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Defendants.
Plaintiff, Caffeinate Labs, Inc. (Caffeinate), by and through its undersigned counsel,
hereby moves this Court to dismiss, with prejudice, its Count Two for design patent
infringement of U.S. Patent No. D 707,091 as pled in its Complaint (Dkt. No. 1) and its First
Amended Complaint (Dkt. No. 15). Plaintiff files the following documents concurrently
3. [Proposed] Order Dismissing Count Two for Design Patent Infringement with
Prejudice.
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Pursuant to Local Rule 7.1(a) the undersigned hereby certifies that counsel for the parties
have conferred and have attempted in good faith to resolve or narrow the issues raised in this
Motion. Defendants counsel has indicated that he will oppose this motion.
Certification of Service
I hereby certify that on this day, I served a copy of the foregoing documents upon all
counsel via Electronic Case Filing system of the United States District Court for the District of
Massachusetts.
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Defendants.
1. I am an attorney with the law firm of AMDinius Law, counsel for Caffeinate
Labs, Inc., the Plaintiff in the above-captioned action. I have personal knowledge of the facts
stated herein and could and would testify competently as a witness if called to do so in this
matter.
2. I declare that my email server received an email in the In Box for my law firms
email account, which included an attached Rule 11 Motion, purportedly sent from Richard
Stockton, counsel of record for Defendants Vante Inc. and Alexander Shlaferman, on Friday
March 17, 2017 at 8:55 pm. A true and correct copy of which is attached hereto as Exhibit A.
stipulate to allowing Plaintiff to dismiss Count Two of the Complaint and First Amended
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5. Defense counsel would not agree to allow Plaintiff to dismiss the patent
infringement claim for U.S. Patent No. D 707,091 unless Caffeinate Labs agrees to pay the
reasonable expenses, including but not limited to attorneys fees, incurred by Defendants in
defending against the design patent count, including but not limited to reasonable expenses
relating to preparing and/or filing Defendants Motion to Dismiss (ECF No. 19 filed March 2,
2017) and Defendants Motion for Sanctions (served on March 17, 2017). A true and correct
6. Even after pointing out the safe harbor provisions of Rule 11 and Plaintiffs intent
to withdraw the complained of design patent infringement claim, Defense counsel would not
concede to allowing Plaintiff to dismiss the design patent infringement claim with prejudice
unless Plaintiff agreed to pay Defendants attorneys fees. A true and correct copy of an
additional email exchange between me and Defendants attorney of record is attached hereto as
Exhibit C.
I declare under penalty of perjury of the laws of the United States of America that the
Certification of Service
I hereby certify that on this day, I served a copy of the foregoing documents upon all
counsel via Electronic Case Filing system of the United States District Court for the District of
Massachusetts.
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Defendants.
I. INTRODUCTION
Plaintiff brought this case to seek redress for Defendants unlawful infringement and
unfair business practices. Before filing this lawsuit, Plaintiff reached out to Defendants via letter
and email to discuss the allegations raised in this case. Defendants never responded to Plaintiffs
attempts to amicably resolve the issues currently before the Court in this case. Plaintiff,
therefore, filed this lawsuit seeking redress for patent infringement, unfair competition,
The First Amended Complaint raises seven counts, one of which is for patent
infringement of U.S. Patent No. D 707,091. Defendants have moved for dismissal of the design
patent infringement claim, and have served Plaintiff with notice of their intent to seek Rule 11
sanctions if Plaintiff does not voluntarily dismiss its design patent infringement claim. Although
Plaintiff believes that it has asserted valid and actionable facts with respect to design patent
infringement, it has decided, in the interest of judicial economy, to voluntarily dismiss its design
patent infringement claims with prejudice. Plaintiff met and conferred with Defendants counsel
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earlier today to seek a stipulation allowing it to file a second amended complaint withdrawing its
design patent infringement claim. Defendants refused to stipulate unless Plaintiff agreed to pay
their attorneys fees for filing their motion to dismiss the design patent infringement claims.
Defendants position is against the plain language of Rule 11(c)(2). As such, Plaintiff
respectfully requests this Court allow it to withdraw/dismiss Count Two of the First Amended
Complaint (FAC) with prejudice and without attorneys fees and costs being assessed.
multifunctional tool. The PocketMonkey is very popular because of its dimensions and because
of the variety of tools it offers. PocketMonkeys size is perfect because it fits into a wallet. It is
as thin as a credit card, making it unobtrusive and handy. Defendants sell a knock-off of the
PocketMonkey called the Wallet Ninja. Defendant Alex Shlaferman and Plaintiffs founder,
Nate Barr, know each other from having met at a toy exposition where Mr. Barr was displaying
the PocketMonkey. Mr. Shlaferman was enamored with the PocketMonkey and reached out to
Mr. Barr to explore the possibility of working together to increase sales volume and production
capacity for the PocketMonkey. Mr. Barr ultimately rejected Mr. Shlafermans proposals, which
Not deterred, Mr. Shlaferman created a knock-off of the PocketMonkey, which he called
the Wallet Ninja. Mr. Shlaferman falsely marketed the Wallet Ninja as the Worlds First 100%
Flat Multi-Tool, even though he knew that the PocketMonkey was being sold and that it is a
flat, multi-tool. He even went so far as to launch an online disparagement campaign against the
PocketMonkey where he accused Plaintiff of knocking off his designs, when quite the opposite
was true. He also disparaged the PocketMonkey by calling it garbage. He asked his internet
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followers to post false negative reviews for the PocketMonkey, as compared with the Wallet
Ninja, on online marketplaces. Negative reviews were posted in response to Mr. Shlafermans
Prior to filing this lawsuit, Plaintiff tried to resolve these issues with Defendants and their
counsel via letters and email correspondence. Defendants did not provide a substantive
response.
insufficient under Rule 12(b)(6) of the Federal Rules of Civil Procedure. (Mot. Dismiss, Dkt.
No. 20). Toward that end, Defendants have moved for dismissal under Rule 12(b)(6). On
Friday, March 17, 2017 at 8:55 pm, Defendants counsel attempted to serve Plaintiffs counsel
with a motion pursuant to Rule 11(c)(2), seeking sanctions in the event Plaintiff did not
voluntarily dismiss its design patent infringement claim. A true and correct copy of Defendants
email is attached to the Declaration of Anne-Marie Dinius, Exhibit A (Dinius Decl.). This
attempt at service was ultimately received the following day, March 18, 2017. Plaintiffs counsel
did not read defendants email until the next day, Saturday, March 18, 2017. Dinius Decl. 3.
On April 10, 2017, Plaintiffs counsel met and conferred with Defendants counsel to
request that Defendant stipulate to leave for Plaintiff to withdraw the design patent infringement
claim with prejudice. Dinius Decl. 4. Defendants counsel refused to stipulate to Plaintiffs
request to dismiss its design patent infringement claim with prejudice unless Plaintiff agreed to
pay Defendants fees and costs associated with filing its Motion to Dismiss and Motion for
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III. ARGUMENT
Procedure, a party believing it is entitled to sanctions must serve, under Rule 5, a motion for
sanctions on the non-moving party. Fed.R.Civ.P 11(c)(2). The non-moving party then has 21
days to withdraw the challenged paper, claim, defense, contention, or denial. Id. If the non-
moving party withdraws the complained of pleading, document, the Rule 11 motion is moot.
The purpose of the safe harbor [provision] is to give the offending party the opportunity, within
21 days after service of the motion for sanctions, to withdraw the offending pleading and thereby
escape sanctions. Barber v. Miller, 146 F.3d 707, 710 (9th Cir. 1998)(emphasis in original).
Rule 11 is straightforward in allowing parties a safe harbor to consider the issues raised
before deciding on a definitive course of action. Defendants ignore this safe harbor by
In this case, Plaintiff is within the 21-day safe harbor provision of Rule 11. Although
Defendants emailed their Rule 11 motion to Plaintiffs counsel on March 17, 2017, that email
was sent well after the 6:00 pm deadline for service. Specifically, Defendants notice of rule 11
motion was sent at 8:55 pm on March 17, 2017. Dinius Decl. 2, Ex. A. When a document is
filed after the 6:00 deadline, it is deemed to have been filed the next business day. Sneade v.
Rojas, (Case No. 11-CV-40061-TSH), 2014 WL 949635, at *2 (D. Mass. Mar. 10, 2014). While
the 6:00pm deadline is for filing, the same rationale underpins electronic service.
Rule 5(a)(2)(E) states that electronic service is not effective if the serving party learns that it did
not reach the party to be served. Here, Defendants email purporting to serve the Rule 11
Motion was sent at 8:55pm on Friday, March 17, 2017. Plaintiffs counsel did not receive it until
Saturday, March 18, 2017. Therefore, the filing of this Motion is within 21 days of the Rule 11
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safe harbor. Accordingly, Defendants Rule 11 motion was served on March 18, 2017, which
In order to preserve judicial economy, and in accordance with the very purpose of
Rule 11, Plaintiff sought a Stipulation from Defendants regarding dismissing its design claim
with prejudice. This is exactly what Defendants asked for in their Rule 11 motion. Seeking
perhaps to rewrite the strictures of Rule 11, Defendants would not agree to allow Plaintiff to
dismiss its design patent infringement claim unless Caffeinate Labs agrees to pay the reasonable
expenses, including but not limited to attorneys fees, incurred by Defendants in defending
against the design patent count, including but not limited to reasonable expenses relating to
preparing and/or filing Defendants Motion to Dismiss (ECF No. 19 filed March 2, 2017) and
Defendants Motion for Sanctions (served on March 17, 2017). Dinius Decl. 5, Ex. B.
Plainitff again asked Defendants to stipulate to allowing dismissal of the deisgn patent
claim via email on April 10, 2017 as follows As you are aware, Rule 11 provides a safe-
harbor provision for the non-moving party to withdraw the complained of document, claim etc.
Caffeinate has agreed to dismiss the design patent infringement claim with prejudice. Under the
safe harbor provisions of Rule 11, your client is not entitled to fees. As such, Caffeinate will not
provide an order with the language you request below. Dinius Decl. 6, Ex. C. Defendants
Defendants requirement for stipulating to dismiss the design patent infringement claim
runs counter to the policy underlying Rule 11 and to the law. Accordingly, Plaintiff respectfully
requests that this Court allow it to withdraw its design patent infringement claim with prejudice,
and that Defendant be ordered to answer the remaining allegations of the FAC within 21 days.
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Additionally, Plaintiff respectfully requests that the Court authorize the parties to begin
discovery. The discovery start date in this case was triggered by the date upon which the Court
decided Defendants motion to dismiss the design patent infringement claim, or June 7, 2017,
whichever occurred first. In the event the Court allows Plaintiff to dismiss the design patent
infringement claim, the motion to dismiss will become moot. Discovery should therefore begin
immediately so the parties can begin resolving the issues presented in this case.
IV. CONCLUSION
For the foregoing reasons, Caffeinate respectfully requests that this Court enter an order:
(1) dismissing Count Two (Infringement of U.S. Patent No. D707,091) of the First Amended
Count Two from the pleading; and (2) opening fact discovery.
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Certification of Service
I hereby certify that on this day, I served a copy of the foregoing documents upon all
counsel via Electronic Case Filing system of the United States District Court for the District of
Massachusetts.
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Defendants.
The Court, having considered Plaintiffs Motion to Dismiss Count Two for
Design Patent Infringement with Prejudice and its Memorandum in Support of its Motion
to Dismiss Count Two for Design Patent Infringement with Prejudice, hereby grants the
motion.
1. The design patent infringement claim for relief (Count II) is DISMISSED
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