Daimler AG v. A Spec Wheels & Tires, LLC et al

Filing 33

ORDER granting stipulation to dismiss case with prejudice. The Court shall retain jurisdiction to enforce the terms of the settlement agreement. Signed by Judge William H. Orrick on 03/31/2017. (jmdS, COURT STAFF) (Filed on 3/31/2017)

1
2
3
4
5
6

MICHAEL ST. DENIS
PROFESSIONAL CORPORATION
Michael St. Denis
(CA Bar No. 147952)
500 Silver Spur Rd., Suite 204
Rancho Palos Verdes, CA 90275
Tel: [phone]
Fax: [phone]
Email: [e-mail]

13

Shauna M. Wertheim (pro hac vice)
[e-mail]
Timothy W. Johnson (pro hac vice)
[e-mail]
Joanna L. Cohn (pro hac vice)
[e-mail]
THE MARBURY LAW GROUP, PLLC
11800 Sunrise Valley Dr., 15th Fl.
Reston, VA 20191-5300
Tel: [phone]
Fax: [phone]

14

Attorneys for Plaintiff DAIMLER AG

7
8
9
10
11
12

15

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

16
17
18

DAIMLER AG,

19

Plaintiff,
20
21
22
23
24

vs.
A SPEC WHEELS & TIRES, LLC, et al.,
Defendants.

) Case No.: 3:16-cv-01895-WHO
)
)
)
) STIPULATION OF DISMISSAL
) AND PROPOSED ORDER
)
)
)
)
)
)
)

25

Pursuant to Fed. R. Civ. P. 41(a) and the Settlement Agreement between Daimler AG and
26

A Spec Wheels & Tires, LLC entered into on March 30, 2017 (“Settlement Agreement”),
27
28

Plaintiff Daimler AG (“Plaintiff”) and Defendants A Spec Wheels & Tires, LLC and Jun Huang

STIPULATION OF DISMISSAL AND [PROPOSED] ORDER - 1

1
2

(collectively, “Defendants”), by and through their respective undersigned attorneys, hereby
stipulate that:

3

1.

The above-captioned action should be dismissed with prejudice.

2.

Except as set forth in the Settlement Agreement, Plaintiff and Defendants shall

4
5
6
7
8
9

bear their own attorney’s fees, expenses and costs.
3.

The court shall retain jurisdiction to enforce the terms of the Settlement

Agreement.
4.

Defendants hereby acknowledge and agree that U.S. Design Patent No. D466,851,

10

U.S. Design Patent No. D522,946, U.S. Design Patent No. D532,733, U.S. Design Patent No.
11

D542,211, U.S. Design Patent No. D569,776, U.S. Design Patent No. D570,760, U.S. Design
12
13

Patent No. D582,330, U.S. Design Patent No. D638,766, U.S. Design Patent No. D656,078, U.S.

14

Design Patent No. D610,516, U.S. Design Patent No. D618,150, U.S. Design Patent No.

15

D610,064, U.S. Design Patent No. D537,767, and U.S. Design Patent No. D516,990

16

(collectively, the “Asserted Design Patents”) are each valid and enforceable, as related to this

17

action and the accused infringing products.

18

5.

Defendants hereby acknowledge Daimler’s rights in and to the trademarks alleged

19
20

in the Complaint, including its rights in U.S. Registration No. 657,386, U.S. Registration No.

21

3,259,691, U.S. Registration No. 41,127, U.S. Registration No. 285,557, U.S. Registration No.

22

3,614,891, U.S. Registration No. 4,423,458, U.S. Registration No. 1,660,727, U.S. Registration

23

No. 3,305,055, U.S. Registration No. 1,807,353, and U.S. Registration No. 2,599,862

24

(collectively, the “Asserted Marks”), and that the Asserted Marks are each valid and enforceable,

25

as related to this action and the accused infringing products. Defendants agree that they will not
26
27

contest, or assist in the contest of, the validity or enforceability of the Asserted Patents and the

28

STIPULATION OF DISMISSAL AND [PROPOSED] ORDER - 2

1
2

Asserted Marks, in any forum, including Federal Courts, United States Patent and Trademark
Office, and/or the International Trade Commission, except in any future action asserting

3

infringement related to any products other than the accused infringing products.
4

6.

5
6

Defendants agree not to purchase, import, sell, distribute, or market automotive

wheels infringing the Asserted Patents or the Asserted Marks.
7.

7

Defendants agree not to use any of Daimler’s Asserted Marks in the U.S. or other

8

countries for automotive wheels or any goods and services related to automotive wheels.

9

Dated: March 30, 2017

10
11

THE MARBURY LAW GROUP, PLLC

ONE LLP

12

By:

By:

13
14

/s/ Shauna M. Wertheim
Shauna M. Wertheim

Attorneys for Plaintiff
DAIMLER AG

15
16
17

/s/ Stephen Michael Lobbin
Stephen Michael Lobbin

Attorneys for Defendants
A SPEC WHEELS & TIRES, LLC and
JUN HUANG

Filer’s Attestation: Pursuant to Civil L.R. 5-1(i)(3), I attest under penalty of
perjury that concurrence in the filing of the document has been obtained from its signatory.

18
19
20

Dated: March 30, 2017

Respectfully submitted,

21

/s/ Shauna M. Wertheim
Shauna M. Wertheim

22
23
24
25
26

PURSUANT TO STIPULATION, IT IS SO ORDERED.
Date: March 31, 2017
William H. Orrick
U.S. District Court Judge

27
28

STIPULATION OF DISMISSAL AND [PROPOSED] ORDER - 3