Case 2:23-cv-00229-JRG Document 61 Filed 04/30/24 Page 1 of 17 PageID #: 3496
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`WILLOW INNOVATIONS, INC.,
`
`Case No. 2:23-cv-00229-JRG
`
`Plaintiff,
`
`JURY TRIAL DEMANDED
`
`v.
`
`CHIARO TECHNOLOGY, LTD.,
`
`Defendant.
`
`
`
`
`
`
`PLAINTIFF WILLOW’S MOTION TO DISMISS ELVIE’S COUNTERCLAIM FOR
`TRADE DRESS INFRINGEMENT (COUNT 21)
`
`
`

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`Case 2:23-cv-00229-JRG Document 61 Filed 04/30/24 Page 2 of 17 PageID #: 3497
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
`
`INTRODUCTION ............................................................................................................. 1
`FACTUAL BACKGROUND ............................................................................................ 2
`A.
`Patent Claims and Counterclaims .......................................................................... 2
`B.
`Elvie’s State Law Counterclaim ............................................................................ 3
`LEGAL STANDARD ........................................................................................................ 3
`III.
`IV. ARGUMENT ..................................................................................................................... 4
`A.
`Elvie Failed To Plead a Claim For Trade Dress Infringement .............................. 4
`1.
`Color Cannot Be Inherently Distinctive .................................................... 4
`2.
`Elvie Failed To Plead Secondary Meaning ................................................ 6
`3.
`Elvie Failed To Plead Likelihood of Confusion ........................................ 8
`The Court Does Not Have Supplemental Jurisdiction Under Section 1367 .......... 9
`B.
`It Would be Futile to Allow Elvie to Re-Plead Supplemental Jurisdiction ......... 10
`C.
`CONCLUSION ................................................................................................................ 11
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`V.
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`i
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`Case 2:23-cv-00229-JRG Document 61 Filed 04/30/24 Page 3 of 17 PageID #: 3498
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`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`Cases
`
`Abercrombie & Fitch Co. v. Hunting World, Inc.,
`537 F.2d 4 (2d Cir. 1976) ........................................................................................................... 5
`
`Alford v. State Parking Servs., Inc.,
`No. 3:13-CV-4546-L, 2014 WL 6977639 (N.D. Tex. Dec. 10, 2014) ..................................... 10
`
`Amazing Spaces, Inc. v. Metro Mini Storage,
`608 F.3d 225 (5th Cir. 2010) .............................................................................................. 4, 7, 8
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ................................................................................................................ 3, 8
`
`Bd. of Supervisors for L.S.U. v. Smack,
`550 F.3d 465 (5th Cir. 2008) ...................................................................................................... 7
`
`Bell Atlantic Corp. v. Twombly,
`550 U.S. 544 (2007) ................................................................................................................ 3, 8
`
`City of Chicago v. Int’l Coll. of Surgeons,
`522 U.S. 156 (1997) .................................................................................................................... 4
`
`In re Forney Indus., Inc.,
`955 F.3d 940 (Fed. Cir. 2020) .................................................................................................... 6
`
`Isom v. U.S. Dep’t of Homeland Sec.,
`No. 4:20-cv-948, 2021 WL 2232052 (E.D. Tex. Apr. 28, 2021), R. & R. adopted, 2021 WL
`2224345 (E.D. Tex. June 2, 2021) ............................................................................................ 10
`
`KLN Steel Products Co., Ltd. v. CNA Ins. Companies,
`278 S.W.3d 429 (Tex. App.—San Antonio 2008, pet. denied) .................................................. 6
`
`Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc.,
`783 F.3d 527 (5th Cir. 2015) ...................................................................................................... 8
`
`Qualitex Co. v. Jacobson Prod. Co.,
`514 U.S. 159 (1995) .................................................................................................................... 5
`
`Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc.,
`851 F.3d 440 (5th Cir. 2017) ...................................................................................................... 8
`
`TrafFix Devices, Inc. v. Mktg. Displays, Inc.,
`532 U.S. 23 (2001) ...................................................................................................................... 4
`
`Two Pesos, Inc. v. Taco Cabana, Inc.,
`505 U.S. 763 (1992) ................................................................................................................ 4, 6
`
`
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`ii
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`Case 2:23-cv-00229-JRG Document 61 Filed 04/30/24 Page 4 of 17 PageID #: 3499
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`TABLE OF AUTHORITIES
`(Continued)
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`Page(s)
`
`United Mine Workers of America v. Gibbs,
`383 U.S. 715 (1966) .................................................................................................................... 4
`
`Viacom Int’l v. IJR Cap. Invs., L.L.C.,
`891 F.3d 178 (5th Cir. 2018) ...................................................................................................... 7
`
`Wal-Mart v. Samara Bros.,
`529 U.S. 205 (2000) ........................................................................................................ 1, 5, 6, 7
`
`Worth Beauty LLC v. Allstar Prod. Grp., LLC,
`No. 4:17-CV-1682, 2017 WL 5300007 (S.D. Tex. Nov. 13, 2017) ........................................... 6
`
`Young v. U.S. Postal Serv. ex rel. Donahoe,
`620 F. App’x 241 (5th Cir. 2015) ............................................................................................. 11
`
`Other Authorities
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`Willow 360™ Wearable Breast Pump, https://shop.onewillow.com/products/willow-pump-360 2
`
`Rules
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`Fed. R. Civ. P. 8(a)(2) ..................................................................................................................... 3
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`iii
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`Case 2:23-cv-00229-JRG Document 61 Filed 04/30/24 Page 5 of 17 PageID #: 3500
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`
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`I.
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`INTRODUCTION
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`Defendant’s attempt to inject into this patent case an inadequately pleaded trade dress
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`counterclaim—which depends entirely on two generic colors—should be rejected. The
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`counterclaim is without legal basis and deficient on its face for failing to plead or establish (1)
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`inherent or acquired distinctiveness, (2) a likelihood of confusion, or (3) supplemental jurisdiction.
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`Plaintiff Willow requests the Court to dismiss with prejudice the trade dress counterclaim.
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`Through its state law counterclaim for trade dress infringement, Defendant Chiaro
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`Technology, Ltd. (d/b/a “Elvie”) attempts to shift this case away from patent infringement by
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`claiming a monopoly on a combination of two generic colors (white and turquoise). Although
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`unregistered with the United States Patent and Trademark Office (PTO), Elvie asserts that these
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`colors have “inherent distinctiveness as a brand identifier.” Dkt. 60 ¶ 59. The Supreme Court,
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`however, has held that the color of a product “can [n]ever be inherently distinctive.” Wal-Mart v.
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`Samara Bros., 529 U.S. 205, 211 (2000). Thus, to even be eligible for trade dress protection, Elvie
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`must plead secondary meaning. But Elvie does not—and cannot—allege that an ordinary
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`combination of two generic colors on its product has any secondary meaning in the minds of
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`consumers.
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`Elvie’s threadbare trade dress infringement allegations fare no better, as Elvie fails to allege
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`any support for the existence of likely or actual confusion. The conclusory infringement
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`allegation, therefore, is facially deficient and legally unsustainable.
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`Elvie’s trade dress counterclaim also should be dismissed for a third independent reason:
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`lack of subject matter jurisdiction. Elvie attempts to invoke supplemental jurisdiction for its Texas
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`state common law claim, but this state law claim involves wholly distinct facts, evidence, and
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`issues from the patent claims in this case. Indeed, Elvie’s trade dress allegations are based almost
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`entirely on Elvie products that it has acknowledged are not at issue in the patent case.
`1
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`
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`II.
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`FACTUAL BACKGROUND
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`A.
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`Patent Claims and Counterclaims
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`Willow sued Elvie on May 24, 2023, alleging infringement of patents covering the
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`functionality and design of Willow’s revolutionary inventions related to wearable breast pumps.
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`Compl., Dkt. 1. Willow practices its patents through the commercialization of Willow’s Premium
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`Pump—the world’s first spillproof, in-bra wearable breast pump.1 Id. ¶ 3. Willow alleges that
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`Elvie infringes its patents by making, using, and selling the Elvie Pump and related accessories.
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`Id. ¶ 55, 66. On August 14, 2023, Elvie asserted counterclaims for infringement of three patents,
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`accusing the Willow Go pump of infringement. Counterclaims, Dkt. 15. Elvie later amended its
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`counterclaims to assert a fourth patent against the Willow Go. Amended Counterclaims, Dkt. 23.
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`Thus, there are only two accused products in this case, and both are breast pumps: the Elvie Pump
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`and the Willow Go. See Dkts. 1, 23.
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`The accused Elvie Pump is distinct from Elvie’s other products. Elvie acknowledges as
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`much, as it has repeatedly sought to cabin discovery to only the accused Elvie Pump while
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`foreclosing discovery as to its other products. For example, Elvie objected to Willow’s proposed
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`email search terms on the basis that certain terms were likely to hit on unaccused breast pumps,
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`such as the Elvie Stride and Elvie Curve, contending those products “are not at issue in this case.”
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`Ex. A, Email from Elvie’s Counsel to Willow’s Counsel Dated April 12, 2024. On the basis of
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`Elvie’s objections, Willow agreed to exclude the Elvie Stride and Elvie Curve from the scope of
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`its email search terms. Ex. B, Email from Willow’s Counsel to Elvie’s Counsel Dated April 8,
`
`2024.
`
`
`1 Willow has introduced three generations of the Willow Premium Pump: the Willow Pump 1.0,
`Willow Pump 2.0, and Willow Pump 3.0. The Willow Pump 3.0 was recently rebranded as the
`Willow 360 Pump. https://shop.onewillow.com/products/willow-pump-360.
`2
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`B.
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`Elvie’s State Law Counterclaim
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`On April 15, however, Elvie attempted to expand the scope of the case by introducing
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`unrelated allegations of trade dress infringement under Texas common law. In its amended
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`counterclaims, Elvie alleges that it “has used a turquoise color called ‘celeste’ in its color scheme
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`consisting of the colors celeste and white.”2 Second Amended Counterclaims (“SACC”), Dkt. 60
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`¶ 49. Elvie alleges that the color scheme is implemented in the Elvie Trainer, Pump, Stride, Stride
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`Plus, Curve, and Catch products. Id. ¶ 57. Of these products, the Elvie Trainer and Catch are not
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`even breast pumps, and the Elvie Curve is a manual breast pump without a motor—all products
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`well outside the scope of any triable issue in this case. Id. ¶¶ 52-53, 57. Elvie further alleges
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`infringement of the color scheme by the Willow Pump 3.0, which is not an accused product. Id. ¶
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`68.
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`III. LEGAL STANDARD
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`A pleading must contain “a short and plain statement of the claim showing that the pleader
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`is entitled to relief.” Fed. R. Civ. P. 8(a)(2). A pleading that offers no more than “labels and
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`conclusions” or “a formulaic recitation of the elements of a cause of action will not do.” Bell
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`Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007). To survive a motion to dismiss, a complaint
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`must contain sufficient factual matter to state a claim for relief that is plausible on its face. Id. at
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`570. While a court must accept all well-pleaded factual allegations as true, it need not “accept as
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`true a legal conclusion couched as a factual allegation.” Id. at 556. Where the facts do not permit
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`the court to infer more than the mere possibility of misconduct, the complaint has stopped short of
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`showing that the pleader is plausibly entitled to relief. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
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`2 The alleged trade dress is referred to herein as the “color scheme.”
`3
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`
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`To state a claim for trade dress infringement, a plaintiff must plausibly allege “ownership
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`in a legally protectable [trade dress]” and that “there is a likelihood of confusion” between the
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`alleged trade dress and the allegedly infringing trade dress. Amazing Spaces, Inc. v. Metro Mini
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`Storage, 608 F.3d 225, 251 (5th Cir. 2010). “[T]rade dress protection may not be claimed for
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`product features that are functional.” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23,
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`29 (2001).
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`Supplemental jurisdiction over state law claims “is a doctrine of discretion, not of
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`plaintiff’s right.” United Mine Workers of America v. Gibbs, 383 U.S. 715, 726 (1966). It is
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`appropriately exercised only when federal and state law claims “derive from a common nucleus of
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`operative fact,” or are of such nature that the plaintiff “would ordinarily be expected to try them
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`all in one judicial proceeding.” Id. at 725. Federal courts “should consider and weigh … the
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`values of judicial economy, convenience, fairness and comity when deciding whether to exercise
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`supplemental jurisdiction.” City of Chicago v. Int’l Coll. of Surgeons, 522 U.S. 156, 173 (1997).
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`IV. ARGUMENT
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`A.
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`Elvie Failed To Plead a Claim For Trade Dress Infringement
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`There is no plausible claim for trade dress infringement here because Elvie failed to plead
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`either element of a trade dress claim—a legally protected trade dress or a likelihood of confusion.
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`See Amazing Spaces, 608 F.3d at 251.
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`1.
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`Color Cannot Be Inherently Distinctive
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`Elvie’s trade dress counterclaim depends entirely on its notion that color is protectable.
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`The Supreme Court has held repeatedly that the color of a product cannot be inherently distinctive
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`and can only be protected as a trademark upon a showing of secondary meaning.3 In Qualitex Co.
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`3 Secondary meaning is also referred to as “acquired distinctiveness.” Two Pesos, Inc. v. Taco
`Cabana, Inc., 505 U.S. 763, 769 (1992).
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`4
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`
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`v. Jacobson Prod. Co., Qualitex manufactured and sold green-gold dry-cleaning press pads. 514
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`U.S. 159, 164 (1995). After Jacobson began selling pads of a similar color, Qualitex sued Jacobson
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`under §§ 32 and 43(a) of the Lanham Act, claiming trade dress protection to the color of the dry-
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`cleaning press pads. Id. at 161. Drawing from the test established for word marks in Abercrombie
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`& Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-10 (2d Cir. 1976), the Supreme Court noted that
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`a product’s color is unlike a “fanciful,” “arbitrary,” or “suggestive” mark, since it does not “almost
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`automatically tell a customer that [it] refer[s] to a brand,” and does not “immediately … signal a
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`brand or a product ‘source.’” Qualitex, 514 U.S. at 161. Thus, the court held that color of a
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`product is protectable trade dress only if it “come[s] to identify and distinguish the goods” and
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`“indicate a product’s origin”—i.e., the color develops a secondary meaning. Id. at 163.
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`In Wal-Mart, the Supreme Court reiterated the holding of Qualitex that a product’s color
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`“can [n]ever be inherently distinctive.” 529 U.S. 205, 211 (2000). The court explained: “[t]he
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`attribution of inherent distinctiveness to certain categories of word marks and product packaging
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`derives from the fact that the very purpose of attaching a particular word to a product, or encasing
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`it in a distinctive packaging, is most often to identify the source of the product.” Id. at 212. In the
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`case of a product’s color and design, however, “consumer predisposition to equate the feature with
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`the source does not exist.” Id. at 213.
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`Here, Elvie relies exclusively on inherent distinctiveness—with conclusory allegations
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`having no basis in fact—to allege that its color scheme is protectable as trade dress. See SACC ¶
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`59 (“[t]hrough [its] continuous use for nearly a decade, the Color Scheme has inherent
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`distinctiveness as a brand identifier for Elvie and signifies the high-quality, innovative goods and
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`5
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`
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`services consumers expect from them”).4 Regardless, Elvie’s conclusory allegation is
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`categorically precluded by the Supreme Court’s decisions in Qualitex and Wal-Mart.
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`Elvie cannot rely on In re Forney Indus., Inc., 955 F.3d 940, 943 (Fed. Cir. 2020) to show
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`inherent distinctiveness. In that case, the court, finding that Wal-Mart and Qualitex did not extend
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`to “product packaging mark[s] based on color,” held that a “distinct color-based product packaging
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`mark can indicate the source of the goods to a consumer, and, therefore, can be inherently
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`distinctive.” Id. at 945. But In re Forney also confirmed that color, in the context of the product
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`itself, cannot be inherently distinctive. Id. at 945-46. Here, Elvie’s claims alleged trade dress in
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`the color scheme of the product itself—not in any product packaging which implements the color
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`scheme. SACC ¶¶ 49, 61. And the only time Elvie depicts the color scheme on its packaging is
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`in the context of the Elvie Trainer, which is not a breast pump and not at issue in this case. Id. ¶
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`52, 57. Accordingly, the Elvie Trainer packaging cannot establish distinctiveness for a wholly
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`different product—the Elvie Pump.
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`2.
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`Elvie Failed To Plead Secondary Meaning
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`While Elvie cannot establish that its color scheme is inherently distinctive, it also cannot
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`establish that the color scheme has acquired secondary meaning. Trade dress is protectable “if it
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`either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning.”
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`Two Pesos, 505 U.S. at 769. Secondary meaning is established only when, “in the minds of the
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`public, the primary significance of a mark is to identify the source of the product rather than the
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`product itself.” Wal-Mart, 529 U.S. at 211 (internal quotation marks omitted). The “burden of
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`4 Although Elvie brought its trade dress claim under Texas common law, rather than the Lanham
`Act, “[t]he standard for trade dress infringement under Texas common law is the same as the
`standard under the Lanham Act.” Worth Beauty LLC v. Allstar Prod. Grp., LLC, No. 4:17-CV-
`1682, 2017 WL 5300007, at *2 (S.D. Tex. Nov. 13, 2017); see KLN Steel Products Co., Ltd. v.
`CNA Ins. Companies, 278 S.W.3d 429, 440-41 (Tex. App.—San Antonio 2008, pet. denied)
`(looking to the Lanham Act for the meaning of trade dress infringement under Texas law).
`6
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`
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`demonstrating secondary meaning is substantial and requires a high degree of proof.” Viacom Int’l
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`v. IJR Cap. Invs., L.L.C., 891 F.3d 178, 190 (5th Cir. 2018) (internal quotation marks omitted). In
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`the context of trade dress, the Fifth Circuit has articulated seven factors to consider in determining
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`whether secondary meaning has been shown:
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`(1) length and manner of use of the mark or trade dress, (2) volume of sales, (3) amount
`and manner of advertising, (4) nature of use of the mark or trade dress in newspapers and
`magazines, (5) consumer survey evidence, (6) direct consumer testimony, and (7) the
`defendant’s intent in copying the trade dress.
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`Bd. of Supervisors for L.S.U. v. Smack, 550 F.3d 465, 476 (5th Cir. 2008).
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`Elvie’s allegations fail to even acknowledge—much less confront—most of the secondary
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`meaning factors. The counterclaim does not mention “secondary” or “meaning.” See SACC ¶¶
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`49-70, 195-99. The counterclaim fails to address the primary purpose of requiring a secondary
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`meaning—i.e., to show that “the primary significance of a mark is to identify the source of the
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`product rather than the product itself.” Wal-Mart, 529 U.S. at 211. Nowhere does Elvie allege
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`that the color scheme has become uniquely associated with Elvie or its breast pumps as its single
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`source. See SACC ¶¶ 49-70, 195-99; see Amazing Spaces, 608 F.3d at 247 (finding secondary
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`meaning exists only where trade dress “has come through use to be uniquely associated with a
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`specific source”).
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`Elvie’s counterclaim similarly lacks any factual allegations concerning (1) Elvie’s volume
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`of sales, or (2) the amount and manner of advertising of the Elvie products using the color scheme,
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`including any allegations regarding Elvie’s specific monetary expenditures on sales, advertising,
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`or marketing. See SACC ¶¶ 49-70, 195-99. While Elvie vaguely alleges that “[t]he Color Scheme
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`is also used for promotional, marketing, and advertising materials for the Elvie Products,” id. ¶ 58,
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`Elvie fails to explain the “effectiveness of such materials in altering the meaning of [the Color
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`Scheme] to the consuming public.” Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc., 783
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`7
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`
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`F.3d 527, 545 (5th Cir. 2015) (emphasis in original). Nor does Elvie plead any empirical
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`evidence—whether from consumer surveys or testimony—that the color scheme has acquired any
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`secondary meaning in the public’s mind. See Amazing Spaces, 608 F.3d at 248 (“Because the
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`primary element of secondary meaning is a mental association in buyer[s’] minds between the
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`alleged mark and a single source of the product, the determination whether a mark or dress has
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`acquired secondary meaning is primarily an empirical inquiry”) (quotation omitted). Elvie’s
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`threadbare allegations are thus wholly insufficient to support an inference that its generic colors
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`have achieved any secondary meaning. Elvie’s counterclaim should be dismissed.
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`3.
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`Elvie Failed To Plead Likelihood of Confusion
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`The Fifth Circuit has identified non-exhaustive “digits of confusion” to guide courts in
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`determining whether use of a mark has created a likelihood of confusion, including:
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`(1) strength of the mark; (2) mark similarity; (3) product or service similarity; (4) outlet
`and purchaser identity; (5) advertising media identity; (6) defendant’s intent; (7) actual
`confusion; and (8) care exercised by potential purchasers.
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`Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc., 851 F.3d 440, 453 (5th Cir. 2017).
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`As with secondary meaning, Elvie’s allegations do not address (or even mention) the
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`likelihood of confusion factors. Elvie’s conclusory allegations on confusion are merely that
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`“Willow uses a color scheme for the Willow Breast Pump 3.0 that is confusingly similar to Elvie’s
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`Trade Dress” and that “Willow’s use of the Infringing Trade Dress in connection with its breast
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`pump products is confusingly similar to Elvie’s Trade Dress.” See SACC ¶¶ 67, 69. But these
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`allegations are at best “naked assertion[s] devoid of further factual enhancement,” Iqbal, 556 U.S.
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`at 678, and therefore do not allow the Court to draw any inference that a likelihood of confusion
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`exists. See Twombly, 550 U.S. at 555 (courts “are not bound to accept as true a legal conclusion
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`couched as a factual allegation”).
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`8
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`Elvie fails to allege any facts regarding the underlying strength of the color scheme, outlet
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`and purchaser identity, advertising media identity, or the sophistication of and care exercised by
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`potential purchasers. See SACC ¶¶ 49-70, 195-99. Tellingly, Elvie fails to allege any actual
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`instances of confusion caused by the color scheme or provide any examples of such confusion.
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`See id. Elvie’s counterclaim also fails to contain any side-by-side comparison of the Elvie and
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`Willow products or explain how the Willow products are similar to unaccused Elvie products such
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`as the Elvie Trainer or Catch, which are not even breast pumps. See id. Having failed to allege
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`facts sufficient to support a plausible inference of infringement, Elvie’s counterclaim should be
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`dismissed.
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`B.
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`The Court Does Not Have Supplemental Jurisdiction Under Section 1367
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`Elvie has not stated a federal trade dress claim under the Lanham Act and instead attempts
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`to shoehorn a claim under Texas common law. But Elvie’s trade dress claim implicates wholly
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`different facts, evidence, and issues than the patent claims in this case. Elvie rests its entire theory
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`for supplemental jurisdiction on a single conclusory statement. SACC at 57 ¶ 7 (“[T]he common
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`law claim of trade dress infringement is so related to the Federal claims that they form part of the
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`same controversy and are derived from a common nucleus of operative facts.”). But this is merely
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`a bare recitation of 28 U.S.C. § 1367, without any factual underpinnings. Moreover, Elvie’s
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`conclusory statement folds under scrutiny.
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`First, Elvie’s state law trade dress counterclaim does not arise from the same facts as the
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`patent claims, as none of the asserted patents claim color as a patented feature. Color simply is
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`not relevant to any claim or defense with respect to the patent claims. Further, Elvie alleges that
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`its color scheme is included in six of its products—five of which are not implicated by the patent
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`claims. See SACC ¶ 57 (“The Elvie Trainer, Pump, Stride, Stride Plus, Curve, and Catch … all
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`incorporate the Color Scheme in either the body of the products, the packaging, or both.”). Elvie
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`effectively has admitted the factual separateness of the Elvie Pump from Elvie’s other products;
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`in discovery Elvie has distinguished the other products from the pump and has unilaterally
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`excluded them from discovery. See Exs. A, B. Further, the trade dress counterclaim is factually
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`distinct because it involves a distinct time period, as Elvie alleges that it began using the color
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`scheme in 2014 through the Elvie Trainer, well before it first sold the Elvie Pump in late 2018.
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`SACC ¶ 52-54.
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`Second, the trade dress counterclaim raises distinct legal issues and evidence from the
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`patent claims. Both parties’ patent claims raise the standard issues of infringement, invalidity, and
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`patent damages. Infringement and invalidity will turn on a technical assessment of the patent
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`claims compared to the accused products or the prior art. Separate and apart from this, Elvie must
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`prove eligibility (secondary meaning), infringement (likelihood of confusion), and trade dress
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`damages to prevail on its trade dress counterclaim. Eligibility and infringement will turn on a non-
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`technical, empirical assessment of the relevant Elvie and Willow products. Thus, based on the
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`significant difference in legal issues, accused products, and type of consumer-based evidence
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`needed, it would be inefficient, unfair, and confusing to a jury to try the trade dress counterclaim
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`together with the parties’ competing patent claims. See Alford v. State Parking Servs., Inc., No.
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`3:13-CV-4546-L, 2014 WL 6977639, at *5 (N.D. Tex. Dec. 10, 2014) (finding counterclaims “not
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`so linked that they would be expected to be tried in one proceeding,” where they “involve[d]
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`different areas of law, separate factual allegations, and distinct points of time”).
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`C.
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`It Would be Futile to Allow Elvie to Re-Plead Supplemental Jurisdiction
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`Elvie should not be permitted to amend its counterclaim to cure the fatal jurisdictional
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`defect. Courts may deny leave to amend where such an amendment would be futile. See, e.g., Isom
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`v. U.S. Dep’t of Homeland Sec., No. 4:20-cv-948, 2021 WL 2232052, at *3 (E.D. Tex. Apr. 28,
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`2021), R. & R. adopted, 2021 WL 2224345 (E.D. Tex. June 2, 2021) (collecting cases). “Denial
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`of leave to amend is appropriate where there is no indication that amendment would cure the
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`defects in a complaint.” Young v. U.S. Postal Serv. ex rel. Donahoe, 620 F. App’x 241, 245 (5th
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`Cir. 2015).
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`As explained above, Elvie fails to allege any facts sufficient to support supplemental
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`jurisdiction, and the divergence in facts relevant to the trade dress claim and the patent claims,
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`which are not in dispute, destroys any case for supplemental jurisdiction. Thus, it would be futile
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`to allow Elvie to amend its trade dress counterclaim.
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`V.
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`CONCLUSION
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`For all the foregoing reasons, Willow requests that the Court grant its motion and dismiss
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`with prejudice Elvie’s counterclaim for trade dress infringement (Count 21).
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`Case 2:23-cv-00229-JRG Document 61 Filed 04/30/24 Page 16 of 17 PageID #: 3511
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`/s/ Timothy S. Durst
`O’MELVENY & MYERS LLP
`Timothy S. Durst (TX #00786924)
`tdurst@omm.com
`Cason Garrett Cole (TX #24109741)
`ccole@omm.com
`2501 North Harwood Street, Suite 1700
`Dallas, TX 75201
`Telephone: (972) 360-1900
`Facsimile: (972) 360-1901
`
`Robert F. Shaffer (admitted pro hac vice)
`rshaffer@omm.com
`Jason Fountain (admitted pro hac vice)
`jfountain@omm.com
`Miao Liu (admitted pro hac vice)
`mliu@omm.com
`1625 Eye St., NW
`Washington, DC 20006
`Telephone: (202) 383-5300
`Facsimile: (202) 383-5414
`
`Carolyn S. Wall (admitted pro hac vice)
`cwall@omm.com
`Times Square Tower
`7 Times Square
`New York, New York 10036
`Telephone: (212) 326-2000
`Facsimile: (212) 326-2061
`
`Laura Burson (TX # 24091995)
`lburson@omm.com
`400 South Hope St
`Los Angeles, CA 90071
`Telephone: (213) 430-6000
`Facsimile: (213) 430-6407
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`Attorneys for Plaintiff Willow Innovations,
`Inc.
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`Dated: April 30, 2024
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`Case 2:23-cv-00229-JRG Document 61 Filed 04/30/24 Page 17 of 17 PageID #: 3512
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that counsel of record who are deemed to have consented
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`to electronic services are being served with a copy of this document via the Court’s CM/ECF
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`system per Local Rule CV-5(a)(3) on April 30, 2024.
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`/s/ Timothy S. Durst
`Timothy S. Durst
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