SL Int'l MGMT v. Derby Spirits - Complaint

Case 2:19-cv-01148 Document 1 Filed 07/01/19 Page 1 of 8
1 Christian W. Liedtke (Pro Hac Vice Pending)

This attorney has complied with LR IA 11-2
2 ACUMINIS LLP
3 3420 Bristol Street, 6th Floor
Costa Mesa, CA 92626
4 Telephone: (949) 698-7840
cw.liedtke@acuminis.biz
5
David B. Barney (NV 14681)
6 SKLAR WILLIAMS PLLC
7 410 South Rampart Boulevard, Suite 350
Las Vegas, NV 89145
8 Telephone: (702) 360-6000
dbarney@sklar-law.com
9
Attorneys for Plaintiff,
10
SL International Management Company, Inc.
11
12
13 UNITED STATES DISTRICT COURT

14 DISTRICT OF NEVADA
15
16 SL International Management Company, No. _________________________

Inc.,
17
Plaintiff,
18 COMPLAINT FOR PATENT
v. INFRINGEMENT
19
Derby Spirits, LLC, JURY DEMANDED
20 Sami Omar, and
Jeffrey Tomastik,
21
Defendants.
22
23
24 Plaintiff SL International Management Company, Inc., a Delaware Corporation (“Plaintiff”
25 or “SLIMC”) brings this Complaint for Patent Infringement (the “Complaint”) against Defendants
26
Derby Spirits, LLC, (“Derby”), Sami Omar (“Omar”) and Jeffrey Tomastik (“Tomastik”;
27
collectively, “Defendants”). In support of the Complaint, Plaintiff alleges as follows:
28
1
2 INTRODUCTION
3
1. This action is brought pursuant to Title 35 of the United States Code, in which
4
Plaintiff SLIMC complains of Defendants’ infringement of a duly and validly issued design patent,
5
United States Design Patent No. D544,361 (the “’361 patent”), which claims the ornamental design
6
7 for a bottle as disclosed and described therein. Plaintiff owns all rights, title and interest to the
8 validly issued ’361 patent.
9 2. The infringing product at issue is a product sold as Ambros Banana Whiskey (the
10
“Infringing Product”). Upon information and belief, the Infringing Product is sold in this District
11
and in several other states through this country. The infringing activities complained of herein are
12
done by Defendants without permission or license from Plaintiff.
13
3. Defendants’ infringing acts as complained of herein have caused and are causing
14
15 Plaintiff irreparable harm and injury. Plaintiff will continue to suffer substantial loss and irreparable
16 harm unless and until Defendants are permanently enjoined from the infringing acts complained of
17 in this Complaint.
18
4. The infringing acts of Defendants complained of herein are, and have been, willful
19
and deliberate.
20
JURISDICTION AND VENUE
21
22 5. This is a civil action for patent infringement arising under the patent laws of the
23 United States of America, 35 U.S.C. § 1, et seq.
24 6. This Court has subject matter jurisdiction over the subject matter of the Complaint
25 pursuant to 28 U.S.C. §§ 1331 and 1338.
26
7. This Court has personal jurisdiction over Derby because: (a) it is a limited liability
27
company registered with the Nevada Secretary of State; (b) has its principal place of business in
28
2
1 this District and (c) intentionally conducts business in this District. This Court also has personal
2 jurisdiction over Derby based upon Derby’s infringing acts of importing, manufacturing,
3
advertising, displaying, offering for sale and/or selling the Infringing Product.
4
8. This Court has personal jurisdiction over Omar because he: (a) resides in this
5
District and (b) regularly and intentionally conducts business in this District. This Court also has
6
7 personal jurisdiction over Omar based upon his infringing acts of importing, manufacturing,
8 advertising, displaying, offering for sale and/or selling the Infringing Product.
9 9. This Court has personal jurisdiction over Tomastik because he: (a) resides in this
10
District and (b) regularly and intentionally conducts business in this District. This Court also has
11
personal jurisdiction over Tomastik based upon his infringing acts of importing, manufacturing,
12
advertising, displaying, offering for sale and/or selling the Infringing Product.
13
10. Venue is proper in this District pursuant to 28 U.S.C. §§ 1391 and 1400(b) because
14
15 each of the Defendants does business in this District, has committed acts of infringement in this
16 District and is subject to personal jurisdiction in this District.

17 PARTIES
18
11. Plaintiff SLIMC is a Delaware Corporation.
19
12. Defendant Derby is a limited liability company registered with the Nevada Secretary
20
of State. Derby has its principal place of business at 7370 Eastgate Road, Suite 155 in Henderson,
21
22 NV.
23 13. Defendant Omar is a resident of Nevada and does business in Nevada.
24 14. Defendant Tomastik is a resident of Nevada and does business in Nevada.

25 BACKGROUND AND THE INFRINGING ACTIVITIES
26
15. On June 12, 2007, the ’361 patent was duly and legally issued by the United States
27
Patent and Trademark Office. A copy of the ’361 patent is attached hereto as Exhibit A.
28
3
1 16. The ’361 patent has been in force and effect since its issuance and has been assigned
2 to Plaintiff SLIMC.
3
17. At all relevant times, SLIMC has been and still is, the owner of the entire right, title
4
and interest in and to the ’361 patent.
5
18. Defendants are marketing and offering to sell in the United States a product called
6
7 Ambros Banana Whiskey, and that Infringing Product is imported, manufactured, advertised,
8 displayed, offered for sale and/or sold using a bottle design that infringes the ’361 patent. Reprinted
9 below and attached as Exhibit B is a side-by-side comparison of the design claimed in the ’361
10
patent and the bottle design of the Infringing Product.
11
12
13
14
15
16
17
18
19
20
21
22
23
19. Upon information and belief, the design for the Infringing Product was derived by
24
one or all of the Defendants with knowledge of Plaintiff’s rights in the ’361 patent.
25
20. On or about May 6, 2019, counsel for Plaintiff sent Derby, Omar and Tomastik a
26
27 letter that stated, among other things, that the bottle used for the Infringing Product is substantially
28 similar and/or practically identical to the design claimed in the ’361 patent (the “Cease and Desist
4
1 Letter”). A copy of the ’361 patent was enclosed with the Cease and Desist Letter. A copy of the
2 Cease and Desist Letter is attached as Exhibit C.
3
21. On May 13, 2019 counsel for Defendant Derby sent an email to counsel for Plaintiff
4
stating in pertinent part “Our client requested that we investigate the claims set forth in your letter
5
dated May 6, 2019. As such, we are currently evaluating this matter and will respond substantively
6
7 shortly.” A copy of the email in issue is attached as Exhibit D. To date, no such response has been
8 received leaving Plaintiff with no choice but to bring this Complaint.
9 22. Upon information and belief, Defendants all have knowledge of the ’361 patent and
10
have had that knowledge prior to the date of the Complaint.
11
23. Upon information and belief, Defendants are conducting their infringing activities
12
with respect to the Infringing Product with knowledge of the ’361 patent.
13
24. None of the Defendants has a license to the ’361 patent. None of the Defendants
14
15 has permission to utilize the design claimed and disclosed in the ’361 patent for the Infringing
16 Product or for any other purpose.

17 COUNT I
18
(INFRINGEMENT OF THE ’361 PATENT)
19
25. Plaintiff repeats and realleges the allegations in paragraph 1-23 of this Complaint as
20
though fully set forth herein.
21
22 26. The ’361 patent is a duly and legally issued patent.
23 27. The ’361 patent has been in force and effect since its issuance by the United States
24 Patent and Trademark Office on June 12, 2007.

25 28. At all relevant times, SLIMC has been and still is, the owner of the entire right, title
26
and interest in and to the ’361 patent.
27
28
5
1 29. Defendants have been, are and will be infringing the ’361 patent by importing,
2 making, using, selling, and/or offering to sell the Infringing Product in the United States without
3
permission or license from Plaintiff.
4
PRAYER FOR RELIEF
5
WHEREFORE, Plaintiff prays that judgment be entered by this Court for Plaintiff and
6
7 against Defendants as follows:
8 A. That Defendants have infringed and are infringing the ’361 patent;
9 B. Permanently enjoining and restraining Defendants, their agents, affiliates, subsidiaries,

10
servants, employees, directors, attorneys and those persons in active concert or coordination
11
with or controlled by Defendants from further infringing the ’361 patent;
12
C. That Defendants’ acts of infringement were and are willful;
13
D. That Plaintiff be awarded damages covered by the acts of patent infringement by
14
15 Defendants in an amount not less than a reasonable royalty pursuant to 35 U.S.C. § 284, or
16 in an amount equal to Defendants’ profits pursuant to 35 U.S.C. § 289, whichever is greater,

17 and that such damages be trebled in accordance with the provisions of 35 U.S.C. § 284.
18
E. That Defendants be directed to withdraw from distribution all the Infringing Products,
19
whether in the possession of any or all of the Defendants or their distributors, wholesalers,
20
and/or retailers, and that all Infringing Products or materials be immediately impounded or
21
22 destroyed;
23 F. For monetary damages in an amount according to proof;
24 G. For interest on said damages at the legal rate from and after the date such damages were
25 incurred;
26
H. That this is an exceptional case and for an award of Plaintiff’s attorney fees and costs and
27
I. For such other and further relief as this Court may deem just and proper.
28
6
1 Dated: July 1, 2019 Respectfully submitted,

2

ACUMINIS LLP
5
Telephone: (949) 698-7840
6 cw.liedtke@acuminis.biz
7 David B. Barney (NV 14681)

SKLAR WILLIAMS PLLC
8 410 South Rampart Boulevard, Suite 350
Las Vegas, NV 89145
9 Telephone: (702) 360-6000
10 Attorneys for Plaintiff SL International

Management Company, Inc.
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
7
1 JURY TRIAL DEMAND
2 SL International Management Company, Inc. respectfully demands a trial by jury on all
3 claims and issues so triable.
4
Dated: July 1, 2019 Respectfully submitted,
5

ACUMINIS LLP
9 Telephone: (949) 698-7840
cw.liedtke@acuminis.biz
10
David B. Barney (NV 14681)
11 SKLAR WILLIAMS PLLC
410 South Rampart Boulevard, Suite 350
12 Las Vegas, NV 89145
Telephone: (702) 360-6000
13
14 Attorneys for Plaintiff SL International

Management Company, Inc.
15
16
17
18
19
20
21
22
23
24
25
26
27
28
8
Case 2:19-cv-01148 Document 1-1 Filed 07/01/19 Page 1 of 5
EXHIBIT A
EXHIBIT B
EXHIBIT C
• •
Christian W. Liedtke, P.C.

acu C ounselors at Law
Attorney at La\v
3420 Bri tol Street, 6"' Floor • Costa Mesa, CA 92626

T elephone: +1 (949) 698-7840 • Facsinule: + l (949) 698-7861
E-Mail: C\v.liedtke@acuminis.biz • '"""'v.act1mu1is.biz
\ l ia }->1io rity Mail

Drrl)y Spirits, 1,I .,(
r)r rl)y S1)ir1ts, l,Jl ,C"
Vl r. Sa111i () 111ar
7B70 l·:as tg·a te l{cl, Stti tc l .55
Vl r. Jcfr r1\)lllaStik
I ll' 11<l<' t'S<> 11 :'\\' 8~JO11
l ()(,55 l)ark l~ lll l l)r, Ste 1~30
I lc nclcrso11 , N\ · 8~)0 l 1,I,
Re: l)esigi1 Pate11t I rifrii1gc111c nt

O t1r ref.: STELA-0003
l)e ar Vlessrs. () 111ar a11cl rl,() tllastik.

l)ea r Sir o r \1acla111,
,..fl1is firrr1 re1)rese 11ts SI-1~1(. . , Inc. ("SI ,IM(: ") ancl it~ founder Mr. S te fa 11 Lat1x ,,~.rith r~specl to ce rtai11
i11tc llcct11al J)rOJ)e rt1· 111atte rs.
SL.I ~tl( l1as in\·cslccl co11siclc ral)IC' ti111C', <' 0 <>11, a1Hl <) tl1e r rcsot1 rrcs i11 tl1C" (le\·clo r)111c- 11t o r i1111()\·ati\'<'
l) ra11cl a11cl 111a rkc- ti11~ (' () Il C<' f) t s . rl'c) 1>r<) tC'r t it s i11tc llec tt1cd J)l'C) l)C' rt y a 11cl i11, ·est111c 11t, <)tt r clic11t lt tl ~ <)l)ta i11e<l
l ' .S. D es ig11 l)atc 11t ~ <) . 1) 5 {.-t.,3(i l , a cu f))' o f ,vl1icl1 is e11closccl l1e re,\~tl1.
lt l1 ~1s . co111<"
rece 11u,, (<) o,1r clie 11ts' attc11tio 11 tl1at at least t,l1e l)ottlc .yo tt t1sc i11 C'<) 1111ecrjo 11 ,vitl1 .\'()t t r
t\ 1r1l>rC,:> l~t111a11a \.i\l l1iskc}', is st1bsta11tia lly si111ilar, a11cl i11 [~1ct J)t'actirally icl 11tical, to il 1e (lL·si~11 sl1c)\V11 i11 \. ,t 1r
clie 1: t 's l .J .S. D esig11 Pate 11t No. 1)5..1, t.,361 a 11cl l1e11ce infri11gc <) Lt r clic 11l's ri9.;l1ts pt1rsLta 111 to 35 l ;.S. (". §§ 27 1.
28 1, 28~). ln1 a~cs o f \'C)11r l)<> ttle al<)tt ~sicle dra,vi119.;s o f c) ur cli<'11t 's [)atc 11t arc rc1)ri11t rcl l)c l<),,~:
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SLI\1C, it "voulcl be l1el1)l11l if y·ot1 coulcl {)lease gi\,e tis so1ne i11sigl1t i11to )'Ot1r r~~1sons.
\!\'e ha,,~ marke(i tl1is 111atter for fo llc),V-llp ()0 11t May 2019 a11d lc)ol<. fo r,varcl lo f(~('e· i,·i11~· )'()tlr
re p o r1se o n or $e lo r tl1at elate.
I Jast l)ttl r1c)t least [)lease Ln1cl<'rsla11(l tl1at tl1is l1?tt c r is ,vritte11 ,,·itl10 L1t [)rcjltclicc~ l<) o r ,vai\'<'r <> I' a11cl
,\'it l1 l'11ll rese r\·a tio r1 c)r all ri~l1ts a11cl r~111cclies ot1r clie nt 111c1y l1a\·c i11 tl1is 1r1att<:~r.
\'0L1rs since re ly,

------ )
isti,111 \·\ '. I.., iccltk.e, 1> .( .

J\t( () I Tl ('Y at l 1a\\'
2
EXHIBIT D
Christian W. Liedtke
From: Ajemian, Peter H. <pajemian@bhfs.com>

Sent: Monday, May 13, 2019 6:35 PM
To: Christian W. Liedtke
Subject: Derby Spirits, LLC (Your Ref. No. STELA-0003)
Attachments: 20190509153611.pdf
Dear Mr. Liedtke:
Our firm represents Derby Spirits, LLC in intellectual property matters. Our client requested that we investigate the
claims set forth in your letter dated May 6, 2019 (attached). As such, we are currently evaluating this matter and will
respond substantively shortly. In the meantime, we request that you kindly direct all correspondence to my attention.
Sincerely,
Peter H. Ajemian
Brownstein Hyatt Farber Schreck, LLP
100 North City Parkway, Suite 1600
Las Vegas, NV 89106
702.464.7003 tel
pajemian@bhfs.com
STATEMENT OF CONFIDENTIALITY & DISCLAIMER: The information contained in this email message is attorney privileged
and confidential, intended only for the use of the individual or entity named above. If the reader of this message is not
the intended recipient, you are hereby notified that any dissemination, distribution or copy of this email is strictly
prohibited. If you have received this email in error, please notify us immediately by calling (303) 223-1300 and delete
the message. Thank you.
1
AO 440 (Rev. 06/12) Summons in a Civil Action
UNITED STATES DISTRICT COURT

for the
District
__________ of Nevada
District of __________
)
)
)
)
Plaintiff(s) )
)
v. Civil Action No.
)
)
)
)
)
Defendant(s) )
SUMMONS IN A CIVIL ACTION
To: (Defendant’s name and address)
A lawsuit has been filed against you.
Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
whose name and address are:
If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
You also must file your answer or motion with the court.
CLERK OF COURT
Date:
Signature of Clerk or Deputy Clerk
AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)
Civil Action No.
PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
This summons for (name of individual and title, if any)

was received by me on (date) .
I personally served the summons on the individual at (place)

on (date) ; or
I left the summons at the individual’s residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date) , and mailed a copy to the individual’s last known address; or
I served the summons on (name of individual) , who is

designated by law to accept service of process on behalf of (name of organization)
on (date) ; or
I returned the summons unexecuted because ; or
Other (specify):
.
My fees are $ for travel and $ for services, for a total of $ .
I declare under penalty of perjury that this information is true.
Date:
Server’s signature
Printed name and title
Server’s address
Additional information regarding attempted service, etc:


for the
District
)
)
)
)
Plaintiff(s) )
)
v. Civil Action No.
)
)
)
)
)
Defendant(s) )
CLERK OF COURT
Date:
Civil Action No.
PROOF OF SERVICE


on (date) ; or

on (date) ; or
Other (specify):
.
Date:
Server’s address


for the
District
)
)
)
)
Plaintiff(s) )
)
v. Civil Action No.
)
)
)
)
)
Defendant(s) )
CLERK OF COURT
Date:
Civil Action No.
PROOF OF SERVICE


on (date) ; or

on (date) ; or
Other (specify):
.
Date:
Server’s address

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Case 2:19-cv-01148 Document 1 Filed 07/01/19 Page 1 of 8

1 Christian W. Liedtke (Pro Hac Vice Pending)

13 UNITED STATES DISTRICT COURT

16 SL International Management Company, No. _________________________

24 Plaintiff SL International Management Company, Inc., a Delaware Corporation (“Plaintiff”

8 validly issued ’361 patent.

23 United States of America, 35 U.S.C. § 1, et seq.

16 District and is subject to personal jurisdiction in this District.

23 13. Defendant Omar is a resident of Nevada and does business in Nevada.

24 14. Defendant Tomastik is a resident of Nevada and does business in Nevada.

8 received leaving Plaintiff with no choice but to bring this Complaint.

16 Product or for any other purpose.

22 26. The ’361 patent is a duly and legally issued patent.

24 Patent and Trademark Office on June 12, 2007.

7 against Defendants as follows:

9 B. Permanently enjoining and restraining Defendants, their agents, affiliates, subsidiaries,

16 in an amount equal to Defendants’ profits pursuant to 35 U.S.C. § 289, whichever is greater,

23 F. For monetary damages in an amount according to proof;

1 Dated: July 1, 2019 Respectfully submitted,

3 Christian W. Liedtke (Pro Hac Vice Pending)

7 David B. Barney (NV 14681)

10 Attorneys for Plaintiff SL International

1 JURY TRIAL DEMAND

2 SL International Management Company, Inc. respectfully demands a trial by jury on all

3 claims and issues so triable.

7 Christian W. Liedtke (Pro Hac Vice Pending)

14 Attorneys for Plaintiff SL International

Christian W. Liedtke, P.C.

3420 Bri tol Street, 6"' Floor • Costa Mesa, CA 92626

\ l ia }->1io rity Mail

Re: l)esigi1 Pate11t I rifrii1gc111c nt

l)e ar Vlessrs. () 111ar a11cl rl,() tllastik.

\'0L1rs since re ly,

isti,111 \·\ '. I.., iccltk.e, 1> .( .

From: Ajemian, Peter H. <pajemian@bhfs.com>

Dear Mr. Liedtke:

AO 440 (Rev. 06/12) Summons in a Civil Action

UNITED STATES DISTRICT COURT

SUMMONS IN A CIVIL ACTION

To: (Defendant’s name and address)

A lawsuit has been filed against you.

AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)

Civil Action No.

This summons for (name of individual and title, if any)

I personally served the summons on the individual at (place)

I served the summons on (name of individual) , who is

I returned the summons unexecuted because ; or

My fees are $ for travel and $ for services, for a total of $ .

I declare under penalty of perjury that this information is true.

Printed name and title

Additional information regarding attempted service, etc:

AO 440 (Rev. 06/12) Summons in a Civil Action

UNITED STATES DISTRICT COURT

SUMMONS IN A CIVIL ACTION

To: (Defendant’s name and address)

A lawsuit has been filed against you.

AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)

Civil Action No.

This summons for (name of individual and title, if any)

I personally served the summons on the individual at (place)

I served the summons on (name of individual) , who is

I returned the summons unexecuted because ; or

My fees are $ for travel and $ for services, for a total of $ .