Case 2:16-cv-01116-BCW Document 2 Filed 10/31/16 Page 1 of 7

Mark M. Bettilyon, UT 4798

Peter M. de Jonge, UT 7185
Jed H. Hansen, UT 10679
THORPE, NORTH & WESTERN, LLP
175 South Main, Suite 900
Salt Lake City, Utah 84111
Telephone: (801) 566-6633
Facsimile: (801) 566-0750

Attorneys for Plaintiff

Alliance Sports Group, L.P.
IN THE UNITED STATES DISTRICT COURT
DISTRICT OF UTAH, CENTRAL DIVISION
Alliance Sports Group, L.P., a Texas limited
liability partnership,

COMPLAINT FOR
DECLARATORY JUDGMENT

Plaintiff,
vs.

Civil Case No.: 2:16-cv-01116

Magistrate Judge Brooke C. Wells

EB Brands Holdings, Inc.

Defendant.

Plaintiff Alliance Sports Group, L.P. (ASG) (Plaintiff) by and through its counsel
hereby files this Declaratory Complaint with Jury Demand against Defendant EB Brands
Holdings, Inc. (EB).
COMPLAINT
Plaintiff complains and alleges as follows:

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PARTIES, JURISDICTION AND VENUE

1.

Plaintiff ASG is a Texas limited partnership having a principal place of business at 3025

North Great Southwest Parkway, Grand Prairie, Texas 75050 with numerous employees located
within the state of Utah.
2.

Upon information and belief, Defendant EB is a Delaware corporation with its principal

place of business at 555 Taxter Road, Elmsford, New York, 10523.

3.

This Court has subject matter jurisdiction over this action under 28 U.S.C. 1331, 1367,

and 1338.
4.

Plaintiff brings this action under Title 35, United States Code 1 et seq. and under the

Federal Declaratory Judgment Statute, Title 28, United States Code 2201, 2202, and Utah
common law.
5.

This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. 1331,

1338 and 35 U.S.C. 1 et seq. including, without limitation, 35 U.S.C. 101-103, 171, and
271.
6.

Venue is proper in this judicial district pursuant to 28 U.S.C. 1391.

7.

Upon information and belief, this Court has general personal jurisdiction over the

Defendant since its contacts with the state of Utah are substantial, continuous, and systematic.
8.

Upon information and belief, this Court also has specific personal jurisdiction over the

Defendant as it sells products relevant to the dispute directly into the state of Utah.
GENERAL ALLEGATIONS
9.

ASG is in the business of inventing, developing, manufacturing, distributing, and selling

various sport-related products, including waist slimming belts.

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10.

ASG markets and distributes a waist slimming belt under the BOLLINGER brand

(Bollinger Slimming Belt) to retailers, including retailers having locations in the state of Utah.
An image of that products is provided below:

11.

Upon information and belief, EB is the owner of United States Design Patent No.

D598,637. A copy of this patent is attached hereto as Exhibit A.

12.

The design shown in the 637 Patent is strikingly similar to other designs used in

connection with slimming belt designs that existed before the filing date of the 637 Patent.
Attached hereto as Exhibit B is an example of a prior art design, upon information and belief,
predates the design shown in the 637 Patent.
13.

Plaintiff is aware of a prior art reference that was not considered during the original

prosecution of the 637 Patent. Plaintiff intends to investigate inequitable conduct during
discovery and, at such time that Plaintiff has sufficient information to plead inequitable conduct,
will seek to do so. See Advanced Cardiovascular Sys., Inc. v. SciMed Life Sys., Inc., 989 F.
Supp. 1237, 1247 (N.D. Cal. 1997) (... because the legal theory implicates Federal Rule of Civil
Procedure 9(b), requiring pleading of fraud with particularity, SciMed was entitled to confirm
factual allegations before amending to include the inequitable conduct defense); Enzo Life
Sciences, Inc., v. Digene Corp., 270 F. Supp. 2d 484, 487-90 (D. Del. 2003) (the Court
concludes that since the Rule 9(b) pleading with particularity requirement is implicated with

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regard to an inequitable conduct claim, Digene was prudent and possibly required to confirm the
factual allegations through discovery).
14.

On or about September 6, 2016, EB sent a letter to Dicks Sporting Goods, one of ASGs

retailers with locations in Utah, alleging that ASGs Bollinger Slimming Belt infringe the 637
Patent and demanding that Dicks Sporting Goods immediately stop all manufacture, importation
and/or sale of the Bollinger Slimming Belt. A copy of that letter is attached hereto as Exhibit C.
15.

ASG received notice from several of its other customers that EB has also sent cease and

desist letters to those customers demanding that they also cease all manufacture, importation
and/or sale of the Bollinger Slimmer Belt.
16.

While ASG has reached out to EB in an effort to resolve its concerns, EB refuses to

respond to ASG, forcing ASG to seek assistance from this Court.

17.

Upon information and belief, EB sent cease and desist demand letters to ASGs

customers with the primary intent of causing harm to ASG in the marketplace. Moreover, the act
of demanding that ASG customers cease selling a product for alleged infringement of a patent
that was procured through inequitable conduct is a violation of established standards of conduct.
18.

As a result of EBs unlawful acts, certain of ASGs customers have removed ASGs

Bollinger Slimming Belt from its stores indicating that they will not sell the product until the
improper allegations made by EB are resolved.
19.

EBs actions have created a real and substantial controversy related to infringement of the

637 Patent both by ASG and its customers, including Dicks Sporting Goods, for which ASG
now seeks relief.

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FIRST CAUSE OF ACTION

(Non-Infringement of Patent 28 U.S.C. 2201, 2202 and 35 U.S.C. 271)
20.

Plaintiff hereby incorporates by reference each and every preceding allegation of this

complaint as if set forth fully herein.

21.

Plaintiff has a reasonable fear and apprehension that it will be sued for patent

infringement and that an actual and justiciable controversy exists between the parties.
22.

Plaintiff contends that the Bollinger Slimmer Belt does not infringe any valid claim of the

637 Patent.
23.

As such, Plaintiff is entitled to an order declaring that the Bollinger Slimmer Belt does

not infringe any valid claim of the 637 Patent.

SECOND CAUSE OF ACTION
(Patent Invalidity 28 U.S.C. 2201, 2202 and 35 U.S.C. 101-103, 112, and 171)
24.

Plaintiff hereby incorporates by reference each and every preceding allegation of this

complaint as if set forth fully herein.

25.

Plaintiff has a reasonable fear and apprehension that it will be sued for patent

infringement and that an actual and justiciable controversy exists between the parties.
26.

Moreover, the design shown in the 637 Patent is strikingly similar to other designs used

in connection with slimming belts that have existed before the filing date of the 637 Patent,
including at least D380,588.
27.

Based on the above, Plaintiff believes the 637 Patent is invalid at least pursuant to 35

U.S.C. 101-103, and/or 171.

28.

As such, Plaintiff is entitled to an order declaring that the 637 Patent is invalid.

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THIRD CAUSE OF ACTION

(Tortious Interference - Utah Common Law)
29.

Plaintiff hereby incorporates by reference each and every preceding allegation of this

complaint as if set forth fully herein.

30.

Upon information and belief, EB has intentionally interfered with ASGs existing and/or

potential economic relations.

31.

Upon information and belief, EB has intentionally interfered with ASGs existing and/or

potential economic relations for an improper purpose or by improper means, namely to disrupt
ASGs business relationships with third parties in an effort to harass ASG in the marketplace and
unlawfully increase EBs market share of waist slimming belt products.
32.

ASG has been damaged by the aforementioned acts of EB and will continue to be

damaged unless EB is preliminarily and permanently enjoined from the tortious acts described
herein.
33.

In addition to the above, ASG is entitled to an award of its damages for the

aforementioned acts of EB in an amount to be determined by the Court.

WHEREFORE, it is respectfully requested that the Court enter judgment in favor of

Plaintiff as follows:
A.

That the Court enter judgment that the Bollinger Slimming Belt does not and will

not infringe the 637 Patent.

B.

That the Court enter judgment that the 637 Patent is invalid pursuant to 35

U.S.C. 101-103, 112, and/or 171.

C.

That the Court enter judgement that the acts described herein by EB constitute

tortious interference with ASGs business relationships.

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D.

That the Court award ASG damages for EB unlawful acts.

E.

That the Court award ASG its costs and attorneys fees related to this action.

F.

That Plaintiff have such other and further relief as shall seem just and proper to

the Court.
G.

That the Court grant preliminary and permanent injunctive relief enjoining EB its

officers, directors, principals, agents, servants, employees, successors and assigns, and all others
aiding, abetting, or acting in concert or active participation therewith, from directly or indirectly
alleging that the Bollinger Slimmer Belt infringes the 637 Patent.

Dated: October 31, 2016

/s/ Jed H. Hansen
Mark M. Bettilyon
Peter M. de Jonge
Jed H. Hansen
THORPE NORTH & WESTERN, LLP
Attorneys for Plaintiff
Alliance Sports Group, L.P.

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Exhibit A

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Exhibit B

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US00D380588S

United States Patent [19]

[11] Patent Number: Des. 380,588

Chen

[45] Date of Patent:

[54] WAIST TRIMMER

*Jul. 8, 1997

FOREIGN PATENT DOCUMENTS

249040

6/1926 Italy ....................................... 450/155

[75] Inventor: George Chen, Tao Yuan, Taiwan

[73] Assignee: Keys Fitness Products, Inc., Dallas,
Tex.

532060 1/1941 United Kingdom ..................... 450/19

Primary ExaminerLouis S. Zarfas
Assistant ExaminerMonica A. Weingart

[*] Term:

Attorney, Agent, or FirmHaynes and Boone, L.L.P.;

Brandi W. Sarfatis

14 Years

[21] Appl. No.: 51,447

[22] Filed:
Mar 11, 1996

[57]
CLAIM
The ornamental design for a waist trimmer, as shown and

described.

[51] LOC (6) Cl. ................................ 02-01

[52] U.S. Cl. ..............
... D2/702; D2/704

DESCRIPTION

[58] Field of Search ............................. D2/700, 701, 702,

FIG. 1 is a front perspective view of the waist trimmer

D2/703,704, 705; 2/22, 69, 88, 311, 312;

450/8, 19, 20, 74, 77, 79, 80, 82, 83, 84,
85, 88, 97, 98, 99, 155

showing my new design;

FIG. 2 is a top plan view thereof;

FIG. 3 is a front elevational view thereof;

FIG. 4 is a bottom plan view thereof;

[56]

References Cited
U.S. PATENT DOCUMENTS

D. 241,084 8/1976 Smith ....................................... D2/704

1,565,807 12/1925 Levy ........................................... 450/3
2,381,232
2,506,488

8/1945 Stone
... D2/704 X
5/1950 Cass ..................................... D2/704 X

3,185,159 5/1965 Spanel ....................................... 450/97

FIG. 5 is a rear elevational view thereof;

FIG. 6 is a right side elevational view thereof; and,

FIG. 7 is a left side elevational view thereof.

The broken line showing of a mans body in FIG. 1 is for

illustrative purposes only and forms no part of the claimed
design.

1 Claim, 4 Drawing Sheets

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U.S. Patent

Jul. 8, 1997

Sheet 1 of 4

Des. 380,588

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U.S. Patent

Jul. 8, 1997

Sheet 2 of 4

Des. 380,588

[...]

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U.S. Patent

Jul. 8, 1997

Sheet 3 of 4

Des. 380,588

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U.S. Patent

Jul. 8, 1997

Sheet 4 of 4

Des. 380,588

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Exhibit C

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HARRISBEACH~
ATTORNEYS AT LAW

September 6, 2016

333 WEST WASHINGTON ST., SUITE 200

SYRACUSE,
NY 13202

(315)423-7100
JAMESft, MULDOON

VIA CERTIFIEDMAIL, FIRST CLASS MAIL

. DIRECT: (315)214-2021
FAX:
(315) 422-9331
JMULOOON@HARRISBEACH.COM

Dicks Sporting Goods

Attn: Legal Department
345 Court St.
Corapolis, PA 15108
Corporation Service Company
Attn: Dick's Sporting Goods, Inc., Legal Department
2711 Centerville Road Suite 400
Wilmington, DE 19808

Re:

Requested Identification of Supplier of Infringing Product

To Whom It May Concern:

We represent EB Brands with respect to intellectual property matters. EB Brands owns
U.S. Patent No. D598,637 ("the '637 patent"), a copy of which is attached for your reference.
The '637 patent covers a waist slimming belt that uses zippers to allow for different settings.
Fig. 1 from the '637 patent is depicted below:

''

'
'

/'

'

""
"i'
""
""'
i'

,,
"

"

Fig 1

Our research indicates that Dick's Sporting Goods is selling the Bollinger Slim Belt with Zipper
(Web ID: 89853236) (the "Product"). 1 The Product appears to infringe the '637 patent and an
image of the Product is depicted below:

http://www.dickssportinggoods.com/product/index.jsp?productld=89853236.

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