Hyundai Motor Am. v. Depo Auto Parts - Complaint

Case 8:18-cv-02151 Document 1 Filed 12/04/18 Page 1 of 24 Page ID #:1
1 PILLSBURY WINTHROP SHAW PITTMAN LLP

2
KENNETH E. KELLER (SBN 071450) kenneth.keller@pillsburylaw.com
CHRISTOPHER E. STRETCH (SBN 166752) christopher.stretch@pillsbury.com
3 Four Embarcadero Center, 22nd Floor
4
San Francisco, California 94111
Telephone: (415) 983-1000
5 Facsimile: (415) 983-1200
6 JASON R. ERB (SBN 180962) jerb@hmausa.com
7
HYUNDAI MOTOR AMERICA
10550 Talbert Avenue
8 Fountain Valley, California 92708
9 Telephone: (714) 965-3393
Facsimile: (714) 965-3815
10
Attorneys for Plaintiffs,
11
HYUNDAI MOTOR AMERICA, INC. and
12 HYUNDAI MOTOR COMPANY
13
14
15 THE UNITED STATES DISTRICT COURT

16 FOR THE CENTRAL DISTRICT OF CALIFORNIA
17 (SOUTHERN DIVISION)
18
HYUNDAI MOTOR AMERICA, INC. Case No.
19 a California corporation, HYUNDAI
MOTOR COMPANY, a Korean COMPLAINT FOR PATENT
20
corporation, INFRINGEMENT
21
Plaintiffs, JURY TRIAL DEMAND
22
v.
23
24
DEPO AUTO PARTS INDUSTRIAL
CO., LTD., a Taiwanese corporation,
25 and MAXZONE VEHICLE LIGHTING
26
CORP., a California corporation,
27 Defendants.
28
_________________________________________________________________________________
COMPLAINT FOR PATENT INFRINGEMENT
Case No. __________________
1 Plaintiffs HYUNDAI MOTOR AMERICA, INC. (“HMA”) and HYUNDAI

2 MOTOR COMPANY (“HMC”) (collectively “HYUNDAI” or “Plaintiffs”) assert the
3 following claims against Defendants DEPO AUTO PARTS INDUSTRIAL CO, LTD.
4 (“DEPO”) and MAXZONE VEHICLE LIGHTING CORP. (“MAXZONE”)
5 (collectively “Defendants”):
6 NATURE OF ACTION
7 1. This is a civil action seeking declaratory relief, damages, and injunctive
8 relief that arises under the patent laws of the United States, 35 U.S.C. §§ 1, et seq.
9 2. HMC is an innovative, world-renowned company that manufactures, sells
10 and distributes Hyundai branded automobiles and parts throughout the United States
11 and around the world. HMA is a subsidiary of HMC and is the exclusive distributor
12 in the United States of Hyundai motor vehicles and Hyundai automobile parts and
13 accessories.
14 3. HMC’s achievements in automobile design have resulted in worldwide
15 success and broad intellectual property protection for its innovations, including the
16 patented designs at issue here. Because of its success, unscrupulous replacement parts
17 vendors attempt to capitalize on that success by imitating HMC’s non-functional
18 elegant and distinctive product design to manufacture replacement parts, including
19 automobile headlamps, which are often required following a collision. One such
20 imitator is DEPO, who, together with its subsidiary MAXZONE, has slavishly copied
21 HYUNDAI’s elegant and distinctive headlamp designs, in violation of HYUNDAI's
22 valuable intellectual property rights. Indeed, as DEPO proudly proclaims on its
23 website: “We promise every customer that we eliminate the differences between the
24 DEPO products and the OE (Original Equipment) products.”
25 4. As alleged below in detail, Defendants have designed the ornamental
26 features of their replacement headlamps to look exactly like HYUNDAI's patent
27 protected headlamps through widespread patent infringement.
28
1
Case No. __________________
1 5. By this action, HYUNDAI seeks to put a stop to Defendants’ illegal

2 conduct and obtain compensation for the violations that have occurred thus far.
3 THE PARTIES
4 6. HMC is a Korean company, located in Seoul, Republic of Korea. HMC
5 manufactures and sells automobiles and automobile parts under the Hyundai brand.
6 HMC is the owner of certain design patents that cover original headlamp designs
7 deployed across the Hyundai line of automobiles and is the owner of the patents
8 asserted here.
9 7. HMA is a corporation duly organized and existing under the laws of the
10 State of California, with its principal place of business located in Fountain Valley,
11 California, within this judicial district. HMA has been granted the exclusive license
12 by HMC to distribute Hyundai brand vehicles and Genuine Hyundai Parts in the
13 United States that bear the claimed headlamp designs, and HMA is authorized to
14 enforce HMC’s intellectual property rights relating to this action.
15 8. Plaintiffs are informed and believe and thereon allege that Defendant
16 DEPO AUTO PARTS INDUSTRIAL, CO., LTD is a Taiwanese corporation
17 principally engaged in the design, manufacture, and sale of replacement car headlights
18 and other automobile parts, with a principal place of business located in Lugang,
19 Taiwan. On information and belief, DEPO AUTO PARTS INDUSTRIAL, CO., LTD
20 also maintains a place of business in this judicial district in Fontana, California.
21 9. Plaintiffs are informed and believe and thereon allege that Defendant
22 MAXZONE VEHICLE LIGHTING CORP. is a corporation duly organized and
23 existing under the laws of the state of California, with its principal place of business
24 located within this judicial district in Fontana, California. Plaintiffs are further
25 informed and believe and thereon allege that MAXZONE operates as a subsidiary of
26 Defendant DEPO and acts as the United States agent, distributor and general manager
27 for DEPO’s infringing headlamps.
28
2
Case No. __________________
1 JURISDICTION AND VENUE

2 10. This Court has subject matter jurisdiction pursuant to 28 U.S.C. § 1331
3 (federal question) and 28 U.S.C. § 1338(a) (any Act of Congress related to patents or
4 trademarks).
5 11. This Court has personal jurisdiction over Defendants DEPO and
6 MAXZONE because each has committed and continues to commit acts of
7 infringement in violation of 35 U.S.C. § 271 and places infringing products into the
8 stream of commerce, with the knowledge or understanding that such products are sold
9 in the State of California, including in this District. The acts by DEPO and
10 MAXZONE cause injury to HMA within this District. Upon information and belief,
11 DEPO and MAXZONE derive substantial revenue from the sale of infringing
12 products within this District, expect their actions to have consequences within this
13 District, and derive substantial revenue from interstate and international commerce.
14 12. Venue is proper within this District under 28 U.S.C. §§ 1391(b) and (c)
15 because Defendants transact business within this District and offer for sale in this
16 District products that infringe the HYUNDAI patents. In addition, venue is proper
17 because HMA's principal place of business is in this District, MAXZONE’S principal
18 place of business is in this District, DEPO operates a place of business in this District,
19 and HMA has suffered harm in this District.
20 HYUNDAI’S DESIGN PATENTS
21 13. HYUNDAI has protected its innovative designs through a broad range of
22 intellectual property rights. The HYUNDAI design patents cover many ornamental
23 features of HYUNDAI’S headlamp designs and HMC owns all right, title, and interest
24 in and to each of the asserted design patents listed below, copies of which are attached
25 as Exhibits 1-18.
26 ///
27 ///
28 ///
3
Case No. __________________
Patent Number Title

1
Exhibit 1 - D683,484 (the “D’484 patent”) Headlamp for an Automobile
2
3
Exhibit 3 - D660,476 (the “D’476 patent”) Headlamp for Automobiles
4
5
6
7
8
9
10
11
12
13
14 Exhibit 13 - D617,478 (the “D’478 patent”) Headlamp for Automobiles

20 DEFENDANTS’ INFRINGING PRODUCTS
21 14. Defendants have imported or sold in the United States infringing
22 headlamps for at least the following HYUNDAI vehicles: Genesis, Genesis Coupe,
23 Elantra, Elantra GT, Veloster, Accent, Azera, Tucson, Sonata, Sonata Hybrid, and
24 Santa Fe.
25 15. Rather than innovate and develop its own headlamp designs, Defendants
26 chose to copy HYUNDAI’s designs. The copying is so pervasive Defendants’
27 products appear to be HYUNDAI replacement headlamps. As DEPO proclaims on its
28 website: “We promise every customer that we eliminate the differences between the
4
Case No. __________________
1 DEPO products and the OE (Original Equipment) products.”

2 16. Defendants had many options to design their headlamps in a non-
3 infringing manner. Other replacement headlamp manufacturers have been able to
4 develop replacement headlamps without slavishly copying the precise – protected –
5 designs employed by HYUNDAI.
6 17. As side by side comparisons below reveal, Defendants have
7 misappropriated HYUNDAI’s designs in the accused products, including the patented
8 designs and products described in the examples below:
9
10 The D’551 Patent: Defendants’ Design:

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
5
Case No. __________________

2
10
11
12
13
14

16
17
18
19
20
21
22
23
24
25
26
27
28
6
Case No. __________________
1 FIRST CLAIM FOR RELIEF

2 (Infringement of the D’484 patent)
3 18. HYUNDAI incorporates and realleges paragraphs 1 through 17 of this
4 Complaint.
5 19. Upon information and belief, Defendants have made, had made, used,
6 offered for sale, imported, and/or sold, and continue to make, use, offer for sale,
7 import, and/or sell products which infringe the innovative headlamp design of the
8 D'484 patent. The infringing products include, but are not limited to, at least the
9 replacement headlamps advertised by Defendants for the Hyundai Genesis Coupe at
10 https://www.maxzone.com.
11 20. As a direct and proximate result of Defendants' acts of infringement,
12 HYUNDAI has been damaged in an amount not yet determined, including but not
13 limited to lost profits, price erosion, lost convoyed sales, and, in no event, less than a
14 reasonable royalty and/or damages as defined by 35 U.S.C. § 289.
15 21. HYUNDAI has been irreparably harmed by Defendants' infringing
16 activities, and HYUNDAI will continue to be irreparably harmed by such activities in
17 the future unless those infringing activities are enjoined by this Court because, inter
18 alia, HYUNDAI and Defendants directly compete for sales of the replacement
19 headlamps.
20 22. Upon information and belief, Defendants' infringement of the D'484
21 Patent has been and continues to be willful and deliberate and HYUNDAI is entitled
22 to treble damages and attorneys' fees pursuant to 35 U.S.C. § 284.
23 23. WHEREFORE, HYUNDAI prays for judgment as set forth more fully
24 below.
25 SECOND CLAIM FOR RELIEF
28 Complaint.
7
Case No. __________________
5 replacement headlamps advertised by Defendants for the Hyundai Elantra GT at
6 https://depo.com.tw.
15 headlamps.
17 patent has been and continues to be willful and deliberate and HYUNDAI is entitled
20 below.
21 THIRD CLAIM FOR RELIEF
24 Complaint.
8
Case No. __________________
1 replacement headlamps advertised by Defendants for the Hyundai Veloster at

11 headlamps.
16 below.
17 FOURTH CLAIM FOR RELIEF
20 Complaint.
25 replacement headlamps advertised by Defendants for the Hyundai Veloster at
9
Case No. __________________
7 headlamps.
12 below.
13 FIFTH CLAIM FOR RELIEF
16 Complaint.
21 replacement headlamps advertised by Defendants for the Hyundai Genesis at
10
Case No. __________________
3 headlamps.
8 below.
9 SIXTH CLAIM FOR RELIEF
12 Complaint.
17 replacement headlamps advertised by Defendants for the Hyundai Genesis at
27 headlamps.
11
Case No. __________________
4 below.
5 SEVENTH CLAIM FOR RELIEF
8 Complaint.
13 replacement headlamps advertised by Defendants for the Hyundai Accent at
23 headlamps.
28 below.
12
Case No. __________________
1 EIGHTH CLAIM FOR RELIEF

4 Complaint.
9 replacement headlamps advertised by Defendants for the Hyundai Elantra at
19 headlamps.
24 below.
25 NINTH CLAIM FOR RELIEF
28 Complaint.
13
Case No. __________________
5 replacement headlamps advertised by Defendants for the Hyundai Azera.
14 headlamps.
19 below.
20 TENTH CLAIM FOR RELIEF
23 Complaint.
14
Case No. __________________
10 headlamps.
15 below.
16 ELEVENTH CLAIM FOR RELIEF
19 Complaint.
24 replacement headlamps advertised by Defendants for the Hyundai Sonata Hybrid at
15
Case No. __________________

6 headlamps.
11 below.
12 TWELFTH CLAIM FOR RELIEF
15 Complaint.
20 replacement headlamps advertised by Defendants for the Hyundai Tucson at
16
Case No. __________________
2 headlamps.
7 below.
8 THIRTEENTH CLAIM FOR RELIEF
11 Complaint.
16 replacement headlamps advertised by Defendants for the Hyundai Sonata at
26 headlamps.
17
Case No. __________________

3 below.
4 FOURTEENTH CLAIM FOR RELIEF
7 Complaint.
12 replacement headlamps advertised by Defendants for the Hyundai Tucson at
22 headlamps.
27 below.
28
18
Case No. __________________
1 FIFTEENTH CLAIM FOR RELIEF

4 Complaint.
9 replacement headlamps advertised by Defendants for the Hyundai Santa Fe at
19 headlamps.
24 below.
25 SIXTEENTH CLAIM FOR RELIEF
28 Complaint.
19
Case No. __________________
15 headlamps.
20 below.
21 SEVENTEENTH CLAIM FOR RELIEF
24 Complaint.
20
Case No. __________________

11 headlamps.
16 below.
17 EIGHTEENTH CLAIM FOR RELIEF
20 Complaint.
21
Case No. __________________
7 headlamps.
12 below.
13 PRAYER FOR RELIEF
14 WHEREFORE, HYUNDAI prays for relief, as follows:
15 1. A judgment that Defendants DEPO and MAXZONE have infringed each
16 of HYUNDAI's asserted patents;
17 2. An order and judgment permanently enjoining Defendants DEPO and
18 MAXZONE and their officers, directors, agents, servants, employees, affiliates,
19 attorneys, and all others acting in privity or in concert with them, and their parents,
20 subsidiaries, divisions, successors and assigns, from further acts of infringement of
21 HYUNDAI's asserted patents;
22 3. A judgment awarding HYUNDAI all damages adequate to compensate
23 for DEPO and MAXZONE’s infringement of HYUNDAI's asserted patents, and in no
24 event less than a reasonable royalty for Defendants’ acts of infringement, including all
25 pre-judgment and post-judgment interest at the maximum rate permitted by law;
26 4. A judgment awarding HYUNDAI all damages, including treble damages,
27 based on any infringement found to be willful, pursuant to 35 U.S.C. § 284, together
28 with prejudgment interest;
22
Case No. __________________
1 5. Disgorgement of wrongfully obtained profits together with any other

2 appropriate relief pursuant to 35 U.S.C. § 289;
3 6. Costs of suit and reasonable attorneys' fees; and
4 7. Any other remedy to which HYUNDAI may be entitled.
5
Dated: December 3, 2018 PILLSBURY WINTHROP SHAW PITTMAN LLP
6
7 By: /s/ Kenneth E. Keller

KENNETH E. KELLER
8
Attorneys for Plaintiffs HYUNDAI MOTOR
9 AMERICA, INC. AND HYUNDAI MOTOR
COMPANY
10
11
12
DEMAND FOR JURY TRIAL
13
Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, HYUNDAI
14
hereby demands trial by jury on all issues raised by the Complaint.
15
16 Dated: December 3, 2018 PILLSBURY WINTHROP SHAW PITTMAN LLP

17
By: /s/ Kenneth E. Keller
18
KENNETH E. KELLER
19 Attorneys for Plaintiffs HYUNDAI MOTOR
AMERICA, INC. AND HYUNDAI MOTOR
20
COMPANY
21
22
23
24
25
26
27
28
23
Case No. __________________
Case 8:18-cv-02151 Document 1-1 Filed 12/04/18 Page 1 of 9 Page ID #:25
EXHIBIT 1
EXHIBIT 2
EXHIBIT 3
EXHIBIT 4
EXHIBIT 5
EXHIBIT 6
EXHIBIT 7
EXHIBIT 8
EXHIBIT 9
EXHIBIT 10
EXHIBIT 11
EXHIBIT 12
EXHIBIT 13
EXHIBIT 14
EXHIBIT 15
EXHIBIT 16
EXHIBIT 17
EXHIBIT 18

Hyundai Motor Am. v. Depo Auto Parts - Complaint

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Case 8:18-cv-02151 Document 1 Filed 12/04/18 Page 1 of 24 Page ID #:1

1 PILLSBURY WINTHROP SHAW PITTMAN LLP

15 THE UNITED STATES DISTRICT COURT

1 Plaintiffs HYUNDAI MOTOR AMERICA, INC. (“HMA”) and HYUNDAI

1 5. By this action, HYUNDAI seeks to put a stop to Defendants’ illegal

1 JURISDICTION AND VENUE

Patent Number Title

14 Exhibit 13 - D617,478 (the “D’478 patent”) Headlamp for Automobiles

15 Exhibit 14 - D759,865 (the “D’865 patent”) Headlamp for Automobiles

16 Exhibit 15 - D709,217 (the “D’217 patent”) Headlamp for Automobiles

1 DEPO products and the OE (Original Equipment) products.”

10 The D’551 Patent: Defendants’ Design:

1 The D’835 Patent: Defendants’ Design:

15 The D’583 Patent: Defendants’ Design:

1 FIRST CLAIM FOR RELIEF

1 replacement headlamps advertised by Defendants for the Hyundai Veloster at

1 EIGHTH CLAIM FOR RELIEF

1 reasonable royalty and/or damages as defined by 35 U.S.C. § 289.

1 to treble damages and attorneys' fees pursuant to 35 U.S.C. § 284.

1 FIFTEENTH CLAIM FOR RELIEF

1 replacement headlamps advertised by Defendants for the Hyundai Elantra at

1 5. Disgorgement of wrongfully obtained profits together with any other

7 By: /s/ Kenneth E. Keller

16 Dated: December 3, 2018 PILLSBURY WINTHROP SHAW PITTMAN LLP

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