Spanx v. Yummie Tummie - Motion re 2d Am Compl

8/22/2019 Spanx v. Yummie Tummie - Motion re 2d Am Compl

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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF GEORGIA

ATLANTA DIVISION

SPANX, INC., )

)

Plaintiff, ) Civil Action

)

v. ) No. 1:13-cv-00710-WSD

)

TIMES THREE CLOTHIER, LLC )

d/b/a Yummie Tummie, )

)

Defendant. )

CONSENT ORDER REGARDING

SECOND AMENDED COMPLAINT

By stipulation and agreement of the parties, and with the express consent of

plaintiff and counterclaim defendant Spanx, Inc. (Spanx) and defendant and

counterclaim plaintiff Times Three Clothier, LLC (Times Three), as indicated by

the signatures of their respective counsel below, and in accordance with Fed. R.

Civ. P. 15 (a) (2) permitting amendments to pleadings with the written consent of

the parties; and

It appearing that Spanx filed its Complaint for Declaratory Relief in this

matter on March 5, 2013 [Dkt-1] seeking declaratory relief that Spanx did not

infringe seven patents asserted against Spanx in a January 18, 2013 letter from

Times Three (namely, U.S. Design Patent Nos. D606,285S (the 285 Patent),

Case 1:13-cv-00710-WSD Document 30 Filed 07/31/13 Page 1 of 4


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D616,627S (the 627 Patent), D632,051S (the 051 Patent), D632,052S (the

052 Patent), D632,053S (the 053 Patent), D622,477S (the 477 Patent ), and

D623,377S (the 377 Patent)) and sought, obtained and filed on April 5, 2013

Times Threes Waiver of Service thereof [Dkt-5]; and

It further appearing that Times Three filed and served Defendant Times

Three Clothier, LLCs Answer, Affirmative Defenses and Counterclaims on May

13, 2013[Dkt-17] counterclaiming infringement of certain of the patents asserted in

the January 18, 2013 Letter (namely the 285, 627, 477, and 377 Patents) and

two additional patents (namely, U.S. Design Patent Nos. D665,558S (the 558

Patent) and D666,384S (the 384 Patent)) against Spanx and admitting that

certain of Spanxs products did not infringe any valid claim of three of the seven

patents originally asserted in its January 18, 2013 letter (namely, the 051, 052

and 053 Patents); and

It further appearing that, on June 6, 2013, Spanx filed and served its First

Amended Complaint for Declaratory Relief [Dkt-20], adding declaratory

judgment claims of non-infringement for the newly asserted 558 and 384 Patents

and adding declaratory judgment claims of invalidity for all nine patents including

the 051, 052 and 053 Patents; and

It further appearing that counsel for the parties have conferred regarding the

how to address the 051, 052 and 053 Patents no longer being asserted by Times



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Three against Spanx and how to simplify the pleadings in this matter and in light of

Times Threes decision not to pursue infringement claims against Spanx with

respect to those Patents, and have agreed, as set forth in this Consent Order, that

Spanx may amend its Complaint in this action to remove, without prejudice,

Spanxs non-infringement and invalidity claims as to the 051, 052 and 053

Patents, such that the action may continue as to the Patents that remain in dispute;

and

NOW, THEREFORE, IT IS HEREBY ORDERED as follows:

(1) Spanx is hereby granted leave to file and serve a Second Amended

Complaint for Declaratory Relief herein, as per the marked pleading attached as

Exhibit A;

(2) The removal of Spanxs claims as to the 051, 052 and 053 Patents

is without prejudice, is not an adjudication on the merits, and does not constitute

either claim or issue preclusion;

(3) Times Three shall not file or serve any response to Spanxs First

Amended Complaint for Declaratory Relief; and



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(4) Times Three shall file and serve a response to Spanxs Second

Amended Complaint for Declaratory Relief in accordance with the Federal Rules

of Civil Procedure.

SO ORDERED, this ______ day of __________, 2013.

WILLIAM S. DUFFEY, JR.UNITED STATES DISTRICT JUDGE

CONSENTED TO:

Counsel for Plaintiff and Counsel for Defendant and

Counterclaim Defendant Counterclaim Plaintiff

SPANX, INC.: TIMES THREE CLOTHIER, LLC:

/s/ Natasha H. Moffitt __ /s/ Theodore H. Davis Jr.

Natasha H. Moffitt Theodore H. Davis Jr.

(Georgia Bar No. 367468) (Georgia Bar No. 212913)

Laura S. Huffman Kilpatrick Townsend & Stockton LLP

King & Spalding LLP 1100 Peachtree Street

1180 Peachtree Street, N.E. Suite 2800

Atlanta, GA 30309-3521 Atlanta, GA 30309

Kathleen E. McCarthy Steven B. Pokotilow

King & Spalding LLP Laura Goldbard George

1185 Avenue of the Americas Irah H. Donner

New York, NY 10036 Binni N. Shah

New York, NY 10036 Stroock Stroock & Lavan

180 Maiden Lane

New York, NY 10038-4982



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Exhibit A

Case 1:13-cv-00710-WSD Document 30-1 Filed 07/31/13 Page 1 of 68


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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF GEORGIA

ATLANTA DIVISION

SPANX, INC., )

)

Plaintiff, ) Civil Action

)

v. ) No. 1:13-cv-00710-WSD

)

TIMES THREE CLOTHIER, LLC )

d/b/a Yummie Tummie, ))

Defendant. )

SECOND AMENDED COMPLAINT

FOR DECLARATORY RELIEF

Plaintiff Spanx, Inc. (Spanx) alleges as follows for its second amended

complaint against Times Three Clothier d/b/a Yummie Tummie (Yummie

Tummie):

PARTIES

1. Plaintiff Spanx is a Georgia corporation with its principal place ofbusiness at 3344 Peachtree Road, NE, Suite 1700, Atlanta, Georgia 30326. Spanx

is an apparel company that designs and manufactures, among other things,

undergarments, slimming apparel and shapewear, hosiery, swimsuits, and

activewear.



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2. On information and belief, Defendant Yummie Tummie is a NewYork Limited Liability Company with its principal place of business at 561

Seventh Avenue, 12th Floor, New York, New York 10018. On information and

belief, Yummie Tummie manufactures and sells bodyshaping undergarments and

apparel.

JURISDICTION AND VENUE

3. This action arises under the patent laws of the United States, Title 35of the United States Code, 1 et seq., with a specific remedy sought under the

Federal Declaratory Judgment Act, 28 U.S.C. 2201 and 2202. An actual,

substantial, and continuing justiciable controversy exists between Spanx and

Yummie Tummie that requires a declaration of rights by this Court.

4. This Court has subject matter jurisdiction over this action pursuant to28 U.S.C. 1331 and 1338(a).

5. This Court has personal jurisdiction over Yummie Tummie by virtueof Yummie Tummies purposeful contact with this district, including, on

information and belief, Yummie Tummies substantial business conducted with

customers residing in this district; and Yummie Tummies attempts to enforce

design patents purportedly assigned to it against Spanx, an entity having a principal

place of business in Georgia, for alleged infringing activity occurring in Georgia.



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6. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391.FACTUAL BACKGROUND

7. Defendant Yummie Tummie claims to be the owner by assignment ofU.S. Design Patent Nos.D606,285S (the 285 Patent, copy attached hereto as

Exhibit A), D616,627S (the 627 Patent, copy attached hereto as Exhibit B),

D622,477S (the 477 Patent, copy attached hereto as Exhibit C), and D623,377S

(the 377 Patent, copy attached hereto as Exhibit D), D665,558S (the 558

Patent, copy attached hereto as Exhibit E) and D666,384S (the 384 Patent,

copy attached hereto as Exhibit F) (collectively, the Patents-in-Suit).

8. The Patents-in-Suit are related to one another in that the 627 Patent,the 477 Patent, the 377 Patent, the 558 Patent, and the 384 Patent all claim

priority to the 285 Patent.

9. Each of the Patents-in-Suit identifies Heather Thompson Schindler asthe sole inventor.

10. On or about January 18, 2013, Yummie Tummie (through counsel)contacted Spanx by letter, informing Spanx that Yummie Tummie is the owner of

some of the Patents-in-Suit, enclosing a copy of the said patents, and stating that

Spanx is making, offering for sale and selling shapewear products in the

United States that contain Yummies patented designs and that the Spanx



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products appear substantially the same as the patented designs from the point of

view of an ordinary observer, thereby, constituting design patent infringement. In

its January 18 letter, Yummie Tummie identified the allegedly infringing Spanx

products as including The Total Taming Tank A226764, also known as The

Spanx Total Taming Tank, the Top This Tank Style 1847 and The Top This Cami

Style 1846 (collectively, the Accused Products). Yummie Tummie further

noted in its letter that it vigorously enforces the rights in its patents, referenced

patent infringement litigation it recently settled with Maidenform, and demanded,

among other things, that Spanx cease manufacturing, offering for sale, and selling

the Accused Products.

11. On or about February 14, 2013, Spanx (through counsel) responded toYummie Tummies January 18, 2013 letter, describing in detail significant

differences between the Accused Products and Yummie Tummies patents that and

stating, among other things, that it does not believe the Accused Products infringe

Yummie Tummies patents.

12. Since Yummie Tummie contacted Spanx in January 2013, counsel forSpanx and Yummie Tummie have communicated on several occasions by

telephone and in writing concerning Yummie Tummies claims. During these

telephone conferences, Yummie Tummie continued to maintain that the Accused



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Products infringe its patents and expressed its willingness to enforce its patents

against Spanx.

13. On April 2, 2013, a month after Spanx initially brought this action fordeclaratory relief, Yummie Tummie filed suit against Spanx in the Southern

District of New York, asserting that the Accused Products infringe the Patents-in-

Suit. Spanx has denied infringement in the New York action and has also asserted

that the parties dispute should not proceed in New York but in this, the first-filed

court, the Northern District of Georgia.

14. As a result of Yummie Tummies previous and continued assertionsthat Spanx is infringing the Patents-in-Suit, and Spanxs denial of the same, an

actual and justiciable controversy exists between the parties of sufficient

immediacy and reality to warrant issuance of a declaratory judgment under 28

U.S.C. 2201 and 2202 as to the alleged infringement and invalidity of the

designs claimed in the Patents-in-Suit.

FIRST CLAIM FOR RELIEF

(DECLARATORY JUDGMENT OF NON-INFRINGEMENT

OF THE PATENTS-IN-SUIT)

15. Spanx restates and incorporates by reference the allegations inparagraphs 1 through 14 above.



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16. An actual controversy has arisen and now exists between the partieswith respect to the alleged infringement of the Patents-in-Suit. Spanx contends

that Spanxs products, including The Total Taming Tank A226764, also known as

The Spanx Total Taming Tank, the Top This Tank Style 1847, and The Top This

Cami Style 1846 have not infringed and do not infringe any valid claim of the

Patents-in-Suit. Upon information and belief, Yummie Tummie currently disputes

these contentions.

17. Pursuant to 28 U.S.C. 2201 and 2202, a judicial determination ofthe respective rights of the parties with respect to the alleged infringement of the

Patents-in-Suit is necessary and appropriate under the circumstances.

SECOND CLAIM FOR RELIEF

(DECLARATORY JUDGMENT OF INVALIDITY

OF THE PATENTS-IN-SUIT)

18. Spanx restates and incorporates by reference the allegations inparagraphs 1 through 17 above.

19. Spanx contends that the Patents-in-Suit are invalid for failure to meetone or more of the conditions of patentability specified in 35 U.S.C. 102, 103,

112, and/or 171. Upon information and belief, Yummie Tummie disputes these

contentions.



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20. Pursuant to 28 U.S.C. 2201 and 2202, a judicial determination ofthe respective rights of the parties with respect to the alleged invalidity of the

Patents-in-Suit is necessary and appropriate under the circumstances.

PRAYER FOR RELIEF

WHEREFORE, Spanx prays for relief as follows:

A. For a judicial declaration that Spanx does not infringe any valid claimof U.S. Design Patent Nos.D606,285S, D616,627S, D622,477S, D623,377S,

D665,558S, and D666,384S; and

B. For a judicial declaration that U.S. Design Patent Nos.D606,285S,D616,627S, D622,477S, D623,377S, D665,558S, and D666,384S are invalid; and

C. For an order awarding Spanx its costs, expenses, and reasonableattorneys fees as provided by law; and

D. For such other and further relief as the Court deems just and proper.JURY DEMAND

Spanx demands a trial by jury on all issues so triable as a matter of right and

law.

Respectfully submitted, this __th day of ____, 2013.

KING&SPALDINGLLP

Natasha H. Moffitt



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(Georgia Bar No. 367468)

Laura S. Huffman

(Georgia Bar No. 595909)1180 Peachtree Street, N.E.

Atlanta, Georgia 30309-3521

Telephone: (404) 572-4600

Facsimile: (404) 572-5134

E-mail: [email protected]


Kathleen E. McCarthy

(admittedpro hac vice)

1185 Avenue of the AmericasNew York, New York 10036

Telephone: (212) 556-2345


Attorneys for Plaintiff

SPANX, INC.



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CERTIFICATE OF SERVICE

I hereby certify that on this day, I electronically filed the foregoing

SECOND AMENDED COMPLAINT FOR DECLARATORY RELIEF with the

Clerk of Court using the CM/ECF system, which will send notification of such

filing to Defendants counsel of record:

Theodore H. Davis Jr.

Kilpatrick Townsend & Stockton LLP

1100 Peachtree StreetSuite 2800

Atlanta, GA 30309

Steven B. Pokotilow

Laura Goldbard George

Binni N. Shah

Stroock Stroock & Lavan

180 Maiden Lane

New York, NY 10038-4982

This __th day of _______, 2013.

Natasha H. Moffitt



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Exhibit A



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Exhibit B



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Exhibit C



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Exhibit D



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Exhibit E



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Exhibit F



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Spanx v. Yummie Tummie - Motion re 2d Am Compl

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Transcript of Spanx v. Yummie Tummie - Motion re 2d Am Compl