Sunshine v. Final Bell - Complaint

Case 1:23-cv-04692 Document 1 Filed 06/02/23 Page 1 of 39
IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF NEW YORK
SUNSHINE ENCLOSURES LLC )

Plaintiff, ) CIVIL ACTION NO.:
)
v. )
)
)
)
FINAL BELL CORP )
Defendant. ) JURY TRIAL DEMANDED
COMPLAINT
Plaintiff, Sunshine Enclosures LLC (“SE” or “Plaintiff”), by and through its
attorneys, hereby alleges for its Complaint for Patent Infringement against Final Bell
Corp. (“Final Bell” or “Defendant”) on personal knowledge as to its own activities and on
information and belief as to all other matters, as follows:
NATURE OF THE ACTION
1. This is an action for the willful infringement of SE’s U.S. Patent No.
D969,604 (the “’604 Patent”) arising under 35 U.S.C. § 271, based on Defendant’s willful
and unauthorized commercial manufacture, use, offer for sale, and sale of packaging that,
to an ordinary observer, is indistinguishable from the ’604 Patent.
2. SE is a global manufacturing, engineering, and design firm specializing in
high-quality packaging solutions. SE’s personalized customer focus and ceaseless
aspiration for delivering unparalleled and sustainable packaging solutions has enabled
them to consistently deliver high-quality products across a multitude of industries.
3. In five short years after incorporation, SE has managed to transform the
packaging industry with its contemporary designs, which are elegantly embodied by the
’604 Patent. SE’s unwavering motivation to provide topflight quality to consumers has
directly led to hundreds of brands selecting SE as its packaging partner. Not only does SE
provide superb quality, SE also keeps the environment at the forefront of its packaging
solutions represented by its membership in the Sustainable Packaging Coalition. SE’s
three foundational pillars, quality, safety, and sustainability have facilitated its rise to the
top of the packaging industry, which has resulted in competitors resorting to mimicry to
compete.
4. Defendant, in what was clearly an attempt to benefit from SE’s distinctive
designs, sought out ways to improve its image and aesthetic, identified SE as the gold
standard of design and success, began a campaign to redesign its products to echo SE’s
aesthetic in direct infringement of the ’604 Patent, and has been infringing the ’604 Patent
ever since.
5. SE has thus been forced to file this action to vindicate its rights.
PARTIES
6. SE is a New York limited liability corporation with a place of business at
171 Madison Ave, Suite 1501, New York, New York 10016. SE specializes in innovative
and distinct packaging solutions.
7. Upon information and belief, Defendant is a California corporation with a
principal place of business at 7731 Hayvenhurst Avenue, Unit B, Van Nuys, California
91406.
JURISDICTION AND VENUE
3
8. This is an action for patent infringement arising under the provisions of the
Patent Laws of the United States of America, Title 35 of the United States Code, §§ 100,
et seq.
9. Subject matter jurisdiction over the claims is conferred upon this Court by
28 U.S.C. § 1331 (federal question jurisdiction), 28 U.S.C. § 1338(a) (patent jurisdiction),
and 28 U.S.C. § 1367 (supplemental jurisdiction).
10. This Court also has personal jurisdiction over Defendant because, upon
information and belief, Defendant maintains continuous and systematic contacts within
the state, derive substantial revenue from the state, and have committed acts giving rise to
this action within New York and within this District.
11. The exercise of personal jurisdiction comports with Defendant’s right to
due process, because it has purposefully availed themselves of the privilege of conducting
activities nationally, including within the Southern District of New York, such that it
should reasonably anticipate being hailed into court here.
12. Venue is proper in this District pursuant to 28 U.S.C. § 1391(b) and (c) and
§ 1400(b) at least because SE resides within this District, and Defendants transact business
within this District, including one or more acts of making, selling, using, importing and/or
offering for sale infringing products within this District, thus committing acts in this
District giving rise to this action.
FACTS
The Asserted Patents
13. SE’s aptitude for innovation and development of luxury packaging directly
contributed to the issuance of the ’604 Patent, entitled “Inviolate box.”
4
14. United States Patent Number D969,604 was duly and legally issued by the
United States Patent and Trademark Office on November 15, 2022, and names SE as the
Assignee. Attached as Exhibit A is a true and correct copy of the ’604 Patent.
Defendant’s Willfully Infringing Activities and Products
15. Upon information and belief, Defendant has, and continues to, infringe the
’604 Patent by manufacturing, selling, marketing, offering for sale, and/or advertising a
packaging implement embodying SE’s patented design (the “Final Bell Package”).
16. The Final Bell Package is offered in three variations: an Alien Labs form
(the “Alien Labs Package”), the Connected form (the “Connected Package”), and the
Nightshade form (the “Nightshade Package”) (collectively, the “Infringing Products”).
17. Screenshots of various offerings for sale are attached hereto as Exhibit B.
Exemplary photographs of the Infringing Products are shown below:
Connected Package Nightshade Package
18. Defendant at least offers the Alien Labs Package and the Connected
Package on its website as evidenced by the below screenshots:
5
Alien Labs Package Connected Package
19. Upon information and belief, the Infringing Products have been sold,
marketed, and offered for sale in the United States on at least the websites weedmaps.com
and weedbates.com.
6
20. Upon information and belief, Defendant has manufactured the Infringing
Products using SE’s designs covered by the ’604 Patent.
21. Defendant has known of the existence of the ’604 Patent, and its acts of
infringement have been willful and in disregard for the ’604 Patent, without any
reasonable basis for believing that it had the right to engage in infringing conduct.
22. Specifically, on May 3, 2023, SE sent a Cease-and-Desist Letter (the “First
Letter”) to Defendant requesting it halt the infringing activities by May 15, 2023.
Defendant failed to even acknowledge the First Letter by the aforementioned May 15,
2023, deadline.
23. In an attempt to resolve the matter amicably, SE, despite its patent being
infringed, allowed Defendant three additional days to respond to the First Letter.
Consequently, Defendant failed to cease its infringing activity and continued to ignore the
First Letter. Accordingly, SE sent a Second Cease-and-Desist Letter on May 18, 2023 (the
“Second Letter”).
24. The Second Letter informed Defendant that its continued infringement is
now willful and warned Defendant that SE would file the instant action if it did not provide
a response by May 26, 2025. For a second time, Defendant deliberately disregarded the
cease-and-desist letter and failed to respond to by the deadline.
25. Accordingly, SE has been forced to file this action, in spite of multiple
attempts to cordially resolve the situation, to protect the rights bestowed upon it by the
’604 Patent.
7
26. Since at least May 3, 2023, Defendant has had indisputable actual
knowledge of the ’604 Patent, as evidenced by the First Letter. Despite knowledge of its
infringement, Defendant has willfully continued to sell the Infringing Products.
27. Defendant has acted in bad faith and has continued to infringe since that
time with complete and willful disregard of the ’604 Patent, and the rights it bestows upon
SE.
28. Defendant’s actions evidence a willful and wanton disregard of SE’s rights
vis-à-vis the ’604 Patent and a desire to profit, without regard or respect for U.S. patent
laws.
29. Defendant's acts are willful with the deliberate intent to trade on the
goodwill of SE’s ’604 Patent, cause confusion and deception in the marketplace, and
divert potential sales of SE's packaging to the Defendant.
30. Upon information and belief, Defendant’s willful acts were done with
malice to divert profits from SE to Defendant, having an overall oppressive impact on
SE’s business.
31. Defendant has fraudulently misappropriated the ’604 Patent in an attempt
to pass off the Infringing Products as SE’s.
32. Defendant’s willful infringement has damaged and continues to damage
SE. Moreover, said infringement has directly resulted in SE suffering monetary damage,
including a substantial loss of business to be determined in this action.
33. SE has trade dress rights in the overall look and appearance of the ’604
Patent’s unique design. The ’604 Patent is shown below in FIG.9.
SE’s ’604 Patent Design
8
Explanation of SE’s Trade Dress
34. SE, in the ’604 Patent design, utilizes a rectangular prism, with elliptical
cutouts at the opening, and square cutouts configured to receive the flaps located on the
tray to provide for a more aesthetically pleasing look distinct from other packaging. These
features are shown below in FIG.9.
Distinctiveness of SE’s Trade Dress
35. SE’s trade dress in the ’604 Patent is distinctive due to its radical departure
from conventional packaging designs. Conventional packaging, such as the one shown
below, are formed of cardboard, with two flaps folded atop one another. The ’604 Patent
utilizes a tray which slides into a sleeve, wherein the flaps on the tray engage with the
cutouts on the sleeve. A search of Google for “vape cartridge packaging” returns only
boxes similar to the one depicted below, or boxes that only utilize a tray and a sleeve. No
locking square cutouts on the sleeve are found.
Non-Functionality of SE’s Trade Dress
9
36. SE’s trade dress, as embodied in its packaging, is non-functional. Normal
overlapped flap openings for packaging are preferred because they are economically
friendly due to thinner paperboard being utilized in their construction.
37. SE’s packages are formed of cardboard, a much heavier and non-
economical material. This gives the packaging their unique shape.
38. Paperboard packaging is cheap and easy to make. On the other hand,
cardboard packages are more expensive. The cardboard makes manufacturing more
difficult, ultimately resulting in higher tooling and manufacturing costs, without any
functional benefit.
39. SE’s packaging is therefore non-functional.
COUNT I: INFRINGEMENT OF U.S. PATENT NO. D969,604
40. SE re-alleges and incorporates the allegations in each of the paragraphs in
this Complaint as if fully set forth herein.
41. Defendants have infringed and continue to infringe the ’604 Patent at least
through its manufacture, sale, offer for sale and/or marketing of the Infringing Products,
which it offers for sale and sells on various online retailers.
42. The ’604 Patent covers the design for an inviolate box, as shown at least in
illustrative FIG. 9 of the ’604 Patent:
10
43. SE’s products embodied in the ’604 Patent are well-known and are sold
throughout the United States and the world.
11
44. A side-by-side comparison is shown below:
Connected Package ’604 Patent Nightshade Package
45. Defendant’s willful infringement is evident, and an ordinary observer,
giving such attention as a purchaser usually gives, would be so deceived by the substantial
similarity between the designs so as to be induced to purchase Defendant’s Infringing
Products, believing to be substantially the same as the SE’s packaging design protected
by the ’604 Patent.
46. Defendant’s infringement has damaged and continues to damage and injure
SE. The injury is irreparable and will continue unless and until Defendant is enjoined from
further infringement.
47. SE is entitled to a complete accounting of all revenue and profits derived
by Defendant from the unlawful conduct alleged herein, including without limitation
Defendant’s total profits pursuant to 35 U.S.C. § 289.
48. Defendant has engaged and is currently engaged in willful and deliberate
infringement of the ’604 Patent. Accordingly, SE is entitled to treble damages pursuant to
35 U.S.C. § 284. Moreover, such willful and deliberate infringement qualifies this action
12
as an exceptional case supporting an award of reasonable attorney’s fees pursuant to 35
U.S.C. § 285.
49. SE is entitled to a permanent injunction preventing Defendant from further
infringement of the ’604 Patent.
COUNT II: TRADE DRESS INFRINGEMENT UNDER § 43(a) OF THE LANHAM ACT
15 U.S.C. § 1125(a)
1. SE re-alleges and incorporates the allegations in each of the paragraphs in this
Complaint as if fully set forth herein.
2. Defendant’s advertisement, promotion, manufacture, import, offering for sale,
selling and distributing the Infringing Products violates § 43(a) of the Lanham Act, 15 U.S.C. §
1125(a), by infringing SE’s trade dress. Defendant’s use of SE’s trade dress and/or colorable
imitations thereof is likely to cause confusion, mistake, or deception as to the affiliation,
connection, and/or association of Defendant’s with SE and as to the origin, sponsorship and/or
approval of Defendant’s Infringing Product, at least by creating the false and misleading
impression that its Infringing Product is manufactured by, authorized by or otherwise associated
with SE.
3. The acts of each of the individual Defendants constitutes contributory trade dress
infringement in violation of § 43(a) of the Lanham Act (15 U.S.C. § 1125(a)).
4. SE’s trade dress is entitled to protection under the Lanham Act.
5. SE’s trade dress includes a unique, distinctive, and non-functional design.
6. SE has extensively and continuously promoted and used its trade dress in the United
States. Through that extensive and continuous use, SE’s trade dress has become a well-known
indicator of the origin and quality of SE’s products and has also acquired substantial secondary
meaning in the marketplace.
13
7. Defendant’s use of SE’s trade dress has caused and, unless enjoined, will continue
to cause substantial and irreparable injury to SE for which SE has no adequate remedy at law,
including at least substantial and irreparable injury to the goodwill and reputation for quality
associated with SE’s trade dress with SE and SE’s products.
8. Upon information and belief, Defendant’s use of SE’s trade dress and colorable
imitations thereof has been intentional, willful, and malicious. Defendant’s bad faith is evidenced
at least by the similarity of its Infringing Products to SE’s trade dress and by Defendant’s
continuing disregard for SE’s rights.
9. SE is entitled to injunctive relief, and SE is entitled to recover at least Defendant’s
profits, SE’s actual damages, enhanced damages, costs, and reasonable attorney fees under at least
15 U.S.C. §§ 1125(a), 1116, and 1117.
COUNT III: FEDERAL COMMON LAW UNFAIR COMPETITION
50. SE re-alleges and incorporates the allegations in each of the preceding
paragraphs as if fully set forth herein.
51. Defendant is willfully, fraudulently, oppressively, maliciously and
unlawfully attempting to pass off, and are passing off, the Infringing Products as those
approved and/or authorized by SE.
52. Defendant’s use in commerce of the Infringing Products continues to
confuse and deceive consumers as to the source of origin of the goods and services for
which SE has invested substantial time, effort and money in developing and further
damages SE’s goodwill and reputation.
14
53. Defendant has been palming off its goods as SE’s goods. Consumers have
been and continue to be confused as to whether Defendant’s Infringing Products are
affiliated with SE.
54. The damage suffered by SE is irreparable and will continue unless
Defendant is restrained by this Court from further infringement.
55. Defendant’s willful, deliberate and malicious conduct constitutes unfair
competition with SE.
56. Such conduct by Defendant is the sole reason for Defendant’s ability to
market and sell its unauthorized Infringing Products, which are unauthorized copies that
embody SE’s inviolate box.
57. Defendant has been unjustly enriched through its flagrantly unlawful
conduct, and all remedies available at law and in equity are justified.
58. SE has no adequate remedy at law in the continuing nature of the unfair
competition, which will result in irreparable harm to SE should Defendant not be enjoined
from such acts.
COUNT IV: UNFAIR COMPETITION UNDER NEW YORK LAW
59. SE re-alleges and incorporates the allegations in each of the preceding
paragraphs as if fully set forth herein.
60. Defendant is willfully, fraudulently, oppressively, maliciously and
unlawfully attempting to pass off, and is passing off, the Infringing Products as those
approved and/or authorized by SE.
61. Defendant’s use in commerce of the Infringing Products continues to
confuse and deceive consumers as to the source of origin of the goods and services for
15
which SE has invested substantial time, effort and money in developing and further
damages SE’s goodwill and reputation.
62. Defendant has been palming off its goods as SE’s goods. Consumers have
been and continue to be confused as to whether Defendant’s Infringing Products are
affiliated with SE.
63. The damage suffered by SE is irreparable and will continue unless
Defendant is restrained by this Court from further infringement.
64. Defendant’s willful, deliberate and malicious conduct constitutes unfair
competition with SE.
65. Such conduct by Defendant is the sole reason for Defendant’s ability to
market and sell its unauthorized Infringing Products, which are unauthorized copies that
embody SE’s inviolate box.
66. Defendant has been unjustly enriched through its flagrantly unlawful
conduct, and all remedies available at law and in equity are justified.
67. SE has no adequate remedy at law in the continuing nature of the unfair
competition, which will result in irreparable harm to SE should Defendant not be enjoined
from such acts.
COUNT V: DECEPTIVE PRACTICES AND FALSE ADVERTISING

UNDER NEW YORK GEN. BUS. LAW §§ 349-350
68. SE re-alleges and incorporates the allegations in each of the paragraphs in
this Complaint as if fully set forth herein.
69. Defendant’s acts constitute false advertising and deceptive acts and
practices, in violation of New York General Business Law §§ 349-350.
16
70. Defendant’s advertisement, promotion, manufacture, import, offering for
sale, selling and distributing the infringing products in direct competition with SE
constitutes activity likely to cause confusion, mistake and deception for and to consumers
as to the source of SE’s products, such that consumers may believe Defendant’s products
are sponsored by, endorsed by, approved by, licensed by, authorized by, or affiliated or
connected with SE.
71. Defendant has acted willfully and deliberately and has profited and been
unjustly enriched by sales it would not otherwise have made but for its unlawful conduct.
72. Defendant has, by virtue of the foregoing, caused SE to suffer injuries for
which, unless enjoined, SE will continue to suffer substantial and irreparable injury for
which SE has no adequate remedy at law, including at least substantial and irreparable
injury to the goodwill and reputation for quality associated with SE’s products.
73. SE is entitled to injunctive relief, and SE is entitled to recover at least
Defendant’s profits, actual damages, enhanced damages, costs, and reasonable attorney
fees under at least 15 U.S.C. §§ 1125(a), 1116, and 1117.
PRAYER FOR RELIEF
WHEREFORE, SE respectfully requests that this Court enter judgment against
Defendants as follows:
A. Granting judgment in favor of SE and against Defendant on all claims;
B. Adjudging that Defendant has infringed the ’604 Patent in violation of 35
U.S.C. § 271;
C. Adjudging that Defendant’s infringement was willful;
17
D. Preliminarily and permanently enjoining Defendant, its officers, agents,
subsidiaries, servants, partners, employees, attorneys, investors, consultants and all others
in active concert or participation with them, from (1) making any use of Plaintiff’s
products, or any designation of origin confusingly similar thereto, including offering to
sell, selling, distributing, or importing into the U.S. packaging confusingly similar thereto;
(2) manufacturing, importing, advertising, marketing, promoting, supplying, distributing,
offering for sale, or selling the Infringing Products or any products confusingly similar
thereto; (3) engaging in any other activity constituting unfair competition with Plaintiff,
or acts and practices that deceive consumers, the public, and/or trade, including without
limitation, the use of designations and design elements used or owned by or associated
with Plaintiff; and (4) committing any other act which falsely represents or which has the
effect of falsely representing that Defendant’s Infringing Products are licensed by,
authorized by, offered by, produced by, sponsored by, or in any other way associated with
Plaintiff;
E. Ordering Defendant to recall from any distributors and retailers and to
deliver to Plaintiff for destruction or other disposition all remaining inventory of all
Infringing Products and related items, including all advertisements, promotional and
marketing materials therefore, as well as means of making same;
F. Ordering an accounting by Defendant of all gains, profits and advantages
derived from its wrongful acts;
G. Ordering third party platforms to cease all sales of the Infringing Products;
H. Ordering third party platforms to freeze Defendant’s accounts;
18
I. Order Defendant, at its own expense, to withdraw from the market, account
for and properly destroy any and all products bearing the trade dress;
J. Order Defendant, pursuant to 15 U.S.C. § 1116, to serve on Plaintiff within
thirty (30) days after service on Defendant of preliminary or permanent injunctive orders,
a report in writing, under oath, setting forth in detail the manner and form in which
Defendant has complied with the injunction.
K. Order Defendant to account for, and pay over to Plaintiff, Defendant’s
profits and all damages sustained by Plaintiff;
L. Increase the amount of damages and/or profits awarded to Plaintiff, as
provided by law;
M. Award Plaintiff such treble and punitive damages for Defendant’s willful
and intentional acts of patent infringement, unfair competition and infringement of
Plaintiff’s rights that the Court shall deem just and proper;
N. Award Plaintiff the fees, costs and disbursements, and interest, expended
in connection with any actions taken to investigate and confirm the claims made herein;
O. Declaring Plaintiff as the prevailing party and this case as exceptional, and
awarding Plaintiff its reasonable attorneys’ fees, pursuant to 15 U.S.C. § 1117(a);
P. Ordering that Defendants pay all fees, expenses, and costs associated with
this action;
Q. Award Plaintiff its reasonable attorneys’ fees, costs, disbursements, and
interest, as provided by law; and
R. Grant such other and further relief as the Court may deem just and proper.
DEMAND FOR JURY TRIAL
19
Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, SE demands a trial by
jury on all claims and issues so triable.
New York, New York

Dated: June 2, 2023
By: /s/Andrew D Bochner

Andrew D. Bochner, Esq.
Bochner PLLC
295 Madison Ave., 12th Fl.
New York, New York 10017
(646) 971-0685
Attorney(s) for Plaintiff
20
Exhibit A
USOOD9696045
(12) United States Design Patent ((4510)) Date

PatentofNoPatent
.: : US D969,604 S
Ubell ** Nov. 15 , 2022
( 54 ) INVIOLATE BOX resistant- 5 -pack -boxes -white ?variant= 31265378467893 & currency =
USD & utm_medium = % E2 % 80 % A6 > ( Year: 2022 ) . *
( 71 ) Applicant: Sunshine Enclosures LLC , New York , ( Continued )
NY (US )
Primary Examiner Vy N Koenig
( 72 ) Inventor: Edward Ubell , New York , NY (US ) Assistant Examiner Anastasia Longoria
(74 ) Attorney, Agent, or Firm — Bochner IP, PLLC ;
( 73 ) Assignee : Sunshine Enclosures LLC , New York , Andrew D. Bochner
NY (US ) ( 57 ) CLAIM
( ** ) Term : 15 Years The ornamental design for an inviolate box , as shown and
described .
( 21 ) Appl. No .: 29 /758,070 DESCRIPTION
(22) Filed : Nov. 12 , 2020 FIG . 1 is a top , front, left- side perspective view of an
( 51 ) LOC ( 13 ) Cl . 09-03 inviolate box showing my new design ;
FIG . 2 is a front elevation view thereof;
( 52) U.S. Ci . FIG . 3 is a rear elevation view thereof;
USPC D9 /432 FIG . 4 is a left side elevation view thereof;
(58) Field of assification earch FIG . 5 is a right side elevation view thereof;
USPC D9 / 420 , 423 , 652 , 711 , 721 , 414-419 , FIG . 6 is a top plan view thereof at a reduced scale , the
D9/ 430–433 , 456 ; D3 / 20 bottom plan view being a mirror image ;
CPC B65D 7770433 ; B65D 5/44 ; B65D 5/64 ; FIG . 7 is a cross - section view thereof taken along line 7-7
B65D 5/66 ; B65D 5/00 ; B65D 5/02 ; of FIG . 2 ;
B65D 5/18 ; B65D 5/20 ; B65D 5/0245 ; FIG . 8 is a cross - section view thereof taken along line 8-8
B65D 43/20 ; B65D 2215 /00-08; B65D of FIG . 2 ;
77/00 ; B65D 77/04 FIG . 9 is an exploded view of the inviolate box of FIG . 1 ,
See application file for complete search history . showing the outer box component separated from the inner
box component;
( 56 ) References Cited FIG . 10 is a top , front left side perspective view of the inner
U.S. PATENT DOCUMENTS
box component shown separately to reveal aspects of the
design that may not be visible in other figures;
D798,708 S * 10/2017 Chambers D9 / 432 FIG . 11 is a front elevation view thereof;
D911,167 S * 2/2021 Tsai D9 /432 FIG . 12 is a rear elevation view thereof;
D911,833 S * 3/2021 Toroyan D9 /416 FIG . 13 is aa left side elevation thereof;
D922,195 S * 6/2021 Altman D9 /432 FIG . 14 is a right side elevation view thereof;
(Continued ) FIG . 15 is a top plan view thereof, at a reduced scale ; and,
FIG . 16 is a bottom plan view thereof, at a reduced scale .
OTHER PUBLICATIONS In the drawings, the broken lines are for the purpose of
illustrating environment only, and form no part of the
CreativeLabz843 Pre -Roll Packaging Boxes 3 Pack . [ Online ] 7 claimed design .
pages . First available 2022. Retrieved Jul. 27 , 2022 from URL :
< https://creativelabz843.com/products/pre-roll-packaging-child 1 Claim , 6 Drawing Sheets
US D969,604 S
Page 2
( 56 ) References Cited
U.S. PATENT DOCUMENTS
D932,891 S * 10/2021 Chambers D9 /432
2011/0132779 A1 * 6/2011 Loughman B65D 5/4204
229 / 125.125
2016/0251107 A1 * 9/2016 Everett B65D 59/04
206/ 1.5
2019/0062023 A1 * 2/2019 Lantz B65D 75/327
2020/0102113 A1 * 4/2020 Laughlin B65D 5/38
2020/0180808 A1 * 6/2020 Gauvin B65D 5/38
2021/0031969 A1 * 2/2021 Fahlke B65D 50/046
2021/0053715 Al * 2/2021 Tsai 55D 59/04
2021/0107712 A1 * 4/2021 Chambers B65D 5/5007
2021/0139220 A1 ** 5/2021 Lantz B65D 5/38
2022/0144507 A1 * 5/2022 Ubell B65D 50/046
OTHER PUBLICATIONS
Amazon Pinch N Flip Premium Child Resistant Pre Roll Packaging
Box Container. [ Online ] pages . Published on : Sep. 23 , 2020 .
Retrieved Jul. 27 , 2022 from URL : < https://www.amazon.com/
Pinch -Flip -Resistant -Packaging - Container/dp /B08JTP8RJC ? source =
ps - sl -shoppingads - lpcontext & ref_ = fplfs & smid = A31WH % E2 % 80 %
A6 > ( Year: 2020 ) . *
Amazon BENECREAT 12Pcs Black Cardboard Box . [ Online ] 6
pages. Published on : May 21 , 2021. Retrieved Jul. 27 , 2022 from
URL : < https://www.amazon.com/BENECREAT-Packaging-4-8x2xl
5 -Cardboard -Essential/dp / B095KLTMMW / ref = sr_1_13 ? crid =
72CJTDWOZOWT & keywords % E2 % 80 % A6L > ( Year: 2021 ) . *
* cited by examiner
U.S. Patent Nov. 15 , 2022 Sheet 1 of 6 US D969,604 S
FIG . 1
7
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FIG . 2
ht 8
FIG . 3
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FIG . 6
mo wapin
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FIG . 7
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FIG . 8
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FIG . 10 we
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Exhibit B
2
3
4
5
6
7
8
9
10
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Case 1:23-cv-04692 Document 1 Filed 06/02/23 Page 1 of 39

IN THE UNITED STATES DISTRICT COURT

SUNSHINE ENCLOSURES LLC )

Plaintiff, Sunshine Enclosures LLC (“SE” or “Plaintiff”), by and through its

information and belief as to all other matters, as follows:

NATURE OF THE ACTION

to an ordinary observer, is indistinguishable from the ’604 Patent.

2. SE is a global manufacturing, engineering, and design firm specializing in

high-quality packaging solutions. SE’s personalized customer focus and ceaseless

them to consistently deliver high-quality products across a multitude of industries.

3. In five short years after incorporation, SE has managed to transform the

solutions represented by its membership in the Sustainable Packaging Coalition. SE’s

4. Defendant, in what was clearly an attempt to benefit from SE’s distinctive

6. SE is a New York limited liability corporation with a place of business at

and distinct packaging solutions.

7. Upon information and belief, Defendant is a California corporation with a

JURISDICTION AND VENUE

28 U.S.C. § 1331 (federal question jurisdiction), 28 U.S.C. § 1338(a) (patent jurisdiction),

and 28 U.S.C. § 1367 (supplemental jurisdiction).

this action within New York and within this District.

11. The exercise of personal jurisdiction comports with Defendant’s right to

should reasonably anticipate being hailed into court here.

District giving rise to this action.

The Asserted Patents

contributed to the issuance of the ’604 Patent, entitled “Inviolate box.”

Defendant’s Willfully Infringing Activities and Products

Nightshade form (the “Nightshade Package”) (collectively, the “Infringing Products”).

Exemplary photographs of the Infringing Products are shown below:

Connected Package Nightshade Package

Package on its website as evidenced by the below screenshots:

Alien Labs Package Connected Package

Products using SE’s designs covered by the ’604 Patent.

22. Specifically, on May 3, 2023, SE sent a Cease-and-Desist Letter (the “First

cease-and-desist letter and failed to respond to by the deadline.

infringement, Defendant has willfully continued to sell the Infringing Products.

divert potential sales of SE's packaging to the Defendant.

malice to divert profits from SE to Defendant, having an overall oppressive impact on

31. Defendant has fraudulently misappropriated the ’604 Patent in an attempt

to pass off the Infringing Products as SE’s.

32. Defendant’s willful infringement has damaged and continues to damage

including a substantial loss of business to be determined in this action.

Patent’s unique design. The ’604 Patent is shown below in FIG.9.

SE’s ’604 Patent Design

Explanation of SE’s Trade Dress

features are shown below in FIG.9.

Distinctiveness of SE’s Trade Dress

locking square cutouts on the sleeve are found.

Non-Functionality of SE’s Trade Dress

36. SE’s trade dress, as embodied in its packaging, is non-functional. Normal

friendly due to thinner paperboard being utilized in their construction.

economical material. This gives the packaging their unique shape.

39. SE’s packaging is therefore non-functional.

COUNT I: INFRINGEMENT OF U.S. PATENT NO. D969,604

40. SE re-alleges and incorporates the allegations in each of the paragraphs in

this Complaint as if fully set forth herein.