throbber
Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA182378
`ESTTA Tracking number:
`12/20/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048304
`Defendant
`Dexas International, Ltd.
`Dexas International, Ltd.
`585 S. Royal Lane, Suite 200
`Coppell, TX 75019
`UNITED STATES
`Answer
`Charles W. Gaines
`charles.gaines@hittgaines.com, docket@hittgaines.com
`/CWG/cg/
`12/20/2007
`MotionToStay.pdf ( 2 pages )(47444 bytes )
`OrderToStay.pdf ( 1 page )(15044 bytes )
`BriefToStay.pdf ( 4 pages )(109326 bytes )
`BriefExhibitA.pdf ( 17 pages )(345227 bytes )
`BriefExhibitB.pdf ( 2 pages )(72624 bytes )
`BriefExhibitC.pdf ( 8 pages )(220089 bytes )
`BriefExhibitD.pdf ( 12 pages )(346239 bytes )
`BriefExhibitE.pdf ( 12 pages )(428421 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Tung Yang International Limited,
`Petitioner
`
`V.
`
`Dexas lnternational, Ltd,
`
`Registrant
`
`\—/\—/'H-/\..../\.../\_/\_./
`
`Cancellation No. 92048304
`
`REGI.ST1{ANT’S MOTION TO STAY
`
`Pursuant to 37 CFR §2.il7, Registrant Dexas International, Ltd. moves to stay this
`
`cancellation proceeding pending the termination of Civil Action No. 6:07-cv-334, Dexas
`
`International, Ltd. V. Tung Yung International, et al in the United States District Court for the
`
`Eastern District of Texas, Tyler Division. This motion to stay is supported by the attached brief
`
`and is made on the grounds that the parties in this cancellation proceeding were involved in the
`
`District Court litigation prior to the filing of this cancellation proceeding, which litigation may
`
`have a bearing on the proceedings before the Board.
`
`WIIEREFORE, Registrant Dexas International, Ltd.
`
`respectfully requests an order
`
`staying the cancellation proceeding until after the District Court action has been terminated.
`
`Dated: December 20, 2007
`
`Respectfully submitted,
`
` aries W. Gaines
`
`Patent Bar No. 36,804
`
`Greg H. Parker
`Patent Bar No. 44,995
`
`Hitt Gaines, P.C.
`PO. Box 832570
`
`Richardson, Texas 75083-2570
`972.480.8800 (Office)
`972.480.8865 (Fax)
`Attorneys for
`Dexas International, Ltd.
`
`

`
`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that a true copy of Registrant’s Motion to Stay, Brief in support thereof, and
`
`proposed Order in Cancellation No. 920483 04 is being eiectronically transinitted to the United
`
`States Patent and Tradeinark Office on the 20th day of December 2007.
`
`QM/Wm
`
`Charles W. Gaines
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of Registranfs Motion to Stay, Brief in support thereof, and a
`
`Proposed Order is being served upon counsel this 20th day of December 2007', via email and
`
`first-class mail, as noted below, and addressed to:
`
`Michael J. Hughes - Reg. No. 29077
`IPLO intellectual Property Law Offices
`c/o ZiLKA—KOTAB PC
`
`13.0. Box 721 £20
`
`San Jose, CA 95172-1120
`Telephone: 408-971-2573
`Direct Tel: 408-558-7890
`
`Facsimile: 408-971-4660
`
`Ernaii: 1nichac§l1(q;iplo.c()m
`
`I
`
`Charles W. Gaines
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRXAL AND APPEAL BOARD
`
`Tung Yung International Limited,
`Petitioner
`
`V.
`
`Dexas International, Ltd,
`
`Registrant
`
`\..J\_/\_/\.../\.,/\.,/\—/
`
`Cancellation No. 92048304
`
`ORDER GRANTING REGISTRANT’S MOTION TO STAY
`
`On the
`
`day of
`
`, 200%, came on for consideration
`
`Registranfs Motion to Stay. The Board having considered the Motion,
`
`the response,
`
`the
`
`evidence presented, and the argument of counsel, is of the opinion that the Motion should be
`
`GRANTED.
`
`IT IS SO ORDERED.
`
`SIGNED this the
`
`day of
`
`, 2007.
`
`Trademark Trial & Appeal Board
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Tang Yang International Limited,
`Petitioner
`
`v.
`
`Dexas International, Ltd.,
`
`Registrant
`
`\..uJ‘\._/\-u./"‘-.../\../\«./\_./
`
`Canceliation No. 92048304
`
`REGISTRANT’S BRIEF IN SUPPORT OF ITS MOTION TO STAY
`
`On July 1.9, 2007, Registrant Dexas International, Ltd.
`
`(“Dexas”) filed its Original
`
`Complaint
`
`in Civil Action No.
`
`6:0’7—cv—334, Dexas Imemational, Ltd.
`
`V. Tang Yang
`
`International, er al in the United States District Court for the Eastern District of Texas, Tyler
`
`Division (“the Lawsuit”) (see attached Exhibit “A”).
`
`Petitioner Tung Yung International
`
`Limited (“Tang Yung”) was served with the Original Coinpiaint in the Lawsuit on July 24, 2007
`
`(see attached Exhibit “B”). On September 14, 2007, Tung Yung filed its Originai Answer,
`
`Affirmative Defenses & Counterclaiins in the Lawsuit (see attached Exhibit “C”). Three months
`
`_am@ being served with the Lawsuit and one month after filing its Original Answer in the
`
`Lawsuit, Tung Yung flied its Petition for Cancellation, Cancellation No. 92048304 (“the
`
`Cancellation”) on October 24, 2007. Whenever it comes to the attention of the Board that a
`
`party or parties to a case pending before it are involved in a civil action which may have a
`
`bearing on the Board case, proceedings before the Board may be suspended untii
`
`final
`
`determination of the civil action. See 37 CFR §2.ll7(a). Accordingly, Dexas requests that the
`
`Board stay further action in this cancellation proceeding pending the termination of the
`
`previously-filed Lawsuit.
`
`The Lawsuit invoives Design Patent Nos. D-475,748 and D474,599 (see Exhibit “A”).
`
`in
`
`its Petition for Cancellation, Tung Yung uses Design Patent No. 474,599 entitled “Slim Case” as
`
`

`
`alleged proof that Trademark Registration No. 2670402 for “SLIMCASE” is generic (see
`
`paragraphs 3, 4 and 5 of the Petition for Cancellation).
`
`In its First Amended Complaint in the
`
`Lawsuit (see Exhibit “D”) Dexas requests declaratory judgment for the registerability of its
`
`“SLIMCASE” trademark. Tung Yung filed its amended Answer, Affirmative Defenses &
`
`Counterclaims in the Lawsuit on December 14, 2007 (see Exhibit “E”). As shown in the
`
`attached Exhibits from the Lawsuit and in the papers filed in the Cancellation proceeding, the
`
`Lawsuit and the Cancellation involve common issues. Where parallel litigation occurs in the
`
`district court, it is preferable for the TTAB to stay its own proceedings. Sonora Cosmetics, Inc.
`
`v. L ’Oreal S.A., 631 F.Supp. 626, 629 (SD. NY, 1986).
`
`In fact, it is common practice that the
`
`TTAB stay cancellation proceedings during the pendency of infringement litigation (See, The
`
`Other Tel. Co. v. Connecticut Nat’! Tel. C0,, 181 USPQ 779, 782 (Co1n’r 1974); Jet, Inc. v.
`
`Sewage Aeration Systems, 223 F.3d 1360, 1361 (CAFC 2000); 888 Justice,
`
`Inc.
`
`v. Just
`
`Enterprises, Inc, 2007 WL 2398504 (S.D.N.Y. 2007).
`
`Dexas filed the Lawsuit well before Tung Yung instituted the Cancellation proceeding.
`
`It
`
`has long been settled that the party who first brings a controversy into a court of competent
`
`jurisdiction for adjudication shouid be free from the vexation of subsequent litigation over the
`
`same subject matter. See, Dwinell-Wright Co. v. National Fruit Product Co, 129 F.2d 848, 853
`
`(Cir. Court of Appeals,
`
`131 Cir. 1942). Moreover,
`
`it
`
`is the usual practice under such
`
`circumstances to suspend the proceeding last instituted pending the final determination of the
`
`other. Id. at 850.
`
`The District Court can decide all of the issues pending in the Lawsuit and in the
`
`Canceliation proceeding pending before the TTAB. Pursuant to 15 U.S.C. §l119, federal courts
`
`have concurrent jurisdiction with the TTAB over
`
`issues relating to the registration and
`
`

`
`cancellation of trademarks and decisions by the federal court are binding on the TTAB and the
`
`USPTO. Moreover, it is standard procedure for the TTAB to grant motions to stay where, as
`
`here, the issues involved in the court action are related to the issues raised in the Petition to
`
`Cancel. Alfied Dtmhill 0fL0i’i‘d0I’.?., Inc. V. Damhill Tailored Clothes, Inc, 293 F.2d 685 (CCPA
`
`1.961); Wh0pper—Burger, Inc. v. Burger King Corp, 1971 WL 16554 TTAB 1971).
`
`In conclusion, Registrant Dexas International, Ltd. respectfully requests an order staying
`
`the canceilation proceeding until after the District Court action has been terminated.
`
`Dated: December 20, 2007
`
`Respectfully subrn'
`
`d
`
`#1)
`
`Ch
`
`es W. Gaines
`
`'
`
`t
`
`1/7 Qjtac
`
`Patent Bar No. 36,804
`
`Greg H. Parker
`Patent Bar No. 44,995
`
`Hitt Gaines, P.C.
`13.0. Box 832570
`
`Richardson, Texas 75083-2570
`972.480.8800 (Office)
`972.480.8865 (Fax)
`
`Attorneys for
`Dexas International, Ltd.
`
`

`
`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that a true copy of Registrant’s Motion to Stay, Brief in support thereof, and
`
`proposed Order in Cancellation No. 92048304 is being electronically transmitted to the United
`
`States Patent and Trademark Office on the 20th day of December 2007.
`
`
` -
`
`I 1
`.
`'
`-'
`‘Univ
`V
`Char es W. Games
`
`.7
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing Registranfs Motion to Stay, Brief in support
`
`thereof, and a Proposed Order has been served upon counsel this 20111 day of December 2007,
`
`via email and first—class mail, as noted below, and addressed to:
`
`Michael J. Hughes ~ Reg. No. 29077
`IPLO Intellectual Property Law Offices
`c/o ZILK_A~KOTAB PC
`
`P.O. Box 721120
`
`San Jose, CA 95l72—1l20
`Telephone: 408971-2573
`Direct Tel: 408-5585/890
`
`Facsimile: 408-971-4660
`
`Email:
`
`rnich.aell3(rDiplo.c.o§1_1
`
`Olilrflia
`
`Charles W. Gaines
`
`

`
`Case 6:07-ov—OO334—i.ED—JDL Document 1
`
`Fiied 07/19/2007
`
`Page 1 oft?
`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF TEXAS
`
`TYLER DIVISION
`
`DEXAS INTERNATIONAL, LTD.
`
`Plaintiff,
`
`V.
`
`TUNG YUNG INTERNATIONAL, INC.
`
`Defendant.
`
`C-G’-7€aO'iCO0€0JOD'DCUJfD'Jx‘.05Cn0>
`
`CIVIL ACTION NO. 6:(}7ev334
`
`JURY DEMANDED
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`
`TO THE HONORABLE UNITED STATES DISTRICT COURT:
`
`PiaintiffDexas l.ntei'national, Ltd., by and through its Linciersigned attorneys, hereby
`
`flies this Originai Complaint against Defendant Tung Yung International, Inc. and alleges as
`
`foiiowsz
`
`PARTIES
`
`1.
`
`Plaintiff Dexas international, Ltd. (“Dexas”) is 21 limited partnership with its
`
`principal place of business at 585 South Royal Lane, Suite 200, Coppeil, TX 75019-3 807.
`
`2.
`
`Defendant Tung Yung International, Inc. (“T'YI”) is an Arkansas corporation with a
`
`registered office at 905 SE 21“ St., Suite 3, Bentonvilie, AR 72712-9777.
`
`JURISDICTION AND VENUE
`
`3.
`
`This is an action arising under the Patent Laws ofthe United States, 35 U.S.C. §§
`
`101, at seq.
`
`4.
`
`This Court has subject matterjurisciiction under 28 U.S.C. §§ 1331 and 1338.
`
`EXHIBIT “A”
`
`Cancel. No. 92048304
`
`

`
`Case 6:07’—cv—OU334—LED—JDL Document 1
`
`Filed O7lt9f2007
`
`Page 2 of4
`
`5.
`
`This Court has personal jurisdiction over TYE in that TYI. has sufficient contacts
`
`with the State of Texas and this Judicial District to subject it to specific and general personal
`
`jurisdiction. The contacts with the State of Texas and this Judicial District and Division include
`
`saies of various stationery and office products, inciuding sates to Wai—Mart Stores, Inc., with the
`
`knowledge and intent that they be distributed and soid within the United States, inciuding this
`
`Judicial District.
`
`6.
`
`Venue is proper in the Eastern District of Texas under 28 U.S.C. §§ 1391(1)) and (c).
`
`COUNT I — DESIGN PATENT INFRINGEMENT
`
`'7.
`
`On June 10, 2003, Eilis N. Shamoon was duty and legaiiy issued United States
`
`Letters Patent Des. 475,748 (“‘748 Patent”) for an ornamental design entitled “Clipcase.” A copy
`
`of said patent is attached as Exhibit A. At ail times reievant herein, Plaintiff has been and still is
`
`the exclusive licensee under the ‘748 Patent and owns ali rights to sue for infringement of said
`
`patent.
`
`8.
`
`Defendant has been and stili. is infringing, under 35 U .S.C. § 27} , the ‘748 Patent by
`
`making, selling, offering for saie and/or using products embodying Plai.ntift‘s patented design. The
`
`infringing product is Eabeled “Slender Storage Clipboard.” Defendant advertises and selis its
`
`infringing product at ieast through distribution and saies contracts with Wai-Mart Stores, Inc.
`
`Defendant wiil continue to infringe the ‘748 Patent uniess enjoined by the Court.
`
`9.
`
`Defendanfs infringement has caused Plaintiff to suffer damages. On inforniation
`
`and beiief, said infringement was wiliful, making this an exceptional case under 35 U.S.C. §§ 284
`
`and 285.
`
`10.
`
`As an additionai remedy, Plaintiff is entitled to an award of Defendanfs totai profits
`
`earned, under 35 U.S.C. § 289, from Defendant’s infringement of the ‘748 Patent.
`
`PI;Ali\'TlFF’S ORIGINAL COMPLAINT
`
`PAGE 2
`
`

`
`Case 6:07’—cv—{}(}334—LED-JDL Document 1
`
`Fiied 07719/2007
`
`Page 3 ofét
`
`COUNT II — DESIGN PATENT INFRINGEMENT
`
`11.
`
`On May 20, 2003, Eliis N. Shamoon was duly and iegally issued United States
`
`Letters Patent Des. 474,599 (‘599 Patent”) for an ornamental design entitled “Slim Case.” A copy
`
`of said patent is attached as Exhibit B. At ali times relevant herein, Plaintiff has been and stiil is
`
`the exciusive iicensee under the ‘S99 Patent and owns ail rights to sue for infringement of said
`
`patent.
`
`12.
`
`Defendant has been and still is infringing, under 35 U .S.C. § 27} , the ‘599 Patent by
`
`making, selling, offering for sale and/or using products embodying Plaintiff’s patented design. The
`
`infringing product is labeled “Storage Clipboard with Caiculator.” Defendant advertises and selis
`
`its infringing product at least through distribution and sales contracts with Wal—Mart Stores, Inc.
`
`Defendant wili continue to infringe the ‘S99 Patent unless enjoined by the Court.
`
`13.
`
`Defendant’s infringement has caused Piaintiff to suffer damages. On information
`
`and belief, said infringement was wiilftil, making this an exceptional case under 35 U.S.C. §§ 284
`
`and 285.
`
`14.
`
`As an additional remedy, Plaintiff is entitled to an award of Defendant’s total profits
`
`earned, under 35 U.S.C. § 289, from Defendant’s infringement of the ‘S99 Patent.
`
`JURY DEMAND
`
`Piaintiff demands a trial by jury.
`
`PRAYER FOR RELIEF
`
`W1-IEREFORE, PREMISES CONSIDERED, Piaintiff prays for judgment as follows:
`
`a.
`
`That Defendant, its agents, servants and employees and all those in privity, concert
`
`or participation with any of them, be enjoined from making, using and seiling any product in
`
`vioiation of Plaintiff‘ s design patents;
`
`i’LAINTIFF’S ORIGINAL COMPLAINT
`
`PAGE 3
`
`

`
`Case 6:07’~ev~OO334—LED—JDL Document 1
`
`Filed 07/19/2807
`
`Page 4 ota
`
`b.
`
`That Plaintiff be granted a. judgment against Defendant for its damages, which
`
`damages should be trebled;
`
`c.
`
`That Defendant be required to account for and pay over to Piaintiffall profits which
`
`Defendant has derived from the infringement of Plaintiff’s patents;
`
`d.
`
`That Defendant be required to pay Plaiittiff its costs incurred herein, as well as
`
`reasonable attorneys’ fees, as provided by the Patent Laws;
`
`e.
`
`That Defendant be required to pay Plaintiff pre-judgment interest on the amount
`
`awarded and post—judgmer1t interest until paid, all at the {awful rate; and
`
`F.
`
`That Plaintiff have such other and further relief as this Court may deem just and
`
`proper.
`
`DATED:
`
`July 19, 2007
`
`Wfsf Paul V. Storm
`Paul V. Storm
`Texas Bar No. 19325350
`
`Christopher J. Kling
`Texas Bar No.
`l l 573800
`Terrell R. Miller
`
`Texas Bar No. 24046446
`STORM LLP
`
`901 Main Street, Suite 7100
`
`Dallas, Texas 75202
`
`Telephone No.: (214) 347-4700
`Facsimile No.:
`(214) 347-4799
`
`ATTORNEYS FOR PLAINTIFF
`
`DEXAS INTERNATIONAL, LTD.
`
`PI.A]NTiFi7’S ORIGINAL COMPLAINT
`
`PAGE 4
`
`

`
`Case 8:O7'—cv~O0334~LED—JDL Document ‘I-2
`
`Filed 07f19/200'?
`
`Page 1 0f 7
`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF TEXAS
`
`TYLER DIVISION
`
`'DEXAS INTERNATIONAL, LTD.
`
`Plaintiff,
`
`vi
`
`TUNG YUNG INTERNATIONAL, INC.
`
`Defendant.
`
`QO‘>€J0Jr£'JflG93G0'3&w‘40:+0O9
`
`CIVIL ACTION NO. 6:(}7ev334
`
`JURY DEMANDED
`
`EXHIBIT “A” TO PLAINTIFFS ORIGINAL COMPLAINT
`
`

`
`”°°“mefiflIiflfiII1IlilliiffimlfiflilfiififimlilIilmfiifilfiiflfi
`
`US(}OD4»7S'}'48S
`
`(12; United States Design Patent (16) Patent No;
`Shamoon
`(45) Date of Patent:
`
`Us D475,"/'48 S
`sea:
`Jan. .10, 2803
`
`D19/88
`.. 1319/88
`-- 331:3:
`..
`'
`I219/as
`
`
`
`*
`E11991 C:"ai’t,Jr.elaI.
`D313,819 S
`"'
`3.11992 Murphy
`D324,3‘.3:‘9 S
`" $33; Eganluun
`g§;g.:;?) :
`*
`‘ amoon .
`.
`,
`,
`*
`812000 Chang
`3423,92: 3
`Y BXHITIHJCI
`,5 Cited b
`.
`
`(54) CLE]-‘CASE
`
`(76)
`
`Inventor: Elils N. Sluuamen, 2833 Park Bridge
`~
`"~
`-
`C“ D"fl“’TX{Uh) 75219
`14 Years
`
`(*“) Term:
`
`(21) App}. No; 29,3165,"/‘19
`(22)
`Fficd:
`Aug. 14’ 2002
`19 G2.
`(51)
`IOC (7) C!
`('52;
`(is. c:. ....I.IIIIIIIfZffIIIII]IIIII:II"£3'i§Li§é'{‘i:19/vs
`(53) Field 0fSean:£1
`1319/36, 52, 65,
`D19/75, 78, 86, 88, 90, 91, 99, 100; 248x-441.1,
`442.2, 451, 452; 206/214, 2.24, 371; 40/371-379',
`312/23]
`
`Primary Exammer—Mnr£if:' K. Hnitj-_:
`(74) Arror:1.ey, Agem, or I'Lr'm~wDan1<:[ V. Thompscn
`(57)
`CLAIM
`The swnamemai design for a “cupcase", as shown and
`‘3°3°“"”“'-
`
`])1;scR[[=*T10g~{
`‘.
`‘
`.
`.
`_
`PIC}. 1 1_s a perspegtive vmw,
`FIG. 2 1s a from vmw;
`
`1715- 3 $3 3 T?” "":°""3
`FIG. 4 1s a suit: mew;
`FIG. 5 £5 a side View similar to FIG. 4 except roiatcd 180
`d°3’°°5’
`F19" “*5 31°F "M"; ands
`910- 7 is =1 botwm Vi”-
`_
`_
`1 Claim, 5 Drawing Sheets
`
`
`
`(56)
`
`References Cited
`
`U5. PATENT DOCUMENTS
`3,977,744 A * 8/me Dewitt
`..................... .. 312/231
`D255,251 s
`*
`5/1930 Hansen er al,
`019/88
`D261,903 s
`* 11/1931 Mulder
`1'. D19,f88
`4,645,163 A *
`2/1987 zovar ..
`.248/452
`£098,955 3
`“' 12.'1988 Zovar
`D19/88
`
`

`
`Case 6:07’—cv~O£}334—LEQ—JE}L Document 1-2
`
`Fiieci 07/19/2007
`
`Page 3 of 7
`
`US. Patent
`
`Jun.10,2003
`
`Sheet 1 of5
`
`Us D475,748 S
`
`

`
`Case 6:O7°~cv—OO334~i_ED—.JDL
`
`{Document ‘I-2
`
`Ffied O7H9#2{}{J"?
`
`Page 4 of 7’
`
`U.S. Patent
`
`Jun.10,20{)3
`
`Sheet 2 of5
`
`Us D4’75,748 S
`
`FIG. 3
`
`

`
`Case 6207-CV-C0334-—LEQ—JDL Document 1-2
`
`Filed 07/19/2087
`
`Page 5 of 7
`
`US. Patent
`
`Jun.1(},2E)03
`
`Sheet 3 of5
`
`US D4-75,748 S
`
`FIG,4
`
`

`
`Case 6:07~cv-0O334—LED—JDL Document 1~2
`
`Filed 07/19/2007
`
`Page 6 of 7
`
`US. Patent
`
`Jun.1[},Z003
`
`sum 4 (}f5
`
`US D475,748 S
`
`

`
`Case 6:O7—cv~OO334—LED—JDL Document 1-2
`
`Filed 07/19/2007
`
`Page 7 of 7
`
`U.S. Patent
`
`Jun.1€),2(}03
`
`Sheet 5 0f 5
`
`Us D475,7-48 S
`
`

`
`Case 6:07—cv»D{}334—LEB—JDi_
`
`Document 1-3
`
`Filed 07/19/2007
`
`Page 1 of6
`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF TEXAS
`
`TYLER DIVISION
`
`DEXAS INTERNATIONAL, LTD.
`
`Plaintiff
`’
`
`V.
`
`TUNG YUNG INTERNATIONAL, INC.
`
`Defendant.
`
`l’0'3¢<7-19036473!/.79CJO'JEVJ¢9DC0'3
`
`CIVIL ACTION NO. 6:07cv334
`
`JURY DEMANDED
`
`EXHIBIT “B” TO PLAINTIFFS ORIGINAL C()1Vii’L.AII\E'l‘
`
`

`
`Dmfiilliflliumattlmfl‘flmIiiii1iIfiiiififiI1:Izlfiiiiitfimfi
`
`US(}0D474S99S
`
`(12; United States Design Patent (10) Patent 1%.:
`Shamoon
`(45) Date of Patent:
`
`US ])474,S99 S
`am May 20, 2003
`
`(54)
`
`SLIM CASE
`
`(75)
`
`Inventor:
`
`EH55 N. Shamucm, 2833 Park Bridge
`CL, Daiias, TX (US) 75219
`14 Years
`
`Term:
`
`M (
`
`11)
`
`(23)
`
`(51)
`(52)
`(58)
`
`(55)
`
`iO.’1998 Fang ..... ..
`"
`{#1999 Sclmrmar:
`‘
`4/2001 Miiiar el :11.
`*
`“' 10/2091 Snider
`"‘ 3.012001 Rustin
`
`.
`
`
`
`. D3/282
`. D3/282
`. DM282
`. D3/282
`D3/’232
`
`[)399,652 3
`D413,44U S
`D440,B4-3 S
`D448,564 S
`D449,164 S
`
`‘ cued by examiner
`
`Primary EJc::m2z'ner—-Philip S. I-Iydcr
`C74} Attorney, Agem or FL'rm—DanicI V. Tfimmpson
`
`(57)
`
`CLAIM
`
`The ornamental design for a slim case, as Shawn and
`described.
`
`l)ESCRlP’FlON
`
`FIG. 1 is it perspeclivc view;
`FIG. 2 is n from view;
`Fifi. 3 is a back view;
`FIG. 4 is a side view;
`FIG. 5 is a side View similar to FIG, 4 except rotated 1.80
`dcgrcss.
`FIG. 6 is a top view; and,
`FIG. 7 is a bottom view.
`
`I Ciaim, 4 Drawing Sheets
`
`Appi. No; 29/165,718
`
`Ffleci:
`
`Aug. 14, 2602.
`
`G3-G1
`LOC (7) Ci.
`D3/282; D3/294
`U.S. CL
`B31276, 2'73, 281,
`Field of Search
`D3f282, 294-, 905; 1.90/100, 199, 112, 114,
`113, 900; 206/349, 372, 373, 3'79; 220/318,
`324
`
`
`
`References Cited
`
`U.S. FATENT DOCUMENTS
`
`D?.8!':'E:
`"H1990 Weber ctai.
`D3/282
`2./1991 Kuifimnne
`D3/282
`6/1994 Hayakawa of ai.
`3/1995 Chow i90f1]9
`9;/1995 Muxzdorf cl :1}.
`D3,"276
`6/1997 Yemini
`D3i28Z
`
`
`
`"
`D30S,809 S
`*
`D3i.4,669 S
`*
`D34'7,731 S
`5,394,966 A *
`D362,546 S
`"’
`D379,7-'15 S
`"
`
`
`
`

`
`Case 6:O7'—cv—O(}334—LEQ-59L Document 1-3
`
`Filed 67/? 53/2007
`
`Page 3 of 6
`
`US. Patent
`
`May 20, 2093
`
`Sheet 1 of 4
`
`US D474,599 S
`
`

`
`Case E3:O7—cv—£}{}334—LED-JDL Document 1-3
`
`Filed 07/19/2007
`
`Page 4 of 6
`
`US. Patent
`
`May 29, 2003
`
`Sheet 2 on
`
`US D474-,599 S
`
`N 2
`
`2
`LL.
`
`

`
`Case 6:{}?’~cv-0O334~LED»JDL Document 3-3
`
`Fifed 07/19/2087
`
`Page 5 of 6
`
`US. Patent
`
`May 20, 2903
`
`Sheet 3 cm
`
`US D-474,599 S
`
`

`
`Case 6:0?’-cv~O0334-LED—JDL Document 1-3
`
`Filed 07/19/2007
`
`Page 6 of 6
`
`U.S. Patent
`
`May 20, 2003
`
`Sheet 4 of 4
`
`US D474-,S99 S
`
`FIG.7
`
`

`
`A,-.
`‘. Page ‘E of-2o*'**' "
`Filed O§#@—W2D0'?_:;
`
`is
`
` Wu) 440 {am}. 3/:31) Summons in a Civil Action
`EN: 1
`
`UNITED STATES DISTRICT CdpURT }’*‘~«jP 9%‘ W7“,
`1
`iw:-J
`-'*=
`District of
`§3A‘m§e
`:
`L.-J‘; o.
`
`i'
`
`Case 6:O7’—Cv—O0334—LED—.JDL Document 5
`
`
`
`!
`
`Eastern
`
`DEXAS INTERNATIONAL, LTD.
`
`V.
`
`TUNG YUNG INTERNATEONAL, ENC.
`
`SUMMONS IN A CIVIL ACTION
`
`CASE NUMBER:
`
`6:{}7'cv334
`
`TO: {Name and address ofbefendant)
`
`Tung Yung internationai, |nc.,
`c/0 its registered agent:
`Siu~Leung Chan
`905 SE 21st Street, Suite 3
`Bentonvilie, Arkansas 72712-9777
`
`YOU ARE HEREBY SUMMONED and required to serve on PLAINTLFFS ATTORNEY (name and address)
`
`Chris J. Kiing
`STORM LLP
`901 Main Street
`Suite 7100
`Dafiias, Texas 75202
`
`days afier service
`20
`an answer to the complaint which is served on you with this summons, within
`of this summons on you, exoiusive ofthe day of service. If you fail to do so, judgment by default wili be taken against you
`for the relief demanded in the complaint. Any answer that you serve on the panties to this action must be filed wit]3.t§1e
`Clerk of this Court within a reasonable period oftime after service.
`
` 1
`
`CLERK OF comm
`
`_
`
`k
`
`_
`
`
`7/20/07
`DATE
`
`EXI-HBIT “B”
`
`Canoe}. No. 92048304
`
`

`
`Case 6:O7-GV-(}O334-LED-JDL Document 5
`
`Filed O8fO1/2007
`
`Page 2 of 2
`
`%A0 440 (Rain 8/O1) Summons in a Civil Asiion
`
`RETURN OF SERVICE
`
`“A” my
`@ 2,43
`
`
`TITLE
`NAME OF SERVER {PRINT}
`Process Server WPS/BPS 2001-3
`Debra Woodhouse
`Check one box below to indicate a ran rfate method 0 Service
`
`*EiXServed personally ugmn the defendant. Piace where served:
`905 SE 23st Street, Suite 3
`Bentonville, AR 72712
`to Matt Rafn Director of Operations
`[3 Left copies thereof at the dz-sxemuam .; dweliing house or usual place of abode: wun a ]3<'JJ.buu u. .,.......,... age and
`discretion then residing therein.
`
`;p
`
`Name of person with whom the summons and complaint were lefiz
`
`Cf Returned zmexecuted:
`
`D Other (specifi):
`
`TRAVEL
`
`STATEMENT OF SERVICE FEES
`SEREWCES
`
`_
`
`_
`
`TOTAL
`
`$030
`
`DECLARATION OF SERVER
`
`I deciare under penalty of perjury under the Zaws of the United States of America that the foregoing infonnation
`contained in the Return of ServEce and Statement of Service Fees is true and correct.
`
`Exec-utcdon
`
`July 24‘ 2007
`
`Date
`
`Signature ofServer
`
`1700 CArrie Place
`Springdale, AR 72762
`Address qfserver
`
`
`
`OF!’-'IC%AL SEAL
`MELISSA M. MULLENAX
`NOTARY PUBLIC . ARKANSAS
`BENTGN COUNTY
`COMM|SSiON #-12361412
`COMMISSEON EXP. 0631 51"2€11?
`
`(1) As to who may serve a summons see Rule =6 oftlw Fedcml Rules of Civil ?rocedure.
`
`

`
`Case 6:07-cv~{}G334-LED~JDL. Document 11
`
`Fited {}9fM/2007
`
`Page 1 of 8
`
`IN THE UNITED STATES DESTRICT COURT
`
`EASTERN DISTRICT OF TEXAS
`TYLER DEViSION
`
`CIVIL ACTION NO. 6:(}7cv334 (LED) (JDL)
`
`Jury Demanded
`
`§
`
`E§
`
`DEXAS INTERNATIONAL LTD.,
`Piaintiff,
`
`vs
`
`‘
`TUNG YUNG INTERNATIONAL INC,
`Defendant.
`
`DEFENDANTS ORIGINAL ANSWER, AFFIRNIATIVE DEFENSES &
`COUNTERCLAIMS
`
`Defendant and Counterelainiant Tang Yung International Inc. answers, defends, and
`
`ceunterclaims and states as follows.
`
`ANSWER
`
`Tung Yang International Inc. (“Defendant”) answers Plaintifias Original Complaint in
`
`paragraphs headed, labeied and numbered to correspond to the allegations of the Original
`
`Complaint.
`
`THE PARTIES
`
`E.
`
`Defendant is without knowledge or information sufficient to form a belief as to
`
`the truth of the averinents in this paragraph of the Complaint and, on that basis, denies them.
`
`2.
`
`Defendant admits that it is a corporation with a place of business at the address set
`
`forth in this paragraph of the Complaint. Defendant denies all other averments in this paragraph
`
`of the Complaint not expressly admitted.
`
`Defendanfs Answer & C()UI1t€t‘Clf1.ll11S
`
`T
`
`‘
`
`'
`
`cc ~93
`C
`Cancel. No. 92048384
`
`Page J
`OE7108.00G i(l:lOS476S.Ol
`
`

`
`Case 6:07’-cv—G£}334—LED-JDL Document 11
`
`Filed D9/14/200"?
`
`Page 2 of 8
`
`JURISDICTION AND VENUE
`
`3.
`
`Defendant denies any liability to Plaintiff or that any damages or payments are
`
`due and owing to Plaintiff, and denies that the Complaint states a claim under the patent laws of
`
`the United States upon which relief can be granted. Defendant denies ali other averments in this
`
`paragraph of the Complaint not expressly admitted.
`
`4.
`
`Defendant admits this Court has subject matter jurisdiction under 28 U.S.C.
`
`§§ 1331 and "133 8(a), but denies that the Complaint states claims for reiief upon which relief can
`
`be granted. Defendant denies ail other averments in this paragraph of the Complaint not
`
`expressly admitted.
`
`5.
`
`"fang Yung does not contest personal jurisdiction, and admits the allegations of
`
`paragraph 5 of the Complaint.
`
`6.
`
`Tung Yong does not contest venue, and admits the allegations of paragraph 6 of
`
`the Complaint.
`
`COUNT 1 — DESIGN PATENT INFRINGEMENT
`
`7.
`
`Defendant admits that Exhibit A to the Complaint purports to be US. Design
`
`Patent No. 475,748 (the ""/48 Patent"). Defendant is without knowledge or information
`
`sufficient to form a beiief as to the truth of the other avennents in this paragraph of the
`
`Complaint which are not expressly admitted and, on that basis, denies them.
`
`8.
`
`9.
`
`Defendant denies the averments of this paragraph of the Complaint.
`
`Defendant denies the averments of this paragraph of the Coinpiaint.
`
`10.
`
`Defendant denies the averrnents of this paragraph of the Cornpiaint.
`
`COUNT 2 —— DESIGN PATENT INFRINGEMENT
`
`1 1.
`
`Defendant admits that Exhibit B to the Complaint purports to be US. Design
`
`Patent No. 474,599 (the ‘"599 Patent"). Defendant is without knowledge or information
`
`sufficient to form a belief as to the truth of the other averments in this paragraph of the
`
`Complaint which are not expressly admitted and, on that basis, denies them.
`
`Dei'enc.iant’s Answer & Counterciaims
`
`Page 2
`Gl7'E08.0f)0IO.‘ iU54765.0l
`
`

`
`Case 6:D7~ev~»0O33-4-LED~JDL Document 11
`
`Fiied 09/14/2007
`
`Page 3 of8
`
`I2.
`
`13.
`
`14.
`
`Defendant denies the averinents of this paragraph of the Complaint.
`
`Defendant denies the averments of this paragraph of the Conipiaint.
`
`Defendant denies the avernients of this paragraph of the Complaint.
`
`JURY DEMAND
`
`This portion of the Cornpiaint does not contain averinents requiring admission or denial.
`
`PLAINTIFFS PRAYER FOR RELIEF
`
`Defendant denies that Plaintiff is entitled to any reiief, prays that Plaintiff take nothing hy
`
`its suit against Defendant, that Defendant recover its costs, and for such other and further relief,
`
`at law and in equity, to which Defendant may show itselfjustly entitled.
`
`AFFIRMATIVE DEFENSES
`
`Without altering the burden of proof, Defendant asserts the foitowing defenses.
`
`Defendant asserts these defenses based upon an investigation that is not complete and without
`
`the benefit of complete discovery from Plaintiff. Defendants investigation of its defenses,
`
`including without limitation, identification of prior art, is continuing; a.nd Defendant reserves all
`
`affirmative and other defenses under Ruie 8(c) of the Federai Rules of Civii Procedure, the
`
`patent iaws of the United States, and any other defenses at law or in equity that may now exist or
`
`in the future be avaiiahle based upon discovery and further investigation.
`
`1.
`
`Defendant does not and has not infringed any valid ciaims of the '748 Patent or
`
`any valid ciaims of the ‘S99 Patent.
`
`2.
`
`Each asserted claim of the '748 Patent and each asserted claim of the ‘S99 Patent
`
`is invalid.
`
`3.
`
`4.
`
`Piaintiff is not entitled to recover costs pursuant to 35 U.S.C. § 288.
`
`Upon information and heiief, Plaintiff lacks standing to or capacity to sue
`
`concerning the claims advanced and/or Defendant is an improper party because Defendant’s
`
`products were made in compliance with law.
`
`5.
`
`The Complaint fails to state a claim upon which reiief may be granted.
`
`Defendanfs Answer & Counterclaims
`
`Page 3
`0i7l{l8.000I0: 10547650}
`
`

`
`Case 6:07-cv—OO334—LED—JDL Document 11
`
`Filed 09/14/2007
`
`Page 4 of 8
`
`waiver.
`
`6.
`
`7.
`
`8.
`
`9.
`
`10.
`
`1 l
`
`.
`
`12.
`
`Plaintiffs claims are barred in whole or in party by the doctrine of unclean hands.
`
`Plaintiffs ciairns are barred in whoie or in party by the doctrines of laches, and
`
`Piaintiffs claims are barred in whole or in party by the doctrine of estoppel.
`
`Piaintiffs claims are iirnited by its failure to mitigate its damages.
`
`The Complaint fails to demonstrate the inadequacy of legal relief.
`
`The Complaint fails to demonstrate a. Eikelihooci of irreparable harm.
`
`Defendant expressly reserves the right to assert additional defenses as they
`
`become known through further investigation and/or discovery.
`
`COUNTERCLAIMS
`
`Counterciairnant Tung Yung international Inc. (“Tung Yung”) counterclaims and states
`
`as foilows. Tung Yung restates and reavers all above paragraphs as though fully set forth herein.
`
`PARTIES
`
`i.
`
`Counterclairnant Tung Yang International, Ltd. is a corporation organized and
`
`existing under the laws of the State of Arkansas with its prineipai place of business Eocated at
`
`905 SE 21st Street, Suite 3, Bentonvilie AR 727E2—9’777.
`
`2.
`
`Upon information and belief, Cotinterclaim Defeiidant Dexas international Ltd.
`
`("Dexas") is a limited partnership existing under the Eaws of Texas, having its principal place of
`
`business at 585 S. Royai Lane, Suite 200, Coppeil TX 75019.
`
`COUNT 1 — DECLARATORY RELIEF
`
`3.
`
`Tong Yung restates and reavers all above paragraphs as though fully set forth
`
`herein.
`
`4.
`
`This counterclaim arises under the patent laws of the United States, Title 35 of the
`
`United States Code, and the Declaratory Iudgment provisions of 28 U.S.C. § 2201 and 2202.
`
`This Court's jurisdiction of the subject matter of this counterciairn is based upon 28 U.S.C.
`
`§ 1338. Venue in this District is appropriate under 28 U.S.C. § 1391.
`
`Defendanfs Answer & Counterclairns
`
`Page 4
`017108.000i0: 105476501
`
`

`
`Case 6:07—cv—OD334~i_ED—JDL Document tt
`
`Filed OQH4/2007’
`
`Page 5 of 8
`
`5.
`
`By its Complaint, Dexas ciairns to be the owner of all right, title, and interest in
`
`US. Design Patents No. 475,748 (the ‘"748 Patent") and 474,599 (the ‘"599 Patent")
`
`(collectively, the "Asserted Patents") and alleges that Tung ‘Jung has infringed and is infringing
`
`the Asserted Patents.
`
`6.
`
`7.
`
`Tang Yung denies the above—referenced allegations.
`
`Tung Yurag avers that the Assorted Patents are not infringed and that the claims of
`
`the ‘748 Patent and ‘599 Patent are invalid. Upon information and belief, Dexas denies these
`
`averments.
`
`8.
`
`An actual and justiciabie controversy exists between Tung Yung and Dexas with
`
`respect to the claims of the ‘748 Patent and the ‘S 99 Patent, and Whether Tung Yung infringes
`
`the Asserted Patents.
`
`9.
`
`Tong Yung is entitled to a declaratoryjudginent that the claims of the Assorted
`
`Patents are invalid, and even ifvaiid, that Tung Yung does not infringe the Asserted Patents.
`
`COUNT 2 — TORTIOUS INTERFERENCE WITH EXISTING CONTRACTS
`
`l0.
`
`Tting Yung restates and reavers all above paragraphs as though ‘fully set forth
`
`herein.
`
`ll.
`
`Tang Yung has one or more valid contracts to sell the products now accnsed of
`
`infringing the ‘M8 and *599 Patents.
`
`12.
`
`Upon information and belief, Dexas willfully and intentionally interfered with the
`
`contracts. Such interference has caused harm to Tung Yung, including damages in an amount to
`
`he proved at trial.
`
`13.
`
`Tung Yung is entitled to reiief, as set forth beiovv.
`
`COUNT 3 — TORTIOUS INTERFERENCE WITH PROSPECTIVE ECONOMIC
`RELATIONS
`
`l4.
`
`Tung Yung restates and reavers all above paragraphs as though fully set forth
`
`herein.
`
`Defendanfs Answer & Counterclaims
`
`Page 5
`0l7i03.000l.O;lUS4765.0i
`
`

`
`Case 6:07-Cv—OO334-LED-JDL Document ii
`
`Fiied 09/14/2007
`
`Page 6 of 8
`
`I5.
`
`Tung Yung had a reasonable probability that it would have entered into a business
`
`relationship with one or more third parties.
`
`16.
`
`Upon information and beiief, Dexas intentionally or negligentiy interfered with
`
`those relationships. Such interference has caused harm to Tung Yung, including damages in an
`
`amount to be proved at trial.
`
`17.
`
`Tung Yung is entitled to relief, as set forth below.
`
`PRAYER FOR RELIEF
`
`Defendant and Counterclaimant Tang Yung international inc. seeks the foliowing relief:
`
`1.
`
`2.
`
`3.
`
`Dexas take nothing by its Complaint;
`
`Dexas’ Complaint be dismissed with prejudice;
`
`A deciaratory judgment that Tung Yung does not infringe the Asserted Paten

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