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SNELL &L.L.P.WILMER
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v.
LTD COMMODITIES LLC, a
Delaware limited liability company;
ACI, INC., a New Jersey corporation;
DOES 1-10,
Defendants.
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Second Amended Complaint
SACV1501591 JLS (DFMX)
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For its Second Amended Complaint herein, plaintiff SKITS, LLC (SKITS)
hereby alleges as follows:
PARTIES
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laws of the state of California, having its principal place of business at 1801 East
SNELL &L.L.P.WILMER
2.
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existing under the laws of the state of Delaware, having its principal place of
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3.
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regularly conducts business in, and has committed the acts alleged herein, within
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ACI, Inc. (ACI) is a corporation organized and existing under the laws of the
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state of New Jersey, having its principal place of business at 950 3rd Ave., 20th
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regularly conducts business in, and has committed at least some of the acts alleged
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SKITS does not know the true names and capacities of defendants
Does 1-10, inclusive, and therefore sues such defendants by fictitious names.
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SKITS is informed and believes, and thereon allege, that each fictitiously named
defendant is in some manner responsible for the claims and causes of action alleged
herein and that the acts or omissions of said fictitious defendants proximately
caused damage and other harm alleged in this complaint. When SKITS ascertains
the actual names and capacities of Does 1-10, it will amend this complaint name
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and each of them, including defendants sued by fictitious names, are, and at all
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times mentioned herein were, the alter-egos, parents, subsidiaries, agents, partners,
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representatives of each of the remaining defendants, and in doing the things herein
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alleged were acting within the course and scope of their authority, agency, and
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employment, and with the knowledge, consent, and approval of their fellow
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This is an action for (A) patent infringement arising under the patent
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laws of the United States, 35 U.S.C. 271 and 281; (B) trademark infringement
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arising under 15 U.S.C. 1125(a); (C) false designation of origin arising under 15
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U.S.C. 1125(a); (D) trademark infringement arising under the common law of the
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state of California; and (E) unfair competition arising under the laws of the state of
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California.
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U.S.C. 1116(a) and 1121(a) and 28 U.S.C. 1331 and 1338 over the claims
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arising under the laws of the United States. This Court has supplemental
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1367(a) because the state law claims are so related to the federal claims that they
form part of the same case or controversy and derive from a common nucleus of
operative facts.
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This Court has personal jurisdiction over LTD because LTD has a
including by regularly doing and soliciting business and deriving revenue from
goods provided to individuals in this judicial district, including but not limited to,
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retailers in this district and selling into the stream of commerce knowing such cases
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would be sold in California and this district, which acts form a substantial part of
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This Court has personal jurisdiction over ACI because ACI has a
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including by regularly doing and soliciting business and deriving revenue from
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goods provided to individuals in this judicial district, including but not limited to,
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on information and belief, selling into the stream of commerce knowing such cases
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would be sold in California and this district, which acts form a substantial part of
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the events or omissions giving rise to SKITS claim. Moreover, on information and
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belief, SKITS thereon alleges, that ACI has entered into an agreement with LTD to
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indemnify LTD for actions related to the products ACI has sold LTD, including
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products it it knew or should have known would be sold in California and this
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district.
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GENERAL ALLEGATIONS
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chargers, and other accessories for electronic devices portable and organized. Since
the launch of these cases, including the SKITS Smart Tech Case shown below, in
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The Smart Tech Case debuted in the widely read SkyMall catalogue
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and has since been featured in national publications such as USA Today and Travel
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Weekly, regional news outlets like The Seattle Times and The Dallas Morning
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News, and almost a dozen other blogs, websites, and other online news outlets in
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fewer than two years on the market. The Smart Tech Case is also offered by
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national retail chains like Nordstrom, Best Buy, and Fred Meyer, and through the
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///
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SKITS has common law rights in the SMART TECH CASE trademark
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In light of the innovative design of the Smart Tech Case product, the
United States Patent and Trademark Office duly issued United States Design Patent
No. D739,655 (the 655 patent) on September 29, 2015, entitled CASE. A
copy of the 655 patent is attached hereto, marked as Exhibit A and incorporated
herein by this reference. SKITS is the owner by assignment of all right, title, and
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SKITS has provided the public with constructive notice of its pending
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selling, offering for sale, and/or importing into the United States cases that infringe
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SKITS intellectual property rights, including SKITS rights in the 655 patent and
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LTD sells and offers for sale a Smart Tech Organizer Case that is
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virtually identical to SKITS Smart Tech Case. SKITS is informed and believes,
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and based thereon alleges, that LTD purchases the product marketed as Smart
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Tech Organizer Case from ACI; that ACI imports that product into the United
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States for sale to LTD and perhaps other US-based customers; and that ACI has
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agreed to indemnify LTD for any infringement claims brought against ACI with
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///
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ACI and LTD neither sought nor received permission from SKITS to
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ACI neither sought nor received permission from SKITS to use its
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SKITS is informed and believes, and on that basis alleges, that LTDs
unauthorized use of the SMART TECH ORGANIZER CASE mark and 655 patent
design is intended to trade upon the goodwill and substantial recognition associated
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with the Smart Tech Case and SKITS, and to cause mistake or deception as to the
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relationship of SKITS and LTDs goods, and has otherwise competed unfairly with
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SKITS by unlawfully trading on and using the SMART TECH CASE mark and
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SKITS is informed and believes, and on that basis alleges, that ACIs
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suffer irreparable injury to its business. SKITS will suffer substantial loss of
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goodwill and reputation unless and until ACI and LTD are preliminarily and
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(PATENT INFRINGEMENT)
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making, using, selling, offering for sale, and/or importing the Smart Tech
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Organizer Case product that is covered by the claims of the 655 patent.
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permission or license from SKITS. SKITS is informed and believes, and on that
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basis alleges, that defendants knew, or should have known, of the 655 patent and
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that its actions constitute willful and intentional infringement of the 655 patent.
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Defendants have derived and received gains, profits, and advantages in an amount
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for Defendants infringing acts and treble damages together with interest and costs
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Due to the aforesaid infringing acts, SKITS has suffered great and
irreparable injury, for which SKITS has no adequate remedy at law. Defendants
will continue to infringe the 655 patent to the great and irreparable injury of
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1125(a).
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mark for organizing cases for earbuds, cords, chargers and more is likely to cause
confusion with SKITS use of the SMART TECH CASE mark for a nearly
identical case for cords and accessories for your electronic devices.
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SKITS is informed and believes, and on that basis alleges, that LTD
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knew or had reason to know of SKITS ownership and use of the SMART TECH
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CASE mark and that its use of the mark in connection with organizing cases would
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U.S.C. 1125(a).
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SKITS is informed and believes, and on that basis alleges, that LTD
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has derived and received, and will continue to derive and receive, gains, profits, and
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advantages from the use of the SMART TECH CASE mark. By reason of LTDs
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actions, constituting unauthorized use of the SMART TECH CASE mark, SKITS
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at trial.
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TECH CASE mark, SKITS has suffered and continues to suffer great and
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damages, reasonable royalty, enhanced profits, and damages, costs, and reasonable
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Without SKITS consent, LTD has created and will create a false
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CASE mark and/or other marks confusingly similar to the SMART TECH CASE
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mark in connection with the distribution, sale, offering for sale, advertising, and/or
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to suggest SKITS as the origin of the goods, or that SKITS has sponsored or
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SKITS is informed and believes, and on that basis alleges, that LTD
acted with the intent to unfairly compete against SKITS, to trade upon SKITS
reputation and goodwill by causing confusion and mistake among customers and
the public, and to deceive the public into believing that LTDs organizing case
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SKITS is informed and believes, and on that basis alleges, that LTD
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had knowledge of SKITS ownership and prior use of the SMART TECH CASE
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mark, and without the consent of SKITS, has willfully committed acts of unfair
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SKITS is informed and believes, and on that basis alleges, that LTD
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has derived and received, and will continue to derive and receive, gains, profits, and
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misleading representations of fact, SKITS has suffered and continues to suffer great
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and irreparable injury, for which SKITS has no adequate remedy at law.
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common law.
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under California common law. LTDs acts complained of herein are willful and
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deliberate and committed with knowledge that LTDs unauthorized use of the
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SKITS is informed and believes, and thereon alleges, that LTD has
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derived and received and will continue to derive and receive, gains, profits, and
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acts as alleged in this Complaint, SKITS has been damaged and is entitled to
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continues to suffer great and irreparable injury, for which SKITS has no adequate
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remedy at law.
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52.
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///
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Business & Professions Code 17200, et seq. and California common law against
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complained of herein are fraudulent, unfair, and unlawful, and constitute unfair
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competition with SKITS under the common law and statutory laws of the state of
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standing to assert this claim under California Business & Professions Code
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17200, et seq. because SKITS monetary and property interests have been
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SKITS is informed and believes, and thereon alleges, that LTD has
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derived and received, and will continue to derive and receive gains, profits, and
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alleged in this Complaint, SKITS has been damaged and is entitled to monetary
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By its actions, LTD has injured and violated the rights of SKITS and
has irreparably injured SKITS, and such irreparable injury will continue unless
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3. That Defendants account for all gains, profits, and advantages derived
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4. That SKITS have and recover defendants total profits under 35 U.S.C.
289 for LTDs infringement of the 655 patent;
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35 U.S.C. 284;
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7. That the SMART TECH CASE mark be deemed valid and willfully
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marks;
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reputation;
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10. That LTD be required to account for any and all profits derived by its
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13. That LTD be adjudged to have willfully and maliciously infringed the
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14. That LTD be adjudged to have competed unfairly with SKITS under
the common law of the state of California;
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15. That LTD be adjudged to have competed unfairly with SKITS under
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a. all profits received by LTD from sales and revenues of any kind
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trebled;
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18. That SKITS have and recover the costs of this civil action, including
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20. Such other and further relief as this Court may deem just and proper.
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Dated:
SNELL &L.L.P.WILMER
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Dated:
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CERTIFICATE OF SERVICE
I hereby certify that on January 28, 2016, I electronically filed the document
described as Second Amended Complaint for Damages and Injunctive Relief
(Patent and Trademark Infringement; Unfair Competition); Demand for Jury
Trial with the Clerk of the Court using the CM/ECF System which will send
notification of such filing to the following:
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LAW OFFICES
600 Anton Boulevard, Suite 1400
Costa Mesa, California 92626-7689
(714) 427-7000
Snell &L.L.P.
Wilmer
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By: s/Jeffrey M. Singletary
Ketan S. Vakil
Glenn W. Trost
Jeffrey M. Singletary
Attorneys for Plaintiff SKITS, LLC
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CERTIFICATE OF SERVICE
SACV15-01591 JLS (DFMx)
23325434.1