Case 2:15-cv-05213-GW-JPR Document 1 Filed 07/10/15 Page 1 of 9 Page ID #:1

1 Daniel M. Cislo, Esq., No. 125,378

dan@cislo.com
2 Mark D. Nielsen, Esq., No. 210,023
mnielsen@cislo.com
3 CISLO & THOMAS LLP
12100 Wilshire Blvd., Suite 1700
4 Los Angeles, CA 90025
Telephone: (310) 451-0647
5 Telefax: (310) 394-4477
6 Attorneys for Plaintiff,
7 XEO INT., LTD.
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA
XEO INT., LTD, a business entity
organized under the laws of Great
Britain,

)
)
)
)
)
Plaintiff,
)
)
)
vs.
)
)
HOOKAHZZ, LLC, a California limited )
)
liability company, and DOES 1-9,
)
inclusive,
)
)
Defendants.
)
)
)
)

Case No.:
COMPLAINT FOR DESIGN
PATENT INFRINGEMENT
[JURY DEMAND]

Case 2:15-cv-05213-GW-JPR Document 1 Filed 07/10/15 Page 2 of 9 Page ID #:2

For its Complaint, Plaintiff XEO Int., Ltd. alleges as follows:

2
3
4

PARTIES
1.

Plaintiff XEO Int., Ltd. (XEO) is a Limited Company incorporated

5 in Hull, Great Britain, with its principal place of business at Sauerweinstr. 4, 30167
6 Hanover, Germany. XEOs products are sold and offered for sale internationally,
7 including in this judicial district.
SUITE 1700
12100 Wilshire Boulevard
Los Angeles, CALIFORNIA 90025
Telephone: (310) 451-0647
Facsimile: (310) 394-4477
www.cislo.com

Attorneys at Law

CISLO & THOMAS LLP

2.

Defendant Hookahzz, LLC (Hookahzz) is a California limited

9 liability company with a business address of 2647 Gateway Road #105-202,

10 Carlsbad, California 92009.
11

3.

The true names and capacities, whether individual, corporate, or

12 otherwise of Defendants Does 1-9 inclusive, are unknown to XEO, who therefore
13 sues them by such fictitious names. XEO will seek leave to amend this complaint
14 to allege their true names and capacities when they have been ascertained. XEO is
15 informed and believes and thereon alleges that each of the fictitiously named
16 Defendants is responsible in some manner for the occurrences herein alleged. At
17 all times herein mentioned, Defendants Does 1-9 inclusive were the agents,
18 servants, employees or attorneys of their co-defendants, and in doing the things
19 hereinafter alleged were acting within the course and scope of their authority as
20 those agents, servants, employees or attorneys, and with the permission and consent
21 of their co-defendants.
22
23
24

JURISDICTION AND VENUE

4.

This Court has subject matter jurisdiction over this action pursuant to

25 28 U.S.C. 1331 and 1338(a) as it arises under Acts of Congress related to

26 design patents.
27

5.

This Court has personal jurisdiction over Defendant Hookahzz in that

28 it is a California limited liability company doing continuous and systematic

2

Case 2:15-cv-05213-GW-JPR Document 1 Filed 07/10/15 Page 3 of 9 Page ID #:3

1 business in this judicial district through its distributors located in this judicial
2 district.
3

6.

Venue is proper in this judicial district as to Defendants pursuant to 28

4 U.S.C. 1391(b)(2) and 1391(c) in that Defendant are subject to personal

5 jurisdiction in this judicial district, and at least a substantial portion of the acts and
6 omissions giving rise to the asserted claims occurred in this district.
7
SUITE 1700
12100 Wilshire Boulevard
Los Angeles, CALIFORNIA 90025
Telephone: (310) 451-0647
Facsimile: (310) 394-4477
www.cislo.com

Attorneys at Law

CISLO & THOMAS LLP

FACTUAL ALLEGATIONS

9
10

7.

Markus Goch, XEOs Chief Executive Officer, applied for a patent on

11 the design of an electronic smoking device on January 25, 2013. That application
12 resulted in Design Patent No. D687,181, which issued on July 30, 2013 (the 181
13 patent). Said patent is attached hereto as Exhibit 1. The patent was duly and
14 legally issued and assigned to XEO. Figure 2 of the 181 patent appears below:
15
16
17
18

8.

Defendants Hookahzz has been, and is still, making, using, importing,

19 offering to sell, and/or selling articles that are within the scope of the claim of the
20 181 Patent. In particular, Hookahzz is selling at least the following items to re21 sellers within this judicial district and elsewhere, its: (1) Hemp CBD Hookah
22 Double Applez; (2) Hemp CBD Hookah Melon Madnezz; (3) Hemp CBD
23 Hookah Fresh Mintzz; and, (4) Hemp CBD Hookah Pink Diva (hereafter
24 collectively, the Accused Products). Such sales of the Accused Products are
25 being effectuated by Hookahzz, on information and belief, through industry trade
26 shows, business-to-business contacts, and other means.
27

9.

Hookahzz Accused Products appear as follows:

28
3

Case 2:15-cv-05213-GW-JPR Document 1 Filed 07/10/15 Page 4 of 9 Page ID #:4

1 Hemp CBD Hookah Pink Diva

Hemp CBD Hookah - Melon Madnezz

2
3
4
5
6
7
SUITE 1700
12100 Wilshire Boulevard
Los Angeles, CALIFORNIA 90025
Telephone: (310) 451-0647
Facsimile: (310) 394-4477
www.cislo.com

Attorneys at Law

CISLO & THOMAS LLP

8
9
10
11 Hemp CBD Hookah - Double Applez

Hemp CBD Hookah - Fresh Mintzz

12
13
14
15
16
17
18
19
20
21

10.

XEO has not licensed or otherwise authorized Hookahzz (or its

22 dealers, customers, affiliates, or the like) to deal in articles within the scope of the
23 181 Patent, including the Accused Products. In other words, the making, using,
24 importing, offering to sell, and selling of the Accused Products by Hookahzz and its
25 re-sellers in unauthorized.
26

11.

Hookahzz infringement of XEOs 181 Patent is willful. Hookahzz

27 was previously enjoined by a German court in Frankfurt, Germany, based on a non28 U.S. counterpart of the 181 Patent, from selling the Accused Products or colorable
4

Case 2:15-cv-05213-GW-JPR Document 1 Filed 07/10/15 Page 5 of 9 Page ID #:5

1 imitations thereof. In addition, Mr. Goch spoke with Katarina Maloney, one of
2 Hookahzz principals, at the Frankfurt Fair in or about May of 2014 and made Ms.
3 Maloney aware of XEOs U.S. patent at that time. On information and belief, Ms.
4 Maloney is an owner and/or officer/member of Hookahzz, LLC.

As such,

5 Hookahzz had actual, prior knowledge that the XEO possessed design patent
6 protection, including in the U.S., for the design depicted in the 181 Patent, and yet
7 continued to infringe the 181 Patent. Furthermore, for approximately several
SUITE 1700
12100 Wilshire Boulevard
Los Angeles, CALIFORNIA 90025
Telephone: (310) 451-0647
Facsimile: (310) 394-4477
www.cislo.com

Attorneys at Law

CISLO & THOMAS LLP

8 months prior to the filing of this lawsuit, XEO specifically placed Hookahzz on
9 notice of XEOs 181 Patent (if Hookahzz did not already know about it), and
10 attempted through correspondence to cause Hookahzz to cease and desist from its
11 infringing actions. Hookahzz did not change its conduct in response to such letters,
12 and the Accused Products remain continue to be sold.
13

12.

For all of these reasons, Hookahzz is liable for money damages in the

14 form of a disgorgement of profits pursuant to 35 U.S.C. 289 to XEO. In addition,

15 Hookahzz must be deterred from any further violations of XEOs rights in the 181
16 Patent through a permanent injunction. Hookahzz should also be required to pay
17 XEOs attorneys fees, expenses, and costs for its willful and blatant disregard of
18 XEOs patent rights.
19
20

COUNT I DESIGN PATENT INFRINGEMENT

21

35 U.S.C. 101 ET SEQ.

22

13.

XEO hereby repeats and incorporates herein the allegations set forth in

23 paragraphs 1 through 12 above.

24

14.

XEOs 181 Patent (see, Exhibit 1 attached hereto) has at all relevant

25 times subsequent to its issue date been fully enforceable and is now fully
26 enforceable.
27

15.

Subsequent to the issuance of the 181 Patent, Hookahzz has infringed

28 the 181 Patent by making, using, importing, offering to sell, and/or selling, and
5

Case 2:15-cv-05213-GW-JPR Document 1 Filed 07/10/15 Page 6 of 9 Page ID #:6

1 continuing to make, use, import, offer to sell and/or sell products that come within
2 the scope of the claim of the patent, and/or that come within a range of equivalents
3 of the claim of the patent, and/or contributing to the infringing activities of others.
4

16.

The making, using, importing, offering to sell, and/or selling of the

5 Accused Products by Hookahzz, and/or contributing to the infringing activities of

6 others, has been without authority or license from XEO and is in violation of
7 XEOs rights, thereby infringing the 181 Patent.
SUITE 1700
12100 Wilshire Boulevard
Los Angeles, CALIFORNIA 90025
Telephone: (310) 451-0647
Facsimile: (310) 394-4477
www.cislo.com

Attorneys at Law

CISLO & THOMAS LLP

17.

For the reasons stated elsewhere herein, Hookahzz infringement of

9 XEOs 181 Patent has been, and is, willful, with knowledge of, and in disregard
10 for the exclusive rights of XEO set forth in its patent, attached hereto as Exhibit 1.
11

18.

The amount of money damages due XEO as a result of Hookahzz

12 infringing acts cannot be determined without an accounting of Hookahzz profits,

13 and it is thus subject to proof at trial.
14

19.

XEO is entitled to a complete accounting of all revenue and profits

15 derived by Hookahzz from the unlawful conduct alleged herein.

16

20.

The harm to XEO arising from Hookahzz acts of infringement of

17 XEOs 181 Patent is not fully compensable by money damages. Rather, XEO has
18 suffered and continues to suffer irreparable harm which has no adequate remedy at
19 law and which will continue unless Hookahzz conduct is enjoined.
20

21.

XEO is therefore also entitled to a preliminary injunction, to be made

21 permanent on entry of the judgment, preventing Hookahzz from further acts of

22 infringement.
23 ///
24 ///
25 ///
26
27
28
6

Case 2:15-cv-05213-GW-JPR Document 1 Filed 07/10/15 Page 7 of 9 Page ID #:7

PRAYER FOR RELIEF

WHEREFORE, XEO demands judgment against Hookahzz, as follows:

A.

For an order preliminarily and permanently enjoining Hookahzz, and

4 its officers, directors, agents, servants, attorneys, and employees and all other
5 persons acting in concert with it from committing any further acts of infringement,
6 including but not limited to, manufacturing, using, importing, offering to sell, and
7 selling the Accused Products (or products colorably similar thereto), or aiding or
SUITE 1700
12100 Wilshire Boulevard
Los Angeles, CALIFORNIA 90025
Telephone: (310) 451-0647
Facsimile: (310) 394-4477
www.cislo.com

Attorneys at Law

CISLO & THOMAS LLP

8 abetting or assisting others in such infringing activities;

9

B.

For an order directing Hookahzz to file with this Court and to serve on

10 XEO within thirty (30) days after service on Hookahzz of the injunction granted
11 herein, or such extended period as the Court may direct, a report in writing, under
12 oath, setting forth in detail the manner and form in which Hookahzz has complied
13 with the injunction and order of the Court;
14

C.

For an order seizing and impounding all Accused Products, including

15 those en route to the U.S. from Hookahzz overseas supplier(s);

16

D.

For a judgment to be entered for XEO against Hookahzz in an amount

17 equal to the profits Hookahzz made in connection with its sales of products that
18 infringe the 181 Patent pursuant to 35 U.S.C. 289 to be proven at trial, or in the
19 alternative, a reasonable royalty;
20

E.

For a judgment awarding to XEO prejudgment and postjudgment

21 interest until the award is fully paid;

22

F.

For a judgment that Hookahzz has willfully and deliberately infringed

23 XEOs patent rights, such that it is determined that this is an exceptional case
24 entitling XEO to enhanced damages under the Patent Laws of the United States;
25

G.

For an award to XEO of costs, expenses, and attorneys fees, incurred

26 in bringing this action under the Patent Laws of the United States; and,
27 ///
28 ///
7

Case 2:15-cv-05213-GW-JPR Document 1 Filed 07/10/15 Page 8 of 9 Page ID #:8

H.

For such other and further relief as this Court may deem just and

2 equitable under the circumstances.

3

Respectfully submitted:
CISLO & THOMAS LLP

4
5
6
7

Dated: July 10, 2015

By:

SUITE 1700
12100 Wilshire Boulevard
Los Angeles, CALIFORNIA 90025
Telephone: (310) 451-0647
Facsimile: (310) 394-4477
www.cislo.com

Attorneys at Law

CISLO & THOMAS LLP

8
9
10

\\srv-sql\TMDOCS\15-30545\Complaint against Hookahzz.docx

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
8

/s/Daniel M. Cislo
Daniel M. Cislo, Esq.
Mark D. Nielsen, Esq.
Attorneys for Plaintiff, XEO INT.,
LTD.

Case 2:15-cv-05213-GW-JPR Document 1 Filed 07/10/15 Page 9 of 9 Page ID #:9

1
2

DEMAND FOR JURY TRIAL

Plaintiff hereby demands a trial by jury on all issues raised by the Complaint

3 so triable.
4
Respectfully submitted:
CISLO & THOMAS LLP

5
6
7
SUITE 1700
12100 Wilshire Boulevard
Los Angeles, CALIFORNIA 90025
Telephone: (310) 451-0647
Facsimile: (310) 394-4477
www.cislo.com

Attorneys at Law

CISLO & THOMAS LLP

Dated: July 10, 2015

By:

9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
9

/s/Daniel M. Cislo
Daniel M. Cislo, Esq.
Mark D. Nielsen, Esq.
Attorneys for Plaintiff, XEO INT.,
LTD.

Case 2:15-cv-05213-GW-JPR Document 1-1 Filed 07/10/15 Page 1 of 4 Page ID #:10

Exhibit 1

Case 2:15-cv-05213-GW-JPR Document 1-1 Filed 07/10/15 Page 2 of 4 Page ID #:11

USO0D687181S

(12) United States Design Patent (10) Patent N0.:

Goch
(54)

ELECTRONIC SMOKING DEVICE

(56)

Inventor.

(73)

Assignee: XEO Int. Ltd., Berlin (DE)

Markus Goch, Hannover (DE)

D108,336 S

2/1938

Lykos et a1. ............... .. D27/170

D590,990

4/2009

Hon

13590991 S *
D644,375

D653,803 S *
D657,046

14 Years

8/2011

Zhou

D27/101

. . . . . . . . . . . . . .

. . . . ..

2/2012 Timmermans .

D27/101

.... .. D27/163

4/2012

Terryetal.

4/2012

Minskoffet a1.

2/2013

Hon ........................ .. 131/194

2010/0031968 A1 *

APPI'NO': 29/444,108

. . . . ..

D27/l0l

2012/0260926 A1*

(21)

. . . . . . . . . . .

4/2009 Hon

D657,047 S

8,375,957 B2*

Term:

Jul. 30, 2013

US PATENT DOCUMENTS

(72)

11*

References Cited

(71) Applicant: XEO Int. Ltd., Berlin (DE)

(**)

US D687,181 S

(45) Date of Patent:

2013/0068239 A1

.. ... ....

2/2010 Sheikh et a1.

10/2012 Tu et a1. .

3/2013 Youn

..

. . . . ..

D24/110

.... .. D24/110

131/347
131/329

.. 131/273

* cited by examiner

(22) Filed:
(51)

(52)

(58)

Jan. 25, 2013

LOC (9) C1. ................................................ .. 27-01

Primary Examiner * Susan Bennett Hattan

AssismmExamineri Janice Hallmark

US. Cl.

(74) Attorney, Agent, or Firm * Mark Terry

USPC ....................................................... .. D27/101

(57)

Field of Classi?cation Search

The ornamental design for an electronic smoking device, as

USPC ...... .. 1327/103405, 108, 125, 172, 174*176,

Show and descnbed

D27/183, 1864192, 194, 100, 101, 170,

D27/l63il65, 184, 185; D34/2; 206/242i276;
D3/11, 215, 220, 2264230, 265, 266; 4/258,
4/259, 267, 271, 283; l3l/270i273, 329,
131/330, 194, 189, 347, 36(L365; D24/110,
D24/113; D19/77, 81, 84; D28/73i77, 83,
D28/85

See application ?le for complete search history.

CLAIM

DESCRIPTION

FIG. 1 is a front perspective vieW of the electronic smoking

device, shoWing the neW design;

FIG.
FIG.
FIG.
FIG.

2
3
4
5

is
is
is
is

a side vieW thereof;

a rear perspective vieW thereof;
a rear vieW thereof; and,
a front vieW thereof.

1 Claim, 2 Drawing Sheets

Case 2:15-cv-05213-GW-JPR Document 1-1 Filed 07/10/15 Page 3 of 4 Page ID #:12

US. Patent

Jul. 30, 2013

FIG. 2

Sheet 1 of2

US D687,181 S

Case 2:15-cv-05213-GW-JPR Document 1-1 Filed 07/10/15 Page 4 of 4 Page ID #:13

US. Patent

Jul. 30, 2013

F1604

Sheet 2 of2

US D687,181 S

FIG, 5