On April 11, 2016, Daimler AG of Germany (“Daimler”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.
The complaint alleges that the following entities (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain passenger vehicle automotive wheels that infringe various design patents and trademarks owned by Daimler:
- A-Z Wheels LLC d/b/a UsaRim/UsaRim.com/Eurotech Wheels of San Diego, California
- Galaxy Wheels & Tires, LLC of San Diego, California
- Infobahn International, Inc. d/b/a Infobahn/Eurotech/Eurotech Luxury Wheels/Eurotech Wheels/UsaRim of San Diego, California
- Amazon.com, Inc. of Seattle, Washington
- A Spec Wheels & Tires LLC d/b/a A SPEC Wheels & Tires of Hayward, California
- American Tire Distributors Holdings, Inc. of Huntersville, North Carolina
- American Tire Distributors, Inc. of Huntersville, North Carolina
- Onyx Enterprises Int’l, Corp. d/b/a CARiD.COM of Cranbury, New Jersey
- O.E. Wheel Distributors, LLC of Sarasota, Florida
- Powerwheels Pro, LLC of Waterford, Michigan
- Trade Union International Inc. d/b/a Topline of Montclair, California.
In particular, Daimler asserts infringement of the following design patents (collectively, the “asserted patents”):
- U.S. Patent No. D542,211 (the ‘211 patent)
- U.S. Patent No. D582,330 (the ‘330 patent)
- U.S. Patent No. D656,078 (the ‘078 patent)
- U.S. Patent No. D569,776 (the ‘776 patent)
- U.S. Patent No. D602,834 (the ‘834 patent)
- U.S. Patent No. D582,328 (the ‘328 patent)
- U.S. Patent No. D542,726 (the ‘726 patent)
- U.S. Patent No. D604,221 (the ‘221 patent)
- U.S. Patent No. D570,760 (the ‘760 patent)
- U.S. Patent No. D544,823 (the ‘823 patent)
- U.S. Patent No. D486,437 (the ‘437 patent)
- U.S. Patent No. D562,207 (the ‘207 patent)
- U.S. Patent No. D635,904 (the ‘904 patent)
- U.S. Patent No. D618,150 (the ‘150 patent)
- U.S. Patent No. D585,802 (the ‘802 patent)
- U.S. Patent No. D532,733 (the ‘733 patent)
- U.S. Patent No. D572,646 (the ‘646 patent)
- U.S. Patent No. D578,949 (the ‘949 patent)
- U.S. Patent No. D638,772 (the ‘772 patent)
- U.S. Patent No. D522,946 (the ‘946 patent)
- U.S. Patent No. D638,766 (the ‘766 patent)
- U.S. Patent No. D610,516 (the ‘516 patent)
According to the complaint, the asserted patents generally relate to ornamental designs for certain passenger vehicle automotive wheels, including Daimler’s split 5-spoke design, solid 5-spoke design, and 10-spoke design. In addition, Daimler alleges infringement of numerous trademarks relating to its three-point star design, AMG mark, vehicle model numbers, and vehicle model classes (collectively, the “asserted trademarks”).
In the complaint, Daimler states that the Proposed Respondents import and sell products that infringe the asserted patents. The complaint specifically refers to various wheels associated with the Proposed Respondents as infringing products.
Regarding domestic industry, Daimler states that its own wheels practice the asserted patents and asserted trademarks. Daimler further states that it has made extensive investments in plant and equipment and has engaged in an extensive employment of labor and capital in the U.S. related to the production, installation, stocking, and servicing of its domestic industry wheels. Daimler specifically refers to the establishment of a $300 million plant in Alabama where it is engaged in various activities relating to the domestic industry wheels.
As to related litigation, Daimler states that, concurrently with the filing of the instant ITC complaint, it is also filing complaints in the U.S. District Courts for the Southern District of California, the Central District of California, the Northern District of California, the Western District of Washington, the Eastern District of Michigan, the District of New Jersey, the Western District of North Carolina, and the Middle District of Florida, alleging infringement of the asserted patents and the asserted trademarks by the Proposed Respondents.
With respect to potential remedy, Daimler requests that the Commission issue a general exclusion order, a limited exclusion order, and permanent cease and desist orders directed at the Proposed Respondents. Daimler states that a general exclusion order is necessary and appropriate to prevent circumvention of a limited exclusion order and/or to remedy a pattern of Section 337 violations.