Case 4:19-cv-02040 Document 1 Filed on 06/06/19 in TXSD Page 1 of 6

UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION

JPT Group, LLC §

Plaintiff, §
§
v. § CASE NO: 4:19-cv-2040
§
Tory Burch LLC §
§ JURY DEMANDED
§
Defendant. §
§

PLAINTIFF JPT GROUP’S ORIGINAL COMPLAINT

JPT Group, LLC (“Plaintiff” or “JPT”), for its complaint of patent infringement against

defendant Tory Burch LLC (“Defendant” or “Tory Burch”), alleges as follows:

NATURE OF THE ACTION

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”).

2. Tory Burch is an international designer and marketer of apparel, including footwear.

Rather than undertaking its own independent design and development, Tory Burch

misappropriated Bernardo’s Patented Mojo Designs and commercialized infringing products

throughout the United States, Texas and this District.

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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).

JURISDICTION & VENUE

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. §§

1331 and 1338(a).

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

website, department stores and wholly owned retail storefronts.

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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)

and § 1400 (b).

FACTS AND BACKGROUND

The Mojo Patents

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

the ’D149 Patent is attached as Exhibit A and incorporated herein.

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

the ’D182 Patent is attached as Exhibit B and incorporated herein.

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

Bernardo Footwear of Houston, Texas dated February 11, 2014.

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14. JPT currently sells the Mojo sandal under the Bernardo brand.

Tory Burch’s Infringement of the Mojo Patents

15. As the representative side-by-side comparisons shown below reveal, Tory Burch USO0D581149S

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

misappropriated JPT’s patented ornamental sandal designs in their studded thong sandal line of
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

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;

D182 D149 Tory Burch EMMY PEARL

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

16. On information and belief, Tory Burch imported and continues to import the Accused

Products into the U.S., Texas and this District.

17. On information and belief, Tory Burch displayed or caused to be displayed and

continues to display the Accused- 1Products

- in sales outlets CONFIDENTIAL
and distribution channels throughout

the U.S., Texas and this District.

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

connection with its release of new products.

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

exposing for sale the Accused Products.

23. On information and belief, Tory Burch will continue to infringe the claims of the Mojo

Patents unless enjoined by this Court.

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

willfully committed acts of infringement.

JURY DEMAND

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

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PRAYER FOR RELIEF

WHEREFORE, JPT prays the Court to:

(a) grant a permanent injunction against Tory Burch’s continued

infringement;

(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;

(d) award prejudgment and post judgment interest;

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

(f) award costs; and

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

Date: June 6, 2019

Respectfully submitted,

PORT & BUMGARNER LLP

/s/ J. Reid Bumgarner

J. Reid Bumgarner
State Bar No. 24053118
S.D. Tex. ID No. 631284
Port & Bumgarner LLP
6750 West Loop S., Suite 748
Houston, Texas 77401
Telephone: 713/678-0673
Email: RBumgarner@PortBumgarner.com

FOR JPT GROUP, LLC

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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': 29/318’535 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
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
 Case 4:19-cv-02040 Document 1-2 Filed on 06/06/19 in TXSD Page 3 of 5

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