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Case 3:20-cv-00754 Document 1 Filed 01/31/20 Page 1 of 30

1 Paul A. Stewart (SBN 153,467)


paul.stewart@knobbe.com
2 Ali S. Razai (SBN 246,922)
3 ali.razai@knobbe.com
Nicole R. Townes (SBN 272,342)
4 nicole.townes@knobbe.com
Brandon G. Smith (SBN 307,676)
5 brandon.smith@knobbe.com
6 KNOBBE, MARTENS, OLSON & BEAR, LLP
2040 Main Street, Fourteenth Floor
7 Irvine, CA 92614
Telephone: (949) 760-0404
8 Facsimile: (949) 760-9502
9 Attorneys for Plaintiff
10 simplehuman, LLC
11
12 IN THE UNITED STATES DISTRICT COURT
13
FOR THE NORTHERN DISTRICT OF CALIFORNIA
14
OAKLAND DIVISION
15
16 SIMPLEHUMAN, LLC, ) Case No. 20-cv-754
a California limited liability )
17 company, ) COMPLAINT
)
18 Plaintiff, ) DEMAND FOR JURY TRIAL
)
19 v. )
20 )
MICHAEL SHEK D/B/A HLS )
21 COMMERCIAL, an individual, )
)
22 Defendant. )
23 )

24
25
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27
28

COMPLAINT; DEMAND FOR JURY TRIAL


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1 Plaintiff simplehuman, LLC (“simplehuman”) hereby complains of


2 Defendant Michael Shek d/b/a HLS Commercial (“Defendant”) and alleges as
3 follows:
4 I. JURISDICTION AND VENUE
5 1. This Court has original subject matter jurisdiction over the claims in
6 this action that relate to patent infringement, trademark infringement, trade dress
7 infringement, false designation of origin, federal unfair competition, and
8 cancellation of a federal trademark registration pursuant to 15 U.S.C. §§ 1114, 1116,
9 1121, 1125, 35 U.S.C. § 100 et seq. and also pursuant to 28 U.S.C. §§ 1331 and
10 1338 as these claims arise under the laws of the United States. The Court has
11 supplemental jurisdiction over the claims in this Complaint that arise under state
12 statutory and common law pursuant to 28 U.S.C. § 1367(a) because those claims are
13 so related to simplehuman’s federal claims within the Court’s original jurisdiction
14 that they form part of the same case or controversy and derive from a common
15 nucleus of operative facts..
16 2. This Court has personal jurisdiction over Defendant because Defendant
17 has a continuous, systematic, and substantial presence within this judicial district
18 and within California. For example, Defendant resides in this district and has a
19 principal place of business in this judicial district at 777 Mariners Island Boulevard,
20 Suite 125, San Mateo, California 94404. simplehuman is informed and believes
21 and, based thereon, alleges that Defendant also sells and/or offers for sale infringing
22 products in this district and/or sells them into the stream of commerce knowing such
23 products would be sold in California and this district, and these acts form a
24 substantial part of the events or omissions giving rise to simplehuman’s claims.
25 3. Venue is proper in this judicial district under 28 U.S.C. §§ 1391(b) and
26 (d) and 1400(b) because Defendant resides in this judicial district and because
27 Defendant has committed acts of infringement by selling and/or offering to sell
28 infringing products in this judicial district and has a regular and established place of

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1 business in this judicial district.


2 II. THE PARTIES
3 4. Plaintiff simplehuman is a California limited liability company having
4 its principal place of business at 19850 Magellan Drive, Torrance, California 90502.
5 5. simplehuman is informed and believes, and based thereon alleges, that
6 Defendant Michael Shek is an individual residing in this district and doing business
7 as HLS Commercial.
8 III. INTRADISTRICT ASSIGNMENT
9 6. This action is an intellectual property action subject to district-wide
10 assignment pursuant to Local Civil Rules 3-2(c) and 3-5(b).
11 IV. GENERAL ALLEGATIONS
12 7. simplehuman was founded in 2000 with the goal of designing a unique
13 trash can. Since then, simplehuman has been engaged in the manufacture and sale
14 of highly stylistic and distinctive trash cans and has expanded its product line to
15 pioneer a variety of innovations in other kitchen and bath tools. Through its tireless
16 efforts, simplehuman has become a leader in the design and production of a variety
17 of consumer home goods, including trash cans, mirrors, sensor pumps, dishracks,
18 sink caddies, and more.
19 8. simplehuman is informed and believes and, based thereon, alleges that
20 Defendant Shek is the sole and driving force behind the sales of all products under
21 the HLS Commercial mark, including all decisions regarding the advertisement,
22 promotion, manufacture, design, development, sale, offer for sale, and/or
23 importation into the United States of all products under the HLS Commercial mark.
24 9. Defendant Shek, in his individual capacity, is the registered owner of
25 U.S. Trademark Registration No. 5,264,873 for the mark HLS Commercial for use
26 in connection with: Trash cans; Garbage cans; Soap dispensers; Paper towel
27 dispensers for household use; Napkin dispensers for household use; Toilet tissue
28 holders. A true and correct copy of U.S. Trademark Registration No. 5,264,873 is

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1 attached as Exhibit 1.
2 10. Defendant Shek doing business as HLS Commercial is advertising,
3 promoting, manufacturing, designing, developing, selling, offering for sale, and/or
4 importing into the United States products that copy the designs of simplehuman’s
5 products. A true and correct copy of the HLS Commercial 2020 Product Catalog is
6 attached as Exhibit 2 (“the 2020 Product Catalog”). In at least one of his social
7 media posts, Defendant refers to HLS Commercial products as “his own products.”
8 11. Since at least as early as 2001, simplehuman has manufactured and sold
9 its iconic Bullet trash can. The Bullet trash can bears a distinctive, nonfunctional
10 trade dress in the overall design of the product (“Bullet Trade Dress”), which
11 includes: a cylindrical metal body that has a metallic color; a top ring that is
12 concentric with the body and contrasts against the metallic color of the body; a metal
13 top cap that is shaped like a truncated dome to create an opening with a diameter
14 smaller than the diameter of the metallic body and contrasts against the color of the
15 top ring; the metal of the top cap curves into the opening to create a semi-toroidal
16 rim as the circumference of the opening. The following is an image of an exemplary
17 product bearing the distinctive Bullet Trade Dress that has been annotated with short
18 hand descriptions of the features described above. The use of short hand names for
19 certain features is solely for ease of reference in the following image and is not
20 intended to modify or eliminate any element of the simplehuman’s Bullet Trade
21 Dress described herein.
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Semi-toroidal rim
Opening

1
Metal top cap
2
Top ring
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6 Cylindrical
7 metal body

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13 12. The simplehuman’s products bearing the Bullet Trade Dress have
14 achieved remarkable success in the marketplace.
15 13. As a result of simplehuman’s widespread use and display of the Bullet
16 Trade Dress, (a) the public has come to recognize and identify products bearing the
17 Bullet Trade Dress as emanating from simplehuman, (b) the public recognizes that
18 products bearing the Bullet Trade Dress constitute high quality products that
19 conform to the specifications created by simplehuman, and (c) the Bullet Trade
20 Dress has established strong secondary meaning and extensive goodwill.
21 14. The Bullet Trade Dress is non-functional. The design features
22 embodied by the Bullet Trade Dress are not essential to the function of the product,
23 do not make the product cheaper or easier to manufacture, and do not affect the
24 quality of the product. The design elements of the Bullet Trade Dress are not a
25 competitive necessity for trash can products.
26 15. Without permission or consent from simplehuman, Defendant is using
27 simplehuman’s Bullet Trade Dress. Defendant manufactures, imports, offers for
28 sale, and/or sells products under the mark HLS Commercial that use trade dress that

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1 is confusingly similar to the Bullet Trade Dress, for example the Round Open-Top
2 Trash Can (HLS13STR/HLS16STR) shown below.
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13 16. Defendant has copied simplehuman’s Bullet Trade Dress in an attempt
14 to benefit from the immense goodwill simplehuman has created in the marketplace.
15 17. simplehuman is informed and believes, and based thereon alleges that
16 Defendant intended to blatantly copy simplehuman’s design and pass off his
17 products as simplehuman’s products to misappropriate the immense goodwill that
18 simplehuman has spent enormous time, effort, and expense to cultivate in the
19 marketplace.
20 18. Defendant’s use of the Bullet Trade Dress in commerce is likely to
21 cause confusion, cause mistake, and deceive as to the affiliation, connection, or
22 association of Defendant and his products with simplehuman, when there is none.
23 19. Defendant’s acts of trade dress infringement complained of herein have
24 caused simplehuman to suffer irreparable injury to its business. simplehuman will
25 continue to suffer irreparable injury unless and until Defendant is enjoined from its
26 willful actions complained of herein.
27 20. simplehuman is informed and believes, and on that basis alleges, that
28 Defendant’s acts of trade dress infringement complained of herein are willful and

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1 deliberate.
2 21. simplehuman owns U.S. Trademark Registration No. 2,882,479 for the
3 mark SIMPLEHUMAN® (“the SIMPLEHUMAN® Mark”). Attached hereto as
4 Exhibit 3 is a true and correct copy of the ’479 Registration, which is incorporated
5 by reference. Pursuant to 15 U.S.C. § 1065, the ’479 Registration is incontestable.
6 22. As a result of simplehuman’s long, continuous, extensive and exclusive
7 use of the simplehuman Mark, as well as its marketing, promotion, and sale of
8 products under that mark, the relevant public has come to recognize the
9 simplehuman Mark as identifying products that originate from or are otherwise
10 associated exclusively with simplehuman. simplehuman has spent enormous, time,
11 effort, and expense to create valuable goodwill in the simplehuman Mark.
12 23. Long after simplehuman started using the simplehuman Mark,
13 Defendant Shek applied for and registered U.S. Trademark Registration No.
14 5,969,114 for the mark LIVESIMPLE (“the LIVESIMPLE Mark”). As part of the
15 application for ’114 Registration, Shek submitted a statement of use and specimen
16 affirming that Defendant was in fact using the LIVESIMPLE Mark in commerce,
17 and submitted the specimen below showing use of the LIVESIMPLE Mark in
18 commerce in connection with trash cans:
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1 24. Defendant is not affiliated with simplehuman. simplehuman has never


2 given Defendant license, permission or authority to use or display the simplehuman
3 Mark or any similar mark.
4 25. Defendant has attempted to capitalize on simplehuman’s valuable
5 reputation and customer goodwill in the simplehuman Mark by using the
6 confusingly similar LIVESIMPLE mark in connection with the advertisement,
7 marketing, promotion, sale, and/or offer for sale of identical goods, namely trash
8 cans, with similar price points in overlapping retail and distribution channels in a
9 manner that creates consumer confusion.
10 26. On March 17, 2015, Defendant Shek filed U.S. Trademark Application
11 Nos. 86566929 and 86566945 for the mark SUPERHUMAN. In a letter dated April
12 20, 2015, simplehuman complained about Defendant’s registration of the
13 SUPERHUMAN mark, which simplehuman asserted infringed its trademark rights
14 in its SIMPLEHUMAN® Mark. While the parties resolved this matter regarding
15 Defendant’s use and applications to register the SUPERHUMAN mark, Defendant
16 has been aware of simplehuman, its trademarks and its products since at least as
17 early as April 2015.
18 27. Defendant was, thus, aware of the SIMPLEHUMAN® Mark when he
19 started using the LIVESIMPLE mark.
20 28. Without permission or consent from simplehuman, Defendant has
21 infringed simplehuman’s SIMPLEHUMAN® Mark in interstate commerce by
22 advertising, marketing, promoting, selling, and/or offering to sell products under the
23 LIVESIMPLE Mark.
24 29. simplehuman is informed and believes, and based thereon alleges that
25 Defendant’s actions alleged herein are intended to cause confusion, mistake, or
26 deception as to the source of Defendant’s products and to cause consumers and
27 potential customers to believe that Defendant’s products are associated with,
28 sponsored by, originate from, or are approved by, simplehuman, when they are not.

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1 30. simplehuman protects its substantial investment in innovation with its


2 patents, including U.S. Design Patent Nos. D644,807 C1 (“the D807 Patent”) and
3 D729,485 S (“the D485 Patent”) and U.S. Patent No. 6,626,316 (the ’316 Patent”).
4 31. On September 6, 2011, the United States Patent & Trademark Office
5 (“USPTO”) duly and lawfully issued the D807 Patent, titled “Slim Open Trash
6 Can.” The D807 Patent was the subject of a Supplemental Examination Request,
7 which was filed on February 21, 2017. On March 22, 2019, the USPTO duly and
8 lawfully issued an Ex Parte Reexamination Certificate for the D807 Patent. True
9 and correct copies of the D807 Patent, including the Ex Parte Reexamination
10 Certificate, are attached hereto as Exhibit 4.
11 32. On May 12, 2015, the USPTO duly and lawfully issued the D485
12 Patent, titled “Dual Recycler.” A true and correct copy of the D485 Patent is
13 attached hereto as Exhibit 5.
14 33. On September 30, 2003, the USPTO duly and lawfully issued the ’316
15 Patent, titled “Trash Can Assembly with Toe-Kick Recess.” A true and correct copy
16 of the ’316 Patent is attached hereto as Exhibit 6.
17 34. Defendant makes, uses, sells, offers for sale, and/or imports into the
18 United States, products that infringe each of the D807, D485, and ’316 Patents.
19 35. Infringement of a design patent is determined under the Ordinary
20 Observer Test: “[I]f, in the eye of an ordinary observer, giving such attention as a
21 purchaser usually gives, two designs are substantially the same, if the resemblance
22 is such as to deceive such an observer, inducing him to purchase one supposing it to
23 be the other, the first one patented is infringed by the other.” Egyptian Goddess,
24 Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) (en banc) (quoting Gorham
25 Co. v. White, 81 U.S. 511, 528 (1871)). Application of the Ordinary Observer Test
26 focuses on the overall appearance of the design, rather than particular elements, and
27 often undertakes a side-by-side visual comparison.
28 36. Defendant makes, uses, sells, offers for sale, and/or imports into the

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1 United States products that infringe the D807 Patent, including, for example, the
2 Oval Open Top trash can product (HLS13STV/HLS16STV) shown for example on
3 Page 4 of the 2020 Product Catalog.
4 37. Defendant markets and promotes its Oval Open Top trash can products
5 as having an “oval open top,” as for example shown on page 4 of the 2020 Product
6 Catalog.
7 38. Defendant makes, uses, sells, offers for sale, and/or imports into the
8 United States products that infringe the D485 Patent, including, for example, the
9 Open Top Recycle Bin/Trash Can (HLS05DRO) shown for example on Page 4 of
10 the 2020 Product Catalog.
11 39. The ’316 Patent describes and claims an improved trash can assembly.
12 For example, claim 1 of the ’316 Patent is directed to a trash can assembly,
13 comprising: a shell having a top end and a bottom end, the shell having a metal
14 enclosing wall that defines a periphery, the enclosing wall having a recess at its
15 bottom end; a curved recess panel, separate from the shell, that is fitted in the recess,
16 the curved recess panel made of a non-metal material; a lid fitted over the top end;
17 a foot pedal partially positioned in the recess panel, with a portion of the foot pedal
18 positioned inside the periphery of the shell; and a link assembly coupling the foot
19 pedal and the lid.
20 40. Defendant makes, uses, sells, offers for sale, and/or imports into the
21 United States products, including for example the Trash Can with AirStep
22 Technology (HLS13SS/HLS18SS) shown on page 3 of the Product Catalog and
23 Pedal-Sensor Trash Can Black, Red, or White Trim
24 (HLS13SB/HLS13SR/HLS13SW) shown on page 6 of the Product Catalog
25 (“Accused Step Products”), that infringe at least one claim of the ’316 Patent.
26 41. For example, as annotated in the below-referenced photographs of an
27 exemplary Accused Step Product, the product is a trash can assembly that has a shell
28 having a top end and a bottom end, the shell having a metal enclosing wall that

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1 defines a periphery. The enclosing wall of the shell has a recess at its bottom end.
2 A plastic curved recess panel, which is separate from the shell, fits in the recess of
3 the enclosing wall. The Accused Step Product also includes a lid that is fitted over
4 the top end of the shell. The Accused Step Product includes a foot pedal partially
5 positioned in the recess panel, with a portion of the foot pedal positioned inside the
6 periphery of the shell. The Accused Step Product also has a link assembly that
7 couples the foot pedal to the lid.
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23 42. simplehuman is informed and believes and, based thereon, alleges that
24 Defendant Shek is also the CEO of iTouchless Housewares and Products, Inc.
25 (“iTouchless”). Defendant had actual notice of each of the D807, D485, and ’316
26 Patents, for example, at least through the filing of the complaint in the action
27 captioned simplehuman, LLC v. iTouchless Housewares and Products, Inc. (C.A.
28 4:19-cv-02701-HSG) filed in this district on May 17, 2019 (“iTouchless N.D.

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1 Action”).
2 43. Despite having actual notice of the patents, Defendant continues to
3 make, use, sell, offer for sale, and/or import into the United States products that
4 infringe each of the D807, D485, and ’316 Patents including, for example, the
5 infringing products identified above.
6 44. By continuing to make, use, sell, offer for sale, and/or import into the
7 United States products that infringe each of the D807, D485, and ’316 Patents with
8 actual notice of these patents, Defendant’s actions constitute willful and intentional
9 infringement.
10 45. simplehuman has also filed an action captioned simplehuman, LLC v.
11 iTouchless Housewares and Products, Inc. (C.A. 2:19-cv-02351-MWF-KS) in the
12 United States District Court for the Central District of California against iTouchless
13 for infringement of the Bullet Trade Dress and related causes of action (“iTouchless
14 C.D. Action”).
15 46. Although iTouchless sells products under marks that are owned by
16 iTouchless and sells products under the HaloTM mark on a website that is purportedly
17 owned by iTouchless, the HLS Commercial Mark is owned by Michael Shek in his
18 personal capacity. Further, there are no markings on the HLS Commercial website
19 to indicate that it is affiliated with iTouchless. simplehuman is informed and
20 believes and, based thereon, alleges that the products sold by HLS Commercial and
21 iTouchless are separate products sold by separate entities. Accordingly, under 35
22 U.S.C. § 299, simplehuman cannot add Michael Shek to the iTouchless N.D. Action
23 because simplehuman’s right to relief is not asserted against both Michael Shek and
24 iTouchless “jointly, severally, or in the alternative with respect to or arising out of
25 the same transaction, occurrence, or series of transactions or occurrences relating to
26 the making, using, importing into the United States, offering for sale, or selling of
27 the same accused product.”
28 47. Moreover, simplehuman could not have sought to add Michael Shek to

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1 the iTouchless C.D. Action because this action does not arise out of the same nucleus
2 of operative fact as the iTouchless C.D. Action and, under 35 U.S.C. § 1400(b), the
3 Central District of California is not the proper venue for simplehuman’s claims for
4 patent infringement.
5 48. Defendant Shek’s actions of trademark infringement, trade dress
6 infringement, design patent infringement, and attempts to register marks that are
7 confusingly similar to simplehuman’s registered trademarks display a concerted and
8 consistent attempt to pass off his products as simplehuman’s products and to
9 misappropriate the immense goodwill that simplehuman has spent enormous time,
10 effort, and expense to cultivate in the marketplace.
11 49. Defendant’s acts complained of herein have caused simplehuman to
12 suffer irreparable injury to its business. simplehuman will continue to suffer
13 substantial loss and irreparable injury unless and until Defendant is enjoined from
14 its wrongful actions complained of herein.
15 V. FIRST CLAIM FOR RELIEF
16 (Patent Infringement under 35 U.S.C. § 271)
17 50. simplehuman repeats and re-alleges the allegations of paragraphs 1-49
18 of the Amended Complaint as if set forth fully herein.
19 51. This is a claim for patent infringement under 35 U.S.C. § 271.
20 52. Defendant, through his agents, employees, and/or servants has
21 infringed, and continues to infringe, the D807 Patent by making, using, selling,
22 offering for sale, and/or importing products, including for example the Oval Open
23 Top products (HLS13STV/HLS16STV) (“Accused Oval Product”) products shown
24 for example on page 4 of the 2020 Product Catalog, that have a design that infringes
25 the D807 Patent. For example, the side-by-side visual comparison of
26 simplehuman’s patented design shown in the D807 Patent and one of Defendant’s
27 Accused Oval Products shown below establishes that in the eye of an ordinary
28 observer, giving such attention as a purchaser usually gives, the design of

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1 Defendant’s Accused Oval Products is substantially the same as the claimed design
2 of the D807 Patent, because the resemblance is such as to deceive such an observer
3 inducing him to purchase one supposing it to be the other. The D807 Patent states
4 on its face that “[a]ll features illustrated in phantom line are expressly disclaimed
5 and form no part of the claimed design.” As shown in the side-by-side visual
6 comparison below, Defendant infringes the D807 Patent.
7
Accused Oval Top U.S. Design Patent No. D644,807 C1
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53. Defendant, through his agents, employees, and/or servants has
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infringed, and continues to infringe, the D485 Patent by making, using, selling,
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offering for sale, and/or importing products, including for example the Open Top
23
Recycle Bin/Trash Can (HLS05DRO) series of products shown for example on page
24
5 of the 2020 Product Catalog, that have a design that infringes the D485 Patent.
25
For example, the side-by-side visual comparison of simplehuman’s patented design
26
shown in the D485 Patent and one of Defendant’s Open Top Recycle Bin/Trash Can
27
products shown below establishes that in the eye of an ordinary observer, giving
28

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1 such attention as a purchaser usually gives, the design of Defendant’s Open Top
2 Recycle Bin/Trash Can is substantially the same as the claimed design of the D485
3 Patent, because the resemblance is such as to deceive such an observer inducing him
4 to purchase one supposing it to be the other. As a result, Defendant infringes the
5 D485 Patent.
6 U.S. Design Patent No.
Open Top Recycle Bin/Trash Can
7 D729,485 S
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54. Defendant, through his agents, employees, and/or servants has
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infringed, and continues to infringe, the ’316 Patent, either literally or under the
21
doctrine of equivalents, through, for example, the manufacture, use, sale, offer for
22
sale, and/or importation into the United States of the Accused AirStep Product.
23
55. For example, the Accused Step Products each infringe at least Claim 1
24
of the ’316 Patent because each of the Accused Step Products is a trash can assembly
25
that has a shell having a top end and a bottom end, the shell having a metal enclosing
26
wall that defines a periphery. The enclosing wall of the shell has a recess at its
27
bottom end. Each of the Accused Step Products includes a non-metallic, plastic
28

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1 curved recess panel, which is separate from the shell. The recess panel fits in the
2 recess of the enclosing wall. Each of the Accused Step Products also includes a lid
3 that fits over the top end of the shell. Each of the Accused Step Products includes a
4 foot pedal that is at least partially positioned inside the recess panel, with a portion
5 of the foot pedal positioned inside the periphery of the shell. Each of the Accused
6 Step Products also has a link assembly that couples the foot pedal to the lid.
7 56. As a direct and proximate result of Defendant’s acts of infringement,
8 Defendant has derived and received gains, profits, and advantages in an amount that
9 is not presently known to simplehuman.
10 57. Pursuant to 35 U.S.C. § 284, simplehuman is entitled to damages for
11 Defendant’s infringing acts and treble damages together with interests and costs as
12 fixed by this Court.
13 58. Pursuant to 35 U.S.C. § 289, simplehuman is entitled, at its election, to
14 Defendant’s total profits from the infringement of simplehuman’s design patents.
15 59. Pursuant to 35 U.S.C. § 285, simplehuman is entitled to reasonable
16 attorneys’ fees for the necessity of bringing this claim.
17 60. Due to the aforesaid infringing acts, simplehuman has suffered great
18 and irreparable injury, for which simplehuman has no adequate remedy at law.
19 61. Defendant will continue to willfully infringe and induce infringement
20 of simplehuman’s patent rights to the great and irreparable injury of simplehuman,
21 unless enjoined by this Court.
22 VI. SECOND CLAIM FOR RELIEF
23 (Federal Trade Dress Infringement)
24 (15 U.S.C. § 1125(a))
25 62. simplehuman repeats and re-alleges the allegations of paragraphs 1-49
26 of this Complaint as if set forth fully herein.
27 63. This is a claim for trade dress infringement under 15 U.S.C. § 1125(a).
28 64. As a result of the widespread use and promotion of simplehuman’s

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1 Bullet Trade Dress, the Bullet Trade Dress has acquired secondary meaning to
2 consumers and potential consumers, in that consumers and potential consumers have
3 come to associate the Bullet Trade Dress with simplehuman.
4 65. Subsequent to simplehuman’s use and adoption of the Bullet Trade
5 Dress, and the development of secondary meaning in that trade dress, Defendant has
6 developed, manufactured, imported, promoted, offered for sale, and/or sold products
7 that use trade dress that is confusingly similar to the Bullet Trade Dress. An example
8 of Defendant’s infringing use of the Bullet Trade Dress, as found on pages 3-4 of
9 the 2020 Product Catalog, is shown below.
10 Round Open Top Trash Can simplehuman’s Bullet Trash Can
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19 66. simplehuman is informed and believes, and based thereon alleges, that
20 Defendant had actual knowledge of simplehuman’s ownership and prior use of the
21 Bullet Trade Dress.
22 67. simplehuman is informed and believes, and based thereon alleges, that
23 Defendant infringed simplehuman’s Bullet Trade Dress rights with the intent to
24 unfairly compete with simplehuman, to trade upon simplehuman’s reputation and
25 goodwill by causing confusion and mistake among customers and the public, and to
26 deceive the public into believing that Defendant’s products are associated with,
27 sponsored by, originated from, or are approved by simplehuman, when they are not,
28 resulting in a loss of reputation in, and mischaracterization of, simplehuman’s

COMPLAINT; DEMAND FOR JURY TRIAL -16- CASE NO. 20-CV-754


Case 3:20-cv-00754 Document 1 Filed 01/31/20 Page 18 of 30

1 products and its brand.


2 68. Defendant’s activities constitute willful and intentional infringement of
3 simplehuman’s trade dress rights in total disregard of simplehuman’s proprietary
4 rights and were done despite Defendant’s knowledge that use of the Bullet Trade
5 Dress was and is in direct contravention of simplehuman’s rights.
6 69. simplehuman is informed and believes, and based thereon alleges, that
7 Defendant has derived and received, and will continue to derive and receive, gains,
8 profits, and advantages from Defendant’s trade dress infringement in an amount that
9 is not presently known to simplehuman. By reason of Defendant’s actions,
10 constituting trade dress infringement, simplehuman has been damaged and is
11 entitled to monetary relief in an amount to be determined at trial.
12 70. Pursuant to 15 U.S.C. § 1117, simplehuman is entitled to recover
13 (1) Defendant’s profits, (2) any damages sustained by simplehuman, and (3) the
14 costs of the action. In assessing damages, the Court may enter judgment up to three
15 times actual damages, and in awarding profits, the Court may in its discretion enter
16 judgment for such a sum as the court shall find to be just according to the
17 circumstances of the case. The Court may also award simplehuman its reasonable
18 attorneys’ fees for the necessity of bringing this claim.
19 71. Due to Defendant’s actions, constituting trade dress infringement,
20 simplehuman has suffered great and irreparable injury, for which simplehuman has
21 no adequate remedy at law.
22 72. Defendant will continue to infringe simplehuman’s trade dress rights
23 to the great and irreparable injury of simplehuman, unless and until Defendant is
24 enjoined by this Court.
25 VII. THIRD CLAIM FOR RELIEF
26 (Trademark Infringement under 15 U.S.C. § 1114)
27 73. simplehuman repeats and re-alleges the allegations of paragraphs 1-72
28 of this Complaint as if set forth fully herein.

COMPLAINT; DEMAND FOR JURY TRIAL -17- CASE NO. 20-CV-754


Case 3:20-cv-00754 Document 1 Filed 01/31/20 Page 19 of 30

1 74. This is a claim for trademark infringement under 15 U.S.C. § 1114.


2 75. simplehuman owns a valid and enforceable federally registered
3 trademark for the SIMPLEHUMAN® Mark, specifically the ’479 Registration.
4 76. Defendant has used in commerce, without permission from
5 simplehuman, a confusingly similar mark to the SIMPLEHUMAN® Mark, which
6 is the subject of the ’479 Registration, in connection with the advertising, marketing,
7 promotion, sale, and/or offer for sale of Defendant’s products. Such use is likely to
8 cause confusion or mistake, or to deceive.
9 77. simplehuman is informed and believes, and based thereon alleges that
10 Defendant acted with the intent to trade upon simplehuman’s reputation and
11 goodwill by causing confusion and mistake among customers and the public and to
12 deceive the public into believing that Defendant’s products are associated with,
13 sponsored by, originate from, or are approved by, simplehuman, when they are not.
14 78. Defendant’s activities complained of herein constitute willful and
15 intentional infringement of simplehuman’s incontestable registered trademark.
16 79. simplehuman is informed and believes, and based thereon alleges that
17 Defendant had actual knowledge of simplehuman’s ownership and prior use of the
18 SIMPLEHUMAN® Mark, and that Defendant has willfully infringed
19 simplehuman’s trademark rights under 15 U.S.C. § 1114.
20 80. Defendant, by his actions, has damaged simplehuman in an amount to
21 be determined at trial.
22 81. Defendant, by his actions, has irreparably injured simplehuman. Such
23 irreparable injury will continue unless Defendant is preliminarily and permanently
24 enjoined by this Court from further violating simplehuman’s rights, for which
25 simplehuman has no adequate remedy at law.
26 VIII. FOURTH CLAIM FOR RELIEF
27 (False Designation of Origin & Federal Unfair Competition)
28 (15 U.S.C. § 1125(a))

COMPLAINT; DEMAND FOR JURY TRIAL -18- CASE NO. 20-CV-754


Case 3:20-cv-00754 Document 1 Filed 01/31/20 Page 20 of 30

1 82. simplehuman repeats and re-alleges the allegations of paragraphs 1-81


2 of this Complaint as if set forth fully herein.
3 83. This is a claim for unfair competition and false designation of origin
4 under 15 U.S.C. § 1125(a) based on Defendant’s infringement of the Bullet Trade
5 Dress and the SIMPLEHUMAN® Mark and Defendant’s attempts to mislead
6 consumers into believing there is an association between simplehuman and
7 Defendant by using marks that are confusingly similar to simplehuman’s trademarks
8 and by selling copies of simplehuman’s products.
9 84. Defendant’s acts complained of herein constitute false designation of
10 origin, false or misleading description of fact, or false or misleading representation
11 of fact, which is likely to cause confusion, or to cause mistake, or to deceive as to
12 the affiliation, connection, or association of such person with another person, or as
13 to the origin, sponsorship, or approval of its goods or commercial activities by
14 another person in violation of 15 U.S.C. § 1125(a).
15 85. Defendant’s acts complained of herein constitute false designation of
16 origin, false or misleading description of fact, or false or misleading representation
17 of fact, which misrepresents the nature, characteristics, qualities, or geographic
18 origin of his goods or commercial activities in violation of 15 U.S.C. § 1125(a).
19 86. Defendant has falsely designated the origin of his products as
20 originating from simplehuman and competed unfairly with simplehuman.
21 87. simplehuman is informed and believes that Defendant’s acts of false
22 designation of origin, passing off, and unfair competition have been willful and
23 without regard to simplehuman’s rights.
24 88. simplehuman has been damaged by Defendant’s conduct in an amount
25 to be determined at trial.
26 89. Such conduct by Defendant is likely to confuse, mislead, and deceive
27 Defendant’s customers, purchasers, and members of the public as to the origin of
28 Defendant’s products or cause said persons to believe that Defendant and/or his

COMPLAINT; DEMAND FOR JURY TRIAL -19- CASE NO. 20-CV-754


Case 3:20-cv-00754 Document 1 Filed 01/31/20 Page 21 of 30

1 products have been sponsored, approved, authorized, or licensed by simplehuman


2 or are in some way affiliated or connected with simplehuman, all in violation of 15
3 U.S.C. § 1125(a), and this constitutes unfair competition with simplehuman.
4 90. simplehuman is informed and believes and, based thereon, alleges that
5 Defendant’s actions were undertaken willfully with full knowledge of the falsity of
6 such designation of origin, passing off, and false descriptions or representations.
7 91. simplehuman is informed and believes and, based thereon, alleges that
8 Defendant has derived and received, and will continue to derive and receive, gains,
9 profits, and advantages from Defendant’s false designation of origin, false or
10 misleading statements, descriptions of fact, false or misleading representations of
11 fact, passing off, and unfair competition in an amount that is not presently known to
12 simplehuman. By reason of Defendant’s actions, constituting false designation of
13 origin, false or misleading statements, false or misleading descriptions of fact, false
14 or misleading representations of fact, passing off, and unfair competition,
15 simplehuman has been damaged and is entitled to monetary relief in an amount to
16 be determined at trial.
17 92. Pursuant to 15 U.S.C. § 1117, simplehuman is entitled to recover
18 (1) Defendant’s profits, (2) any damages sustained by simplehuman, and (3) the
19 costs of the action. In assessing damages, the Court may enter judgment up to three
20 times actual damages, and in awarding profits, the Court may in its discretion enter
21 judgment for such sum as the court shall find to be just, according to the
22 circumstances of the case. The Court may also award simplehuman its reasonable
23 attorneys’ fees for the necessity of bringing this claim.
24 93. Due to Defendant’s actions, constituting false designation of origin,
25 false or misleading statements, false or misleading description of fact, false or
26 misleading representations of fact, passing off, and unfair competition,
27 simplehuman has suffered and continues to suffer great and irreparable injury, for
28 which simplehuman has no adequate remedy at law.

COMPLAINT; DEMAND FOR JURY TRIAL -20- CASE NO. 20-CV-754


Case 3:20-cv-00754 Document 1 Filed 01/31/20 Page 22 of 30

1 94. Defendant will continue his false designation of origin, false or


2 misleading statements, false or misleading description of fact, false or misleading
3 representations of fact, passing off, and unfair competition, unless and until
4 Defendant is enjoined by this Court.
5 IX. FIFTH CLAIM FOR RELIEF
6 (Unfair Competition under California Business &
7 Professions Code §§ 17200 et seq.)
8 95. simplehuman hereby repeats, realleges, and incorporates by reference
9 paragraphs 1-49 and 62-94 of this Complaint as though fully set forth herein.
10 96. This is an action for unfair competition under California Business &
11 Professions Code §§ 17200, et seq.
12 97. By virtue of the acts complained of herein, Defendant has intentionally
13 caused a likelihood of confusion among consumers and the public and has unfairly
14 competed with simplehuman in violation of Cal. Bus. & Prof. Code §§ 17200, et
15 seq.
16 98. Defendant’s acts complained of herein constitute trade dress
17 infringement, trademark infringement, unfair competition, and unlawful, unfair, or
18 malicious business practices, which have injured and damaged simplehuman.
19 99. Defendant, by his actions, has irreparably injured simplehuman. Such
20 irreparable injury will continue unless Defendant is preliminarily and permanently
21 enjoined by this Court from further violating simplehuman’s rights, for which
22 simplehuman has no adequate remedy at law.
23 X. SIXTH CLAIM FOR RELIEF
24 (California Common Law Unfair Competition)
25 100. simplehuman hereby repeats, realleges, and incorporates by reference
26 paragraphs 1-49 and 62-94 of this Complaint as though fully set forth herein.
27 101. This is an action for unfair competition under the common law of the
28 State of California.

COMPLAINT; DEMAND FOR JURY TRIAL -21- CASE NO. 20-CV-754


Case 3:20-cv-00754 Document 1 Filed 01/31/20 Page 23 of 30

1 102. Defendant’s acts complained of herein constitute trade dress


2 infringement, trademark infringement and unfair competition under the common
3 law of the State of California.
4 103. By virtue of the acts complained of herein, Defendant has willfully and
5 intentionally caused a likelihood of confusion among the purchasing public in this
6 Judicial District and elsewhere, thereby unfairly competing with simplehuman in
7 violation of the common law of the State of California.
8 104. Defendant’s aforementioned acts have damaged simplehuman in an
9 amount to be determined at trial.
10 105. Defendant has irreparably injured simplehuman. Such irreparable
11 injury will continue unless Defendant is preliminarily and permanently enjoined by
12 this Court from further violating simplehuman’s rights, for which simplehuman has
13 no adequate remedy at law.
14 106. Defendant’s willful acts of unfair competition under California
15 common law constitute fraud, oppression and malice. Accordingly, simplehuman
16 is entitled to exemplary damages pursuant to Cal. Civ. Code Section § 3294(a).
17 XI. SEVENTH CLAIM FOR RELIEF
18 (Petition for Cancellation of U.S. Trademark Registration No. 5,969,114)
19 107. simplehuman hereby repeats, realleges, and incorporates by reference
20 paragraphs 1-49 and 62-94 of this Complaint as though fully set forth herein.
21 108. This is a claim for cancellation of Defendant’s U.S. Trademark
22 Registration No. 5,969,114 under 15 U.S.C. § 1119.
23 109. Long before the first use, filing and registration dates of Defendant’s
24 U.S. Trademark Registration No. 5,969,114, simplehuman has continuously used its
25 SIMPLEHUMAN® Mark in connection with its products, including trash cans. By
26 virtue of simplehuman’s continuous and substantial use of its SIMPLEHUMAN®
27 Mark, the SIMPLEHUMAN® Mark has become a strong identifier of simplehuman
28 and its products, and distinguishes simplehuman’s products from those of others.

COMPLAINT; DEMAND FOR JURY TRIAL -22- CASE NO. 20-CV-754


Case 3:20-cv-00754 Document 1 Filed 01/31/20 Page 24 of 30

1 simplehuman has built up significant and valuable goodwill and fame in its
2 SIMPLEHUMAN® Mark. simplehuman also relies on its U.S. Trademark
3 registrations for its SIMPLEHUMAN® Mark including U.S. Trademark
4 Registration No. 2,882,479.
5 110. simplehuman will be damaged by continued registration of
6 Defendant’s U.S. Registration No. 5,969,114 because the LIVESIMPLE Mark is
7 confusingly similar to the simplehuman’s SIMPLEHUMAN® Mark. Potential
8 purchasers, upon seeing Defendant’s mark shown in the registration, are likely to
9 mistakenly believe that such mark and goods identified in the registration originate
10 with or are connected or associated with, or sponsored, licensed or approved by
11 simplehuman. Thus, the registration and use of the mark shown in U.S. Registration
12 No. 5,969,114 in connection with the goods identified therein are likely to cause
13 confusion, or to cause mistake or to deceive within the meaning of Section 2(d) of
14 the Trademark Act, 15 U.S.C. § 1052(d).
15 111. In view of simplehuman’s prior rights in the SIMPLEHUMAN® Mark,
16 Defendant is not entitled to federal registration of the mark shown in U.S.
17 Registration No. 5,969,114 and this registration should be cancelled.
18 PRAYER FOR RELIEF
19 WHEREFORE, simplehuman prays for judgment against Defendant as
20 follows:
21 A. That the Court enter judgment in favor of simplehuman and against
22 Defendant on all claims for relief alleged herein;
23 B. An Order adjudging Defendant to have infringed each of the D807
24 Patent, the D485 Patent, and the ’316 Patent under 35 U.S.C. § 271;
25 C. A preliminary and permanent injunction enjoining Defendant, his
26 officers, directors, agents, servants, employees, and attorneys, and those persons in
27 active concert or participation with Defendant, from (1) making, using, selling,
28 offering to sell, and/or importing Defendant’s products that Plaintiff identifies herein

COMPLAINT; DEMAND FOR JURY TRIAL -23- CASE NO. 20-CV-754


Case 3:20-cv-00754 Document 1 Filed 01/31/20 Page 25 of 30

1 as infringing simplehuman’s patent rights, and (2) infringing any of the D807 Patent,
2 the D485 Patent, or the ’316 Patent in violation of 35 U.S.C. § 271;
3 D. An Order that Defendant pay to simplehuman actual damages in the
4 form of lost profits, or in the alternative, other damages adequate to compensate for
5 the infringement, but in no event less than a reasonable royalty for the use made of
6 the D807 Patent, the D485 Patent, and the ’316 Patent by Defendant, in accordance
7 with 35 U.S.C. § 284 and/or, at simplehuman’s election, Defendant’s total profits as
8 a result of Defendant’s infringement of simplehuman’s patents, pursuant to 35
9 U.S.C. § 289;
10 E. An Order adjudging that this case is exceptional under 35 U.S.C. § 285
11 and ordering Defendant to pay to simplehuman its reasonable attorney fees incurred
12 in this action;
13 F. That the Court render a final judgment that Defendant has violated the
14 provisions of 15 U.S.C. § 1125(a) by willfully infringing simplehuman’s Bullet
15 Trade Dress, unfairly competing with simplehuman, and falsely designating the
16 origin of his products complained of herein;
17 G. That the Court render a final judgment that Defendant has violated
18 California Business & Professions Code §§ 17200, et seq. and California common
19 law by willfully committing trade dress infringement, and unfairly competing with
20 simplehuman;
21 H. That Defendant, his agents, servants, employees, successors, assigns
22 and attorneys and any related companies, and all persons in active concert or
23 participation with one or more of them, be preliminarily and permanently enjoined
24 and restrained from:
25 i. manufacturing, importing, promoting, displaying, distributing,
26 offering to sell, and/or selling Defendant’s products shown above as
27 infringing the Bullet Trade Dress, or any products that are not colorably
28 different therefrom;

COMPLAINT; DEMAND FOR JURY TRIAL -24- CASE NO. 20-CV-754


Case 3:20-cv-00754 Document 1 Filed 01/31/20 Page 26 of 30

1 ii. using the Bullet Trade Dress, or any other trade dress that is
2 confusingly similar to such trade dress;
3 iii. using the SIMPLEHUMAN® Mark or any other mark that is
4 confusingly similar to the SIMPLEHUMAN® Mark, including without
5 limitation the LIVESIMPLE mark;
6 iv. falsely designating the origin of Defendant’s products;
7 v. passing off his goods as those of simplehuman;
8 vi. unfairly competing with simplehuman in any manner
9 whatsoever;
10 vii. causing a likelihood of confusion or injuries to simplehuman’s
11 business reputation; and
12 viii. manufacturing, importing, promoting, displaying, distributing,
13 offering to sell, and/or selling any products that infringe the Bullet Trade
14 Dress.
15 I. That Defendant be directed to file with this Court and serve on
16 simplehuman within thirty (30) days after the service of the injunction, a report, in
17 writing, under oath, setting forth in detail the manner and form in which it has
18 complied with the injunction pursuant to 15 U.S.C. § 1116;
19 J. That Defendant be required to account to simplehuman for any and all
20 profits derived by Defendant by virtue of Defendant’s acts complained of herein;
21 K. That simplehuman be awarded its actual damages caused by
22 Defendant’s acts complained of herein;
23 L. That Defendant’s actions be deemed willful;
24 M. That an accounting be ordered to determine Defendant’s profits
25 resulting from his trade dress infringement, trademark infringement, false
26 designation of origin, passing off, and unfair competition, and that simplehuman be
27 awarded monetary relief in an amount to be fixed by the Court in its discretion as it
28 finds just as an equitable remedy and as a remedy under 15 U.S.C. § 1117, including:

COMPLAINT; DEMAND FOR JURY TRIAL -25- CASE NO. 20-CV-754


Case 3:20-cv-00754 Document 1 Filed 01/31/20 Page 27 of 30

1 1. all profits received by Defendant from sales and revenues of any


2 kind made as a result of his infringing actions;
3 2. all damages sustained by simplehuman as a result of Defendant’s
4 acts of trade dress infringement, trademark infringement, false
5 designation of origin, passing off, and unfair competition; and,
6 3. the costs of this action;
7 N. That this case be deemed exceptional and the amount of profits and
8 damages be increased by as many times as the Court deems appropriate, pursuant to
9 15 U.S.C. § 1117;
10 O. That the Court award simplehuman its reasonable costs, expenses, and
11 attorneys’ fees pursuant to at least 15 U.S.C. § 1117;
12 P. That Defendant be required to deliver and destroy all goods,
13 advertising, and other unauthorized materials bearing trade dress that are essentially
14 identical to, colorable imitations of, or confusingly similar to simplehuman’s Bullet
15 Trade Dress, pursuant to 15 U.S.C. § 1118;
16 Q. That simplehuman be awarded exemplary or punitive damages
17 pursuant to Cal. Civ. Code § 3294;
18 R. That the Court direct the United States Patent and Trademark Office to
19 cancel U.S. Trademark Registration No. 5,969,114;
20 S. That simplehuman be awarded restitution and disgorgement;
21 T. An Order awarding pre-judgment and post-judgement interest and costs
22 as fixed by the Court; and
23 U. Such other and further relief as this Court may deem just and proper.
24
25
26
27
28

COMPLAINT; DEMAND FOR JURY TRIAL -26- CASE NO. 20-CV-754


Case 3:20-cv-00754 Document 1 Filed 01/31/20 Page 28 of 30

Respectfully submitted,
1
KNOBBE, MARTENS, OLSON & BEAR, LLP
2
3 Dated: January 31, 2020 By: /s/ Ali S. Razai
4 Paul A. Stewart
Ali S. Razai
5 Nicole R. Townes
6 Brandon F. Smith

7 Attorneys for Plaintiff


simplehuman, LLC
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COMPLAINT; DEMAND FOR JURY TRIAL -27- CASE NO. 20-CV-754


Case 3:20-cv-00754 Document 1 Filed 01/31/20 Page 29 of 30

1 DEMAND FOR TRIAL BY JURY


2 Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff
3 simplehuman, LLC hereby demands a trial by jury on all issues so triable.
4
Respectfully submitted,
5
KNOBBE, MARTENS, OLSON & BEAR, LLP
6
7 Dated: January 31, 2020 By: /s/ Ali S. Razai
8 Paul A. Stewart
Ali S. Razai
9 Nicole R. Townes
10 Brandon F. Smith

11 Attorneys for Plaintiff


simplehuman, LLC
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COMPLAINT; DEMAND FOR JURY TRIAL -28- CASE NO. 20-CV-754


Case 3:20-cv-00754 Document 1 Filed 01/31/20 Page 30 of 30

1 CERTIFICATE OF SERVICE
2 I hereby certify that on January 31, 2020, I caused the FIRST AMENDED
3 COMPLAINT FOR PATENT INFRINGEMENT; DEMAND FOR JURY
4 TRIAL, and EXHIBITS 1-6 to be electronically filed with the Clerk of the Court
5 using the CM/ECF system which will send electronic notification of such filing to
6 all attorneys of record.
7 I certify and declare under penalty of perjury that I am employed in the office
8 of a member of the bar of this Court at whose direction the service was made, and
9 that the foregoing is true and correct.
10 Executed on January 31, 2020, at Irvine, California.
11
12 /s/ Karina Villanueva
Karina Villanueva
13
32132337
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COMPLAINT; DEMAND FOR JURY TRIAL -29- CASE NO. 20-CV-754


Case 3:20-cv-00754 Document 1-1 Filed 01/31/20 Page 1 of 5

EXHIBIT 1
Case 3:20-cv-00754 Document 1-1 Filed 01/31/20 Page 2 of 5

Generated on: This page was generated by TSDR on 2020-01-31 20:15:25 EST
Mark: HLS COMMERCIAL

US Serial Number: 87278610 Application Filing Dec. 22, 2016


Date:
US Registration 5264873 Registration Date: Aug. 15, 2017
Number:
Filed as TEAS RF: Yes Currently TEAS RF: Yes
Register: Principal
Mark Type: Trademark
TM5 Common Status LIVE/REGISTRATION/Issued and Active
Descriptor:
The trademark application has been registered with the Office.

Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Aug. 15, 2017
Publication Date: May 30, 2017

Mark Information
Mark Literal HLS COMMERCIAL
Elements:
Standard Character No
Claim:
Mark Drawing 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
Type:
Description of The mark consists of the stylized wording "HLS COMMERCIAL" with a six sided shield design around the letters "HLS".
Mark:
Color(s) Claimed: Color is not claimed as a feature of the mark.
Disclaimer: "COMMERCIAL"
Design Search 24.01.03 - Shields or crests with letters, punctuation or inscriptions contained therein or superimposed thereon
Code(s):

Goods and Services


Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
Brackets [..] indicate deleted goods/services;
Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
Asterisks *..* identify additional (new) wording in the goods/services.

For: Trash cans; Garbage cans; Soap dispensers; Paper towel dispensers for household use; Napkin dispensers for household use; Toilet
tissue holders
International 021 - Primary Class U.S Class(es): 002, 013, 023, 029, 030, 033, 040, 050
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Dec. 01, 2016 Use in Commerce: Dec. 07, 2016

Basis Information (Case Level)


Filed Use: Yes Currently Use: Yes
Filed ITU: No Currently ITU: No
Filed 44D: No Currently 44E: No
Case 3:20-cv-00754 Document 1-1 Filed 01/31/20 Page 3 of 5

Filed 44E: No Currently 66A: No


Filed 66A: No Currently No Basis: No
Filed No Basis: No

Current Owner(s) Information


Owner Name: MICHAEL SHEK
Owner Address: 777 Mariners Island Blvd., Ste. 125
San Mateo, CALIFORNIA UNITED STATES 94404
Legal Entity Type: INDIVIDUAL Citizenship: UNITED STATES

Attorney/Correspondence Information
Attorney of Record
Attorney Name: Joe McKinney Muncy Docket Number: 5904/0648TUS
Attorney Primary mailroom@mg-ip.com Attorney Email Yes
Email Address: Authorized:
Correspondent
Correspondent JOE MCKINNEY MUNCY
Name/Address: MUNCY, GEISSLER, OLDS & LOWE, P.C.
4000 LEGATO ROAD
SUITE 310
FAIRFAX, VIRGINIA UNITED STATES 22033
Phone: 703-621-7140 Fax: 703-621-7155
Correspondent e- mailroom@mg-ip.com Correspondent e- Yes
mail: mail Authorized:
Domestic Representative - Not Found

Prosecution History
Proceeding
Date Description
Number
Aug. 15, 2017 REGISTERED-PRINCIPAL REGISTER
May 30, 2017 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
May 30, 2017 PUBLISHED FOR OPPOSITION
May 10, 2017 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Apr. 17, 2017 APPROVED FOR PUB - PRINCIPAL REGISTER
Apr. 13, 2017 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Apr. 12, 2017 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Apr. 12, 2017 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Jan. 26, 2017 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Jan. 26, 2017 NON-FINAL ACTION E-MAILED 6325
Jan. 26, 2017 NON-FINAL ACTION WRITTEN 74304
Jan. 25, 2017 ASSIGNED TO EXAMINER 74304
Jan. 06, 2017 NOTICE OF DESIGN SEARCH CODE E-MAILED
Jan. 05, 2017 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Dec. 27, 2016 NEW APPLICATION ENTERED IN TRAM

TM Staff and Location Information


TM Staff Information - None
File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Aug. 15, 2017
Case 3:20-cv-00754 Document 1-1 Filed 01/31/20 Page 4 of 5

Reg. No. 5,264,873 MICHAEL SHEK (UNITED STATES INDIVIDUAL)


777 Mariners Island Blvd., Ste. 125
Registered Aug. 15, 2017 San Mateo, CA 94404

CLASS 21: Trash cans; Garbage cans; Soap dispensers; Paper towel dispensers for household
Int. Cl.: 21 use; Napkin dispensers for household use; Toilet tissue holders

Trademark FIRST USE 12-1-2016; IN COMMERCE 12-7-2016

Principal Register The mark consists of the stylized wording "HLS COMMERCIAL" with a six sided shield
design around the letters "HLS".

No claim is made to the exclusive right to use the following apart from the mark as shown:
"COMMERCIAL"

SER. NO. 87-278,610, FILED 12-22-2016


MARK V SPARACINO, EXAMINING ATTORNEY
Case 3:20-cv-00754 Document 1-1 Filed 01/31/20 Page 5 of 5
REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.

Requirements in the First Ten Years*


What and When to File:

First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the
registration will continue in force for the remainder of the ten-year period, calculated from the registration
date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.

Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.

Requirements in Successive Ten-Year Periods*


What and When to File:

You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal
between every 9th and 10th-year period, calculated from the registration date.*

Grace Period Filings*

The above documents will be accepted as timely if filed within six months after the deadlines listed above with
the payment of an additional fee.

*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an


extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
The time periods for filing are based on the U.S. registration date (not the international registration date). The
deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations
do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
international registration at the International Bureau of the World Intellectual Property Organization, under
Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the
international registration, see http://www.wipo.int/madrid/en/.

NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
USPTO website for further information. With the exception of renewal applications for registered
extensions of protection, you can file the registration maintenance documents referenced above online at h
ttp://www.uspto.gov.

NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
owners/holders who authorize e-mail communication and maintain a current e-mail address with the
USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
available at http://www.uspto.gov.

Page: 2 of 2 / RN # 5264873
Case 3:20-cv-00754 Document 1-2 Filed 01/31/20 Page 1 of 7

EXHIBIT 2
Case 3:20-cv-00754 Document 1-2 Filed 01/31/20 Page 2 of 7

Decorative Waste
Receptacles

Contact your HLS Commercial®


representative or call
(844) 660-7978 for pricing
and product details.

hlscommercial.com
Case 3:20-cv-00754 Document 1-2 Filed 01/31/20 Page 3 of 7

NEW PRODUCTS FOR 2020!


Introducing new commercial-grade, affordable, decorative stainless
steel waste and recycling receptacles for Class A properties.
Attractive and easy to service solutions for office, residential,
healthcare, and more.
21 G / 80 L
16” L x 10.25” W x 34” H
(each)

3 G / 10 L
13.5" L x 6.5" W x 15.5" H

Rectangular Open Top


Slim Step Pedal Trash Can Trash / Recycle / Compost
(HLSS03R) (set of three: HLS21UOTTRIO)

17 G / 64 L
16” L x 16” W x 25.5” H

Round Swing Top Trash Can


(HLS17FTS)
Case 3:20-cv-00754 Document 1-2 Filed 01/31/20 Page 4 of 7

Commercial Grade Decorative


Stainless Steel Waste Receptacles
The HLS Commercial® line of waste receptacles combines form
and function. As attractive as they are easy to maintain, the bins
feature a brushed stainless steel or powder-coated finish.

Both the step trash bins and open top trash bins are available in
a variety of sizes and shapes, to complement any setting.

All bins accommodate standard size liners.

Step Pedal Trash Cans


Our step on bins feature durable yet easy to use pedals and gentle,
silent lid closures. Premium quality stainless steel provides a pristine 18 G / 68 L
look that complements any décor. 16.5” L x 12” W x 28.5” H

13.2 G / 50 L 13 G / 49 L
16.75” L x 12.5” W x 26” H 16.5” L x 12” W x 22.25” H

8 G / 30 L
13.7” L x 11.8” W x 25” H

Trash Can with Air Step Technology


1.32 G / 5 L (HLS13SS / HLS18SS)
8.5” L x 7.3” W x 11.8” H

3 G / 10 L
13.5" L x 6.5" W x 15.5" H

Step Trash Can with Plastic Liner Slim Step Pedal Trash Can
(HLSS13R / HLSS08R / HLSS01R) (HLSS03R)
Case 3:20-cv-00754 Document 1-2 Filed 01/31/20 Page 5 of 7
Open Top Trash Cans
Highly attractive and easy to access bins provide the perfect experience for Class A properties.
The high-grade stainless steel is fingerprint-proof and easy to clean.

21 G / 80 L 13 G / 49 L
16” L x 10.25” W x 33” H 14.25” L x 14.25” W x 24.25” H
18 G / 68 L 16 G / 60 L
16” L x 10.25” W x 28.4” H 14.25” L x 14.25” W x 17.25” H
16 G / 61 L 17 G / 64 L
16” L x 10.25” W x 25.3” H 16” L x 16” W x 25.5” H

13 G / 49 L
16” L x 11.5” W x 24.25” H
16 G / 61 L
16” L x 11.5” W x 28.5” H

Rectangular Open Top Trash Can Round Swing Top Trash Can Round / Oval Open Top Trash Can
(HLS21UOT / HLS18UOT / HLS16UOT) (HLS17FTS) (HLS13STR / HLS16STR / HLS13STV / HLS16STV)

9 G / 34 L
15.7” L x 7.9” W x 35.4” H

26 G / 98 L
18.9” L x 18.9” W x 28.7” H

15 G / 57 L
14.9” L x 14.9” W x 31.5” H

Round Beveled Open Top Trash Can Half-Round Side-Entry Trash Can
Stainless Steel and Black Powder-Coated Stainless Steel and Black Powder-Coated Round Open Top Trash Can
(HLSC04G15A / HLSC04G15B) (HLSC01G09A / HLSC01G09B) (HLSC05G26)
Case 3:20-cv-00754 Document 1-2 Filed 01/31/20 Page 6 of 7
Recycle & Compost
Our recycle, compost, and trash solutions make 16 G / 60 L
it easy to separate waste quickly and cleanly. 19.3” L x 15.4” W x 26” H
Color-coded lids and buckets are universally
recognizable to assist proper separation.

Rectangular Open Top


Trash / Recycle / Compost
(set of three: HLS21UOTTRIO)

21 G / 80 L
16” L x 10.25” W x 34” H (each)

Step Trash Can / Recycle Bin with Plastic Liners


(HLSS16R)

5.3 G / 20 L
15.75” L x 10” W x 12” H
Trash
(HLS21UOTTRS)

Recycle
(HLS21UOTREC)

Compost Open Top Recycle Bin / Trash Can


(HLS21UOTCOP) (HLS05DRO)
Case 3:20-cv-00754 Document 1-2 Filed 01/31/20 Page 7 of 7
Sensor-Activated Stainless Steel Waste Receptacles
HLS Commercial® sensor-activated, touchless trash bins are the convenient and hygienic way to dispose of waste.
Enhanced infrared sensor technology allows for hands-free lid open and close, promoting a healthier environment.
We offer a diverse range of size and shape options. The bins fit standard liners.

13 G / 49 L 18 G / 68 L
16.5” L x 11.75” W x 22.25” H 19.25” L x 17.5” W x 28.5” H
23 G / 87 L
19.25” L x 17.5” W x 32.6” H

Round Sensor Trash Can


Stainless Steel
(HLS18RC / HLS23RC)

13 G / 49 L
12.9” L x 10.75” W x 28.25” H
Pedal-Sensor Trash Can
Black, Red, or White Trim
(HLS13SB / HLS13SR / HLS13SW)
Rectangular Sensor Trash Can
Stainless Steel
(HLS13MX)

Accessories

AC Adapter 12 PCS AbsorbX® Odor Filter 3-Pack


(HLSAC12) (HLS12SF3)

4 ” Diameter
Trash

Compost recycle

Vinyl Decals
Trash / Compost / Recycle 3-Pack
(HLSKERTRASH3 / HLSKERCYCLE3 / HLSKERCCOMP3)

Copyright © 2019. All Rights Reserved. HLS Commercial | hlscommercial.com | San Mateo, CA 94404
Case 3:20-cv-00754 Document 1-3 Filed 01/31/20 Page 1 of 2

EXHIBIT 3
Case 3:20-cv-00754 Document 1-3 Filed 01/31/20 Page 2 of 2
Case 3:20-cv-00754 Document 1-4 Filed 01/31/20 Page 1 of 9

EXHIBIT 4
Case 3:20-cv-00754 Document 1-4 Filed 01/31/20 Page 2 of 9
I 1111111111111111 lllll llllll llll lllll 111111111111111 lllll 111111111111111111
US00D644807S

c12) United States Design Patent (10) Patent No.: US D644,807 S


Yang et al. (45) Date of Patent: ** Sep. 6, 2011

(54) SLIM OPEN TRASH CAN D625,068 S * 10/2010 Shannon .......................... D34/1
D627,533 S * 11/2010 Yang eta!. ....................... D34/7
(75) Inventors: Frank Yang, Rancho Palos Verdes, CA
D635,319 S * 3/2011 Meyerhoffer .................... D34/7
(US); Tzu-Hao Wei, Hacienda Heights, * cited by examiner
CA (US); Di-Fong Chang, Torrance, CA
Primary Examiner - Cynthia Ramirez
(US); Po-Ling Huang, Brussels (BE)
(74) Attorney, Agent, or Firm - Monument IP Law Group
(73) Assignee: simplehumans, LLC, Torrance, CA (57) CLAIM
(US) The ornamental design for a slim open trash can, as shown
and described.
(**) Term: 14 Years
DESCRIPTION
(21) Appl. No.: 29/379,789
FIG. 1 shows a front, right, and top perspective view of an
(22) Filed: Nov. 24, 2010 embodiment thereof;
FIG. 2 shows a front elevational view thereof, and the rear
( 51) LOC (9) Cl. . ... ... ... ... .. ... ... ... ... ... .. ... ... ... ... ... .. . 09-09 elevational view is a mirror image thereof;
(52) U.S. Cl. .......................................................... D34/1 FIG. 3 shows a right side elevational view thereof, wherein
( 58) Field of Classification Search . ... ... ... ... .. ... ... D34/1, the left side elevational view is a mirror image thereof;
D34/5, 6, 7, 8, 9, 10, 11; 220/908, 908.1, FIG. 4 shows a top plan view thereof; and,
220/910, 913 FIG. 5 shows a bottom plan view thereof.
See application file for complete search history. All features illustrated in phantom line are expressly dis-
claimed and form no part of the claimed design.
(56) References Cited The trash can in accordance with the present design can have
any length, as indicated by the indefinite line length breaks in
U.S. PATENT DOCUMENTS FIGS. 1-3.
D476,456 S * 6/2003 Englert et al. . .................. D34/7
D623,817 S * 9/2010 Yang eta!. ....................... D34/7 1 Claim, 5 Drawing Sheets
Case 3:20-cv-00754 Document 1-4 Filed 01/31/20 Page 3 of 9

U.S. Patent Sep.6,2011 Sheet 1 of 5 US D644,807 S

FIG. 1
Case 3:20-cv-00754 Document 1-4 Filed 01/31/20 Page 4 of 9

U.S. Patent Sep.6,2011 Sheet 2 of 5 US D644,807 S

FIG. 2

II I\
m I\

l
Case 3:20-cv-00754 Document 1-4 Filed 01/31/20 Page 5 of 9

U.S. Patent Sep.6,2011 Sheet 3 of 5 US D644,807 S

FIG. 3
Case 3:20-cv-00754 Document 1-4 Filed 01/31/20 Page 6 of 9

U.S. Patent Sep.6,2011 Sheet 4 of 5 US D644,807 S

FIG. 4
Case 3:20-cv-00754 Document 1-4 Filed 01/31/20 Page 7 of 9

U.S. Patent Sep.6,2011 Sheet 5 of 5 US D644,807 S

FIG. 5
Case 3:20-cv-00754 Document 1-4 Filed 01/31/20 Page 8 of 9
I 1111111111111111 lllll llllll llll lllll 111111111111111 111111111111111 IIII IIII
US00D644807C 1

c12) EX PARTE REEXAMINATION CERTIFICATE (147th)


Ex Parte Reexamination Ordered under 35 U.S.C. 257
United States Patent c10) Number: US D644,807 Cl
Yang et al. (45) Certificate Issued: Mar. 22, 2019

(54) SLIM OPEN TRASH CAN (52) U.S. Cl.


USPC ............................................................. D34/1
(75) Inventors: Frank Yang, Rancho Palos Verdes, CA (58) Field of Classification Search
(US); Tzu-Hao Wei, Hacienda Heights, USPC ............... D34/5, 6, 7, 8, 9, 10, 11; 220/908,
CA (US); Di-Fong Chang, Torrance,
220/908.1, 910, 913
CA (US); Po-Ling Huang, Brussels
(BE) CPC ......... B65D 2543/00194; B65D 2543/000296;
B65D 2543/00527
(73) Assignee: SIMPLEHUMAN, LLC, Torrance, CA See application file for complete search history.
(US)
(56) References Cited
Supplemental Examination Request:
No. 96/000,201, Feb. 21, 2017 To view the complete listing of prior art documents cited
during the supplemental examination proceeding and the
Reexamination Certificate for: resulting reexamination proceeding for Control Number
Patent No.: Des. 644,807 96/000,201, please refer to the USPTO's public Patent
Issued: Sep. 6, 2011 Application Information Retrieval (PAIR) system under the
Appl. No.: 29/379,789 Display References tab.
Filed: Nov. 24, 2010
(51) LOC (11) Cl. 09-09 Primary Examiner - Philip S Hyder
Case 3:20-cv-00754 Document 1-4 Filed 01/31/20 Page 9 of 9

US D644,807 Cl
1 2
EXPARTE
REEXAMINATION CERTIFICATE
NO AMENDMENTS HAVE BEEN MADE TO
THE PATENT

AS A RESULT OF REEXAMINATION, IT HAS BEEN


DETERMINED THAT:
10
The patentability of 1 is confirmed.

* * * * *
Case 3:20-cv-00754 Document 1-5 Filed 01/31/20 Page 1 of 7

EXHIBIT 5
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EXHIBIT 6
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JS-CAND 44 (Rev. 06/17) Case 3:20-cv-00754 Document 1-7 Filed 01/31/20 Page 1 of 2
CIVIL COVER SHEET
The JS-CAND 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law,
except as provided by local rules of court. This form, approved in its original form by the Judicial Conference of the United States in September 1974, is required for the Clerk of
Court to initiate the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
I. (a) PLAINTIFFS DEFENDANTS
MICHAEL SHEK D/B/A HLS COMMERCIAL, an individual
SIMPLEHUMAN LLC, a California limited liability company
(b) County of Residence of First Listed Plaintiff Los Angeles County of Residence of First Listed Defendant
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
Paul A. Stewart, Ali S. Razai, Nicole R. Townes, and Brandon G. Smith
KNOBBE, MARTENS, OLSON & BEAR, LLP Phone: (949) 760-0404
2040 Main Street, Fourteenth Floor, Irvine, CA 92614

II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
PTF DEF PTF DEF
1 U.S. Government Plaintiff 3 Federal Question Citizen of This State 1 1 Incorporated or Principal Place 4 4
(U.S. Government Not a Party)
of Business In This State
Citizen of Another State 2 2 Incorporated and Principal Place 5 5
2 U.S. Government Defendant 4 Diversity of Business In Another State
(Indicate Citizenship of Parties in Item III)
Citizen or Subject of a 3 3 Foreign Nation 6 6
Foreign Country

IV. NATURE OF SUIT (Place an “X” in One Box Only)


CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
110 Insurance PERSONAL INJURY PERSONAL INJURY 625 Drug Related Seizure of 422 Appeal 28 USC § 158 375 False Claims Act
120 Marine Property 21 USC § 881 423 Withdrawal 28 USC 376 Qui Tam (31 USC
310 Airplane 365 Personal Injury – Product
130 Miller Act Liability 690 Other § 157 § 3729(a))
315 Airplane Product Liability
140 Negotiable Instrument 367 Health Care/ LABOR PROPERTY RIGHTS 400 State Reapportionment
320 Assault, Libel & Slander
150 Recovery of Pharmaceutical Personal 410 Antitrust
330 Federal Employers’ 710 Fair Labor Standards Act 820 Copyrights
Overpayment Of Injury Product Liability 430 Banks and Banking
Liability 720 Labor/Management 830 Patent
Veteran’s Benefits 368 Asbestos Personal Injury 450 Commerce
340 Marine Relations 835 PatentņAbbreviated New
151 Medicare Act Product Liability
345 Marine Product Liability 740 Railway Labor Act Drug Application 460 Deportation
152 Recovery of Defaulted PERSONAL PROPERTY 470 Racketeer Influenced &
350 Motor Vehicle 751 Family and Medical 840 Trademark
Student Loans (Excludes 370 Other Fraud Corrupt Organizations
355 Motor Vehicle Product Leave Act
Veterans) 371 Truth in Lending SOCIAL SECURITY
Liability 790 Other Labor Litigation 480 Consumer Credit
153 Recovery of 380 Other Personal Property 861 HIA (1395ff)
360 Other Personal Injury 791 Employee Retirement 490 Cable/Sat TV
Overpayment Damage Income Security Act 862 Black Lung (923) 850 Securities/Commodities/
of Veteran’s Benefits 362 Personal Injury -Medical
Malpractice 385 Property Damage Product 863 DIWC/DIWW (405(g)) Exchange
160 Stockholders’ Suits Liability IMMIGRATION
864 SSID Title XVI 890 Other Statutory Actions
190 Other Contract 462 Naturalization
CIVIL RIGHTS PRISONER PETITIONS 865 RSI (405(g)) 891 Agricultural Acts
195 Contract Product Liability Application
440 Other Civil Rights HABEAS CORPUS FEDERAL TAX SUITS 893 Environmental Matters
196 Franchise 465 Other Immigration
441 Voting 463 Alien Detainee Actions 895 Freedom of Information
870 Taxes (U.S. Plaintiff or
REAL PROPERTY 442 Employment Act
510 Motions to Vacate Defendant)
210 Land Condemnation 443 Housing/ Sentence 896 Arbitration
871 IRS–Third Party 26 USC
220 Foreclosure Accommodations 530 General § 7609 899 Administrative Procedure
445 Amer. w/Disabilities– Act/Review or Appeal of
230 Rent Lease & Ejectment 535 Death Penalty
Employment Agency Decision
240 Torts to Land OTHER
446 Amer. w/Disabilities–Other 950 Constitutionality of State
245 Tort Product Liability 540 Mandamus & Other Statutes
290 All Other Real Property 448 Education
550 Civil Rights
555 Prison Condition
560 Civil Detainee–
Conditions of
Confinement

V. ORIGIN (Place an “X” in One Box Only)


1 Original 2 Removed from 3 Remanded from 4 Reinstated or 5 Transferred from 6 Multidistrict 8 Multidistrict
Proceeding State Court Appellate Court Reopened Another District (specify) Litigation–Transfer Litigation–Direct File

VI. CAUSE OF Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
35 U.S.C. § 271
ACTION
Brief description of cause:
Patent Infringement of U. S. Patent No. 6,626,316 and U.S. Design Patent Nos. D644,807 S and D729,485 S
VII. REQUESTED IN CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complaint:
COMPLAINT: UNDER RULE 23, Fed. R. Civ. P. JURY DEMAND: Yes No
Permanent Injunction
VIII. RELATED CASE(S), JUDGE DOCKET NUMBER
IF ANY (See instructions):
IX. DIVISIONAL ASSIGNMENT (Civil Local Rule 3-2)
(Place an “X” in One Box Only) SAN FRANCISCO/OAKLAND SAN JOSE EUREKA-MCKINLEYVILLE

DATE 01/31/2020 SIGNATURE OF ATTORNEY OF RECORD /s/ Ali S. Razai


JS-CAND 44 (rev. 07/16) Case 3:20-cv-00754 Document 1-7 Filed 01/31/20 Page 2 of 2

INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS-CAND 44

Authority For Civil Cover Sheet. The JS-CAND 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and
service of pleading or other papers as required by law, except as provided by local rules of court. This form, approved in its original form by the Judicial
Conference of the United States in September 1974, is required for the Clerk of Court to initiate the civil docket sheet. Consequently, a civil cover sheet is
submitted to the Clerk of Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
I. a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and
then the official, giving both name and title.
b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
condemnation cases, the county of residence of the “defendant” is the location of the tract of land involved.)
c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
in this section “(see attachment).”

II. Jurisdiction. The basis of jurisdiction is set forth under Federal Rule of Civil Procedure 8(a), which requires that jurisdictions be shown in
pleadings. Place an “X” in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
(1) United States plaintiff. Jurisdiction based on 28 USC §§ 1345 and 1348. Suits by agencies and officers of the United States are included here.
(2) United States defendant. When the plaintiff is suing the United States, its officers or agencies, place an “X” in this box.
(3) Federal question. This refers to suits under 28 USC § 1331, where jurisdiction arises under the Constitution of the United States, an amendment
to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code
takes precedence, and box 1 or 2 should be marked.
(4) Diversity of citizenship. This refers to suits under 28 USC § 1332, where parties are citizens of different states. When Box 4 is checked, the
citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity
cases.)
III. Residence (citizenship) of Principal Parties. This section of the JS-CAND 44 is to be completed if diversity of citizenship was indicated above.
Mark this section for each principal party.
IV. Nature of Suit. Place an “X” in the appropriate box. If the nature of suit cannot be determined, be sure the cause of action, in Section VI below, is
sufficient to enable the deputy clerk or the statistical clerk(s) in the Administrative Office to determine the nature of suit. If the cause fits more than
one nature of suit, select the most definitive.
V. Origin. Place an “X” in one of the six boxes.
(1) Original Proceedings. Cases originating in the United States district courts.
(2) Removed from State Court. Proceedings initiated in state courts may be removed to the district courts under Title 28 USC § 1441. When the
petition for removal is granted, check this box.
(3) Remanded from Appellate Court. Check this box for cases remanded to the district court for further action. Use the date of remand as the filing
date.
(4) Reinstated or Reopened. Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
(5) Transferred from Another District. For cases transferred under Title 28 USC § 1404(a). Do not use this for within district transfers or
multidistrict litigation transfers.
(6) Multidistrict Litigation Transfer. Check this box when a multidistrict case is transferred into the district under authority of Title 28 USC
§ 1407. When this box is checked, do not check (5) above.
(8) Multidistrict Litigation Direct File. Check this box when a multidistrict litigation case is filed in the same district as the Master MDL docket.
Please note that there is no Origin Code 7. Origin Code 7 was used for historical records and is no longer relevant due to changes in statute.
VI. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
statutes unless diversity. Example: U.S. Civil Statute: 47 USC § 553. Brief Description: Unauthorized reception of cable service.
VII. Requested in Complaint. Class Action. Place an “X” in this box if you are filing a class action under Federal Rule of Civil Procedure 23.
Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
VIII. Related Cases. This section of the JS-CAND 44 is used to identify related pending cases, if any. If there are related pending cases, insert the docket
numbers and the corresponding judge names for such cases.
IX. Divisional Assignment. If the Nature of Suit is under Property Rights or Prisoner Petitions or the matter is a Securities Class Action, leave this
section blank. For all other cases, identify the divisional venue according to Civil Local Rule 3-2: “the county in which a substantial part of the
events or omissions which give rise to the claim occurred or in which a substantial part of the property that is the subject of the action is situated.”
Date and Attorney Signature. Date and sign the civil cover sheet.

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