Escolar Documentos
Profissional Documentos
Cultura Documentos
1 case, and upon such other matters as may be presented to the Court at the time of
2 hearing.
3 Pursuant to Local Rule 7-3, the undersigned reports that there was a
4 conference between attorneys or unrepresented parties in which the movant
5 explained the nature of the motion and its legal basis and requested but did not
6 obtain concurrence in the relief sought, and that this conference was held on
7 December 7, 2018. No agreement was reached.
8
9 Date: December 11, 2018 /s/K. David Crockett
K. David Crockett, Esq.
10 Crockett & Crockett, PC
Attorney for Defendants
11 READY PAC FOODS, INC. and
READY PAC PRODUCE, INC.
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Notice of Motion
5:18-CV-2436 DDP-KK
Case 5:18-cv-02436-DDP-KK Document 10-1 Filed 12/11/18 Page 1 of 30 Page ID #:40
1 Cases
2 Abrego v. The Dow Chem. Co., 443 F.3d 676, 681 (9th Cir. 2006) ........................3
3 Anderson v. Kimberly-Clark Corp.,
4 570 Fed. Appx. 927 (Fed. Cir. 2014) ...................................................................3
5 Bell Atlantic Corp. v. Twombly,
6 550 U.S. 544 (2007) ............................................................................................2
7 Bonanno v. Thomas,
8 309 F.2d 320 (9th Cir. 1962) ............................................................................. 24
9 Deckers Outdoor Corp. v. Fortune Dynamic, Inc.,
10 2015 WL 12731929, at 7 (C.D. Cal. May 8, 2015) ............................................ 23
11 Egyptian Goddess, Inc. v. Swisa, Inc.,
12 543 F.3d 665 (Fed. Cir. 2008) .............................................................................4
13 Elmer v. ICC Fabricating, Inc.,
14 67 F.3d 1571, 1577 (Fed. Cir. 1995) ....................................................................4
15 Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,
16 796 F.3d 1312 (Fed. Cir. 2015) ...........................................................................4
17 Hakopian v. Mukasey,
18 551 F.3d 843 (9th Cir. 2008) ...............................................................................2
19 Hal Roach Studios, Inc., v. Richard Feiiner and Co., Inc.,
20 896 F.2d 1542 (9th Cir. 1990) .............................................................................3
21 Halton Co. v. Streivor, Inc.,
22 2010 WL 2077203, at 4 (N.D. Cal. May 21, 2010) ............................................ 23
23 Hearn v. R.J. Reynolds Tobacco Co.,
24 279 F. Supp. 2d 1096 (D. Ariz. 2003)..................................................................3
25 HWE, Inc. v. JB Research, Inc.,
26 993 F.2d 694, 696 (9th Cir. 1993) ..................................................................... 12
27 In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) ..................................................4
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MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS FOR FAILURE
TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED
5:18-CV-2436 DDP-KK
Case 5:18-cv-02436-DDP-KK Document 10-1 Filed 12/11/18 Page 4 of 30 Page ID #:43
1 the bowls)1. The claimed design is an overwrap with straight edges, a regular
2 rectangular top panel, two rectangular side panels, and a rounded bottom panel.
3 Both side panels include two slight bulges that extend outwardly2. One bulge is
4 located near the top edge of the side panel, and the other bulge is located at the
5 vertical midpoint of the side panel. Below this second bulge, the side panel curves
6 inwardly to join the bottom panel. A horizontal middle panel (a shelf) inside the
7 overwrap spans the space defined by the overwrap, and dissects that space in two
8 compartments of equal height. The horizontal middle panel (the shelf) is the same
9 width as the top panel and side panels. All panels in the design patent are blank
10 and devoid of artwork, indicia, or color (“surface treatment” as it is called in
11 design patent law).
12 C. The Accused Overwrap
13 Ready Pac’s overwrap includes the necessary and functional top panel, side
14 panels and bottom panel (these are all functional, and serve to retain the bowls in a
15 two-pack, and not subject to design patent protection). The Ready Pac overwrap
16 does not include a middle panel (the shelf). Ready Pac’s bottom panel is
17 rectangular, and not round. Ready Pac’s overwrap does not include the outwardly
18 extending bulges, and instead includes two lanceolate3 (shaped like a lance)
19 apertures for accommodating edges of the bowls secured by the overwrap. Ready
20 Pac’s side panel, in the lower half below the aperture, is rectilinear and not curved.
21 Finally, the design patent includes no surface treatment, and Ready Pac’s overwrap
22 includes extensive indicia, artwork, and color. Because Ready Pac’s overwrap is
23 plead, the Court can consider the entire overwrap on a motion to dismiss.
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25 1
The first page of the design patent includes a disclaimer regarding the objects
26 shown
2
in broken lines, as does every design patent
This may be an error in the patent, and the bulges may have been intended to
27 depict the bowls. However, they are presented in solid lines, and are therefore
elements of the claim.
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28 Shaped like a lance. From Wikipedia, a lanceolate leaf:
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MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS FOR FAILURE
TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED
5:18-CV-2436 DDP-KK
Case 5:18-cv-02436-DDP-KK Document 10-1 Filed 12/11/18 Page 11 of 30 Page ID #:50
1 D. The Ready Pac Two-Up Overwrap Does Not Infringe The Five
2 Star Design Patent
3 Side-by-side comparison of the two-up overwrap with the patented design4
4 demonstrates that they are plainly dissimilar, such that Five Star cannot prove a
5 claim for design patent infringement:
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In this front perspective view, the
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lanceolate apertures which
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accommodate the bowl edges
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Figure 1 is a front perspective view. contrast sharply with the claimed
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Prominent features include the bulging bulges of the cardboard in the
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protrusions in the side panels that patented design, which are
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accommodate the bowls, the rounded outwardly arcuate in the patented
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bottom panel, the middle panel (the shelf) design. The bottom panel is
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which is entirely missing in the accused straight-edged, in contrast to the
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overwrap, and the arcuate side panels that patented design. The middle panel
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curve toward the rounded bottom panels. (the shelf) is missing.
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27 4
For the design patent issue, images of Five Star’s product are immaterial: The test
for infringement requires comparison of the patented design with the accused
28 product.
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MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS FOR FAILURE
TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED
5:18-CV-2436 DDP-KK
Case 5:18-cv-02436-DDP-KK Document 10-1 Filed 12/11/18 Page 12 of 30 Page ID #:51
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11 In this bottom perspective view, the
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MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS FOR FAILURE
TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED
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Figure 3 is a front view. Prominent
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features include the bulging protrusions in
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the side panels that accommodate the
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bowls, the rounded bottom panel, and the
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arcuate side panels that curve toward the
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rounded bottom panels. There are no
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apertures for the bowl edges.
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In these side views, pled in
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Paragraph 19, the lanceolate
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apertures which accommodate the
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bowl edges contrast sharply with
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the claimed protrusions of the
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cardboard in the patented design,
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which are rectangular in the side
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view. The bulges of the patented
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design are replaced with holes.
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MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS FOR FAILURE
TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED
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11 Figure 4 is a side view. Prominent features
12 include the bulging protrusion in the side
13 panels that accommodate the bowls, the
14 curvilinear side panels that curve toward
15 the rounded bottom panels, and the middle
16 In this side view, the rectilinear
panel (the shelf).
17 form of the side panels contrasts
18 sharply with the curvilinear shape of
19 the side panels in the patented
20 design. Also, the middle panel (the
21 shelf) is missing. The right
22 lanceolate aperture is higher than
23 the left lanceolate aperture.
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MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS FOR FAILURE
TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED
5:18-CV-2436 DDP-KK
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10 In this top view, pled in Paragraph
11 Figure 5 of the patented design shows the 19, the lanceolate apertures which
top of the patented overwrap, with straight accommodate the bowl edges take
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edges and prominent cardboard protrusions the place of the claimed bulges of
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to accommodate the bowl edges. the cardboard in the patented
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15 design.
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24 The straight edges of the bottom
25 panel contrast sharply with the
Figure 6 of the patented design shows the
26 round shape of the bottom panel in
bottom of the patented overwrap, with
27 the patented design.
arcuate bulges in the bottom panel.
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MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS FOR FAILURE
TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED
5:18-CV-2436 DDP-KK
Case 5:18-cv-02436-DDP-KK Document 10-1 Filed 12/11/18 Page 16 of 30 Page ID #:55
1 Five Star cannot prove infringement, and the claim for design patent infringement
2 should be dismissed with prejudice.
3 IV. PLAINTIFF FAILS TO STATE A CLAIM FOR TRADE DRESS
4 INFRINGEMENT
5 A. Substantive Law Of Trade Dress Infringement
6 Likelihood of confusion in the trade dress context is evaluated by reference
7 to the same factors used in the ordinary trademark context, including the strength
8 of the trade dress, similarity between plaintiff's and defendant's trade dress,
9 evidence of actual confusion, marketing channels used, type of goods and likely
10 degree of purchaser care, and the defendant's intent in selecting its trade dress and
11 other SleekCraft factors. Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 616
12 (9th Cir. 1989).
13 However, the trade dress must be non-functional, and it is Plaintiff’s burden
14 to prove that the asserted trade dress is not functional. 15 U.S.C. § 1125(a)(3) and
15 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2001), In the
16 Ninth Circuit, non-functionality is part of the plaintiff's prima facie case. HWE,
17 Inc. v. JB Research, Inc., 993 F.2d 694, 696 (9th Cir. 1993). A plaintiff must plead
18 the non-functionality of its alleged unregistered trade dress to state a viable claim,
19 consistent with its burden of proof on this issue. Smith & Hawken, Ltd. v.
20 Gardendance, Inc., No. C04-1664 SBA, 2004 WL 2496163, at *3 (N.D. Cal. Nov.
21 5, 2004) (dismissing claim for trade dress infringement because of failure “to
22 allege or plead non-functionality”), citing Kendall-Jackson Winery, Ltd. v. E. & J.
23 Gallo Winery, 150 F.3d 1042, 1047 (9th Cir. 1998), 15 U.S.C. § 1125(a)(3).
24 Where alleged trade dress pertains to the configuration of a product, a plaintiff
25 must show that the entire design is non-functional. Secalt, 668 F.3d at 683, citing
26 Leatherman Tool Grp. V. Cooper Indus., 199 F.3d 1009, 1012 (9th Cir. 1999) and
27 Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 786 (9th Cir. 2002).
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MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS FOR FAILURE
TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED
5:18-CV-2436 DDP-KK
Case 5:18-cv-02436-DDP-KK Document 10-1 Filed 12/11/18 Page 18 of 30 Page ID #:57
1 (8) a row of four logos showing icons of the various social media platforms
2 Five Star subscribes to, proximate the text “follow us,” located on the
3 bottom5 of the sleeve; and
4 (9) a statement regarding the recyclability of the sleeve and salad container
5 as well as a statement about the packaging materials being recycled from a
6 certain number of plastic bottles.
7 This is what the Plaintiff articulates to be its trade dress.
8 C. The Accused Overwrap
9 Ready Pac’s overwrap includes the necessary and functional configuration
10 of a two-up overwrap, with its own trademarks and statutorily required functional
11 and informative indicia, and other functional and informative indicia. Ready Pac’s
12 bottom panel is rectangular, and not round. Ready Pac’s overwrap does not
13 include the middle panel (the shelf) which is prominent in the Plaintiff’s product.
14 Ready Pac’s overwrap does not include the outwardly extending bulges, and
15 instead includes two lanceolate (shaped like a lance) apertures for accommodating
16 edges of the bowls secured by the overwrap. Ready Pac’s side panel, in the lower
17 half below the aperture, is rectilinear and not curved. Finally, the design patent
18 includes no surface treatment, and Ready Pac’s overwrap includes extensive
19 indicia, artwork, and color.
20 D. The Ready Pac Complaint Is Inadequate
21 Plaintiffs have not sufficiently pled their trade dress claim because they have
22 not fully pled the claim’s three basic elements: (1) distinctiveness, (2) non-
23 functionality, and (3) likelihood of confusion. Kendall-Jackson Winery, 150 F.3d
24 at 1046-47. Specifically, Plaintiff has not alleged non-functionality, and does not
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In view of the actual overwrap, it is apparent that “bottom” refers to the product
orientation, and not the text orientation, and that the Plaintiff is not referring to the
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MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS FOR FAILURE
TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED
5:18-CV-2436 DDP-KK
Case 5:18-cv-02436-DDP-KK Document 10-1 Filed 12/11/18 Page 20 of 30 Page ID #:59
1 F. The Ready Pac Two-Up Overwrap Does Not Infringe The Five
2 Star Trade Dress
3 Five Star mentions many components of its trade dress. Most of them are
4 functional, merely informational text provided to a purchaser. One is their
5 SIMPLY FRESH SALADS trademark, used to sell simply fresh salads, which is
6 not indicia found on Ready Pac’s overwrap. The remainder of the information is
7 mandated by law or necessary or helpful to the purchaser, and is therefore
8 functional. Some articulated items are clearly wrongly correlated to the accused
9 product and not a source of confusion.
10 The overall configuration is the overwrap (item (1) mentioned in the
11 complaint). The overwrap is cheap, easy to make and, in conjunction with clear
12 plastic bowls, permits purchasers to see the contents, which is very important for
13 salad kits (it allows purchasers to readily determine that the contents are, in fact,
14 salads, and are, in fact, simply fresh).
15 For the remainder of the informational text of the alleged trade dress, side-
16 by-side comparison can serve to demonstrate that the alleged trade dress and
17 Ready Pac’s overwrap cannot, as a matter of law, be deemed likely to confuse a
18 consumer, even despite the usually fact-intensive likelihood of confusion test.
19 In the following pages, side-by-side images are presented to demonstrate
20 that (1) the articulated salient point of the alleged trade dress are functional and (2)
21 the trade dress of the Ready Pac product is so dissimilar that confusion is not
22 likely.
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MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS FOR FAILURE
TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED
5:18-CV-2436 DDP-KK
Case 5:18-cv-02436-DDP-KK Document 10-1 Filed 12/11/18 Page 23 of 30 Page ID #:62
1 functional location on the label: at the top where consumers expect. This serves to
2 set off the source identifier from the remaining information that is required by law
3 otherwise of use to the purchaser. Though the positioning is functional, they are
4 visually distinct: The READY PAC® logo and the BISTRO® trademark and
5 distinct shield logo are obviously distinctly different from the SIMPLY FRESH
6 SALADS generic used on Plaintiffs product.
7 As to item (3) the term “organic” serves to inform purchasers that the
8 produce is organic, and its use and prominent placement function to inform
9 purchasers. Though the positioning of each “organic” notation is functional, they
10 are visually distinct: The term “Organic” is presented in a distinctive font, lower
11 case, on a kaki rectangle, on the Ready Pac label, but presented in a flowing
12 curvilinear green banner in upper case in the Plaintiff’s label.
13 As to item (4) the name of the particular salad is the “statement of identity”
14 and is required by statute and purely functional, and the placement on the top of
15 the product is functional as it informs the purchaser as to the contents of the
16 package. Placement on the bottom of the overwrap, or inner surface, would be less
17 functional. Though the positioning is functional, they are visually distinct: The
18 name of the particular salad in the Ready Pac label is placed well below the
19 organic notation, with significant additional indicia (2 salads, on the go, and
20 nutritional icons) setting it off from the trademarks and generic organic term.
21 As to item (5) the photographs are informational and functional. Again,
22 placement on the top of the overwrap is functional. Moreover, the artwork cannot
23 hide or detract from the prominence and visibility of required label statements, 21
24 CFR 101.15(a)(4) (1997), so that the positioning is functional and limited by the
25 positioning of other mandatory elements. Nonetheless, respective images are
26 visually distinct: The Ready Pac photographs are placed around the border of the
27 top panel, while Plaintiff’s photographs are centrally located on the top panel.
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MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS FOR FAILURE
TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED
5:18-CV-2436 DDP-KK
Case 5:18-cv-02436-DDP-KK Document 10-1 Filed 12/11/18 Page 25 of 30 Page ID #:64
1 Plaintiff’s BOTTOM Panel with Social Defendants’ SIDE Panel with Social
2 media icons Media icons
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14 As to item (9) the statement regarding the recyclability of the sleeve and
15 salad container as well as a statement about the packaging materials being recycled
16 from a certain number of plastic bottles are purely functional. Brags about
19 distinct, disposed within a rectangular border, with a brag regarding the post-
consumer content, and additional recycling encouragement and located on the back
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panel of the Ready Pac overwrap, while it is located on the bottom of Plaintiff’s
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package, with no corresponding encouragement.
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Plaintiff’s recycling icons from its Defendants’ recycling icon from the SIDE
23 BOTTOM Panel Panel
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MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS FOR FAILURE
TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED
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Case 5:18-cv-02436-DDP-KK Document 10-1 Filed 12/11/18 Page 27 of 30 Page ID #:66
1 VIII. CONCLUSION
2 The accused devices do not infringe the claim of the Five Star patent
3 because they are plainly dissimilar. The accused trade dress does not infringe any
4 trade dress that might be established in the Five Star overwrap as can readily be
5 understood from the pleadings. The entire Complaint should be dismissed without
6 leave to amend for this reason. The complaint further fails to state a claim for
7 trade dress infringement because it does not allege non-functionality in a product
8 configuration, and it alleges inherent distinctiveness in a product configuration.
9 The Complaint also fails to state a claim for unfair competition because it fails to
10 allege facts supporting the alleged infringement that is the sole basis for that claim.
11 The state unfair competition claims are preempted by federal law. The allegations
12 against the DOE defendants should be dismissed for these reasons, and the
13 additional reason that the Complaint does not allege facts establishing personal
14 culpability of any potential DOE defendant.
15
16 Date: December 11, 2018 /s/K. David Crockett
17 K. David Crockett, Esq.
Crockett & Crockett, PC
18 Attorney for Defendants
19 READY PAC FOODS, INC. and
READY PAC PRODUCE, INC.
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MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS FOR FAILURE
TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED
5:18-CV-2436 DDP-KK
Case 5:18-cv-02436-DDP-KK Document 10-2 Filed 12/11/18 Page 1 of 2 Page ID #:70
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UNITED STATES DISTRICT COURT
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CENTRAL DISTRICT OF CALIFORNIA
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Five Star Gourmet Foods, Inc., Case No.: 5:18-CV-2436 DDP-KK
12 a California Corporation,
[PROPOSED] ORDER GRANTING
13 Plaintiff, DEFENDANTS’ READY PAC
vs. FOODS, INC., AND READY PAC
14 PRODUCE, INC. MOTION TO
Ready Pac Foods, Inc., DISMISS FOR FAILURE TO
15 a Delaware Corporation, STATE A CLAIM UPON WHICH
Ready Pac Produce, Inc., RELIEF CAN BE GRANTED
16 a California Corporation FED. R. CIV. PROC § 12(B)(6)
and
17 Date: March 11, 2019
Does 1-10, inclusive,
18 Time: 10:00 AM
Defendants
19 Courtroom: 9C
20 Judge: Dean D. Pregerson
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Case 5:18-cv-02436-DDP-KK Document 10-2 Filed 12/11/18 Page 2 of 2 Page ID #:71
1 The Court, having read and considered the arguments supporting and
2 opposing Defendants’ Ready Pac Foods, Inc., and Ready Pac Produce, Inc. Motion
3 To Dismiss For Failure To State A Claim Upon Which Relief Can Be Granted
4 finds:
5 That the accused devices do not infringe the claim of the Five Star patent
6 because they are plainly dissimilar.;
7 That the accused trade dress does not infringe any trade dress that might be
8 established in the Five Star overwrap;
9 That the complaint fails to state a claim for trade dress infringement because
10 it does not allege non-functionality in a product configuration, and it alleges
11 inherent distinctiveness in a product configuration;
12 That the Complaint also fails to state a claim for unfair competition because
13 it fails to allege facts supporting the alleged design patent and trade dress
14 infringement that are the sole bases for the unfair competition claim; and
15 That the state unfair competition claims are preempted by federal law.
16
17 IT IS ORDERED that the Motion To Dismiss For Failure To State A Claim
18 Upon Which Relief Can Be Granted is GRANTED in its entirety and that the
19 complaint is dismissed with prejudice.
20
21 Date:
22 Honorable Dean D. Pregerson
23 United States District Judge
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