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IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

OAKLEY, INC., 

 Plaintiff, 

 v. 

ALL-INBIKE, et al., 

 Defendants. 

Case No. 20-cv-03542 

Judge Robert W. Gettleman 

Magistrate Judge Young B. Kim

PLAINTIFF’S MEMORANDUM IN SUPPORT OF ITS 

MOTION FOR ENTRY OF DEFAULT AND DEFAULT JUDGMENT 

 Plaintiff Oakley, Inc. (“Plaintiff” or “Oakley”) submit the following memorandum in 

support of its Motion for Entry of Default and Default Judgment under Fed. R. Civ. P. 55 against 

the defendants identified on Schedule A to the Amended Complaint (collectively, the 

“Defaulting Defendants”) based on Oakley’s action for infringement of U.S. Design Patent No. 

D659,180. 

STATEMENT OF FACTS 

 Plaintiff Oakley, Inc. (“Oakley”) is a corporation organized and existing under the laws 

of the State of Washington, having its principal place of business at One Icon, Foothill Ranch, 

California 92610. Amended Complaint [11] at ¶ 4. Plaintiff Oakley is an indirect, whollyowned subsidiary of Luxottica Group S.p.A. Id. at ¶ 5. Oakley is an internationally recognized 

manufacturer, distributor and retailer of eyewear, apparel, footwear, outerwear, jackets, 

accessories and other merchandise (collectively, the “Oakley Products”). Id. at ¶ 6. Oakley 

Products are known for their distinctive patented designs. Id. at ¶ 8. Oakley uses these designs 

in connection with its Oakley Products, including, but not limited to Oakley’s patented design, 

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U.S. Patent No. D659,180 (referred to herein as “Oakley Design”). Id. Additional factual 

assertions regarding Plaintiff in Paragraphs 4 – 9 of the Amended Complaint are incorporated 

herein. Id. at ¶¶ 4 – 9. 

 Defaulting Defendants are individuals and business entities of unknown makeup who, 

own and/or operate one or more of the e-commerce stores under at least the seller aliases 

identified on Schedule A to the Amended Complaint (collectively, the “Seller Aliases”). Id. at ¶ 

10. Each Defaulting Defendant targets sales to Illinois residents by setting up and operating ecommerce stores that target United States consumers using one or more Seller Aliases, offer 

shipping to the United States, including Illinois, accept payment in U.S. dollars and, on 

information and belief, have sold products, including eyewear, that infringe Oakley’s patented 

design (the “Infringing Products”) to residents of Illinois. Id. at ¶ 14. Additional factual 

assertions regarding Defaulting Defendants in Paragraphs 10 – 24 of the Amended Complaint are 

incorporated herein. Id. at ¶¶ 10 – 24. 

 Plaintiff filed this action on June 17, 2020 [1] and soon thereafter filed an Amended 

Complaint [11]. On June 18, 2020, this Court granted Plaintiff’s Ex Parte Motion for Entry of a 

Temporary Restraining Order (the “TRO”) [25], subsequently extended the TRO [31], and 

converted the TRO [25] to a Preliminary Injunction [43]. Paragraph 7 of the TRO permitted 

Plaintiff to complete service of process to Defendants by electronically publishing a link on a 

link to the Amended Complaint, the TRO, and other relevant documents on a website and 

sending an e-mail to the e-mail addresses identified in Exhibit 2 to the Declaration of Jason 

Groppe and any e-mail addresses provided for Defendants by third parties that includes a link to 

said website. [25] at ¶ 7. The Defendants were properly served on July 13, 2020. [38]. None of 

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the Defaulting Defendants have filed an answer or otherwise pled in this action. See Declaration 

of Justin R. Gaudio (the “Gaudio Declaration”) at ¶ 2. 

 On August 27, 2020, Plaintiff served Plaintiff’s First Set of Interrogatories (four 

interrogatories) and Plaintiff’s First Set of Requests for the Production of Documents and Things 

to Defaulting Defendants (two document requests) on Defaulting Defendants and received no 

response.1 Gaudio Declaration at ¶ 4. As such, Defaulting Defendants have failed to produce 

any documents or information: (1) identifying each and every domain name, online marketplace 

account and/or financial accounts used by Defaulting Defendants, including the owner(s) and/or 

operator(s) of each Online Marketplace; (2) showing costs, cost allocations, revenues, and profits 

of Defaulting Defendants for the last five (5) years; or (3) relating to each and every purchase 

that Defaulting Defendants have made relating to the Oakley Design and/or the Infringing 

Products, including records of the products purchased, the sale prices, images of the products, 

records of suppliers and manufacturers of the products, records of steps taken by Defaulting 

Defendants to determine whether such products were new or genuine, and records of 

investigation notes regarding purchase of the products, including the identity of the person(s) 

responsible for such investigation. Id. Information provided by PayPal, Inc. (“PayPal”), Alipay, 

Amazon and Wish for only some of the Defaulting Defendants indicates that Defaulting 

Defendants’ financial accounts have a total restrained balance of approximately $130,716.82 

with at least $44,411,271.31 in total revenue. Id. at ¶ 6. Plaintiff also served its First Set of 

Requests for Admissions on Defaulting Defendants on August 27, 2020 and received no 

response. Id. at ¶ 5. By failing to respond, each Defaulting Defendant has admitted that profits 

from the sale of the Infringing Products totals more than $100,000. See Fed. R. Civ. P 36(a)(3). 

1 Paragraph 6 of the Preliminary Injunction Order requires that Defendants respond or otherwise provide 

expedited discovery to Oakley within three (3) business days after receipt. [43].

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 Pursuant to Federal Rule of Civil Procedure 55(a) and (b)(2), Plaintiff now moves this 

Court for an Order entering default and default judgment finding that Defaulting Defendants are 

liable on Count 1 of Plaintiff’s Amended Complaint. Fed. R. Civ. P. 55(a) and (b)(2). Plaintiff 

seeks entry of a permanent injunction prohibiting Defaulting Defendants from selling Infringing 

Products and an Order that all assets in Defaulting Defendants’ financial accounts, including 

those operated by PayPal, Alipay, Amazon and Wish.com, as well as any newly discovered 

assets, be transferred to Plaintiff. 

ARGUMENT 

I. JURISDICTION AND VENUE ARE PROPER IN THIS COURT 

This Court has original subject matter jurisdiction over the claims in this action pursuant 

to the provisions of the Patent Act, 35 U.S.C. § 11, et seq., 28 U.S.C. § 1338(a)-(b) and 28 

U.S.C. § 1331. Venue is proper in this Court pursuant to 28 U.S.C. § 1391, and this Court may 

properly exercise personal jurisdiction over Defendants since each of the Defendants directly 

targets business activities toward consumers in Illinois and causes harm to Plaintiff’s business 

within this Judicial District. See [11] at ¶¶ 1, 14, 26 and 27; uBID, Inc. v. GoDaddy Grp., Inc. 

623 F.3d 421, 423-24 (7th Cir. 2010) (without benefit of an evidentiary hearing, plaintiff bears 

only the burden of making a prima facie case for personal jurisdiction; all of plaintiff's asserted 

facts should be accepted as true and any factual determinations should be resolved in its favor). 

Through at least the fully interactive, e-commerce stores operating under the Seller 

Aliases, each of the Defaulting Defendants has targeted sales to Illinois residents by setting up 

and operating e-commerce stores that target United States consumers using one or more Seller 

Aliases, offer shipping to the United States, including Illinois, accept payment in U.S. dollars, 

and, on information and belief, has sold Infringing Products to consumers in the United States, 

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including the State of Illinois. [11] at ¶ 14. Personal jurisdiction exists over Defaulting 

Defendants since they directly target their business activities toward consumers in the United 

States, including Illinois. Specifically, Defaulting Defendants are reaching out to do business 

with Illinois residents by operating one or more commercial, interactive e-commerce stores 

under the Seller Aliases through which Illinois residents can purchase Infringing Products. Id. 

See Monster Energy Co. v. Chen Wensheng, et al., 2015 U.S. Dist. LEXIS 132283, at *11 (N.D. 

Ill. Sept. 29, 2015). 

II. PLAINTIFF HAS MET THE REQUIREMENTS FOR ENTRY OF DEFAULT 

Pursuant to Rule 55(a) of the Federal Rules of Civil Procedure, “when a party against 

whom a judgment for affirmative relief is sought has failed to plead or otherwise defend, and that 

failure is shown by affidavit or otherwise, the clerk must enter the party's default.” Fed. R. Civ. 

P. 55(a). On June 18, 2020, Plaintiff filed its Amended Complaint alleging federal patent 

infringement of United States Design Patent No. D659,180 pursuant to 35 U.S.C. § 271 (Count 

I). [11]. The Defendants were properly served with the Amended Complaint on July 13, 2020. 

[38]. Despite having been served with process, none of the Defaulting Defendants have filed an 

answer or otherwise pled in this action. Gaudio Declaration at ¶ 2. Upon information and belief, 

the Defaulting Defendants are not active-duty members of the U.S. armed forces. Id. at ¶ 3. 

Accordingly, Plaintiff asks for entry of default against the Defaulting Defendants. 

III. PLAINTIFF HAS MET THE REQUIREMENTS FOR ENTRY OF DEFAULT 

JUDGMENT 

 Rule 55(b)(2) of the Federal Rules of Civil Procedure provides for a court-ordered default 

judgment. A default judgment establishes, as a matter of law, that defendants are liable to 

plaintiff on each cause of action alleged in the complaint. United States v. Di Mucci, 879 F.2d 

1488, 1497 (7th Cir. 1989). When the Court determines that a defendant is in default, the factual 

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allegations of the complaint are taken as true and may not be challenged, and the defendants are 

liable as a matter of law as to each cause of action alleged in the complaint. Black v. Lane, 22 

F.3d 1395, 1399 (7th Cir. 1994). 

 As noted above, Plaintiff served Defendants on July 13, 2020. [38]. The answer 

deadline has passed and no answer or other responsive pleading has been filed by any of the 

Defaulting Defendants. See Fed. R. Civ. P. 12(a)(1)(A). Accordingly, default judgment is 

appropriate, and pursuant to 35 U.S.C. § 289, Plaintiff requests an award of Defaulting 

Defendants’ profits resulting from Defaulting Defendants’ unauthorized use and infringement of 

the Oakley Design on products sold through the e-commerce stores operating under the Seller 

Aliases. Plaintiff also seeks entry of a permanent injunction prohibiting Defaulting Defendants 

from making, using, offering for sale, selling, and importing Infinging Products and an order that 

all assets in Defaulting Defendants’ financial accounts, including those operated by PayPal, 

Alipay, Wish.com, and Amazon, and any newly identified accounts be transferred to Plaintiff. 

The United States Patent Act provides that “whoever without authority makes, uses, 

offers to sell, or sells any patented invention, within the United States or imports into the United 

States any patented invention during the term of the patent therefor, infringes the patent.” 35 

U.S.C. § 271(a). Plaintiff alleged in its Amended Complaint that it is the lawful assignee of all 

right, title, and interest in and to the Oakley Design. [11] at ¶ 9. Plaintiff has also alleged that 

Defaulting Defendants make, use, offer for sale, sell, and/or import into the United States for 

subsequent sale or use Infringing Products that infringe directly and/or indirectly the ornamental 

design claimed in the Oakley Design. Id. at ¶ 26. Exhibit 1 to the Amended Complaint shows 

that an ordinary observer would be deceived into thinking that the Infringing Products were the 

same as the Oakley Design. [11-1]. See Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 

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997, 1011 (N.D. Ill. 2010) (citing Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 672 (Fed. 

Cir. 2008)). Finally, Plaintiff alleged that it has not licensed or authorized Defaulting 

Defendants to use the Oakley Design, and none of the Defaulting Defendants are authorized 

retailers of genuine Oakley Products. Id. at ¶ 15. 

Since the Defaulting Defendants have failed to answer or otherwise plead in this matter, 

the Court must accept the allegations contained in Plaintiff’s Amended Complaint as true. See

Fed. R. Civ. P. 8(b)(6); Am. Taxi Dispatch, Inc., v. Am. Metro Taxi & Limo Co., 582 F. Supp. 2d 

999, 1004 (N.D. Ill. 2008). Accordingly, Plaintiff requests entry of judgment with respect to 

Count I for patent infringement against the Defaulting Defendants. 

IV. PLAINTIFF IS ENTITLED TO DEFENDANTS’ PROFITS PURSUANT TO 35 

U.S.C. § 289

In the case of design patent infringement, a patentee may recover the total profits made 

by a defendant under 35 U.S.C. § 289. Section 289 provides that “[w]hoever during the term of 

a patent for a design, without license of the owner, (1) applies the patented design, or any 

colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or 

exposes for sale any article of manufacture to which such design or colorable imitation has been 

applied shall be liable to the owner to the extent of his total profit, but not less than $250....” 35 

U.S.C. § 289. 

Determining an award under Section 289 involves two steps: “First, identify the ‘article 

of manufacture’ to which the infringed design has been applied. Second, calculate the infringer’s 

total profit made on that article of manufacture.” Samsung Elecs. Co. v. Apple, Inc., 137 S. Ct. 

429, 434 (2016). The plaintiff has the initial burden to show the article of manufacture and the 

defendant’s total profit on that article. Nordock, Inc. v. Systems, Inc., 2017 U.S. Dist. LEXIS 

192413, at * 7 (E.D. Wisc. 2017). However, if the defendant believes that the article of 

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manufacture is different, it has the burden to produce evidence showing the article of 

manufacture. Id. The defendant also has the burden to produce evidence as to any deductions 

from the total profit identified by plaintiff. Id. The Supreme Court has made it clear that: 

The burden is the infringer's to prove that his infringement had no 

cash value in sales made by him. If he does not do so, the profits 

made on sales of goods bearing the infringing mark properly 

belong to the owner of the mark. There may well be a windfall to 

the trade-mark owner where it is impossible to isolate the profits 

which are attributable to the use of the infringing mark. But to hold 

otherwise would give the windfall to the wrongdoer. 

WMS Gaming, Inc. v. WPC Prods. Ltd., 542 F.3d 601, 608 (7th Cir. 2008) citing Mishawaka 

Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 206-07, 62 S. Ct. 1022, 86 L. Ed. 

1381, 1942 Dec. Comm'r Pat. 767 (1942). “Although § 289 does not explicitly impose any 

burden on the defendant, this shift in the burden of production is consistent with the 

disgorgement of profits in other contexts.” Nordock, Inc. v. Systems, Inc., 2017 U.S. Dist. 

LEXIS 192413, at *7-8. “[Patent holders] are entitled to an award best approximating their 

actual loss, and the infringers must bear the burden of uncertainty.” In re Mahurkar Double 

Lumen Hemodialysis Catheter Patent Litigation, 831 F. Supp. 1354, 1388 (N.D. Ill. 1993) 

(citations omitted). 

In cases where defendants have failed to produce documents to characterize revenue, 

courts have entered a profits award for the entire revenue amount. See WMS Gaming, Inc. v. 

WPC Prods. Ltd., 542 F.3d 601, 608 (7th Cir. Ill. 2008) (“[t]he burden was therefore on 

PartyGaming to show that certain portions of its revenues...were not obtained through its 

infringement of WMS's marks.”); Chloe v. Queen Bee of Beverly Hills, 2009 U.S. Dist. LEXIS 

84133, at *15-17 (S.D.N.Y. Jul. 16, 2009) (entering profits award for the entire revenue amount 

in trademark infringement case even though “records offer no guidance as to how much of this 

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revenue stream related to [Plaintiff’s] products [as opposed to other products not at issue in this 

case] or as to the costs incurred in acquiring and selling these products.”). Under normal 

circumstances, it is the infringer who bears the burden of “offering a fair and acceptable formula 

for allocating a given portion of overhead to the particular infringing items in issue.” Deckers 

Outdoor Corp. v. ShoeScandal.com, Ltd. liability Co., No. CV 12-7382 ODW (SHx), 2013 U.S. 

Dist. LEXIS 168545, at *12 (C.D. Cal. Nov. 25, 2013), citing Sunbeam Prods., Inc. v. Wing 

Shing Prods. (BVI) Ltd., 311 B.R. 378, 401 (S.D.N.Y. 2004) aff'd, 153 F. App'x 703 (Fed. Cir. 

2005). “But if the infringer has failed to produce any evidence ... the Court must determine the 

costs to be subtracted from revenue based on the evidence it has to determine profits.” See Nike, 

Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1447 (Fed. Cir. 1998). 

 Here, the Oakley Design claims “[t]he ornamental design for an eyeglass.” [11-2]. In the 

case of a design for a single-component product, such as the Oakley Design, the “product is the 

article of manufacture to which the design has been applied.” Samsung Elecs. Co. v. Apple, Inc., 

137 S. Ct. at 367. As such, the relevant article of manufacture is each of the Infringing Products 

sold by Defaulting Defendants. 

 Since Defaulting Defendants have chosen not to participate in these proceedings, Plaintiff 

has limited available information regarding Defaulting Defendants’ profits from the sale of 

Infringing Products. Defaulting Defendants have failed to appear in this matter and have not 

produced any documents or information: (1) characterizing each of the transactions in their 

financial accounts, (2) other accepted payment methods; or (3) other Internet stores that they 

may be operating. As such, Defaulting Defendants have not met their burden to apportion gross 

receipts between infringing and non-infringing product sales, or to show any deductions. WMS 

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Gaming, Inc. v. WPC Prods. Ltd., 542 F.3d 601, 608 (7th Cir. 2008); Nordock, Inc. v. Systems, 

Inc., 2017 U.S. Dist. LEXIS 192413, at * 7. 

Information provided by PayPal, Alipay, and Wish for only some of the Defaulting 

Defendants indicates that Defaulting Defendants’ financial accounts have a total restrained 

balance of approximately $130,716.82 with at least $44,411,271.31 in total revenue. Gaudio 

Declaration at ¶ 6. By failing to respond to Plaintiff’s First Set of Requests for Admissions, each 

Defaulting Defendant has admitted that profits from the sale of the Infringing Products totals 

more than $100,000. Id. at ¶ 5; See Fed. R. Civ. P. 36(a)(3). As such, because Defaulting 

Defendants have not met their burden of apportioning gross sales or showing any deductions, the 

Court should award one hundred thousand dollars ($100,000) from each Defaulting Defendant 

based on the Defaulting Defendants’ failure to answer Plaintiff’s First Set of Requests for 

Admission. See Fitness Anywhere LLC v. SUZHOU ONE TWO THREE SPORTS GOODS CO., 

LTD, et al, No. 20-cv-01361 (N.D. Ill. Jun. 23, 2020) (unpublished) (Docket No. 38) (awarding 

$100,000 in profits per defendant); Oakley, Inc. v. ADVENTURER, et al, No. 20-cv-00277 (N.D. 

Ill. Jun. 9, 2020) (unpublished) (Docket No. 60) (same); Fitness Anywhere LLC v. 95SP_KK, et 

al, No. 19-cv-04155 (N.D. Ill. Oct. 31, 2019) (unpublished) (Docket No. 65) (same); LVMH 

Swiss Manufactures SA v. AK WATCH CO. LTD STORE, et al, No. 19-cv-04383 (N.D. Ill. Sept. 

25, 2019) (unpublished) (Docket No. 42) (same). 

V. PLAINTIFF IS ENTITLED TO PERMANENT INJUNCTIVE RELIEF 

In addition to the foregoing relief, Plaintiff respectfully requests entry of a permanent 

injunction enjoining Defaulting Defendants from infringing or otherwise violating Plaintiff’s 

rights in the Oakley Design, including at least all injunctive relief previously awarded by this 

Court to Plaintiff in the TRO and Preliminary Injunction. Plaintiff is also entitled to injunctive 

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relief so it can quickly take action against any new e-commerce stores that are identified, found 

to be linked to Defaulting Defendants, and selling Infringing Products. See, e.g., Tuf-Tite, Inc. v. 

Fed. Package Networks, Inc., 2014 U.S. Dist. LEXIS 163352, at *29 (N.D. Ill. 2014); Scholle 

Corp. v. Rapak LLC, 35 F. Supp. 3d 1005, 1009 (N.D. Ill. 2014); Nike, Inc. v. Fujian Bestwinn 

Industry Co., Ltd., 166 F. Supp. 3d 1177, 1178-79 (D. Nev. 2016). 

CONCLUSION 

 Plaintiff respectfully requests that the Court enter default and default judgment against 

each Defaulting Defendant, including an award of one hundred thousand dollars ($100,000) per 

Defaulting Defendant and a permanent injunction order prohibiting Defaulting Defendants from 

selling Infringing Products and transferring all assets in Defaulting Defendants’ financial 

accounts, including those operated by PayPal, Alipay, Wish.com and Amazon, to Plaintiff. 

Dated this 2nd day of September 2020. Respectfully submitted, 

/s/ Justin R. Gaudio 

Amy C. Ziegler 

Justin R. Gaudio 

Jake M. Christensen 

Thomas J. Juettner 

Greer, Burns & Crain, Ltd. 

300 South Wacker Drive, Suite 2500 

Chicago, Illinois 60606 

312.360.0080 / 312.360.9315 (facsimile) 

aziegler@gbc.law 

jgaudio@gbc.law 

jchristensen@gbc.law 

 tjjuettner@gbc.law 

Counsel for Plaintiff Oakley, Inc.

 

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CERTIFICATE OF SERVICE

I hereby certify that on the 2nd day of September 2020, I will electronically file the 

foregoing with the Clerk of the Court using the CM/ECF system, I will electronically publish the 

documents on a website and I will send an e-mail to the e-mail addresses identified in Exhibit 2 

to the Declaration of Jason Groppe and any e-mail addresses provided for Defendants by third 

parties that includes a link to said website. 

/s/ Justin R. Gaudio 

Amy C. Ziegler 

Justin R. Gaudio 

Jake M. Christensen 

Thomas J. Juettner 

Greer, Burns & Crain, Ltd. 

300 South Wacker Drive, Suite 2500 

Chicago, Illinois 60606 

312.360.0080 / 312.360.9315 (facsimile) 

aziegler@gbc.law 

jgaudio@gbc.law 

jchristensen@gbc.law 

 tjjuettner@gbc.law 

Counsel for Plaintiff Oakley, Inc.

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