Case 1:20-cv-02095 Document 1 Filed 03/09/20 Page 1 of 10

UNITED STATES DISTRICT COURT

AMEZIEL, INC.,

Plaintiff, C.A. No. ________________

v.

WIESNER PRODUCTS, INC., JURY TRIAL DEMANDED

Defendant.

COMPLAINT

Plaintiff Ameziel, Inc. d/b/a SONGMICS (“Ameziel” or “Plaintiff”), by its undersigned

attorneys, files this Complaint against defendant Wiesner Products Inc. d/b/a Studio 3B

(“Wiesner” or “Defendant”) and alleges as follows:

NATURE OF THE ACTION

1. Ameziel brings this action seeking a declaratory judgment that Ameziel’s products

do not infringe Defendant’s U.S. Design Patent No. D640,876, reissued as RE45,533, titled

Clothing Hanger (“the ’533 patent”) and listing Samuel V. Cohen as the inventor. Ameziel also

seeks a declaratory judgment that the ’533 patent is invalid.

THE PARTIES

2. Ameziel, Inc. is a California corporation with a principal place of business at 4215

E Airport Drive, Ontario, CA 91761, doing business as SONGMICS.

3. Upon information and belief, Defendant Wiesner Products Inc. is a New York

corporation with a principal place of business at 1333 Broadway, 6th Fl. New York, NY 10018,

doing business under the name of Studio 3B.

JURISDICTION AND VENUE

4. This is a civil action for declaratory judgment brought under the Declaratory

Judgment Act, 28 U.S.C. §§ 2201 and 2202, and arises under the Patent Laws of the United States,

Title 35 of the United States Code (35 U.S.C. §§ 100 et seq.). This Court has subject matter

jurisdiction over the action pursuant to 28 U.S.C. §§ 1331 and 1338(a), as it involves claims arising

under the Patent Laws of the United States including but not limited to 35 U.S.C. § 271.

5. This Court has personal jurisdiction over Defendant because, upon information and

belief, Defendant transacts business within the State of New York including marketing and selling

products to customers in New York and maintaining websites with access and promoting sales in

New York, and has committed the acts alleged in this Complaint in the State of New York

including sending cease and desist letters to Ameziel from New York. This Court also has personal

jurisdiction over Defendant because, upon information and belief, Defendant resides and/or is

incorporated in New York.

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

and 1400(b).

FACTUAL BACKGROUND

7. Ameziel is in the business of designing, manufacturing, selling, and promoting

quality home necessities including clothing hangers. Over the years, Ameziel has become one of

the top sellers for affordable, functional household products on Amazon.com (“Amazon”).

8. Upon information and belief, Wiesner is a wholesale distributor of footwear and

apparel. The company’s line of business includes selling household products online, such as

clothing hangers. Wiesner purportedly provides product designs and licensing along with its retail

business.

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9. Ameziel and Wiesner are competitors at least in the business of selling household

products.

10. On July 5, 2011, the United States Patent Office issued a design patent for a

particular design directed to clothing hangers, U.S. Pat. No. D640,876, whose earliest filing date

is December 6, 2010. This patent was then reissued as the ’533 patent on June 2, 2015. The ’533

patent covers the following design (illustrated by the solid lines):

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11. Ameziel has sold certain clothing hanger products on Amazon, which it internally

refers to as the UCRP 50 Series (“the 50 Series”). An example of Ameziel’s 50 Series clothing

hanger is depicted below.

12. On or about November 8, 2019, Ameziel received a letter from Wiesner’s attorneys

(“November 2019 Letter”) accusing Ameziel of infringing the ’533 patent for selling the 50 Series

products on Amazon.

13. On or about November 19, 2019, Wiesner instructed Amazon to remove Ameziel’s

listing of the 50 Series products due to the alleged infringement of the ’533 patent.

14. However, the design claimed in the ’533 patent is not novel and, in any event, is

merely an obvious variant of prior art hanger designs such as Korean Patent Registration No. 30-

0550154. The design claimed in the ’533 patent therefore does not qualify for patent protection.

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15. The ’533 patent is also invalid because the alleged design is dictated by function

rather than any ornamental feature. For example, the hanger features claimed in the ’533 patent

are functional, in that, among other things, it prevents garments from slipping off the clothing

hangers.

16. In addition and upon information and belief, Samuel V. Cohen is not the actual

inventor, and merely derived the claimed design from others such as, for example, Korean Patent

Registration No. 30-0550154

17. The feature also did not originate with Wiesner. As shown below, such particular

design is disclosed in at least Korean Patent Registration No. 30-0550154 (the “Korean ’154

patent”). See Exhibit 1. This Korean ’154 patent was filed in 2009 and published before the

priority date of the ’533 patent, and therefore constitutes prior art. The following is a side-by-side

comparison of the ’533 patent and the Korean ’154 patent:

Fig. 1 of the ’533 patent Fig. 1 of the Korean ’154 patent

Fig. 3 of the ’533 patent Fig. 2 of the Korean ’154 patent

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Figs. 4-5 of the ’533 patent Figs. 5-6 of the Korean ’154 patent

Figs. 6-7 of the ’533 patent Figs. 3-4 of the Korean ’154 patent

18. In addition, Ameziel’s products including the 50 Series cannot infringe the ’533

patent. Ameziel’s products include nothing more than design features within public domain.

19. Nevertheless, in good faith and in an effort to resolve the parties’ dispute amicably,

Ameziel engaged in a settlement negotiation with Wiesner during which Wiesner sought to license

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the ’533 patent for a fee. The negotiation spanned several months after Amazon removed the

product listing of the 50 Series.

20. During the negotiations, Wiesner accused two additional series of Ameziel’s hanger

products of infringing the ’533 patent. The products are referred to as UCRP 20 Series and UCRP

41 Series (“the 20 Series” and “the 41 Series” respectively).

21. Ameziel never admitted any infringement of the ’533 patent during the negotiation.

22. To facilitate the negotiation, Ameziel disclosed its confidential sales information in

response to Wiesner’s request. Ameziel also disclosed the Korean ’154 patent to Wiesner.

23. Upon information and belief, Wiesner shut down the negotiation with Ameziel upon

learning of the Korean ’154 patent.

24. In February 2020, Wiesner sent Ameziel a second cease and desist letter (“February

2020 Letter”) in which Wiesner terminated its offer to license the ’533 patent, requested a

settlement fee calculated using Ameziel’s confidential information, and threatened to file a patent

infringement lawsuit should Ameziel not respond to its demand by February 21, 2020.

25. For at least the reasons set forth above, an actual controversy has arisen and exists

between the parties as to the validity of ’533 patent and the alleged infringement by the

manufacture and sale of Ameziel’s products including the 50 Series, the 20 Series, and the 41

Series.

COUNT I – DECLARATION OF NON-INFRINGEMENT

26. Ameziel repeats and incorporates by reference its allegations in each of the

foregoing paragraphs as if fully set forth herein.

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27. In its November 2019 Letter and February 2020 Letter, Wiesner avers that Ameziel

infringes the ’533 patent by at least manufacturing and selling the 50 Series. Wiesner has also

accused that the 20 Series and the 41 Series each infringes the ’533 patent.

28. Ameziel does not infringe, induce infringement of, and/or contributorily infringe,

and has not infringed, induced infringement of, and/or contributorily infringed any valid claim of

the ’533 patent by manufacturing and selling its hanger products.

29. An actual case or controversy exists between Ameziel and Wiesner, based on

Wiesner’s claim that Ameziel’s products allegedly infringe the ’533 patent.

30. Ameziel seeks and is entitled to a declaratory judgment that it does not infringe any

valid claim of the ’533 patent. Without such declaratory relief, Ameziel will be irreparably harmed

and damaged.

COUNT II – DECLARATION OF INVALIDITY OF THE ASSERTED PATENT

31. Ameziel repeats and incorporates by reference its allegations in each of the

foregoing paragraphs as if fully set forth herein.

32. As set forth above, the design claimed in the ’533 patent is not novel and is

anticipated by at least the Korean ’154 patent.

33. As set forth above, the design claimed in the ’533 patent is not novel and rendered

obvious by at least the Korean ’154 patent.

34. Moreover, does not qualify for patent protection because the claimed design is

dictated by function rather than ornamental features. For example, the claimed hanger features are

functional.

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35. Ameziel believes that the ’533 patent is invalid and void for failure to comply with

one or more sections of Title 35 of the United States Code including, without limitation, 35 U.S.C.

§§ 101, 102, 103, 112 and/or 171.

36. An actual controversy exists between Ameziel and Wiesner regarding whether or

not the ’533 patent is invalid.

37. Ameziel seeks and is entitled to a declaratory judgment that the ’533 patent is

invalid for failure to satisfy one or more conditions of patentability set forth in 35 U.S.C. §§ 101,

102, 103, 112 and/or 171. Without such declaratory relief, Ameziel will be irreparably harmed

and damaged.

COUNT III – DECLARATION OF LACK OF DAMAGES TO DEFENDANT

38. Ameziel repeats and incorporates by reference its allegations in each of the

foregoing paragraphs as if fully set forth herein.

39. Ameziel seeks and is entitled to a declaratory judgment that Wiesner has no claim

for damages from the alleged infringing activities because the ’533 patent is invalid and because

Ameziel has not infringed any claim of the asserted patent.

PLAINTIFF’S PRAYER FOR RELIEF

Wherefore, Ameziel respectfully requests that this Court enter judgment in its favor and

grant the following relief:

(a) A declaration that Ameziel has not infringed, induced infringement of, or

contributorily infringed, and does not infringe, induce infringement of, and/or contributorily

infringe U.S. Design Patent No. D640,876, which is reissued as RE45,533;

(b) A declaration that U.S. Design Patent No. D640,876, reissued as RE45,533, is

invalid and void for failure to comply with one or more sections of Title 35 of the United States

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Code including, without limitation, 35 U.S.C. §§ 101, 102, 103, 112 and/or 171 and/or failure to

comply with 37 C.F.R. § 1.56;

(c) A declaration that Wiesner has no claim for damages from the alleged infringement

of U.S. Design Patent No. D640,876, reissued as RE45,533;

(d) A declaration that this case is “exceptional” within the meaning of 35 U.S.C. § 285;

(e) An award to Ameziel of its costs, attorney fees, and expenses pursuant to 35 U.S.C.

§ 285; and

(f) An award to Ameziel of any and all other just and reasonable relief to which it is

entitled.

JURY DEMAND

Ameziel requests a trial by jury as to all issues triable by a jury.

New York, NY Respectfully submitted,

GREENBERG TRAURIG, LLP

By: /s/ Jonathan D. Ball

Attorneys for Plaintiff Ameziel, Inc.

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