Case 3:24-cv-00212-BEN-VET Document 1 Filed 01/31/24 PageID.1 Page 1 of 20

1 JOHN CHRISTOPHER (J.C.) ROZENDAAL (pro hac vice pending)jcrozendaal@sternekessler.com

2 BYRON PICKARD (pro hac vice pending)bpickard@sternekessler.com

3 ROBERT NIEMEIER (pro hac vice pending )rniemeier@sternekessler.com
4 STERNE, KESSLER, GOLDSTEIN & FOX PLLC
1101 K Street, NW 10th Floor
5 Washington, DC 20005
Phone: (202) 371-2600
6
KARIN G. PAGNANELLI (SBN 174763)

7 MITCHELL SILBERBERG & KNUPP LLP
Century Park East, 18th Floor
8 2049Los Angeles, CA 90067-3120(310) 312-2000
9 Telephone:
Facsimile: (310) 312-3100
10 Attorneys for Plaintiff
11 Taylor Made Golf Company, Inc.
12

UNITED STATES DISTRICT COURT

13

SOUTHERN DISTRICT OF CALIFORNIA

14
15 TAYLOR MADE GOLF COMPANY,
16 INC.,
Plaintiff,
17
18

v.

WHOLESALE CORP., and
19 COSTCO
SOUTHERN CALIFORNIA DESIGN
20 COMPANY d/b/a INDI GOLF,
21

CASE NO. '24CV0212 BEN VETCOMPLAINT FOR PATENTINFRINGEMENT AND FALSE
ADVERTISINGJURY TRIAL DEMANDED

Defendants.

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1

Plaintiff, Taylor Made Golf Company, Inc. (“Taylor Made” or “Plaintiff”)

2 brings this Complaint against Defendants Costco Wholesale Corporation (“Costco”)
3 and Southern California Design Company d/b/a Indi Golf (“SCDC”) (collectively
4 “Defendants”). In support of this Complaint, Taylor Made alleges as follows:
NATURE OF THIS ACTION

5
6

1.

This is an action for patent infringement brought by Taylor Made

7 against Defendants pursuant to 35 U.S.C. § 271 and 281–285 for Defendants’
8 infringement of U.S. Patent Nos. RE47,653 (“the ’653 patent”); 10,953,293 (“the9 ’293 patent”); 11,351,426 (“the ’426 patent”); 11,420,097 (“the ’097 patent”); and10 11,559,727 (“the ’727 patent”) (collectively “the asserted patents”), and for false
11 advertising for Defendants’ false and misleading statements in violation of the
12 Lanham Act, (15 U.S.C. § 1125(a)).
PARTIES13
14

2.

Taylor Made is a Delaware corporation with its principal place of

15 business at 5545 Fermi Court, Carlsbad, California 92008.
16

3.

Costco is a Washington corporation, with a principal place of business17 located at 999 Lake Dr., Issaquah, WA 98027. On information and belief, Costco
18 operates one or more physical stores in this District, including at least stores at 650
19 Gateway Center Dr., San Diego, CA 92102, and 951 Palomar Airport Road,
20 Carlsbad, CA 92011.
21

4.

Costco has sold and offered to sell infringing products at least through22 its website, Costco.com, to consumers in this District, throughout the State of
23 California, and throughout the United States.
24

5.

SCDC is a California corporation with a principal place of business

25 located at 2205 Faraday Avenue, Suite A, Carlsbad, California 92008. SCDC has
26 registered “Indi Golf” as a tradename and has in fact done business as Indi Golf. On
27 information and belief, SCDC has manufactured infringing products in, or imported
28
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1 infringing products into, the United States and has sold infringing products to2 Costco.
JURISDICTION AND VENUE

3
4

6.

These claims arise under the patent laws of the United States of

5 America, 35 U.S.C. §§ 1 et seq. and the Lanham Act, 15 U.S.C. §§ 1051 et seq.
6 This Court has subject matter jurisdiction over the subject matter of this action
7 pursuant to 28 U.S.C. §§ 1331 and 1338(a)87.

This Court has personal jurisdiction of Defendant Costco because,

9 among other things, Costco’s conduct of business in this District; its purposeful
10 availment of the rights and benefits of California law; and its substantial,
11 continuous, and systematic contacts with the state of California and this District.
12

8.

On information and belief, Costco: (1) intentionally markets and sells

13 the infringing products to residents in this District; (2) enjoys substantial income
14 from this District; and (3) owns and operates several stores in this District and
15 throughout California.
16

9.

Venue is proper in this District as to Costco pursuant to 28 U.S.C. §§17 1391(b), 1391(c), and 1400(b) because (i) Costco has committed acts of
18 infringement in this District at least by selling and offering to sell the infringing
19 products within the District, (ii) Costco has made false and misleading statements in
20 this District and to consumers residing in this District, and (iii) Costco maintains a
21 regular and established place of business in this District.
22

10.

This Court has personal jurisdiction of Defendant SCDC because,

23 among other things, SCDC is incorporated in the State of California and has its
24 principal place of business in this District. SCDC also conducts business in this25 District; purposefully avails itself to the rights and benefits of California law; and26 has substantial, continuous, and systematic contacts with the state of California and27 this District.
28
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1

11.

On information and belief, SCDC regularly and continuously transacts

2 business in the District, including by designing, making, and selling the infringing
3 products. On information and belief, SCDC designs and manufactures the
4 infringing products on behalf of Costco and sells the infringing products to Costco,
5 which are then sold to customers in this District through Costco’s retail locations.
6

12.

Venue is proper in this District as to SCDC pursuant to 28 U.S.C. §§7 1391(b), 1391(c), and 1400(b) because SCDC is incorporated in California and has
8 a principal place of business in this District.
BACKGROUND

9
10

13.

Taylor Made is the world’s leading designer and innovator of golf

11 clubs and has been at the forefront of innovation and technology in the golf industry
12 for over 40 years. Taylor Made’s history of innovation includes the P790 irons.
13 These innovative golf clubs were developed by Taylor Made and revolutionized the
14 filled-iron category upon their 2017 launch.
15
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23
24

14.

The P790 irons incorporated a host of technologies that aided golf

25 players in improving distance, feel, forgiveness, and playability. These technologies
26 included a body comprised of specifically chosen alloys and shaped to distribute
27 weight; an internal cavity filled with a proprietary SpeedFoam™ polymer; and28 tungsten weights to further optimize the weight distribution. Each of these features
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1 were innovative and designed to help golfers improve their distance, consistency,
2 and accuracy. An exploded view of the P790 irons is shown below.
3
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10
11
12
13

15.

Taylor Made has continued to innovate and refine its P790 irons since

14 their launch in 2017 and further improve performance for golfers the world over. As
15 a result the P790 irons have been both critically acclaimed and in high demand from
16 golf consumers.
17

16.

Included in the features of the P790 irons are a number of

18 breakthrough inventions created by Taylor Made employees that are covered by
19 issued U.S. patents.
20

The Asserted Patents

21

I.

The ’653 Patent

22

17.

On October 22, 2019, the United States Patent and Trademark Office

23 (“USPTO”) duly and legally issued the ’653 patent, entitled “Golf Club Head.” A
24 true and correct copy of the ’653 patent is attached as Exhibit 1. The inventors of
25 the ’653 patent are Bret H. Wahl, Peter L. Larsen, and Loren Stowe.
26

18.

The ’653 patent is a reissue of U.S. Patent No. 9,265,995, which issued

27 from a continuation application of Application No. 13/960,554. The. Application
28 No. 13/960,554, including continuations, divisions, and reissues, was assigned from16214379.1

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1 the inventors to Taylor Made Golf Company, Inc. on August 22, 2013. Taylor Made
2 thus owns all rights and title to the ’653 patent and has standing to assert this patent.
3

19.

The ’653 patent is valid and enforceable.

4

II.

The ’293 Patent

520.

On March 23, 2021, the USPTO duly and legally issued the ’293

6 patent, entitled “Golf Club Head.” A true and correct copy of the ’293 patent is
7 attached as Exhibit 2. The inventors of the ’293 patent are Paul M. Demkowski,
8 Bret H. Wahl, Scott Taylor, and Sanjay Kuttappa.
9

21.

The ’293 patent is a continuation of Application No. 15/706,632.

10 Application No. 15/706,632, including continuations, divisions, and reissues, was
11 assigned from the inventors to Taylor Made Golf Company, Inc. by March 7, 2019.
12 Taylor Made thus owns all rights and title to the ’293 patent and has standing to
13 assert this patent.
14

22.

The ’293 patent is valid and enforceable.

15

III.

The ’426 Patent

16

23.

On June 7, 2022, the USPTO duly and legally issued the ’426 patent,

17 entitled “Golf Club Head.” A true and correct copy of the ’426 patent is attached as
18 Exhibit 3. The inventors of the ’426 patent are Paul M. Demkowski, Bret H. Wahl,
19 Scott Taylor, and Sanjay Kuttappa.
20

24.

The ’426 patent is a continuation of Application No. 16/800,811,

21 which itself is a continuation of Application No. 15/706,632. Application No.
22 15/706,632, including continuations, divisions, and reissues, was assigned from the
23 inventors to Taylor Made Golf Company, Inc. by March 7, 2019. Taylor Made thus
24 owns all rights and title to the ’426 patent and has standing to assert this patent.
25

25.

The ’426 patent is valid and enforceable.

26

IV.

The ’097 Patent

27

26.

On August 23, 2022, the USPTO duly and legally issued the ’097

28 patent, entitled “Golf Club Head.” A true and correct copy of the ’097 patent is16214379.1

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1 attached as Exhibit 4. The inventors of the ’097 patent are Paul M. Demkowski,
2 Bret H. Wahl, and Scott Taylor.
327.

The ’097 patent is a continuation of Application No. 16/720,678,

4 which itself is a continuation of Application No. 15/394,549. Application No.
5 15/394,549, including continuations, divisions, and reissues, was assigned from the
6 inventors to Taylor Made Golf Company, Inc. by September 26, 2017. Taylor Made
7 thus owns all rights and title to the ’097 patent and has standing to assert this patent.
8

28.

The ’097 patent is valid and enforceable.

9V.

The ’727 Patent

10

29.

On January 24, 2023, the USPTO duly and legally issued the ’727

11 patent, entitled “Golf Club Head.” A true and correct copy of the ’727 patent is
12 attached as Exhibit 5. The inventors of the ’727 patent are Paul M. Demkowski,
13 Matt Bovee, Mike Walker, Boo Ohashi, and Connor Halberg.
14

30.

The ’727 patent issued from Application No. 17/087,596. Application

15 No. 17/087,596, including continuations, divisions, and reissues, was assigned from
16 the inventors to Taylor Made Golf Company, Inc. by November 25, 2020. Taylor
17 Made thus owns all rights and title to the ’727 patent and has standing to assert this18 patent.
19

31.

The ’727 patent is valid and enforceable.
Defendants’ Acts of Infringement

20
21

32.

Taylor Made restates and incorporates by reference the allegations in

22 paragraphs 1 through 31 of this Complaint as if fully set forth herein.
23

33.

Costco is a large multi-national retail corporation known for its chain

24 of warehouse stores. Costco sells a variety of products including food, electronics,
25 clothing, and sporting goods. In addition to selling products from third-party
26 brands, Costco also offers its own “house” brand of products under the Kirkland
27 Signature™ name.
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1

34.

Among the products sold under the Kirkland Signature™ brand are golf

2 clubs, including a Kirkland Signature™ Players Iron set (the “accused products”),
3 pictured below. Costco began selling and offering for sale the accused products
4 through its website by December 2023. See https://www.costco.com/kirkland5 signature-7-piece-players-iron-set%2C-right-handed.product.4000236767.html (last
6 visited January 29, 2024).
7
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14
15

35.

The accused products copy many features and technologies from

16 Taylor Made’s P790 irons and the asserted patents. Costco’s website notes that the
17 accused products are “are built for distance and forgiveness with a stainless steel
18 body, injected urethane insert, and an internal tungsten weight for optimal launch,
19 forgiveness, and playability.” Id. The website also provides a diagram of its irons
20 showing the body of the club, the internal cavity, urethane insert, and tungsten
21 weight.
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36.

Costco contracted with Defendant SCDC to design and manufacture

12 the accused products. The accused products were previously listed on the United
13 States Golf Association (“USGA”) conforming clubs list, which identifies clubs that
14 USGA certifies as meeting the rules of golf and identifies the manufacturer of the
15 club. The listing of the accused products on the conforming list stated that the
16 manufacturer was “Indi Golf.”
17
37. On information and belief, SCDC designed and manufactures the
18 accused products for Costco and sells the accused products to Costco. On
19 information and belief, the accused products are made by or at the direction of
20 SCDC and/or Costco in the United States, or are imported into the United States by
21 or at the direction of SCDC and/or Costco.
2238.

On information and belief, the design of the accused products directly

23 copies the patented features of the P790 irons, including features covered by the
24 asserted patents. On information and belief, the design team for the accused
25 products included an engineer who formerly worked at Taylor Made headquarters
26 alongside Taylor Made engineers during the development of the P790.
27

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39.

Costco has sold and offered to sell the accused products to customers

28 via its website. On information and belief, Costco has sold out its initial inventory
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1 of accused products but intends to make future sales of the accused products, as
2 shown by Costco’s maintenance of the website listing of its accused products. See
3 https://www.costco.com/kirkland-signature-7-piece-players-iron-set%2C-right4 handed.product.4000236767.html (last visited January 29, 2024).
5

40.

As set forth below and more fully in the claim charts appended to this

6 Complaint, the accused products incorporate, without permission or license from
7 Taylor Made, the inventions claimed in the asserted patents. Taylor Made
8 respectfully seeks relief from this Court for Defendants’ infringement.
9

41.

Costco and SCDC have each directly infringed and continue to directly

10 infringe, the asserted patents under 35 U.S.C. § 271(a) by making, using, selling
11 and/or offering to sell, in this District and elsewhere in the United States, and/or
12 importing into this District and elsewhere in the United States, the accused
13 products, that is the Kirkland Signature™ irons.
14

42.

Defendants received actual notice of their infringement at least as early

15 as the date of service of this Complaint. Therefore, each Defendant was or is now
16 aware of the asserted patents and the accused products’ infringement thereof.
17

43.

On information and belief, Defendants have made, used, sold, offered

18 to sell, imported and/or encouraged the making, using, selling, offering to sell, or
19 importing of the accused products despite knowing of an objectively high likelihood
20 that their actions constituted infringement of the asserted patents at all times
21 relevant to this suit.
22

44.

For the reasons described above, Defendants’ infringement of the

23 asserted patents has been willful.
24

45.

Defendants’ acts of infringement have caused damage to Taylor Made.

25 Taylor Made is entitled to recover from Defendants the damages incurred by Taylor
26 Made as a result of Defendants’ wrongful acts.
27
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Defendants’ Acts of False Advertisement

1
2

46.

Taylor Made restates and incorporates by reference the allegations in

3 paragraphs 1 through 45 of this Complaint as if fully set forth herein.
4

47.

Defendants advertise the accused products to the public via Costco’s

5 web store. Costco’s website listing the accused products for sale states that “[t]he
6 Kirkland Signature Players Distance Irons are built for distance and forgiveness7 with a[n] … injected urethane insert ….” https://www.costco.com/kirkland8 signature-7-piece-players-iron-set%2C-right-handed.product.4000236767.html (last
9 visited January 29, 2024).
10

48.

The accused products, however, do not contain an “injected urethane

11 insert.”
12

49.

Costco’s website for the accused products notes that these statements

13 are provided “by the manufacturer.” Id. Thus, on information and belief, both
14 Costco and SCDC have made false statements of fact in a commercial
15 advertisement about their own product. Defendants’ false advertising is available on
16 Costco’s website, which is available to consumers throughout the United States and
17 offers the accused products for sale throughout the United States. Defendants have
18 caused their false statements regarding the accused products to enter interstate
19 commerce.
20

50.

The statement by Defendants that the accused products contain an

21 “injected urethane insert” is literally false, or in the alternative, is misleading and,
22 on information and belief, has actually deceived or has a tendency to deceive
23 consumers in a way that influences purchasing decisions. Defendants’ false
24 statements are material to purchasing decisions because they falsely or misleadingly
25 suggest that the accused products have features found on premium clubs such as the
26 Taylor Made P790.
27

51.

Defendants’ false advertising has misled golf journalists and customers

28 to believe the accused products are similar to or equivalent to the Taylor Made
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1 P790 irons. See https://mygolfspy.com/we-tried-it/we-tried-it-kirkland-signature2 players-irons-review/ (last visited January 30, 2024) (“Costco’s iron bears a striking
3 resemblance to TaylorMade’s P790.”); https://golf.com/gear/costcos-499-kirkland4 signature-irons-sold-out-in-just-hours/ (last visited January 30, 2024) (“[The]5 hollow foam/urethane-filled construction [of the accused products] is similar to
6 many other irons in the player’s distance category, including the TaylorMade
7 P790…”);8 https://old.reddit.com/r/golf/comments/18evsni/so_costcos_kirkland_irons_are_basi
9 cally_rebranded/ (last visited January 30, 2024) (“So Costco’s Kirkland irons are
10 basically rebranded 2019 P790’s?”); id. (“I read on Golf Spy that the manufacturer
11 is a company named Indi Golf. Could it be possible that they bought Taylor Made’s
12 design/machinery?”);13 https://www.reddit.com/r/golf/comments/17fnmwd/so_the_costco_clubs_are_theor
14 etically_dropping_in/ (last visited January 30, 2024) (“I’m obviously interested in
15 [the Costco Kirkland Signature] irons, especially if they are P790 knock offs.”).
16
17

COUNT I: INFRINGEMENT OF U.S. PATENT NO. RE47,65352.

Taylor Made restates and incorporates by reference the allegations in

18 paragraphs 1 through 51 of this Complaint as if fully set forth herein.
19

53.

As described above, each Defendant has directly infringed and

20 continues to directly infringe, literally or under the doctrine of equivalents, one or
21 more of the claims of the ’653 patent by, among other things, making, using,
22 selling, offering to sell, and/or importing the accused products that practice the ’653
23 patent claims without permission in violation of 35 U.S.C. § 271(a).
2454.

Each of Defendants’ accused products satisfy, literally or under the

25 doctrine of equivalents, at least claim 1 of the ’653 patent. See Exhibit 6.
26

55.

Defendants’ accused products therefore infringe at least one claim of

27 the ’653 patent.
28
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156.

Taylor Made has been damaged and continues to be damaged by

2 Defendants’ infringement of the ’653 patent. As a result, Taylor Made is entitled to
3 an award of damages adequate to compensate it for the infringement in an amount4 that is in no event less than a reasonable royalty pursuant to 35 U.S.C. § 284.
5

57.

As a result of Defendants’ infringement of the ’653 Patent, Taylor

6 Made has suffered irreparable harm and impairment of the value of its patent rights,
7 and Taylor Made will continue to suffer irreparable harm and impairment of the
8 value of its patent rights, unless and until Defendants are permanently enjoined by
9 this Court from infringing the ’653 patent under 35 U.S.C. § 283. Taylor Made has
10 no adequate remedy at law and is entitled to a permanent injunction against
11 Defendants.
12

COUNT II: INFRINGEMENT OF U.S. PATENT NO. 10,953,293

13

58.

Taylor Made restates and incorporates by reference the allegations in

14 paragraphs 1 through 57 of this Complaint as if fully set forth herein.
15

59.

As described above, each Defendant has directly infringed and

16 continues to directly infringe, literally or under the doctrine of equivalents, one or
17 more of the claims of the ’293 patent by, among other things, making, using,
18 selling, offering to sell, and/or importing the accused products that practice the ’293
19 patent claims without permission in violation of 35 U.S.C. § 271(a).
2060.

Each of Defendants’ accused products satisfy, literally or under the

21 doctrine of equivalents, at least claim 1 of the ’293 patent. See Exhibit 7.
22

61.

Defendants’ accused products therefore infringe at least one claim of

23 the ’293 patent.
2462.

Taylor Made has been damaged and continues to be damaged by

25 Defendants’ infringement of the ’293 patent. As a result, Taylor Made is entitled to
26 an award of damages adequate to compensate it for the infringement in an amount27 that is in no event less than a reasonable royalty pursuant to 35 U.S.C. § 284.
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1

63.

As a result of Defendants’ infringement of the ’293 Patent, Taylor

2 Made has suffered irreparable harm and impairment of the value of its patent rights,
3 and Taylor Made will continue to suffer irreparable harm and impairment of the
4 value of its patent rights, unless and until Defendants are permanently enjoined by
5 this Court from infringing the ’293 Patent under 35 U.S.C. § 283. Taylor Made has
6 no adequate remedy at law and is entitled to a permanent injunction against
7 Defendants.
8

COUNT III: INFRINGEMENT OF U.S. PATENT NO. 11,351,426964.

Taylor Made restates and incorporates by reference the allegations in

10 paragraphs 1 through 63 of this Complaint as if fully set forth herein.
11

65.

As described above, each Defendant has directly infringed and

12 continues to directly infringe, literally or under the doctrine of equivalents, one or
13 more of the claims of the ’426 patent by, among other things, making, using,
14 selling, offering to sell, and/or importing the accused products that practice the ’426
15 patent claims without permission in violation of 35 U.S.C. § 271(a).
1666.

Each of Defendants’ accused products satisfy, literally or under the

17 doctrine of equivalents, at least claim 17 of the ’426 patent. See Exhibit 8.
18

67.

Defendants’ accused products therefore infringe at least one claim of

19 the ’426 patent.
2068.

Taylor Made has been damaged and continues to be damaged by

21 Defendants’ infringement of the ’426 patent. As a result, Taylor Made is entitled to
22 an award of damages adequate to compensate it for the infringement in an amount23 that is in no event less than a reasonable royalty pursuant to 35 U.S.C. § 284.
24

69.

As a result of Defendants’ infringement of the ’426 Patent, Taylor

25 Made has suffered irreparable harm and impairment of the value of its patent rights,
26 and Taylor Made will continue to suffer irreparable harm and impairment of the
27 value of its patent rights, unless and until Defendants are permanently enjoined by
28 this Court from infringing the ’426 Patent under 35 U.S.C. § 283. Taylor Made has
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1 no adequate remedy at law and is entitled to a permanent injunction against
2 Defendants.
3

COUNT IV: INFRINGEMENT OF U.S. PATENT NO. 11,420,097

470.

Taylor Made restates and incorporates by reference the allegations in

5 paragraphs 1 through 69 of this Complaint as if fully set forth herein.
671.

As described above, each Defendant has directly infringed and7 continues to directly infringe, literally or under the doctrine of equivalents, one or
8 more of the claims of the ’097 patent by, among other things, making, using,
9 selling, offering to sell, and/or importing the accused products that practice the ’097
10 patent claims without permission in violation of 35 U.S.C. § 271(a).
1172.

Each of Defendants’ accused products satisfy, literally or under the

12 doctrine of equivalents, at least claim 13 of the ’097 patent. See Exhibit 9.
13

73.

Defendants’ accused products therefore infringe at least one claim of

14 the ’097 patent.
1574.

Taylor Made has been damaged and continues to be damaged by

16 Defendants’ infringement of the ’097 patent. As a result, Taylor Made is entitled to
17 an award of damages adequate to compensate it for the infringement in an amount18 that is in no event less than a reasonable royalty pursuant to 35 U.S.C. § 284.
1975.

As a result of Defendants’ infringement of the ’097 patent, Taylor

20 Made has suffered irreparable harm and impairment of the value of its patent rights,
21 and Taylor Made will continue to suffer irreparable harm and impairment of the
22 value of its patent rights, unless and until Defendants are permanently enjoined by
23 this Court from infringing the ’097 patent under 35 U.S.C. § 283. Taylor Made has
24 no adequate remedy at law and is entitled to a permanent injunction against
25 Defendants.
26

COUNT V: INFRINGEMENT OF U.S. PATENT NO. 11,559,727

27

76.

Taylor Made restates and incorporates by reference the allegations in

28 paragraphs 1 through 75 of this Complaint as if fully set forth herein.
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177.

As described above, each Defendant has directly infringed and2 continues to directly infringe, literally or under the doctrine of equivalents, one or
3 more of the claims of the ’727 patent by, among other things, making, using,
4 selling, offering to sell, and/or importing the accused products that practice the ’727
5 patent claims without permission in violation of 35 U.S.C. § 271(a).
678.

Each of Defendants’ accused products satisfy, literally or under the

7 doctrine of equivalents, at least claim 13 of the ’727 patent. See Exhibit 10.
8

79.

Defendants’ accused products therefore infringe at least one claim of

9 the ’727 patent.
1080.

Taylor Made has been damaged and continues to be damaged by

11 Defendants’ infringement of the ’727 patent. As a result, Taylor Made is entitled to
12 an award of damages adequate to compensate it for the infringement in an amount13 that is in no event less than a reasonable royalty pursuant to 35 U.S.C. § 284.
14

81.

As a result of Defendants’ infringement of the ’727 patent, Taylor

15 Made has suffered irreparable harm and impairment of the value of its patent rights,
16 and Taylor Made will continue to suffer irreparable harm and impairment of the
17 value of its patent rights, unless and until Defendants are permanently enjoined by
18 this Court from infringing the ’727 patent under 35 U.S.C. § 283. Taylor Made has
19 no adequate remedy at law and is entitled to a permanent injunction against
20 Defendants.
COUNT VI: FALSE ADVERTISING (15 U.S.C. § 1125)

21
22

82.

Taylor Made restates and incorporates by reference the allegations in

23 paragraphs 1 through 81 of this Complaint as if fully set forth herein.
24

83.

Defendants’ statements regarding the construction and performance of

25 the accused products on Costco’s website are literally false, or in the alternative, are
26 misleading and, on information and belief, have actually deceived or have a
27 tendency to deceive consumers.
28
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184.

Defendants’ statements are likely to materially influence customer

2 purchasing decisions.
3

85.

Defendants caused their false statements to enter into interstate

4 commerce by publishing them on Costco’s website, which is available nationwide
5 and offers the accused products for sale nationwide.
6

86.

Defendants’ actions are likely to harm Taylor Made’s sales or

7 goodwill. Defendants’ false statements that the accused products contain features
8 that they do not have, may lead customers to purchase the accused products over
9 Taylor Made’s competing products, including the P790 irons. Taylor Made’s
10 goodwill is also likely to be harmed among consumers that have been misled to
11 believe the accused products are equivalent in design or performance to the P790
12 irons. Defendants’ statements have harmed and will continue to harm Taylor Made.
13

87.

Taylor made has suffered direct and consequential damages, and is

14 entitled to recover compensatory damages, including opportunity costs and
15 enhanced damages in an amount to be proven at trial.
16

88.

As a result of Defendants’ false statements, Taylor Made has suffered

17 irreparable harm, and Taylor Made will continue to suffer irreparable harm, unless
18 and until Defendants are permanently enjoined by this Court from continuing to
19 make or making future false statements regarding the accused products. Taylor
20 Made has no adequate remedy at law and is entitled to a permanent injunction
21 against Defendants.
22

PRAYER FOR RELIEF

23

WHEREFORE, Taylor Made respectfully requests judgment against

24 Defendants as follows:25

a judgment that Defendants have infringed, either literally or under the26

doctrine of equivalents, one or more claims of the asserted patents

27

under 35 U.S.C. § 271(a);2816214379.1

A.

B.

a judgment that Defendants’ infringement has been and is willful;
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COMPLAINTCase 3:24-cv-00212-BEN-VET Document 1 Filed 01/31/24 PageID.18 Page 18 of 20

1C.

a judgment and order requiring Defendants to pay Taylor Made its

2damages, costs, expenses, and any enhanced damages to which Taylor

3Made is entitled for Defendants’ infringement;

4

D.

a permanent injunction enjoining Defendants as well as their5subsidiaries, agents, directors, officers, employees, and those in active

6

concert or participation with Defendants from infringing the asserted

7patents;

8E.

a judgment and order finding that this is an exceptional case within the9meaning of 35 U.S.C. § 285 and awarding Taylor Made its reasonable

10

attorneys’ fees against Defendants;

11

F.

§1125(a), by committing acts of false advertisement;

12
13

a judgment that Defendants have violated the Lanham Act, 15 U.S.C.

G.

a judgment and order requiring Defendants’ to pay Taylor Made its

14

damages, costs, expenses, and any punitive or enhanced damages to15

which Taylor Made is entitled for Defendants’ false advertisement;

16

H.

a permanent injunction enjoining Defendants as well as their17

subsidiaries, agents, directors, officers, employees, and those in active

18

concert or participation with Defendants from making further false and19

misleading statements regarding the accused products;

20

I.

a judgment and order requiring Defendants to provide an accounting

21

and to pay supplemental damages to Taylor Made, including without

22

limitation, pre-judgment and post-judgment interest; and

23
24

J.

any and all other relief as the Court may deem appropriate and justunder the circumstances.

25
26
27
28
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1
2
3
4
5
6

DATED: January 31, 2024

Respectfully Submitted,
JOHN CHRISTOPHER (J.C.) ROZENDAALBYRON PICKARDROBERT NIEMEIERSTERNE, KESSLER, GOLDSTEIN & FOX
PLLC
KARIN G. PAGNANELLIMITCHELL SILBERBERG & KNUPP LLP

7
8
9
10

By: /s/ Karin G. Pagnanelli
Karin G. Pagnanelli (SBN 174763)
Attorneys for Plaintiff
Taylor Made Golf Company, Inc.

11
12
13
14
15
16
17
18
19
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25
26
27
28
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COMPLAINTCase 3:24-cv-00212-BEN-VET Document 1 Filed 01/31/24 PageID.20 Page 20 of 20

JURY DEMAND

1
2

Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Taylor Made

3 respectfully demands a trial by jury on all claims and issues so triable.
4
5
6
7
8

DATED: January 31, 2024

JOHN CHRISTOPHER (J.C.) ROZENDAALBYRON PICKARDROBERT NIEMEIERSTERNE, KESSLER, GOLDSTEIN & FOX
PLLC
KARIN G. PAGNANELLIMITCHELL SILBERBERG & KNUPP LLP

9
10
11
12

By: /s/ Karin G. Pagnanelli
Karin G. Pagnanelli (SBN 174763)
Attorneys for Plaintiff
Taylor Made Golf Company, Inc.

13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
16214379.1

20
COMPLAINT