWorld on account of its infringement of the '643 patent.


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PRAYER FOR RELIEFWHEREFORE, Plaintiff Vossen prays that judgment be entered by this Court in

its favor and against the Defendant Wheel World providing the following relief:1. That Defendant, its agents, affiliates, subsidiaries, servants, employees and

afforneys and those persons in active concert with or controlled by Defendant bepreliminarily and permanently enjoined from making, using, offering to sell, selling andimporting products that infringe the '541 patent and the '643 patett;

2. That Defendant be required to account to Plaintiff for Plaintiffsprofits and for all damages sustained by and entitled to Plaintiff by reason ofinfringement of the '541patent or the '643 patent (35 U.S.C. $ 28a);

3. That Defendant be required to account to Plaintiff for Defendant's prof,rtsand be iiable to Plaintiff to the extent of its total profit as a result of the infringement ofthe '541 patent and the '643 patent (35 U.S.C. $ 289);

4. That judgment be entered against Defendant for Plaintiff s damages in anamount to be determined at trial, and for prejudgment interest based upon infringementdamages accruing from the date of Defendant's acts of infringement;

5. That a determination be made that Defendant's actions were willful indisregard of Plaintifls rights and be required to pay to Plaintiff the costs of this actionand Plaintiffs reasonable attorney fees (35 U.S.C. $ 285), and that such damages betrebled;

6. That an order issue directing Defendant to deliver to Plaintiff forimmediate destruction all remaining products, advertisements, circulars, brochures or

lostthe


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VERIFICATIONJavid Azadi states that he is duly authorized representative of Plaintiff and that he verifiesthe allegations in the Compiaint and that to the best of his knowledge and belief all


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EXHIBIT TVossen Wheels, Inc. v. Wheel World 3, Inc., d/b/a/ DC Rimsu.s, Patent No. D68154L (',541 Patent)


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(12) United States Design Patentl lllll lilll|il ilil]il ililil ilil ]ilil]ll ililililil ]ililililil il ]]ililtus00D681s41S

(rol Patent No.:1+:; Date of Patent:

US D681,541 S** D{ay 7,2013(s4)(71 )(72)

FRONT II{CE OFA VEHICLE WT{EtrL.A,pplicant: Vossen Wheels. Miarni. FL (US)Inventor: Steren Kern. Miami Beach. FL (US)Assignee: Vossen Wheels. Miani. IL (US)Terrn: 14 Years

D578.948S * 10'2008 AsadaetalD615,917 S * 5:'2010 Zhao........D620.874 S * 8i2010 Z,hao ........D633.E48 S * ii20i1 Johnson ...D657.728 S + 412012 .lohnson ,..

+ cited by examiuer

D12i2IlDt2 ll lD12,',211D12,,21 IDr2,21l

(73)(**)(21) .A.ppl. No.: 291435,695{22) Iriled: act.26,2{ll2(5r ) LOC (e) {r. ...............{52) U.S.(). 12-16usPC ........... Dt2t21l(58) Field of Classification Search ......... Dl2l2M 213:30i/37.101. 64.10i. 65. 64.20i

See application file lirr cornplete search hislory.(56) References CitedlJ.S. PAIENT DOCUMENTS

D549.615 S * 8'2007 Llernandez ................... Dl2121lD55l.l49S+ 92007Ehnitt D12r211

PrinnnExantirer - Stacia Cadnus(.74) Attornet,. Agent, or Firn -* Berenato & White. LLC(.s7) (]I,,AIMThe ornaurental design lbr a liont face ofa vehicle wheel. asslxrwn and described.

DESCRIPTIONFIG. I is a front view r.-rl'a liont ibce oi a veiricle wheelshowing my new design; and.FIG. 2 is a lop and left side penpective view of tire wheelsht-rwn in FIG. l.The brokeu line sirowing of the rear of the wheel is includedfor lhe purpose of illustrating enviromnent and lbrms no parlofthe claimed desigt.

1 Claim. 2 Drawing Sheets


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U.S. Patent N{ay 7,2013 Sheet 2 of 2

Fig. 2

US D681,541 S


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U.S. Patent May 7,2013 Sheet I ofZ

Fig. 1

us D681,541 S


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EXHIBIT 2Vossen Wheels, Inc. v. Wheel World 3, Inc., d/b/a/ DC RimsU.S. Patent D690643 ('643 Patent)


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I ilil ilililll ilr ililt ililil ilil llilt ililt lilt llilt llilt ilil]l il il]t illlus00D690643S(r2) United States Design PatentKern (to) Patent No.:1+s1 Date of Patent: US D690,643 S** Oct. 1,2013(54)(71 )(72){7?\

121)(22)(51 )(s2)

FRONT FACE OF'AVEHICLE WHEELAppliciurt: Vossen Wheels. Miami. FL (USiIlventor: Steven Kern. Mianri Beach. FI- (US).{ssignee: Vossen Wheels. Mianii. Ft. (US)-femr: 14 Years-\pl. No.: 291435,702Filed: Oct.26,2Al2LOC (9) Cr. ............... ........... 12-16U,S. CI.usPC ........... Ir12/211(58) Field of Classification SearchUSPC ........... ... D1212O4 -213: 301/37.1 01. 64. 101.

30il65.64.2A1See application file 1br complete search history.(56) References Cited

U,S, P,1\I.ENI. DOCUMENTSD410.618 S * 611999 Hussaini etal. ............. D12,21ID515.003 S * 1r200(r frchazrbal .................... Dl],'21 ID542.211 S I 512007 l{ieke Dl2r21lD553.,550 S * 10 2007 Tirado Dl2'll ID596.100 S * 7,2009 .A.roney Dl2'21 ID596.549 S 'r 7 2009 \'arga Dl2 2l I

D605.999 S * 1212009 Stopp................D619.073 S $ 712010 GroornD622.200 S + 8,'2010 ZhaoD610,567 S * 1,'2011 Ettensberger .....D6i4.252 S * i2011 .Iohnson............D6i5.906 S + 412011 Futschiketal. ..D649.104 S * 11r20ll Gallert ..............D649.92) S * 12,'2011 Hars et al. ...-....D656,078 S * jr20l2 Ha:rs et al. .....,..D656.879 S * 4i2012 GallertD659.071 S I 5.i20i2 Hale..Ir. ............D670.633 S * 11,'2012 Kato et al. .......,D676.795 S * 2'2011 Wachter'-...........

* cited by exanliner

...-.. Dl2,:211...... D12,',211.. ... Dl2,'211

...... Dl2r211...... D12:2ll..... D121211...... Dl2i2l I....., Dl2r21l...... Dl2r2l1...... D12,211...... D12i2ll..... Dt2',2ll...... Dl2i 2l I

Priuan, Extniner Stacia Cadmus(.74) .4ttorney,,Agent. or Firm Berenato & White. LLC(s7) C]LAIMfhe omamental design fbr a front l-ace ola vehicle rvheel. asshown and described. DESCRIPTIONFiG. I is a perspective vieu' of a liont f-ace of a vehicle wheel.shoil'ing n1y new desigl: and.FIG. 2 is a liont view thereof.'I1re broken iine showing of the rear portion of tlre wheel isincluded ibr the purpose of illustrating etvirolunent andlbnns no part ol'tire claimed design.

1 Claim, 2 Drawing Sheets


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U.S. Patent Oct. 1,2013 Sheet I of2

Fig. 1

us D690,643 S


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U.S. Patent Oct. 1,2013 Sheet 2 of 2

Fig. 2

us D690,643 S

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