xstatic v. hsiao & montano - complaint

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

~


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.


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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.


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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


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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


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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.


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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:


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[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


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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.


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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.

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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)


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.

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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


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)


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


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


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


16/58

(646) 878-0801 fax

vmunoz@pearlcohen,com

[email protected]

16


17/58

EXH IB I T A


18/58

mS PEARL COHEN ZEDEK LATZER llp

NEW

YORK - BOSTON

December

18, 2012

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. 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


19/58

PEARL COHEN ZEDEK

LATZER

llp

NFW YORK - BOSTON


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;


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


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


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:


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.


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PEARLCOHEN ZEDEK LATZER llp


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])


23/58

EXHIBIT A


24/58

V

EXHIBIT

.


25/58

EXH IB I T B


26/58

B

PEARL

COHEN ZEDEK LATZER l lp

NEW YORK -

BOSTON

July 9, 2013

Direct

Dial: 646-878-0849

Direct

E-mail:

[email protected]

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


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PEARL

COHEN

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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


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


and

handle

on the


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


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


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


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.


30/58

PEARL

CC

NEW

YORK

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ZEDEK LATZER llp


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])


31/58


32/58


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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


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


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

xstatic v. hsiao & montano - complaint

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