Case 1:13-cv-00710-WSD Document 30 Filed 07/31/13 Page 1 of 4

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF GEORGIA ATLANTA DIVISION

SPANX, INC., Plaintiff, v. TIMES THREE CLOTHIER, LLC d/b/a Yummie Tummie, Defendant.

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Civil Action No. 1:13-cv-00710-WSD

CONSENT ORDER REGARDING SECOND AMENDED COMPLAINT

By stipulation and agreement of the parties, and with the express consent of plaintiff and counterclaim defendant Spanx, Inc. (Spanx) and defendant and counterclaim plaintiff Times Three Clothier, LLC (Times Three), as indicated by the signatures of their respective counsel below, and in accordance with Fed. R. Civ. P. 15 (a) (2) permitting amendments to pleadings with the written consent of the parties; and It appearing that Spanx filed its Complaint for Declaratory Relief in this matter on March 5, 2013 [Dkt-1] seeking declaratory relief that Spanx did not infringe seven patents asserted against Spanx in a January 18, 2013 letter from Times Three (namely, U.S. Design Patent Nos. D606,285S (the 285 Patent),

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D616,627S (the 627 Patent), D632,051S (the 051 Patent), D632,052S (the 052 Patent), D632,053S (the 053 Patent), D622,477S (the 477 Patent ), and D623,377S (the 377 Patent)) and sought, obtained and filed on April 5, 2013 Times Threes Waiver of Service thereof [Dkt-5]; and It further appearing that Times Three filed and served Defendant Times Three Clothier, LLCs Answer, Affirmative Defenses and Counterclaims on May 13, 2013[Dkt-17] counterclaiming infringement of certain of the patents asserted in the January 18, 2013 Letter (namely the 285, 627, 477, and 377 Patents) and two additional patents (namely, U.S. Design Patent Nos. D665,558S (the 558 Patent) and D666,384S (the 384 Patent)) against Spanx and admitting that certain of Spanxs products did not infringe any valid claim of three of the seven patents originally asserted in its January 18, 2013 letter (namely, the 051, 052 and 053 Patents); and It further appearing that, on June 6, 2013, Spanx filed and served its First Amended Complaint for Declaratory Relief [Dkt-20], adding declaratory judgment claims of non-infringement for the newly asserted 558 and 384 Patents and adding declaratory judgment claims of invalidity for all nine patents including the 051, 052 and 053 Patents; and It further appearing that counsel for the parties have conferred regarding the how to address the 051, 052 and 053 Patents no longer being asserted by Times

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Three against Spanx and how to simplify the pleadings in this matter and in light of Times Threes decision not to pursue infringement claims against Spanx with respect to those Patents, and have agreed, as set forth in this Consent Order, that Spanx may amend its Complaint in this action to remove, without prejudice, Spanxs non-infringement and invalidity claims as to the 051, 052 and 053 Patents, such that the action may continue as to the Patents that remain in dispute; and NOW, THEREFORE, IT IS HEREBY ORDERED as follows: (1) Spanx is hereby granted leave to file and serve a Second Amended

Complaint for Declaratory Relief herein, as per the marked pleading attached as Exhibit A; (2) The removal of Spanxs claims as to the 051, 052 and 053 Patents

is without prejudice, is not an adjudication on the merits, and does not constitute either claim or issue preclusion; (3) Times Three shall not file or serve any response to Spanxs First

Amended Complaint for Declaratory Relief; and

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(4)

Times Three shall file and serve a response to Spanxs Second

Amended Complaint for Declaratory Relief in accordance with the Federal Rules of Civil Procedure.

SO ORDERED, this ______ day of __________, 2013.

WILLIAM S. DUFFEY, JR. UNITED STATES DISTRICT JUDGE CONSENTED TO:

Counsel for Plaintiff and Counterclaim Defendant SPANX, INC.: /s/ Natasha H. Moffitt __ Natasha H. Moffitt (Georgia Bar No. 367468) Laura S. Huffman King & Spalding LLP 1180 Peachtree Street, N.E. Atlanta, GA 30309-3521 Kathleen E. McCarthy King & Spalding LLP 1185 Avenue of the Americas New York, NY 10036 New York, NY 10036

Counsel for Defendant and Counterclaim Plaintiff TIMES THREE CLOTHIER, LLC: /s/ Theodore H. Davis Jr. Theodore H. Davis Jr. (Georgia Bar No. 212913) Kilpatrick Townsend & Stockton LLP 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 Steven B. Pokotilow Laura Goldbard George Irah H. Donner Binni N. Shah Stroock Stroock & Lavan 180 Maiden Lane New York, NY 10038-4982

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Exhibit A

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IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF GEORGIA ATLANTA DIVISION

SPANX, INC., Plaintiff, v. TIMES THREE CLOTHIER, LLC d/b/a Yummie Tummie, Defendant.

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Civil Action No. 1:13-cv-00710-WSD

SECOND AMENDED COMPLAINT FOR DECLARATORY RELIEF

Plaintiff Spanx, Inc. (Spanx) alleges as follows for its second amended complaint against Times Three Clothier d/b/a Yummie Tummie (Yummie Tummie): PARTIES 1. Plaintiff Spanx is a Georgia corporation with its principal place of

business at 3344 Peachtree Road, NE, Suite 1700, Atlanta, Georgia 30326. Spanx is an apparel company that designs and manufactures, among other things, undergarments, slimming apparel and shapewear, hosiery, swimsuits, and activewear.

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2.

On information and belief, Defendant Yummie Tummie is a New

York Limited Liability Company with its principal place of business at 561 Seventh Avenue, 12th Floor, New York, New York 10018. On information and belief, Yummie Tummie manufactures and sells bodyshaping undergarments and apparel. JURISDICTION AND VENUE 3. This action arises under the patent laws of the United States, Title 35

of the United States Code, 1 et seq., with a specific remedy sought under the Federal Declaratory Judgment Act, 28 U.S.C. 2201 and 2202. An actual, substantial, and continuing justiciable controversy exists between Spanx and Yummie Tummie that requires a declaration of rights by this Court. 4. This Court has subject matter jurisdiction over this action pursuant to

28 U.S.C. 1331 and 1338(a). 5. This Court has personal jurisdiction over Yummie Tummie by virtue

of Yummie Tummies purposeful contact with this district, including, on information and belief, Yummie Tummies substantial business conducted with customers residing in this district; and Yummie Tummies attempts to enforce design patents purportedly assigned to it against Spanx, an entity having a principal place of business in Georgia, for alleged infringing activity occurring in Georgia.

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6.

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

7.

Defendant Yummie Tummie claims to be the owner by assignment of

U.S. Design Patent Nos. D606,285S (the 285 Patent, copy attached hereto as Exhibit A), D616,627S (the 627 Patent, copy attached hereto as Exhibit B), D622,477S (the 477 Patent, copy attached hereto as Exhibit C), and D623,377S (the 377 Patent, copy attached hereto as Exhibit D), D665,558S (the 558 Patent, copy attached hereto as Exhibit E) and D666,384S (the 384 Patent, copy attached hereto as Exhibit F) (collectively, the Patents-in-Suit). 8. The Patents-in-Suit are related to one another in that the 627 Patent,

the 477 Patent, the 377 Patent, the 558 Patent, and the 384 Patent all claim priority to the 285 Patent. 9. Each of the Patents-in-Suit identifies Heather Thompson Schindler as

the sole inventor. 10. On or about January 18, 2013, Yummie Tummie (through counsel)

contacted Spanx by letter, informing Spanx that Yummie Tummie is the owner of some of the Patents-in-Suit, enclosing a copy of the said patents, and stating that Spanx is making, offering for sale and selling shapewear products in the United States that contain Yummies patented designs and that the Spanx

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products appear substantially the same as the patented designs from the point of view of an ordinary observer, thereby, constituting design patent infringement. In its January 18 letter, Yummie Tummie identified the allegedly infringing Spanx products as including The Total Taming Tank A226764, also known as The Spanx Total Taming Tank, the Top This Tank Style 1847 and The Top This Cami Style 1846 (collectively, the Accused Products). Yummie Tummie further noted in its letter that it vigorously enforces the rights in its patents, referenced patent infringement litigation it recently settled with Maidenform, and demanded, among other things, that Spanx cease manufacturing, offering for sale, and selling the Accused Products. 11. On or about February 14, 2013, Spanx (through counsel) responded to

Yummie Tummies January 18, 2013 letter, describing in detail significant differences between the Accused Products and Yummie Tummies patents that and stating, among other things, that it does not believe the Accused Products infringe Yummie Tummies patents. 12. Since Yummie Tummie contacted Spanx in January 2013, counsel for

Spanx and Yummie Tummie have communicated on several occasions by telephone and in writing concerning Yummie Tummies claims. During these telephone conferences, Yummie Tummie continued to maintain that the Accused

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Products infringe its patents and expressed its willingness to enforce its patents against Spanx. 13. On April 2, 2013, a month after Spanx initially brought this action for

declaratory relief, Yummie Tummie filed suit against Spanx in the Southern District of New York, asserting that the Accused Products infringe the Patents-inSuit. Spanx has denied infringement in the New York action and has also asserted that the parties dispute should not proceed in New York but in this, the first-filed court, the Northern District of Georgia. 14. As a result of Yummie Tummies previous and continued assertions

that Spanx is infringing the Patents-in-Suit, and Spanxs denial of the same, an actual and justiciable controversy exists between the parties of sufficient immediacy and reality to warrant issuance of a declaratory judgment under 28 U.S.C. 2201 and 2202 as to the alleged infringement and invalidity of the designs claimed in the Patents-in-Suit. FIRST CLAIM FOR RELIEF (DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE PATENTS-IN-SUIT) 15. Spanx restates and incorporates by reference the allegations in

paragraphs 1 through 14 above.

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16.

An actual controversy has arisen and now exists between the parties

with respect to the alleged infringement of the Patents-in-Suit. Spanx contends that Spanxs products, including The Total Taming Tank A226764, also known as The Spanx Total Taming Tank, the Top This Tank Style 1847, and The Top This Cami Style 1846 have not infringed and do not infringe any valid claim of the Patents-in-Suit. Upon information and belief, Yummie Tummie currently disputes these contentions. 17. Pursuant to 28 U.S.C. 2201 and 2202, a judicial determination of

the respective rights of the parties with respect to the alleged infringement of the Patents-in-Suit is necessary and appropriate under the circumstances. SECOND CLAIM FOR RELIEF (DECLARATORY JUDGMENT OF INVALIDITY OF THE PATENTS-IN-SUIT) 18. Spanx restates and incorporates by reference the allegations in

paragraphs 1 through 17 above. 19. Spanx contends that the Patents-in-Suit are invalid for failure to meet

one or more of the conditions of patentability specified in 35 U.S.C. 102, 103, 112, and/or 171. Upon information and belief, Yummie Tummie disputes these contentions.

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20.

Pursuant to 28 U.S.C. 2201 and 2202, a judicial determination of

the respective rights of the parties with respect to the alleged invalidity of the Patents-in-Suit is necessary and appropriate under the circumstances. PRAYER FOR RELIEF WHEREFORE, Spanx prays for relief as follows: A. For a judicial declaration that Spanx does not infringe any valid claim

of U.S. Design Patent Nos. D606,285S, D616,627S, D622,477S, D623,377S, D665,558S, and D666,384S; and B. For a judicial declaration that U.S. Design Patent Nos. D606,285S,

D616,627S, D622,477S, D623,377S, D665,558S, and D666,384S are invalid; and C. For an order awarding Spanx its costs, expenses, and reasonable

attorneys fees as provided by law; and D. For such other and further relief as the Court deems just and proper. JURY DEMAND Spanx demands a trial by jury on all issues so triable as a matter of right and law. Respectfully submitted, this __th day of ____, 2013. KING & SPALDING LLP

Natasha H. Moffitt -7-

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(Georgia Bar No. 367468) Laura S. Huffman (Georgia Bar No. 595909) 1180 Peachtree Street, N.E. Atlanta, Georgia 30309-3521 Telephone: (404) 572-4600 Facsimile: (404) 572-5134 E-mail: nmoffitt@kslaw.com E-mail: lhuffman@kslaw.com Kathleen E. McCarthy (admitted pro hac vice) 1185 Avenue of the Americas New York, New York 10036 Telephone: (212) 556-2345 E-mail: kmccarthy@kslaw.com Attorneys for Plaintiff SPANX, INC.

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CERTIFICATE OF SERVICE I hereby certify that on this day, I electronically filed the foregoing SECOND AMENDED COMPLAINT FOR DECLARATORY RELIEF with the Clerk of Court using the CM/ECF system, which will send notification of such filing to Defendants counsel of record: Theodore H. Davis Jr. Kilpatrick Townsend & Stockton LLP 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 Steven B. Pokotilow Laura Goldbard George Binni N. Shah Stroock Stroock & Lavan 180 Maiden Lane New York, NY 10038-4982 This __th day of _______, 2013.

Natasha H. Moffitt

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Exhibit A

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Exhibit B

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Exhibit C

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Exhibit D

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Exhibit E

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Exhibit F

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