Case 1:15-cv-08258-GBD Document 9 Filed 10/23/15 Page 1 of 11

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

CARL DESANTIS REVOCABLE TRUST Civil Action No. 15-cv-09258 (GBD)

Plaintiff, AMENDED COMPLAINT

v.

PLAZA RETAIL AG, LLC

Defendant.

Plaintiff, Carl DeSantis Revocable Trust (“Plaintiff”) brings suit against Defendant, Plaza

Retail AG, LLC (“Defendant”), and hereby alleges as follows:

NATURE OF ACTION

1. Mr. Carl A. DeSantis is the inventor of the “Watch Cuff” patent (the “Patent-in-Suit”)

and in his capacity as sole living beneficiary and trustee of Carl DeSantis Revocable Trust

(“Plaintiff”), represents Plaintiff, which owns the rights to the Patent-in-Suit by assignment.

2. Defendant Plaza Retail AG, LLC operates New York retail store at The Edwardian Room

of the Plaza Hotel, 768 Fifth Avenue, New York, New York for the international luxury brand,

Angelo Galasso (“Galasso”).

3. Galasso has wrongfully, knowingly, willfully and wantonly infringed upon Plaintiff’s

patent.

4. Plaintiff seeks an injunction and damages for willful and knowing infringement of his

patent.

PARTIES

5. Mr. Carl A. DeSantis is a natural person, with a primary residence in Florida, and is the

sole living beneficiary and trustee of Carl DeSantis Revocable Trust (“Plaintiff”).
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6. Plaintiff, Carl DeSantis Revocable Trust, is a living trust, created in Florida and is

primarily managed by its sole living beneficiary and trustee, Mr. Carl A. DeSantis, at its

principal place of business, 3299 N.W. Boca Raton Boulevard, Suite 100, Boca Raton, Florida

33431.

7. Defendant, Plaza Retail AG, LLC maintains and operates a New York retail store for the

Italian luxury brand, Angelo Galasso, at the Edwardian Room in the Plaza Hotel, at 768 Fifth

Avenue, New York, New York, 10022.

JURISDICTION AND VENUE

8. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).

9. This Court has personal jurisdiction over Defendant pursuant to N.Y. C.P.L.R. §§ 301

and 302(a)(1)-(3). Upon information and belief, this Court has general jurisdiction over

Defendant based on its continuous and systematic conduct within New York, including, inter

alia, Defendant’s continuous contacts with, and sales to, customers in New York, and

importation of products into New York. Upon information and belief, Defendant is also subject

to specific jurisdiction of this Court because, inter alia, Defendant has committed acts of patent

infringement alleged in this Complaint within the state of New York and elsewhere, causing

injury within the state. In addition, or in the alternative, this Court has jurisdiction over

Defendant pursuant to Fed. R. Civ. P. 4(k)(2).

10. Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b), 1391(c) and 1400(b)

because, inter alia, infringement of the Patent-in-Suit has occurred and is occurring in this

judicial district, and Defendant is a foreign entity with a place of business in this judicial district.

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PATENT-IN-SUIT

11. On October 17, 2006, the United States Patent and Trademark Office duly and lawfully

issued U.S. Patent No. 7,120,936 (“the ‘936 patent” or “the Patent-in-Suit” or “Watch Cuff

Patent”), entitled “Watch Cuff,” based upon an application filed by the inventor, Mr. Carl A.

DeSantis. A true and correct copy of the ‘936 patent is attached hereto as Exhibit A.

12. The Patent-in-Suit generally relates to the wearing of apparel, and in particular to a shirt

cuff having means for retaining and displaying a conventional wristwatch, so as to permit

convenient display of the wristwatch without retracting the cuff. Moreover, the invention

provides a cuff for a long sleeved shirt or similar garment having the means for displaying and

accessing a wristwatch or other wrist-mounted instrument.

13. The inventor, Mr. Carl A. DeSantis, originally filed the Patent-in-Suit on June 6, 2004

with the United States Patent and Trademark Office.

14. After filing the Patent-in-Suit, the inventor, Mr. Carl A. DeSantis, conveyed his

assignor’s interest to Hassler Consortium, Inc., pursuant to an assignment agreement executed

June 15, 2004. Thereafter, pursuant to an assignment agreement executed on September 24,

2014, Hassler Consortium, Inc. transferred their ownership interest in the Patent-in-Suit to Carl

DeSantis Revocable Trust.

15. Carl DeSantis Revocable Trust is the owner by assignment of the Patent-in-Suit. By

virtue of his position as living grantor and sole beneficiary of Carl DeSantis Revocable Trust,

Mr. Carl A. DeSantis has the right to sue and recover damages for infringement of the Patent-in-

Suit; and/or, in the alternative, Mr. Carl A. DeSantis has the right to sue and recover damages for

patent infringement as the original inventor of the Patent-in-Suit.

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FACTS COMMON TO ALL CLAIMS

16. Angelo Galasso manufacturers and sales to consumers, retailers, and other end-users

luxury, couture menswear. Specifically, the brand manufactures a shirt, the Polso Orologio

(watch cuff) which directly infringes upon the Patent-in-Suit. The brand’s website denotes:

ANGELO GALASSO’s signature Polso Orologio (watch cuff) shirt is the pioneering design
now synonymous with the brand itself. Inspired by former Fiat President and style icon
Gianni Agnelli, who was forced to wear his watch over the shirt cuff due to a metal allergy,
its striking signature feature is the cut-out cuff that allows the wearer to showcase a statement
timepiece. Every ANGELO GALASSO shirt undergoes 85 different stages in its
manufacturing process and is made entirely by hand, in keeping with traditional Italian
methods of fabric selection, sewing technique and assembly procedure. Each shirt is
constructed using ten stitches to the centimetre, with the penultimate buttonhole always
horizontal, to achieve a streamlined look. The cuff is 12 cm long and lined with pure cotton,
specially strengthened to prevent creasing. The entire shirt is sewn using the French seam
method whereby the raw edges of the fabric are fully enclosed for a neater appearance. A
tribute to old tailoring traditions lies in the slight pleat of the shoulder line – a unique feature
of a hand-made shirt. Gussets – triangular pieces of cloth – are sewn on both sides of the
shirt, bringing more breadth to its shape and providing the highest level of comfort for the
wearer. In 2004, the Polso Orologio shirt was exhibited at the Design Museum in London,
recognising Angelo Galasso’s creations as works of art and timeless design.

<http://www.angelogalasso.com>.

17. Defendants’ Polso Orologio is substantially identical to the Patent-in-Suit, and clearly

infringes upon that patent.

18. Defendant was made aware of the Patent-in-Suit, and of Angelo Galasso’s infringement

thereof, as early as 2015, including by various letters sent by and on behalf of the Plaintiff.

19. In addition to the notice provided by Plaintiff in the mentioned correspondences sent to

Defendant, Defendant was further notified of the existence of the Patent-in-Suit and Defendants’

infringement thereof by the Plaintiff’s Counsel, Mr. Jared Spiegel, on August 5, 2015, at

approximately 3pm. Thereon, on behalf of and as legal representative of Plaintiff, Mr. Jared

Spiegel, visited Angelo Galasso’s store in Midtown Manhattan located at 1 West 58th Street,

New York, New York 10019, within the Edwardian Room of the Plaza Hotel, located at 768

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Fifth Avenue, New York, New York 10019. On the date in question, Mr. Jared Spiegel verbally

notified the floor manager and other agents working in the store of both the existence of the

Patent-in-Suit and their infringement thereof. In addition to verbally notifying and making its

agents aware of the Patent-in-Suit and Defendant’s infringement thereof, Defendant was notified

and made aware of same on said date by Plaintiff’s Counsel, Mr. Jared Spiegel, personally

providing the store manager and agents with a tangible copy of the published Patent-in-Suit.

20. Therefore, on information and belief, the Defendant was notified and made aware of both

the existence of the Patent-in-Suit and their infringement thereof, as early as early 2015 by virtue

of personal communications and tangible documentary evidence of the Patent-in-Suit delivered

by Plaintiff’s Counsel.

21. Following the personal delivery of the published patent and verbal communications of

both the Patent-in-Suit and Defendant’s infringement thereof, by Plaintiff’s Counsel on August

5, 2015, Defendant continued to actively and knowingly make, use, offer to sell, and/or sell its

infringing products in the United States, and/or import its infringing products into the United

States.

22. After being notified of both the existence of the Patent-in-Suit and their infringement

thereof, Defendant, upon information and belief, continues to actively and knowingly direct,

cause, induce and encourage others to use, sell and/or offer to sell in the United States, and/or

imported into the United States products infringing upon Plaintiff’s patent by, inter alia,

producing, selling, and promoting products infringing on the Patent-in-Suit. In addition,

Defendant continues to actively sell, promote, and advertise to consumers products directly

infringing upon the Patent-in-Suit.

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23. Despite being notified of both the existence of the Patent-in-Suit and their infringement

thereof, Defendant, upon information and belief, continued to actively and knowingly direct,

cause, induce and encourage others to use, sell and/or offer to sell in the United States, and/or

imported into the United States products infringing upon Plaintiff’s patent by, inter alia, by

maintaining explanatory guides, advertisements, and promotional materials on their website and

through advertisements and explanatory guides on their website and in their New York store.

24. Upon information and belief, Defendant has committed and continues to commit the

foregoing infringing activities without license from Plaintiff and with notice of the Patent-in-Suit

and their infringement thereof.

25. Upon information and belief, Defendant knew that the Patent-in-Suit existed while

committing and as it continues to commit the foregoing infringing acts, thereby willfully,

wantonly and deliberately infringing the Patent-in-Suit. Plaintiff’s damages should therefore be

trebled pursuant to 35 U.S.C. § 284 because of Defendant’s willful infringement of the Patent-in-

Suit.

COUNT 1: DIRECT INFRINGEMENT OF THE PATENT-IN-SUIT

26. Plaintiff repeats and reallege the allegations of previous Paragraphs as if set forth in full

herein.

27. Upon information and belief, Defendant has infringed claims of the Patent-in-Suit

pursuant to 35 U.S.C. § 271(a) by making, using, offering to sell, and/or selling in the United

States, and/or importing into the United States watch cuff shirts and products, including the

Polso Orologio (watch cuff) shirts, which infringe Claims 1 through 20 of the Patent-in-Suit.

Upon information and belief, Defendant’s infringement pursuant to 35 U.S.C. § 271(a) is

ongoing.

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28. Plaintiff has sustained damages as a direct and proximate result of Defendant’s

infringement and inducement of infringement of the Patent-in-Suit.

29. As a result of the foregoing, upon information and belief, Plaintiff will suffer and is

suffering irreparable harm from Defendant’s infringement of the Patent-in-Suit. Upon

information and belief, Defendants have intentionally ignored various notifications of the Patent-

in-Suit and their infringement thereof and/or willfully ignored various proactive efforts by

Plaintiff requesting them to cease such infringing activities. Damages at law, alone, will fail to

adequately compensate Plaintiff and warrants issuance of an injunction against Defendant,

pursuant to 35 U.S.C. § 283. Unless enjoined, Defendants will continue its infringing conduct.

COUNT 2: INDUCED INFRINGEMENT OF THE PATENT-IN-SUIT

30. Plaintiff repeats and realleges the allegations of all preceding paragraphs as if set forth in

full herein.

31. Upon information and belief, Defendant has induced infringement of the Patent-in-Suit

pursuant to 35 U.S.C. § 271(b) by actively and knowingly inducing, directing, causing, and

encouraging resellers, end-users, retailers, enterprises, and/or customers to infringe at least

Claims 1 through 20 of the Patent-in-Suit by using, offering to sell, and/or selling in the United

States, and/or importing into the United States wrist watch cuffs and shirts with designs

including Polso Orologio (watch-cuff) shirts, and other related products.

32. In addition to the foregoing and/or in the alternative, Defendant has induced and

continues to induce infringement of the Patent-in-Suit pursuant to 35 U.S.C. § 271(b), on

information and belief, by actively directing, causing, inducing and encouraging others to use,

sell and/or offer to sell in the United States, and/or importing into the United States promotional,

instructional, and/or explanatory guides, and/or by, inter alia, willfully maintaining and

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publishing the said instructional materials on their website, associated with products infringing

on the Patent-in-Suit. On information and belief, Defendant actively used and continues to use

such materials and/or maintain such by publication on their website, so as to actively, knowingly,

and intentionally induce consumers, retailers, businesses, and/or other end-users to purchase,

promote, and/or advertise products directly infringing upon the Patent-in-Suit and/or instruct

users to use related products in an infringing manner. Upon information and belief, Defendant’s

inducement of infringement pursuant to 35 U.S.C. § 271(b) is ongoing.

33. Defendant committed the foregoing infringing activities without license from Plaintiff.

34. Upon information and belief, Defendant’s inducement of infringement pursuant to 35

U.S.C. § 271(b) is ongoing.

35. Upon information and belief, Defendant committed the foregoing infringing activities

and continues the same with knowledge and upon notice of both the existence of the Patent-in-

Suit and their infringement thereof. Plaintiff repeats and realleges the allegations of the

paragraphs set forth above, in full, herein. Specifically, upon information and belief, Plaintiff

believes that its various actions, communications, and/or notices delivered and/or conveyed to

Defendant, sufficed to reasonably notify and make Defendant aware of the existence of the

Patent-in-Suit and their infringement thereof including the aforementioned and numerous letters

sent to Defendant on Plaintiff’s behalf, the personal communications made by Plaintiff’s Counsel

directly to Defendant’s agents, and/or the tangible documents and notices, personally served on

Defendant by Plaintiff’s Counsel, detailing the Patent-in-Suit and from which Defendant was

notified and/or capable by reasonable inference to deduce their infringing actions based upon the

similarities between the Patent-in-Suit described therein and their infringing products and/or

explanatory materials distributed therewith. In light of the extensive, pro-active, and numerous

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actions taken by and/or on behalf of Plaintiff, upon information and belief, Defendant willfully

and with knowledge intended and continue to infringe and/or induce infringing actions by end-

users given their reckless disregard of the foregoing and numerous efforts by Plaintiff requesting

that Defendant cease its infringing activities and respect their detailed ownership rights of the

Patent-in-Suit.

36. Upon information and belief, Defendant knew of the Patent-in-Suit and its infringement

thereof while committing the foregoing acts. In light of their notice and knowledge of these

infringing acts and inducement of infringing acts by others, Defendant’s continuation of the

foregoing evidences specific intention to infringe and induce the same by others, as they

continue to willfully ignore notices reasonably informing them of the infringing nature of their

actions on the Patent-in-Suit.

37. Plaintiff has sustained damages as a direct and proximate result of Defendant’s

infringement and inducement of infringement of the Patent-in-Suit.

38. Upon information and belief, Plaintiff’s damages should be trebled pursuant to 35 U.S.C.

§ 284 because of Defendant’s wanton, willful, and knowing disregard of the Patent-in-Suit and

awareness of the infringing nature of their actions.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff prays for judgment as follows:

a. A judgment that Defendant has infringed, contributorily infringed, and/or induced

infringement of one or more claims of Plaintiff’s Patent-in-Suit;

b. An order and judgment preliminarily and permanently enjoining Defendant and its

officers, directors, agents, servants, employees, affiliates, attorneys, and all others acting

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in privity or in concert with them, and their parents, subsidiaries, divisions, successors

and assigns from further acts of infringement of Plaintiff’s asserted patent;

c. A judgment awarding Plaintiff all damages adequate to compensate for Defendant’s

infringement of Plaintiff’s asserted patent, and in no event less than a reasonable royalty

for Defendant’s acts of infringement, including all pre-judgment interest at the maximum

rate permitted by law, pursuant to 35 U.S.C. § 284;

d. A judgment awarding Plaintiff all damages, including treble damages, based on any

infringement found to be willful, pursuant to 35 U.S.C. § 284, together with pre-judgment

interest;

e. A judgment awarding Plaintiff all of Defendant’s profits, pursuant to 35 U.S.C. § 289

together with pre-judgment interest;

f. Actual damages suffered by Plaintiff as a result of Defendant’s unlawful conduct and/or

knowingly, willful and intentional conduct, in an amount to be proven at trial, as well as

pre-judgment interest as authorized by law;

g. A judgment that this is an exceptional case and an award to Plaintiff of its costs and

reasonable attorneys’ fees incurred in this action as provided by 35 U.S.C. § 285; and

h. Such other relief as this Court deems just and proper.

JURY DEMAND

Plaintiff demands a jury trial with respect to all issues triable before a jury.

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Dated: October 23, 2015

BOWLES LIBERMAN & NEWMAN LLP

Attorneys for Plaintiff

___________________________
David K. Bowles
Jared B. Spiegel
54 W. 21st Street, Suite 1007
New York, New York 10010
T: (212) 390-8842
F: (866) 844-8305
E: dbowles@blnlaw.com