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Case 2:14-cv-05097-GW-AGR Document 24 Filed 01/14/16 Page 1 of 8 Page ID #:143

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Tommy SF Wang (SBN: 272409)


Leontyne Fan (SBN: 285042)
YANG & WANG, P.C.
355 S. Grand Ave., Suite 2450
Los Angeles, CA 90071
Telephone: (888) 827-8880
Facsimile: (888) 827-8880
Email: twang@yangwanglaw.com; lfan@yangwanglaw.com
Attorneys for Plaintiff
JAT WHEELS, INC.

UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA

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JAT WHEELS, INC.,

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Plaintiff,

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Case No.: 14-CV-05097-GW-AGRx

vs.

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DB MOTORING GROUP, INC.

SUPPLEMENTAL BRIEF ON
MONETARY DAMAGES FOR
DEFAULT JUDGMENT
JUDGE: HON. GEORGE H. WU
DATE: 1/25/16
TIME: 8:30AM
DEPT: 10

Defendant.

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Pursuant to the Courts orders on December 28, 2015, Plaintiff hereby


submits the supplemental brief on the issue of monetary damages and attorneys
fees for the default judgment. To the Clerk of the United States District Court for
the Central District of California:

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PLAINTIFFS SUPPLEMENTAL BRIEF
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Case 2:14-cv-05097-GW-AGR Document 24 Filed 01/14/16 Page 2 of 8 Page ID #:144

I.

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INTRODUCTION

Plaintiff JAT Wheels, Inc. (Plaintiff) respectfully requests this court to

award treble damages in the amount of $100,000.00 and attorney fees in the

amount of $3,300.00 for the willful infringement of Plaintiffs design patent.

Under 35 U.S.C. 284, upon finding for the claimant the court shall award the

claimant damages adequate to compensate for the infringement, but in no event

less than a reasonable royalty for the use made of the invention by the infringer,

together with interest and costs as fixed by the court the court may increase the

damages up to three times the amount found or assessed. The statute further reads,

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the court in exceptional cases may award reasonable attorney fees to the

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prevailing party. Id. The courts have interpreted exceptional circumstances, to

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mean that if the infringement was willful, treble damages and attorney fees may be

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awarded, as discussed below.

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II.

STATEMENT OF FACTS

Plaintiff is the owner of all rights, titles, and interests in the U.S. Design

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Patent Application No. 29,492,155 (STR 513 Wheel or Design Patent), which

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covers ornamental appearance of automobile parts. On or around January of 2014,

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Plaintiff discovered that DB Motoring Group, Inc. (Defendant) manufactured

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and sold automobile parts on the Internet that infringe on the Design Patent. In

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May 2014, Plaintiff published photographs to its website displaying the STR 513

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Wheel. Subsequently, without Plaintiffs consent, Defendant consistently used

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Plaintiffs images of the STR 513 Wheel to promote and sell the infringing

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products on Defendants site. Thereafter, Plaintiff noticed a decline in the sales of

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the STR 513 Wheel from 2014-2015. Attached is an itemized sales summary of

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PLAINTIFFS SUPPLEMENTAL BRIEF
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Case 2:14-cv-05097-GW-AGR Document 24 Filed 01/14/16 Page 3 of 8 Page ID #:145

Plaintiffs STR 513 Wheel marked as Exhibit 1. In 2014, the total quantity of the

STR 513 Wheel sold was 3,200. In 2015, the total quantity of sales declined to

2,782. See Exhibit 1.

Prior to Plaintiffs retention of counsel, Plaintiff notified and requested that

Defendant cease all infringing activity, but Defendant failed to respond and stop

the infringement. Subsequently, on July 1, 2014, Plaintiffs counsel sent a cease

and desist letter to Defendant. However, Defendant did not respond or cease its

infringing activity. Since filing the present suit, Defendant has once again failed to

respond to the Complaint.

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III.

THIS COURT SHOULD AWARD TREBLE DAMAGES AND


ATTORNEYS FEES

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As stated above, under 35 U.S.C. 284, upon a finding of patent

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infringement by the court, the patent holder is entitled to compensatory damages,

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which includes at least reasonable royalties together with interest and costs fixed

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by the court. Further, under 35 U.S.C. 285, reasonable attorneys fees may be

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awarded in exceptional cases to the prevailing party. Courts have interpreted this

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language to include treble damages when appropriate under the totality of

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circumstances. Further, exceptional situations include when infringers conduct

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is found to be willful.

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A. Treble Damages Are Appropriate For Continuing Patent


Infringement Despite Notice
Courts have found that treble damages are to be awarded if the defendants

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infringing behavior is willful. See Read Corp. v. Portec, Inc., 970 F.2d 816, 826

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(Fed. Cir. 1992). In Read, the defendant infringers device infringed upon each

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PLAINTIFFS SUPPLEMENTAL BRIEF
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Case 2:14-cv-05097-GW-AGR Document 24 Filed 01/14/16 Page 4 of 8 Page ID #:146

patent held by plaintiff and the device contained all but one of the limitations

specified in the claims and one limitation that was not literally met was met

equivalently. Id. at 820. As such, a jury found the infringement to have been

willful. Id. at 821.

Although on appeal, the court found the infringement to not have been

willful, the lower courts definition for willfulness still stands. The lower court

defined willful as the infringer acted in wanton disregard of the

patentee's patent rights. Id. at 826. Once willfulness has been established, it is to

the discretion of the trial court to determine the extent of enhancement of damages

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but in any event, an award may be increased up to three times the compensatory

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damages amount. Lost profits are the preferred method of ascertaining damages.

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IPVX Patent Holdings, Inc. v. Taridium, LLC, No. 12-CV-5251 KAM SMG, 2014

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WL 4437294, at *4 (E.D.N.Y. Aug. 6, 2014) report and recommendation adopted,

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No. 12-CV-5251 KAM SMG, 2014 WL 4437307 (E.D.N.Y. Sept. 9, 2014).

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However, if lost profits are unavailable to be determined, the minimum statutory

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recovery is the amount of reasonable royalty due to the patentee by the infringer. Id.

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The Court in Read provided nine factors to be considered in determining

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whether to increase the damages for patent infringement. Read, supra, 970 F.2d

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816 at 827. These include: (1) whether the infringer deliberately copied the designs

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of the patentee, (2) whether the infringer had knowledge of the patentees patent

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protection, investigated the scope of the patent, and formed a good faith belief that

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it was invalid or not infringed upon through the infringers acts, (3) the infringers

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litigation behavior, (4) defendants size and financial condition, (5) closeness of

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the case, that is, whether it is clear on the evidence, whether the infringer acted

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PLAINTIFFS SUPPLEMENTAL BRIEF
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Case 2:14-cv-05097-GW-AGR Document 24 Filed 01/14/16 Page 5 of 8 Page ID #:147

willfully, (6) duration of infringers misconduct in infringing, (7) any remedial

steps taken by infringer, (8) whether infringer had a motivation to harm the

patentee, and (9) whether defendant made attempts to hide misconduct. Id. at 827.

These factors aid the court in determining the degree of the infringers culpability

and thus, whether to award enhanced damages. Id. at 828. Further, a consideration

of these factors helps the court to decide to what extent the infringer should be

liable. Id.
The Federal Circuit Court of Appeals later delineated a two-step process for

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determining whether damages should be increased. Amini Innovation Corp. v.

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McFerran Home Furnishings, Inc., 301 F.R.D. 487, 490 (C.D. Cal. 2014) (citing

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Jurgens v. CBK, Ltd., 80 F.3d 1566, 1570 (Fed. Cir. 1996)). The first step entails a

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determination of whether infringer has engaged in conduct upon which increased

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damages may be based. Id. A consideration of the Read factors and a jurys finding

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of willfulness normally satisfy this step. See Jurgens, 80 F.3d 1566 at 1570. The

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second step is a determination of the amount of damages to be awarded based on a

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totality of the circumstances. Amini Innovation Corp., 301 F.R.D. 487 at 490.

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Overall, as stated in Read, the paramount determination in deciding to grant

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enhancement and the amount thereof is the egregiousness of the defendants

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conduct based on all the facts and circumstances. Read, supra, 970 F.2d 816 at

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826.

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Here, it is evident that Defendant was aware of its infringing conduct, and

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refused to cease such conduct or even respond to Plaintiffs requests. Prior to

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Plaintiffs retention of counsel, Plaintiff notified and requested that Defendant

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cease all infringing activity, but Defendant failed to respond and stop the

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PLAINTIFFS SUPPLEMENTAL BRIEF
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Case 2:14-cv-05097-GW-AGR Document 24 Filed 01/14/16 Page 6 of 8 Page ID #:148

infringement. Subsequently, on July 1, 2014, Plaintiffs counsel sent a cease and

desist letter to Defendant. However, Defendant did not respond or cease its

infringing activity. Since filing the present suit, Defendant has once again failed to

respond to the Complaint. As such, it is evident that Defendant was willfully

infringing upon Plaintiffs patent.

B. Plaintiffs Attorneys Fees Are Proper

Under 35 U.S.C. 284, a court is permitted to award attorneys fees

reasonable in amount under exceptional circumstances. The reasonableness of

attorneys fees is up to the discretion of the district court. Lam, Inc. v. Johns-

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Manville Corp., 718 F.2d 1056, 1068 (Fed. Cir. 1983). A determination of whether

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enhanced damages should be awarded goes hand in hand with a determination of

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whether attorney fees are also proper. As such, exceptional circumstances exist

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when the case involves a willful, intentional, and deliberate patent infringement.

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Am. Safety Table Co. v. Schreiber, 415 F.2d 373, 380 (2d Cir. 1969). It thus

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follows that if the court, in its discretion, has found willful conduct, attorney fees

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may be awarded in addition to enhanced damages.

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As stated above, Defendant was aware of its infringing conduct, and refused

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to cease such conduct or even respond to Plaintiffs requests. Prior to Plaintiffs

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retention of counsel, Plaintiff notified and requested that Defendant cease all

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infringing activity, but Defendant failed to respond and stop the infringement.

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Subsequently, on July 1, 2014, Plaintiffs counsel sent a cease and desist letter to

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Defendant. However, Defendant did not respond or cease its infringing activity.

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Since filing the present suit, Defendant has once again failed to respond to the

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PLAINTIFFS SUPPLEMENTAL BRIEF
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Case 2:14-cv-05097-GW-AGR Document 24 Filed 01/14/16 Page 7 of 8 Page ID #:149

Complaint. As such, it is evident that Defendant was willfully infringing upon

Plaintiffs patent.
In determining whether the amount of attorney fees sought is reasonable,

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there must be some evidence to substantiate the billing rate and the number of

hours expended. Codex Corp. v. Milgo Electronic Corp., 717 F.2d 622 at 631632

(1st Cir.1983), aff'g Codex Corp. v. Milgo Electronic Corp., 541 F.Supp. 1198

(D.Mass.1982). Attached hereto, is a declaration of the hours expended on this

case.
IV.

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CONCLUSION

For the above reasons, Plaintiff respectfully requests this court to award

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treble damages in the amount of $100,000.00 and attorney fees in the amount of

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$3,300.00.

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DATED: 1/14/16

Respectfully submitted,

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Attorney for JAT WHEELS, INC.

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PLAINTIFFS SUPPLEMENTAL BRIEF
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Case 2:14-cv-05097-GW-AGR Document 24 Filed 01/14/16 Page 8 of 8 Page ID #:150

CERTIFICATE OF SERVICE

I hereby certify that on January 14, 2016, a copy of the foregoing Motion
For Entry of Default Judgment was filed electronically and served on the
Parties in this action addressed as:

DB Motoring Group 13000 NW 45th Ave. Opa-locka, FL 33054

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[X ] BY MAIL: by placing the document(s) listed above in a sealed


envelope(s) and depositing the sealed envelope(s) with the United States
Postal Service with the postage fully prepaid.
I declare, under penalty of perjury under the laws of the State of California,
that the foregoing is true and correct. Executed on January 14, 2016, at Los
Angeles, California.
/s/ Leontyne Fan

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PLAINTIFFS SUPPLEMENTAL BRIEF


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Case 2:14-cv-05097-GW-AGR Document 24-1 Filed 01/14/16 Page 1 of 2 Page ID #:151

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Tommy SF Wang (SBN: 272409)


Leontyne Fan (SBN: 285042)
YANG & WANG, P.C.
355 S. Grand Ave., Suite 2450
Los Angeles, CA 90071
Telephone: (888) 827-8880
Facsimile: (888) 827-8880
Email: twang@yangwanglaw.com; lfan@yangwanglaw.com
Attorneys for Plaintiff
JAT WHEELS, INC.

UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA

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JAT WHEELS, INC.,

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Plaintiff,

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vs.

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DB MOTORING GROUP, INC.

Case No.: 14-CV-05097-GW-AGRx


DECLARATION OF TOMMY SF
WANG IN SUPPORT OF
ATTORNEYS FEES

Defendant.

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I, Tommy SF Wang, declare that the following is true and correct, and if

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called as a witness, I could competently testify to the matters herein which are

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within my personal knowledge:

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1.

I am an attorney licensed to practice in the State of California and the

Central District of California, and my bar number is 272409.


2.

I am the managing partner of the law firm Yang & Wang, P.C. located

at 355 S. Grand Ave., Suite 2450, Los Angeles, CA 90071.

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DECLARATION
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Case 2:14-cv-05097-GW-AGR Document 24-1 Filed 01/14/16 Page 2 of 2 Page ID #:152

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3.

We are the counsel of record for the Plaintiff in this matter, JAT

Wheels, Inc. and were retained on or about June 25, 2014.


4.

On or about July 1, 2014, we drafted and issued a cease and desist

letter to Defendant DB Motoring Group, requesting that they cease the infringing

activity, and informing Defendant of the present suit.

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Our office did not receive a response from the Defendant.

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Our office has expended ten (11) hours on this matter, in drafting the

demand letter, the Complaint, the Request for Entry of Default, Motion for Default

Judgment, and the present Supplemental Brief.

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7.

As such, the total amount of attorneys fees incurred by the Plaintiff

on this matter is $3,300.00.


I declare under the penalty of perjury under the laws of the State of
California that the foregoing is true and correct.
DATED: 1/14/2016

By:

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DECLARATION
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Case 2:14-cv-05097-GW-AGR Document 24-2 Filed 01/14/16 Page 1 of 5 Page ID #:153

EXHIBIT 1

Case 2:14-cv-05097-GW-AGR Document 24-2 Filed 01/14/16 Page 2 of 5 Page ID #:154

Case 2:14-cv-05097-GW-AGR Document 24-2 Filed 01/14/16 Page 3 of 5 Page ID #:155

Case 2:14-cv-05097-GW-AGR Document 24-2 Filed 01/14/16 Page 4 of 5 Page ID #:156

Case 2:14-cv-05097-GW-AGR Document 24-2 Filed 01/14/16 Page 5 of 5 Page ID #:157