ETS Express v. FC Brands - Complaint

Case 2:20-cv-01761 Document 1 Filed 02/24/20 Page 1 of 29 Page ID #:1
1 Milord A. Keshishian, SBN 197835

milord@milordlaw.com
2 Lorie K. Mallari, SBN 310056
lorie@milordlaw.com
3 MILORD & ASSOCIATES, P.C.
10517 West Pico Boulevard
4 Los Angeles, California 90064
Tel: (310) 226-7878
5 Fax: (310) 226-7879
6 Attorneys for Plaintiff
7 ETS EXPRESS, LLC
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UNITED STATES DISTRICT COURT
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CENTRAL DISTRICT OF CALIFORNIA
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ETS EXPRESS, LLC, a California Case No.: 2:20-cv-1761
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limited liability company,
13 COMPLAINT FOR:
MILORD & ASSOCIATES, PC
Los Angeles, CA 90064
14 Plaintiff,
(310) 226-7878
1. Declaration of Non-Infringement,
15 Invalidity, and Unenforceability of
16 Design Patent
vs.
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JURY TRIAL DEMANDED
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FC BRANDS, LLC D/B/A SOMA
19 WATER, a Delaware limited liability
20 company,
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Defendant.
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COMPLAINT – Jury Demand
1 Plaintiff ETS Express, LLC (“ETS”) by and through its undersigned attorneys,
2 sues FC Brands, LLC d/b/a Soma Water (“Defendant” or “FC Brands”), and alleges:
3 NATURE OF THE ACTION
4 1. This is a Declaratory Judgment action for a declaration of invalidity and
5 non-infringement of U.S. Design Patent No. D832,650 entitled “Water Bottle” (“the ‘650
6 Design Patent”) under the Declaratory Judgment Act 28 U.S.C. §§2201 – 2202 and the
7 patent laws of the United States 25 U.S.C. §101 et seq.
8 THE PARTIES
9 2. Plaintiff, ETS, is a California limited liability company with its principal
10 place of business at 420 South Lombard St., Oxnard, California 93030.
11 3. On information and belief, Defendant is a Delaware limited liability
12 company with its principal place of business at 146 West 29th Street, Suite 9W, New
13 York, New York 10001. Defendant was registered to do business within the State of
14 California until at least 2018. Defendant operates an e-commerce website located at

(310) 226-7878
15 <drinksoma.com>, which distributes products throughout the United States, including

16 California and this District, including products allegedly covered by the ‘650 Design
17 Patent.
18 JURISDICTION AND VENUE
19 4. The Court has jurisdiction over the subject matter of this action pursuant to
20 28 U.S.C. §§ 1331, 1338(a), 35 U.S.C. § 292, and pursuant to 28 U.S.C. §§ 2201(a) and
21 2202.
22 5. This Court has personal jurisdiction over Defendant.
23 6. Defendant was registered to do business within the State of California
24 between 2017 and 2018.
25 7. On information and belief, in at least 2017, Defendant travelled to the State
26 of California to negotiate purchasing assets of Soma Water Inc. (“Soma Water”), a
27 Delaware corporation with its principal place of business in California.
28 8. As a result of Defendant’s interactions with a business having a principal
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1 place of business in California, and while Defendant was registered to do business in the
2 State of California, in June of 2017, Defendant was assigned all right, title and interest in
3 the ‘650 Design Patent from Soma Water, whose principal place of business at that time
4 was in California.
5 9. The inventors of the ‘650 Design Patent, Markus Peter Diebel and Joe Sung-
6 Ho Tan were identified during prosecution before the United States Patent and
7 Trademark Office as being residents of the State of California.
8 10. On information and belief, the invention disclosed in the ‘650 Design Patent
9 was conceived within the State of California.
10 11. Defendant has sent at least one cease and desist letters to an entity located in
11 this District and the State of California, ETS, alleging infringement of the ‘650 Design
12 Patent.
13 12. Defendant offers for sale products within brick and mortar stores within
14 California and this District.

(310) 226-7878
15 13. Defendant also offers for sale products, including products allegedly covered
16 by the ‘650 Design Patent, through numerous e-commerce retailers, including but not
17 limited to, Defendant’s own website, Amazon, Pottery Barn, Bed Bath & Beyond, to
18 residents of California and this District.
19 14. Defendant has sold products to consumers in California through brick and
20 mortar stores and through the Internet.
21 15. Defendant’s Pinterest account < https://www.pinterest.com/somawater/>,
22 last visited on February 24, 2020, lists Defendant’s location as being in California.
23 16. Defendant’s have targeted Los Angeles residents with marketing and
24 advertisements for their products in Los Angeles Times, InStyle Magazine’s city guide to
25 Los Angeles, and Los Angeles based design studio Graf & Lantz.
26 17. Defendant has also partnered with Los Angeles based companies, including
27 its “favorite Los Angeles-based maker of cold-press juices,” <juicesservedhere.com>,
28 and shared “the story behind the new partnership” of developing a custom designed
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1 bottle.
2 18. On information and belief, Defendant has traveled to California to conduct
3 business.
4 19. Venue is proper in this judicial district pursuant to 28 U.S.C. §1391(b) and
5 (c) because Defendant conducts business in this District, resided in this District, ETS
6 resides in this District, and/or a substantial part of the events or omissions giving rise to
7 the claim occurred in this District.
8 FACTS COMMON TO ALL COUNTS
9 20. On November 6, 2018, the United States Patent and Trademark Office
10 issued the ‘650 Design Patent. Defendant alleges that it is the owner of the ‘650 Design
11 Patent. A true and correct copy of the ‘650 Design Patent is attached hereto as EXHIBIT
12 1.
13 21. Figure 3 of the ‘650 Design Patent is shown below:
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1 22. During prosecution of the ‘650 Design Patent to overcome a rejection based
2 on obviousness, the figures were amended to claim additional features of the bottle and in
3 particular, the cap, neck and bottom detail as shown as circled below:
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18 23. On January 30, 2020 Defendant, through its counsel, sent a letter to ETS,
19 demanding that ETS “immediately cease and desist its manufacturing, marketing and sale
20 of” the H2Go Bali Water Bottle. The correspondence alleges that ETS’s H2Go Bali
21 Water Bottle infringes the ‘650 Design Patent as further detailed in claim charts and
22 pictures attached to the correspondence at Appendix A and B. The correspondence
23 further alleges that ETS “has, without proper authority, made, used, offered to sell, and
24 sold FC Brands patent invention within the U.S. in violation of 35 U.S.C. 271, and is thus
25 liable for direct infringement.” The correspondence concludes with Defendant
26 demanding that ETS “immediately cease and desist from the marketing, manufacture and
27 sale of the H2Go Bali Water Bottle.” A true and correct copy of said correspondence is
28 attached hereto as EXHIBIT 2.
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1 24. ETS, which was established in 1985, develops and sells numerous
2 proprietary designs for various types of drinkware, such as aluminum, stainless steel,
3 plastic, ceramic and glass drinkware.
4 25. ETS has received multiple awards for its services and products.
5 26. Much of the drinkware offered for sale by ETS can be customized to include
6 a customer’s own logo or identifying information.
7 27. Pictures of one of ETS’ H2Go Bali Water Bottle is shown below:
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28 28. Defendant alleges that the ETS’ H2Go Bali Water Bottle infringes the ‘650
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1 Design Patent because “[o]n an upper section of the bottle, the bottle sidewall curves
2 inwardly to form an indentation. The outer sheath extends up along the bottle sidewall
3 and stops at this indentation.” (EXHIBIT 2, p. 2).
4 29. Water bottles lie in a crowded field.
5 30. For the ‘650 Design Patent to be infringed, no matter how similar two items
6 look to the ordinary observer, the H2Go Bali Water Bottle must appropriate the novelty
7 of the ‘650 Design Patent that distinguishes it from the prior art.
8 31. The H2Go Bali Water does not infringe the ‘650 Design Patent because it
9 differs from any feature of the ‘650 Design Patent that allegedly makes it patentable over
10 the prior art.
11 32. The features that Defendant alleges are similar between ETS’ H2Go Bali
12 Water Bottle and the ‘650 Design Patent are taught in the prior art.
13 33. For example, prior art Design Patent No. D509,433, teaches an upper section
14 of the bottle wherein the bottle sidewall curves inwardly to form an indentation. Figure 1
(310) 226-7878
15 and 2 from this patent are reproduced below:

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1 34. A bottle offered by Homdox, more than one year prior to the priority date of
2 the ‘650 Design Patent, October 20, 2016, also discloses an upper portion of a bottle
3 combined with a sheath that is similar to that taught by the ‘650 Design Patent. A picture
4 of the Homdox water bottle is shown below:
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18 35. The ‘650 Design Patent is invalid under at least 35 U.S.C. §103 based on the
19 combination of the ‘433 Patent in view of the Homdox water bottle.
20 36. Defendant alleges that ETS’ H2Go Bali Water Bottle infringes the ‘650
21 Design Patent because ETS’ H2Go Bali Water Bottle allegedly includes the “unique
22 rounded bottle shape” of the ‘650 Design Patent. (EXHIBIT 2).
23 37. The H2Go Bali Water Bottle does not infringe the ‘650 Design Patent
24 because the designs would not appear the same to an ordinary observer for at least the
25 following reasons: (1) the base of the H2Go Bali Water Bottle is flat, and similar to the
26 base of the Homdox bottle, which is in the public domain, but the base of the bottle
27 disclosed in the ‘650 Design Patent is rounded; (2) the outer diameter of the sheath of the
28 H2Go Bali Water Bottle is not aligned with the upper portion of the bottle, but the outer
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1 diameter of the sheath and the upper portion of the bottle disclosed in the ‘650 Design
2 Patent are aligned; (3) the shape of the upper portion of the H2Go Bali Water Bottle has
3 two distinct sections, but the upper portion disclosed in the ‘650 Design Patent only has
4 one section; and (4) the shape of the H2Go Bali Water Bottle between the neck and the
5 sheath is convex in the middle, while the ‘650 Design Patent is not.
6 38. Defendant’s January 30, 2020 letter stated that, “ETS Express has, without
7 proper authority, made, used, offered to sell, and sold FC Brands patented invention
8 within the U.S. in violation of 35 U.S.C. 271, and is thus liable for direct infringement.”
9 (EXHIBIT 2, p. 3).
10 39. Accordingly, Defendant’s threats of patent infringement have created an
11 actual, substantial and justiciable case or controversy between ETS and Defendant
12 concerning the right of ETS to market, manufacture and sell the H2Go Bali Water Bottles
13 to the public.
14 COUNT I
(310) 226-7878
15 Declaration of Noninfringement, Invalidity and Unenforceability

16 Of the ‘167 Design Patent
17 40. ETS hereby realleges and incorporates the allegations in paragraphs 1 to 39
18 of the complaint as if fully set forth herein.
19 41. The acts of Defendant as alleged herein including, but not limited to,
20 Defendant’s allegations that ETS’ H2Go Bali Water Bottle infringes the ‘650 Design
21 Patent, has created a present and actual controversy between ETS and Defendant
22 concerning whether ETS’ H2Go Bali Water Bottle infringes the ‘650 Design Patent and
23 whether the ‘650 Design Patent is invalid.
24 42. The claim of the ‘650 Design Patent is invalid for failing to meet the criteria
25 of patentability set forth in Title 35 of the United States Code (the Patent Act), including
26 but not limited to, the criteria of §§ 102, 103, and 112.
27 43. ETS seeks a declaratory judgment that the ‘650 Design Patent is invalid, not
28 infringed and unenforceable for one or more of the following reasons:
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1 a. the ‘650 Design Patent is invalid for failure to comply with the
2 requirements of the patent laws of the United States, including, but not
3 limited to, 35 U.S.C. §§ 102, 103 and 112; and
4 b. ETS has not infringed, induced infringement of or contributorily
5 infringed the ‘650 Design Patent, and is not liable for infringement; and
6 c. The manufacture, use, sale and offer for sale of the H2Go Bali Water
7 Bottle does not infringe the claim of the ‘650 Design Patent.
8
9 PRAYER
10 WHEREFORE, Plaintiff ETS prays for judgment against Defendant as follows:
11 A. For an award of damages as provided by law as determined at trial, together
12 with prejudgment interest;
13 B. For a declaration from this Court that the ‘650 Design Patent is invalid and
14 unenforceable against ETS;

(310) 226-7878
15 C. For a declaration from this Court that ETS may continue to manufacture and
16 sell its H2Go Bali Water Bottle;
17 D. For a declaration from this Court that ETS has not infringed, contributorily
18 infringed or induced infringement of the only claim of the ‘650 Design Patent;
19 E. A determination that this case is exceptional and awarding ETS its costs and
20 reasonable attorneys’ fees incurred in this action under 35 U.S.C. § 285;
21 F. For costs of suit incurred, including, but not limited to reasonable attorneys’
22 fees;
23 ///
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1 G. That this Court grant such other and further relief that it deems just and
2 proper.
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4 Dated: February 24, 2020 Respectfully submitted,
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MILORD & ASSOCIATES, P.C.
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7 /s/ Milord A. Keshishian
8 Milord A. Keshishian
Attorneys for Plaintiff
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ETS EXPRESS, LLC
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1 DEMAND FOR JURY TRIAL

2 Plaintiff, through its attorneys of record, hereby demands trial by Jury.
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4 Dated: February 24, 2020 MILORD & ASSOCIATES, P.C.
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6 /s/ Milord A. Keshishian
Milord A. Keshishian
7 Attorneys for Plaintiff
8 ETS EXPRESS, LLC
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EXHIBIT 1
EXHIBIT 2
PIERCE ATWOOD
SHANNON VITTENGL
Pease International Tradeport

One New Hampshire Avenue, #350
Portsmouth, NH 03801
P 603.373-2089
F 603.433.6372
svittengl@pierceatwood.com
pierceatwood.com
Admitted in: MA
January 30, 2020
Via FedEx Label No. 7776 4797 2215

Mr. Sharon Eyal, CEO
ETS Express, Inc.
420 East Lombard St.
Oxnard, California, 93030
United States
RE: Cease and Desist all Sales ofthe E[2Go Bali water bottle
U.S. Design Patent No. D832,650"WATER BOTTLE"
Owned by: PC Brands LLC
Our File No. 35222/1610
Dear Mr. Eyal:
We are contacting you on behalf of our client, PC Brands LLC("PC Brands") with
respect to a claim against ETS Express, Inc.("ETS Express")for its unauthorized and unlawful
misappropriation of a PC Brands patent directed to a Water Bottle.
PC Brands is the owner of U.S. Design Patent No. D832,650 entitled "WATER
BOTTLE"(the '650 patent). As set forth in greater detail below, the H2Go Bali water bottle sold
on the ETS Express website is virtually identical to the water bottle protected in the '650 patent.
PC Brands hereby demands that ETS Express immediately cease and desist its manufacturing,
marketing and sale of this water bottle. PC Brands also hereby demands that ETS Express
provide to PC Brands by February 12, 2020 certain business records identified below to allow
PC Brands to evaluate the extent of the unlawful activity and to calculate a fair and reasonable
settlement amount.
PORTLAND, ME BOSTON, MA PORTSMOUTH, NH PROVIDENCE, Ri AUGUSTA, ME STOCKHOLM, SE WASHINGTON, DC

PIERCE ATWOOD
January 30, 2020
Our File No. 35222/1610
Summary of Patent Infringement
EC Brands is the owner of U.S. Design Patent No. D832,650 entitled "WATER
BOTTLE"(the '650 patent). We reviewed the H2Go Bali Water Bottle currently sold on the
ETS Express website, https://etsexpress.com/pg_product_detail/?id=55381. Based upon our
analysis, we have determined that the water bottle infringes the '650 patent.
Design patent infringement is governed by 35 U.S.C. 271 which defines infringement as

making, using, offering to sell, or selling a patented invention without authority. It is well
established that infringement of a design patent is determined by the "ordinary observer test". If
an ordinary observer believes that the resemblance between two items is similar enough to
purchase one believing that it is the other, the second design is infringing.
As illustrated in Appendix A,the H2Go Bali Water Bottle sold on the ETS Express
website is virtually identical to the WATER BOTTLE claimed in the '650 patent. In summary,
the water bottle claimed in the '650 patent has a unique rounded bottle shape and an outer sheath.
On an upper section of the bottle, the bottle sidewall curves inwardly to form an indentation.
The outer sheath extends up along the bottle sidewall and stops at this sidewall indentation. The
water bottle claimed in the '650 patent also includes a rounded top cap design. The H2Go Bali
Water Bottle sold on the ETS Express website includes all of these features claimed in the '650
patent.
As illustrated in greater detail in Appendix B,the H2Go Bali Water Bottle includes a
virtually identical indentation formed in the bottle sidewall. The H2Go Bali Water Bottle sold
on the ETS Express website appears to be essentially a copy of the water bottle shown in the
'650 patent. Furthermore, as illustrated in Appendix C,the F12Go Bali Water Bottle is virtually
identical to the SOMA® Water Bottle sold by FC Brands. Accordingly, an ordinary observer
would find the two items similar enough to purchase the H2Go Bali Water Bottle sold on the
ETS Express website believing that it is the FC Brands Water Bottle.
Thus, ETS Express has, without proper authority, made, used, offered to sell, and sold FC
Brands patented invention within the U.S. in violation of 35 U.S.C. 271, and is thus liable for
direct infringement.
Patent Infringement is a serious matter and FC Brands expects third parties to respect its
patent rights. Accordingly, FC Brands hereby demands that ETS Express immediately cease and
desist the marketing, manufacture and sale of the H2Go Bali Water Bottle.
PORTLAND, ME BOSTON, MA PORTSMOUTH, NH PROVIDENCE, Rl AUGUSTA, ME STOCKHOLM, SE WASHINGTON, DC

PIERCE ATWOOD
January 30, 2020
Our File No. 35222/1610
In addition, PC Brands demands that EPS Express, by February 12, 2020, provide to FC
Brands certain business records to allow it to evaluate the extent of the infringing activity and to
calculate a fair and reasonable settlement amount, to include:
1. The total number of all H2Go Bali Water Bottles made, used, offered for sale, and sold to
date;
2. All distribution channels and retail outlets of any kind that carry the H2Go Bali Water
Bottle for sale; and
3. The total gross revenue and profits derived from all sales related to the H2Go Bali Water
Bottle to date.
The purpose of this letter is to encourage you to resolve my client's claim in a fair and
equitable manner without the need for continued legal action. Please respond to indicate your
acceptance of the terms contained in this letter by contacting the undersigned by February 12,
2020. In the interim, if you have any questions or concerns, please do not hesitate to contact me
directly.
Respectfully,
Shannon Vittengl, Esq.
PORTLAND, ME BOSTON, MA PORTSMOUTH, NH PROVIDENCE, Rl AUGUSTA, ME STOCKHOLM, SE WASHINGTON, DC

Appendix A
U.S. Design Patent D832,650 H2Go Bali Water Bottle
Sold on ETS Express Website
D
D
Appendix A Continued
Fig. 2 Fig. 3
.f
Jf.' -
V''' 1
Fig. 6
i
Appendix A Continued
Fig. 4 Fig. 5
Bottom View not available

Appendix B
^SURIUI
indentation in Glass
Bottle
I h2go'
gP
H2Go Bali Water Bottle Sold on ETS Express Website

Appendix C
•A.
SOMA® Water Bottle H2Go Bali Water Bottle

ETS Express v. FC Brands - Complaint

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Case 2:20-cv-01761 Document 1 Filed 02/24/20 Page 1 of 29 Page ID #:1

1 Milord A. Keshishian, SBN 197835

14 California until at least 2018. Defendant operates an e-commerce website located at

15 <drinksoma.com>, which distributes products throughout the United States, including

14 California and this District.

15 and 2 from this patent are reproduced below:

15 Declaration of Noninfringement, Invalidity and Unenforceability

14 unenforceable against ETS;

1 DEMAND FOR JURY TRIAL

Pease International Tradeport

January 30, 2020

Via FedEx Label No. 7776 4797 2215

Dear Mr. Eyal:

PORTLAND, ME BOSTON, MA PORTSMOUTH, NH PROVIDENCE, Ri AUGUSTA, ME STOCKHOLM, SE WASHINGTON, DC

Summary of Patent Infringement

Design patent infringement is governed by 35 U.S.C. 271 which defines infringement as

PORTLAND, ME BOSTON, MA PORTSMOUTH, NH PROVIDENCE, Rl AUGUSTA, ME STOCKHOLM, SE WASHINGTON, DC

Shannon Vittengl, Esq.

PORTLAND, ME BOSTON, MA PORTSMOUTH, NH PROVIDENCE, Rl AUGUSTA, ME STOCKHOLM, SE WASHINGTON, DC

Bottom View not available

H2Go Bali Water Bottle Sold on ETS Express Website

SOMA® Water Bottle H2Go Bali Water Bottle

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