Spanx - Amended Complaint (N.D. Ga.)

7/28/2019 Spanx - Amended Complaint (N.D. Ga.)

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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF GEORGIA

ATLANTA DIVISION

SPANX, INC., )

)

Plaintiff, ) Civil Action

)

v. ) No. 1:13-cv-00710-WSD

)

TIMES THREE CLOTHIER, LLC )

d/b/a Yummie Tummie, ))

Defendant. )

FIRST AMENDED COMPLAINT

FOR DECLARATORY RELIEF

Plaintiff Spanx, Inc. (Spanx) alleges as follows for its amended complaint

against Times Three Clothier d/b/a Yummie Tummie (Yummie Tummie):

PARTIES

1. Plaintiff Spanx is a Georgia corporation with its principal place ofbusiness at 3344 Peachtree Road, NE, Suite 1700, Atlanta, Georgia 30326. Spanx

is an apparel company that designs and manufactures, among other things,

undergarments, slimming apparel and shapewear, hosiery, swimsuits, and

activewear.

Case 1:13-cv-00710-WSD Document 20 Filed 06/06/13 Page 1 of 11


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2. On information and belief, Defendant Yummie Tummie is a NewYork Limited Liability Company with its principal place of business at 561

Seventh Avenue, 12th Floor, New York, New York 10018. On information and

belief, Yummie Tummie manufactures and sells bodyshaping undergarments and

apparel.

JURISDICTION AND VENUE

3. This action arises under the patent laws of the United States, Title 35of the United States Code, 1 et seq., with a specific remedy sought under the

Federal Declaratory Judgment Act, 28 U.S.C. 2201 and 2202. An actual,

substantial, and continuing justiciable controversy exists between Spanx and

Yummie Tummie that requires a declaration of rights by this Court.

4. This Court has subject matter jurisdiction over this action pursuant to28 U.S.C. 1331 and 1338(a).

5. This Court has personal jurisdiction over Yummie Tummie by virtueof Yummie Tummies purposeful contact with this district, including, on

information and belief, Yummie Tummies substantial business conducted with

customers residing in this district; and Yummie Tummies attempts to enforce

design patents purportedly assigned to it against Spanx, an entity having a principal

place of business in Georgia, for alleged infringing activity occurring in Georgia.



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6. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391.FACTUAL BACKGROUND

7. Defendant Yummie Tummie claims to be the owner by assignment ofU.S. Design Patent Nos.D606,285S (the 285 Patent, copy attached hereto as

Exhibit A), D616,627S (the 627 Patent, copy attached hereto as Exhibit B),

D632,051S (the 051 Patent, copy attached hereto as Exhibit C), D632,052S

(the 052 Patent, copy attached hereto as Exhibit D), D632,053S (the 053

Patent, copy attached hereto as Exhibit E), D622,477S (the 477 Patent, copy

attached hereto as Exhibit F), and D623,377S (the 377 Patent, copy attached

hereto as Exhibit G) (collectively, the Originally Asserted Patents).

8. Defendant Yummie Tummie also claims to be the owner byassignment of U.S. Design Patent Nos. D665,558S (the 558 Patent, copy

attached hereto as Exhibit H) and D666,384S (the 384 Patent, copy attached

hereto as Exhibit I) (collectively, the Newly Asserted Patents). Together, the

Originally Asserted Patents and the Newly Asserted Patents are referred to herein

as the Patents-in-Suit.

9. The Patents-in-Suit are related to one another in that the 627 Patent,the 051 Patent, the 052 Patent, the 053 Patent, the 477 Patent, the 377 Patent,

the 558 Patent, and the 384 Patent all claim priority to the 285 Patent.



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10. Each of the Patents-in-Suit identifies Heather Thompson Schindler asthe sole inventor.

11. On or about January 18, 2013, Yummie Tummie (through counsel)contacted Spanx by letter, informing Spanx that Yummie Tummie is the owner of

the Originally Asserted Patents, enclosing a copy of the Originally Asserted

Patents, and stating that Spanx is making, offering for sale and selling shapewear

products in the United States that contain Yummies patented designs and that

the Spanx products appear substantially the same as the patented designs from the

point of view of an ordinary observer, thereby, constituting design patent

infringement. In its January 18 letter, Yummie Tummie identified the allegedly

infringing Spanx products as including The Total Taming Tank A226764, also

known as The Spanx Total Taming Tank, the Top This Tank Style 1847 and The

Top This Cami Style 1846 (collectively, the Accused Products). Yummie

Tummie further noted in its letter that it vigorously enforces the rights in its

patents, referenced patent infringement litigation it recently settled with

Maidenform, and demanded, among other things, that Spanx cease manufacturing,

offering for sale, and selling the Accused Products.

12. On or about February 14, 2013, Spanx (through counsel) responded toYummie Tummies January 18, 2013 letter, describing in detail significant



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differences between the Accused Products and the Originally Asserted Patents and

stating, among other things, that it does not believe the Accused Products infringe

the Originally Asserted Patents.

13. Since Yummie Tummie contacted Spanx in January 2013, counsel forSpanx and Yummie Tummie have communicated on several occasions by

telephone and in writing concerning the Originally Asserted Patents. During these

telephone conferences, Yummie Tummie continued to maintain that the Accused

Products infringe the Originally Asserted Patents and expressed its willingness to

enforce its patents against Spanx.

14. On April 2, 2013, a month after Spanx initially brought this action fordeclaratory relief, Yummie Tummie filed suit against Spanx in the Southern

District of New York, asserting that the Accused Products infringe the Newly

Asserted Patents and all but three the 051 Patent, the 052 Patent, and the 053

Patent of the Originally Asserted Patents. Spanx has denied infringement in the

New York action and has also asserted that the parties dispute should not proceed

in New York but in this, the first-filed court, the Northern District of Georgia.

15. As a result of Yummie Tummies previous and continued assertionsthat Spanx is infringing the Patents-in-Suit, and Spanxs denial of the same, an

actual and justiciable controversy exists between the parties of sufficient



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immediacy and reality to warrant issuance of a declaratory judgment under 28

U.S.C. 2201 and 2202 as to the alleged infringement and invalidity of the

designs claimed in the Patents-in-Suit.

FIRST CLAIM FORRELIEF

(DECLARATORY JUDGMENT OF NON-INFRINGEMENT

OF THE PATENTS-IN-SUIT)

16. Spanx restates and incorporates by reference the allegations inparagraphs 1 through 15 above.

17. An actual controversy has arisen and now exists between the partieswith respect to the alleged infringement of the Patents-in-Suit. Spanx contends

that Spanxs products, including The Total Taming Tank A226764, also known as

The Spanx Total Taming Tank, the Top This Tank Style 1847, and The Top This

Cami Style 1846 have not infringed and do not infringe any valid claim of the

Patents-in-Suit. Upon information and belief, Yummie Tummie currently disputes

these contentions as to the Newly Asserted Patents and as to all but three the

051 Patent, the 052 Patent, and the 053 Patent of the Originally Asserted

Patents.

18. As to the 051 Patent, the 052 Patent and the 053 Patent, YummieTummie, in its answer filed in this action on May 13, 2013, admitted that the

Accused Products do not infringe any valid claim of the 051 Patent, the 052



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Patent and the 053 Patent. (Yummie Tummie Georgia Action Answer &

Counterclaims, 15 (Dkt-17 filed May 13, 2013)). The 051 Patent, the 052

Patent and the 053 Patent were asserted against Spanx as recently as Yummie

Tummies January 18, 2013 letter, which charges Spanx with infringement.

Yummie Tummie has not provided any explanation as to why the Accused

Products were claimed to infringe the 051 Patent, the 052 Patent and the 053

Patent in January 2013 but claimed not to infringe the 051 Patent, the 052 Patent

and the 053 Patent in May 2013. Yummie Tummie also has not provided or

offered any covenant not to sue Spanx with respect to its previously asserted

claims that the Accused Products infringe the 051 Patent, the 052 Patent and the

053 Patent. Accordingly, an additional actual, substantial, and continuing

justiciable controversy exists between Spanx and Yummie Tummie that requires a

declaration of rights by this Court regarding the 051 Patent, the 052 Patent and

the 053 Patent. Pursuant to 28 U.S.C. 2201 and 2202, a judicial determination

of the respective rights of the parties with respect to the alleged infringement of the

Patents-in-Suit is necessary and appropriate under the circumstances.



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SECOND CLAIM FORRELIEF

(DECLARATORY JUDGMENT OF INVALIDITYOF THE PATENTS-IN-SUIT)

19. Spanx restates and incorporates by reference the allegations inparagraphs 1 through 18 above.

20. Spanx contends that the Patents-in-Suit are invalid for failure to meetone or more of the conditions of patentability specified in 35 U.S.C. 102, 103,

112, and/or 171. Upon information and belief, Yummie Tummie disputes these

contentions.

21. Pursuant to 28 U.S.C. 2201 and 2202, a judicial determination ofthe respective rights of the parties with respect to the alleged invalidity of the

Patents-in-Suit is necessary and appropriate under the circumstances.

PRAYER FORRELIEF

WHEREFORE, Spanx prays for relief as follows:

A. For a judicial declaration that Spanx does not infringe any valid claimof U.S. Design Patent Nos.D606,285S, D616,627S, D632,051S, D632,052S,

D632,053S, D622,477S, D623,377S, D665,558S, and D666,384S; and



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B. For a judicial declaration that U.S. Design Patent Nos.D606,285S,D616,627S, D632,051S, D632,052S, D632,053S, D622,477S, D623,377S,

D665,558S, and D666,384S are invalid; and

C. For an order awarding Spanx its costs, expenses, and reasonableattorneys fees as provided by law; and

D. For such other and further relief as the Court deems just and proper.JURY DEMAND

Spanx demands a trial by jury on all issues so triable as a matter of right and

law.

Respectfully submitted, this 6th day of June, 2013.

KING&SPALDINGLLP

s/ Natasha H. Moffitt

Natasha H. Moffitt

(Georgia Bar No. 367468)

Laura S. Huffman

(Georgia Bar No. 595909)

1180 Peachtree Street, N.E.

Atlanta, Georgia 30309-3521

Telephone: (404) 572-4600

Facsimile: (404) 572-5134

E-mail: [email protected]: [email protected]

Kathleen E. McCarthy

(admittedpro hac vice)

1185 Avenue of the Americas

New York, New York 10036



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Telephone: (212) 556-2345

E-mail: [email protected]

Attorneys for Plaintiff

SPANX, INC.



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CERTIFICATE OF SERVICE

I hereby certify that on this day, I electronically filed the foregoing FIRST

AMENDED COMPLAINT FOR DECLARATORY RELIEF with the Clerk of

Court using the CM/ECF system, which will send notification of such filing to

Defendants counsel of record:

Theodore H. Davis Jr.

Kilpatrick Townsend & Stockton LLP

1100 Peachtree StreetSuite 2800

Atlanta, GA 30309

Steven B. Pokotilow

Laura Goldbard George

Binni N. Shah

Stroock Stroock & Lavan

180 Maiden Lane

New York, NY 10038-4982

This 6th day of June, 2013.

s/ Natasha H. Moffitt

Natasha H. Moffitt



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Case 1:13-cv-00710-WSD Document 20-1 Filed 06/06/13 Page 1 of 7


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Case 1:13 cv 00710 WSD Document 20 9 Filed 06/06/13 Page 11 of 11

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Spanx - Amended Complaint (N.D. Ga.)

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