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`Filing date:
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`ESTTA1336688
`01/28/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding No.
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`92083415
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`Filing Party
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`Other Party
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`Plaintiff
`ODP LLC
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`Defendant
`Alan Poudrier
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`Pending Motion
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`There is no motion currently pending and no other motion is being filed concur-
`rent with this consent motion.
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`Attachments
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`Motion to Suspend CANCELLATION.pdf(109291 bytes )
`Complaintmotion1.pdf(5967077 bytes )
`Complaintmotion2.pdf(3841656 bytes )
`Complaintmotion3.pdf(4048680 bytes )
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`Consent Motion for Suspension in View of Civil Proceeding
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`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, ODP
`LLC hereby requests suspension of this proceeding pending a final determination of the civil action. Trade-
`mark Rule 2.117.
`ODP LLC has secured the express consent of all other parties to this proceeding for the suspension reques-
`ted herein.
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`Certificate of Service
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`The undersigned hereby certifies that a copy of this submission has been served upon all parties, at their ad-
`dress of record by Email on this date.
`Respectfully submitted,
`/jmf/
`Jeffrey M Furr
`jeffmfurr@furrlawfirm.com
`01/28/2024
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK
`TRIAL AND APPEAL BOARD
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`Petitioner/Counterdefendant
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`Cancellation No. 92083415
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`In the Matter of Registration Number 6745183
`For the mark EZ DOOR CART
`Date registered May 31, 2022
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`ODP LLC
`95 JOHNSON ST.
`WATERBURY, CONNECTICUT UNITED STATES 06710
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`
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`
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`vs.
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`Alan Poudrier
`1103 Chip Lane
`Niceville, FLORIDA UNITED STATES 32578
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`UNITED STATES PATENT AND
`TRADEMARK TRIAL AND APPEAL BOARD
`PO BOX 1451
`ALEXANDRIA VA 22313-1451
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`Respondents/Counterclaimants
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`CONSENTED MOTION TO SUSPEND CANCELLATION
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`The Parties by and through its undersigned counsel and pursuant to 37
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`C.F.R. § 2.117(a), hereby moves the Trademark Trial and Appeal Board (the “Board”) to suspend the above-
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`captioned Cancellation pending resolution of a lawsuit captioned Rack Abilities, LLC., and Alan Poudrier v.
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`EZ 4x4, LLC., Brian L. Goldwitz, Tracy Forlini, Elecor Manufacturing, LLC, Case No. C3:23-cv-24645-
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`MCR-HTC, currently pending in the UNITED STATES DISTRICT COURT FOR THE NORTHERN
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`DISTRICT OF FLORIDA PENSACOLA DIVISION (the “Civil Action”).
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`The Parties respectfully asserts that the Board should suspend the Cancellation until the Civil Action
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`is resolved because the Civil Action will have a bearing on, if not definitively resolve, many of the legal and
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`factual issues presented in this Cancellation. See generally TBMP § 510.02(a) (“To the extent that a civil
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`action in a Federal district court involves issues in common with those in a proceeding before the Board, the
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`decision of the Federal district court is often binding upon the Board, while the decision of the Board is not
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`binding upon the court.”); Daimler Chrysler Corp. v. Maydak, 86 U.S.P.Q.2d 1945, 1950 (T.T.A.B. 2008).
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`Where this is the case, “[o]rdinarily, the Board will suspend proceedings in the case before it if the final
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`determination of the other proceeding will have a bearing on the issues before the Board.” TBMP § 510.02(a);
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`see also Gen. Motors Corp. v. Cadillac Club Fashions Inc., 22 U.S.P.Q.2d 1933, 1936-37 (T.T.A.B. 1992).
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`A copy of the First Amended Complaint in the Civil Action is attached as Exhibit A.
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`Accordingly, in the interests of avoiding the burden associated with maintaining two parallel
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`proceedings involving the same factual and legal issues, the Parties respectfully requests suspension of the
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`Cancellation until resolution of the Civil Action.
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`Respectfully submitted,
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`____s/jmf/________________________
`Jeffrey M. Furr
`Attorney for Petitioner/Counterclaim Defendant
`2622 Debolt Road
`
`Utica, Ohio 43080
`JeffMFurr@FurrLawFirm.com
`740-817-2381 (telephone)
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`
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`ACCEL IP LAW, PLLC
`
`By: /s/ Stephen D. Milbrath
`Stephen D. Milbrath (FL # 239194)*
`121 S ORANGE AVENUE
`SUITE 1521
`ORLANDO, FL 32801
`407-492-0259
`Fax: 321-355-5200
`Smilbrath@acceliplaw.com
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`CERTIFICATE OF FILING
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` hereby certify that this answer is being electronically filed with the United States Patent and Trademark Trial
`and Appeal Board on the 28th day of January 2024.
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`__/jmf/__________________________________
`Jeffrey M. Furr, Esquire
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`CERTIFICATE OF SERVICE
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` I
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` hereby certify that this paper is being deposited on the 28th day of January 2024 electronically to:
`
`
`STEPHEN D MILBRATH
`ACCEL IP LAW PLLC
`121 S ORANGE AVE STE 1521
`ORLANDO, FL 32801
`UNITED STATES
`smilbrath@acceliplaw.com, legalassistant@acceliplaw.com
`Phone: 407-492-0259
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`___/jmf/_____________________________________
`Jeffrey M. Furr, Esquire
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`EXHIBIT A
`EXHIBIT A
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 1 of 82
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`UNITED STATES DISTRICT COURT FOR
`THE NORTHERN DISTRICT OF FLORIDA PENSACOLADIVISION
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`Rack Abilities, LLC., a Florida
`Limited Liability Corporation, and
`Alan Poudrier, a Natural Person,
`
`Case No.
`
`Plaintiffs,
`
`V.
`
`EZ 4x4, LLC., a Connecticut
`Limited Liability Company, Brian L.
`Goldwitz, a natural person, Tracy
`Forlini, a natural person, Elecor
`Manufacturing, LLC, a Connecticut
`Limited Liability Company,
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`Defendants.
`
`
`
`Complaint for Damages,
`Declaratory and Injunctive
`Relief and Jury Trial
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`Plaintiffs, Rack Abilities, LLC., a Florida Limited Liability Company
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`(“Plaintiff’ or “RAL”) and Alan Poudrier (“Mr. Poudrier”), sue Defendants, EZ 4x4,
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`LLC., a Connecticut Limited Liability Company (“EZ 4x4’) Brian L. Goldwitz,
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`(“Mr. Goldwitz”), Tracy Forlini, and Elecor Manufacturing, LLC, (“Elecor”) and
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`allege:
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`Jurisdiction and Parties to the Action
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`1. This is an action for declaratory and injunctive relief and for damages
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`arising out of the breach ofa patent license agreement, acts ofpatent and
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`trademark infringement, and unfair competition.
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`
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 2 of 82
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`2. The Court has original jurisdiction over this action and of the parties
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`under 28 U.S.C. §1331, § 1338 (a) and (b), and 15 U.S.C. §§1114-17,
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`and 35 U.S.C. §271.
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`3. The Court has supplemental jurisdiction over the substantially related
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`claim set forth in Count V.
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`4. Because the declaratory judgment claim involves a federal question
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`relating to patent infringement, the Court also hasjurisdiction to adjudge
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`the controversy under 28 U.S.C. § 2201.
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`5. Upon information and belief, Defendants control, solicit, and conduct
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`business in this District and Division and distribute and cause to be
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`distributed unlicensed and infringing goods within this District and
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`Division.
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`6. Venue lies in this District and Division because Defendants have
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`committed acts of infringement here and because a forum selection
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`clause set forth in the Patent License Agreement executed bythe parties
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`operates as a waiver of any venuerights available to Defendants under
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`28 U.S.C. §1400(b).
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`Accel IP Law, PLLC
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`
`
`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 3 of 82
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`7. Plaintiff Rack Abilities, LLC, is a Florda Limited Liability Company
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`formed and organized by Alan Poudrier, an inventor, to license and
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`commercially exploit Mr. Poudrier’s technology, and in particular, his
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`technology directed to after market goods for Jeeps and their owners.
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`8. Plaintiff Alan Poudrier is a resident of Niceville, Florida, within the
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`Northern District of Florida.
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`9. Defendant EZ 4x4, LLC is a Connecticut Limited Liability Company
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`which maintains an office at 95 Johnson Street, Waterbury, CT, 06710.
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`10. Defendant EZ 4X4, LLC is, upon information and belief, owned and
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`controlled by Brian Lee Goldwitz and Tracy Forlini.
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`11. Defendant EZ 4X4, LLC was at times material to this action also
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`qualified to do business in the State of Florida and registered with the
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`Secretary of State of Florida until about September 22, 2023, whereit
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`maintained an office at 1006 N. Lincoln Ave, Tampa, Fl. 33607.
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`12. Defendants Brian Lee Goldwitz (Mr. Goldwitz) is an individual andis
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`currently a resident of New Haven County,Ct.
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`Accel IP Law, PLLC
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`
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 4 of 82
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`13. Defendant Tracy Forlini is, upon information and belief, an owner and
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`managerof various companies in commonwith Mr. Goldwitz, including
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`EZ 4x4, LLC and Elecor Manufacturing, LLC.
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`14. Defendant Tracy Forlini is upon information andbelief a resident of
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`New Haven County, Ct.
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`15. Defendant Elecor Manufacturing, LLC (“Elecor”) is a Connecticut
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`Limited Liability Company, whose address, like that of EZ 4x4, is 95
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`Johnson Street, Waterbury, CT 06710.
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`16. Upon information and belief, Elecor claims to be in the business of
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`manufacturing sporting and athletic goods and imports articles
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`manufactured in China.
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`17. Upon information and belief, EZ 4X4is in the businessofselling Jeep®
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`related after-market products under various brand names.
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`18. Defendants are selling to customers in this District and Division or
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`causing othersto sell articles covered by one or moreclaimsofthe patent
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`in suit, namely United States Patent 11,654,947, and have sold and
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`shipped and caused to be shippedarticles covered by that patent without
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`license or legal right, namely, the E-Z 4x4 “Folding Rolling Door Cart”
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`Accel IP Law, PLLC
`
`
`
`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 5 of 82
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`identified on the packaging as being licensed under the aforementioned
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`patent, together with a confusing claim that the sameis also the subject
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`of patents pending “in the United States, Canada and China.” The
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`articles so sold to customers of Defendants in this District and Division
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`include infringing articles sold via Amazon.com by Defendants or their
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`affiliates.
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`The Patent and TrademarkIn Suit
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`19. On May 23, 2023, the Patent Office issued US. Patent 11,654,947 BI
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`to Mr. Poudrier, hereinafter called the ‘947 Patent. An authentic copy of
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`‘947 Patent is attached as Exhibit A.
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`20. The ‘947 Patentis a continuation in part of application No. 16/537,593
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`filed on April 11, 2019, now US Patent 11,097,759, which is a
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`continuation in part of application No. 16/125,672, filed on September
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`8, 2018, now USPatent 10, 376, 045, which is a continuation in part of
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`application No. 15/962,262, filed on April 25, 2018, which application
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`was abandoned.
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`21. The ‘947 Patent is directed to a versatile transport rack which rests on
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`the ground surface or rolls on castors, and which enables the storage and
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`Accel IP Law, PLLC
`
`
`
`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 6 of 82
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`movement of removable doors from a Jeep ® or other sport utility
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`vehicle, thereby offering the driver of such a vehicle a lightweight
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`foldable door holder with wheels suitable for holding removable doors
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`on Jeeps or similar sport utility vehicles.
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`22. Mr. Poudrier adopted and used in commerceas early as May 24, 2021,
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`the trademark EZ DOOR CARTin connection with his goods and
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`services, and obtained United States Trademark Registration No. 6,745,
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`183, a true copy ofsuch registration being attached hereto as Exhibit B.
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`23. On or about April 16, 2021, while certain of his patent applications
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`werestill in prosecution, Mr. Poudrier began offering his device for sale
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`to consumers at a vendor booth in Daytona, Fl, at an event called the
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`“Jeep Beach” event. Mr. Poudrier used the banner depicted in the
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`following image, wherein he promoted the device initially as a “EZ as
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`1-2-3:”
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`Accel IP Law, PLLC
`
`
`
`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 7 of 82
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`Store Jeep Doors
`EZ as1-2-3
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`IVE FREE
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`a L
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`24. Defendants were present at the same “Jeep Beach” event attended by
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`Mr. Poudrier and purchased two of the foldable cart units Mr. Poudrier
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`wasselling.
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`25. Upon information and belief, Goldwitz immediately sent one of the
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`purchased units to China to obtain a reproduction ofthe unit, as he later
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`boasted to Mr. Poudrier.
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`26. While he was waiting for his Chinese copy, Goldwitz and various
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`agents of Defendants, including Forlini, began promoting Defendants’
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`intended knock-off product for sale to prospective customers using a
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`Accel IP Law, PLLC
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`
`
`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 8 of 82
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`photograph of the genuine Poudrier product and promoting that genuine
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`productas if it were the Defendants’ product — thereby engaging in the
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`“reverse passing off’ of the genuine article of Plaintiffs as that of
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`Defendant. An example of this improper passing off is provided in the
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`advertisement by Defendants to the “Jeep Community” appearing on the
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`following images.
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`f} (2) EZTRUNK | Facebook
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`
`
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`-)
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`> G
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`https://www.facebook.com/keepyourjunkinthetrunk
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`responsible for this Page.
`
`Q Search Facebook
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`18 Like
`EZTRUNK
`SY Like Reply«20w
`A major #TBT shout outto the Jeepthat...
`cy Syne
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`EZTRUNK
`Daniel Maxwell A new folding door holderthat's
`837 Views-2 weeks ago
`on wheels! We're taking preorders at Jeep events
`across the country! @@—We're taking preordersat Jeep events
`
`Like-Reply-20w across the country!
`© Page Transparency
`See All
`Daniel Maxwell
`POSTED 5/10/2021
`Didn'tsee it on your site. Would of liked some
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`Facebookis showing information to help you
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`post content. Like-Reply-20w
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`EZTRUNK
`EZTRUNK a division of EZ4X4is
`:
`.
`Daniel Maxwell It's a preorderitem at the
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`a
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`Accel IP Law, PLLC
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`
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 9 of 82
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`
`
`Dd Donna Evans
`
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`JeepinTheCoast, Christain Pass, MS May 2021
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`©@2
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`2y
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`Reply
`Like
`3 Donna Evans
`one
`oe
`
`Facebookpost, 6/13/2021
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`EZTRUNK, displaying RackAbilities door cart
`(Reverse Passing Off) and taking Pre Orders
`for a FOLDING DOOR HOLDER
`
`:
`e@
`Like
`Reply
`oO
`
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`27. After Poudrier discovered the reverse passing off of his genuinearticle,
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`Goldwitz approached Poudrier about taking a license to the ‘947 Patent,
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`having taken manyorders from prospective customers whothoughtthey
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`were buying Plaintiff’s genuinearticle.
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`28. Bythis time, Goldwitz had threatened Poudrier by saying that he would
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`have his patents invalidated and that Poudrier should tell his patent
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`lawyerthat “it doesn’t matter... I’ve already sentit to China,” or words
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`to that effect.
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`Accel IP Law, PLLC
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`
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 10 of 82
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`29. On or about May 20,after having already adopted EZ DOOR CARTas
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`his intended trademark, Mr. Poudrier emailed Goldwitz to let him know
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`of the intended trademark.
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`30. Defendants expressed no concerns or objections about the intended
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`trademark application and made noclaim ofa conflict with any alleged
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`or possible marks of his various companies.
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`31. Thereafter Poudrier and Goldwitz began to discuss details of a patent
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`license under Poudrier’s patents and pending applications.
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`32. On July 14, 2021, Poudrier agreed to the Patent License Agreement
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`attached hereto as Exhibit C. The Licensor under the Agreementis
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`Poudrier’s wholly owned LLC, Rack Abilities, LLC. The only Licensee
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`mentioned by namein the Agreement is Defendant Elecor.
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`33. The Patent License Agreement granted to Elecor what is represented to
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`be an exclusive license to “use, develop, and exploit” U.S. Patent
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`10,981,588 and “patent application 16/537593”. The Agreement
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`explicitly defines “Licensed Patent”to be the referenced and issued ‘588
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`Patent and the referenced application “16/537591” and expressly
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`provides that “no other patent, patent application, or any other
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 11 of 82
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`intellectual property now ownedorhereafter acquired by LICENSORis
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`part of or otherwise included in this Agreement.” Id, §1.7. By definition
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`this Section of the Agreement excluded the ‘947 Patent, which did not
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`issue until May 23, 2023.
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`34. The only defendant expressly licensed in the Patent License Agreement
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`is Defendant Elecor.
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`35. The Patent License Agreement also grants Rack Abilities the right to
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`make,use andsell 240 units of the Licensed Product “each yearthat this
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`agreementis in effect.” Id., §2.1. And it obligates Elecor to provide Rack
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`Abilities the units so licensed at wholesale and “within 31 calendar
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`days.”
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`36. The Patent License Agreement hasan effective date of July 14, 2021,
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`with a term of one-year subject to automatic renewal “every year for an
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`additional one-year term, up to the life of the last expiring patent that
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`formsa part of this agreement.” Id., §3.1.
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`37. The Patent License Agreementrequires, at §4.1, a minimum annualup-
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`front royalty payment by the Licensee of $25,000. It also requires at §4.2
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 12 of 82
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`that the Licensee submit accurate royalty reports “after the end of each
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`calendar quarter.”
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`38. Elecor as Licensee paid the $25,000 royalty in advance and Defendant
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`then commenced sales of the Chinese copies to consumers under various
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`brands as a “Door Holder” and more generally as a Folding Door Holder.
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`39. Howeverit also cameto the attention of Plaintiffs that Defendant EZ
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`4x4, which runs an e-commerce website, had begun to offer for sale Mr.
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`Goldwitz’s Chinese copy as the “EZ Folding Door Cart,”as illustrated
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`in the digital copy of the webpage EZTRUNK- Jlu, Jl, Jk, Jku, Tj, Jt,
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`2007-2022, Jeep 4x4 Accessories, Attached as Exhibit D hereto.
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`40. Because ofthe similarity of the Defendants’ “EZ Folding Door Cart”
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`to Plaintiffs’
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`trademark registration EZ DOOR CART, Plaintiffs
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`complained that the trade name used by Defendants was too similar to
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`Plaintiffs’ marks for essentially the same goodsand services Plaintiffs
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`were using for their product line, which Plaintiffs were selling in
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`accordance with §2.1 of the Patent License Agreement. Defendants
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`howevercontinuedto use a deceptively similar namefor their device, as
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 13 of 82
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`is shown in the photograph taken on October 17, 2023, just before the
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`filing of this complaint, referred to above as Exhibit D.
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`41. The Patent License Agreement does not confer any right to use the EZ
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`DOOR CART mark to promote their licensed goods, a fact Defendants
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`completely understood since they had negotiated with Plaintiffs the right
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`of Plaintiffs to sell their own brand of patented articles to consumers.
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`42. Defendants’ use of a deceptively similar mark to promote the sales of
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`their similar goods, however, was only one of many problemsPlaintiffs
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`encountered in doing business with Mr. Goldwitz and his companies or
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`their affiliates. The royalty reports such as Exhibit E, only reported sales
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`on the basis of what Defendants were paying to their Chineseaffiliate,
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`rather than their actual direct sales to consumers or their wholesale
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`transactions with dealers. Section 4.2 of the Patent License Agreement
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`specifies that Elecor will pay “five percent of the purchase orderprice
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`of each unit ordered or obtained.” Butit also provides that the purchase
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`orderprice “shall not be below that price as would be reached in an arm’s
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`length transaction between two nonaffiliated parties.” This price, in
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`other words, cannot be the low price paid to the Chinese affiliate but
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`must be the price two parties would negotiate for an arm’s length deal.
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`Defendants failed and refused to pay or negotiate such a price, even
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`though they claimed that the wholesale price to wholesalers — people
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`whoare dealing at arm’s length — was $210 per unit. Defendants refused
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`to pay 5% of sales at that arms-length price, even as their volume of
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`sales steadily increased to a number that would have exceeded the
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`minimum annual royalty payment amount. This became unacceptable to
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`Plaintiffs as Defendants’ reported sales exceeded about $500,000.
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`Breach of Insurance Coverage Requirement
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`43. Even more important to Plaintiffs, as the volume of Defendants’ sales
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`increased, is that Defendants failed to accurately report their approximate
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`annual sales of the Licensed product to their liability insurer,
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`thereby
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`compromising the liability protection required by §9 of the Patent License
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`Agreement. That section requires that the Licensee (andaffiliated parties)
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`purchase and maintain in full force and effect an “occurrence” liability
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`insurance policy insuring against product liability claims made against
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`LICENSOR or LICENSEE including any claims associated with the
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`“design, manufacture, use, sale or maintenance of the Licensed Products”
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`Case 3:23-cv-24645-MCR-HTC Documenti Filed 10/19/23 Page 15 of 82
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`and it also requires that Defendants provide certificates of insurance proving
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`the existence of the necessary insurance and showing that Plaintiffs were co-
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`insureds underthe policy. Defendants did produce somecertificates, but they
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`failed to accurately report the true sales ofDefendants, a fact which imperiled
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`the availability of insurance coverage to Plaintiffs. This was important
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`because of defendants’ sales and promotion practices, which failed to inform
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`consumersofcertain risks associated with the device as sold by Defendants,
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`such as primitive camping events or beach and other outdoor events that
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`occur on unlevel and unimprovedterrain to appreciate the last point, it is
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`necessary to add detail about the actual consumeruseofthe invention in real
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`world conditions, where consumersdo not necessarily pay close attention to
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`safety. Plaintiffs determined that a proper use decal should be suppliedto all
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`consumersor users of the device because EZ4x4 andvarious representatives
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`of the company and affiliated companies were not advising consumers of
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`safety concerns that could be presentif the consumer used the moveablecart
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`carelessly on un-level surfaces. Plaintiffs believed that it was necessary to
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`warm consumers with a decal against careless use of the device, such as
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`represented below:
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`Avoid actions that might cause the
`cart to tip. Casters are intended for
`hard,level surfaces.
`Place the doors on the cart as in
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`steps 1, 2, and 3, keeping a slight
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`gap below the doors hinges as seen
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`in Figure 2.
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`Secure the doors to the cart using
`the doors’ original hinge nuts.
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`
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`Figure 4: It was determined that the decal shown aboveshould be securedto all door
`carts.
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`44. Defendants declined to provide the requested decals or to renew their
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`liability insurance policy and correct their certificate of insurance to reflect
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`their actual sales of in excess of $500,000 to consumers and wholesalers.
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`45. Plaintiffs demanded, through counsel, that insurance certificates at the
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`correct sales base be obtained, as is shown,as but oneillustration, in Exhibit
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`H hereto.
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`46. Defendants declined to update the insurance certificate to a correct amount
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`or changetheir policies as to warning consumers of hazards associated with
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`loading conditions in the field or beach.
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`47. Plaintiffs informed Defendants that the Patent License Agreement would
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`not be renewed, and the agreement would be terminated if Defendants failed
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`to address the above-mentioned concerns. In particular, Plaintiffs sent a
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`demandletter dated September 30, 2022, a copy of which is attached hereto
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`as Exhibit E, providing Defendants thirty days’ notice of Plaintiffs’ intent to
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`terminate the Patent License Agreement if the necessary corrections to the
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`certificate of insurance were not supplied and if Defendants did not cure the
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`breaches in the Agreement, including the improper use of a confusingly
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`similar trademark.
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`48. Defendants refused to rectify the problems, however. Accordingly,
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`Plaintiffs declared the agreement terminated in the letter attached here to as
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`Exhibit F, and dated December 9, 2022. Indeed, Defendants continue even
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`at
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`the present
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`time to market their infringing knockoff by promoting
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`hazardous uses of the knockoff product on unimproved terrain,
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`to the
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`potential
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`injury
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`of Plaintiffs’
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`brand,
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`as
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`shown
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`below (from
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`https://eztrunk.net):
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`Q ezdxd - Search
`© https://eztrunk.net
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`*
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`ff E24xa/ EZTRUNK
`
`Wi
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`This website uses cookies.
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`"We use cookies to analyze website traffic
`and optimize your website experience. By
`accepting our use of cookies, your data will
`be aggregatedwith all other user data.
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`49.Thereafter, a year after the Sept 2022 letter referenced above, Defendants
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`tendered a new $25,000 license fee, ignoring the cancellation of the License
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`Agreement. The tendered fee was by wire transfer and Plaintiffs immediately
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`returned the wire, declining to renew any business relationship with
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`Defendants. The license relationship between the parties
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`therefore
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`terminated as of Plaintiffs’ December 9, 2022, letter, Exhibit F above.
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`50. Upon information and belief, subsequent to the cancellation of the Patent
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`License Agreement Defendants have continued to import into the United
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`States and have sold and continue to sell devices covered by one or claims
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`of the ‘947 Patent and whichare sold undera trade name confusingly similar
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`to that EZ DOOR CART.
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`51. All conditions precedent to the filing of this complaint have occurred or
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`been waived or excused by law.
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`CountI: Declaratory Judgment
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`52. This Count I is claim for declaratory judgment to determine that the Patent
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`License Agreement has been cancelled and terminated and is no longer in
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`force and effect, and to grant such additional and supplementalrelief as may
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`be appropriate, including a preliminary and permanentinjunction against any
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`continuing acts of infringement.
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`53. Plaintiffs hereby incorporate and reallege the allegations of paragraphs 1
`
`through 51 aboveasif fully set forth herein.
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`54. Plaintiffs’ declaratory claim arises under federal law, namely the Patent Act,
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`and Plaintiffs’ asserted rights to relief necessarily depend uponresolution of
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`a substantial question of federal patent law, namely, whether the Patent
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`License Agreement remainsin effect, or it is has been terminated or canceled.
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`55. Plaintiffs, the patent ownerand the agent for the patent owner, contendthat
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`the Patent License Agreement was lawfully terminated for material breach.
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`56. Defendants Elecor and the remaining defendants, whoareaffiliates of the
`
`former licensee and whoarestill selling or offering for sale certain
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`embodiments of the patented invention, contend that the Patent License
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`Agreementwas not lawfully terminated andthat the license remainsin effect
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`notwithstanding the termination notice andthe refusal of Plaintiffs to renew
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`the license upon tender of advanceroyalties.
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`57. Plaintiffs contend that Defendants breached the License Agreementand did
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`so in a material way andthat proper notice of the intent to terminate the
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`license wasgiven and that the Defendants did not cure the breach.
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`58. Plaintiffs further contend that the Patent License Agreement was not
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`renewed, and that Plaintiffs properly declined to renew the license once the
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`license term concluded, particularly in light of the material breach of the
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`same.
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`59. Plaintiffs additionally contend that the license was breached in material
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`respects not previously disclosed, including the failure to properly report and
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`account for royalties due Plaintiff over and above the mandatory minimum
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`royalty amounts previously paid.
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`60. Plaintiffs further contend that Defendants are obligated to account for and
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`to pay for sales made of devices covered by the patents and sold through the
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`reverse passing off conduct described above,at a time before the license was
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`signed, and which is an obligation expressly recognized in §4.1 (a) of the
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`Patent License Agreement.
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`61. There is accordingly a justiciable controversy involving concrete issues
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`between Plaintiffs and Defendants that requires an adjudication of the Court.
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`62. All necessary parties to the dispute are before the Court.
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`63. Accordingly,
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`the Court should assume jurisdiction of the controversy,
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`decide the contested issues of law and fact framed above, and declare the
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`rights and obligations of the parties and grant such additional relief as may
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`be appropriate.
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`WHEREFORE,Plaintiffs demand a declaratory judgment against Defendants
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`Elecor, EZ and Brian L. Goldwitz and Tracy Forlini declaring the rights and
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`obligations ofthe parties hereto, and with such supplemental relief as the Court shall
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`deem just and proper, finding in particular that the Patent License Agreementis no
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`longer in effect and was properly terminated.
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`Count I: Infringement of The ‘947 Patent
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`64.This CountII is a claim under 35 U.S.C. §271 for patent infringement.
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`65. Plaintiffs hereby incorporate and reallege the allegations of paragraphs1
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`through 51 aboveasif fully set forth herein.
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`66. Since the termination and nonrenewal of the Patent License Agreement,if
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`not at times before, Defendants Elecor, Goldwitz, EZ and Forlini have
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`infringed and caused to be infringed at least independent claim one of the
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`‘947 Patent by importing into the United States and by selling and offering
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`for sale devices which are covered by independent claim one of the ‘947
`
`Patent, namely the device of the kind sold in this District and Division as the
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`“EZ Folding Rolling Door Cart” and promoted as a the EZ Folding Door
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`Cart.
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`67. Plaintiffs have examinedthe articles sold in this District and Division as the
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`aforementioned EZ Folding Door Cart, as shipped by Defendants through
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`an Amazonsale to a customer within this District and Division.
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`68. A claim chart comparing the Defendants’ article against Claim I of the ‘947
`
`patent appears below:
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`Patent Claim 1
`
`“A rack comprising
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`Defendants’ EZ 4x4 “Door Cart”
`
`
`
`This “rolling door cart” comprises a
`rack having rails
`for holding and
`moving removable doors
`Therolling doorcart has a center frame;
`
`coextensive
`a pair of
`is
`There
`horizontally disposed center rails (each
`having a first upper surface and an
`opposingfirst lower surface);
`
`
`
`frame having a pair of
`A center
`horizontally
`disposed
`coextensive
`center rails each having a first upper
`surface and an opposing first
`lower
`surface, the center frame also having a
`pair of vertical rails, each vertical rail
`extending upwardly from a respective
`one centerrai
`
`The center frame has a pair of vertical
`rails,
`each vertical
`rail
`extending
`upwardly from a respective one center
`rail;
`a first outer frame having a pair of
`The rolling door cart has a pair of
`coextensive first outer rails having a
`coextensive first outer rails and having
`second lower surface, such that each
`a second upper surface and an opposing
`outerrail is attached to a respective one
`second lower surface, such that each
`first outer rail is attached to a respective
`centerrail;
`one centerrail via a pairoffirst pins that
`The device hasa pair pins each ofwhich
`each pass through a respective one of
`pass through a respective oneofthefirst
`the first outer
`rail and through a
`outer rail and through a respective one
`respective one center rail with the first
`outer frame pivoting with respect to the
`center rail with the first outer frame
`pivoting with respect to the center frame
`center frame aboutthe pair of first pins
`about the pair of first pins such that the
`such that the first outer frame is capable
`first outer frame is capable of rotating
`of rotating between a first unfolded
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`position wherein the first outer rails and first unfolded position between a
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