Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA872644
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`Filing date:
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`01/22/2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91238344
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Defendant
`Herman Miller, Inc.
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`LUKE DEMARTE
`MICHAEL BEST & FRIEDRICH LLP
`444 West Lake Street, Suite 3200
`CHICAGO, IL 60606
`Email: chiipdocket@michaelbest.com
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`Motion to Suspend for Civil Action
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`Thomas A. Agnello
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`taagnello@michaelbest.com, lwdemarte@michaelbest.com, mkeipdock-
`et@michaelbest.com, chiipdocket@michaelbest.com
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`/Thomas A. Agnello/
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`01/22/2018
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`Motion to Suspend Opposition.pdf(91431 bytes )
`Exhibit A to Motion to Suspend Opposition.pdf(2466141 bytes )
`Exhibit B to Motion to Suspend Opposition.pdf(177748 bytes )
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`

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`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`BLUMENTHAL DISTRIBUTING, INC.,
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` Opposer,
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` v.
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`HERMAN MILLER, INC.,
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` Applicant.
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`Opposition No. 91238344
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`Application No. 86/969876
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`Mark:
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`Filed: April 8, 2016
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`
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`APPLICANT’S MOTION TO SUSPEND OPPOSITION PROCEEDING PENDING
`CIVIL ACTION
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`Applicant, Herman Miller, Inc. (“Herman Miller”), moves under 37 C.F.R. § 2.117(a) &
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`(c) to suspend this opposition proceeding before the Board (the “Opposition Proceeding”)
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`pending the outcome of a civil action between Herman Miller and Opposer, Blumenthal
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`Distributing, Inc. (“Blumenthal”), in the United States District Court for the Central District of
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`California, Herman Miller, Inc. v. Blumenthal Distributing, Inc., et al, No. 2:17-cv-04279 (the
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`“District Court Action”), involving issues that are in common with, and may have a bearing on,
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`the Opposition Proceeding. See TBMP § 510.02(a). Blumenthal acknowledges the District
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`Court Action in its Notice of Opposition in the Opposition Proceeding. Notice of Opposition,
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`Dkt. #1, ¶ 16.
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`As background, Herman Miller’s published trade dress application, U.S. Application No.
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`86/969876 (the “Application”), is the subject of the Opposition Proceeding. The Application is
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`for the trade dress of Herman Miller’s Caper chair (the “Caper Trade Dress”). In the Complaint
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`1
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`against Blumenthal in the District Court Action, Herman Miller has asserted a claim against
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`Blumenthal for trade dress infringement under 15 U.S.C. § 1125(a), alleging infringement of the
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`Caper Trade Dress. Exhibit A, Second Amended Complaint in the District Court Action, ¶¶ 12-
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`26; 61-73. Attached as Exhibit A is a true and correct copy of the Second Amended Complaint
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`in the District Court Action, and attached as Exhibit B is a true and correct copy of Blumenthal’s
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`Answer to the Second Amended Complaint in the District Court Action.
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`The pending District Court Action involves issues that are in common with, and may
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`have a dispositive bearing on, the Opposition Proceeding. In particular, in Blumenthal’s Answer
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`to the Second Amendment Complaint in the District Court Action, Blumenthal asserted several
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`affirmative defenses, including assertions that (1) Herman Miller lacks valid, protectable trade
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`dress rights in the Caper Trade Dress, (2) functionality of the Caper Trade Dress, (3) lack of
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`secondary meaning and/or distinctiveness of the Caper Trade Dress, and (4) genericness of the
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`Caper Trade Dress. Exhibit B, Answer to Second Amended Complaint in the District Court
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`Action, at pp. 23-24. Similarly, in its Notice of Opposition, Blumenthal alleges (1) functionality
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`of the Caper Trade Dress, and (2) lack of distinctiveness of the Caper Trade Dress. Notice of
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`Opposition, Dkt. #1, ¶¶ 19-35 (alleging functionality of the Caper Trade Dress); ¶¶ 36-49
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`(alleging lack of distinctiveness of the Caper Trade Dress). Because of these common issues, as
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`well as additional issues in the District Court Action, judicial economy would be best served by
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`suspension of the Opposition Proceeding. TBMP § 510.02(a) (“A civil action may involve other
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`matters outside the Board jurisdiction and may consider broader issues beyond right to
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`registration and, therefore, judicial economy is usually served by suspension”).
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`2
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`For the foregoing reasons, under 37 C.F.R. § 2.117(a) & (c), and for good cause shown,
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`Herman Miller respectfully requests that the Board grant this Motion to Suspend the Opposition
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`Proceeding pending the outcome of the District Court Action.
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`Dated: January 22, 2018
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`Respectfully submitted,
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`HERMAN MILLER, INC.
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`By its Attorneys,
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`/Luke W. DeMarte/
`Luke W. DeMarte
`Thomas A. Agnello
`MICHAEL BEST & FRIEDRICH LLP
`444 West Lake Street, Suite 3200
`Chicago, IL 60606
`Phone: (312) 222-0800
`Fax: (312) 222-0818
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`3
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 22, 2018, a true and correct copy of the foregoing
`Applicant’s Motion to Suspend Opposition Proceeding Pending Civil Action is being served on
`Opposer’s Attorney of Record via email at the following address:
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`David A. Dillard
`Lewis Roca Rothgerber Christie LLP
`P.O. Box 29001
`Glendale, CA 91209
`pto@lrrc.com
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`Dated: January 22, 2018
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`By: /Thomas A. Agnello/
`Thomas A. Agnello
`Luke W. DeMarte
`MICHAEL BEST & FRIEDRICH LLP
`444 West Lake Street, Suite 3200
`Chicago, IL 60606
`Phone: (312) 222-0800
`Fax: (312) 222-0818
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`4
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`EXHIBIT A
`EXHIBIT A
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`Case 2:17-cv-04279-JAK-SP Document 41 Filed 06/28/17 Page 1 of 27 Page ID #:470
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`
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`Jean-Paul Ciardullo (CA Bar No. 284170)
`email: jciardullo@foley.com
`FOLEY & LARDNER LLP
`555 South Flower Street, Suite 3500
`Los Angeles, CA 90071-2411
`Telephone: 213.972.4500
`Facsimile: 213.486.0065
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`Jonathan E. Moskin (pro hac vice)
`email: jmoskin@foley.com
`FOLEY & LARDNER LLP
`90 Park Avenue
`New York, NY 10016-1314
`Phone: 212-682-7474
`Facsimile: 212-687-2329
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`Attorneys for Plaintiff
`HERMAN MILLER, INC.
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`WESTERN DIVISION
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` Case No: 2:17-cv-04279 JAK-SP
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`SECOND AMENDED
`COMPLAINT
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`Plaintiff,
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`v.
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`HERMAN MILLER, INC..
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`BLUMENTHAL DISTRIBUTING, INC.
`d/b/a OFFICE STAR PRODUCTS;
`JORNG WELL INDUSTRIAL CO., LTD.;
`NOVA ASIA INT’L INC.; NOVA
`INNOVATIONS INT’L LTD.; and
`KING HONG INDUSTRIAL CO., LTD.,
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`Defendants.
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`4847-8715-4506.1
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`

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`Case 2:17-cv-04279-JAK-SP Document 41 Filed 06/28/17 Page 2 of 27 Page ID #:471
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`
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`Plaintiff Herman Miller, Inc. (“Herman Miller”), by and through its attorneys, files
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`this complaint for patent infringement, trade dress infringement and unfair competition
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`against Defendants Blumenthal Distributing, Inc., d/b/a Office Star Products (“Office
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`Star”); Jorng Well Industrial (“Jorng Well”); Nova Asia Int’l Inc. (“Nova Asia”); Nova
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`Innovations Int’l Ltd. (“Nova Innovations”); and King Hong Industrial Co., Ltd. (“King
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`Hong”).
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`PARTIES
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`1.
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`Plaintiff Herman Miller, Inc. is a corporation organized and existing under
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`the laws of the State of Michigan having a principal place of business at 855 East Main
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`Avenue, Zeeland, Michigan 49464.
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`2.
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`On information and belief, Office Star is a corporation organized and
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`existing under the laws of the State of California having a principal place of business at
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`1901 South Archibald Avenue, Ontario, California 91761.
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`3.
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`On information and belief, Jorng Well is a corporation organized and
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`existing under the laws of Taiwan having a principal place of business at No. 6, Sec 3,
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`Baoda Rd., Kuwi Jen Hsiang, Tainan City, Taiwan.
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`4.
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`On information and belief, Nova Asia Int’l Inc. is a corporation organized
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`and existing under the laws of Taiwan having a principal place of business at No. 148,
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`Sec. 4, Chung Hsiao East Road, Taipei, Taiwan.
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`5.
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`On information and belief, Nova Innovations is a corporation organized and
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`existing under the laws of Taiwan having a principal place of business at No. 148, Sec. 4,
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`Chung Hsiao East Road, Taipei, Taiwan. On information and belief, Nova Innovations
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`also maintains an office at 18960 Bramhall Lane, Rowland Heights, CA 91748. On
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`information and belief, Nova Innovations is either a successor or close affiliate (alter ego)
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`entity of Nova Asia Int’l Inc., so the two will be jointly referred to herein as “Nova.”
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`6.
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`On information and belief, King Hong is a corporation organized and
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`existing under the laws of Taiwan having a principal place of business at No.566 Fong
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`Lin 2nd Road, Taliao, Kaohsiung 831, Taiwan.
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`4847-8715-4506.1
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`1
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`COMPLAINT
`CASE NO. 2:17-cv-04279-JAK-SP
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`

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`Case 2:17-cv-04279-JAK-SP Document 41 Filed 06/28/17 Page 3 of 27 Page ID #:472
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`
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`JURISDICTION AND VENUE
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`7.
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`This is an action for patent infringement under U.S. Code Title 35 et seq,
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`including §§ 271, 284 and 289. This is also an action for trademark infringement / false
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`designations of origin under 15 U.S.C. § 1125(a); for violations of California Business &
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`Professions Code § 17200 et seq.; and for trademark infringement and unfair competition
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`under California common law.
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`8.
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`This Court has subject matter jurisdiction over the claims pursuant to 15
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`U.S.C. § 1121(a) and 28 U.S.C. §§ 1331 and 1338(a) and (b), and supplemental
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`jurisdiction over the claims arising under the statutory and common law of the State of
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`California pursuant to 28 U.S.C. § 1367(a) because the state law claims are so related to
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`the federal claims that they form part of the same case or controversy. Furthermore, there
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`is diversity jurisdiction as to the non-federal claims pursuant to 28 U.S.C. § 1332 because
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`the Defendants are diverse from Herman Miller, and Herman Miller’s damages hereunder
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`exceed the statutory threshold.
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`9.
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`On information and belief, this Court has personal jurisdiction over each of
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`the Defendants because the accused infringing products are imported into California,
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`Office Star is incorporated in California and headquartered in this District, Nova has an
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`office within this District, and accused infringing products are sold in this District.
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`Furthermore, Office Star and Nova have stipulated to transfer to this District.
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`10. Venue is proper in this district under 28 U.S.C. § 1391 (b) and (c) and
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`1400(b). On information and belief, the accused infringing products are imported into
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`California, Office Star is incorporated in California and headquartered in this District,
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`Nova has an office within this District, and accused infringing products are sold in this
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`District. Furthermore, Office Star and Nova have stipulated to transfer to this District.
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`Because King Hong and Jorng Well are non-U.S. entities, venue is also proper for them
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`in this District, in addition to being proper because the accused infringing chairs are
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`imported to California from King Hong and Jorng Well.
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`4847-8715-4506.1
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`2
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`COMPLAINT
`CASE NO. 2:17-cv-04279-JAK-SP
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`

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`Case 2:17-cv-04279-JAK-SP Document 41 Filed 06/28/17 Page 4 of 27 Page ID #:473
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`
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`BACKGROUND
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`11. Founded in Zeeland, Michigan in 1905, Herman Miller is a world-famous
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`manufacturer of high-quality contemporary furniture. Herman Miller’s iconic designs
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`have not only generated billions of dollars of revenue for the company, but are also loved
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`by their users, and have been recognized as works of art by industry professionals.
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`Caper
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`12.
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`In 2000, Herman Miller commissioned designer Jeff Weber to develop a
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`distinctive-looking, inexpensive stacking chair. The result was the Caper chair, shown
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`here, which was an immediate success.
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`13. Shortly thereafter, building on the sales success, Herman Miller launched
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`additional versions of Caper in the form of stools and a multi-purpose chair on casters.
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`4847-8715-4506.1
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`3
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`COMPLAINT
`CASE NO. 2:17-cv-04279-JAK-SP
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`

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`Case 2:17-cv-04279-JAK-SP Document 41 Filed 06/28/17 Page 5 of 27 Page ID #:474
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`14. Herman Miller has sold these chairs in a wide assortment of color
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`combinations. The chairs are sold either with or without the armrests, and the stacking
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`chairs come alternatively with straight bottom legs or caster wheels. Further images are
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`included at Exhibit A.1, and also viewable at www.hermanmiller.com.
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`15. Herman Miller sought and obtained design patents on the Caper chair listed
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`below, full versions of which are attached at Exhibits A.2 and A.3. Herman Miller is the
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`lawful owner of all rights in these patents, including the right to collect damages for past
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`infringement.
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`16. Herman Miller also has trade dress rights in the overall look of the Caper
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`design. Those trade dress rights are infringed not only by literal copies of the chair, but
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`also by chairs that mimic the overall look of the design. Because the Caper chair is a
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`composite of many sub-elements, it is possible to achieve the same overall look with a
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`differently shaped chair by designing the majority of the components to look similar to
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`the corresponding components of Caper, or by designing certain prominent components
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`to look very close to the corresponding Caper components.
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`17. The core elements of the Caper trade dress are a seat pan coupled with a
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`distinctive bowler-hat-like backrest. A design that mimics these elements in a manner
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`similar to how they appear in Caper will infringe the protected trade dress.
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`18. While not necessary to infringe the trade dress, the inclusion of the
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`following secondary features will enhance the likelihood of confusion with Caper (and
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`hence make a given design more likely to infringe): (a) two thin armrests supported by
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`4847-8715-4506.1
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`4
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`COMPLAINT
`CASE NO. 2:17-cv-04279-JAK-SP
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`

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`Case 2:17-cv-04279-JAK-SP Document 41 Filed 06/28/17 Page 6 of 27 Page ID #:475
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`struts from the corners of the seat, (b) small rounded perforations across the backrest, (c)
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`thin strut legs on a stacking chair version, and (d) an upside-down semicircular opening
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`at the top of the backrest. The reason these features are not necessary to infirnge the
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`trade dress is because a chair with a backrest sufficiently similar to the Caper backrest -
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`even if such a chair lacked elements (a)-(d) - would cause confusion among consumers,
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`who would assume the chair was a variant of the Caper chairs sold by Herman Miller.
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`This is because the shape of the Caper backrest is highly distinctive.
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`19. For avoidance of any doubt regarding the scope of accused infringement in
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`the present case, Herman Miller accuses the following chairs, as well as any other model
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`numbers that have the same appearance.
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`4847-8715-4506.1
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`5
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`COMPLAINT
`CASE NO. 2:17-cv-04279-JAK-SP
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`

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`Case 2:17-cv-04279-JAK-SP Document 41 Filed 06/28/17 Page 7 of 27 Page ID #:476
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`20. On information and belief, Office Star maintains private listings of chairs
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`that it sells to resellers. To the extent Office Star sells other model numbers of chairs that
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`look like ones identified above, those would also be deemed infringing, as would any
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`other chairs not yet known to Herman Miller that look even more similar to Caper than
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`the chairs identified above.
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`21. The Caper trade dress styling is non-functional because it is not essential to
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`the product’s use, and does not affect its cost or quality. Furthermore, there is no
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`utilitarian advantage to using the particular shapes claimed as trade dress. There are an
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`infinite variety of alternative stylings and shapes that could have been chosen that would
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`have achieved the same functional advantages. There is also no particularly simple or
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`inexpensive manufacturing method that Herman Miller seeks to monopolize through
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`these chairs. Of course, all chairs have some de facto functions, but the Caper chair has
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`no de jure functions that would render it legally functional for purposes trade dress law.
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`The overall styling and particular choice of combination of design elements reflects
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`artistic flourish.
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`22. The Caper trade dress has acquired secondary meaning and has become
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`recognizable as a distinctive design that a significant number of potential consumers of
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`office chairs would recognize as coming from a single supplier. Caper has attained this
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`status by virtue of its extreme popularity, high sales, and expansive marketing efforts by
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`Herman Miller. More than 2 million Caper units have been sold (mostly stacking chairs)
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`since the design was introduced in 2000, and Herman Miller has spent more than $10
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`million marketing the chair. Caper has won design awards, and is ubiquitous in the
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`marketplace. Because of its relatively low cost, a wide range of end users buy Caper
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`chairs. Also, because it is used heavily as communal seating, any given Caper chair may
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`be used and seen by exponentially more people than there are chairs that have been
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`produced. Each chair is stamped with a Herman Miller logo and name on the backrest.
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`23. On
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`information and belief, Taiwanese manufacturer King Hong
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`manufactures the accused infringing copies of Caper. Office Star is a major U.S.
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`4847-8715-4506.1
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`6
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`COMPLAINT
`CASE NO. 2:17-cv-04279-JAK-SP
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`

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`Case 2:17-cv-04279-JAK-SP Document 41 Filed 06/28/17 Page 8 of 27 Page ID #:477
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`distributor of the accused chairs. Office Star sells to a vast network of dealers,
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`distributors and eCommerce retailers, who then resell the chairs into the marketplace.
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`24. Caper is not the first Herman Miller chair that King Hong and Office Star
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`have copied. In 2010, they began manufacturing copies of Herman Miller’s famous
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`Eames Aluminum Group chairs. In 2016, a jury determined that Office Star had engaged
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`in willful infringement and dilution in selling King Hong’s chairs, awarding $8.4 million
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`in damages to Herman Miller. See Blumenthal Distributing, Inc. v. Herman Miller, Inc.,
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`C.D. Cal. Case No. 5:14-cv-01926-JAK-SP, Dkt. 344.
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`25. Upon information and belief, Office Star willfully sold copies of the Caper
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`chair despite explicit knowledge that they were covered by Herman Miller intellectual
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`property rights, including the patents asserted herein. Office Star has demonstrated a
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`pattern of objective recklessness with respect to infringing Herman Miller intellectual
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`property by failing to consult with competent counsel regarding known Herman Miller
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`rights.
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`26. Upon information and belief, King Hong’s infringement was also willful
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`because it was done with knowledge that Herman Miller had intellectual property rights
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`(and in particular patent rights) in the Caper design, and King Hong either (1) was
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`willfully blind to the fact of its infringement by not consulting an attorney to confirm that
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`its acts constituted infringement, or (2) knew that its acts constituted infringement of
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`Herman Miller’s trade dress but proceeded anyway.
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`Mirra
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`27. Following the unprecedented success of the its Aeron office chair in the
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`1990s, Herman Miller commissioned Studio 7.5 in Berlin, Germany to design a lower
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`cost alternative with a distinctive design all its own. In 2002, Studio 7.5 completed the
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`design for the Mirra chair, and in 2003 it was released on the market. (The name MIRRA
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`is trademarked at Reg. No. 2,935,525, but for cosmetic reasons, the ® symbol will not be
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`used in this pleading.) Below is a sample image of a Mirra chair.
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`4847-8715-4506.1
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`COMPLAINT
`CASE NO. 2:17-cv-04279-JAK-SP
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`Case 2:17-cv-04279-JAK-SP Document 41 Filed 06/28/17 Page 9 of 27 Page ID #:478
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`28.
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`In 2013, Herman Miller updated the materials and construction of the Mirra
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`chair, making it more lightweight and giving it a more advanced tilt mechanism. The
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`structural look of the chair remained the same, except that the shape of the backrest
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`support arms changed slightly. Below is a sample image of a Mirra 2 chair.
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`29. Further images of Mirra chairs are included at Exhibit B.1, and also
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`viewable at www.hermanmiller.com.
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`COMPLAINT
`CASE NO. 2:17-cv-04279-JAK-SP
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`Case 2:17-cv-04279-JAK-SP Document 41 Filed 06/28/17 Page 10 of 27 Page ID #:479
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`30. Herman Miller sought and obtained the design patents on the Mirra chair
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`shown below, full versions of which are attached at Exhibits B.2 and B.3. Herman Miller
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`is the lawful owner of all rights in these patents, and they have been full force and effect
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`since the day they each issued.
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`31. Herman Miller also has trade dress rights in the overall look of the Mirra
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`design. Those trade dress rights are infringed not only by literal copies of the chair, but
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`also chairs that mimic the overall look of the design. Because the Mirra chair is a
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`composite of many sub-elements, it is possible to achieve the same overall look with a
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`differently shaped chair by designing the majority of the components to look similar to
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`the corresponding components of Mirra, or by designing certain prominent components
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`to look very close to the corresponding Mirra components.
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`32. Excluding the support base and wheels (which are common elements of
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`office chairs and could be interchangeable) the core elements of the Mirra trade dress are
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`a seat pan coupled with a butterfly-shaped backrest whose surface is covered by a large
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`number of elongated perforations. A design that mimics these elements in a manner
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`4847-8715-4506.1
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`9
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`COMPLAINT
`CASE NO. 2:17-cv-04279-JAK-SP
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`

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`Case 2:17-cv-04279-JAK-SP Document 41 Filed 06/28/17 Page 11 of 27 Page ID #:480
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`similar to how they appear in Mirra will infringe the protected trade dress. While
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`Herman Miller does not claim trade dress rights in all chairs with backrests that have
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`elongated perforations, the Mirra trade dress rights are infringed by those chairs with
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`backrests that mimic the Mirra backrest design in such a way that there would be a
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`likelihood of confusion among consumers.
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`33. While not necessary to infringe the trade dress, the inclusion of the
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`following secondary features will enhance the likelihood of confusion with Mirra (and
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`hence make a given design more likely to infringe the protected trade dress): (a) two
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`floating, flattened, ellipsoidal armrests (irrespective of how mounted), or (b) a large Y-
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`shaped backrest support column. The reason these features are not necessary to infringe
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`the trade dress is because a chair with a backrest sufficiently similar to the Mirra backrest
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`- even if such a chair lacked armrests or the Y-shaped support column - would cause
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`confusion among consumers, who would assume the chair was a variant of the Mirra
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`chairs sold by Herman Miller. This is because the Mirra backrest is highly distinctive.
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`34. For avoidance of any doubt regarding the scope of accused infringement in
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`the present case, Herman Miller accuses the following chairs, as well as any other model
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`numbers that have the same appearance.
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`35. On information and belief, Office Star maintains private listings of chairs
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`that it sells to resellers. To the extent Office Star sells other model numbers of chairs that
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`look like ones identified above, those would also be deemed infringing, as would any
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`COMPLAINT
`CASE NO. 2:17-cv-04279-JAK-SP
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`Case 2:17-cv-04279-JAK-SP Document 41 Filed 06/28/17 Page 12 of 27 Page ID #:481
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`other chairs not yet known to Herman Miller that look even more similar to Mirra than
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`the chairs identified above.
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`36. The Mirra trade dress styling is non-functional because it is not essential to
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`the product’s use, and does not affect its cost or quality. Furthermore, there is no
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`utilitarian advantage to using the particular shapes claimed as trade dress. There are an
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`infinite variety of alternative stylings and shapes that could have been chosen that would
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`have achieved the same functional advantages. There is also no particularly simple or
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`inexpensive manufacturing method that Herman Miller seeks to monopolize through
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`these chairs. Of course, all chairs have some de facto functions, but the Mirra chair has
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`no de jure functions that would render it legally functional for purposes trade dress law.
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`The overall styling and particular choice of combination of design elements reflects
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`artistic flourish.
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`37. The Mirra trade dress has acquired secondary meaning and has become
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`recognizable as a distinctive design that a significant number of potential consumers of
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`office chairs would recognize as coming from a single supplier. Mirra has attained this
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`status by virtue of its extreme popularity, high sales, and expansive marketing efforts by
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`Herman Miller. Approximately 1.5 million Mirra units have been sold since the design
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`was introduced in 2003, and Herman Miller has spent more than $13 million marketing
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`the chair. Mirra has won design awards, and is ubiquitous in the marketplace. The
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`perforated butterfly backrest design has become highly recognizable and distinctive in the
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`market.
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`38. On
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`information and belief, Taiwanese manufacturer Jorng Well
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`manufactures the accused infringing copies of Mirra. Office Star is a major U.S.
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`distributor of the accused chairs, which it purchased from Jorng Well with the help of its
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`purchasing agent, Nova, which also works jointly with Jorng Well to import the chairs.
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`On information and belief, Nova facilitates the inspection of chairs by Office Star, helps
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`negotiate their purchase, and makes arrangements jointly with Jorng Well for their
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`importation into the United States. Office Star sells to a vast network of dealers,
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`COMPLAINT
`CASE NO. 2:17-cv-04279-JAK-SP
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`Case 2:17-cv-04279-JAK-SP Document 41 Filed 06/28/17 Page 13 of 27 Page ID #:482
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`distributors and eCommerce retailers, who then resell the chairs into the marketplace.
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`39. Mirra is not the first Herman Miller chair that Office Star has copied. In
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`2010, Office Star began selling copies of Herman Miller’s famous Eames Aluminum
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`Group chairs. In 2016, a jury determined that Office Star had engaged in willful
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`infringement and dilution, awarding $8.4 million in damages to Herman Miller. See
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`Blumenthal Distributing, Inc. v. Herman Miller, Inc., C.D. Cal. Case No. 5:14-cv-01926-
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`JAK-SP, Dkt. 344.
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`40. Upon information and belief, Office Star has engaged in willful infringement
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`of Herman Miller intellectual property rights, and has engaged in a pattern of recklessly
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`selling look-alike chairs without getting a competent opinion of counsel. In particular,
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`Office Star was actually aware of the Mirra patents asserted herein, but proceeded with
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`its conduct regardless.
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`41. Upon information and belief, Jorng Well has similarly engaged in willful
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`infringement because it was aware of the Herman Miller Mirra chair and understood that
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`Herman Miller had intellectual property rights in the design, but either (1) was willfully
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`blind to the fact that its actions constituted infringement by not consulting an attorney, or
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`(2) knew that its conduct was infringement but proceeded anyway. Upon information
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`and belief, Jorng Well specifically knew of the Herman Miller patents asserted herein,
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`but proceeded with its conduct without regard for them.
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`42. Upon information and belief, Nova has similarly engaged in willful
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`infringement because it was aware of the Herman Miller Mirra chair and understood that
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`Herman Miller had intellectual property rights in the design, but either (1) was willfully
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`blind to the fact that its actions constituted infringement by not consulting an attorney, or
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`(2) knew that its conduct was infringement but proceeded anyway. Upon information
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`and belief, Nova specifically knew of the Herman Miller patents asserted herein, but
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`proceeded with its conduct without regard for them.
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`COMPLAINT
`CASE NO. 2:17-cv-04279-JAK-SP
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`Case 2:17-cv-04279-JAK-SP Document 41 Filed 06/28/17 Page 14 of 27 Page ID #:483
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`COUNT I
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`INFRINGEMENT OF U.S. PATENT NO. D449,938
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`43. The preceding paragraphs are incorporated herein by reference.
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`44. Herman Miller has valid and protectable patent rights in U.S. Patent No.
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`D449,938 (“‘938 Patent”).
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`45. Office Star’s importation, marketing and sale of at least chair model Nos.
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`8610, 8620, 8640, 8455 and STC 865 infringe on the ‘938 Patent. Office Star’s
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`infringement was willful because it was done with knowledge of Herman Miller’s patent
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`while either (1) being willfully blind to the fact that its actions constituted infringement
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`by not consulting an attorney, or (2) knowing that its conduct was infringement but
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`proceeded anyway.
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`46. King Hong’s importation of at least chair model Nos. 8610, 8620, 8640,
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`8455 and STC 865 infringes on the ‘938 Patent. Upon information and belief, King
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`Hong’s infringement was willful because it was done with knowledge of Herman Miller’s
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`patent while either (1) being willfully blind to the fact that its actions constituted
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`infringement by not consulting an attorney, or (2) knowing that its conduct was
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`infringement but proceeded anyway.
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`47. King Hong also induces infringement by Office Star, knowing that Herman
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`Miller owns the ‘938 Patent while either (1) being willfully blind to the fact that its
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`actions constituted infringement by not consulting an attorney, or (2) knowing that its
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`conduct was infringement but proceeded anyway.
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`48. Herman Miller loses sales for each of the accused chairs that are sold.
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`Because the Caper design is so unique and distinctive, the entire reason that a customer
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`would purchase a knock-off is to get that iconic look. But for the availability of the
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`accused chairs, Herman Miller would have sold Caper chairs. Herman Miller therefore
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`seeks recovery of all of its lost profits associated with the number of accused chairs sold.
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`49. Alternatively, Herman Miller seeks to recover all of Office Star and King
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`Hong’s infringing profits under 35 U.S.C. § 289.
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`COMPLAINT
`CASE NO. 2:17-cv-04279-JAK-SP
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`

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`Case 2:17-cv-04279-JAK-SP Document 41 Filed 06/28/17 Page 15 of 27 Page ID #:484
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`50. Alternatively, Herman Miller seeks to recover a reasonable royalty.
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`51. Herman Miller seeks trebling of damages for willful infringement, as well as
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`recovery of its attorneys’ fees.
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`COUNT II
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`INFRINGEMENT OF U.S. PATENT NO. D455,571
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`52. The preceding paragraphs are incorporated herein by reference.
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`53. Herman Miller has valid and protectable patent rights in U.S. Patent No.
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`D455,571 (“‘571 Patent”).
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`54. Office Star’s importation, marketing and sale of at least chair model Nos.
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`82710, 82710, 82740, 86710, 86724, 86725, 86740 and STC8