Columbia Sportswear North America, Inc. v. Ventex Co., Ltd.

CourtDistrict Court, S.D. California
DecidedJanuary 22, 2021
Docket3:20-cv-00709
StatusUnknown

This text of Columbia Sportswear North America, Inc. v. Ventex Co., Ltd. (Columbia Sportswear North America, Inc. v. Ventex Co., Ltd.) is published on Counsel Stack Legal Research, covering District Court, S.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Columbia Sportswear North America, Inc. v. Ventex Co., Ltd., (S.D. Cal. 2021).

Opinion

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 COLUMBIA SPORTSWEAR NORTH Case No.: 20-CV-709 JLS (JLB) AMERICA, INC., an Oregon corporation, 12 ORDER DENYING PLAINTIFF’S Plaintiff, 13 CORRECTED AND AMENDED v. EX PARTE MOTION TO TRANSFER 14 OR, IN THE ALTERNATIVE, SEIRUS INNOVATIVE ACCESSORIES, 15 VACATE DKTS. 299 AND 300 INC., a Utah corporation; VENTEX CO.,

16 LTD., a foreign company; MICHAEL J. (ECF No. 315) CAREY, an individual; WENDY M. 17 CAREY, an individual; ROBERT (BOB) 18 MURPHY, an individual; SCOTT DENIKE, an individual; KYUNG-CHAN 19 GO, an individual; and MAN-SIK 20 (PAUL) PARK, an individual, 21 Defendants. 22

23 Presently before the Court is Plaintiff Columbia Sportswear North America, Inc.’s 24 (“Columbia”) Corrected and Amended Ex Parte Motion to Transfer or, in the Alternative, 25 Vacate Dkts. 299 and 300 (“Mot.,” ECF No. 315). Also before the Court are Defendants 26 Seirus Innovative Accessories, Inc. (“Seirus”); Michael J. Carey; Wendy M. Carey; Robert 27 Murphy; and Scott DeNike’s (collectively, the “Seirus Defendants”) Response thereto 28 (“Opp’n,” ECF No. 318) and Columbia’s Reply in support thereof (“Reply,” ECF No. 320). 1 The Court vacated the hearing on this matter and took it under submission without oral 2 argument pursuant to Civil Local Rule 7.1(d)(1). See ECF No. 319. Having carefully 3 considered the Parties’ briefs and the law, the Court DENIES Columbia’s Motion. 4 BACKGROUND 5 I. Factual Background 6 Columbia, a corporation organized under Oregon law with its principal place of 7 business in Oregon, is an outdoor apparel company that “has invested heavily in developing 8 innovative new products.” Second Amended Complaint (“SAC,” ECF No. 91) ¶¶ 11, 64. 9 One such product is Columbia’s “Omni-Heat® Reflective, a technology in which the 10 innermost surface of garments is partially covered in reflective foil, which directs heat back 11 to the user” in a breathable manner. Id. ¶ 64. Columbia uses this technology “in many 12 products, including jackets, gloves, mittens, hats, socks, liners, and other apparel and 13 accessories.” Id. ¶ 66. Columbia has obtained patents that cover this technology, including 14 U.S. Patent Nos. 8,424,119 (the “’119 Patent”) and 8,453,270 (the “’270 patent”) 15 (collectively, the “Omni-Heat® Reflective Patents”). Id. ¶ 65. 16 Seirus, a Utah corporation with its principal place of business in Poway, California, 17 sells gloves, mittens, hats, socks, and other winter accessories. Id. ¶¶ 12, 68. Defendant 18 Ventex Co., Ltd. (“Ventex”), is a company formed under the laws of South Korea, with its 19 principal place of business in South Korea. Id. ¶ 13. Ventex manufactures and sells fabrics 20 and other materials for use in the production of clothing and “touted its ability to supply 21 base fabrics with laminated reflective foil” called “MegaHeat RX.” Id. ¶¶ 13, 69. In March 22 2013, Seirus and Ventex entered into a Vendor Agreement, under which Seirus agreed to 23 buy MegaHeat RX from Ventex. Id. ¶ 69. Seirus calls its line of products incorporating 24 Ventex’s MegaHeat RX product “HeatWave.” Id. 25 On December 4, 2013, Columbia filed a lawsuit against Seirus in the Western 26 District of Washington (the “Seirus Washington Action”), alleging that Seirus’s HeatWave 27 line of products infringes one or more design patents owned by Columbia. Id. ¶ 72. On 28 April 2, 2014, Columbia served an amended complaint on Seirus, alleging infringement of 1 the Omni-Heat® Reflective Patents. Id. ¶ 73. In January 2015, Columbia voluntarily 2 dismissed the Seirus Washington Action and filed an action against Seirus in the District 3 of Oregon alleging infringement of the Omni-Heat® Reflective Patents (the “Seirus 4 Oregon Action”). Id. ¶ 74. Discovery in the Seirus Oregon Action closed in May 2016, a 5 Markman hearing was held in May 2016, and the court issued a final claim construction 6 order in August 2016. Id. ¶¶ 76–77. Subsequently, expert reports were exchanged and 7 expert depositions conducted. Id. ¶ 78. In September 2016, the parties filed cross-motions 8 for summary judgment, with oral argument scheduled for December 2016. Id. ¶ 79. 9 “Seirus had already been found liable for infringement of one of Columbia’s design patents 10 and had stipulated that the patent was not invalid.” Id. ¶ 80. Trial was to commence on 11 April 11, 2017. Id. ¶ 81. 12 Columbia alleges that the Seirus Defendants “sought to delay and put off trial of the 13 remaining infringement allegations against Seirus,” id. ¶ 82, and “regretted [their] failure 14 to file [inter partes review (‘]IPR[’)] petitions concerning the two patents,” id. ¶ 83. 15 However, “the Seirus Defendants knew that Seirus, and any person in privity with it, was 16 time-barred from filing IPR petitions pursuant to 35 U.S.C. § 315(b) and that no IPRs could 17 be filed if Seirus was a real party-in-interest in the outcome of the IPRs.” Id. Accordingly, 18 “in or before October 2016,” the Seirus Defendants, with Ventex, Kyung-Chan Go, and 19 Man-Sik (Paul) Park (collectively, the “Ventex Defendants”), “agreed that Ventex would 20 file IPR petitions against the ’119 and ’270 patents on Seirus’s behalf,” despite knowing 21 “that this was unlawful under 35 U.S.C. § 315(b).” Id. ¶ 84 (emphasis in original). 22 Thereafter, Seirus and Ventex entered into an Exclusive Manufacturing Agreement 23 (“EMA”) “to disguise the fact that Seirus induced and would be paying for the Ventex 24 IPRs.” Id. ¶¶ 85–86. Pursuant to the EMA, Seirus paid Ventex an advance of $250,000 25 on November 3, 2016, “intended to give Ventex funds to pay for the preparation of the 26 Ventex IPR petitions,” and Seirus further “agreed to pay Ventex a fee per-yard of fabric 27 over an extended period of time, called a ‘HeatWave Surcharge’ or a ‘HeatWave Exclusive 28 License Fee,’ to continue to pay for Ventex’s attorneys’ fees and costs incurred in litigating 1 the Ventex IPRs.” Id. ¶ 87 (citation omitted). Seirus would later recoup the advance 2 through a concealed “discount” on subsequent orders, which would not be reflected in 3 Seirus’s purchase orders. Id. ¶¶ 87–88 (citation omitted). The “HeatWave Surcharge” or 4 “HeatWave Exclusive License Fee” “amounted to nearly a 100% increase on the price of 5 the fabric”—which, at that point, Seirus had been purchasing for more than four years— 6 and was first reflected on purchase orders in January 2017, “within days of Ventex’s filing 7 of the first of the Ventex IPRs.” Id. ¶¶ 90, 92 (citations omitted). “The total of the sums 8 paid by Seirus closely approximates the amount Ventex anticipated paying in legal fees for 9 the two Ventex IPRs.” Id. ¶ 93 (citation omitted); see also id. ¶ 171. Seirus obtained no 10 exclusivity under the EMA, see id. ¶¶ 97–103, and a Supplier Agreement between Seirus 11 and Ventex already contained a non-competition clause, see id. ¶¶ 104–05. 12 In January 2017, Ventex electronically filed a separate IPR petition for each of the 13 Omni-Heat® Reflective Patents. Id. ¶¶ 132–36. “Ventex falsely and fraudulently 14 represented and alleged that it was the only real party-in-interest,” id. ¶ 137, but “Ventex 15 filed the Ventex IPRs only at the behest of Seirus and only with funding from Seirus, who 16 desired review of the Omni-Heat® Reflective Patents for the purpose, inter alia, of staying 17 and disrupting the Seirus Oregon Action,” id. ¶ 142. The IPR petitions were served on 18 Columbia’s counsel of record in Oregon via FedEx. Id. ¶ 138. 19 On February 7, 2017, Seirus informed the court in the Seirus Oregon Action of 20 Ventex’s IPR filings, id. ¶ 210, and Seirus moved for a stay the following day, id.

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Columbia Sportswear North America, Inc. v. Ventex Co., Ltd., Counsel Stack Legal Research, https://law.counselstack.com/opinion/columbia-sportswear-north-america-inc-v-ventex-co-ltd-casd-2021.