https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024
DESCRIPTION
Opposition to Defendant’s Motion for Partial Summary Judgment on Damages for Non- its Opposition, Plasticase relies upon its Concise Statement of Material Disputed Facts LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier day extension of time to conduct discovery that is highly relevant to the issues raised in Pursuant to Fed.R.Civ.P. 56, Plaintiff Plasticase, Inc. (hereinafter “Plaintiff” or v.TRANSCRIPT
![Page 1: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/1.jpg)
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No.: 10-CV-60524-Zloch/Rosenbaum
PLASTICASE, INC., a Foreign
corporation,
Plaintiff,
v.
INVICTA WATCH COMPANY OF AMERICA, INC., a Florida corporation,
Defendant.
__________________________________/
PLAINTIFF’S MEMORANDUM OF LAW IN OPPOSITION TO DEFENDANT’S
MOTION FOR PARTIAL SUMMARY JUDGMENT
Pursuant to Fed.R.Civ.P. 56, Plaintiff Plasticase, Inc. (hereinafter “Plaintiff” or
“Plasticase”), by and through undersigned counsel, hereby submits this Memorandum of Law in
Opposition to Defendant’s Motion for Partial Summary Judgment on Damages for Non-
Compliance with Marking Requirements Under 35 U.S.C. §287(a) (“Opposition”). In support of
its Opposition, Plasticase relies upon its Concise Statement of Material Disputed Facts
(“Disputed Facts”) and supporting affidavits and exhibits, filed contemporaneously herewith and
incorporated herein by reference in their entirety. In light of the issues raised in Plasticase’s
pending Motion for Continuance of Deadline Pursuant to Rule 56(f) [DE 26], which seeks a sixty
day extension of time to conduct discovery that is highly relevant to the issues raised in
Defendant’s Motion for Partial Summary Judgment, Plasticase expressly reserves the right to
supplement this Opposition.
Case 0:10-cv-60524-WJZ Document 35 Entered on FLSD Docket 07/22/2010 Page 1 of 9
![Page 2: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/2.jpg)
Case No.: 10-CV-60524-Zloch/Rosenbaum
2
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
I.
This is a case for patent infringement
INTRODUCTION AND STATEMENT OF FACTS
1arising from Defendant’s unlawful importation,
offering for sale and sale of plastic storage cases that undoubtedly infringe two design patents
owned by Plasticase, U.S. Patent Nos. D578,759 (the “‘759 Patent”) and D579,202 (the “’202
Patent”) (collectively the “Patents-In-Suit”). After filing the applications that eventually issued
as the Patents-In-Suit, Plasticase began manufacturing plastic storage cases under the trademark
NANUKTM
that embodied the designs covered by the applied-for patents. See Disputed Facts at
¶16. Initially, the plastic storage cases were marked with the phrase “Patents Pending” to put
would-be infringers on notice that Plasticase had sought patent protection for its designs. See
Disputed Facts at ¶17. After the Patents-In-Suit issued in late October 2008, Plasticase changed
the molds used to manufacture the cases to include a new patent marking, indicating that the
cases were protected by patent and providing the relevant patent numbers. See Disputed Facts at
¶18. As of November 2008, all of Plasticase’s manufacturing molds included this new patent
marking and all new NANUKTM
cases manufactured by Plasticase after November 2008 were
conspicuously marked, as follows: “U.S. Patents D578,759” for its NANUKTM
905 cases, and
“U.S. Patents D579,202” for its NANUKTM
915, 920, 925 935, 940, and 945 cases. See
Disputed Facts
Plasticase’s customary practice and procedure is to manufacture its NANUK
at ¶19-20.
TM
1On July 9, 2010, Plaintiff filed its Motion for Leave to File First Amended Complaint and submitted therewith its
First Amended Complaint which added additional claims for false designation of origin and unfair competition
under federal and state law. As of the date this filing, the Court has yet to rule on the motion.
line of
cases in a particular model and color when the stocked inventory is nearly depleted or below a
level sufficient to satisfy new or short-term projected orders. Thus, although as of November
2008 all of the newly manufactured cases contained the proper patent number markings, not all
Case 0:10-cv-60524-WJZ Document 35 Entered on FLSD Docket 07/22/2010 Page 2 of 9
![Page 3: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/3.jpg)
Case No.: 10-CV-60524-Zloch/Rosenbaum
3
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
of Plasticase’s previous inventory of cases had been sold off. Therefore, at the time the
manufacturing molds were changed to reflect the patent numbers, Plasticase was still in
possession of some older cases containing the impression “Patents Pending.” See Disputed Facts
at ¶21. Nonetheless, by September 29, 2009, at the latest, Plasticase had ceased distributing
these older cases and, from that point forward, or earlier, it distributed only plastic storage cases
containing the proper patent markings. See Disputed Facts at ¶22.
When Plasticase was approached by Defendant in June 2009, it sent to Defendant free-of-
charge a few cases as samples of Plasticase’s work. See Disputed Facts at ¶23. After receiving
the sample cases, Defendant proceeded to order copies of Plasticase’s designs trough a Chinese
manufacturer. Defendant placed an order from this Chinese manufacturer for a large number of
cases that infringe the Patents-In-Suit. See Disputed Facts at ¶24. Based on documents produced
by Defendant, these cases were imported into the United States in late October 2009. See
Disputed Facts at ¶24-25 and Exhibit A thereto at D2-D5. Between July 17, 2009 and the filing
of the instant lawsuit on April 6, 2010 Defendant was selling and offering for sale infringing
cases. Of note, Defendant sold infringing cases to at least one retailer, ShopNBC.com, in
November and December 2009. See Disputed Facts at ¶26-27 and Exhibit A
In light of these incontrovertible facts, the preponderance of the evidence establishes that
Plasticase fully complied with the requirements of the patent marking statute, 35 U.S.C. §287, by
at least as early as September 29, 2009, which was well before several acts of infringement by
Defendant. Accordingly, there exists a genuine issue of material fact as to whether Defendant
was placed on constructive notice of Plasticase’s patent rights at least as early as September 29,
2009 and Defendant’s Motion for Partial Summary Judgment
thereto at D9-D14.
(hereinafter “Motion”) [DE 23] on
the issue of damages should therefore be denied.
Case 0:10-cv-60524-WJZ Document 35 Entered on FLSD Docket 07/22/2010 Page 3 of 9
![Page 4: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/4.jpg)
Case No.: 10-CV-60524-Zloch/Rosenbaum
4
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
II.
a. Summary Judgment Standard
ARGUMENT AND CITATION OF AUTHORITIES
To obtain summary judgment, the moving party must show that there is no genuine issue
of material fact and that the moving party is entitled to judgment as a matter of law. Celotex
Corp. v. Catrett, 477 U.S. 317, 322 (1986). A court’s focus in addressing summary judgment is
“whether the evidence presents a sufficient disagreement to require submission to a jury or
whether it is so one-sided that one party must prevail as a matter of law. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 252 (1986). The test for summary judgment is rigorous. Fernandez v.
City of Cooper City, 207 F. Supp. 2d 1371, 1373 (S.D. Fla. 2002)(holding that, with respect to
summary judgment, “[t]he moving party bears the burden of meeting this rather rigorous
standard.”).
The facts asserted by the non-moving party, if supported by affidavits or other
evidentiary material, must be regarded as true and all inferences must be drawn in the light most
favorable to the opposing party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). See
also Arrington v. Cobb County, 139 F.3d 865, 871 (11th Cir. 1998) (“We view the evidence in
the light most favorable to the non-moving party”). I
b. The Patent Marking Statute, 35 U.S.C. §287
f the record presents factual issues, “the
Court must “deny the motion and proceed to trial.” See White Water Invs., Inc. v. Ethicon Endo-
Surgery, Inc., 2005 U.S. Dist. LEXIS 21902 (S.D. Fla. Sept. 2, 2005), citing Environmental
Defense Fund v. Marsh, 651 F.2d 983, 991 (5th Cir. 1981).
Defendant’s Motion focuses solely on Plasticase’s compliance with the patent marking
statute, 35 U.S.C. §287. The Federal Circuit in American Medical Sys. v. Medical Eng'g Corp.,
held that compliance with the patent marking statute occurs when the patentee (1) consistently
Case 0:10-cv-60524-WJZ Document 35 Entered on FLSD Docket 07/22/2010 Page 4 of 9
![Page 5: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/5.jpg)
Case No.: 10-CV-60524-Zloch/Rosenbaum
5
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
marks substantially all of its patented products; and (2) is no longer distributing unmarked
products. 6 F.3d 1523, 1538 (Fed. Cir. 1993)(reversing district court’s limitation of damages for
patent infringement where the patentee’s products complied with the patent marking statute prior
to certain acts of infringement). However, the Court was careful to point out that the marking
statute precludes recovery of damages “only for infringement for any time prior to compliance
with the marking or actual notice requirements of the statute.” Id. at 1537 (emphasis added). The
Court went on to conclude that “a delay between issuance of the patent and compliance with the
marking provisions of section 287(a) will not prevent recovery of damages after the date that
[compliance] has begun.” Id. Thus, under the prevailing law, Plasticase is entitled to damages
occurring after the date that compliance with the marking statute began, provided that Defendant
was still committing infringing acts. Id.
Defendant’s Motion asserts that the sample cases sent by Plasticase to Defendant in July
2009 did not contain the patent markings necessary to place Defendant on constructive notice of
the Patents-In-Suit. Defendant erroneously concludes that, because Plasticase was shipping
cases in July 2009 that did not comply with the patent marking statute, it is not entitled to
recover damages for any infringement occurring prior to the date the instant suit was filed (April
6, 2010). [DE 23-1] at 4. Defendant’s Motion misapplies American Medical Sys. by failing to
recognize that, to recover damages, Plasticase need only demonstrate by a preponderance of the
evidence that any one of Defendant’s acts of infringement occurred after Plaintiff brought the
patented products into compliance with the marking statute. Indeed, the preponderance of the
(“The plain language of section 287(a) does not provide
any time limit by which marking must begin, nor does the legislative history indicate any such
limitation.”)
Case 0:10-cv-60524-WJZ Document 35 Entered on FLSD Docket 07/22/2010 Page 5 of 9
![Page 6: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/6.jpg)
Case No.: 10-CV-60524-Zloch/Rosenbaum
6
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
evidence in this case establishes Plasticase was compliant with the patent marking statute at least
as early as September 29, 2009, prior to many of Defendant’s acts of infringement.
c. Plasticase Complied with the Patent Marking Statute at Least as Early as
September 29, 2009
The patent marking statute states that a “patentee…may give notice to the public…by
fixing thereon the word ‘patent’ or the abbreviation ‘pat.’, together with the number of the
patent.” 35 U.S.C. §287. As discussed above, Plasticase was diligent in assuring that, as soon as
the Patents-In-Suit issued in late October 2008, all newly manufactured cases included the proper
patent markings. In November 2008, Plasticase changed its molds used to manufacture the
NANUKTM
line of cases to include the relevant patent numbers. See Disputed Facts at ¶ 18. To
wit, each new case manufactured after November 2008 was marked with the words “U.S.
Patents” along with the relevant patent number, as follows: “U.S. Patents D578,759” for its
NANUKTM
905 cases, and “U.S. Patents D579,202” for its NANUKTM
915, 920, 925, 935, 940,
and 945 cases. See Disputed Facts
All of Plasticase’s products from NANUK line of cases manufactured after November
2008
at ¶¶ 19-20. These markings certainly comply with the
provisions of the patent marking statute and are sufficient to place the public, including
Defendant, on constructive notice of Plasticase’s patent rights.
contained proper markings to put the public on constructive notice that the cases were
protected by the Patents-In-Suit. Although for some time Plasticase was still in possession of
certain older cases that contained the marking “Patents Pending,” by September 29, 2009, at the
latest, these cases were no longer being distributed. See Disputed Facts at ¶ 22. It follows then,
by that date, because Plasticase (1) had consistently marked substantially all of its patented cases
Case 0:10-cv-60524-WJZ Document 35 Entered on FLSD Docket 07/22/2010 Page 6 of 9
![Page 7: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/7.jpg)
Case No.: 10-CV-60524-Zloch/Rosenbaum
7
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
and (2) was no longer distributing any unmarked cases, it was in full compliance with the
marking requirements of 35 U.S.C. §287.
d. Defendant Committed Acts of Infringement After Plasticase Brought its
Patented Products in Compliance with the Patent Marking Statute
As the marking statute was satisfied, Defendant was placed on constructive notice of
Plasticase rights in the Patents-In-Suit by September 29, 2009. The patent marking statute
accordingly will not bar the recovery of damages for Defendant’s infringing acts occurring after
that date. American Medical Sys., 6 F.3d at 1537. As discussed below, Defendant committed
most of its infringing acts after September 29, 2009 and summary judgment on the issue of
damages is therefore not warranted.
Each sale, offer for sale, or act of distribution of the infringing cases by Defendant
constitutes an independent and distinct act of infringement. SGS-Thomson Microelectronics v.
International Rectifier Corp., 1994 U.S. App. LEXIS 17418 (Fed. Cir. 1994)(“Section 271(a) of
title 35 of the United States Code makes clear that each sale of a [patented product] is an act of
infringement.”). Defendant placed an order for infringing cases from its foreign manufacturer on
July 27, 2009. See Disputed Facts at ¶¶ 24. The cases were then imported into the United States
by Defendant in late October 2009. See Disputed Facts at ¶¶ 25. By Invicta’s own admission,
the sale of infringing cases began at least as early as July 17, 2009 and continued at least through
April 6, 2010, the date Plasticase’s filed its Complaint. See Disputed Facts at ¶¶ 26. Moreover,
according to the purchase orders produced by Defendant, it made several sales to the retailer,
ShopNBC.com, during the operative time period. These purchase orders evidence sales of the
infringing cases to ShopNBC.com in November and December 2009. See Disputed Facts at ¶¶
27. Plasticase believes that additional discovery will reveal ample evidence that Invicta sold,
Case 0:10-cv-60524-WJZ Document 35 Entered on FLSD Docket 07/22/2010 Page 7 of 9
![Page 8: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/8.jpg)
Case No.: 10-CV-60524-Zloch/Rosenbaum
8
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
offered for sale, and shipped numerous infringing products between September 29, 2009 and
April 6, 2010
As demonstrated above, Plasticase was in compliance with the marking statute prior to a
multitude of Defendant’s infringing acts. Consequently, Defendant has no basis to seek
summary judgment that would limit Plasticase’s recovery of damages at all, let alone limit
damages to those infringing acts occurring after the lawsuit was filed. Moreover, Plasticase
believes that the above-referenced evidence is sufficient to conclusively establish at Plasticase is
entitled to recover damages for all acts of patent infringement committed by Invicta after
September 29, 2009. At the very least, after drawing all inferences in the light most favorable to
Plasticase, there remains
III.
genuine issues of material fact as to Invicta’s assertions that (1)
Plasticase did not comply with the patent marking statute, and in turn (2) that Plasticase cannot
recover damages for patent infringement in this case.
Based on the foregoing, Plasticase has established a genuine issue of material fact as to
the issue of its compliance with the patent marking statute and, in turn, the entitlement to
recovery of patent infringement damages against Defendant. Plasticase respectfully requests that
Defendant’s Motion for Partial Summary Judgment be denied.
CONCLUSION
Case 0:10-cv-60524-WJZ Document 35 Entered on FLSD Docket 07/22/2010 Page 8 of 9
![Page 9: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/9.jpg)
Case No.: 10-CV-60524-Zloch/Rosenbaum
9
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
Dated: July 22, 2010 Respectfully submitted,
LOTT & FRIEDLAND, P.A.
s/Ury Fischer
By: Ury Fischer
Florida Bar No. 0048534
e-mail: [email protected]
Geoffrey Lottenberg
Florida Bar No. 056240
e-mail: [email protected]
355 Alhambra Circle, Suite 1100
Coral Gables, Florida 33134
(305) 448-7089 telephone
(305) 446-6191 telecopier
Attorneys for Plaintiff,
Plasticase, Inc.
CERTIFICATE OF SERVICE
I hereby certify that on the above referenced date, I electronically filed the foregoing
document with the Clerk of the Court using CM/ECF. I also certify that the foregoing document
is being served this day on all counsel of record or pro se parties identified on the attached
Service List in the Manner specified, either via transmission of Notices of Electronic Filing
generated by CM/ECF or in some other authorized manner for those counsel or parties who are
not authorized to receive electronically Notices of Electronic Filing.
Robert M. Schwartz
s/Ury Fischer
Ury Fischer
Florida Bar No. 304018
2445 Hollywood Boulevard
Hollywood, Florida 33020
Attorney for Defendant Invicta
Watch Company of America, Inc.
Service via Notices of Electronic Filing generated by CM/ECF
Case 0:10-cv-60524-WJZ Document 35 Entered on FLSD Docket 07/22/2010 Page 9 of 9
![Page 10: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/10.jpg)
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No.: 10-CV-60524-Zloch/Rosenbaum
PLASTICASE, INC., a Foreign
corporation,
Plaintiff,
v.
INVICTA WATCH COMPANY OF AMERICA, INC., a Florida corporation,
Defendant.
__________________________________/
Pursuant to Rule 7.5 of the Local Rules of the United States District Court for the
Southern District of Florida, Plaintiff Plasticase, Inc. (hereinafter “Plaintiff” or “Plasticase”)
hereby submits the following Concise Statement of Material Disputed Facts (“Disputed Facts”)
in support of Plaintiff’s Memorandum in Opposition to Defendant Invicta Watch Company of
America, Inc.’s (hereafter “Defendant” or “Invicta”) Motion for Partial Summary Judgment on
Damages for Non-Compliance with Marking Requirements Under 35 U.S.C. §287(a) (“Motion
for Partial Summary Judgment”), contemporaneously filed herewith and incorporated herein by
reference in its entirety. Each of the first fifteen paragraphs below responds to the statements
made in the corresponding paragraphs of Invicta’s Statement of Material Facts in Support of
Motion for Partial Summary Judgment. [DE 23-2]. Plasticase disputes certain statements that
Invicta characterizes as undisputed material facts and responds to each of these statements
below. Additionally, several of Invicta’s facts are not material to the underlying issues relating
PLAINTIFF’S CONCISE STATEMENT OF MATERIAL DISPUTED FACTS
Case 0:10-cv-60524-WJZ Document 35-1 Entered on FLSD Docket 07/22/2010 Page 1 of 7
![Page 11: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/11.jpg)
Case No.: 10-CV-60524-Zloch/Rosenbaum
2
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
to partial summary judgment and do not affect the outcome of the case under governing law. See
SEC v. Calvo, 378 F.3d 1211, 1214 (11th Cir. 2004)
1. Plasticase does not dispute this fact. However, this fact is immaterial to the
determination of the issues raised in Defendant’s Motion for Partial Summary Judgment.
2. Plasticase does not dispute this fact. However, this fact is immaterial to the
determination of the issues in Defendant’s Motion for Partial Summary Judgment.
3. Plasticase does not dispute this fact. However, this fact is immaterial to the
determination of the issues in Defendant’s Motion for Partial Summary Judgment.
4. Plasticase does not dispute this fact.
5. Plasticase cannot state whether it disputes this fact as Plasticase has not been able
to inspect of all of the cases which were received by Invicta on June 16 and 17 and July 17 2009.
Plasticase does not dispute that two of the cases it sent to Invicta in 2009 were marked
“PATENTS PENDING.” As is discussed in greater detail in Plaintiff’s Memorandum in
Opposition, however, whether the particular cases received by Invicta in June and July 2009
were marked with patent numbers is not material to the determination of the issues in
Defendant’s Motion for Partial Summary Judgment.
6. Plasticase does not dispute that the NANUK model 905 and 915 cases sent to
Invicta in June and July 2009 contained the following impressions: “MADE IN CANADA,” and
“FABRIQUE IN CANADA.” Plasticase cannot state whether it disputes Invicta’s assertion that
all cases received by Invicta from Plasticase were marked “PATENTS PENDING” because
Plasticase has not been able to inspect of all of the cases which were received by Invicta on June
16 and 17 and July 17 2009. Plasticase does not dispute that two of the cases it sent to Invicta in
2009 were marked “PATENTS PENDING.” As is discussed in greater detail in Plaintiff’s
Case 0:10-cv-60524-WJZ Document 35-1 Entered on FLSD Docket 07/22/2010 Page 2 of 7
![Page 12: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/12.jpg)
Case No.: 10-CV-60524-Zloch/Rosenbaum
3
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
Memorandum in Opposition, however, whether the particular cases received by Invicta in June
and July 2009 were marked with patent numbers is not material to the determination of the issues
in Defendant’s Motion for Partial Summary Judgment.
7. Plasticase does not dispute this fact.
8. Plasticase does not dispute this fact. However, this fact is immaterial to the
determination of the issues in Defendant’s Motion for Partial Summary Judgment because
Plasticase ceased distribution of unmarked cases no later than September 29, 2009 which is well
before Invicta committed at least some of the acts of infringement referenced in the Complaint.
See Declaration of Jean-Pierre Grenier (“Grenier Declaration”) at ¶ 19, attached hereto.
9. Plasticase does not dispute that Paragraph 21 of the Verified Complaint contains
the statement transcribed by Defendant in this paragraph.
10. Plasticase does not dispute this fact.
11. Plasticase does not dispute this fact.
12. Plasticase disputes this fact. Defendant was on constructive notice of Plasticase’s
patent rights and of its infringement thereof at least as early as September 29, 2009, when
substantially all of Plasticase’s patented products were marked with the relevant patent number
and Plasticase ceased distributing unmarked patented products. See Grenier Declaration at ¶ 19.
13. Plasticase cannot state whether it disputes Invicta’s assertion that Invicta ceased
sale and distribution of infringing products upon Invicta’s receipt of the Complaint because
Plasticase has not, at this very early stage in the proceedings, been able to take testimony form
the corporate representative of Invicta and other individuals with actual knowledge as to these
facts.
Case 0:10-cv-60524-WJZ Document 35-1 Entered on FLSD Docket 07/22/2010 Page 3 of 7
![Page 13: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/13.jpg)
Case No.: 10-CV-60524-Zloch/Rosenbaum
4
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
14. Plasticase cannot state whether it disputes Invicta’s assertion that there was never
a re-order of infringing products by Invicta from its manufacturer because Plasticase has not, at
this very early stage in the proceedings, been able to take testimony form the corporate
representative of Invicta and other individuals with actual knowledge as to these facts.
However, regardless of the truth of this assertion, it is not material to the determination of the
issues in Defendant’s Motion for Partial Summary Judgment because in addition to ordering the
production of infringing copies of Plasticase’s patented products, Defendant committed
numerous other acts of infringement, including the offer for sale, sale, and distribution of
infringing products between at least July 2009 and December 2009. See Exhibit A
15. Plasticase does not dispute this fact.
, filed
separately under seal, which are true and correct copies of documents produced by Defendant
identified by Bates Numbers D2-D5; D9-D14.
16. After filing the applications that eventually issued as U.S. Patent Nos. D578,759
(the “‘759 Patent”) and D579,202 (the “’202 Patent”) (collectively the “Patents-In-Suit),
Plasticase began manufacturing plastic storage cases embodying the designs covered by the
applied-for patents. See Grenier Declaration at ¶ 10.
ADDITIONAL FACTS
17. Initially, as no patents had yet issued, Plasticase’s cases were engraved with the
phrase “Patents Pending.” See Grenier Declaration at ¶ 10 .
18. The Patents-In-Suit issued in late October 2008 and in November 2008 Plasticase
changed the molds used to manufacture its NANUKTM
line of cases to include a new patent
marking indicating that the cases were protected by U.S. patents and providing the relevant
patent numbers. See Grenier Declaration at ¶¶ 7-8, 11.
Case 0:10-cv-60524-WJZ Document 35-1 Entered on FLSD Docket 07/22/2010 Page 4 of 7
![Page 14: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/14.jpg)
Case No.: 10-CV-60524-Zloch/Rosenbaum
5
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
19. As of November 2008, all of Plasticase’s NANUKTM
20. All new patented cases manufactured by Plasticase after November 2008 were
conspicuously marked, as follows: “U.S. Patents D578,759” for its NANUK
manufacturing molds
included the new patent marking that included the patent numbers. See Grenier Declaration at
¶11.
TM905 cases, and
“U.S. Patents D579,202” for its NANUKTM
21. Plasticase’s customary practice and procedure is to manufacture its NANUK
915, 920, 925, 935, 940, and 945 cases. See
Grenier Declaration at ¶ 12.
TM
22. By September 29, 2009 Plasticase ceased distributing the older cases and from
that point forward distributed only plastic storage cases that contained patent markings that
identified the Patents-in-Suit by number. See Grenier Declaration at ¶ 19.
line of cases in a particular model and color when the stocked inventory is nearly depleted or
below a level sufficient to satisfy new or short-term projected orders. Thus, although as of
November 2008 all of the newly manufactured cases contained the proper patent number
markings, not all of Plasticase’s previous inventory of cases had been sold off. Therefore, at the
time the manufacturing molds were changed to reflect the patent numbers, Plasticase was still in
possession of some older cases containing the impression “Patents Pending.” See Grenier
Declaration at ¶ 13-14.
23. When Plasticase was approached by Defendant in June 2009 regarding a new
order, it sent a few of cases to Defendant free-of-charge as samples of Plasticase’s work. See
Defendant’s Concise Statement of Facts at ¶ 6.
Case 0:10-cv-60524-WJZ Document 35-1 Entered on FLSD Docket 07/22/2010 Page 5 of 7
![Page 15: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/15.jpg)
Case No.: 10-CV-60524-Zloch/Rosenbaum
6
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
24. After receiving sample cases from Plasticase, Defendant proceeded to “knock-
off” Plasticase’s designs, and on July 27, 2009 placed an order with a foreign manufacturer for
tens of thousands of cases that infringe the Patents-In-Suit. See Defendant’s Memorandum of
Law in Support of its Motion for Partial Summary Judgment (“Defendant’s Memorandum”),
[DE 23-1] at 4; Declaration of Abraham Lalo, [DE 23-3] at ¶16; Exhibit A
25. Defendant’s infringing cases were imported into the United States in late October
2009. See
at D2-D5.
Exhibit A
26. Defendant began offering for sale infringing cases at least as early as July 17,
2009 and continued offering infringing cases for sale until at least the filing of the instant
lawsuit, on April 6, 2010. See Defendant’s Memorandum at 4-5; Declaration of Abraham Lalo,
[DE 23-3] at ¶¶12, 16-18;
at D2-D5.
Exhibit A
27. Defendant offered for sale and sold infringing cases to at least one retailer,
ShopNBC.com, in November and December 2009. See
at D9-D14.
Exhibit A at D9-D14.
Case 0:10-cv-60524-WJZ Document 35-1 Entered on FLSD Docket 07/22/2010 Page 6 of 7
![Page 16: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/16.jpg)
Case No.: 10-CV-60524-Zloch/Rosenbaum
7
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134
(305) 448-7089 • (305) 446-6191 telecopier
Dated: July 22, 2010 Respectfully submitted,
LOTT & FRIEDLAND, P.A.
s/Ury Fischer
By: Ury Fischer
Florida Bar No. 0048534
e-mail: [email protected]
Geoffrey Lottenberg
Florida Bar No. 056240
e-mail: [email protected]
355 Alhambra Circle, Suite 1100
Coral Gables, Florida 33134
(305) 448-7089 telephone
(305) 446-6191 telecopier
Attorneys for Plaintiff,
Plasticase, Inc.
CERTIFICATE OF SERVICE
I hereby certify that on the above referenced date, I electronically filed the foregoing
document with the Clerk of the Court using CM/ECF. I also certify that the foregoing document
is being served this day on all counsel of record or pro se parties identified on the attached
Service List in the Manner specified, either via transmission of Notices of Electronic Filing
generated by CM/ECF or in some other authorized manner for those counsel or parties who are
not authorized to receive electronically Notices of Electronic Filing.
Robert M. Schwartz
s/Ury Fischer
Ury Fischer
Florida Bar No. 304018
2445 Hollywood Boulevard
Hollywood, Florida 33020
Attorney for Defendant Invicta
Watch Company of America, Inc.
Service via Notices of Electronic Filing generated by CM/ECF
Case 0:10-cv-60524-WJZ Document 35-1 Entered on FLSD Docket 07/22/2010 Page 7 of 7
![Page 17: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/17.jpg)
Case 0:10-cv-60524-WJZ Document 35-2 Entered on FLSD Docket 07/22/2010 Page 1 of 5
![Page 18: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/18.jpg)
Case 0:10-cv-60524-WJZ Document 35-2 Entered on FLSD Docket 07/22/2010 Page 2 of 5
![Page 19: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/19.jpg)
Case 0:10-cv-60524-WJZ Document 35-2 Entered on FLSD Docket 07/22/2010 Page 3 of 5
![Page 20: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/20.jpg)
Case 0:10-cv-60524-WJZ Document 35-2 Entered on FLSD Docket 07/22/2010 Page 4 of 5
![Page 21: https___ecf.flsd.uscourts.gov_cgi-bin_show_temp.pl_file=merged_0.0420206920627031_-1-1279914024](https://reader034.vdocument.in/reader034/viewer/2022042901/568c2c271a28abd8328c87fc/html5/thumbnails/21.jpg)
Case 0:10-cv-60524-WJZ Document 35-2 Entered on FLSD Docket 07/22/2010 Page 5 of 5