BULKY
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`DOCUMENT
`
`(FILE
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`GES)
`
`
`
`‘Proceeding No.
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`192062507
`
`
`
`lFihng Date
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`| 12/28/2015
`
`‘
`
`|
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`
`
`iPartklofl 1]
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`
`
`
`
`‘ 92062507 \
`
`

`

`EDGE.108N
`
`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.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Cancellation No.: 92062507
`
`Registration No.: 4,768,710
`
`Mark: ACTIV-4
`
`l 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: U.S. Patent and Trademark
`Office, P.O. 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. 4,768,710. 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 U.S. District Court
`
`for the Southern District of Florida ("the Complaint"). Mot., Ex. A. The case was assigned Case
`
`No. 14-24517-CIV-MOORE/MCALILEY ("the Florida Action"). Respondent had not yet even
`
`-1-
`
`111111111111111111111111111111111111111111111111111111111111
`12-28-2015
`
`u s Patent & TMOfC/ TM Mall Rcpt Dt • 22
`
`

`

`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 1, 2014, after being served with the Complaint in the Florida Action,
`
`Respondent submitted an application for federal registration of the mark ACTIV-4. 1 Petition for
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`Cancellation, Ex. B. This application issued as Registration No. 4,768,710 ("the Registration"),
`
`the registration at issue in this proceeding, on July 7, 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 m the Florida Action to Amend
`
`Defendant's Answer and Counterclaims seeking to add claims for infringement of Respondent's
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`Registration. Ex. 1 at 58-59, ili1132-141. 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 ACTIV-4 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
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`ACTIV-4, a mark identical to Respondent's mark at issue in this proceeding. However,
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`Respondent did not even file the application that led to issuance of Respondent's Registration for
`
`the mark until after Petitioner filed and served the Complaint in the Florida Action. Thus, as
`
`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-
`
`

`

`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,
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`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
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`case." 37 C.F.R. § 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 'l
`
`Seaway Trading Corp., 91U.S.P.Q.2d1957, 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
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`showing of good cause."). "[B]oth the permissive language of Trademark Rule 2.117(a) ... and
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`the explicit provisions of Trademark Rule 2.117(b) make clear that suspension is not the
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`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
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`affirmative defense of prior use of the ACTIV-4 mark and rejected Respondent's attempt to add
`
`-3-
`
`

`

`claims relating to this Registration. Thus, the validity of Respondent's Registration No.
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`4,768,710will 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;
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`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
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`Registration. As discussed above, the invalidity of Respondent's Registration is not even at issue
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`in the Florida Action and will not be decided in that action. If this action is suspended, Petitioner
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`will be forced to wait until after the Florida Action is decided before even this action is allowed
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`to progress, and before Petitioner is allowed to pursue the relief it seeks here. Accordingly,
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`Respondent's motion should be denied to avoid delay and prejudice to Petitioner.
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`CONCLUSION
`
`For the reasons set forth above, Petitioner respectfully requests that the Board deny the
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`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
`
`-4-
`
`

`

`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 ofrecord 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 A venue
`South Miami, FLORIDA 33155
`UNITED STATES
`
`Natalie B. Rodriguez
`
`22254047
`121015
`
`-5-
`
`

`

`EXHIBIT 1
`EXHIBIT 1
`
`

`

`Case 1:14-cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 1of114
`
`AUG O 3 2015
`
`STEVEN M LMIM9~~
`CLERK IJ S. OfS'f. eT~
`S. 0 . qf fl,.A =MIAMI
`
`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,
`
`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;
`AXJA MEDSClENCES, LLC;
`WESTON PRESIDIO SERVICE COMPANY, LLC;
`V ALEANT PHARMACEUTICALS INTERNATIONAL, INC. ;
`THE RITZ-CARL TON HOTEL COMP ANY, LLC,
`
`Counter-Defendants.
`
`MOTION TO AMEND DEFENDANT'S ANSWER AND COUNTERCLAJMS,
`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 (D.E. 104), "all motions to amend the pleadings
`
`or to join 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 after the first responsive pleading by the last
`
`

`

`Case 1:14-cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 2of114
`
`responding defendant". Because Aguila filed his answer on June 18, 2015 as D.E. 116, the
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`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. Allowingjoinder and the amended counterclaims would serve the interests of judicial
`
`economy. Aguila is requesting to join pursuant to Fed. R. Civ. P . Rule 20 the following
`
`counterclaim defendants: WESTON PRESIDIO SERVICE COMPANY, LLC; V ALEANT
`
`PHARMACEUTICALS INTERNATIONAL, INC. ; and THE RITZ-CARL TON HOTEL
`
`COMP ANY, LLC.
`
`4. Aguila is requesting to add two new counts to his counterclaims. First, is "Count XV" fo r
`
`TRADEMARK INFRINGEMENT pursuant to 3 5 U.S.C. § 1114(1) against all counterclaim
`
`defendants. Aguila owns the registered US. trademarks for Activ-4 (USPTO Reg. No.
`
`4, 768, 710), Beta-HD (USPTO Reg. No. 4, 768, 711 ), Antiox-6 (US PTO 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 XVI" for FALSE DESIGNATION OF ORIGIN pursuant
`
`to 35 U.S.C. § l 125(a) against all counterclaim defendants. Aguila owns the registered U.S .
`
`trademarks for Activ-4 (USPTO Reg. No. 4, 768, 710), Beta-HD (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 ri se 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 (1 lth Cir.2003). Although
`
`Rule 20(a) only requires that plaintiffs have any question of law or fact in common, here, the
`
`2
`
`

`

`Case 1:14-cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 3 of 114
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`questions of law and fact are nearly identical. Accordingly, Aguila meets Rule 20(a)'s
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`requirements for permissive joinder.
`
`7_ 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 trial 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 _" United Mine
`
`Workers v. Gibbs, 383 U.S . 715, 724, 86 S.Ct 1130, 16 L.Ed.2d 218 (1966).
`
`8_ 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."
`
`9. 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
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`facts in Aguila' s counterclaim satisfy the "same transaction, occurrence, or series of
`
`transactions or occurrences" requirement for permissive joinder. Moreover, severing
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`Defendants promotes efficiency as set forth above. For these reasons, the Court find s
`
`misjoinder.
`
`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)( l); Moore's Federal Practice - -- Civil§
`
`19.02(2)(b) (2009).
`
`3
`
`

`

`Case 1:14-cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 4 of 114
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`11 . A decision whether to grant leave to amend is within the discretion of the district court.
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`Farnan v. Davis, 371 U.S. 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
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`leave to amend "shall be freely given when justice so requires." Id. There must be a
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`"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
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`dilatory motive, repeated failure to cure deficiencies by previously permitted amendments,
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`undue prejudice to the opposing party, and the futility of the amendment. 79 F.3d 1096, 1109
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`(11th Cir. 1996).
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`13 . In addition, "Rules 18, 20, and 23 of the Federal Rules of Civil Procedure permit the most
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`liberal joinder of parties, claims, and remedies in civil actions." (quoting 28 U. S C. § 1441
`
`(reviser's note)).
`
`WHEREFORE, Aguila requests that this court grant his motion to amend his answers and
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`counterclaims, and to join the three additional parties.
`
`Respectfully submitted,
`
`August 3, 2015
`
`Telephone: +49 7472 941 9465
`
`4
`
`

`

`Case 1:14-cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 5 of 114
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`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 U.S. mail and/or e-mail
`
`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 Rumler, 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
`
`5
`
`

`

`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)
`
`6
`
`

`

`Case 1:14-cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 7of114
`
`UNITED STA TES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`MIAMI DIVISION
`CASE N0.1:14-CIV-24517-KMM/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 COMPANY, LLC;
`VALEANTPHARMACEUTICALS INTERNATIONAL, INC .;
`THE RITZ-CARL TON HOTEL COMP ANY, LLC,
`
`Counter-Defendants.
`
`I
`
`SECOND AMENDED DEFENDANT/COUNTER-PLAINTIFF'S
`ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS
`
`Defendant/Counter-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
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`1.
`
`2.
`
`3.
`
`4.
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`5.
`
`6.
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`7.
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`8.
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`9.
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`10.
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`11.
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`12.
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`13 .
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`14.
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`15.
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`16.
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`17.
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`18.
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`19.
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`20.
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`21 .
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`22.
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`23 .
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`24.
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`25.
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`26.
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`THE PARTIES
`
`The allegations of paragraph l are denied.
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`The allegations of paragraph 2 are denied.
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`The allegations of paragraph 3 are admitted.
`
`The allegations of paragraph 4 are denied.
`
`The allegations of paragraph 5 are denied.
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`JURISDICTION AND VENUE
`
`The allegations of paragraph 7 are denied.
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`The allegations of paragraph 8 are denied.
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`The allegations of paragraph 9 are denied.
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`The allegations of paragraph 10 are admitted.
`
`GENERAL ALLEGATIONS
`
`The allegations of paragraph 10 are admitted.
`
`The allegations of paragraph 36 are den ied.
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`The allegations of paragraph 12 are denied.
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`The allegations of paragraph 13 are denied.
`
`The allegations of paragraph 14 are denied.
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`The allegations of paragraph 15 are denied.
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`The allegations of paragraph 16 are denied.
`
`The allegations of paragraph 17 are denied.
`
`The allegations of paragraph 18 are denied.
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`The allegations of paragraph 19 are denied.
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`The allegations of paragraph 20 are denied.
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`The allegations of paragraph 21 are denied.
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`The allegations of paragraph 22 are denied .
`
`The allegations of paragraph 23 are denied.
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`The allegations of paragraph 24 are denied.
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`The allegations of paragraph 25 are denied.
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`The allegations of paragraph 26 are denied.
`
`2
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`

`

`Case 1:14-cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 9 of 114
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`27.
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`28 .
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`29.
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`30.
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`31.
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`32.
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`33 .
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`34.
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`35 .
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`The allegations of paragraph 27 are denied.
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`The allegations of paragraph 28 are denied.
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`The allegations of paragraph 29 are admitted.
`
`The allegations of paragraph 30 are denied.
`
`The allegations of paragraph 31 are denied.
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`The allegations of paragraph 32 are admitted.
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`The allegations of paragraph 33 are admitted.
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`The allegations of paragraph 34 are denied.
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`Aguila admits that Plaintiff Edge Systems has generated over $93 million in revenue over
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`the last five years. Except as admitted therein, the remaining allegations of paragraph 35 are
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`denied.
`
`36.
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`37.
`
`38.
`
`39.
`
`40.
`
`41.
`
`42.
`
`43 .
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`44 .
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`45.
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`46.
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`47.
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`48 .
`
`49.
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`The allegations of paragraph 36 are deni ed.
`
`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 deni ed.
`
`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.
`
`3
`
`

`

`Case 1:14-cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 10 of 114
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`54.
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`55 .
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`56.
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`57.
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`58.
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`59.
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`60.
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`6 I .
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`62 .
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`63.
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`64.
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`65.
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`66.
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`67.
`
`68.
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`69.
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`70.
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`71 .
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`72.
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`73.
`
`74.
`
`75 .
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`76.
`
`77.
`
`78 .
`
`79.
`
`80.
`
`81.
`
`82.
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`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.
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`The allegations of paragraph 70 are denied.
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`The allegations of paragraph 71 are denied.
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`The allegations of paragraph 72 are denied.
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`The allegations of paragraph 73 are denied.
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`The allegations of paragraph 74 are denied.
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`The allegations of paragraph 75 are denied.
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`The allegations of paragraph 76 are denied.
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`FffiST CLAIM FOR RELIEF INFRlNGEMENT OF THE PATENTS-IN-SUIT
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`The allegations of paragraph 77 are denied.
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`The allegations of paragraph 78 are admitted.
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`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.
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`4
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`Case 1:14-cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 11of114
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`83 .
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`84.
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`85 .
`
`86.
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`87.
`
`88 .
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`89.
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`90.
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`91 .
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`92.
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`93 .
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`94.
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`95 .
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`96.
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`97.
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`98 .
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`99.
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`The allegations of paragraph 83 are denied.
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`The allegations of paragraph 84 are denied.
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`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.
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`The allegations of paragraph 94 are denied.
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`SECOND CLAIM FOR RELIEF TRADEMARK lNFRINGEMENT
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`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.
`
`l 03 . The allegations of paragraph 103 are denied.
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`104. The allegations of paragraph 104 are denied.
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`105 . The allegations of paragraph 105 are denied .
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`THIRD CLAIM FOR RELIEF
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`FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION
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`106. The allegations of paragraph 106 are denied.
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`107. The allegations of paragraph 107 are admitted.
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`108. The allegations of paragraph 108 are denied.
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`109. The allegations of paragraph 109 are denied.
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`5
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`Case 1:14-cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 12 of 114
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`110. The allegations of paragraph 360 are denied.
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`111. The allegations of paragraph 361 are denied.
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`112. The allegations of paragraph 362 are denied.
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`113 . The allegations of paragraph 363 are denied.
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`114. The allegations of paragraph 364 are denied.
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`115. The allegations of paragraph 365 are denied.
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`FOURTH CLAIM FOR RELIEF
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`FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION
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`116. The allegations of paragraph 366 are denied.
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`117. The allegations of paragraph 367 are admitted.
`
`118. The allegations of paragraph 368 are denied.
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`119. The allegations of paragraph 369 are denied.
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`FIFTH CLAIM FOR RELIEF
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`FRAUD ON THE U.S.P.T.O.
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`120. The allegations of paragraph 120 are denied.
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`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.
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`126. The allegations of paragraph 126 are denied.
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`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.
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`13 1. The allegations of paragraph 131 are denied.
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`6
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`Case 1:14-cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 13 of 114
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`GENERAL DENIAL
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`132.
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`Except as expressly admitted herein, Aguila denies each and every allegation
`
`contained in Plaintiffs' Complaint.
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`DEMAND FOR JUDGMENT
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`133.
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`Aguila denies that the Plaintiffs are entitled to the relief for which it please in
`
`paragraph 6 of its prayer.
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`134.
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`Aguila denies that the Plaintiffs are entitled to the relief for which it please in
`
`paragraph 6 of its prayer.
`
`135.
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`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;
`
`l 42. 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
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`Case 1:14-cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 14of114
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`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.
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`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
`
`l of the '620 patent requiring "a skin interface portion of the working end comprising an
`
`abrasive tragment 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.
`
`8
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`

`

`Case 1:14-cv-24517-KMM Document 135 Entered on FLSD Docket 08/04/2015 Page 15 of 114
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`Aguila's handpiece
`
`Plaintiffs' handpiece
`
`U.S. Patent 6,299,620
`
`160. Claim 1 of U.S. 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 of the 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 abrasi ve 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
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`

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`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 l 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" .
`
`U.S. Patent 8,337,513
`
`163 . Claim 1 of U.S. Patent 8,337,513 ('" 513 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 hand held device; at least one surface