Case 1:13-cv-02157-DLC Document 29

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IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK

TIMES THREE CLOTHIER, LLC, Plaintiff, v.

SPANX, INC., Defendant.

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CIVIL ACTION NO. 13-cv-02157-DLC-AJP

JOINT CLAIM TERMS CHART

Pursuant to Local Patent Rule 11, Plaintiff TIMES THREE CLOTHIER, LLC (TTC) and Defendant SPANX, INC. (Spanx) hereby respectfully submit this Joint Claim Terms Chart for the Courts consideration. Attached hereto as Exhibit A is TTCs proposed construction for each of the patents-insuit, U.S. Design Patent Nos. D606,285S, D616,627S, D623,377S, D622,477S, D665,558S, and D666,384S (collectively, the Patents-in-Suit), with cross-references to the invalidity and/or infringement contentions disclosures under Local Rules 6 and 7. Attached hereto as Exhibit B is Spanxs proposed construction for each of the Patents-in-Suit, with cross-references to the invalidity and/or infringement contentions disclosures under Local Rules 6 and 7. Attached hereto as Exhibit C is a chart comparing the constructions proposed by both TTC and Spanx.

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Respectfully submitted, this 17th day of October, 2013. STROOCK & STROOCK & LAVAN LLP KING & SPALDING LLP

S/ Steven

B. Pokotilow Steven B. Pokotilow Laura Goldbard George Irah H. Donner Binni N. Shah 180 Maiden Lane New York, NY 10038 (212) 806-5400 Email: SPokotilow@stroock.com Email: LGoldbard@stroock.com Email: IDonner@stroock.com Email: BNShah@stroock.com Attorneys for Plaintiff TIMES THREE CLOTHIER, LLC

s/ Kathleen E. McCarthy Kathleen E. McCarthy (KM-9219) 1185 Avenue of the Americas New York, NY 10036 Tel.: (212) 556-2345 Email: kmccarthy@kslaw.com Natasha H. Moffitt (to be admitted pro hac vice) Laura S. Huffman (to be admitted pro hac vice) 1180 Peachtree Street, NE Atlanta, Georgia 30309 Tel.: (404) 572-4600 Fax: (404) 572-2783 Email: nmoffitt@kslaw.com Email: lhuffman@kslaw.com Attorneys for Defendant SPANX, INC.

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EXHIBIT A

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TTCS PROPOSED CONSTRUCTIONS I. U.S. Design Patent No. D606,285S TTCs Proposed Construction TTCs Citation to Contentions

The ornamental design of a garment as See Defendant Times Three Clothier, LLCs First shown and described in Figures 1 through 6 Amended Initial Disclosures (TTCs First Am. of the 285 Patent. Init. Discl.) filed in Spanx, Inc. v. Times Three Clothier, LLC, Case No. 13-cv-07260 (S.D.N.Y.) Each word in the above proposed (D.I. 27) at 3-4, 11. construction should be given its plain and ordinary meaning.

II.

U.S. Design Patent No. D616,627S TTCs Proposed Construction TTCs Citation to Contentions

The ornamental design of a garment as See TTCs First Am. Init. Discl. at 3-4, 10-11. shown and described in Figures 1 through 6 of the 627 Patent. Each word in the above proposed construction should be given its plain and ordinary meaning.

III.

U.S. Design Patent No. D623,377S TTCs Proposed Construction TTCs Citation to Contentions

The ornamental design of a garment as See TTCs First Am. Init. Discl. at 3-4, 9, 11. shown and described in Figures 1 through 6 of the 377 Patent. Each word in the above proposed construction should be given its plain and ordinary meaning.

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IV.

U.S. Design Patent No. D622,477S TTCs Proposed Construction TTCs Citation to Contentions

The ornamental design of a garment as See TTCs First Am. Init. Discl. at 3-4, 9-11. shown and described in Figures 1 through 6 of the 477 Patent. Each word in the above proposed construction should be given its plain and ordinary meaning.

V.

U.S. Design Patent No. D665,558S TTCs Proposed Construction TTCs Citation to Contentions

The ornamental design of a garment as See TTCs First Am. Init. Discl. at 3-4, 10-11. shown and described in Figures 1 through 6 of the 558 Patent. Each word in the above proposed construction should be given its plain and ordinary meaning.

VI.

U.S. Design Patent No. D666,384S TTCs Proposed Construction TTCs Citation to Contentions

The ornamental design of a garment as See TTCs First Am. Init. Discl. at 3-4, 9-11. shown and described in Figures 1 through 6 of the 384 Patent. Each word in the above proposed construction should be given its plain and ordinary meaning.

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EXHIBIT B

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SPANXS PROPOSED CONSTRUCTIONS I. U.S. Design Patent No. D606,285S Spanxs Proposed Construction An ornamental design for the exterior of a garment having a top section, a center section, and a lower section as shown in Figures 1 through 6 of the 285 Patent, wherein the top section is separated from the center section by a first ornamental line, wholly separate and distinct from any stitching, which first ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; wherein the center section is separated from the lower section by a second ornamental line, wholly separate and distinct from any stitching, which second ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; and wherein the center section and the lower section are made of different materials. The dashed lines depicted in the drawings represent stitching and form no part of the claimed design. Spanxs Citation to Contentions See TTCs First Am. Init. Discl. at 11 (accusing, for example, non-ornamental, functional stitching appearing on the inside of the Top This Tank Style 1847 product).

II.

U.S. Design Patent No. D616,627S Spanxs Proposed Construction Spanxs Citation to Contentions See TTCs First Am. Init. Discl. at 10 (accusing, for example, non-ornamental, functional stitching appearing on the inside of the Top This Cami Style 1846 product); 11 (accusing, for example, non-ornamental, functional stitching appearing on the inside of the Top This Tank Style 1847 product).

An ornamental design for the exterior of a garment having a center section and a lower section as shown in Figures 1 through 6 of the 627 Patent, wherein the center section has a first ornamental line, wholly separate and distinct from any stitching, which first ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; wherein the center section is separated from the lower section by a second

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Spanxs Proposed Construction ornamental line, wholly separate and distinct from any stitching, which second ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; and wherein the center section and the lower section are made of different materials. The dashed lines depicted in the drawings form no part of the claimed design.

Spanxs Citation to Contentions

III.

U.S. Design Patent No. D623,377S Spanxs Proposed Construction Spanxs Citation to Contentions See Invalidity Contentions of Spanx, Inc. at 68-69.

The claim is indefinite.

If the Court determines that the claim is definite See TTCs First Am. Init. Discl. at 9 and capable of construction, however, then (accusing, for example, non-ornamental, Spanx proposes the following construction: functional stitching on the Total Taming Tank An ornamental design for the exterior of a product); 11 (accusing, for example, nongarment having a top section, a center section, ornamental, functional stitching appearing on and a lower section as shown in Figures 1 the inside of the Top This Tank Style 1847 through 6 of the 377 Patent, wherein the top product). section is separated from the center section by a first ornamental line, wholly separate and distinct from any stitching, which first ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; wherein the center section is separated from the lower section by a second ornamental line, wholly separate and distinct from any stitching, which second ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; and wherein the top, center, and lower sections are made of the same material. The dashed lines depicted in the drawings form no part of the claimed design.

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IV.

U.S. Design Patent No. D622,477S Spanxs Proposed Construction Spanxs Citation to Contentions See TTCs First Am. Init. Discl. at 9 (accusing, for example, non-ornamental, functional stitching on the Total Taming Tank product); 10 (accusing, for example, nonornamental, functional stitching appearing on the inside of the Top This Cami Style 1846 product); 11 (accusing, for example, nonornamental, functional stitching appearing on the inside of the Top This Tank Style 1847 product).

An ornamental design for the exterior of a garment having a center section and a lower section as shown in Figures 1 through 6 of the 477 Patent, wherein the center section has a first ornamental line, wholly separate and distinct from any stitching, which first ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; wherein the center section is separated from the lower section by a second ornamental line, wholly separate and distinct from any stitching, which second ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; and wherein the center and lower sections are made of the same material. The dashed lines depicted in the drawings form no part of the claimed design.

V.

U.S. Design Patent No. D665,558S Spanxs Proposed Construction Spanxs Citation to Contentions

The claim is indefinite.

See Invalidity Contentions of Spanx, Inc. at If the Court determines that the claim is definite 69-71. and capable of construction, however, then See TTCs First Am. Init. Discl. at 10 Spanx proposes the following construction: (accusing, for example, non-ornamental, functional stitching appearing on the inside of An ornamental design for the exterior of a the Top This Cami Style 1846 product); 11 garment having a top section, a center section, (accusing, for example, non-ornamental, and a lower section as shown in Figures 1 functional stitching appearing on the inside of through 6 of the 558 Patent, wherein the claimed top section is separated from the center the Top This Tank Style 1847 product). section by a first ornamental line, wholly separate and distinct from any stitching, which first ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in

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Spanxs Proposed Construction Figures 1 through 6; wherein the center section is separated from the lower section by a second ornamental line, wholly separate and distinct from any stitching, which second ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; and wherein the center and lower sections are made of different materials. The dashed lines depicted in the drawings form no part of the claimed design. The dash-dot-dot-dash broken line appearing across a portion of the top section of the garment represents the upper boundary of the claimed design but forms no part of the claimed design.

Spanxs Citation to Contentions

VI.

U.S. Design Patent No. D666,384S Spanxs Proposed Construction Spanxs Citation to Contentions See Invalidity Contentions of Spanx, Inc. at 71-73.

The claim is indefinite.

If the Court determines that the claim is definite See TTCs First Am. Init. Discl. at 9 and capable of construction, however, then (accusing, for example, non-ornamental, Spanx proposes the following construction: functional stitching on the Total Taming Tank An ornamental design for the exterior of a product); 10 (accusing, for example, nongarment having a top section and a center ornamental, functional stitching appearing on section as shown in Figures 1 through 6 of the the inside of the Top This Cami Style 1846 384 Patent, wherein the top section is product); 11 (accusing, for example, nonseparated from the center section by a first ornamental, functional stitching appearing on ornamental line, wholly separate and distinct the inside of the Top This Tank Style 1847 from any stitching, which first ornamental line product). extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; and wherein the center section has a second ornamental line, wholly separate and distinct from any stitching, which second ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6. The dashed lines depicted in the drawings form no part of the claimed design. The dash-4-

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Spanxs Proposed Construction dot-dot-dash broken line appearing across a portion of the top section of the garment represents the upper boundary of the claimed design but forms no part of the claimed design.

Spanxs Citation to Contentions

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EXHIBIT C

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COMPARISON OF THE PARTIES PROPOSED CONSTRUCTIONS I. U.S. Design Patent No. D606,285S TTCs Proposed Construction Spanxs Proposed Construction

The ornamental design of a garment as An ornamental design for the exterior of a garment shown and described in Figures 1 through 6 having a top section, a center section, and a lower of the 285 Patent. section as shown in Figures 1 through 6 of the 285 Patent, wherein the top section is separated Each word in the above proposed from the center section by a first ornamental line, construction should be given its plain and wholly separate and distinct from any stitching, ordinary meaning. which first ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; wherein the center section is separated from the lower section by a second ornamental line, wholly separate and distinct from any stitching, which second ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; and wherein the center section and the lower section are made of different materials. The dashed lines depicted in the drawings represent stitching and form no part of the claimed design.

II.

U.S. Design Patent No. D616,627S TTCs Proposed Construction Spanxs Proposed Construction

The ornamental design of a garment as An ornamental design for the exterior of a garment shown and described in Figures 1 through 6 having a center section and a lower section as of the 627 Patent. shown in Figures 1 through 6 of the 627 Patent, wherein the center section has a first ornamental Each word in the above proposed line, wholly separate and distinct from any construction should be given its plain and stitching, which first ornamental line extends ordinary meaning. around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; wherein the center section is separated from the lower section by a second ornamental line, wholly separate and distinct from any stitching, which second ornamental line extends around the circumference -1NY 74801676

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TTCs Proposed Construction

Spanxs Proposed Construction of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; and wherein the center section and the lower section are made of different materials. The dashed lines depicted in the drawings form no part of the claimed design.

III.

U.S. Design Patent No. D623,377S TTCs Proposed Construction Spanxs Proposed Construction

The ornamental design of a garment as The claim is indefinite. shown and described in Figures 1 through 6 If the Court determines that the claim is definite of the 377 Patent. and capable of construction, however, then Spanx Each word in the above proposed proposes the following construction: construction should be given its plain and An ornamental design for the exterior of a garment ordinary meaning. having a top section, a center section, and a lower section as shown in Figures 1 through 6 of the 377 Patent, wherein the top section is separated from the center section by a first ornamental line, wholly separate and distinct from any stitching, which first ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; wherein the center section is separated from the lower section by a second ornamental line, wholly separate and distinct from any stitching, which second ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; and wherein the top, center, and lower sections are made of the same material. The dashed lines depicted in the drawings form no part of the claimed design.

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IV.

U.S. Design Patent No. D622,477S TTCs Proposed Construction Spanxs Proposed Construction

The ornamental design of a garment as An ornamental design for the exterior of a garment shown and described in Figures 1 through 6 having a center section and a lower section as of the 477 Patent. shown in Figures 1 through 6 of the 477 Patent, wherein the center section has a first ornamental Each word in the above proposed line, wholly separate and distinct from any construction should be given its plain and stitching, which first ornamental line extends ordinary meaning. around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; wherein the center section is separated from the lower section by a second ornamental line, wholly separate and distinct from any stitching, which second ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; and wherein the center and lower sections are made of the same material. The dashed lines depicted in the drawings form no part of the claimed design.

V.

U.S. Design Patent No. D665,558S TTCs Proposed Construction Spanxs Proposed Construction

The ornamental design of a garment as The claim is indefinite. shown and described in Figures 1 through 6 If the Court determines that the claim is definite of the 558 Patent. and capable of construction, however, then Spanx Each word in the above proposed proposes the following construction: construction should be given its plain and An ornamental design for the exterior of a garment ordinary meaning. having a top section, a center section, and a lower section as shown in Figures 1 through 6 of the 558 Patent, wherein the claimed top section is separated from the center section by a first ornamental line, wholly separate and distinct from any stitching, which first ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner

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TTCs Proposed Construction

Spanxs Proposed Construction shown in Figures 1 through 6; wherein the center section is separated from the lower section by a second ornamental line, wholly separate and distinct from any stitching, which second ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; and wherein the center and lower sections are made of different materials. The dashed lines depicted in the drawings form no part of the claimed design. The dash-dot-dot-dash broken line appearing across a portion of the top section of the garment represents the upper boundary of the claimed design but forms no part of the claimed design.

I.

U.S. Design Patent No. D666,384S TTCs Proposed Construction Spanxs Proposed Construction

The ornamental design of a garment as The claim is indefinite. shown and described in Figures 1 through 6 If the Court determines that the claim is definite of the 384 Patent. and capable of construction, however, then Spanx Each word in the above proposed proposes the following construction: construction should be given its plain and An ornamental design for the exterior of a garment ordinary meaning. having a top section and a center section as shown in Figures 1 through 6 of the 384 Patent, wherein the top section is separated from the center section by a first ornamental line, wholly separate and distinct from any stitching, which first ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6; and wherein the center section has a second ornamental line, wholly separate and distinct from any stitching, which second ornamental line extends around the circumference of the exterior of the garment at the location shown and in the manner shown in Figures 1 through 6. The dashed lines depicted in the drawings form no part of the -4-

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TTCs Proposed Construction

Spanxs Proposed Construction claimed design. The dash-dot-dot-dash broken line appearing across a portion of the top section of the garment represents the upper boundary of the claimed design but forms no part of the claimed design.

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