Professional Documents
Culture Documents
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25 or “SLIMC”) brings this Complaint for Patent Infringement (the “Complaint”) against Defendants
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Derby Spirits, LLC, (“Derby”), Sami Omar (“Omar”) and Jeffrey Tomastik (“Tomastik”;
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collectively, “Defendants”). In support of the Complaint, Plaintiff alleges as follows:
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Case 2:19-cv-01148 Document 1 Filed 07/01/19 Page 2 of 8
2 INTRODUCTION
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1. This action is brought pursuant to Title 35 of the United States Code, in which
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Plaintiff SLIMC complains of Defendants’ infringement of a duly and validly issued design patent,
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United States Design Patent No. D544,361 (the “’361 patent”), which claims the ornamental design
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7 for a bottle as disclosed and described therein. Plaintiff owns all rights, title and interest to the
9 2. The infringing product at issue is a product sold as Ambros Banana Whiskey (the
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“Infringing Product”). Upon information and belief, the Infringing Product is sold in this District
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and in several other states through this country. The infringing activities complained of herein are
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done by Defendants without permission or license from Plaintiff.
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3. Defendants’ infringing acts as complained of herein have caused and are causing
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15 Plaintiff irreparable harm and injury. Plaintiff will continue to suffer substantial loss and irreparable
16 harm unless and until Defendants are permanently enjoined from the infringing acts complained of
17 in this Complaint.
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4. The infringing acts of Defendants complained of herein are, and have been, willful
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and deliberate.
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JURISDICTION AND VENUE
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22 5. This is a civil action for patent infringement arising under the patent laws of the
24 6. This Court has subject matter jurisdiction over the subject matter of the Complaint
25 pursuant to 28 U.S.C. §§ 1331 and 1338.
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7. This Court has personal jurisdiction over Derby because: (a) it is a limited liability
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company registered with the Nevada Secretary of State; (b) has its principal place of business in
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Case 2:19-cv-01148 Document 1 Filed 07/01/19 Page 3 of 8
1 this District and (c) intentionally conducts business in this District. This Court also has personal
2 jurisdiction over Derby based upon Derby’s infringing acts of importing, manufacturing,
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advertising, displaying, offering for sale and/or selling the Infringing Product.
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8. This Court has personal jurisdiction over Omar because he: (a) resides in this
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District and (b) regularly and intentionally conducts business in this District. This Court also has
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7 personal jurisdiction over Omar based upon his infringing acts of importing, manufacturing,
8 advertising, displaying, offering for sale and/or selling the Infringing Product.
9 9. This Court has personal jurisdiction over Tomastik because he: (a) resides in this
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District and (b) regularly and intentionally conducts business in this District. This Court also has
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personal jurisdiction over Tomastik based upon his infringing acts of importing, manufacturing,
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advertising, displaying, offering for sale and/or selling the Infringing Product.
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10. Venue is proper in this District pursuant to 28 U.S.C. §§ 1391 and 1400(b) because
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15 each of the Defendants does business in this District, has committed acts of infringement in this
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1 16. The ’361 patent has been in force and effect since its issuance and has been assigned
2 to Plaintiff SLIMC.
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17. At all relevant times, SLIMC has been and still is, the owner of the entire right, title
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and interest in and to the ’361 patent.
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18. Defendants are marketing and offering to sell in the United States a product called
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7 Ambros Banana Whiskey, and that Infringing Product is imported, manufactured, advertised,
8 displayed, offered for sale and/or sold using a bottle design that infringes the ’361 patent. Reprinted
9 below and attached as Exhibit B is a side-by-side comparison of the design claimed in the ’361
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patent and the bottle design of the Infringing Product.
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19. Upon information and belief, the design for the Infringing Product was derived by
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one or all of the Defendants with knowledge of Plaintiff’s rights in the ’361 patent.
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20. On or about May 6, 2019, counsel for Plaintiff sent Derby, Omar and Tomastik a
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27 letter that stated, among other things, that the bottle used for the Infringing Product is substantially
28 similar and/or practically identical to the design claimed in the ’361 patent (the “Cease and Desist
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Case 2:19-cv-01148 Document 1 Filed 07/01/19 Page 5 of 8
1 Letter”). A copy of the ’361 patent was enclosed with the Cease and Desist Letter. A copy of the
2 Cease and Desist Letter is attached as Exhibit C.
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21. On May 13, 2019 counsel for Defendant Derby sent an email to counsel for Plaintiff
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stating in pertinent part “Our client requested that we investigate the claims set forth in your letter
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dated May 6, 2019. As such, we are currently evaluating this matter and will respond substantively
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7 shortly.” A copy of the email in issue is attached as Exhibit D. To date, no such response has been
9 22. Upon information and belief, Defendants all have knowledge of the ’361 patent and
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have had that knowledge prior to the date of the Complaint.
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23. Upon information and belief, Defendants are conducting their infringing activities
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with respect to the Infringing Product with knowledge of the ’361 patent.
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24. None of the Defendants has a license to the ’361 patent. None of the Defendants
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15 has permission to utilize the design claimed and disclosed in the ’361 patent for the Infringing
23 27. The ’361 patent has been in force and effect since its issuance by the United States
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Case 2:19-cv-01148 Document 1 Filed 07/01/19 Page 6 of 8
1 29. Defendants have been, are and will be infringing the ’361 patent by importing,
2 making, using, selling, and/or offering to sell the Infringing Product in the United States without
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permission or license from Plaintiff.
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PRAYER FOR RELIEF
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WHEREFORE, Plaintiff prays that judgment be entered by this Court for Plaintiff and
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8 A. That Defendants have infringed and are infringing the ’361 patent;
15 Defendants in an amount not less than a reasonable royalty pursuant to 35 U.S.C. § 284, or
22 destroyed;
24 G. For interest on said damages at the legal rate from and after the date such damages were
25 incurred;
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H. That this is an exceptional case and for an award of Plaintiff’s attorney fees and costs and
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I. For such other and further relief as this Court may deem just and proper.
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Case 2:19-cv-01148 Document 1 Filed 07/01/19 Page 7 of 8
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Case 2:19-cv-01148 Document 1 Filed 07/01/19 Page 8 of 8
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Dated: July 1, 2019 Respectfully submitted,
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Case 2:19-cv-01148 Document 1-1 Filed 07/01/19 Page 1 of 5
EXHIBIT A
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Case 2:19-cv-01148 Document 1-1 Filed 07/01/19 Page 4 of 5
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Case 2:19-cv-01148 Document 1-2 Filed 07/01/19 Page 1 of 3
EXHIBIT B
Case 2:19-cv-01148 Document 1-2 Filed 07/01/19 Page 2 of 3
Case 2:19-cv-01148 Document 1-2 Filed 07/01/19 Page 3 of 3
Case 2:19-cv-01148 Document 1-3 Filed 07/01/19 Page 1 of 3
EXHIBIT C
Case 2:19-cv-01148 Document 1-3 Filed 07/01/19 Page 2 of 3
• •
SL.I ~tl( l1as in\·cslccl co11siclc ral)IC' ti111C', <' 0 <>11, a1Hl <) tl1e r rcsot1 rrcs i11 tl1C" (le\·clo r)111c- 11t o r i1111()\·ati\'<'
l) ra11cl a11cl 111a rkc- ti11~ (' () Il C<' f) t s . rl'c) 1>r<) tC'r t it s i11tc llec tt1cd J)l'C) l)C' rt y a 11cl i11, ·est111c 11t, <)tt r clic11t lt tl ~ <)l)ta i11e<l
l ' .S. D es ig11 l)atc 11t ~ <) . 1) 5 {.-t.,3(i l , a cu f))' o f ,vl1icl1 is e11closccl l1e re,\~tl1.
lt l1 ~1s . co111<"
rece 11u,, (<) o,1r clie 11ts' attc11tio 11 tl1at at least t,l1e l)ottlc .yo tt t1sc i11 C'<) 1111ecrjo 11 ,vitl1 .\'()t t r
t\ 1r1l>rC,:> l~t111a11a \.i\l l1iskc}', is st1bsta11tia lly si111ilar, a11cl i11 [~1ct J)t'actirally icl 11tical, to il 1e (lL·si~11 sl1c)\V11 i11 \. ,t 1r
clie 1: t 's l .J .S. D esig11 Pate 11t No. 1)5..1, t.,361 a 11cl l1e11ce infri11gc <) Lt r clic 11l's ri9.;l1ts pt1rsLta 111 to 35 l ;.S. (". §§ 27 1.
28 1, 28~). ln1 a~cs o f \'C)11r l)<> ttle al<)tt ~sicle dra,vi119.;s o f c) ur cli<'11t 's [)atc 11t arc rc1)ri11t rcl l)c l<),,~:
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Case 2:19-cv-01148 Document 1-3 Filed 07/01/19 Page 3 of 3
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SLI\1C, it "voulcl be l1el1)l11l if y·ot1 coulcl {)lease gi\,e tis so1ne i11sigl1t i11to )'Ot1r r~~1sons.
\!\'e ha,,~ marke(i tl1is 111atter for fo llc),V-llp ()0 11t May 2019 a11d lc)ol<. fo r,varcl lo f(~('e· i,·i11~· )'()tlr
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2
Case 2:19-cv-01148 Document 1-4 Filed 07/01/19 Page 1 of 2
EXHIBIT D
Case 2:19-cv-01148 Document 1-4 Filed 07/01/19 Page 2 of 2
Christian W. Liedtke
Our firm represents Derby Spirits, LLC in intellectual property matters. Our client requested that we investigate the
claims set forth in your letter dated May 6, 2019 (attached). As such, we are currently evaluating this matter and will
respond substantively shortly. In the meantime, we request that you kindly direct all correspondence to my attention.
Sincerely,
Peter H. Ajemian
Brownstein Hyatt Farber Schreck, LLP
100 North City Parkway, Suite 1600
Las Vegas, NV 89106
702.464.7003 tel
pajemian@bhfs.com
STATEMENT OF CONFIDENTIALITY & DISCLAIMER: The information contained in this email message is attorney privileged
and confidential, intended only for the use of the individual or entity named above. If the reader of this message is not
the intended recipient, you are hereby notified that any dissemination, distribution or copy of this email is strictly
prohibited. If you have received this email in error, please notify us immediately by calling (303) 223-1300 and delete
the message. Thank you.
1
Case 2:19-cv-01148 Document 1-5 Filed 07/01/19 Page 1 of 2
Case 2:19-cv-01148 Document 1-5 Filed 07/01/19 Page 2 of 2
Case 2:19-cv-01148 Document 1-6 Filed 07/01/19 Page 1 of 2
)
)
)
)
Plaintiff(s) )
)
v. Civil Action No.
)
)
)
)
)
Defendant(s) )
Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
whose name and address are:
If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
You also must file your answer or motion with the court.
CLERK OF COURT
Date:
Signature of Clerk or Deputy Clerk
Case 2:19-cv-01148 Document 1-6 Filed 07/01/19 Page 2 of 2
PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
I left the summons at the individual’s residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date) , and mailed a copy to the individual’s last known address; or
Other (specify):
.
Date:
Server’s signature
Server’s address
)
)
)
)
Plaintiff(s) )
)
v. Civil Action No.
)
)
)
)
)
Defendant(s) )
Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
whose name and address are:
If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
You also must file your answer or motion with the court.
CLERK OF COURT
Date:
Signature of Clerk or Deputy Clerk
Case 2:19-cv-01148 Document 1-7 Filed 07/01/19 Page 2 of 2
PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
I left the summons at the individual’s residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date) , and mailed a copy to the individual’s last known address; or
Other (specify):
.
Date:
Server’s signature
Server’s address
)
)
)
)
Plaintiff(s) )
)
v. Civil Action No.
)
)
)
)
)
Defendant(s) )
Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
whose name and address are:
If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
You also must file your answer or motion with the court.
CLERK OF COURT
Date:
Signature of Clerk or Deputy Clerk
Case 2:19-cv-01148 Document 1-8 Filed 07/01/19 Page 2 of 2
PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
I left the summons at the individual’s residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date) , and mailed a copy to the individual’s last known address; or
Other (specify):
.
Date:
Server’s signature
Server’s address