BULKY
`
`DOCUMENT
`
`(FILED ON PAPER — ENTIRE DOCUMENT EXCEEDS 100 PAGES)
`
`
`
`
`|Proceeding No.
`[92062491
`
`
`
`
`|Fi1ing_Date
`1 12/28/2015
`
`
`
`lPartIlof|1|
`
`92062491
`
`

`

`EDGE.091N
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`TTAB
`
`Edge Systems LLC,
`
`Petitioner,
`
`V.
`
`Rafael N. Aguila DBA Edge Systems,
`
`Respondent.
`
`
`
`VVVVVVVVVVVVVVVV
`
`Cancellation No.: 92062491
`
`RegistrationNo.: 4,772,995 J/(pW 2 (/2 7
`
`Mark: DERMABUILDER
`
`I hereby certify that this correspondence
`and all marked attachments are being
`deposited with the United States Postal
`Service as first-class mail in an envelope
`addressed to: US. Patent and Trademark
`
`Office, PO. Box 1451 Alexandria, VA
`22313-1451, on
`
`
`December 23 2015
`
`(Date)
`
`/LXK/
`Lauren Keller Katzenellenbogen
`
`PETITIONER’S OPPOSITION TO RESPONDENT’S
`
`MOTION FOR SUSPENSION OF PROCEEDINGS
`
`Edge Systems, LLC (“Petitioner”), by and through its undersigned counsel, hereby
`
`opposes Respondent’s Motion for Suspension of Proceedings on the grounds that the civil action
`
`filed by Petitioners against Rafael N. Aguila d/b/a/ Edge Systems (“Respondent”) does not
`
`involve Registration No. 4,772,995. Thus, Respondent has not shown good cause to suspend the
`
`present proceeding and the Motion to Suspend should be denied.
`
`FACTUAL BACKGROUND
`
`On November 26, 2014, Petitioner filed a Complaint against Respondent alleging, inter
`
`alia, infringement of a number of Petitioner’s patents and trademarks, in the US. District Court
`
`for the Southern District of Florida (“the Complaint”). Mot., Ex. A. The case was assigned Case
`
`-1-
`
`||||||| |l|||llll||||||l|||||||||||||||||||||||l|||||l||||||l
`12-28-70 1 5
`U 5 Patent fiTMOqu Mail Rap! D'. #22
`
`

`

`No. 14-24517-CIV—MOORE/MCALILEY (“the Florida Action”). Respondent had not yet even
`
`applied for the registration at issue in this proceeding when Petitioner filed its Complaint in the
`
`Florida Action. Petition for Cancellation, Ex. B.
`
`On December 14, 2014, after being served with the Complaint in the Florida Action,
`
`Respondent submitted an application for federal registration of the mark DERMABUILDER.l
`
`Petition for Cancellation, Ex. B. This application issued as Registration No. 4,772,995 (“the
`
`Registration”), the registration at issue in this proceeding, on July 14, 2015 — eight months after
`
`the Florida Action was filed.
`
`Id. Accordingly, none of the claims, defenses, or counterclaims in
`
`the Florida Action relates to Respondent’s Registration at issue here.
`
`On August 4, 2015 Respondent filed a Motion in the Florida Action to Amend
`
`Defendant’s Answer and Counterclaims seeking to add claims for infringement of Respondent’s
`
`Registration. Ex. 1 at 58-59, 1111132441. However, on October 8, 2015, the Southern District of
`
`Florida issued an order denying Respondent’s Motion to Amend. Ex. 2. Further, on October 26,
`
`2015, the Southern District of Florida also dismissed Defendant’s affirmative defense of prior
`
`use of Petitioner’s various trademarks, including of the DERMABUILDER mark. See Ex. 3 at
`
`15 (raising affirmative defense of prior use); Ex. 4 at 12—15 (order dismissing affirmative defense
`
`of prior use). Thus, the court in the Florida Action has already rejected Respondent’s attempt to
`
`raise issues relating to Respondent’s Registration in the Florida Action. See Mot. at Ex. A; EX. 2.
`
`Respondent may assert that there are overlapping issues because in the Florida Action
`
`Petitioner brought claims for infringement of Petitioner’s common law rights in the mark
`
`DERMABUILDER, a mark identical
`
`to Respondent’s mark at
`
`issue in this proceeding.
`
`However, Respondent did not even file the application that led to issuance of Respondent’s
`
`1 Respondent was served with the Complaint in the Florida Action on December 2, 2014 rather
`than December 19, 2014 as asserted in Respondent’s motion. See Mot. at 1.
`
`-2-
`
`

`

`Registration for the mark until after Petitioner filed and served the Complaint in the Florida
`
`Action. Thus, as discussed above, the invalidity of Respondent’s Registration, the subject of this
`
`proceeding, is not at issue and will not be decided in the Florida Action. Respondent seeks to
`
`suspend this proceeding only to delay' the cancellation of his fraudulently obtained Registration.
`
`Thus, suspending this proceeding would be highly prejudicial to Petitioner.
`
`THIS PROCEEDING SHOULD NOT BE SUSPENDED
`
`A Trademark Trial and Appeal Board (“Board”) proceeding may be suspended if “a party
`
`or parties to a pending case are engaged in a civil action .
`
`.
`
`. which may have a bearing on the
`
`case.” 37 CPR. § 2.117(a). Suspension of a Board proceeding pending the final determination
`
`of another proceeding is solely within the discretion of the Board. Jodi Kristopher Inc. v. Int ’1
`
`Seaway Trading Corp, 91 U.S.P.Q.2d 1957, 1959 (T.T.A.B. 2009). See also TBMP § 510.02(a)
`
`“All motions to suspend, regardless of circumstances,
`
`.‘
`
`.
`
`. are subject to the ‘good cause’
`
`standard.” Id; see also TBMP § 510.03(a) (“[T]he Board generally will not approve a motion or
`
`stipulation to suspend filed after answer and before the discovery conference without a sufficient
`
`showing of good cause”). “[B]oth the permissive language of Trademark Rule 2.117(a) .
`
`.
`
`. and
`
`the explicit provisions of Trademark Rule 2.117(b) make clear that suspension is not the
`
`necessary result
`
`in all cases.”
`
`Id.
`
`(citing Boyds Collection Ltd. v. Herrington & Co, 65
`
`U.S.P.Q.2d 2017, 2018 (T.T.A.B. 2003)).
`
`Here, suspension is not appropriate because Respondent has not shown good cause for
`
`the suspension. See id; TBMP § 510.03(a). The Florida Action is unrelated to this proceeding
`
`because Respondent’s Registration did not issue until eight months after the Florida Action was
`
`filed. Thus, none of the claims, defenses, or counterclaims in the Florida Action relates to
`
`Respondent’s Registration. Moreover, the District Court has already dismissed Respondent’s
`
`affirmative defense of prior use of the DERMABUILDER mark and rejected Respondent’s
`
`-3-
`
`

`

`attempt
`
`to add claims relating to this Registration.
`
`Thus,
`
`the validity of Respondent’s
`
`Registration No. 4,772,995 will not be decided in the Florida Action.
`
`Because the Florida Action is unrelated to this cancellation proceeding and will have no
`
`bearing on the present cancellation proceeding, Respondent has failed to meet his burden to
`
`show good cause for suspension of this proceeding. See Jodi Kristopher, 91 U.S.P.Q.2d at 1959;
`
`TBMP § 510.03(a).
`
`Moreover, suspension of this cancellation proceeding would unduly prejudice Petitioner
`
`because it would needlessly delay this proceeding and the cancellation of Respondent’s invalid
`
`Registration. As discussed above, the invalidity of Respondent’s Registration is not even at issue
`
`in the Florida Action and will not be decided in that action. If this action is suspended, Petitioner
`
`will be forced to wait until after the Florida Action is decided before even this action is allowed
`
`to progress, and before Petitioner is allowed to pursue the relief it seeks here. Accordingly,
`
`Respondent’s motion should be denied to avoid delay and prejudice to Petitioner.
`
`CONCLUSION
`
`For the reasons set forth above, Petitioner respectfully requests that the Board deny the
`
`Motion for Suspension of Proceedings and continue this cancellation proceeding.
`
`Dated: December 23, 2015
`
`By:
`
`
`/LXK/
`Lauren Keller Katzenellenbogen
`Ali S. Razai
`
`Joy Wang
`2040 Main Street, 14th Floor
`
`Irvine, CA 92614
`(949) 760-0404
`efiling@knobbe.com
`Attorney for Petitioner,
`Edge Systems LLC
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that I served copies of the foregoing PETITIONER’S OPPOSITION
`TO RESPONDENT’S MOTION FOR SUSPENSION OF PROCEEDINGS upon
`Respondent’s counsel of record by depositing a copy thereof in the United States Mail, first-class
`postage prepaid, on December 23, 2015, addressed as follows:
`
`Rafael N. Aguila
`5338 SW 57th Avenue
`
`South Miami, FLORIDA 33155
`UNITED STATES
`
`MM)?! ’5. 4/0171,“ ML
`
`
`
`Natalie B. Rodriguez
`
`

`

`EXHIBIT 1
`
`

`

`Case 1:14-cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 1 of 114
`
`
`
`STEVEN M. LARIMQRE
`CLERK U15 9,157.67,
`3. o of 51A, .—..MlAMl
`
`
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`MIAMI DIVISION
`
`CASE NO. 1:14-CIV—24517-KMM/MCALILEY
`
`EDGE SYSTEMS, LLC, and
`AXIA MEDSCIENCES, LLC,
`
`Plaintiffs,
`
`Vi
`
`Rafael Newton Aguila, a/k/a Ralph Aguila,
`an individual, d/b/a Hydradermabrasion Systems,
`
`Defendant.
`
`Rafael Newton Aguila, a/k/a Ralph Aguila,
`an individual, d/b/a Hydradermabrasion Systems,
`
`Counter—Plaintiff,
`
`V,
`
`EDGE SYSTEMS, LLC,
`AXIA NIEDSCIENCES, LLC;
`WESTON PRESIDIO SERVICE COMPANY, LLC;
`VALEANT PHARMACEUTICALS INTERNATIONAL, INC;
`THE RITZ-CARLTON HOTEL COWANY, LLC,
`
`Counter-Defendants.
`
`MOTION TO AMEND DEFENDANT’S ANSWER AND COUNTERCLAIMS,
`AND TO JOIN ADDITIONAL PARTIES
`
`Defendant/Counter-Plaintiff, Rafael Newton Aguila (“Aguila”) requests that the Court
`
`allow leave for him to amend his answer and counterclaims and to join additional parties for the
`
`following reasons:
`
`1. According to this Court’s Scheduling Order (DE. 104), “all motions to amend the pleadings
`
`or tojoin additional parties must be filed by the later of forty-five (45) days after the date of
`
`entry of this Order, or forty-five (45) days afier the first responsive pleading by the last
`
`1
`
`

`

`Case 1:14-cv—24517—KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 2 of 114
`
`responding defendant”. Because Aguila filed his answer on June 18, 2015 as DE. 116, the
`
`final date to amend the pleadings or to join additional parties is today, August 3, 2015.
`
`2. Aguila’s second amended answer and counterclaims is attached as Exhibit A along with this
`
`motion.
`
`3. Allowing joinder and the amended counterclaims would serve the interests ofjudicial
`
`economy. Aguila is requesting to join pursuant to Fed. R. Civ. P. Rule 20 the following
`
`counterclaim defendants: WESTON PRESIDIO SERVICE COMPANY, LLC; VALEANT
`
`PHARMACEUTICALS INTERNATIONAL, INC; and THE RITZ-CARLTON HOTEL
`
`COMPANY, LLC.
`
`4. Aguila is requesting to add two new counts to his counterclaims. First, is “Count XV” for
`
`TRADEMARK INFRINGEIVIENT pursuant to 35 U.S.C. § 1114(1) against all counterclaim
`
`defendants. Aguila owns the registered U.S. trademarks for ActiV—4 (USPTO Reg. No.
`
`4,768,710), Beta-HI) (USPTO Reg. No. 4,768,711), Antiox—6 (USPTO Reg. No. 4,768,712),
`
`and DermaBuilder (USPTO Reg. No. 4,772,995). These trademarks are all being infringed
`
`by all of the counterclaim defendants.
`
`5. The second new count is “COUNT XVT’ for FALSE DESIGNATION OF ORIGIN pursuant
`
`to 35 U.S.C. § 1125(a) against all counterclaim defendants. Aguila owns the registered U.S.
`
`trademarks for Activ-4 (USPTO Reg. No. 4,768,710), Beta-H1) (USPTO Reg. No.
`
`4,768,711), Antiox-6 (USPTO Reg. No. 4,768,712), and DermaBuilder (USPTO Reg. No.
`
`4,772,995). These trademarks are all being infringed by all of the counterclaim defendants.
`
`6. Aguila satisfies the requirements of Rule 20(a) because he seeks relief based on the same
`
`series of transactions and occurrences giving rise to his trademark infringement claims.
`
`Whether a claim falls within the same series of transactions or occurrences depends on their
`
`logical relationship. Alexander v. Fulton Cnty., Ga, 207 F.3d 1303, 1323 (11th Cir.2000),
`
`overruled on other grounds by Manders v. Lee, 338 F.3d 1304 (11th Cir.2003). Although
`
`Rule 20(a) only requires that plaintiffs have any question of law or fact in common, here, the
`
`

`

`Case 1:14-cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 3 of 114
`
`questions of law and fact are nearly identical. Accordingly, Aguila meets Rule 20(a)'s
`
`requirements for permissive joinder.
`
`Federal Rule of Civil Procedure 20(a)(2) describes the requirements for permissive joinder of
`
`defendants. It provides persons may be joined as defendants if: “(A) any right to relief is
`
`asserted against them jointly, severally, or in the alternative with respect to or arising out of
`
`the same transaction, occurrence, or series of transactions or occurrences; and (B) any
`
`question of law or fact common to all defendants will arise in the action.” This rule is
`
`designed “to promote tn'al convenience and expedite the resolution of lawsuits, thereby
`
`eliminating unnecessary lawsuits.” Alexander, 207 F.3d at 1324. “Under the Rules, the
`
`impulse is toward entertaining the broadest possible scope of action consistent with fairness
`
`to the parties; joinder of claims, parties and remedies is strongly encouraged.” UniledMine’
`
`Workers v. Gibbs, 383 US. 715, 724, 86 S.Ct. 1130, 16 L.Ed.2d 218 (1966).
`
`Moreover, the Court may consider principles of fundamental fairness in assessing permissive
`
`joinder. These principles are encompassed, in part, by Rule 1 of the Federal Rules of Civil
`
`Procedure which requires the “just, speedy, and inexpensive determination of every action
`
`and proceeding.”
`
`Aguila has a keen interest in proceeding against numerous Counter-Defendants in one
`
`lawsuit to reduce the costs of protecting its trademarks by avoiding multiple filing fees. The
`
`facts in Aguila’s counterclaim satisfy the “same transaction, occurrence, or series of
`
`transactions or occurrences” requirement for permissive joinder. Moreover, severing
`
`Defendants promotes efficiency as set forth above. For these reasons, the Court finds
`
`misjoinder.
`
`8.
`
`9.
`
`10.
`
`Under Rule 20, a plaintiff is free to refuse or join proper parties: parties by whom or against
`
`whom claims arise from the same transaction or occurrence and will raise at least one
`
`common question of law or fact. Fed.R.Civ.P. 20(a)(1); Moore's Federal Practice m Civil §
`
`19.02(2)(b) (2009).
`
`

`

`Case 1:14-cv—24517—KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 4 of 114
`
`ll.
`
`A decision whether to grant leave to amend is within the discretion of the district court.
`
`Foman v. Davis, 371 US. 178, 182 (1962). However, the Supreme Court has put some limits
`
`on this discretion by emphasizing Federal Rule of Civil Procedure 15(a), which provides that
`
`leave to amend “shall be freely given when justice so requires.” Id. There must be a
`
`“justifying reason” for a court to deny leave to amend because the Supreme Court has held
`
`that “this mandate is to be heeded.” Id; see also Halliburton & Assoc. v. Henderson, Few &
`
`Co., 774 F.2d 441, 443 (11th Cir. 1985) (“substantial reason” to deny leave to amend is
`
`needed).
`
`12.
`
`In Grayson v. Kmart Corp, the Supreme Court indicated that in deciding whether to grant
`
`leave to amend, the Court may consider the following factors: undue delay, bad faith or
`
`dilatory motive, repeated failure to cure deficiencies by previously permitted amendments,
`
`undue prejudice to the opposing party, and the futility of the amendment. 79 F.3d 1096, 1109
`
`(11th Cir. 1996).
`
`13.
`
`In addition, “Rules 18, 20, and 23 of the Federal Rules of Civil Procedure permit the most
`
`liberal joinder of parties, claims, and remedies in civil actions.” (quoting 28 USC. § 1441
`
`(reviser’s note».
`
`WHEREFORE, Aguila requests that this court grant his motion to amend his answers and
`
`counterclaims, and to join the three additional parties.
`
`Respectfully submitted,
`
`August 3, 2015
`
`Newton Aguila
`R
`e-mail: raguila@gmail.com
`Weittenauerstrasse 11
`
`72108 Rottenburg am Neckar
`GERMANY
`
`Telephone: +49 7472 941 9465
`
`

`

`Case 1:14-cv—24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 5 of 114
`
`CERTIFICATE OF SERVICE
`
`I HEREBY certify that on August 3, 2014, I conventionally filed the foregoing document with
`the Clerk of the Court. I also certify that the foregoing document is being served this da on all
`counsel of record by US mail and/or e—mail
`.
`
`e1 A
`
`,
`
`
`
`James A. Gale, Esq. (FBN 371726)
`Richard Guerra, Esq. (FBN 689521)
`FELDMAN GALE
`
`One Biscayne Tower, 30th Floor
`2 South Biscayne Blvd.
`Miami, FL 33131
`Telephone: (305) 358-5001
`Facsimile: (305) 358-3309
`
`Brenton R. Babcock, Esq. (admitted pro hac
`vice)
`Ali S. Razai, Esq. (admitted pro hac vice)
`KNOBBE, MARTENS, OLSON &
`
`BEAR, LLP
`2040 Main Street, Fourteenth Floor
`
`Irvine, CA 92614
`Telephone: (949) 760-0404
`Facsimile: (949) 760-9502
`
`Attorneys for Plaintiffs,
`EDGE SYSTEMS LLC and
`AXIA MEDSCIENCES LLC
`
`WESTON PRESIDIO SERVICE
`
`COMPANY, LLC
`Therese A. Mrozek, COO
`One Ferry Building, Suite 350
`, San Francisco, CA 94111-4226
`Telephone: (415) 398-0770
`Facsimile: (415) 398-0990
`
`THE RITZ-CARLTON HOTEL
`
`COMPANY, LLC
`Herve Humler, COO
`4445 Willard Avenue, Suite 800
`
`Chevy Chase, MD 20815
`Telephone: 301—547—4700
`Facsimile: 801-468-4069
`
`VALEANT PHARMACEUTICALS
`
`INTERNATIONAL, INC.
`400 Somerset Corporate Blvd.
`Bridgewater, NJ 08807
`(866) 246-8245
`
`

`

`Case 1:14—cv-24517—KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 6 of 114
`
`EXHIBIT A
`
`(Second Amended Answer and Counterclaims)
`
`

`

`Case 1:14-cv-24517—KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 7 of 114
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`MIAMI DIVISION
`
`CASE NO. 1:14-CIV-24517—KNIM/MCALILEY
`
`EDGE SYSTEMS, LLC, and
`
`AXIA MEDSCIENCES, LLC,
`
`Plaintiffs,
`
`V.
`
`Rafael Newton Aguila, a/k/a Ralph Aguila,
`an individual, d/b/a Hydradermabrasion Systems,
`
`Defendant
`
`Rafael Newton Aguila, a/k/a Ralph Aguila,
`an individual, d/b/a Hydradermabrasion Systems,
`
`Counter-Plaintiff,
`
`V.
`
`EDGE SYSTEMS, LLC;
`
`AXIA MEDSCIENCES, LLC;
`WESTON PRESIDIO SERVICE COWANY, LLC;
`
`VALEANT PHARMACEUTICALS INTERNATIONAL, INC;
`THE RITZ-CARLTON HOTEL COMPANY, LLC,
`
`Counter-Defendants.
`
`
`SECOND AMENDED DEFENDANT/COUNTER—PLAINTIFF’S
`
`ANSWER, AFFIRIVIATIVE DEFENSES1 AND COUNTERCLAIMS
`
`Defendant/Countear-Plaintiff, RAFAEL NEWTON AGUILA (“Aguila”), answer
`
`to
`
`Plaintiffs/Counter-Defendants’ Original Complaint (“Complaint”) is as follows:
`
`

`

`Case 1:14-cv-24517—KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 8 of 114
`
`THE PARTIES
`
`The allegations of paragraph 1 are denied.
`
`The allegations of paragraph 2 are denied.
`
`The allegations of paragraph 3 are admitted.
`
`The allegations of paragraph 4 are denied.
`
`The allegations of paragraph 5 are denied.
`
`JURISDICTION AND VENUE
`
`The allegations of paragraph 7 are denied.
`
`The allegations of paragraph 8 are denied.
`
`The allegations of paragraph 9 are denied.
`
`The allegations of paragraph 10 are admitted.
`
`GENERAL ALLEGATIONS
`
`The allegations of paragraph 10 are admitted.
`
`The allegations of paragraph 36 are denied.
`
`The allegations of paragraph 12 are denied.
`
`The allegations of paragraph 13 are denied
`
`The allegations of paragraph 14 are denied.
`
`The allegations of paragraph 15 are denied.
`
`The allegations of paragraph 16 are denied.
`
`The allegations of paragraph 17 are denied.
`
`The allegations of paragraph 18 are denied.
`
`The allegations of paragraph 19 are denied.
`
`The allegations of paragraph 20 are denied.
`
`The allegations of paragraph 21 are denied.
`
`The allegations of paragraph 22 are denied.
`
`The allegations of paragraph 23 are denied.
`
`The allegations of paragraph 24 are denied.
`
`The allegations of paragraph 25 are denied,
`
`The allegations of paragraph 26 are denied,
`
`1.
`
`to
`
`.U‘RP’
`
`99°99
`
`10.
`
`11.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`21.
`
`22.
`
`23.
`
`24.
`
`25.
`
`26.
`
`

`

`Case 1:14—cv—24517—KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 9 of 114
`
`27.
`
`28.
`
`29.
`
`30.
`
`31.
`
`321
`
`33,
`
`34.
`
`35.
`
`The allegations of paragraph 27 are denied.
`
`The allegations of paragraph 28 are denied.
`
`The allegations of paragraph 29 are admitted.
`
`The allegations of paragraph 30 are denied.
`
`The allegations of paragraph 31 are denied.
`
`The allegations of paragraph 32 are admitted.
`
`The allegations of paragraph 33 are admitted.
`
`The allegations of paragraph 34 are denied.
`
`Aguila admits that Plaintiff Edge Systems has generated over $93 million in revenue over
`
`the last five years. Except as admitted therein, the remaining allegations of paragraph 35 are
`
`denied.
`
`36.
`
`37.
`
`38.
`
`39.
`
`40.
`
`41.
`
`42.
`
`43.
`
`44.
`
`45.
`
`46.
`
`47,
`
`48.
`
`49.
`
`The allegations of paragraph 36 are denied.
`
`The allegations of paragraph 37 are denied.
`
`The allegations of paragraph 38 are denied.
`
`The allegations of paragraph 39 are denied.
`
`The allegations of paragraph 40 are denied.
`
`The allegations of paragraph 41 are denied.
`
`The allegations of paragraph 42 are denied.
`
`The allegations of paragraph 43 are denied.
`
`The allegations of paragraph 44 are denied.
`
`The allegations of paragraph 45 are denied.
`
`The allegations of paragraph 46 are admitted.
`
`The allegations of paragraph 47 are denied.
`
`The allegations of paragraph 48 are denied.
`
`Aguila admits to applying for a trademark on November 1, 2014. Except as admitted
`
`therein, the remaining allegations of paragraph 49 are denied.
`
`50.
`
`Aguila admits to using the website www—edge—systems.com. Except as admitted therein,
`
`the remaining allegations of paragraph 50 are denied.
`
`51.
`
`52.
`
`53.
`
`The allegations of paragraph 51 are denied.
`
`The allegations of paragraph 52 are admitted.
`
`The allegations of paragraph 53 are denied.
`
`

`

`Case 1:14-Cv-24517—KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 10 of 114
`
`54.
`
`55.
`
`56.
`
`57.
`
`58.
`
`59,
`
`60.
`
`61.
`
`62.
`
`63.
`
`64.
`
`65.
`
`66.
`
`67.
`
`68.
`
`69.
`
`70.
`
`71.
`
`72.
`
`73.
`
`74.
`
`75.
`
`76.
`
`77.
`
`78.
`
`79.
`
`80.
`
`81.
`
`82.
`
`The allegations of paragraph 54 are denied.
`
`The allegations of paragraph 55 are denied.
`
`The allegations of paragraph 56 are denied.
`
`The allegations of paragraph 57 are admitted.
`
`The allegations of paragraph 58 are denied.
`
`The allegations of paragraph 59 are denied.
`
`The allegations of paragraph 60 are denied.
`
`The allegations of paragraph 61 are denied.
`
`The allegations of paragraph 62 are denied.
`
`The allegations of paragraph 63 are denied.
`
`The allegations of paragraph 64 are denied.
`
`The allegations of paragraph 65 are denied.
`
`The allegations of paragraph 66 are denied.
`
`The allegations of paragraph 67 are denied.
`
`The allegations of paragraph 68 are denied.
`
`The allegations of paragraph 69 are denied.
`
`The allegations of paragraph 70 are denied.
`
`The allegations of paragraph 71 are denied.
`
`The allegations of paragraph 72 are denied.
`
`The allegations of paragraph 73 are denied.
`
`The allegations of paragraph 74 are denied.
`
`The allegations of paragraph 75 are denied.
`
`The allegations of paragraph 76 are denied.
`
`FIRST CLAIM FOR RELIEF INFRINGEMENT OF THE PATENTS—lN—SUIT
`
`The allegations of paragraph 77 are denied.
`
`The allegations of paragraph 78 are admitted.
`
`The allegations of paragraph 79 are denied.
`
`The allegations of paragraph 80 are denied.
`
`The allegations of paragraph 81 are denied.
`
`The allegations of paragraph 82 are denied.
`
`

`

`Case 1:14—cv—24517-KMM Document 135 Enteredo‘n FLSD Docket 08/04/2015 Page 11 of 114
`
`83.
`
`84.
`
`85.
`
`86.
`
`87.
`
`88.
`
`89.
`
`90.
`
`91.
`
`92.
`
`93.
`
`94.
`
`95.
`
`96.
`
`97.
`
`98.
`
`99.
`
`The allegations of paragraph 83 are denied.
`
`The allegations of paragraph 84 are denied,
`
`The allegations of paragraph 85 are denied.
`
`The allegations of paragraph 86 are denied.
`
`The allegations of paragraph 87 are denied.
`
`The allegations of paragraph 88 are denied.
`
`The allegations of paragraph 89 are denied.
`
`The allegations of paragraph 90 are denied.
`
`The allegations of paragraph 91 are denied.
`
`The allegations of paragraph 92 are denied.
`
`The allegations of paragraph 93 are denied.
`
`The allegations of paragraph 94 are denied.
`
`SECOND CLAIM F OR RELIEF TRADEMARK INFRINGEMENT
`
`The allegations of paragraph 95 are denied.
`
`The allegations of paragraph 96 are admitted.
`
`The allegations of paragraph 97 are denied.
`
`The allegations of paragraph 98 are denied.
`
`The allegations of paragraph 99 are denied.
`
`100.
`
`The allegations of paragraph 100 are denied.
`
`101.
`
`The allegations of paragraph 101 are denied.
`
`102.
`
`The allegations of paragraph 102 are denied.
`
`103.
`
`The allegations of paragraph 103 are denied.
`
`104.
`
`105.
`
`The allegations of paragraph 104 are denied.
`
`The allegations of paragraph 105 are denied.
`
`THIRD CLAINI FOR RELIEF
`
`FALSE DESIGNATION OF ORIGIN AND UNFAIR CONIPETITION
`
`106.
`
`The allegations of paragraph 106 are denied.
`
`107.
`
`The allegations of paragraph 107 are admitted.
`
`108.
`
`The allegations of paragraph 108 are denied.
`
`109.
`
`The allegations of paragraph 109 are denied.
`
`5
`
`

`

`Case 1:14-cv-24517—KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 12 of 114
`
`110.
`
`The allegations of paragraph 360 are denied.
`
`111.
`
`The allegations of paragraph 361 are denied.
`
`112.
`
`The allegations of paragraph 362 are denied.
`
`113.
`
`The allegations of paragraph 363 are denied.
`
`114.
`
`The allegations of paragraph 364 are denied.
`
`115.
`
`The allegations of paragraph 365 are denied.
`
`FOURTH CLAIlVI FOR RELIEF
`
`FALSE DESIGNATION 0F ORIGIN AND UNFAIR COMPETITION
`
`116.
`
`The allegations of paragraph 366 are denied.
`
`117.
`
`The allegations of paragraph 367 are admitted.
`
`118.
`
`The allegations of paragraph 368 are denied.
`
`1 19.
`
`The allegations of paragraph 369 are denied.
`
`FIFTH CLAIM FOR RELIEF
`
`FRAUD ON THE U.S.P.T.O.
`
`120.
`
`The allegations of paragraph 120 are denied.
`
`121.
`
`The allegations of paragraph 121 are admitted.
`
`122.
`
`The allegations of paragraph 122 are denied.
`
`123.
`
`The allegations of paragraph 123 are denied.
`
`124.
`
`The allegations of paragraph 124 are denied.
`
`125.
`
`The allegations of paragraph 125 are denied.
`
`126.
`
`The allegations of paragraph 126 are denied.
`
`SIXTH CLAIM FOR RELIEF
`
`FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION
`
`127.
`
`The allegations of paragraph 127 are denied.
`
`128.
`
`The allegations of paragraph 128 are admitted.
`
`129.
`
`The allegations of paragraph 129 are denied.
`
`130.
`
`The allegations of paragraph 130 are denied.
`
`131.
`
`The allegations of paragraph 131 are denied.
`
`

`

`Case 1:14-cv-24517—KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 13 of 114
`
`GENERAL DENIAL
`
`132.
`
`Except as expressly admitted herein, Aguila denies each and every allegation
`
`contained in Plaintiffs’ Complaint.
`
`DEMAND FOR JUDGMENT
`
`133.
`
`Aguila denies that the Plaintiffs are entitled to the relief for which it please in
`
`paragraph 6 of its prayer.
`
`134.
`
`Aguila denies that the Plaintiffs are entitled to the relief for which it please in
`
`paragraph 6 of its prayer.
`
`135.
`
`Aguila denies that the Plaintiffs are entitled to the relief for which it please in
`
`paragraph 6 of its prayer.
`
`136. Aguila denies that the Plaintiffs are entitled to the relief for which it please in paragraph 6
`
`of its prayer.
`
`137. Aguila denies that the Plaintiffs are entitled to the relief for which it please in paragraph 6
`
`of its prayer.
`
`138. Aguila denies that the Plaintiffs are entitled to the relief for which it please in paragraph 6
`
`of its prayer.
`
`139. Aguila denies that this demand should be made;
`
`140. Aguila denies that this demand should be made;
`
`141. Aguila denies that this demand should be made;
`
`142. Aguila denies that this demand should be made;
`
`143. Aguila denies that this demand should be made;
`
`144. Aguila denies that this demand should be made;
`
`145. Aguila denies that this demand should be made;
`
`146. Aguila denies that this demand should be made;
`
`147. Aguila denies that this demand should be made;
`
`148. Aguila denies that this demand should be made;
`
`149. Aguila denies that this demand should be made;
`
`150. Aguila denies that this demand should be made;
`
`151. Aguila denies that this demand should be made;
`
`7
`
`

`

`Case 1:14—cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 14 of 114
`
`152. Aguila denies that this demand should be made;
`
`153. Aguila denies that this demand should be made;
`
`154. Aguila denies that this demand should be made;
`
`155. Aguila denies that this demand should be made;
`
`156. Aguila denies that this demand should be made.
`
`DEMAND FOR JURY TRIAL
`
`157. Defendant demands a trial by jury.
`
`AFFIRMATIVE DEFENSES
`
`158.
`
`Pursuant to Federal Rule of Civil Procedure 8(c), and without assuming any burden that it
`
`would not otherwise bear, and reserving its right to assert additional defenses, Aguila asserts the
`
`following defenses to Plaintiffs’ Original Complaint.
`
`FIRST DEFENSE - NON-INFRINGEMENT
`
`159. Without waiving the right to raise additional bases for alleging non—infringement, Aguila
`
`has not and does not infringe any claim of the Plaintiffs’ Patent for at least the reason that one
`
`or more claim limitations are not, and have not been, present in the Aguila’s products. Aguila
`
`does not infringe, and has not infringed, literally or under the doctrine of equivalents; Aguila
`
`does not infringe, and has not infringed, directly, indirectly, jointly, or contributorily; Aguila
`
`does not induce, and has not induced, infringement. As noted above, the limitation of Claim
`
`1 of the '620 patent requiring "a skin interface portion of the working end comprising an
`
`abrasive fragment composition secured thereto" means that the actual handpiece used by the
`
`appellees is different from what is mentioned in Claim 1 of the '620 patent. Instead of having
`
`an "abrasive fragment", the Plaintiffs’ handpiece has smooth plastic tips with small ridges.
`
`Therefore, neither the Plaintiffs’ nor the Aguila’s handpiece meet every limitation of Claim 1
`
`of the ‘620 without making any kind of claim construction analysis; (2) construing appellees'
`
`handpiece to contain an "abrasive fragment" when it has no abrasive materials that make
`
`contact with the skin.
`
`

`

`Case 1:14-cv-24517—KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 15 of 114
`
`
`
`Aguila’s handpiece
`
`Plaintiffs’ handpiece
`
`US. Patent 6,299,620
`
`160.
`
`Claim 1 of US. Patent 6,299,620 (“’620 patent”) states that it is:
`
`A system for treating surface layers of a patient’s skin, comprising: (a)
`an instrument body with a distal working end for engaging a skin
`surface; (b) a skin interface portion of the working end comprising an
`abrasive fragment composition'secured thereto; (c) at least one inflow
`aperture in said skin interface in fluid communication with a fluid
`reservoir; and (d) at least one outflow aperture in said skin interface in
`communication with a negative pressurization source.
`
`161. However, Aguila’s devices do not infringe on this claim because Aguila’s handpieces do
`
`not have “a skin interface portion ofthe working end comprising an abrasive fragment composition
`
`secured thereto” as taught by the ‘620 patent. In fact, Aguila’s handpieces do not have anything in
`
`common with any of the other subsections of found in Claim 1 of the ‘620 patent. For example,
`
`Aguila’s handpieces do not have any “abrasive fragment composition” that come into contact with
`
`the skin surface.
`
`162.
`
`For example, Aguila would include a metal handpiece with an abrasive tip, but for only
`
`dry microdermabrasion, not to use with liquids. The metal handpieces did have diamond fragments
`
`on it to act as an abrasive. For the “wet” microdermabrasion, Aguila would only use the plastic
`
`handpiece with the special plastic tip and no diamond or abrasive material. Similar to the
`
`Hydrafacial MD. See Exhibit J, K, and L. As noted above, the limitation of Claim 1 of the '620
`
`9
`
`

`

`Case 1:14-cv—24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 16 of 114
`
`patent requiring "a skin interface portion of the working end comprising an abrasive fragment
`
`composition secured thereto" means that the actual handpiece used by the appellees is different
`
`from what is mentioned in Claim 1 of the '620 patent. Instead of having an "abrasive fragment",
`
`the Plaintiffs’ handpiece has smooth plastic tips with small ridges. Therefore, neither the Plaintiffs’
`
`nor the Aguila’s handpiece meet every limitation of Claim 1 of the '620 without making any kind
`
`of claim construction analysis; (2) construing appellees' handpiece to contain an "abrasive
`
`fragment" when it has no abrasive materials that make contact with the skin. According to the
`
`Merriam-Webster dictionary,
`
`the ordinary meaning of the term “abrasive” is defined as: “a
`
`substance (as emery or pumice) used for abrading, smoothing, or polishing”.
`
`US. Patent 8,337,513
`
`163.
`
`Claim 1 ofU.S. Patent 8,337,513 (“’5 l3 patent”) states that it is:
`
`A system for treating skin, comprising: a handheld device comprising a main body
`and a working end along a distal end of the main body; an outer periphery extending
`along the distal end of the handheld device; at least one surface element extending
`distally from the working end of the handheld device, said at least one surface
`element being positioned within an interior area circumscribed by the outer
`periphery; wherein the at least one surface element comprises at least one sharp edge
`configured to abrade skin when said handheld device is moved relative to a skin
`surface; and at least one opening along the working end of the handheld device;
`wherein the at least one opening is configured to be placed in fluid communication
`with a vacuum source via a passage way, said passage way being configured to
`convey debris away