Date post: | 02-Jun-2018 |
Category: |
Documents |
Upload: | sarah-burstein |
View: | 220 times |
Download: | 0 times |
of 58
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
1/58
UNITED STATES
DISTRICT
COURT
FOR
THE SOUTHERN DISTRICT OF NEW
XSTATIC PRO INC., a New York corporation
dba XSTATIC
PRO
LIGHTING dba PRO X dba
PROX dba PRO X DIRECT dba PROX DIRECT
dba
PRO
X CASES dba PROX CASES,
Plaintiff,
v
HSIAO & MONTANO, INC., a California
corporation dba
ODYSSEY INNOVATIVE
DESIGNS,
Defendant.
7
Tl CV 9890
Cas e No :
COMPLA INT
DEMAND FOR JURY TR IAL
r .1
>-r\
PlaintiffXstatic Pro
Inc.
dbaXstatic Pro Lighting dba ProX dbaProXdba ProX, S
Direct
dbaProX
Direct
dbaProX
Cases
dbaProX Cases ( ProX Cases ), for its
~
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
2/58
of ProX Cases and Odyssey are citizens of different states, and the amount in controversy
exceeds, 75,000,
exclusive
of interests and costs.
2. This Court possesses general personal jurisdiction over Defendant Hsiao
& Montano, Inc.
dba
Odyssey Innovative Designs ( Odyssey ), pursuant to N.Y.
C.P.L.R. 301, because Odyssey is engaged in such a continuous and systematic course
of
doing
business in
New
York as to warrant finding it present in the jurisdiction. In
addition, this Court possesses personal jurisdiction over Odyssey, pursuant to N.Y.
C.P.L.R. 302(a)(1), because Odyssey transacts business within this state, including in
this judicial district,
and
contracts to supply goods or services in the state, including in
this judicial district. Without limitation, Odyssey sells and distributes DJ cases and
related products through authorized dealers in New York and throughout the United
States. This Court also possesses personal jurisdiction over Odyssey, pursuant to N.Y.
C.P.L.R. 302(a)(2) and/or (3), as
Odyssey's
tortious acts enumerated herein have been
committed in the
State
of
New York, or
have
been committed
outside of
New
York bu t
caused injury to person or property within the State ofNew York. That is, the result of
Odyssey's tortious acts has caused injury to plaintiffProX Cases in New York.
3. Venue is proper in this District under 28 U.S.C. Sections 1391(a) and (b)
and 1400(a), since Odyssey resides or
may
be found in this District
and
a substantial
portion
of
the misconduct by Odyssey here alleged occurred in this District.
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
3/58
THE
PART IES
4. PlaintiffXstatic Pro Inc. dbaXstatic ProLighting dbaProX dba ProXdba
Pro
XDirect dba
ProX
Direct dba
Pro
XCases dba
ProX Cases ( ProX Cases )
isaNew
York corporation
having
a
place
of
business
at
901 Essex
St,Brooklyn, NewYork
11208.
5. ProX Cases is a manufacturer and distributor ofDJ cases and related DJ
equipment. ProX
Cases
displays
its
products
at
trade
shows,
and distributes
its
products
via a network o f
customers/retailers.
6.
Defendant
Hsiao
&
Montano,
Inc.
dba
Odyssey
Innovative
Designs
( Odyssey ) is a California corporation with a business address at 809 W. Santa Anita
St., San Gabriel, California 91776.
7. Odyssey manufactures and distributes DJ cases and related DJ products in
direct competition with ProX Cases. Odyssey
distributes
itsDJcases
and
related
products
through
authorized dealers
located
throughout the
United
States, including inNew
York.
F AC TS COMMON TO
ALL CLAIMS
8. Odyssey claims to be the owner by assignment
of
United States Patent No.
7,614,521 ( the '521 patent).
9. Odyssey also claims to be the owner by assignmentof United States
DesignPatentNo.D643,213 ( the '213 designpatent ).
10. Odyssey has assertedto various entities, includingProXCases and its
customers/retailers, that certain of ProXCases' products infringeoneor more claimsof
the '521 patent and/or the '213 design patent.
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
4/58
11. In particular, Odyssey caused the removal of all of ProX Cases' products
from the DJ Expo 2012 trade show in August 2012 in Atlantic City, New Jersey by
communicating its false allegations of patent infringement
of
the '521 patent and/or the
'213 design patent to DJ Expo 2012 personnel who subsequently expelled ProX Cases
f rom t he t ra de s how.
12. Even before the removal of all of ProX Cases' products, Odyssey's false
allegations of patent infringement forced ProX Cases to use the time it would have spent
answering customer questions about its products, instead fending of f
Odyssey's
false
allegations. The result
of
all thisOdyssey's false allegations and ProX Cases having to
address themresulted in a bad impression of ProX Cases among show attendees.
13. In addition, Odyssey contac ted cer ta in ProX Cases' customers/retailers
advising them that certain
of
ProX Cases' products infringe the '521 patent and/or the
'213 design patent, thereby causing those ProX Cases' customers/retailers to cease
purchasing and/or offering for sale ProX Cases' products.
14. Odyssey not only disparaged ProX Cases' products but also threatened
ProX Cases' customers/retailers with infringement actions if those ProX Cases'
customers/retailers sold ProX Cases' allegedly infringing products and even refused to
provide Odyssey products to those ProX Cases' customers/retailers for sale to end users
if
those ProX Cases' customers/retailers were also stocking or advertising ProX Cases'
products.
15. By letter dated December 18, 2012, counsel for ProX Cases provided
counsel for Odyssey with a detailed non-infringement analysis for the '521 patent, clearly
showing that ProX Cases' products do not infringe any claim
of
the '521 patent, either
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
5/58
literally or under the doctrine
of
equivalents. (A copy
of
the December 18, 2012 letter is
attached as Exhibit A).
16. By letter dated July 9, 2013, in response to a February 3, 2013 letter from
Odyssey's counsel to ProX Cases, counsel for ProX Cases provided counsel for Odyssey
with a non-infringement analysis for the '213 design patent, clearly showing that the
accused ProX Cases' products do not infringe the '213 design patent. Counsel for ProX
Cases also provided an invalidity analysis for the '213 design patent, clearly showing that
the '213 design patent is invalid as anticipated by or obvious over prior art designs. (A
copy of the July 9, 2013 letter is attached as Exhibit B).
17. Moreover, no good faith analysis could have provided Odyssey a basis for
believing that ProX Cases' products infringe the '521 or '213 patents.
18. Certainly, after seeing ProX Cases' non-infringement analysis, Odyssey
could not have a good faith beliefthat ProX Cases' products infringe any claim
of
the
'521 patent.
19. Certainly, after seeing ProX Cases' non-infringement and invalidity
analyses, Odyssey could not have a good faith beliefthat ProX Cases' products infringe
the '213 design patent.
20. Indeed, in light of the extent
of
ProX Cases' non-infringement positions as
set forth in the December 18, 2012 and July 9, 2013 letters, respectively, no reasonable
reading of the '521 patent and the '213 design patent could lead one to believe that ProX
Cases' products infringed either ofOdyssey's patents.
21. Importantly, at no point did Odyssey or its counsel respond to either the
December 18, 2012 letter or the July 9, 2013 letter. That is, neither Odyssey nor its
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
6/58
counsel ever attempted to refute ProXCases' proofof patentnon-infringement and(in
the case of the '213 design patent) invalidity.
22. Both before and subsequent to the December 18, 2012 and July 9, 2013
letters, Odyssey threatenedProXCases' customer/retailers that Odysseywouldnot allow
those customers/retailers to stock Odyssey's products if they continued to sell ProX
Cases' products, which Odyssey continues to assert infringe the '521 patent and/or the
'213 design patent.
23. In addition, at least one customer/retailer of ProXCaseswas cut off' by
Odyssey for refusingto complywithOdyssey's demandto stop sellingProXCases
products.
24. On July 8, 2013, after Odyssey had been provided with the December
2012 non-infringement analysis for the '521 patent, CarlosGonzalezof Odysseyemailed
one of ProX Cases' customers/retailers, KPODJ, advising it to remove links to three
of
ProXCases' products from its website, saying I prefer you hearing this fromme before
our legal teamget involved. Please remove the following links
from
yourwebsite as they
arepatent infringement products. WhenProXCases' customer/retailer askedwhyProX
Cases' products allegedly infringedOdyssey's (unidentified) patent, Gonzalez (on behalf
ofOdyssey) replied, Anything that has a slidemechanism ontheir case is a patent
infringement. (Copyof July 8, 2013 email stringat ExhibitC).
25. As set forth in the December 2012non-infringement analysis, the presence
of a slidemechanism, alone, in the claimsof the '521 patent the onlyone of the
Odyssey patents claiming anything relating to a slide mechanism is insufficient to
give rise to a claim for patent infringement.
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
7/58
26. As set forth in the December 2012 analysis, and as shown in the claims of
the '521 patent itself (copy at Exhibit D), independent claim 1 of the '521 patent requires,
inter alia:
a slider member channel assembly.. .having at least one safety stop hole
positioned nearest to the terminal end of the upper slider member channel
therein, said hole disposed below and opposing said continuous flange...
(Exhibit D, col. 6, lines 7-11).
27. Independent claim 23 of the '521 patent includes the steps of, inter alia:
providing a lower box having a lower slider member channel fastened to
each upper side edge thereof, said member having a continuous flange
projecting therefrom and a recessed hole positioned therein, said spring
loaded metal ball extending there-through said lower slider
member
channel in stationary and transitional positions, a stop hole positioned
therein near the extreme end of said member, said cantilever spring lever
extending there-through said slidermember channel when in use; and
providing an upper platform contained within the enclosure box having
an upper slider member channel fastened to side thereof, said upper slider
member channel having a continuous web channel projecting downward
therefrom and a stop hole positioned therein, said spring loaded metal ball
frictionally engaged with said upper slider member channel when in
stationary and transitional positions . (Exhibit D, col. 8, lines 27-43).
28. However, as set forth in the December 2012 non-infringement analysis,
ProX Cases' products do not infringe claim 1 of the '521 patent because:
while [ProX Cases'] Products may arguably be said to have a slider
member channel assembly comprising at least a first or upper slider
member
channel
and a second
or
lower
slider member channel
which
telescopically slides in the lower slider member channel in a longitudinal
axial direction, there can be no dispute that [ProX Cases'] Products lack
at least one safety stop hole positioned nearest to the terminal end of the
upper slider member channel therein, said hole disposed below and
opposing said continuous flange . As clearly seen in attached Exhibits A
and B, [ProXCases'] Products do not have any such safety stop holes
disposed in an upper slider member. (Exhibit A at p. 3).
29. Likewise, as set forth in the December 2012 analysis, ProX Cases'
products do not infringe claim 23
of
the '521 patent because:
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
8/58
[w]hile [ProX Cases'] Products may arguably be said to have lower and
upper slidermember channels, there can be no dispute that [ProX Cases']
Products lack a spring loaded metal ball extending through the lower
slider member channel, a stop hole positioned in the lower slider
member channel, a cantilever spring lever extending through the lower
slidermember channel , and a stop hole positioned in the upperslider
member channel.As clearly seen in attachedExhibits A and B, [ProX
Cases'] do not haveany suchfeatures in their lower or upper slider
member channels.
Further, the purpose of these structures, as described in the '521 patent, is
to lock the upper platformto the lower box and to provide stoppositions
of theupperplatform relative to the lowerbox.
However,
noneof [ProX
Cases'] Products have any such stop positions or any such means
of
locking the upper platformrelative to the lower box. In fact, in [ProX
Cases'] Products, the upper platform is not locked relative to the lower
box. Since each
of
the Accused Products is missing an identical or
equivalent part or step to evenonerequirement of oneof the independent
claimsof the '521 patent, noneof [ProX Cases'] Products can infringe
suchclaimsunderthedoctrine of equivalents. See, e.g.,Kustom Signals
Inc. v. Applied Concepts
Inc.
264 F.3d 1326, 1333 (Fed. Cir. 2001) ( No
claimed [limitation], or an equivalent thereof, can be absent if the doctrine
of equivalents is invoked. ). (Exhibit A at p. 4).
30. Accordingly, when Odyssey's representative contacted ProX Cases'
customer/retailer on July 8, 2013,Odyssey couldnot have hada good faith beliefthat
ProXCases' products infringe any claim
of
the '521 patent.
31. In fact, as set forth above, in light
of
ProX Cases' extensive non
infringement analysis, no reasonable reading of the 521 patent at any time could have
led to the conclusion thatany of ProXCases' products infringe one ormoreof the
patent's
claims.
32. As set forth
above,
Odyssey hasmadethe sale of its products conditional
on the
buyer
ProX Cases
customers/retailers
notdealing inthe goods of
Odyssey s
competitor, specifically ProX Cases.
33. In addition, on information and belief, Odyssey has also told its own
customers/retailers
thatit
owns one
or
more
patents allegedly covering its
own,
aswell as
8
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
9/58
ProXCases', products. As a result, Odyssey's customershave refused to market and sell
ProX
Cases products, resulting in
the
loss
of
several potential
new
customers/retailers by
ProX Cases.
34. Odyssey s requirement has
the
effect
of
substantially lessening
competition in the relevant market.
35.
ProX
Cases
is injured inits business as a result oftheOdyssey s anti
competitive actions.
36.
Importantly, although Odyssey has
spent
considerable time and expense
telling
ProX
Cases
customers/retailers,
and
others, that certain
of
ProX
Cases
products
infringe
Odyssey s patents, and although onAugust 11, 2014 Odyssey
commenced
an
action
inFederal court against ProX Cases
for,
inter alia trademark infringement,
Odyssey has never sued ProXCases for patent infringement.
37. Odyssey's actions above alleged, interfering withProXCases' business
relationships with its
customers/retailers,
were
solely
outof
malice
or through
dishonest,
unfair, or
improper means,
causing injury to those
business
relationships.
38. Odyssey's improper activities havedirectly andproximately caused harm
to ProX Cases .
39. Odyssey's improperactivities are likely to continue unless and until
enjoined by this Court.
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
10/58
COUNT
I
(VIOLATION OFSECTION
43 a
OFTHE LANHAM ACT, 15U.S.C. 1125 a
FALSE ADVERTISING)
40. ProX Cases repeats and realleges each allegation set forth above in
Paragraphs 1-39 as though fully set forth herein.
41. Thisclaim arises under the
Lanham
Act, 15U.S.C. 1051 et seq.
42. In light of the foregoing, Odyssey's statements to ProX Cases'
customers/retailers and
others,
that
certain
of
ProX
Cases' products
infringe
Odyssey's
patents, constitute a false ormisleading description of fact or a
false
or misleading
representation
of
fact about ProX Cases' products.
43. Odyssey's false ormisleading descriptions or representations of factwere
made in commercial advertising or promotion, including to ProX Cases'
customers/retailers
aswell asto persons involved with theDJExpo 2012. Odyssey's
false ormisleading descriptions or representations of fact, namely, that certain of ProX
Cases' products infringe Odyssey's patents, misrepresent the nature, characteristics and
qualities of ProX Cases' goods and commercial activities.
44. Odyssey's statements relating to patentinfringement were literally false.
45. In
addition,
Odyssey's statements actually
deceived
orhadthe
tendency
to
deceive a substantial segment of theirintended audience, namely, ProX Cases'
customers/retailers.
46. Odyssey's deception wasmaterial, in that it was likelyto influence the
purchasing decision, including specifically
whether
to
continue
to purchase and/or offer
for sale ProX Cases' products.
47. Odyssey caused the false statements to enter interstate commerce.
10
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
11/58
48. ProX Cases has been and continues to be damaged as a result of
Odyssey's false statements, including at least by a lessening of the goodwill associated
with ProX Cases' products.
COUNT
I I
TRADE
LIBEL)
49. ProX Cases repeats and realleges each allegation set forth above in
Paragraphs 1-48 as
though
fully set forth herein.
50. This c l aim arises
under
the c ommon l aw o f t he S ta te o f
New
York.
51. As set forth above, Odyssey published statements, namely,
communications with specific customers/retailers
of
ProX Cases, that certain products of
ProX Cases infringe one or more claims of the '521 patent and/or the '213 design patent.
52. Odyssey's statements tended to disparage the ProX Cases products,
namely, that they allegedly infringe one or more
of
Odyssey's patents.
53. Odyssey's allegations of infringement were provably false.
54. In making the statements to ProX Cases' customers/retailers, Odyssey
acted with malice, with knowledge that the statement of alleged infringement was false or
with reckless disregard for its falsity.
55. Odyssey's malicious, false allegations of infringement were knowingly
published to ProX Cases' customers, were derogatory to ProX Cases' business, and were
of
a kind calculated to prevent others namely, ProX Cases' customers/retailers
from selling and marketing ProX Cases or otherwise interfering with ProX Cases'
relations
with
others, to
ProX Cases' detriment.
11
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
12/58
56. As a directresultofOdyssey's false statements, ProXCases
customer/retailers
ceased selling and marketing ProX Cases
products,
and ProX Cases
suffered damages.
COUNT
I I I
(TORTIOUS INTERFERENCEWITH CONTRACTUAL RELATIONS)
57. ProXCasesrepeats and realleges eachallegation set forth above in
Paragraphs 1-56as though fully set forth herein.
58. This claim arises under the common law of the State ofNew York.
59. A valid
contract
existed between ProXCases andthe proprietors of theDJ
Expo 2012 trade show ( DJ Expo 2012 ) inAugust 2012 inAtlantic City,
New
Jersey.
60. Odysseyhad actualor constructive knowledge of this contract.
61. Odysseyacted intentionally with the design to inducea breachof ProX
Cases' contractwith DJ Expo 2012, without justification.
62. ProX Cases' contract with DJ Expo 2012 was breached as a result
of
Odyssey's improper acts. Namely, DJ Expo2012evicted ProXCases from the trade
showbecauseof Odyssey's falsepatent infringement claims.
63. ProX Cases' contract with DJ Expo 2012 would have otherwise been
performed except forthewrongful intentional acts ofOdyssey, which were thedirect and
proximate cause
of
the breach.
64. As a result
of
Odyssey's wrongful conduct, ProX Cases lost the
opportunity to show and promote itsproducts, to form business relationship and to obtain
orders for its products at the DJ Expo 2012 trade show.
12
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
13/58
65. Odyssey's intentional improper acts were the direct and proximate cause
of damage to ProX Cases in an amount to be determined at trial.
COUNT IV
COMMON LAW UNFAIR COMPETITION)
66. ProX Cases repeats and realleges each allegation set forth above in
Paragraphs 1-65 as though fully set forth herein.
67 .
This
claim arises under
the c ommon l aw o f the
State
o f
New York.
68. Odyssey knowingly made false allegations of patent infringement to ProX
Cases ' customer/retai lers wit h mal ic e a nd w i th t he
i nt en t t o c aus e
P r oX Ca se s
to
be
harmed by loss of sales and revenues and by preventing ProX Cases from securing orders
for the sale of its products.
69. Odyssey intended to profit at ProX Cases' expense by reducing
competition in the market place for DJ equipment by making false allegations
of
patent
infringement and causing ProX Cases to lose sales.
70. Odyssey's acts were committed in bad faith.
71. Odyssey's intentional improper acts were the direct and proximate cause
of damage to ProX Cases in an amount to be determined at trial.
JURY TR I A L
DEMAND
1. Pursuant to Fed. R. Civ. P. 38, ProX Cases hereby demands a trial
by jury of all issues so triable in this matter.
13
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
14/58
PRAYER
FOR RELIEF
WHEREFORE, PlaintiffXstatic Pro
Inc.
dbaXstatic
Pro
Lighting dbaPro Xdba
ProX dba Pro XDirect
dba ProX
Direct
dba
Pro X
Cases dba ProX Cases ( ProX
Cases )
requests
that
this
Court enter
judgment
in their favor and providing the following relief:
A.
Entry
of a permanent
injunction
against Odyssey and
anyone
working in
concert withOdyssey from contacting, writing, e-mailing, advising or
otherwise contacting any customeror retailerof ProXCases', whether
electronically or otherwise, alleging thatanyof ProXCases'
products
infringe eitherthe '521 patentor the '213 designpatent;
B. Entry of a permanent
injunction
against
Odyssey
and anyone
working
in
concert withOdyssey
from
contacting, writing, e-mailing, advising or
otherwise contacting any
trade
showrepresentative demanding that ProX
Cases' products be removed fromdisplay on the basis that ProXCases'
products infringe either the '521 patent or the '213 design patent;
C.
Entry
of a
permanent
injunction
against Odyssey
and anyone working in
concert
withOdyssey from contacting,
writing,
e-mailing, advising or
otherwisecontacting any customer or retailer
of
ProX Cases', whether
electronically or otherwise, and refusing to allow such customer or retailer
to stock Odyssey'sproducts unless suchcustomer or retailer stops
stocking ProX Cases' products;
D. An award to ProX Cases
of
all damages incurred in connection with
Odyssey'sunfaircompetition/false advertising under the Lanham Act;
14
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
15/58
E. An award to ProX Cases of all damages incurred in connection with
Odyssey's trade libel;
F. An award to ProX Cases of all damages incurred in connection with
Odyssey's tortious interference with contractual relations;
G. An award to ProX Cases of all damages incurred in connection with
Odyssey's unfair competition under
New
York law;
H. A finding that this is an exceptional case under 15 U.S.C. 1117, and
awarding ProX Cases its attorney's fees as the prevailing party;
I. An award of ProX Cases' full costs, including litigation expenses, expert
witness fees, interest, and any other amounts authorized by law, and
attorneys' fees incurred in connection with this lawsuit;
J. An award ofpunitive and/or exemplary damages and any other relief
authorized by law; and
K. Such other and further relief as this Court deems
just
and proper.
Dated: November
25,
2014
Respectfully submitted:
XSTATIC
PRO
INC.,
By its attorney;
Veronica Mullally Mufioz (MM-9985)
Clyde A. Shuman (CS-6351)
PEARL COHEN ZEDEK
LATZER
BARATZ
LLP
1500 Broadway,
12th
Floor
New York, New
York
10036
(646) 878-0800
15
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
16/58
(646) 878-0801 fax
vmunoz@pearlcohen,com
16
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
17/58
EXH IB I T A
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
18/58
mS PEARL COHEN ZEDEK LATZER llp
NEW
YORK - BOSTON
December
18, 2012
VIA
E-MAIL:
COPY
VIA
FACSIMILE
TO
(949) 251-1588
Charles C.H. Wu, Esq.
LAW
OFFICES
OF WU & CHEUNG, LLP
98 Discovery
Irvine,
CA
92618-3105
Re:
Alleged Infringement of U.S. Patent No. 7,614,521; Demand to Cease and Desist;
Our ref. 700716-25-01
Dear Mr. Wu:
This firm represents XSTATIC PRO, INC. dba PRO X CASES (hereinafter, XSTATIC ). We
write in response to your letter
of
July 18, 2012 to XSTATIC asserting infringement
of
U.S. Patent
No. 7,614,521 (hereinafter, the '521 patent ) by various
of
XSTATIC's products (hereinafter, the
Accused Products ).
For the reasons set forth below, there is no genuine, good faith basis for you or your client, Odyssey
Innovative Designs (hereinafter, Odyssey ) to assert that anyof the Accused Products infringes any
claim
of
the '521 patent. Moreover, as explained below, any further efforts by you or Odyssey to
prevent XSTATIC from displaying its products (includingwithout limitation, the Accused Products)
at trade shows, and any further interference with XSTATIC's customer relations, will result in
litigation,with XSTATIC seeking any and all remedies availableto it in law and in equity.
I. Non-Infringement Analysis
In your letter
of
July 18, 2012, you allege that all of the Accused Products, which comprise a list of
forty-eight
(48)
products, incorporate a sliding top shelf or panel for a laptop that is covered under
the claims
of
Odyssey's '521 patent.
However, there is no genuine dispute that the Accused Products do not infringe any independent
claim
of
the '521 patent, either literally or under the doctrine
of
equivalents. As set forth below,
none
of
the Accused Products literallyincludes each and every element or method step in that patent
claim. See, e.g.,
Frank s
Casing
Crew < Rental
Tools
Inc. v. Weatherford
Int l Inc. 389 F.3d 1370, 1378
(Fed. Cir. 2004) (citation omitted) ( Literal infringement requires that each and every limitation set
forth in a claim appear in an accused product. ).
The '521 patent includes 23 claims,
of
which claims 1 and 23 are independent. Claims 1 and 23
recite:
1. A platform and multiple box combination case and multiple box combination
case for housing audio and electronic equipments in stationary and transitional
modes, said platform having a forward and rearward aspect and comprising:
a lower box having an open top and side edge defining a border of said top on
each
of
two side surfaces, said box containing at least one audio or electronic device;
1500
Broadway, New
York, NY
10036,
Tel
646.878.0800,
Fax
646.878.0801
www.pczlaw.com
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
19/58
PEARL COHEN ZEDEK
LATZER
llp
NFW YORK - BOSTON
Charles C.H. Wu, Esq.
December 6, 2012
Page 2
at
least
one upper platform having a bottom surface and a side edge
defining
a
border
of
said bottom surface on each
of
two side surfaces
of
said upper platform,
said
upper
platform
containing
at
least
one electronic or accessory
device
capable of
operatingwith said lowerbox
device;
an
upper
box
having
an open bottom and
side edge defining
a border of
said
bottom on each
of
two side surfaces, said box contains a concave space for housing
at least one audio or electronic device when in a closed position;
a slider member channel assembly comprising at least a first or upper shder
member channel and second or lower slider member channel which telescopically
slides in the lower slidermember channel in a longitudinal axial direction which the
upper
slider member channel includes
a
center span
or web and the
lower slider
member channel includes an outwardly projecting
angled
flange being formed along
and in an acute angle relationshipwith an upper rim thereof, and havingat least one
safety
stop hole positionednearest to the terminal end of the upper
slider
member
channel therein, said hole disposed below and opposing said continuous flange;
wherein the upper platforms is held securely togetherwith the lower box as a result
of the upper slider member of the slider memberchannelassembly being fastened to
the upper platform and the lower
slider member
of the
slider
member channel
assembly
being fastened to the lower box, and the upper slider member and the
lower slidermember being engaged with each other
while
the upper platform is in
the stationary or transitional mode; and
at least one latch fastened adjacent to each said upper box side edge and
extending downward to releasably
engage
a respective one of said lower box latch
receptacles.
23. For platform and box combination case having an upper and lower boxes
with an upper platform, said case housing audio and electronicequipments, a method
for providing in said case
variably
adjustable upper platform for the placement of
additionalgears or electronic deviceswithout occupying additional space than in the
typicalDJ boxes, saidmethod comprising the steps of:
providing a lower box havingan open top and sideedgedefining a border of said
top of each of two side surfaces, said box containing at least one audio equipment
device;
providing at least one upper platform having a bottom surface and a side edge
defining a border
of
said bottom surface on each
of
two side surfaces
of
said upper
platform, said upper platform containing at least one electronic device capable
of
operating with said lower box device;
providing an upper box having an open bottom and side edge defining a border
of
said bottom on each
of
two side surfaces, said box contains a concave space for
housing at least one electronic devicewhen in a closed position;
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
20/58
PEARL COHEN ZEDEK LATZER llp
Charles C.H.
Wu,
Esq.
NEW
YORK - BOSTON
December 6, 2012
Page 3
providing at least
one
latch fastened adjacent to each said upper box side
edge
and extending downward to releasably engage a respective one of said lower box
latch receptacles;
providing a lower box having a lower shder member channel fastened to each
upper
side
edge
thereof, said
member having
a continuous
flange
projecting
therefrom and
a
recessed hole positioned therein,
said
spring loaded metal ball
extending there-through said lower slider member channel in stationary and
transitional positions, a stop hole positioned therein near the extreme end of said
member, said cantilever
spring
lever
extending there-through
said slider
member
channel when in use;
providing
an upper platform contained within the
enclosure
box having an upper
slider member channel
fastened
to
side thereof, said upper slider member channel
having
a continuous
web
channel projecting
downward
therefrom
and
a stop
hole
positioned therein,
said
spring loaded metal
ball frictionally
engaged with
said
upper
slider member
channel when
in
stationary
and transitional
positions;
means
for
shifting said
upper platform
along said
lower box in a
rearward
or
forward direction in a
continuously
variable
pathwithin a limit of travel
determined
by
said safety cantilever spring
stop member
until said audio
orelectronic equipment
in said
lower
box
is exposed
to
the
satisfaction of
said
operator
and simultaneously
allow
the placement
of computers or
other
accessories on
the
upper platform to
constitute an operatingmode position;and
means for frictionally engaging said upper and
lower
slider member
channels,
thereby securing said upper platform
in
said operating position.
Each
of
the
Accused
Products
does
not
infringe
claim
1 of
the
521
patent
because
it
does
not
include at
least one safety stop hole positioned nearest to the terminal end of the upper slider
member channel therein,
said
hole
disposed
below and opposing said continuous flange . This
safety stop hole feature
is described in
the 521
patent
at column
5,
lines 8-16 and shown in Figs 8
and 9.
Attached
as
Exhibits
A
and
Bare photographs ofthe container
bottom
sliding attachment assembly
and container top sliding attachment assembly,
respectively,
of
one
of the Accused Products,
which
are representative of those same structures in all of
the
Accused Products.
Specifically, while
the
Accused
Products
may
arguably be said to have a slider
member
channel
assembly comprising
at
least
a
first
or upper
slider member channel
and a
second
or lower
slider
member
channel
which telescopically slides
in
the lower slidermember channel in a longitudinal axial
direction, there
can be no
dispute
that
the
Accused Products
lack
at
least one safety
stop
hole
positioned nearest to the terminal end of the
upper
slider member channel therein, said hole
disposed below
and opposing said continuous
flange .
As clearly
seen
in attached Exhibits
Aand B,
the Accused
Products
do not have any such safety
stop
holes disposed
in
an
upper shder member.
Likewise,
each of
the Accused Products does
not
infringe
claim
23
of
the
521 patent
because
it
does
not perform the method steps of:
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
21/58
PEARL COH EN ZEDEK
LATZER
l lp
^, i
^T iw r
t- NEW YORK - BOSTON
Charles
C.H. wu ,
Esq.
December 6,
2012
Page 4
providing a lower box having a lower shder member channel fastened to each upper side
edge thereof, said member having a continuous
flange
projecting therefrom and a recessed
hole positioned therein, said spring loaded metal ball extending there-through said lower
slidermember channel in stationary and transitional positions, a stop hole positioned therein
near the extreme end of said member, said cantilever spring lever extending there-through
said slider member channel when in use; and
providing an upper platform contained within the enclosure box having an upper shder
member channel fastened to side thereof, said upper shder member channel having a
continuous web channel projecting downward therefrom and a stop hole positioned therein,
said spring loaded metal ball frictionally engaged with said upper shder member channel
when in stationary and transitional positions .
The spring loaded metal ball, stop hole and cantilever spring lever features
of
the lower shder
member channel and the stop hole feature
of
the upper slider member channel, as well as the
interaction between them, are described in the '521 patent at column 3, lines 13-27, at column 4,
lines 36-48 and at column 5, lines 8-32, and are shown in Figs. 8, 9, 10 and 11.
While
the Accused Productsmay arguably be said to have lower and upper slidermember channels,
there can be no dispute that the Accused Products lack a spring loaded metal ball extending
through the lower slider member channel, a stop hole positioned in the lower shder member
channel, a cantilever springlever extending through the lowershdermember channel , and a stop
hole positioned in the upper shder member channel. As clearlyseen in attached Exhibits A and B,
the Accused Products do not have any such features in their loweror upper shder member channels.
Further, the purpose of these structures, as describedin the
521
patent, is to lock the upper platform
to the lower box and to provide stop positions of the upper platform relative to the lower box.
However,none of the Accused Products have any such stop positions or any such means of locking
the upperplatform
relative
to the lowerbox. In
fact,
in the
Accused
Products, the upper platformis
not locked relative to the lower box. Since each of the Accused Products is missing an identical or
equivalent
part or step to evenone requirement of one of the independent
claims
of the
521
patent,
noneof the
Accused
Products can
infringe
such
claims
under the doctrine of equivalents.
See,
e.g.,
Kustom Signals
Inc.
v. Applied Concepts
Inc.
264 F.3d 1326, 1333 (Fed. Cir.
2001)
( No claimed
[limitation],
or an equivalent thereof, can be absentif thedoctrineof equivalents is invoked. ).
Still further, since the Accused Products do not infringe any independent claim, they also do not
infringe any dependent claim. See, e.g.,
Wolverine World Wide Inc. v.
Nike, Inc. 38 F.3d 1192, 1199
(Fed. Cir. 1994);
Wahpeton
Canvas
Co. Inc. v.
Frontier
Inc. 870F.2d1546,
1553 (Fed.
Cir.
1989).
It is clear, based upon your clearly factually-incorrect allegation of infringement, that you have not
actually
reviewed a physical sampleof any of the Accused Products but rather only viewedthem in
XSTATIC's product
catalog.
Had you actually reviewed a physical sample of any of the Accused
Products, you would immediately have seen the construction as shown in attached Exhibits A and B,
and immediately realized that there is at least one crucial physicalhmitation
of
each
of
claim of the
'521 patent that is
not
present in any
of
the Accused Products, such that there can be no
infringement.
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
22/58
PEARLCOHEN ZEDEK LATZER llp
Charles C.H. Wu, Esq.
NEW
YORK - BOSTON
December 6, 2012
Page 5
I I . Tor t ious
Interference
We are informed by XSTATIC that Odyssey forced removal
of
XSTATIC's products from the DJ
Expo 2012 trade show in August 2012 in Atlantic City, New Jersey by communicating its allegations
of
infringement
of
the '521 patent to DJ Expo 2012 personnel. We also are informed that you
and/or Odyssey presently is/are contacting XSTATIC's customers and advising them that
XSTATIC's products infringe the '521 patent, causing them to cease purchasing XSTATIC's
products. While you and Odyssey heretofore arguably may have had a good faith belief that
XSTATIC's products infringed one or more claims
of
the '521 patent, in hght
of
the foregoing
infringement analysis, any such good faith belief clearly is overcome, and you no longer have any
such
good
faith belief.
Accordingly, any further efforts by you and/or Odyssey to prevent XSTATIC from displaying its
products at future trade shows (including widiout limitation, the 2013 NAMM trade show that is
scheduled to take place in Anaheim, California in January 2013), and any further contact with
XSTATIC's actual or prospective customers by you or your client, alleging infringement
of
the '521
patent by any
of
its products (includingwithout limitation, the Accused Products), will constitute at
least tor tious inter ference with contractual relations
under
California law, as well as tortious
interference with business relations and tortious interference with prospective economic advantage
under New York law.
Byway
of
example only, with respect specifically to the second cause
of
action, any future bad faith,
unwarranted and intentional efforts byyouand/or Odyssey to preventXSTATIC from displaying its
products at any future trade shows, or any direct or indirect contact with XSTATIC's actual
customers to advise them of (non-existent) infringement of the '521 patent, will be deemed to
constitute knowing and intentional interference by Odyssey in a known business relationship of
XSTATIC's, either
solely
out
of
malice or through dishonest, unfair, or improper means, causing
injury to the relationship. See,e.g.,
Carvel
Corp. v. Noonan 350 F.3d 6, 17 (2d Cir.
2003).
Such improper activities by Odyssey clearlywill result in harm to XSTATIC and willleave XSTATIC
no choice but to pursue the legal and equitable remedies available to it, in the appropriate United
States
Distr ict
Court .
Pleasenote that XSTATIC would like an amicable resolution to this matter. However, should you
persist in your
baseless
allegations of infringement,my chent willhave no choice but to
aggressively
and vigorously defend its position.
Please
be advised that nothing in this letter shall constitute a waiverof any of XSTATIC's rights or
remedies to which XSTATIC may be entitled in law and/or equity, including the right to institute
su it f o r to rt ious in te rf er ence.
Sincerely Yours,
iM^u^X
Morey B.Wildes
Pearl Cohen Zedek Latzer, LLP
Cc: VikramM. Reddy, Esq. ([email protected])
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
23/58
EXHIBIT A
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
24/58
V
EXHIBIT
.
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
25/58
EXH IB I T B
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
26/58
B
PEARL
COHEN ZEDEK LATZER l lp
NEW YORK -
BOSTON
July 9, 2013
Direct
Dial: 646-878-0849
Direct
E-mail:
VIA
E-MAIL: [email protected]
COPY
VIA FACSIMILE TO
(949)
251-1588
Charles C.H. Wu,Esq.
LAW OFFICES
OF
WU & CHEUNG, LLP
98 Discovery
Irvine, CA 92618-3105
Re:
Alleged Infringement of U.S.
Design
PatentNo.
D643,213;
Ourref. 700716-25-01
Dear
M r. W u :
As you
know from
myletter ofDecember 18, 2012, we represent
XSTATIC
PRO,
INC.
dba
PRO
X
CASES
(hereinafter,
XSTATIC ), and we now
write
in response to your February
3,
2012 letter to
XSTATIC
asserting infringement
of
U.S. Design
Patent No. D643,213 (hereinafter, the 13 design
patent ) by
various
ofXSTATIC s products (hereinafter, the Accused Products ).
For the reasons set forth below, there
is no
genuine, good
faith basis
for
you or
your client, Odyssey
Innovative
Designs (hereinafter,
Odyssey )
to
assert
that any of the Accused Products infringes the
13 design patent. In addition, as set forth below, it is also
likely
that
the 213
design patent is
invalid
over the
prior
art. Moreover,
as
explained
below,
any further efforts
by you or
Odyssey
to
prevent XSTATIC from displaying
its
products (including without
limitation,
the Accused Products)
at
trade shows, and any further interference
with XSTATIC s
customer relations, will result
in
litigation, with XSTATIC seeking any and
all
remedies
available
to it in law and in
equity.
I. Non-Infringement
of
U.S. Design Patent No.
D643,213
A. Elements
of
the Claimed Design
The 13 design patent consists ofone claim and seven
(7) drawings.
The perspective, front
and
rear
view figures, respectively, are as follows:
1500 Broadway, New
York, NY
10036, Tel 646.878.0800, Fax 646.878.0801
www.pczlaw.com
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
27/58
PEARL
COHEN
ZEDEK
LATZER llp
Charles C.H. Wru, Esq.
July 9, 2013
Page 2
NEW YORK BO S TO N
During the prosecution of the '213 design patent, the Examiner cited several patents with
various
arrangements of edge pieces, corner pieces, screws, locks and handles, and allowed the audio
equipment case design as depicted in the 13 design patent, having the specific
arrangement
of the
edge
pieces, comer
pieces, screws, locks
and handle, to
issue
over
these references.
The patented
audio equipment case includes two locking mechanisms and a handle between them on its front
surface
(see
Figures
1 and 7), two
hinge mechanisms
on its back surface
(see
Figure 2), and
unadorned
side
surfaces
(i.e.,
no
such locking
or
hinge
mechanisms
on the
side
surfaces)
(see
Figures
5 and 6), and a corner piece on each corner. The
locking
mechanisms, handle, hinge mechanisms
and corner pieces each show
a
specific
ornamental
aspect.
That is, the
claim
of the
13 design
patent
does
not
cover
the combination of
locking mechanisms,
handle,
hinge mechanisms
and
corner pieces
shown
in the
drawings,
but
rather
is
limited
to the
combination
of
locking
mechanisms, handle, hinge mechanisms and corner pieces having the specific ornamental features
shown in the drawings.
In addition, by
filing
replacement drawings as depicted
above,
the apphcant made clear that an audio
equipment case
with a
black
body and
black edge pieces,
corner
pieces, screws, locks
and handles
was
claimed.
Therefore,
the
patented ornamental design
of an
audio equipment case
as
claimed
in the 213
design
patent
requires
both the
specific
arrangement
and
ornamental
design
of the
edge
pieces,
corner
pieces, screws,
locks and handle on the audio equipment case as shown, as wellas a black-on-black
color scheme
of
the audio equipment case.
B.
Non-Infringement
Analysis
In
your
letter
of February 3, 2012, you allege that all of theAccused Products,
which
comprise a
list
of thirty (30) of XSTATIC s products, as shown in printouts from
XSTATIC s
catalog or web
site,
incorporate a
black-on-black
ornamental
design
that is
covered under
the
claim
of Odyssey s 213
design patent.
You
state that Odyssey s position is thatProX manufacture, sale andmarketing of
DJ
equipment cases
witha
black
on
black design
...
infringes
Odyssey s '213Patent.
However, we point out that a black-on-black ornamental design is not the only claimed feature of
the
213 design patent.
In
fact,
the
13 design
patent also
requires
the
specific ornamental
arrangement
of
edge pieces,
corner
pieces, screws, locks
and
handle
on the
audio equipment case
as
depicted therein,
namely
two
locking
mechanisms
and
a
handle
on the
front surface,
a
hinge
mechanism on the back surface, a corner
piece
on each of the eight corners, and unadorned side
surfaces, all
with the specifically-depicted ornamental design.
It isunderstood that the scope of a
design
patent is limited to its ornamental aspects
alone
and
does
not
extend
to
any functional elements
of the
claimed
article.
See,
e.g.,
Richardson
Stanley
Works, Inc.,
597
F.3d
1288 (Fed.Cir. 2010) (citation omitted). In order for theAccused Products to
infringe
the
design
claim
of the '213 design patent, an ordinary observer must be deceived as to whether the
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
28/58
PEARL GOHEN ZEDEK LATZER llp
Charles C.H.
Wu,
Esq.
NEW YORK
-
BOSTON
July 9, 2013
Page 3
Accused
Products are
the
same as
the
patented
design,
or
the
Accused Products must
embody the
patented design
or
any colorable imitation thereof. See, e.g., Egyptian
Goddess,
Inc. Swisa, Inc., 543
F.3d
665, 680
(Fed.Cir.
2008); GorhamMjg. Co.
White, 81
U.S. 511,
528 (1871). SpecificaUy,
each
of
these Accused
Products
must
incorporate both a
black-on-black surface
color
design and the
specific
ornamental arrangement of edge pieces, corner pieces,
screws,
locks and handle shown in the '213
design patent, which together
would
lead an
ordinary
observer to be
deceived
as to whether the
Accused Products are the same as thepatented design, or embody a colorable imitation thereof.
We have
reviewed
each of the Accused Products,
and
have determined that, while most (but not
ah)
of the
Accused Products
have a black-on-black
exterior surface color design, none
of the
Accused
Products has
both a black-on-black
exterior surface color
design and
the specific ornamental
arrangement of edge pieces, corner pieces, screws, locks and handle as claimed in the 213 design
patent.
In
fact,
none of the
Accused Products
has two
locking
mechanisms
and a
handle
on the
front
surface,
a
hinge
mechanism on the back surface, unadorned
side surfaces
and eight corner
pieces, asdepicted in the '213design patent.
Each of the
Accused
Products
has an ornamental arrangement
of edge
pieces,
corner
pieces,
screws,
locks and handle that
makes
that Accused
Product
appear substantially
different
from
the
audio
equipment
case
claimed in the 213 design
patent.
Thus, each of the Accused Products is missing an
important
aspect of the ornamental design claimed in the
213
design patent
and
does
not
appear
similar to
the claimed
design. As
such,
an ordinary observer
would
not be
deceived
into
believing
that
the design of
any
of the Accused Products is the same as the patented design embodied in the
213 design patent,or a colorable imitation thereof. See Egyptian Goddess,
Inc.,
543 F.3dat
682-683.
Accordingly,
there is
no
genuine dispute that
the
Accused Products do
not
infringe the 213
design
patent.
It
is clear, based
upon your factually-incorrect
allegation
of infringement, that
you
have not
actually
reviewed
a
physical sample
of
any
of the
Accused
Products
but
rather
only viewed
them
in
XSTATIC s
product
catalog
orweb
site.
Had you actually reviewed
a
physical sample
of
any
of
the
Accused
Products,
you
would immediately
have realized
that each has
a different
arrangement
of
ornamental
features
than
claimed inthe 13 design
patent, such that there can
beno infringement.
II. Invalidity ofU.S. Design Patent
No.
D643,213
Furthermore, duringour research concerning the Accused Products,we discovered that XSTATIC
(through
its
affiliate
TOV
USA)
had
been selling
an
audio equipment case
with the
exact same
arrangement of ornamental features as claimed in the 13 design patentas farback as 2006.
See, for example, the attached
Exhibit
A, which shows
photocopies
of a
TOV USA DJ
EQUIPMENT
CASES catalog, 2006
edition, showing
on pages 4 and 5 audio
equipment
cases
model nos.
T-CD4
(4 Row CD Case)
and
T-MC
(Mixer Case)
that have the identical
arrangement
of
ornamental features
as
claimed
in
the
213
design
patent, namely two
locking mechanisms and
a
handle
on
the front surface,
a
hinge
mechanism
on
the back surface,
a
corner piece
on
each
of
the
eight
corners, and unadorned side
surfaces.
While this catalog
shows
these items in a silver-on-black
design, the arrangement
of
ornamental features is identical to that claimed.
According
to
35 U.S.C.
102(a),
A
person shall be entitled
to a
patent
unless
(1) the claimed
invention
was patented,
described
in a printed
publication,
or in public use, on sale, or otherwise
available to
the public before the
effective filing
date of the claimed
invention .
The ordinary
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
29/58
m* PEARL COHEN ZEDEK LATZER llp
Charles
C.H.
Wu,
Esq. NEW YORK
-
BOSTON
July 9, 2013
Page 4
observer test
is the
sole test
for design
patent
anticipation. Int'I
Seaway Trading
Corp.
Walgreens Cop.
589F.3d 1233,1240 (Fed.Cir. 2009).
The portion of the design relating to the arrangement
of
ornamental features claimed in the '213
design patent was
clearly
described
inthe
publicly available 2006 edition
TOV
USA catalog,
and
thus
on
sale,
well
before
the July 28,
2009
filing date of the application for the 13 design
patent.
Moreover, XSTATIC
isin possession of
invoices
proving
actual
sales of the
audio
equipment
cases
model nos.
T-CD4 and
T-MC
in 2006, well before
July
28, 2009.
Accordingly,
at least the portion of
the 13 design
relating
to the
arrangement
of
ornamental features,
if not
portion relating
to
the
black-on-black surface design, was well known before the filing of the 213 design patent application.
Otherwise stated,
an
ordinary observer, seeing the publicly
available
2006
TOV
USA catalog
and
the
claimed design of the
13 design
patent,
would
be
deceived
into
believing
thatthe
design
embodied
in the
213 design
patentis the
same as
the
designs
in theTOV
USA catalog,
or a
colorable imitation
thereof. See
Egyptian Goddess
Inc. 543 F.3d at 682-683.
Alternatively,
the
claimed design
of the '213
design
patent is
invahd
as obvious over the
2006
TOV
USAcatalog designs.
A
design
patent may be held invahd as obvious under 35 U.S.C. 103(a) if the
differences
between
the
subject
matter
sought
to be
patented
and the prior art
are such
that the
subject
matter
as
a
whole
would have been obvious at the time the
invention
was
made
to a person
having
ordinary
skill
in the art to which said subject matter pertains.
In
addressing
a
claim
of
obviousness,
the
ultimate inquiry
is
whether
a
claimed design would have
been
obvious to a designer of ordinary skill
who
designs
articles
of the type
involved. Apple Inc.
Samsung Electronics Co. Ltd. 678 F.3d 1314, 1329 (Fed.Cir.
2012).
The Federal Circuit has explained
that:
[t]o
determine
whether one of
ordinary
skill
would have
combined
teachings
of the
prior art to create the
same overall
appearance of the same design, the finder of
fact
must
employ
a two-step
process. First,
one must
find
a
single
reference,
'a
something in existence, the design characteristics of which are basically the same as
the
claimed design.
Second,
other
references
may
be
used
to
modify [the primary
reference] to create a design that has the
same overall
visual appearance as the
claimed design....[T]he
secondary references may
only be used to modify theprimary
reference
if they are 'so
related
to the
primary reference
that the
appearance
of
certain ornamental features in one would
suggest
the application of those features to
ano ther .
Id. (citations omitted). Once
a piece of prior art
has been constructed,
thedetermination of
invalidity
for
obviousness,
like the
determination
of
infringement, requires application
of the
ordinary
observer test. Apatented design is obvious if thepatented design
as
whole is
substantially
the
same,
or
has
the same
overall visual appearance,
as theprior
art.
See Int7 Seaway at
1240.
Here,
the 2006 TOV USA catalog constitutes the single
reference,
'a something in existence, the
design characteristics
of
which
are basically the same as the claimed
design. Given
that the sole
difference between
the designs
depicted
in
the catalog and the
claimed design of the
213
design
patent
is the black on
black color scheme,
itis
clear
that the
claimed design
would
have been obvious
to a
designer
of ordinary
skill
who designs articles of the type involved.
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
30/58
PEARL
CC
NEW
YORK
-
BOSTON
PEARL
COHEN
ZEDEK LATZER llp
Charles C.H. Wu, Esq.
July 9, 2013
Page 5
Therefore, in view of thispriorart,it is
highly
likely that theExaminer of the application for the 213
design patent would not have allowed that
application
to
issue
as a
design
patent. As
such,
we
believe that the '213designpatent is invahdover the prior art.
III .
Tort ious
Inter ference
We are
informed
byXSTATIC thatOdyssey forced removal of XSTATIC s products from the DJ
Expo 2012 trade show inAugust 2012 in
Atlantic City,
New
Jersey
by
communicating
its allegations
of
infringement
of
U.S.
Patent No. 7,614,521 ( the 521 patent ) to DJ Expo 2012
personnel.
We
also are informed
that
you
and/or
Odyssey has
been
contacting XSTATIC s customers and advising
them that XSTATIC s products infringe
either
the 521 patent or the 213 design patent, causing
them to
cease purchasing XSTATIC s products.
The
issues relating
to the 521 patent
have been
addressed inour letter of
December 18, 2012.
While you
and
Odyssey
heretofore arguably may
have
had a
good
faidi
belief that XSTATIC s products infringed one
or
more
claims of
the
213
design
patent,
in
hght
of the
foregoing
infringement analysis, any such
good
faidi
behef
clearly
is
overcome.
Accordingly, any further efforts by you
and/or
Odyssey
to
prevent XSTATIC from displaying its
products
at
future trade shows (including
without
hmitation,
the DJ Expo 2013
trade show
scheduled
to take
place
in
Atlantic
City, New
Jersey
in
August
2013), and any
further
contact
with
XSTATIC s actual or prospective customers byyou or your client, alleging
infringement
of the
213
design patent by any
of its
products (including without
limitation,
the
Accused Products), will
constitute at least tortious interference with contractual relations under California law, as well as
tortious interference
with business
relations and
tortious interference with
prospective economic
advantage under New York law.
By
way
of
example only,
with respect specifically to the
second
cause of
action,
any future bad faith,
unwarranted and intentional efforts byyou and/or Odyssey to prevent XSTATIC
from
displaying its
products at any future trade shows, or any direct or indirect contact with XSTATIC's actual
customers
to
advise
themof
(non-existent)
infringement of the '213
design
patent,
will
be
deemed
to
constitute knowing
and intentional
interference
by
Odyssey
in a known
business
relationship of
XSTATIC s, either solely
out of
malice
or
through dishonest, unfair,
or
improper means,
causing
injury
to the relationship. See, e.g., Carvel Corp. Noonan 350 F.3d 6,
17
(2d Cir. 2003).
Suchimproper activities byOdysseyclearly will result in harm to XSTATICand willleaveXSTATIC
no choice but to pursue the
legal
and equitable remedies available to it, in the
appropriate
United
States
Dis tr i ct Cour t.
Please
note
that XSTATIC would like
an
amicable resolution to this matter. However, should you
persist in your baseless
allegations
of infringement, my client
will
have no choice butto aggressively
and vigorously defend its position.
Please
be
advised
that
nothing
in
this letter
shall constitute
a
waiver
of
any
of
XSTATIC s rights
or
remedies to which XSTATIC
may
be
entitled
in law and/or equity, including the right to institute
suit for tor tious
interference.
SincerelyYours,
tide
Pearl Cohea
Zedek
Latzer, LLP
Cc:
Vikram M.
Reddy,
Esq. ([email protected])
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
31/58
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
32/58
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
33/58
T-TT
Turntable
Cas
Outer QsmRsk os: 20 S7 xl7.tTsS.48*
Intwiof
Dtmepsaos
188,xi5Hr>t4.25
IS
4X , - ;.
Sap
.
i
*1
I
J
I
*
f
i
hcaw
DUW FOAM
PftDOEO 1URM1A8LE
CASE
WILL FIT
A1200
TURMTAKJ:
SwECTlY
AS WELL
AS
MOST POPULARWMfOBlES MATURESQ^MMD
AtuSiUM EXTRUSION.
PLASTIC LAMINATE
RECESSED SPRN6LODH-
dl?hxesseorflv
twist lathes im locks
mmmi
SBWX-
mcwacmiess. r-r PcYW00/AP?cwEtaiTt6iM
> ^^^^ii^^.'t^fe-; -
#* ,gl
n i l
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
34/58
EXH IB I T C
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
35/58
F
o
m
o
o
a
e
*e
rear
of
the
lower
box Furthermore, this invention
devices
without
removing
a
device
from
its case. This is
^s
the
disadvantage
of
not allowing
the
user to operate a
accomplished
by structuring
the case
in, say, two
device-
25 laPjP
or
other
accessories
in
tandem
with
the
operation
of
conta.mngboxes,oneofwhichisthenoffsetfromtheother.n
audl foments
while in the
field, because a variably
an
operating
position to
reveal the
elements of
said
devices
or
adjustable platform
for
such use is
not provided,
equipment
for access
by an
operator.
0tLher devlces
related
to movmf abox-like
article
relative
to other
parts
m an assembly include a variety of complex
Widely used
in
the f ield of the personal delivery of
30
devices
employing
roller
bearings
and races. For example,
recorded music toaudiences by for example,
on-location
disc y g pat No 5
275
492 toShirai
teaches
a
slide
unit
mounted
jockeys suchboxcaseshavetraditionallypermmedanopera- Qn -^ ^ fe ro]H members and irf
tor the choice between two
and
only two stable
modes.
In
the
nj
ks for lubrication similariy,
U.S.
Pat. No. 5,344,228
to
first
of
these, the
transport
mode, theupper box ofthe
case is Kovadk
e, a) teaches mamen t
ofchannel
members,
mated with the
lower
box, usually
asmall
number
ofhook and
35 for
(sets ofba^^ m
inlermediate shde
mem-
latch fasteners, typically
two
on each of the
two
opposing
ber
^
fifst and
SCond
^ s
to
faciHtate
movement ofa
s,des, each latch engaging only
one
transport
hook. The
dnJwer
re]ative tQ
g
stati base
llwZdlihTebm
rolected
for^ans
ortaetiony
Accordingly,
it
is an
object
of
the
present invention
to
^ P P
provide
a casefor
transporting
and
operating electronic
and
Intheother ofthe two
states,
viz., the
operating mode,
the 40
acoustic equipment
that
overcomes
thecostand
safety prob-
latches onthe upper
box
ofthebase are disengaged
from
the
]ems
mat arecharacteristic of the prior
art.
lower box
transport
hooks, and the
upper box
isremoved
and
A
seCond object
of
this invention
to
provide
an
equipment
thus exposingthe equipment in the lower box for operat ion. case that is more multi -funct ional than convent ional cases
An example of the foregoing tradit ional box case is the when in field use, and which permits the operatora comfort -
Genesis ST-17A, a 17space DJ case sold by Genesis
of
Los 45 able degreeof continuous adjustment of a platform for com-
Angeles, Calif.An upper box ofthe case is offset byapproxi- puters and other accessories inan operating position that suits
mately one-halfitsdepth to achieve an operating positionthat his or her own preference, while maintaining an ergonomic
is limited to the discrete locationallowed by the placementof and stable arrangement of the case in the operatingmode,
the operating hooks.
These
hooks are fastened,
one
on
each
side of the lower box, approximately midway between the 50 SUMMARY OF THE INVENTION
two transport hooks. For
each
side, the frontmost latch, the
one that had engaged the frontmost transport hook in the A casefor housingaudio andelectronic equipment during
transport mode, now engages the operating hook, while the stationary and transitional operations having lower and upper
other (rearmost)latch hasnothing toengage, being located on boxes with an upper platform that may be variably shifted
that portion ofthe upper box that is cantilevered out from the 55 rearward or forward along the lower box to expose the equip-
lower box. The operator is thus restricted to a single, fixed ment devices inthe lower box for operation and to provide a
operating position. Moreover, relying on such a single point platform for electronic devices and other accessories. A lower
of contact on each side of a case to secure a heavy case box slider member channel having an outwardly projecting
may result in undesirable and potentially dangerous loss
of
angled flange is mounted along the upper edge
of
each side
stabili ty should any such contact point fail. Conversely, the 60 surface ofthe lower box. Additionally, an upper slider mem-
present invention allows the placement of laptop or other ber channel having a protruding longitudinally extending
accessories on a platform capable of variable sliding move- web is mounted along the lower edge of each side surface of
ment resulting in multiple horizonta l adjustment points in the upper pla tform.
accordancewith user selectedcomfort level while still allow- When the latches are disengaged and upper box removed,
ing access to the lower box area. Additionally, the user will
65
the upper platform could be shifted rearward or forward in a
not be constrained with only one selected point position so variable horizontal movement. The continuity of the upper
that multiple sizes of computers orother accessories may be and lower slider memberchannels attached to said platform
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
56/58
US 7,614,521 B2
toeachother in theirunassembledstateforeaseof illustration
in the first and
second
embodiments.
FIG.
12 isa top plan view ofthe
platform
and
multiple
box
case in the second embodiment.
5 FIG. 13isa
right side elevation view
of
the platform and
multiple box case in the second embodiment.
FIG.
14isa
right
side
elevation
view ofthe
platform
and
multiple box
case exposing the upperplatform with the upper
boxraisedfor easeof illustration in thesecondembodiment.
10 FIG. 15isa front elevation
view
ofthe platform and
mul
tiple box case in the second embodiment.
DESCRIPTION
OF THE
PREFERRED
EMBODIMENTS
and
lowerbox isfrictionally engaged along its length,
thereby
permitting an operator to
select
variable positions to suithis
or her preference. Therefore, the slider member channel
assembly will include
at
least
a
first
or
upper
slider
member
channeland secondor lower slidermemberchannelwhich
telescopically slides in thelowerslidermemberchannel in a
longitudinal
axial
direction.
Theupper
slider
member
chan
nel includes a centerspanor web.The lowerslidermember
channel includes an
outwardly
projecting
angled
flange. The
center
web and angled
flange
arein opposed,
generally
par
allel
relation
to
one
another and slide longitudinally
with
respect
to
each
other as
the
channels
slide.
According to another aspect ofthe invention, the upper
slidermemberchannelhas a linearseriesof shallowconcave
safety stop holes pre-drilled below and parallel to
the
flange
portion of the
member.
A
spring
loaded metal ball tightly
fitted inahole sufficient tohold said spring in
the edge
topof
the
box
sides
is
recessed but
slightly protruding there-through
the
lower
slider member channel to frictionally engage said
safety
stop
holes
andthe
bottom
flange portion ofsaidlower
slidermemberchannelto allowa smooth andfluidmovement
ofthe upper platform.
According
to
another aspect
ofthe
invention,
a
safety
stop
angularhole is substantially near oneofthe terminalendsof
the upper slider member channel and
is
sufficiently close
to
said member flange that
acantilever biased
leverwill engage
said angular hole atthemost
extended outward
position.
These and other features of the
present invention
will
become
apparent
from the
following
Description and an
Exemplary
Embodiments
when taken inconjunction withthe
claimsand drawing figures herein described.
An
improved
equipment case
10
for transporting and oper
ating audio and electronic devices for disc jockeys
and
the
like is
shown
in FIG. 1. The present invention relates to
apparatus
for
securely closing
the equipment case 10 in a
20
transportmode,and forsafelyexposingthedevicesin a lower
box in an
operating
mode.
Access
to devices on an upper
platform
11
is
typically gained through
one
or
more panels
on
the
surfaces
ofthe
upper
box 12asiswell known in
the art,
the
placement
of
which
doors is
not critical with respect
tothe
25 present
invention.
Referringnow to
FIG.
4,the
upper
platform 11 is
supported
abovethe lowerbox13 ina
stationary
or transitional mode.
Theupper platform isheld securely together with thelower
box
when being transported from place toplace by the
fric-
30
tional engagement of
the upper
slider member 14
(shown
in
FIG. 11) fastened to the upper platform 11 with the lower
slider
member
15 (shown in FIG. 11)
fastened
to the
lower
box
13.
While theupper platform 11isin the stationary or
transitional mode, the upper slider member channel 14
35
(shown
in FIG.11) is in
engagement
with the lowerslider
member channel
15 (shown in
FIG. 11).
By
sliding outward
into the
cantilever
spring lever member
16
(shown
in
FIG.
10),
the
said lever
member
engage
ina
tight secure
position
with
the
upper slider
memberchannel
14
(shown
inFIG.
11).
40 Thus, the
cantilever spring lever member
16
(shown
in
FIG.
10)
locks the upper platform
11
(shown in
FIG.
11) to the
lower
box
13. By sliding inward,
the
cantilever spring lever
members
16
(shown
in FIG. 10)aremoved
away
from the
slider member channel.
Thus, the
cantilever spring lever
45 members 16
(shown
inFIG. 10)areno longer incontact with
the
safety angular
stopping
hole 17 (shown in
FIG.
9)
and
therefore, slides freely engaged
tothe
upper
slider
member
channel14 (shownin FIG.11).
Although
right
side
surfaces
18and 19(shown in
FIG.
4)of
50
the
upper
and lower boxes, respectively, are
shown
for
pur
poses of
illustration,
thediscussion
herein
applies equally to
thelatchesand slidermemberchannelthataremountedonthe
leftside surfaces (notshown)ofthe boxes.
Now
referring
to
FIG.
13,
first
latch
20,
the
side
latch,
is
55
disposed
in
close proximity
to
second latch
21,
both latches
beinglocatedinengagementnearthe slidermemberchannels
14,15
(shown in
FIG.
11). Third latch 22(shown in
FIG.
7)is
remotefromfirstandsecondlatches20,21 nearthecenterof
the side box. All
ofthe
latches
20, 21,
22 (shown
in
FIG. 7)
60 andthe corresponding latches (not shown) mounted onthe
left side surfaces
areina
locked
or
engaging condition
as
illustrated
in
FIG. 13. When the latches 20, 21,22, (shown
in
FIG.
7)
are thus positioned
as
shown
in
FIG. 13, the equip
ment case 23 is thereby locked in the transitional mode.
65
Now
referring to
FIG. 11,
the
configuration
ofupper slider
member channel 14 and lower slider memberchannel 15 is
more clearly seen in FIGS. 10 and 11. The material of lower
BRIEF DESCRIPTION OF THE DRAWING
FIGURES
FIG.
1isatop
view
ofa
platform
and
multiple
boxcasein
the first preferred embodiment.
FIG.2 is a backview illustrating the lower boxwith the
upperbox removed in the firstpreferredembodiment.
FIG. 3 is a front view illustrating the lowerbox and the
upper
box initsassembled stateinthefirst
preferred
embodi
men t .
FIG. 4isa side view illustrating the
platform,
lower box,
andupperboxinits
assembled
state with theupperboxraised
to expose the complete platform for ease of illustration in the
first preferred embodiment.
FIG. 5isatop
view
ofa platform and
multiple
boxcasein
the second preferred embodiment.
FIG. 6 i s a front view illustrating the lowerboxwiththe
upperbox in an offsetposition for ease of illustrationin the
second preferred embodiment.
FIG. 7isa side view illustrating the
platform,
lower box,
and upper
box inits
assembled statewith
the
upper box raised
to expose the complete platform for ease
of
illustration in the
second preferred embodiment.
FIG. 8isa
bottom
planview oftheupperslider
element
in
its unassembled state in the first andsecondembodiments.
FIG.9 is a bottomplan viewofthe lower slider element in
its unassembledstate in the first and second embodiments.
FIG. 10isaside elevation view ofthetopside portion ofthe
lowerboxwith the spring, metal ball, and cantilever lever
positioned adjacent to each other in their unassembled state
forease of illustrationin the first andsecondembodiments.
FIG. 11isaperspective view ofthetopside
portion
ofthe
lower box with thespring, metal ball, cantilever level,
lower
slider
element,
and upper
slider
element
positioned
adjacent
8/10/2019 Xstatic v. Hsiao & Montano - Complaint
57/58
US 7,614,521 B2
slider
member
channel 15may consist of extruded aluminum
or
otherlight, strongmaterial that can be affixed tothe top 24
ofthe
lower box 25 by mounting fasteners.
The
material of
upper slider member channels 14 may consist of extruded
aluminumor otherlight, strongmaterial that can beaffixedto 5
the sides
of
the upper platform 36 (shown in FIG. 7) by
mounting fasteners.
Still referring to FIG. 11, the continuous flange 26 projects
upwardly from the
upperedge
27
ofthe
lower slider
member
channel 15. A linear series of pre-dri lled holes 28 (shown in 10
FIG. 8), either blind or, if more economical, drilled through
the upper slider
member
channel 14, is disposed parallel to
the
continuous web
29.
The
series of
holes
28
(shown
in
FIG.
8) is arranged along a two-third length of said
upper
slider
memberchannel 14nearesttothe terminalend containing the 15
angular hole 30 (shown in FIG. 9).
Now referring to FIG. 10, the spring 31 and metal ball 32
assembly is recessed within a
bore
33 in the top of
each
side
24 (shown in FIG. 11) ofthe lower box and extended there
through the lower slider member channel 15 (shown in FIG. 20
11) via pre-drilled hole 34 (shown in FIG. 9) with the metal
ball 32 situated slightly above the planar surface 27 (shown in
FIG. 11)
ofthe
lower slider
member
channel 15 (shown in
FIG. 11).
The
cantilever spring lever 1