Sie sind auf Seite 1von 64

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 1 of 27

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

MULCAHY LLP

James M. Mulcahy (SBN 213547)

Kevin A. Adams (SBN 239171)

Four Park Plaza, Suite 1230

Irvine, California 92614 Telephone: (949) 252-9377

Facsimile: (949) 252-0090

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA

ELLIOTT GILLESPIE, an individual;

ROCKWOOD SPIRITS

INTERNATIONAL, a Canadian corporation,

Plaintiffs,

v.

PRESTIGE ROYAL LIQUORS,

CORP., a New York corporation; GABRIEL SEZANAYEV a/k/a Gavriyel Sezanayev, an individual;

FUSION GLASSWORKS, LLC, a Florida corporation; and PRIVATE LABEL DISTILLERY, LLC, a

Colorado corporation; and DOES 1

through 10, inclusive.

Defendants.

Case No.

COMPLAINT FOR:

1) Declaratory Judgment of Non- Infringement of the ‘498 patent;

2) Declaratory Judgment of Invalidity and Unenforceability of the ‘498 patent; 3) Breach of Contract; and 4) Design Patent Infringement

DEMAND FOR JURY TRIAL

-1-

 

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 2 of 27

1

Plaintiffs Elliott Gillespie (“GILLESPIE”) and Rockwood Spirits

2

International Inc. (ROCKWOOD SPIRITS”) doing business as GOLD BAR

3

BOTTLE COMPANY and GOLD BAR BOTTLING COMPANY (collectively

4

“Plaintiffs”) hereby sue Defendants Prestige Royal Liquors, Corp. (“PRESTIGE”),

5

Gabriel Sezanayev a/k/a Gavriyel Sezanayev (“SEZANAYEV”), Fusion

6

Glassworks, LLC (“FUSION”) and Private Label Distillery, LLC (“PLD”)

7

(collectively “Defendants”) and avers the following:

 

8

THE PARTIES

9

  • 1. Plaintiff GILLESPIE is an individual who is a resident of Canada and

10

is president of Gold Bar Whiskey and an innovator in the spirits industry.

11

GILLESPIE’s Gold Bar Whiskey was recently awarded a double gold medal at

12

the prestigious San Francisco World Spirits Competition, as well as winning

13

awards for packaging and design. GILLESPIE’s Gold Bar Whiskey has also been

14

featured by various whiskey/spirit websites and is the most innovative up and

15

coming product with its unique design. Plaintiff GILLISPIE has offices in

16

California at 201 Spear Street, San Francisco, California 94105 and has a distillery

17

location at 990 13th St, San Francisco, CA 94130-1222, in California.

18

  • 2. Plaintiff ROCKWOOD SPIRITS is a Canadian company with its

19

principle place of business in Ottawa, Canada. ROCKWOOD SPIRITS is engaged

20

in the business of design, manufacture, production and sale of products. Plaintiff

21

GILLESPIE is the President and majority shareholder of ROCKWOOD SPIRITS.

22

  • 3. On information and belief, Defendant PRESTIGE is a corporation in

23

New York listing a location at 45-47 157 th Street, Flushing, New York, 11355.

24

On information and belief, PRESTIGE is a licensee of U.S. Patent No. D750,498

25

(the ‘498 patent) and U.S. Patent No. D754,545 (the ‘545 patent) and agent of

26

SEZANAYEV, the inventor listed on the ‘498 patent and the ‘545 patent.

27

SEZANAYEV is, upon information and belief, the owner of PRESTIGE, as well

28

as other companies such as Golden Kilos & Co. Inc. who is listed as the owner of

-2-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 3 of 27

  • 1 trademark applications at the United States Patent and Trademark Office.

  • 2 On information and belief, Defendant SEZANAYEV is a citizen of

4.

  • 3 New York and resides at 45-47 157 th Street, Flushing, New York, 11355, and

  • 4 SEZANAYEV is the inventor and licensor of the ‘498 patent and the ‘545 patent.

  • 5 On information and belief, Defendant FUSION is a Florida

5.

  • 6 corporation with a principal place of business at 1322 S.E. 17 th Street, Ft.

  • 7 Lauderdale, FL 33316. FUSION is a custom glass designer and glass broker who

  • 8 assists clients in customized glass bottles, making prototypes, and sourcing

  • 9 packaging through Chinese manufacturers. On information and belief, the owners

  • 10 of Defendant FUSION are Michael Ferchak and Paul Dunning.

  • 11 On information and belief, Defendant PLD is a distillery and bottling

6.

  • 12 facility in Colorado, also owned by Michael Ferchak and Paul Dunning, and

  • 13 related to Defendant FUSION. Upon information and belief, PLD and FUSION

  • 14 together offer glass and distillery services in North America. Defendant PLD is a

  • 15 company that assists clients with the development, growth, distribution, packaging

  • 16 and marketing of spirits with active participation in glass bottle development, via

  • 17 FUSION, from the facilities offices in Colorado and Florida.

  • 18 Plaintiffs are unaware of the true names and capacities of all

7.

  • 19 defendants sued here as Does 1 through 10, inclusive, whether individual,

  • 20 corporate, associate or otherwise, are unknown to Plaintiffs, who therefore sues

  • 21 said defendants by such fictitious names. Plaintiffs will amend this Complaint to

  • 22 allege their true names and capacities when they have been ascertained. Plaintiffs

  • 23 are informed and believes and thereupon alleges, that each of said fictitiously

  • 24 named defendants, is responsible in some manner for the occurrences herein

  • 25 alleged, included as an agent, coconspirator and alter ego of each of the other

  • 26 codefendants, and that Plaintiffs' damages as herein alleged, were proximately

  • 27 caused by the acts and/or omissions of each of them.

  • 28 At all such times herein mentioned, defendants, each of them, were an

8.

-3-

 

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 4 of 27

1

owner, a co-owner, an agent, representative, partner, and/or alter ego of its co-

2

defendants, or otherwise acting on behalf of each and every remaining defendant

3

and, in doing the things hereinafter alleged, were acting within the course and

4

scope of their authorities as an owner, a co-owner, an agent, representative,

5

partner and/or alter ego of its co-defendants, with the full knowledge, permission

6

and consent of each and every remaining defendants, each co-defendant having

7

ratified the acts of the other co-defendants.

 

8

9.

Plaintiffs are informed and believes and, upon such information and

9

belief, alleges that each of the defendants named herein as Does 1 through 10,

10

inclusive, were and are in some manner responsible for the actions, acts and

11

omissions herein alleged, and for the damages caused by the defendants, and are

12

therefore, jointly and severally liable for damages caused to Plaintiffs.

13

  • 10. Plaintiff are informed and believes, upon such information and belief,

14

alleges that each of the defendants, including Does 1 through 10, inclusive, were,

15

at all times herein mentioned, acting in concert with, and in conspiracy with, each

16

and every one of the remaining defendants.

17

NATURE OF THE DISPUTE

18

  • 11. Defendant PRESTIGE has asserted rights under U.S. Patent No.

19

D750,498 (“the ‘498 patent”) based on certain activity of Plaintiff GILLESPIE,

20

and Plaintiff GILLESPIE contends that it has the right to engage in this activity

21

without license. A true and correct copy of the ‘498 patent is attached hereto as

22

Exhibit A. PRESTIGE lacks standing to assert rights under the ‘498 patent.

23

  • 12. Defendants PRESTIGE and SEZANAYEV have wrongly accused

24

Plaintiffs of infringing the ‘498 patent, creating an actual controversy with the

25

jurisdiction of this Court pursuant to 28 U.S.C. §§ 2201-2202 as to the non-

26

infringement, invalidity, and unenforceability of the ‘498 patent.

27

  • 13. On April 26, 2016, U.S. Patent No. D754,545 (the ‘545 patent) was

28

issued to Defendant SEZANAYEV which has the same drawings as the ‘498

-4-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 5 of 27

  • 1 patent. A true and correct copy of the ‘545 patent is attached hereto as Exhibit B.

  • 2 In this action, Plaintiffs seek a declaration, among other things, that:

14.

  • 3 (i) they do not directly or indirectly infringe the ‘498 patent or the ‘545 patent

  • 4 licensed by PRESTIGE and owned by SEZANAYEV, (ii) the ‘498 patent and the

  • 5 ‘545 patent is invalid and unenforceable, (iii) Defendants FUSION and PLD,

  • 6 directly and indirectly through their agents, breached their nondisclosure

  • 7 agreements with Plaintiffs by providing Plaintiffs’ Intellectual Property (“IP”),

  • 8 which includes but is not limited to confidential, proprietary, and trade secret

  • 9 information such as marketing, products, product designs, and product launch

  • 10 timeline, to SEZANAYEV and PRESTIGE, and possibly others, directly or

  • 11 indirectly through their agents and other property pertaining to PlaintiffsGold

  • 12 Bar designs for the bottle packaging to SEZANAYEV and PRESTIGE, and

  • 13 others, (iv) Defendants, and others, are infringing GILLESPIE’s patent, and (v)

  • 14 an order enjoining Defendants from further unlawful conduct and a judgment

  • 15 awarding all damages, punitive damages, as well as costs and attorneys’ fees is

  • 16 warranted.

  • 17 JURISDICTION AND VENUE

  • 18 This is a civil action regarding allegations of patent infringement

15.

  • 19 arising under the patent laws of the United States, Title 35 of the United States

  • 20 Code, in which Plaintiffs seeks declaratory relief under the Declaratory Judgment

  • 21 Act. Thus, the court has subject matter jurisdiction over this action pursuant to 28

  • 22 U.S.C. § 1331, 1338, 2201, and 2202. This action includes a declaratory

  • 23 judgment of patent non-infringement, invalidity and unenforceability arising

  • 24 under the patent laws of the United States, Title 35 of the United States Code.

  • 25 An actual controversy exists between Plaintiffs and Defendants

16.

  • 26 SEZANAYEV and PRESTIGE by virtue of the assertion of rights under the ‘498

  • 27 patent based on certain alleged activity by GILLESPIE. In particular, Defendants

  • 28 SEZANAYEV and PRESTIGE have stated that the ‘498 patent relates to the sale

-5-

 

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 6 of 27

1

of a gold bar shaped container for whiskey in the United States by GILLESPIE.

2

  • 17. GILLESPIE contends that he has the right to engage in making, using,

3

offering to sell, and selling his products, including his Gold Bar® Gold Finished

4

Whiskey product, without a license from Defendants.

 

5

  • 18. The Court has diversity jurisdiction under 28 U.S.C. § 1332 and

6

supplemental jurisdiction over Plaintiffs’ state law claims under 28 U.S.C. § 1367.

7

  • 19. Venue is proper in this judicial district under 28 U.S.C. § 1391 and

8

1400.

9

  • 20. The Court may properly exercise personal jurisdiction over all the

10

Defendants for at least the following reasons:

11

  • a. Defendants SEZANAYEV and PRESTIGE have personally availed

12

themselves of the benefits and protections of California, and Plaintiffs’ claims arise

13

out of Defendants SEZANAYEV and PRESTIGE’s contacts with California.

14

Among other things, they are disseminating advertising in California.

15

SEZANAYEV maintains, as both the registrant and administrative contact, U.S.

16

17

which are accessible in California. Upon information and belief, these websites

18

advertise and direct consumers to purchase through many stores that ship to

19

residents in California, including this judicial district, and elsewhere, through

20

specific retailers. Defendants SEZANAYEV and PRESTIGE also sell products to

21

online shops and retail stores that, in turn, sell their products in California,

22

including this judicial district.

23

  • b. Defendants PLD and FUSION have availed themselves of the benefits

24

and protections of California and both maintain websites (www.fusion-

25

glassworks.com which allows consumers to directly purchase product samples

26

from the website, and www.privatelabeldistillery.com) which are accessible in

27

California and have transacted business in California, including this judicial

28

district. Upon information and belief, Defendants PLD and FUSION and Does 1

-6-

 

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 7 of 27

1

through 10, have conspired with Defendants SEZANAYEV and PRESTIGE, and

2

unknown other Does 1 to 10, directly and indirectly, to commit, and/or have aided,

3

abetted, or otherwise contributed to the wrongful acts and omissions alleged

4

herein.

5

FACTUAL BACKGROUND

 

6

21.

GILLISPIE

is

the

owner of Gold

Bar

Bottle Company and an

7

innovator and creator of the Gold Bar Whiskey which is one of the newest and

8

sought after whiskies that is made in the United States and a winner of recent

9

awards.

  • 10 GILLISPIE filed a patent design application in July of 2009 for a

22.

  • 11 bottle and was granted a US Patent Registration No. D643,298 on August 16, 2011

  • 12 (the “GILLESPIE patent”). A true and correct copy of the GILLESPIE patent is

  • 13 attached hereto as Exhibit C.

 
  • 14 GILLESPIE’s project was known as the “GOLD BAR” project.

23.

  • 15 GILLESPIE owns a U.S. Trademark Reg. No. 4617790 for “GOLD BAR” for

  • 16 “alcoholic beverages and distilled spirits, namely whiskey,” GILLESPIE also has

  • 17 a pending U.S. Trademark Application for “GOLD BAR” Serial No. 86/576,589

  • 18 filed on March 25, 2015 for non-alcoholic and alcoholic beverages.

  • 19 Upon information and belief, Defendants conspired to copy

24.

  • 20 GILLESPIE’s confidential and protected trade secret drawings, idea and

  • 21 information to produce an exact or similar Gold Bar bottle design to GILLESPIE’s

  • 22 Gold Bar Bottle design.

 
  • 23 Defendant SEZANAYEV falsely represented to the United States

25.

  • 24 Patent and Trademark Office (“USPTO”) that he was the original inventor of the

  • 25 claimed invention and patent design when in fact, he was not. This inequitable

  • 26 conduct alone of false representations to the USPTO of inventorship invalidates the

  • 27 ‘498 patent and the ‘545 patent and renders them unenforceable and invalid.

  • 28 As set forth more fully below, upon information and belief, some of

26.

-7-

 

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 8 of 27

1

the initial glass bottle brokers and factories in China, breached their confidential

2

and nondisclosure agreements and gave GILLESPIE’s confidential and trade secret

3

information to the Defendants who in turn used the confiscated materials to file a

4

design patent and produce their own Gold Bar Bottle from the confiscated

5

drawings and production details.

6

GILLESPIE APPROACHES ROCKWOOD & HINES, A

7

EUROPEAN OWNED, CHINA-BASED GLASS

8

BROKER/MANUFACTURER FOR ASSISTANCE IN THE BOTTLE

9

PROJECT

 

10

  • 27. In November 2013, GILLISPIE first approached a glass broker

11

company in China named Rockwood & Hines (no relation to Plaintiff

12

ROCKWOOD SPIRITS) to produce and manufacture his bottle and the parties

13

entered a nondisclosure agreement to protect GILLESPIE’s and ROCKWOOD

14

SPIRIT’s confidential, proprietary, and trade secret information, including bottle

15

and bottle closure designs. Rockwood & Hines agrees to not disclose any designs

16

produced between the parties at any time to any third parties.

17

  • 28. Thereafter, GILLESPIE disclosed his confidential and trade secret

18

designs and confidential trade secret drawings for his Gold Bar bottle.

19

  • 29. The Rockwood & Hines representatives told GILLESPIE that they

20

had never seen a design like GILLESPIE’s Gold Bar Bottle design and thought it

21

was very clever and unique.

22

  • 30. In December 2013, GILLESPIE paid Rockwood & Hines a design fee

23

in which all designs were owned by GILLESPIE. The efforts as part of the design

24

fee were to continue to perfect and develop an acceptable unique bottle design for

25

GILLESPIE that resembled a Gold Bar, as part of GILLESPIE’s vision for his

26

product.

27

  • 31. GILLESPIE and representatives of Rockwood & Hines continued to

28

exchange confidential emails regarding issues related to the design and the issues

-8-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 9 of 27

  • 1 related to the engineering of the bottle in December 2013 (specific to

  • 2 manufacturability based on the China glass factories technical capabilities).

  • 3 Additional confidential emails were exchanged between GILLESPIE

32.

  • 4 and representatives of Rockwood & Hines in 2014 and 2015.

  • 5 In particular, during design and manufacturing trials in 2014 and early

33.

  • 6 March 2015, GILLESPIE and Rockwood & Hines exchanged very detailed emails

  • 7 on the specifications for the Gold Bar Bottle. At this time, Rockwood & Hines

  • 8 told GILLESPIE that he was their top priority from today onward.

  • 9 On March 3, 2015, Rockwood & Hines informed GILLESPIE that

34.

10

they could produce 50,000 units and a final technical drawing was sent to

11

GILLSPIE soon thereafter. These communications and designs would most likely

12

have been exchanged between Rockwood & Hines and the Chinese glass factory

13

where Defendants’ products referred to as the 3 Kilos bottle were eventually

14

produced. However, there were still problems raised by Rockwood & Hines and

15

further exchanges of revised drawings. Sometime thereafter, GILLESPIE stopped

16

working with Rockwood & Hines. However, at all times, Rockwood & Hines was

17

under a confidential and nondisclosure agreement to keep all communications and

18

designs and ideas confidential and protected.

19

35.

Unbeknownst to GILLESPIE, in this same time frame and at least by

20

March 11, 2015, Defendant SEZANAYEV filed his first patent design application

21

with the USPTO for a vodka bottle that is the same or similar to the drawings

22

GILLESPIE was exchanging with Rockwood & Hines and others, even though

23

such drawings and designs were protected under the confidential and nondisclosure

24

agreements signed by the various parties.

25

GILLESPIE APPROACHES FUSION GLASSWORKS AND

26

PRIVATE LABEL DISTILLERY OWNED BY MICHAEL FERCHAK AND

27

PAUL DUNNING

28

36.

In an effort to get another opinion on the confidential designs for his

-9-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 10 of 27

  • 1 bottle GILLESPIE approached FUSION, a US company owned by Michael

  • 2 Ferchak and Paul Dunning.

  • 3 Michael Ferchak, acting on behalf of FUSION and in his individual

37.

  • 4 capacity signed a confidential and nondisclosure agreement in July 2014 (8 months

  • 5 before Defendant SEZANAYEV filed his first patent) for the Gold Bar Bottle

  • 6 project, a true and accurate copy of which is attached as Exhibit D. After the

  • 7 confidentiality and nondisclosure agreement was signed, GILLESPIE shared the

  • 8 confidential and trade secret drawings and the information about the design to get

  • 9 another design opinion from FUSION.

  • 10 Paul Dunning, acting as the Managing Partner of PLD and in his

38.

  • 11 individual capacity also signed a confidential and nondisclosure agreement in

  • 12 October 2014 which covered, inter alia, conversations that included Michael

  • 13 Ferchak both verbally and in writing by email related to blending and bottling

  • 14 services for the gold bar project. A true and accurate copy of that nondisclosure

  • 15 agreement is attached as Exhibit E. An Addendum for the Gold Bar Whiskey

  • 16 Project was signed again in July 2015 where Both Paul Dunning and Michael

  • 17 Ferchak signed the addendum, in their individual capacity and as representatives of

  • 18 FUSION and PLD, a true and accurate copy of which is attached as Exhibit F.

  • 19 As part of the confidential and nondisclosure agreements, Paul

39.

  • 20 Dunning and Michael Ferchak, agreed that they would not share or disclose any IP

  • 21 belonging to Plaintiffs, including but not limited to business strategy, their business

  • 22 relationship, product design, and product launch timeliness. Defendants FUSION

  • 23 and PLD, through their owners, Paul Dunning and Michael Ferchak, agreed that

  • 24 any of their agents, directors, officers, employees, representatives, consultants and

  • 25 advisors were also bound by the nondisclosure agreement. In reliance on the

  • 26 nondisclosure agreements, Plaintiffs shared its IP, including its Gold Bar bottle

  • 27 drawings with Defendants FUSION and PLD in July of 2014 and after.

  • 28 FUSION later reported to GILLESPIE that his Gold Bar Bottle design

40.

-10-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 11 of 27

  • 1 cannot be produced, so GILLESPIE worked to find another glass bottler or design

  • 2 company, but still worked with Paul Dunning and Michael Ferchak from October

  • 3 2014 onward into the fall of 2015. Ongoing discussions between Paul Dunning,

  • 4 Michael Ferchak and GILLESPIE continued regarding the Gold Bar bottle project,

  • 5 potential customers, and the fact that GILLESPIE had a patent on his bottle design.

  • 6 Thereafter, GILLESPIE visited the PLD offices in Colorado in July

41.

  • 7 2015 and spent two days with Paul Dunning making further disclosures of

  • 8 information, showing Paul the physical glass samples of his bottle and pictures of

  • 9 marketing, branding, labels, artwork, line extensions, all of which were covered by

  • 10 the nondisclosure agreement in place regarding the design of the Gold Bar bottles.

  • 11 While GILLESPIE was specifically at the PLD offices to discuss distillery issues

  • 12 relating to the whisky or other spirits, they also discussed the design of the Gold

  • 13 Bar Bottle and other confidential information protected by the nondisclosure

  • 14 agreements. It was on this visit that Paul Dunning informed Plaintiffs that he

  • 15 represented a client named “3 KILOS,” but Plaintiff had no knowledge or reason to

  • 16 believe that at the time any of Plaintiffs IP was disclosed to any other party, let

  • 17 alone to the “3 KILOS” owners. Paul Dunning also stated at this meeting that he

  • 18 was in close contact with an employee of Rockwood & Hines, as he was trying to

  • 19 “poach them” to come work for his company FUSION and that GILLESPIE would

  • 20 be in very good hands as they have knowledge of our product and the transition

  • 21 would be seamless in moving over the project.

  • 22 Upon information and belief, and unbeknownst to Plaintiffs,

42.

  • 23 Defendants FUSION and PLD all violated and breached their confidential and

  • 24 nondisclosure agreements by providing the Gold Bar Bottle designs and other

  • 25 materials and confidential business practices that were proprietary IP of Plaintiffs

  • 26 with Defendants SEZANAYEV and PRESTIGE and/or agents or representatives

  • 27 of Defendants.

  • 28 Plaintiffs later learned that the Chinese Factory was making a bottle

43.

-11-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 12 of 27

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

by FUSION that was similar to Plaintiff’s Gold Bar Bottle as the sample bottle

from China had the FUSION logo on the bottle and the 3 Kilos label on the side of

the sample bottle. See below Fusion Glassworks logo, the June 2015 sample bottle

with the fusion logo, as compared to Defendants’ current product which also has

the FUSION logo directly on the product:

Defendant FUSION’s Logo:

Case 3:16-cv-02392 Document 1 Filed 05/02/16 Page 12 of 27 1 2 3 4 5 6

is on the prototype sample and the final

product.

Case 3:16-cv-02392 Document 1 Filed 05/02/16 Page 12 of 27 1 2 3 4 5 6
  • 44. Thus, by June 2015, Defendants and their agents and representatives

were already working to produce and manufacture GILLESPIE’s Gold Bar Bottle

design to use it in connection with their vodka products, and possibly other spirits,

even whiskey. Upon information and belief, the bottle was rudimentary in terms of

its final design, but more closely matched GILLESPIE’s patent in later product

designs.

  • 45. In August 2015, in an email from Paul Dunning to GILLESPIE, Paul

Dunning, acting on behalf of PLD and FUSION makes it clear that he knows the

factory in which GILLESPIE is producing his Gold Bar Bottles and asks

GILLESPIE when he first produced his bottles.

  • 46. On or about February 6, 2016, Paul Dunning telephoned GILLESPIE

and told him that 3 Kilos brand is placing an order for one million dollars of glass,

a “huge order” as he describes it, and that GILLESPIE “better hurry up to get on

the market” and that FUSION can assist if GILLESPIE has issues with his current

broker. Paul Dunning stated that GILLESPIES’ Gold Bar Bottle is better than the

3 Kilos one and that GILLESPIE’S current supplier has a lot of issues with other

-12-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 13 of 27

  • 1 clients and quality problems. Paul Dunning also advised he would like to quote

  • 2 GILLESPIE on the glass production. Paul Dunning was also asking GILLESPIE

  • 3 in this phone call for all sorts of information on the distillery and GILLESPIE’s

  • 4 release date of his Gold Bar product. Paul Dunning even requested that he buy

  • 5 GILLESPIE’s whiskey inventory at the PLD facility. GILLESPIE sold this

  • 6 inventory to PLD, but has yet to be paid.

  • 7 In March 2016, Plaintiff saw Michael Ferchak at a spirits trade event

47.

  • 8 and Michael Ferchak informed GILLESPIE that he saw Plaintiffsdesign and

  • 9 bottle in China on the shelf at the manufacturer. Michael Ferchak also told

  • 10 GILLESPIE that he does not want any legal problems, which suggested that he

  • 11 knew the SEZANAYEV design for the 3 KILOS bottle was the same or very

  • 12 similar to Plaintiffs’ Gold Bar Whiskey bottle design and that he had illegally and

  • 13 improperly given the information, design drawings and images to SEZANAYEV,

  • 14 or agents or representatives working directly or indirectly with SEZANAYEV and

  • 15 the Chinese Factory. At the same time, Michael Ferchak informed GILLESPIE

  • 16 that “3 KILOS” was just awarded a patent on their bottle design.

  • 17 On April 20, 2016, Paul Dunning approached GILLESPIE in Las

48.

  • 18 Vegas at a trade show. Without any questions or inquiry from GILLESPIE went

  • 19 into a dialogue trying to explain that he is not connected with the 3 Kilos company

  • 20 and trying to distance himself from being involved with the 3 Kilos product. Paul

  • 21 Dunning admitted to GILLESPIE at this time that he was aware of both designs

  • 22 and that there was a looming issue. Paul Dunning also stated that he has “nothing

  • 23 to do with the glass side of the business, that is Michael Ferchak’s business and the

  • 24 two are not connected.However, this was untrue as only Paul Dunning and

  • 25 another employee were representing FUSION at the FUSION booth at the Wine

  • 26 and Spirits Wholesalers Association (WSWA) event in Las Vegas in April 2016.

  • 27 Paul Dunning and Michael Ferchak’s actions individually and on

49.

  • 28 behalf of FUSION and PLD, demonstrate that they have colluded and conspired

-13-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 14 of 27

  • 1 with others, including and not limited to factories in China, to illegally and

  • 2 improperly turn over GILLESPIE’s confidential designs which they took all for

  • 3 personal gain and gave or shared with Defendants PRESTIGE and SEZANAYEV,

  • 4 and their agents and representatives.

  • 5 Meanwhile, upon information and belief PRESTIGE and

50.

  • 6 SEZANAYEV, directly and indirectly through their representatives and agents are

  • 7 spreading false rumors on the Gold Bar Whiskey products stating that Gold Bar

  • 8 Whisky is violating their patent and infringing their patent. This is all untrue and

  • 9 designed to harm GILLESPIE and his launch of his Gold Bar Whiskey product

  • 10 when in reality, it is Defendants who are engaging in bad conduct and who

  • 11 obtained a patent through their inequitable conduct and by stealing GILLESPIE’s

  • 12 designs and ideas.

  • 13 DEFENDANTS CONSPIRED AND COLLUDED TO SHARE THE

  • 14 CONFIDENTIAL DESIGNS AND RUSHED TO FILE DESIGN PATENTS

  • 15 Upon information and belief, Plaintiffsproprietary, confidential and

51.

  • 16 trade secret information, designs and IP, were illegally and improperly shared

  • 17 among and between all Defendants prior to March 2015 which was the first date

  • 18 that SEZAYANEV filed his first patent design application. SEZANAYEV’s

  • 19 patent application copied GILLESPIE’s IP and proprietary designs provided to

  • 20 Defendants FUSION and PLD, as well as other third parties such as Rockwood &

  • 21 Hines, under strict confidentiality and nondisclosure agreements.

  • 22 On or about March 2015, after such time as Plaintiffs had shared their

52.

  • 23 IP, including the confidential product designs and confidential business

  • 24 information with Defendants FUSION and PLD under the confidential and

  • 25 nondisclosure agreement, SEZANAYEV filed a design patent application assigned

  • 26 US 29/520,145 which was titled “VODKA BOTTLE.” Recently, on April 26,

  • 27 2016, this patent design application became the ‘545 patent.

  • 28 The timing of SEZANAYEV’s first patent design in March of 2015

53.

-14-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 15 of 27

  • 1 and expedited review request is of no coincidence. It was at this same time that

  • 2 Rockwood & Hines, the Chinese glass broker had approved the final designs for

  • 3 GILLESPIE and at a time after which representatives and agents of FUSION, PLD

  • 4 and Rockwood & Hines had, upon information and belief, colluded and conspired

  • 5 with SEZANAYEV and others acting as agents and representatives of

  • 6 SEZANAYEV to file the patent design whereby SEZANAYEV claimed he was

  • 7 the original inventor and signed a false declaration under penalty of perjury and

  • 8 other that he was the original inventor when he was not and the drawings were

  • 9 merely copied and taken, and were not his own.

10

  • 54. Further, through information and belief, Defendants were all aware

11

that GILLESPIE developed the Gold Bar Bottle designs and that SEZANAYEV

12

was not the inventor of the designs. Nevertheless, through information and belief,

13

SEZANAYEV went forward to file two design patent applications in lieu of

14

knowing about GILLESPIE’s Gold Bar Bottle designs and in fact copying such

15

designs.

16

  • 55. Additionally, in October 2015, SEZANAYEV filed papers with the

17

USPTO seeking expedited review of the design patent and paid the expedited

18

review fee to try to get a patent as fast as possible.

19

  • 56. Subsequently in June 2015, SEZANAYEV filed a second design

20

patent, a Continuation in Part design application no. 29/529,056 of the prior design

21

application no. 29/520,145. SEZANAYEV’s design application no. 29/529,056

22

also requested expedited examination. In the application filing, just as done in his

23

first design patent application, SEZANAYEV signs a declaration under penalty of

24

perjury and oath that he is the original inventor.

25

  • 57. This declaration was false and material to the grant of his patent

26

design registration when in fact he did not invent anything and merely copied

27

Plaintiffsconfidential and trade secret designs and IP, including product designs,

28

and did not invent or make any novel design. This second design patent was also

-15-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 16 of 27

  • 1 expedited for review presumably because SEZAYANEV knew he had taken the

  • 2 designs and drawing and was trying to get a patent granted as soon as possible. On

  • 3 March 1, 2016, the ‘498 patent was granted. On April 26, 2016, the’545 patent

  • 4 was granted.

  • 5 THE CEASE AND DESIST LETTERS

  • 6 On or about April 1, 2016, Defendant PRESTIGE (through counsel)

58.

  • 7 contacted GILLESPIE by letter, informing him that PRESTIGE is the exclusive

  • 8 licensee of the ‘498 patent, enclosing a copy of the said patent, and stating that

  • 9 [Y]ou, your company, marketing persons and certain distributors in the U.S.

  • 10 presently advertise, offer for sale and sell a gold bar-shaped container for

  • 11 whiskey in the United States… As the exclusive licensee of the ‘498 patent,

  • 12 our client is entitled to keep others from using, selling, advertising and

  • 13 distributing containers or bottles that are identical or nearly identical as that

  • 14 shown in the ‘498 patent and we request you immediately cease and desist

  • 15 from all use, sale, advertising or distributing containers or bottles of that

  • 16 type.”

  • 17 In the cease and desist letter, PRESTIGE identified the allegedly infringing

  • 18 products including the “gold bar shaped container of whiskey product.

  • 19 PRESTIGE further requested immediate written assurances that GILLESPIE will

  • 20 no longer use, sell, advertise or distribute the containers or bottles in the future and

  • 21 requested an accounting.

  • 22 Thus, PRESTIGE asserted their right, title, and interest to the ‘498

59.

  • 23 patent.

  • 24 The ‘498 patent is a design patent titled “GOLD BAR-SHAPED

60.

  • 25 CONTAINERS FOR ALCOHOLIC AND NON-ALCOHOLIC BEVERAGES.

  • 26 The ‘498 patent on its face states that it was issued on March 1, 2016.

  • 27 Plaintiffs believe that their products, including its Gold Bar® Gold

61.

  • 28 Finished Whiskey product do not infringe the ‘498 patent or the ‘545 patent and

-16-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 17 of 27

  • 1 that the claims of the ‘498 patent and the ‘545 patent are invalid. Accordingly, an

  • 2 actual controversy exists as to whether Plaintiffs’ manufacture, use or sale of its

  • 3 products infringes any valid or enforceable claim of the ‘498 patent and the ‘545

  • 4 patent. Absent a declaration of non-infringement, invalidity, and/or

  • 5 unenforceability, Defendants PRESTIGE and SEZANAYEV will continue to

  • 6 wrongly assert the ‘498 patent against Plaintiffs and the ‘545 patent against

  • 7 Plaintiffs, and thereby causing Plaintiffs irreparable harm.

  • 8 Defendant PRESTIGE has also sent cease and desist letters to

62.

  • 10 Piermont Avenue, Piermont, NY 10968 and www.goldbarwhiskey.com,

  • 11 threatening that sale of Plaintiff’s Gold Bar® Gold Finished Whiskey product

  • 12 violates Defendants’ patent rights which is and will cause Plaintiff irreparable

  • 13 harm.

  • 14 GILLESPIE’S DESIGN AND THE 3 KILOS BOTTLE DESIGN

  • 15 Separate from the ‘498 and ‘545 patent, upon information and belief,

63.

  • 16 Defendants SEZANAYEV and PRESTIGE, through a number of agents and sales

  • 17 representatives and/or distributors, and Does 1 through 10, have made, used,

  • 18 imported, offered for sale, and/or sold a bottle design without license or authority

  • 19 from GILLESPIE, products covered by the claims in the GILLESPIE patent

  • 20 (hereinafter referred to as the “Accused Products”).

  • 21 The design of the bottle in the Accused Product are not designs or

64.

  • 22 claims from the ‘498 or ‘545 patent.

  • 23 Upon information and belief, the Accused Products are identified by

65.

-17-

Case 3:16-cv-02392 Document 1 Filed 05/02/16 Page 18 of 27 1 66. The Accused Products, an
Case 3:16-cv-02392
Document 1
Filed 05/02/16
Page 18 of 27
1
66.
The Accused Products, an example of which is shown below on the
2
left hand side or bottom side, are virtually identical to the claim of the
3
GILLESPIE patent, as shown below on the right-hand side or top side:
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
67.
Defendants
SEZANAYEV
and
PRESTIGE,
their
agents,

22

23

24

25

26

27

28

representatives, sales persons and distributors, have touted their 3 KILOS VODKA product at various trade shows and to the industry as being the first product with the bottle design of a gold bar. However, the 3 KILOS VODKA product is not the first product with the bottle design of a gold bar and is not covered by the ‘498 patent or ‘545 patent. Thus, Defendants PRESTIGE and SEZANAYEV, and others who are acting as representatives and agents of PRESTIGE and SEZANAYEV are, upon information and belief, making false

-18-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 19 of 27

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

claims of patent protection. The below photo was taken from the 3 Kilos

Instagram site, posted by them on March 22, 2016. This was posted while at an

event where Plaintiffs’ GOLD BAR WHISKEY was being displayed at a table 50

years from the 3 Kilos table, causing further economic hardship as numerous

retailers attending the show approached GILLESPIE and said that the 3 Kilos

booth representatives are saying that GILLESPIE is infringing their patent. See

the attached image and text.

Case 3:16-cv-02392 Document 1 Filed 05/02/16 Page 19 of 27 1 2 3 4 5 6

21

22

23

24

25

  • 68. Further evidence that the Defendants colluded and conspired together

to commit these wrongful and infringing acts is evidenced by the Accused Product

which on its face has the FUSION trademark directly on the product, as shown in

the below picture and set forth in the above paragraphs.

26

27

28

-19-

 

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 20 of 27

1

1

2

3

4

5

6

7

8

9

FIRST CAUSE OF ACTION

10

(Declaratory Judgment of Non-Infringement of the ‘498 patent)

11

  • 69. Plaintiffs hereby incorporates by reference its allegations contained in

12

paragraphs 1 through 66 of this Complaint as though fully set forth herein.

13

  • 70. Defendants SEZAYANEV and PRESTIGE contend that products

14

made, used, sold, advertised or marketed by GILLESPIE infringe the ‘498 patent.

15

  • 71. Plaintiffs deny Defendants SEZAYANEV and PRESTIGE’s

16

contentions and alleges that the products do not directly or indirectly infringe the

17

‘498 patent or the ‘545 patent.

18

  • 72. An actual controversy thus exists between Plaintiffs and Defendants

19

SEZAYANEV and PRESTIGE as to whether the accused products infringe the

20

‘498 patent and the ‘545 patent.

21

  • 73. Accordingly, Plaintiffs seeks and is entitled to a judgment against

22

Defendants SEZAYANEV and PRESTIGE that they do not infringe and have not

23

infringed, directly or indirectly, contributorily or by inducement, the ‘498 patent

24

and the ‘545 patent.

25

  • 74. Pursuant to 28 U.S.C. § 2201 and 2202, a judicial determination of the

26

respective rights of the parties with respect to the alleged infringement of the ‘498

27

patent and the ‘545 patent is necessary and appropriate under these circumstances.

28

-20-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 21 of 27

  • 1 SECOND CAUSE OF ACTION

  • 2 (Declaratory Judgment of Invalidity and Unenforceability of the ‘498 patent)

  • 3 Plaintiffs hereby incorporate by reference its allegations contained in

75.

  • 4 paragraphs 1 through 66 of the Complaint as though fully set forth herein.

  • 5 Defendants SEZAYANEV and PRESTIGE content the ‘498 patent is

76.

  • 6 valid and enforceable.

  • 7 Plaintiffs deny Defendants’ contentions and alleges that the ‘498

77.

  • 8 patent and the ‘545 patents are invalid and unenforceable for failure to meet one

  • 9 or more of the conditions of patentability specified in Title 35 of the United States

  • 10 Code, 35 U.S.C. §§ 102, 103, 112, and/or 171. PRESTIGE and SEZANAYEV

  • 11 dispute these contentions. No claim or design drawing of the ‘498 patent or the

  • 12 ‘545 patent can be validly construed to cover any products imported, made, used,

  • 13 sold or offered for sale by Plaintiffs and the alleged invention of the ‘498 patent

  • 14 and the ‘545 patent is taught by, suggested by, and/or obvious in view of the prior

  • 15 art.

  • 16 The ‘498 patent and the ‘545 patent are also invalid under 35 U.S.C. §

78.

  • 17 112 as the patent drawings are inconsistent and incomplete and do not disclose the

  • 18 patent. Moreover, the ‘498 patent and the ‘545 patent are also invalid for

  • 19 nonenablement and indefiniteness under 35 U.S.C. § 112. The errors and

  • 20 inconsistencies in the drawing are material and of such magnitude that the overall

  • 21 appearance of the design is unclear. Some of the drawings depict the ‘498 patent

  • 22 and the ‘545 patent with a rectangle shape on the top and bottom and other

  • 23 drawings depict the ‘498 patent and the ‘545 patent with a trapezoid shape on the

  • 24 top and bottom and neither half can be disregarded as unclear due to the

  • 25 perspectives shown.

  • 26 The named inventor of the designs set forth in the ‘498 patent and the

79.

  • 27 ‘545 patent are not the inventor thereof rendering the patents invalid and

  • 28 unenforceable under 35 U.S. C. § 102(f). Additionally, the ‘498 patent and the

-21-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 22 of 27

  • 1 ‘545 patent do not designate all inventors of the designs set forth in the patent

  • 2 rendering the patents invalid and unenforceable.

  • 3 The designs in the ‘498 patent and the ‘545 patent are obvious under

80.

  • 4 36 U.S.C. § 103.

 
  • 5 The ‘498 patent and the ‘545 patent are unenforceable as a result of

81.

  • 6 inequitable conduct of Defendants and/or their representatives, including but not

  • 7 limited to, Gary or Godel Sezayanev, Gabriel Sezanayev, Paul Dunning and

  • 8 Michael Ferchak, and others unknown at this time.

  • 9 During prosecution of the ‘498 patent and the ‘545 patent, Defendants

82.

10

and/or others substantively involved in the preparation of the ‘498 patent and the

11

‘545 patent engaged in inequitable conduct before the USPTO. Upon information

12

and belief, the SEZANAYEV withheld information about the GILLESPIE Gold

13

Bar Bottle designs, despite having in his possession such information. This

14

information was material and not cumulative to the U.S. Patents issued on the face

15

of the ‘498 patent and the ‘545 patent, the information provided by SEZANAYEV

16

and his attorney to the USPTO in an Information Disclosure Statements, and the

17

information before and/or considered by the USPTO during the prosecution of the

18

‘498 patent application and the ‘545 patent application.

19

83.

Further, upon information and belief, SEZANAYEV filed a false

20

declaration with the USPTO claiming he was the inventor, when he knew he was

21

not.

22

84.

On information and belief, the material information withheld by

23

SEZANAYEV and/or his attorney was withheld knowingly and with the intent to

24

deceive or mislead the USPTO.

25

85.

Such inequitable conduct renders the ‘498 patent and the ‘545 patent,

26

and all the claims thereof, unenforceable.

27

28

-22-

 

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 23 of 27

1

THIRD CAUSE OF ACTION

2

(Breach of Contract Against Defendants FUSION and PLD and Does 1 - 10)

3

86.

Plaintiffs hereby incorporate by reference its allegations contained in

4

paragraphs 1 through 66 of the Complaint as though fully set forth herein.

5

87.

Defendants FUSION and PLD and Does 1 to 10, entered into

6

confidential and nondisclosure agreements in connection with protecting and

7

sharing information to produce glass bottles and design, samples and production

8

molds for samples and final products. The confidential and nondisclosure

9

agreements also were directed to production of custom formulation, blending and

  • 10 purchase of bulk alcohol supply and contract bottling and packaging.

  • 11 Pursuant to these agreements, Defendants FUSION and PLD agreed

88.

  • 12 that Plaintiff owned all the confidential and proprietary information and trade

  • 13 secrets, and that they would protect and preserve all of Plaintiff’s information,

  • 14 trade secrets, strategy, product launch timeline, IP and technology, including but

  • 15 not limited to product design.

 
  • 16 Defendants FUSION and PLD breached these confidentiality and

89.

  • 17 nondisclosure agreements by transferring and disclosing Plaintiffs’ confidential

  • 18 and proprietary information, trade secrets, and IP, including product design,

  • 19 strategies, and product launch timeline to SEZAYANEV and PRESTIGE and

  • 20 other Does 1 to 10 and to competitors of Plaintiffs.

 
  • 21 As a legal and proximate cause of Defendants FUSION and PLD’s

90.

  • 22 breaches of contract, Plaintiffs have and will continue to suffer substantial

  • 23 economic damages.

 
  • 24 FOURTH CAUSE OF ACTION

 
  • 25 (Design Patent Infringement Against All Defendants and Does 1 - 10)

  • 26 Plaintiffs hereby incorporate by reference its allegations contained in

91.

  • 27 paragraphs 1 through 66 of the Complaint as though fully set forth herein.

  • 28 No Defendant in this action has sought or received a license from

92.

-23-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 24 of 27

  • 1 Plaintiff GILLESPIE for any purpose whatsoever.

  • 2 Defendants SEZANAYEV and PRESTIGE, through a number of

93.

  • 3 agents and sales representatives and/or distributors, and Does 1 through 10,

  • 4 without consent have been and are infringing the GILLESPIE patent under 35

  • 5 U.S.C. § 271(a), by making, using, offering for sale or selling, without license or

  • 6 authority from GILLESPIE, in this District and elsewhere in the United States,

  • 7 products covered by the GILLESPIE patent bearing the ornamental design that

  • 8 embodies the inventions claimed in the GILLESPIE patent, and will continue to

  • 9 do so unless enjoined by the Court.

10

94.

Defendants have had actual or constructive knowledge of the

11

GILLESPIE patent and their prior and continuing infringement of the GILLESPIE

12

patent was and continues to be willful and deliberate.

13

95.

Defendants’ infringement of the GILLESPIE patent has irreparably

14

damaged Plaintiffs in an amount that is unknown and cannot at the present time be

15

ascertained, and will cause added injury and loss unless Defendants are enjoined

16

by this Court.

17

96.

Without the consent of Plaintiffs, Defendants have actively induced

18

infringement and/or contributed to the infringement, and are still actively inducing

19

and/or contributing to the infringement of the GILLESPIE patent, and will

20

continue to do so unless enjoined by the Court.

21

97.

Defendants’ inducement of infringement and contributory

22

infringement of the GILLESPIE patent has irreparably damaged Plaintiffs in an

23

amount that is unknown and cannot at the present time be ascertained, and will

24

cause added injury and loss unless Defendants are enjoined by this Court.

25

98.

Plaintiffs have no adequate remedy at law.

26

REQUEST FOR RELIEF

27

WHEREFORE, Plaintiffs requests that this Court enter judgment in its

28

favor against all Defendants as follows:

-24-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 25 of 27

  • 1 For a judicial declaration that Plaintiffs do not infringe contribute to

A.

  • 2 the infringement of, induce others to infringe, either directly or

  • 3 indirectly, any valid claim of the U.S. Patent No. D750,498 and/or

  • 4 U.S. Patent No. D754,545; and

  • 5 For a judicial declaration that U.S. Patent No. D750,498 and/or U.S.

B.

  • 6 Patent No. D754,545 are invalid and unenforceable; and

  • 7 Ordering that Defendants, their agents, and all persons acting in

C.

  • 8 concert or participation with Defendants be enjoined from asserting

  • 9 claims against Plaintiffs for infringement of the U.S. Patent Design

  • 10 No. D750,498 and/or U.S. Patent Design No. D754,545, and from

  • 11 asserting to third parties that Plaintiff’s products in any way infringe

  • 12 Defendants’ design patents; and

  • 13 Ordering that Defendants’ inequitable conduct in the prosecution of

D.

  • 14 the Defendants’ patents and/or their predecessor applications render

  • 15 these patents unenforceable; and

  • 16 Ruling that Defendants FUSION and PLD breached their

E.

  • 17 confidentiality and nondisclosure agreements with Plaintiffs, to enjoin

  • 18 FUSION and PLD to prevent further breaches and award attorneys’

  • 19 fees;

  • 20 Judgment for Plaintiffs on its cause of action for patent infringement

F.

  • 21 of U.S. Patent Design No. D643,298; and

  • 22 That the Court preliminarily and permanently enjoin Defendants, their

G.

  • 23 officers, agents, servants, employees and attorneys, and anyone acting

  • 24 in concert or participation with them or any of them, from infringing

  • 25 the GILLESPIE patent, U.S. Patent Design No. D643,298, as

  • 26 provided in 35 U.S.C. § 283, and specifically bar Defendants and

  • 27 anyone else acting in concert with Defendants, from making, using,

  • 28 selling, or offering for sale products that infringe the GILLESPIE

-25-

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 26 of 27

  • 1 patent, U.S. Patent Design No. D643,298, and that they be

  • 2 permanently enjoined and restrained including but not limited to;

  • 3 That Defendants be preliminarily and permanently enjoined from

H.

  • 4 using the Accused Products in any show, trade fair, or marketing

  • 5 venture, including but not limited to use as a permanent or temporary

  • 6 display;

  • 7 That Defendants will remove any picture, photo or reference to the

I.

  • 8 Accused Products from any and all touch screen computers at any

  • 9 and all trade shows and from any and all Internet web sites, including

  • 10 Facebook, Instagram and other social media sites;

  • 11 That Defendants be required to deliver up to Plaintiff for destruction,

J.

  • 12 any and all goods in their possession or under their control that were

  • 13 or are being advertised, promoted, offered for sale or sold which

  • 14 infringe the GILLESPIE patent;

  • 15 That Defendants be required, pursuant to 35 U.S.C. §§ 284 and 289,

K.

  • 16 to account to Plaintiff for any and all profits derived by them, and for

  • 17 all damages sustained by Plaintiff by reason of Defendants’ actions

  • 18 complained of herein, including an award of treble damages provided

  • 19 by statute;

  • 20 That the Court award Plaintiff damages, as provided by 35 U.S.C. §§

L.

  • 21 284 and 289, resulting in the infringement of the ‘322 Patent by

  • 22 Defendants;

  • 23 That the Court award Plaintiff its costs in this action, together with

M.

  • 24 reasonable attorneys’ fees as provided in 35 U.S.C. § 285.

  • 25 That Plaintiff be awarded both pre-judgment and post-judgment

N.

  • 26 interest on each and every damage award;

  • 27 Declaring this to be an exceptional case under 35 U.S.C. § 285 and

O.

  • 28 the extent provided by law requiring Defendants to pay Plaintiffs’

-26-

 

Case 3:16-cv-02392

Document 1

Filed 05/02/16

Page 27 of 27

1

attorneys’ fees and expenses; and

 

2

P.

Awarding Plaintiff such other and further relief as the Court deems

3

just and proper.

4

5

JURY DEMAND

 

6

Plaintiffs demand a trial by jury on all issues so triable as a matter of right

7

and law.

8

9

DATED: May 2, 2016

MULCAHY LLP

 

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

By: /s/ Kevin A. Adams Kevin A. Adams Attorneys for Plaintiffs

-27-

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 1 of 36

EXHIBIT A

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 2 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 3 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 4 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 5 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 6 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 7 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 8 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 9 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 10 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 11 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 12 of 36

EXHIBIT B

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 13 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 14 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 15 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 16 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 17 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 18 of 36

EXHIBIT C

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 19 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 20 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 21 of 36

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 22 of 36

EXHIBIT D

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 23 of 36

NON-DISCLOSURE AGREEMENT

July 17, 2013

Michael Ferchak International | Managing Partner, Director of Manufacturing Fusion Glassworks +1 646-431-0439 michael@fusion-glassworks.com

www.fusion-glassworks.com

Attention: Mr. Michael Ferchak

Re:

Disclosure of Information

Dear Mr. Ferchak:

Fusion Glassworks (the “Recipient” or “you”) wishes to obtain certain information from us in connection with producing a glass bottle design and sample mold and production mold for both renderings, samples and final products. This includes creative glass bottle and bottle closure design and graphic design work (the “Permitted Purpose”), all subject to the terms and conditions set out in this Agreement.

Definitions.

In this Agreement, the term “our Representatives” means our agents, directors, officers, employees, representatives, consultants and advisers. The term “your Representatives” means your agents, directors, officers, employees, representatives, consultants and advisers.

The term “Confidential Information” means:

  • (a) all information, in whatever form communicated or maintained, that we disclose

to, or that is gathered by inspection by, you or any of your Representatives, whether provided

before or after the date of this Agreement;

  • (b) all plans, design, proposals, reports, analyses, notes, studies, forecasts,

compilations or other information, in any form, that are based on, contain or reflect any Confidential Information regardless of the identity of the person preparing the same (“Notes”);

and

  • (c) any matter relating to (i) this Agreement, and (ii) the disclosure of information by

us to you or your Representatives.

The term “Confidential Information” does not include any information that:

Case 3:16-cv-02392

Document 1-1

2

Filed 05/02/16

Page 24 of 36

  • (a) is at the time of disclosure to you or thereafter becomes generally available to the

public, other than as a result of a disclosure by you or any of your Representatives in breach of

this Agreement;

  • (b) is or was received by you on a non-confidential basis from a source other than us

if such source is not prohibited from disclosing the information to you by a contractual, fiduciary or other legal obligation to us; or

  • (c) was known by you prior to disclosure under this Agreement if you were not

subject to any contractual, fiduciary or other legal confidentiality obligation in respect of such information and such prior knowledge can be proven by written records in your possession prior to such disclosure.

Provision of Confidential Information.

Subject to the provisions of this Agreement, we shall make such Confidential Information available to you as we, in our sole discretion, consider advisable in the circumstances, solely for the Permitted Purpose. Subject to the provisions of this Agreement, you shall, and shall cause your Representatives to, comply with all of our procedures relating to the provision of information as we may adopt from time to time.

Non-Disclosure of Confidential Information.

You shall treat confidentially and not disclose, and shall cause your Representatives to treat confidentially and not disclose, except as permitted herein, any Confidential Information. You may disclose any of the Confidential Information only to those of your Representatives who need to know such Confidential Information for the Permitted Purpose. You shall inform your Representatives of the confidential nature of such Confidential Information and cause each of your Representatives to treat such Confidential Information confidentially in accordance with this Agreement and not disclose such Confidential Information except as permitted herein. You shall be responsible for any breach of this Agreement by any of your Representatives.

Use of Confidential Information.

You shall not use, and shall cause your Representatives not to use, the Confidential Information for any purpose other than the Permitted Purpose. You shall not use the Confidential Information in any way that is, directly or indirectly, detrimental to us.

Personal Information.

You agree that neither we nor any of our Representatives shall disclose to you information about identifiable individuals forming part of the Confidential Information.

Compelled Disclosure.

If you or any of your Representatives receives a request or is legally required to disclose all or any part of the Confidential Information, you shall (a) immediately notify us of the request or requirement, (b) consult with us on the advisability of taking legally available steps to resist or

Case 3:16-cv-02392

Document 1-1

3

Filed 05/02/16

Page 25 of 36

narrow the request or lawfully avoid the requirement, and (c) if requested by us cooperate with us to seek a protective order or other appropriate remedy. If a protective order or other remedy is not available, or if we waive compliance with the provisions of this section, (x) you or your Representatives, as the case may be, may disclose to the person requiring disclosure only that portion of the Confidential Information which you are advised by written opinion of counsel is legally required to be disclosed, and (y) you shall not be liable for such disclosure unless such disclosure was caused by or resulted from a previous disclosure by you or any of your Representatives not permitted by this Agreement.

Return of Documents.

Upon request by us at any time, you shall (a) return promptly to us all physical copies of the Confidential Information, excluding Notes, then in your possession or in the possession of your Representatives, (b) destroy all (i) electronic copies of the Confidential Information, and all (ii) Notes (including electronic copies thereof) prepared by you or any of your Representatives, including electronic back-ups of the foregoing in a manner that ensures that such Notes may not be retrieved or undeleted by you or any of your Representatives, and (c) deliver to us a certificate executed by one of your duly authorized senior officers indicating that the requirements of this sentence have been satisfied in full.

Process.

We have no obligation pursuant to this Agreement or otherwise to disclose or continue to disclose or make available Confidential Information to you or any of your Representatives.

No Representations or Warranties by us.

Neither we nor any of our Representatives make any representation or warranty, express or implied, as to the accuracy, sufficiency or completeness of the Confidential Information. Neither we nor any of our Representatives shall have any liability whatsoever, under contract, tort, trust or otherwise, to you or any other person resulting from use of the Confidential Information by you or any of your Representatives or for omissions from the Confidential Information.

No Property Rights.

The Confidential Information shall at all times remain our property.

Legal Remedy.

We would not have an adequate remedy at law and may be irreparably harmed in the event that any of the provisions of this Agreement were not performed by you or your Representatives in accordance with their specific terms or were otherwise breached by you or your Representatives. Accordingly, we shall be entitled to injunctive relief to prevent breaches of this Agreement and to specific performance of the terms and conditions of this Agreement in addition to any other remedy to which we may be entitled at law or in equity.

Case 3:16-cv-02392

Document 1-1

4

Filed 05/02/16

Page 26 of 36

Miscellaneous.

No failure or delay by us in exercising any right, power or remedy under this Agreement shall operate as a waiver thereof, nor shall any single or partial exercise thereof preclude any other or further exercise of any right, power or remedy under this Agreement.

Your obligations under this Agreement shall survive indefinitely.

If any provision of this Agreement as applied to any party in any circumstance is adjudged by a court to be invalid or unenforceable, this will in no way affect any other provision of this Agreement, the application of such provision in any other circumstance, or the validity or enforceability of this Agreement.

This Agreement constitutes the entire agreement between us pertaining to the subject matter hereof.

Notices required or permitted to be given under this Agreement shall be in writing and shall be effectively given if delivered personally or sent by facsimile (i) if to us, to:

Rockwood Spirits International Inc., 5480 Canotek Rd, Suite 21 Ottawa, ON, K1J 9H7, to info@rockwoodspirits.com Attention: Elliott Gillespie; and (ii) if to you,

Michael Ferchak International | Managing Partner, Director of Manufacturing Fusion Glassworks +1 646-431-0439

www.fusion-glassworks.com Attention: michael@fusion-glassworks.com

The division of this Agreement into sections and the insertion of headings are for convenience of reference only and shall not affect the construction or interpretation of this Agreement.

This Agreement shall be governed by and construed in accordance with the laws of Ontario and the federal laws of Canada applicable therein.

For the purpose of the NDA, the parties have chosen the laws of Ontario and the federal laws of Canada.

In addition to the above, the “recipient” will not disclose to third parties any design produced in relation to discussions or contracts between the two parties and will not disclose that Rockwood Spirits International Inc. is a client of the recipient and related enterprises.

This Agreement shall ensure to the benefit of, and be binding on, each of us and our respective successors and permitted assigns. Neither of us may assign our respective rights or obligations under this Agreement without the prior written consent of the other party.

This Agreement may be signed in counterparts and each of such counterparts shall constitute an original document and such counterparts, taken together, shall constitute one and the same instrument.

Case 3:16-cv-02392

Document 1-1

5

Filed 05/02/16

Page 27 of 36

Yours very truly,

ROCKWOOD SPIRITS INTERNATIONAL INC.

By:

Name: Elliott Gillespie

Accepted and agreed as of the date first above written.

FUSION GLASSWORKS

Case 3:16-cv-02392 Document 1-1 5 Filed 05/02/16 Page 27 of 36 Yours very truly, ROCKWOOD SPIRITS

By:

Name: Mr. Michael Ferchak

Title:

Managing Partner

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 28 of 36

EXHIBIT E

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 29 of 36

NON-DISCLOSURE AGREEMENT

October 2, 2014

Private Label Distillery LLC 16730 E 2ND AVE AURORA, CO 80011

Attention: Mr. PAUL DUNNING

Re:

Disclosure of Information

Dear Mr. Dunning:

Michael Andrew Brands Inc.(the “Recipient” or “you”) wishes to obtain certain information from us in connection with discussions to enter into a contract for an agreement to produce custom formulation, blending and engage in the purchase of bulk alcohol supply as well as contract bottling and packaging. This includes, any eventual contract to undertake such work on behalf of Rockwood Spirts International Inc. (the “Permitted Purpose ”), all subject to the terms and conditions set out in this Agreement.

Definitions.

In this Agreement, the term “ our Representatives” means our agents, directors, officers, employees, representatives, consultants and advisers. The term “ your Representatives” means your agents, directors, officers, employees, representatives, consultants and advisers.

The term “ Confidential Information” means:

  • (a) all information, in whatever form communicated or maintained, that we disclose

to, or that is gathered by inspection by, you or any of your Representatives, whether provided before or after the date of this Agreement;

  • (b) all plans, design, proposals, reports, anal yses, notes, studies, forecasts,

compilations or other information, in any form, that are based on, contain or reflect any Confidential Information regardless of the identity of the person preparing the same (“ Notes”);

and

  • (c) any matter relating to (i) this Agreement, and (ii) the disclosure of information by

us to you or your Representatives.

The term “ Confidential Information” does not include any information that:

  • (a) is at the time of disclosure to you or thereafter becomes generally available to the

public, other than as a result of a disclosure by you or any of your Representatives in breach of

this Agreement;

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 30 of 36

2

  • (b) is or was received by you on a non -confidential basis from a source other than us

if such source is not prohibited from disclosing the information to you by a contractual, fiduciary

or other legal obligation to us; or

  • (c) was known by you prior to disclosure under this Agreement if you were not

subject to any contractual, fiduciary or other legal confidentiality obligation in respect of such information and such prior knowledge can be proven by written records in your possession prior to such disclosure.

Provision of Confidential Information .

Subject to the provisions of this Agreement, we shall make such Confidential Information available to you as we, in our sole discretion, consider advisable in the circumstances, solely for the Permitted Purpose. Subject to the provisions of this Agreement, you shall, and shall cause your Representatives to, comply with all of our procedures relating to the provision of information as we may adopt from time to time.

Non-Disclosure of Confidential Information .

You shall treat confidentially and not disclose, and shall cause your Representatives to treat confidentially and not disclose, except as permitted herein, any Conf idential Information. You may disclose any of the Confidential Information only to those of your Representatives who need to know such Confidential Information for the Permitted Purpose. You shall inform your Representatives of the confidential nature of such Confidential Information and cause each of your Representatives to treat such Confidential Information confidentially in accordance with this Agreement and not disclose such Confidential Information except as permitted herein. You shall be responsible for any breach of this Agreement by any of your Representatives.

Use of Confidential Information.

You shall not use, and shall cause your Representatives not to use, the Confidential Information for any purpose other than the Permitted Purpose. You sha ll not use the Confidential Information in any way that is, directly or indirectly, detrimental to us.

Personal Information.

You agree that neither we nor any of our Representatives shall disclose to you information about identifiable individuals forming p art of the Confidential Information .

Compelled Disclosure .

If you or any of your Representatives receives a request or is legally required to disclose all or any part of the Confidential Information, you shall (a) immediately notify us of the request or requirement, (b) consult with us on the advisability of taking legally available steps to resist or narrow the request or lawfully avoid the requirement, and (c) if requested by us cooperate with us to seek a protective order or other appropriate remedy. If a protective order or other remedy is not available, or if we waive compliance with the provisions of this section, (x) you or your Representatives, as the case may be, may disclose to the person requiring disclosure only that

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 31 of 36

3

portion of the Confidential Information which you are advised by written opinion of counsel is legally required to be disclosed, and (y) you shall not be liable for such disclosure unless such disclosure was caused by or resulted from a previous disclosure by you or any of your Representatives not permitted by this Agreement.

Return of Documents.

Upon request by us at any time, you shall (a) return promptly to us all physical copies of the Confidential Information, excluding Notes, then in your possession or in the possession of your Representatives, (b) destroy all (i) electronic copies of the Confidential Information, and all (ii) Notes (including electronic copies thereof) prepared by you or any of your Representatives, including electronic back -ups of the foregoing in a manner that ensures that such Notes may not be retrieved or undeleted by you or any of your Representatives, and (c) deliver to us a certificate executed by one of your duly authorized senior officers indicating that the requirements of this sentence have been satisf ied in full.

Process.

We have no obligation pursuant to this Agreement or otherwise to disclose or continue to disclose or make available Confidential Information to you or any of your Representatives .

No Representations or Warranties by us.

Neither we nor any of our Representatives make any representation or warranty, express or implied, as to the accuracy, sufficiency or completeness of the Confidential Information. Neither we nor any of our Representatives shall have any liability whatsoever, under cont ract, tort, trust or otherwise, to you or any other person resulting from use of the Confidential Information by you or any of your Representatives or for omissions from the Confidential Information.

No Property Rights.

The Confidential Information shall a t all times remain our property.

Legal Remedy .

We would not have an adequate remedy at law and may be irreparably harmed in the event that any of the provisions of this Agreement were not performed by you or your Representatives in accordance with their sp ecific terms or were otherwise breached by you or your Representatives. Accordingly, we shall be entitled to injunctive relief to prevent breaches of this Agreement and to specific performance of the terms and conditions of this Agreement in addition to a ny other remedy to which we may be entitled at law or in equity.

Miscellaneous.

No failure or delay by us in exercising any right, power or remedy under this Agreement shall operate as a waiver thereof, nor shall any single or partial exercise thereof prec lude any other or further exercise of any right, power or remedy under this Agreement.

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 32 of 36

4

Your obligations under this Agreement shall survive indefinitely.

If any provision of this Agreement as applied to any party in any circumstance is adjudged by a court to be invalid or unenforceable, this will in no way affect any other provision of this Agreement, the application of such provision in any other circumstance, or the validity or enforceability of this Agreement.

This Agreement constitutes the entire agreement between us pertaining to the subject matter hereof.

Notices required or permitted to be given under this Agreement shall be in writing and shall be effectively given if delivered personally or sent by facsimile (i) if to us, to:

Rockwood Spirits International Inc., 5480 Canotek Rd, Suite 21 Ottawa, ON, K1J 9H7 , to info@rockwoodspirits.com Attention: Elliott Gillespie ; and (ii) if to you,

Private Label Distillery LLC 16730 E 2ND AVE AURORA, CO 80011

Attention: Mr. PAUL DUNNING

Email: paul@privatelabeldistillery.com

The division of this Agreement into sections and the insertion of headings are for convenience of reference only and shall not affect the construction or interpretation of this Agreement.

This Agreement shall be governed by and construed in accordance with the laws of Ontario and the federal laws of Canada applicable therein.

For the purpose of the NDA, the parties have chosen the laws of Ontario and the federal laws of Canada .

In addition to the above, the “recipient” will not disclose to third parties any design produced in relation

to discussions or contracts between the two parties and will not disclose that Rockwood Spirits International Inc. is a client of the recipient and related enterprises.

This Agreement shall ensure to the benefit of, and be binding on, each of us and our respective successors and permitted assigns. Neither of us may assign our respective rights or obligations under this Agreement without the prior w ritten consent of the other party.

This Agreement may be signed in counterparts and each of such counterparts shall constitute an original document and such counterparts, taken together, shall constitute one and the same instrument.

Yours very truly,

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 33 of 36

5

Case 3:16-cv-02392 Document 1-1 Filed 05/02/16 Page 33 of 36 5 ROCKWOOD SPIRITS INTERNATIONAL INC. By:

ROCKWOOD SPIRITS INTERNATIONAL INC.

By:

Name: Elliott Gillespie

Accepted and agreed as of the date first above written.

PRIVATE LABEL DISTILLERY LLC.

Paul T. Dunning Signature 1299

By:

Name: Paul Dunning

Title:

Managing Partner

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 34 of 36

EXHIBIT F

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 35 of 36

Amendment 1

Confidential Non-Disclosure Agreement

This agreement is made between Rockwood Spirits International Inc. (also registered as the Gold Bar Bottling Company) and Private Label Distillery LLC.

This agreement is an amendment to the original NDA signed by both parties on October 2, 2014, it does not replace the original NDA. It is intended to clarify obligations related to the non-disclosure agreement between both parties.

Project Ref Name: Gold Bar Whiskey

Both parties agree to exercise a high degree of care to safeguard any and all intellectual property, trade secrets, branding concepts, technical drawings, ideas and inventions of the information and all or any revealed information herein, from access or disclosure to any unauthorized person or entity.

This includes:

Contract pricing

Product cost

Product pricing strategies

Product supplier information

Bulk whiskey supply information

Product fabrication/blending/bottling process information

Product origin

Distribution or market information

Marketing strategy

Product labeling

Branding strategy and related imagery

Product design

Corporate ownership structure of the related parties

Public mention of a contract between the two parties

It's a common practice to source whiskey the same way Rockwood is being produced outside of the extracts. Private Label Distillery would never explain the formula or any details about Rockwood products to another company or person.

The disclosure restrictions listed above do not apply to disclosure required by related government and regulatory agencies for the purpose of conducting business on behalf of the contract between both parties.

In the event that any of the shareholders, officers, directors, employees, agents or representatives of a party should copy, replace, modify or disclose the confidential information, such as a intellectual property, financial contract information or public disclosure of a business relationship between the two parties, this party will be in breach of this confidentiality agreement and therefore

!

1!

Case 3:16-cv-02392

Document 1-1

Filed 05/02/16

Page 36 of 36

will be liable to the other party for damages arising out of the same, as well as injunctive relief and attorney’s fees for any action arising out of this agreement.

This agreement shall be governed by both the laws of the Province of Ontario, Canada as well as the State of New York, USA. All disputes and matters whatsoever arising under, or in connection with, or incident to this Agreement shall be brought before a court of competent jurisdiction in the Province of Ontario or the State of New York.

Date: July 19, 2015

Date: July 19, 2015

Private Label Distillery LLC

Rockwood Spirits International Inc. and Gold Bar Bottling Company

#4588

Paul T. Dunning

By: ____________________

By: _________________________

Paul Dunning

Elliott Gillespie

By: ____________________

By: ____________________

Michael Ferchak

Case 3:16-cv-02392

Document 1-2

Filed 05/02/16

Page 1 of 1