`
`Howard L. Wernow, B.C.S.
`Florida Bar No. 0107560
`Howard.Wernow@sswip.com
`SAND, SEBOLT & WERNOW Co., LPA
`AEGIS TOWER – Suite 1100
`4940 Munson Street NW
`Canton, Ohio 44718
`Phone: 330-244-1174
`Fax: 330-244-1173
`
`Ryan E. Hatch (CA SB No. 235577)
`(Pro hac vice forthcoming)
`LAW OFFICE OF RYAN E. HATCH, PC
`13323 Washington Blvd., Suite 100
`Los Angeles, CA 90066
`Work: 310-279-5076
`Mobile: 310-435-6374
`Fax: 310-693-5328
`ryan@ryanehatch.com
`
`Attorneys for Plaintiffs
`RK Solutions, LLC, Axcess Global Sciences, LLC and Compound Solutions, Inc.
`
`IN THE UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`TAMPA DIVISION
`
`RK SOLUTIONS, LLC, AXCESS
`Civil Action No.
`GLOBAL SCIENCES, LLC, and
`
`COMPOUND SOLUTIONS, INC.
`COMPLAINT FOR PATENT AND
`
`TRADEMARK INFRINGEMENT
` Plaintiffs,
`
`
`JURY TRIAL DEMANDED
` v.
`
`
`THE FULFILLMENT LAB, INC.,
`
` Defendant,
`
`
`
`
`
`
`
`
`
`
`
`
`1
`
`
`
`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 2 of 20 PageID 2
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`RK Solutions, LLC (“RK Solutions”), Axcess Global Sciences, LLC, (“AGS”)
`
`and Compound Solutions, Inc. (“Compound Solutions”) (collectively “Plaintiffs”) file
`
`their Complaint in this patent and trademark infringement action against Defendant The
`
`Fulfillment Lab, Inc. (“Defendant” or “TFL”).
`
`PARTIES
`
`1.
`
`Plaintiff RK Solutions, LLC is a Utah Limited Liability Company
`
`headquartered at 2040 East Holladay Rd, Suite 102, Holladay, UT 84117. RK Solutions
`
`is the exclusive licensee of U.S. Patent No. 6,613,356 (“the ’356 Patent” or “Patent-in-
`
`Suit”), entitled “Patent for inventions covering weight loss medication and method” (“the
`
`’356 Patent,” attached as Exhibit A).
`
`2.
`
`Plaintiff Axcess Global Sciences, LLC is a Utah Limited Liability
`
`Company with a principal place of business at 2040 East Murray Holladay Rd., Suite
`
`102, Holladay, Utah 84117. AGS is the owner and licensor of the ’356 Patent.
`
`3.
`
`Plaintiff Compound Solutions, Inc. a California corporation with a
`
`principle place of business at 1930 Palomar Point Way, # 105, Carlsbad, CA 92008.
`
`Compound Solutions is the owner of U.S. Trademark Reg. No. 86834808 for the word
`
`mark GOBHB for use in nutritional or dietary supplements (the “GOBHB Mark”). A
`
`true and correct copy of the Registration Certificate for the GOBHB Mark is attached
`
`hereto as Exhibit B.
`
`4.
`
`Defendant The Fulfillment Lab, Inc.
`
`is a Florida corporation
`
`headquartered at 5136 West Clifton St, Tampa, FL 33634. TFL may be served with
`
`
`
`2
`
`
`
`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 3 of 20 PageID 3
`
`process by delivering a summons and a true and correct copy of this Complaint to its
`
`registered agent for receipt of service of process, Richard B. Nelson II, 5136 West Clifton
`
`St, Tampa, FL 33634.
`
`JURISDICTION AND VENUE
`
`5.
`
`This action arises under the patent and trademark laws of the United
`
`States, Titles 35 and 15 of the United States Code. Accordingly, this Court has subject
`
`matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a).
`
`6.
`
`This Court has personal jurisdiction over Defendant because, among
`
`other reasons, Defendant has established minimum contacts with the forum state of
`
`Florida.
`
`7.
`
`Venue is proper in this District under 28 U.S.C. §§ 1400(b) and 1391.
`
`Defendant has committed acts of patent and trademark infringement in this District,
`
`resides in this District, and has a regular and established place of business in this District
`
`located at 5136 West Clifton St, Tampa, FL 33634.
`
`BACKGROUND
`
`8.
`
`Plaintiffs RK Solutions and AGS have the right to assert all causes of
`
`action asserted herein arising under the ’356 Patent and the right to remedies for
`
`infringement thereof.
`
`9.
`
`The inventive concepts of the ’356 Patent are generally directed to
`
`processes and compositions of matter for causing weight loss or avoidance of weight gain
`
`through oral administration of butyric acid or one or more enumerated pharmaceutically
`
`effective and acceptable salts or derivatives of butyric acid.
`
`
`
`3
`
`
`
`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 4 of 20 PageID 4
`
`10.
`
`For example, the salts and derivates of butyric acid recited in the claims
`
`of the ’356 Patent include sodium butyrate, calcium butyrate, potassium butyrate,
`
`magnesium butyrate, alphahydroxybutyric acid, sodium alphahydroxybutyrate, calcium
`
`alphahydroxybutyrate,
`
`potassium
`
`alphahydroxybutyrate,
`
`magnesium
`
`alphahydroxybutyrate, betahydroxybutyric acid, sodium betahydroxybutyrate, calcium
`
`betahydroxybutyrate, potassium betahydroxybutyrate, magnesium betahydroxybutyrate,
`
`isobutyric acid, sodium isobutryate, calcium isobutyrate, potassium isobutyrate, and
`
`magnesium isobutyrate.
`
`11.
`
`The
`
`compounds
`
`comprising
`
`alphahydroxybutyric
`
`acid,
`
`betahydroxybutyric acid, and isobutyric acid, are derivatives of butyric acid and not salts
`
`of butyric acid.
`
`12.
`
`The remaining compounds consisting of sodium butyrate, calcium
`
`butyrate, potassium butyrate, magnesium butyrate, sodium alphahydroxybutyrate,
`
`calcium
`
`alphahydroxybutyrate,
`
`potassium
`
`alphahydroxybutyrate, magnesium
`
`alphahydroxybutyrate, betahydroxybutyric acid, sodium betahydroxybutyrate, calcium
`
`betahydroxybutyrate, potassium betahydroxybutyrate, magnesium betahydroxybutyrate,
`
`isobutyric acid, sodium isobutryate, calcium isobutyrate, potassium isobutyrate, and
`
`magnesium isobutyrate are salts of butyric acid.
`
`13.
`
`14.
`
`A compound cannot be a salt or derivative of itself.
`
`A person of skill in the art would understand the term “salts or
`
`derivatives” of butyric acid to exclude butyric acid.
`
`15.
`
`Claim 2 of the ’356 Patent recites: “The process of claim 1, wherein said
`
`
`
`4
`
`
`
`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 5 of 20 PageID 5
`
`salts or derivatives [of butyric acid] are administered orally to said mammal in a
`
`dissolvable tablet or capsule” (emphasis added).
`
`16.
`
`Claim 2 is limited to the salts and derivatives of butyric acid and its scope
`
`does not include butyric acid.
`
`17.
`
`Similarly, claims 3 and 4, which depend from claim 2, are limited to the
`
`salts and derivatives of butyric acid and their scope does not include butyric acid.
`
`18.
`
`Claim 15 of the ’356 Patent recites: “The composition of matter in claim
`
`14, wherein the contents of the capsule further comprise sodium bicarbonate, calcium
`
`carbonate or potassium bicarbonate for producing carbon dioxide gas on contact with the
`
`stomach liquids of said mammal wherein the amount of sodium bicarbonate, calcium
`
`carbonate or potassium bicarbonate is sufficient to cause the breakup of the capsule or
`
`tablet thus releasing the salts or derivatives, but insufficient to cause distension of the
`
`stomach of the mammal.”
`
`19.
`
`Claim 15 is limited to the salts and derivatives of butyric acid and its
`
`scope does not include butyric acid.
`
`20.
`
`Similarly, claim 16, which depends from claim 15, is limited to the salts
`
`and derivatives of butyric acid and its scope does not include butyric acid.
`
`21.
`
`Claim 18 of the ’356 Patent recites: “The composition of matter of claim
`
`17, wherein the contents of said tablet further comprise sodium bicarbonate, calcium
`
`carbonate or potassium bicarbonate for producing carbon dioxide gas on contact with the
`
`stomach liquids of said mammal wherein the amount of sodium bicarbonate, calcium
`
`carbonate or potassium bicarbonate is sufficient to cause the breakup of the capsule or
`
`
`
`5
`
`
`
`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 6 of 20 PageID 6
`
`tablet thus releasing the salts or derivatives, but insufficient to cause distension of the
`
`stomach of the mammal” (emphasis added).
`
`22.
`
`Claim 18 is limited to the salts and derivatives of butyric acid and its
`
`scope does not include butyric acid.
`
`23.
`
`Similarly, claim 19, which depends from claim 18, is limited to the salts
`
`and derivatives of butyric acid and its scope does not include butyric acid.
`
`24.
`
`On information and belief, none of the salts and derivatives of butyric
`
`acid are endogenous (i.e., occur naturally in the body of humans or other mammals),
`
`including either in the body generally or in the stomach.
`
`25.
`
`For example, the human body generally has an alkaline pH of
`
`approximately 7.4. On information and belief, the salts and derivatives of butyric acid
`
`do not exist naturally in an alkaline environment. In an alkaline environment, the
`
`hydrogen (in the case of derivatives of butyric acid) or the sodium, calcium, potassium,
`
`or magnesium ion (in the case of the salts of butyric acid) separates from the molecule
`
`(i.e., is ionized).
`
`26.
`
`On information and belief, to be useful to the body, the salts and
`
`derivatives of butyric acid must be manufactured by industrial processes and exogenously
`
`administered.
`
`27.
`
`Exogenous ingestion of salts and derivatives of butyric acid has benefits
`
`compared to butyric acid. For example, salts and derivatives of butyric acid are not
`
`odiferous, do not have a tendency to irritate the stomach, and the salts of butyric acid
`
`contain electrolytes that can replenish electrolytes lost through sweat or in the urine.
`
`
`
`6
`
`
`
`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 7 of 20 PageID 7
`
`DEFENDANT’S BUSINESS PRACTICES
`
`28.
`
`According to its website www.thefulfillmentlab.com, TFL offers
`
`solutions including On-Demand, Global Fulfillment Sourcing, and Custom White /
`
`Private Label Solutions. By and through these services, TFL manufacturers, offers for
`
`sale, imports, and sells products, including but not limited to “Keto Boost,” “Ultra Fast
`
`Keto Boost,” “Ultra Fast Keto Boost Pro,” “Rapid Fast Keto Boost,” “Alkatone Keto
`
`Boost,” “Slim Fast Keto Boost,” products bearing similar names, and other products
`
`containing formulations of betahydroxybutyrate (“BHB”) (collectively, the “Accused
`
`Products”).
`
`29.
`
`TFL’s On-Demand services give its customers the ability to quickly add
`
`new white label and private label products to their line. TFL establishes relationships
`
`with contract manufacturers who provide TFL with products, including the Accused
`
`Products, to complement their other customer’s existing offerings. TFL thereby promotes
`
`and offers the Accused Products for sale to increase its profits. TFL intends to transform
`
`one-time buyers into repeat customers with “upsells” of the Accused Products that drive
`
`additional revenue to TFL.
`
`30.
`
`To drive revenue, TFL allows its customers to create an initial product
`
`offering, add complementary on-demand products, including on information and belief
`
`the Accused Products, create a customized label for the Accused Products, and start
`
`selling without having to purchase the products themselves or make any upfront
`
`investment. TFL thereby maintains its own supply of the Accused Products, and
`
`substantially participates in the making, offering for sale, and selling of those products.
`
`
`
`7
`
`
`
`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 8 of 20 PageID 8
`
`TFL’s on-demand products can be white-labeled or private-labeled with customization
`
`that aligns with the Customer’s brand and meets customer needs.
`
`31.
`
`TFL also provides Global Fulfillment Sourcing Services. This allows
`
`customers to find products, get the best price, and verify the manufacturing source.
`
`Customers suggest a product category to TFL, and in turn, TFL provides customers with
`
`information about product specifications, including dosages and ingredients. TFL
`
`provides insights into the most important market trends, including average sales, sales
`
`trends, average price charged and price trends. TFL then conducts due diligence for a
`
`selected manufacturer, including review of the legal status of the company, verifying
`
`experience, and checking relevant certifications. TFL provides a detailed report including
`
`disclosure of this information.
`
`32.
`
`TFL also provides Custom White / Private Label Solutions. This permits
`
`customers to customize existing products, including on information and belief the
`
`Accused Products, to grow brands and boost profit margins. TFL offers professional
`
`manufacturing services. According to TFL, this provides benefits to customers, including
`
`“avoid[ing] intellectual property rights (IPR) infringements,” insufficient product
`
`certifications, bad customs research, and poor product quality.
`
`33.
`
`TFL also provides product and packaging mockups for customers to
`
`visualize how the design will look, and TFL takes the design to the manufacturing partner.
`
`TFL reviews white label manufacturers, compares exact product specifications, pricing,
`
`and quality so its customers don’t have to. TFL is involved in decisions regarding price
`
`and quality of the products, including the Accused Products.
`
`
`
`8
`
`
`
`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 9 of 20 PageID 9
`
`34.
`
`TFL also provides customized samples, including of the Accused
`
`Products, so that customers experience how the product will look and feel. TFL sends a
`
`product and packaging sample that is customized with a personal design before it is
`
`available for sale.
`
`35.
`
`TFL also assures correct certifications and intellectual property rights.
`
`TFL ensures correct product certifications for importing the products, and that the
`
`products are “not infringing on any patents or intellectual property rights (IPR)” that the
`
`customer could be held liable for. TFL then starts mass production at the white label
`
`manufacturer. From start to finish, TFL states that it monitors the entire process to ensure
`
`that “everything goes smoothly.”
`
`36.
`
`Lastly, TFL provides quality control services. TFL checks every
`
`production batch at the production company twice, for any potential problems. TFL
`
`works to get the products from the factory to its own warehouse, resulting in product
`
`delivered in a timely fashion.
`
`37.
`
`On information and belief, TFL provides all of the foregoing services to
`
`at least make, offer for sale, sell, and import the Accused Products.
`
`EXEMPLARY ACCUSED PRODUCTS
`
`38.
`
`TFL makes, offers for sale, sells and imports the “Ultra Fast Keto Boost”
`
`product, also marketed under the name “Ultra Fast Pure Keto Boost.” This contains
`
`capsules containing a blend of Magnesium BHB, Calcium BHB, and Sodium BHB,
`
`among other ingredients. A serving size of two capsules contains 800 mg of the BHB
`
`blend. The label of Ultra Fast Keto Boost states “Weight Loss Support.”
`
`
`
`9
`
`
`
`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 10 of 20 PageID 10
`
`39.
`
`TFL makes, offers for sale, sells and imports the “Keto Boost” product,
`
`also marketed under the name “Rapid Fast Keto Boost.” It contains capsules containing
`
`a blend of Magnesium BHB, Calcium BHB, and Sodium BHB, among other ingredients.
`
`A serving size of two capsules contains 800 mg of the BHB blend. Ultra Fast Keto Boost
`
`is marketed for the purpose of weight loss or avoidance of weight gain. For example, the
`
`label of Ultra Fast Keto Boost states “Advanced Weight Loss.”
`
`40.
`
`The foregoing are only examples of the Accused Products, which also
`
`include other products having similar formulations containing BHB.
`
`COUNT I
`
`INFRINGEMENT OF U.S. PATENT NO. 6,613,356
`
`41.
`
`Plaintiffs incorporate by reference each of the allegations in the
`
`foregoing paragraphs, and further allege as follows:
`
`42.
`
`On September 2, 2003, the United States Patent and Trademark Office
`
`issued the ’356 Patent for inventions generally directed to processes and compositions of
`
`matter for causing weight loss or avoidance of weight gain through oral administration
`
`of butyric acid or one or more pharmaceutically effective and acceptable salts or
`
`derivatives of butyric acid, including beta-hydroxybutyrate (“BHB”) products.
`
`43.
`
`On information and belief, Defendant has been and is directly infringing,
`
`inducing others to infringe, and/or contributorily infringing, literally, under the doctrine
`
`of equivalents, and/or jointly, one or more claims of the ’356 Patent, in the State of
`
`California, including but not limited to claims 1, 6, 7, and 14, in this District, and
`
`elsewhere in the United States by, among other things, importing, making, offering for
`
`
`
`10
`
`
`
`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 11 of 20 PageID 11
`
`sale, and selling in the United States certain methods or systems disclosed and claimed
`
`in the ’356 Patent, including the Accused Products.
`
`44.
`
`Defendant has had knowledge of the ’356 Patent since at least the service
`
`of the Complaint in this action.
`
`45.
`
`With knowledge of the ’356 Patent, Defendant knows or should have
`
`known, and specifically intends, for the Accused Products to be used to infringe the
`
`claims of the ’356 Patent, for example by making, importing, offering to sell and selling
`
`the Accused Products, which are incorporated into capsules that Defendant knows or
`
`should have known, and specifically intends, to be orally administered for the purpose of
`
`weight loss or avoidance of weight gain.
`
`46.
`
`Defendant advertises and markets the Accused Products for purposes of
`
`weight loss and avoidance of weight gain.
`
`47.
`
`Defendant directly and indirectly infringes the ’356 Patent, including but
`
`not limited to claim 14, by offering to sell, and on information and belief also importing,
`
`making, using, and selling, on their websites and in other channels of trade, the Accused
`
`Products, which are compositions of matter comprising a capsule (e.g. capsules of the
`
`Accused Products), which are capable of dissolving in the stomach of a mammal (e.g. a
`
`human being), wherein said capsule contains, in an amount effective for weight loss or
`
`avoidance of weight gain in said mammal (e.g. Defendant markets the Accused Products
`
`for purposes of weight loss or avoidance of weight gain), one or more of the compounds
`
`selected from the group consisting of: butyric acid, sodium butyrate, calcium butyrate,
`
`potassium butyrate, magnesium butyrate, alphahydroxybutyric acid,
`
`sodium
`
`
`
`11
`
`
`
`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 12 of 20 PageID 12
`
`alphahydroxybutyrate, calcium alphahydroxybutyrate, potassium alphahydroxybutyrate,
`
`magnesium
`
`alphahydroxybutyrate,
`
`betahydroxybutyric
`
`acid,
`
`sodium
`
`betahydroxybutyrate, calcium betahydroxybutyrate, potassium betahydroxybutyrate,
`
`magnesium betahydroxybutyrate,
`
`isobutyric acid, sodium
`
`isobutryate, calcium
`
`isobutyrate, potassium isobutyrate, and magnesium isobutyrate (e.g., the Accused
`
`Products include sodium betahydroxybutyrate, calcium betahydroxybutyrate, and
`
`magnesium betahydroxybutyrate), according to claim 14 of the ’356 Patent.
`
`48.
`
`Additional direct infringers of the ’356 Patent claims include but are not
`
`limited to end-users who use the Accused Products in processes for causing weight loss
`
`or avoidance of weight gain in mammals (e.g. according to claims 1, 6 and 7), including
`
`Defendant’s customers, the specific identities of which are not known at this time;
`
`Defendant and any other individuals who incorporate or offer to sell, or import, make,
`
`use, or sell, the Accused Products incorporated into capsules capable of dissolving in the
`
`stomach of a mammal (e.g. according to claim 14), including Defendant and Defendant’s
`
`customers, the identities of which are not known at this time (collectively, the
`
`“Defendant’s Customers”).
`
`49.
`
`In addition to these examples of direct infringement, Defendant has also
`
`been and is inducing and/or contributing to the direct infringement of the ’356 Patent by
`
`at least, but not limited to, customers of Defendant, partners of Defendant, and/or end-
`
`users of Defendant’s products including the Defendant’s Customers, including those who
`
`directly practice, implement, use or otherwise participate in the use of the Accused
`
`Products, which have no substantial non-infringing uses, by at least the following
`
`
`
`12
`
`
`
`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 13 of 20 PageID 13
`
`affirmative acts: (1) advertising and marketing the features, benefits and availability of
`
`the Accused Products; (2) promoting the adoption and use of the Accused Products; and
`
`(3) providing instructions on how to use the Accused Products. Such activity includes,
`
`but it not limited to, the activities pertaining to Defendant’s On-Demand, Global
`
`Fulfillment Sourcing, and Custom White / Private Label Solutions as discussed above,
`
`and incorporated herein by reference.
`
`50.
`
`Defendant
`
`indirectly
`
`infringes by actively, knowingly, and/or
`
`intentionally inducing or contributing to infringement of one or more of the claims of the
`
`’356 Patent, including claims 1, 6, 7 and 14, by third parties including the Defendant’s
`
`Customers, who directly implement, use or otherwise participate in the use of the
`
`Accused Products. On information and belief, Defendant actively, knowingly, and/or
`
`intentionally induces the use of the Accused Products by third parties including the
`
`Defendant’s Customers, and provides or otherwise implement material components of
`
`one or more claims of the ’356 Patent, including, but not limited to, claims 1, 6, 7, 14 and
`
`17, which were especially made or adapted for use in the infringement of the ’356 Patent
`
`claims, and are not a staple article or commodity of commerce suitable for substantial
`
`non-infringing uses. Defendant knows and has known that the combination for which
`
`their infringing Accused Products were especially made or adapted are both patented and
`
`infringing.
`
`51.
`
`Defendant also at least indirectly infringes claims 1, 6, 7, and 14 of the
`
`’356 Patent. Defendant’s indirect infringement is based on direct infringement of third
`
`parties including but not limited to Defendant’s customers and end-users of the Accused
`
`
`
`13
`
`
`
`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 14 of 20 PageID 14
`
`Products, whose identities are not known at this time.
`
`52.
`
`For example, end-users of the Accused Products directly infringe the
`
`’356 Patent, including but not limited to claim 1, by practicing a process for causing
`
`weight loss, or avoidance of weight gain (e.g. Defendant promotes the Accused Products
`
`as beneficial for “weight loss”) in mammals (e.g. humans), comprising oral
`
`administration (e.g. the Accused Products are capsules or tablets that are orally
`
`administered) to said mammals of butyric acid or one or more pharmaceutically effective
`
`and acceptable salts or derivatives of butyric acid selected from the group consisting of:
`
`butyric acid, sodium butyrate, calcium butyrate, potassium butyrate, magnesium butyrate,
`
`alphahydroxybutyric
`
`acid,
`
`sodium
`
`alphahydroxybutyrate,
`
`calcium
`
`alphahydroxybutyrate,
`
`potassium
`
`alphahydroxybutyrate,
`
`magnesium
`
`alphahydroxybutyrate, betahydroxybutyric acid, sodium betahydroxybutyrate, calcium
`
`betahydroxybutyrate, potassium betahydroxybutyrate, magnesium betahydroxybutyrate,
`
`isobutyric acid, sodium isobutryate, calcium isobutyrate, potassium isobutyrate, and
`
`magnesium isobutyrate (e.g., the Accused Products include sodium betahydroxybutyrate,
`
`calcium betahydroxybutyrate, and magnesium betahydroxybutyrate).
`
`53.
`
`End-users of the Accused Products also directly infringe the ’356 Patent,
`
`including but not limited to claim 6. Defendant’s instructions for the Accused Products
`
`are to take doses of 800 mg of BHB blend per day, which for the average adult surface
`
`area of 1.6 square meters, results in 500 mg per square meter of body surface per day.
`
`These doses are between 60 mg and 900 mg per square meter of body surface as provided
`
`in claim 6.
`
`
`
`14
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`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 15 of 20 PageID 15
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`54.
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`End-users of the Accused Products also directly infringe the ’356 Patent,
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`including but not limited to claim 7. For example, end-users of the Accused Products
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`directly infringe the ’356 Patent claim 7, because Defendant’s instructions for the
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`Accused Products are to take a dose of 800 mg, which could fall within the limits set forth
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`in claim 7. One daily dose of 800mg for a person having a surface area of 0.88 square
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`meters or less results in a dose of over 900 mg/m2. This dosage would be within the range
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`of greater than 0.9 grams and equal to or less than 4.7 grams (or 2.35 grams for
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`magnesium salts) per square meter of body surface area per day, as recited in claim 7.
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`55.
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`Defendant has committed these acts of infringement without license or
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`authorization.
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`56.
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`Defendant has injured Plaintiffs and are liable to Plaintiffs for direct and
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`indirect infringement of the claims of the ’356 Patent pursuant to 35 U.S.C. § 271(a), (b),
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`and (c).
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`57.
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`As a result of Defendant’s infringement of the ’356 Patent, Plaintiffs
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`have suffered harm and seek injunctive relief and monetary damages in an amount
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`adequate to compensate for infringement, but in no event less than a reasonable royalty
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`for the use made of the invention by Defendant, together with interest and costs as fixed
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`by the Court.
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`TRADEMARK INFRINGEMENT UNDER 15 U.S.C. § 1114
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`58.
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`Plaintiffs incorporate by reference each of the allegations in the
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`foregoing paragraphs, and further allege as follows:
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`59.
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`The GOBHB Mark is valid and protectable, and Federal registration of
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`15
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`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 16 of 20 PageID 16
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`the GOBHB Mark provides prima facie evidence of validity and protectability.
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`60.
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`The GOBHB Mark is also distinctive. As a Federally-registered mark,
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`the GOBHB Mark, is presumed to be distinctive.
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`61.
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`Defendant is a provider of sales, marketing, warehouse, manufacturing,
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`bottling, packaging and shipping services, including for nutritional and dietary
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`supplements.
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`62.
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`On information and belief, Defendant regularly uses the GOBHB Mark
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`in United States commerce in connection with promoting its own goods and services
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`including but not limited to in connection with the “Rapid Fast Keto Boost” product, e.g.:
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`
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`See https://www.amazon.com/ULTRA-KETO-Rapid-Fast-Boost/dp/B083G6PR5J,
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`visited April 6, 2020
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`63.
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`Defendant has committed these acts without license or authorization
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`16
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`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 17 of 20 PageID 17
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`from Compound Solutions.
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`64.
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`Based on Defendant’s unauthorized use of the GoBHB Mark, consumers
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`are likely to be confused as to the source or sponsorship of Defendant’s products and
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`services.
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`65.
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`Defendant had at least statutory notice that the GOBHB Mark was
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`registered.
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`66.
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`Defendant’s activities as stated herein constitute false designation of
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`origin and trademark infringement in violation of 15 U.S.C. §1114(1)(a).
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`67.
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`Defendant’s activities as alleged herein constitute a violation of 15
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`U.S.C. § 1114(1)(b) in that Defendant has, without the consent of Compound Solutions,
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`used in commerce a counterfeit, copy, or colorable imitation of the registered mark of
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`Compound Solutions and applied such counterfeit, copy, or colorable imitation to
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`advertisements intended to be used in commerce, in connection with the sale, offering for
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`sale, distribution or advertising of goods or services. Defendant has used the imitation of
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`the GOBHB Mark in such a manner as is likely to cause confusion, mistake or to deceive.
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`68.
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`Defendant’s acts were committed with knowledge that the use of the
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`BHB Mark was intended to be used to cause confusion, mistake or to deceive.
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`69.
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`Compound Solutions is entitled to injunctive relief under 15 U.S.C. §
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`1116 and recovery of damages from Defendant pursuant to 15 U.S.C. § 1117. Damages
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`recoverable include three times the actual damages sustained by Compound Solutions,
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`Defendant’s profits and the costs of the action, together with Compound Solutions’
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`attorney fees, damages in such sum as the court may find to be just according to the
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`17
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`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 18 of 20 PageID 18
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`circumstances of the case, and statutory damages.
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`70.
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`Upon information and belief, Defendant’s wrongful activities have
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`caused, and unless enjoined by this Court will continue to cause, irreparable injury and
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`other damage to Compound Solutions’ business, reputation and goodwill in the industry.
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`Compound Solutions has no adequate remedy at law.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiffs respectfully pray for entry of judgment as follows:
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`1.
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`That Defendant has directly and indirectly infringed one or more
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`claims of the ’356 Patent;
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`2.
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`3.
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`That Defendant be ordered to provide an accounting;
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`That Plaintiffs are entitled to, and should recover, all damages to which
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`they are entitled under 35 U.S.C. § 284, but in no event less than a reasonable royalty;
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`4.
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`That Plaintiffs, as the prevailing party, shall recover from Defendant all
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`taxable costs of Court;
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`5.
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`That Plaintiffs shall recover from Defendant all pre- and post-judgment
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`interest on the damages award, calculated at the highest interest rates allowed by law;
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`6.
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`That Plaintiffs are entitled to enhanced damages of up to three times
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`the amount found by the jury or ordered by the Court, pursuant to 35 U.S.C. § 284;
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`7.
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`That this case is exceptional and that Plaintiffs shall therefore recover
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`their attorneys’ fees and other recoverable expenses, pursuant to 35 U.S.C. § 285;
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`8.
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`That Defendant is permanently enjoined from further infringement of
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`the ’356 Patent;
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`18
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`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 19 of 20 PageID 19
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`9.
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`10.
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`An order finding that Defendant is liable for trademark infringement;
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`For actual and compensatory damages in an amount to be proven at
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`trial, including but not limited to Defendant’s profits, damages sustained by Compound
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`Solutions, statutory damages, and costs of this action;
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`11.
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`A preliminary and permanent injunction enjoining Defendant and all of
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`its officers, directors, customers, suppliers, distributors, agents, end-users, and other
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`personnel from using the GOBHB Trademark in commerce without authorization;
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`12.
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`That Plaintiffs, as the prevailing party, shall recover from Defendant all
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`taxable costs of Court; and
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`13.
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`Such other and further relief as the Court deems appropriate.
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`JURY TRIAL DEMANDED
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`Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiffs request a
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`trial by jury of any issues so triable by right.
`
`///
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`///
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`///
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`///
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`///
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`///
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`///
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`19
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`Case 8:20-cv-01072-MSS-CPT Document 1 Filed 05/08/20 Page 20 of 20 PageID 20
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`Dated: May 8, 2020
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`
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`Respectfully submitted,
`
`/s/ Howard L. Wernow
`Howard L. Wernow, B.C.S.
`Florida Bar No. 0107560
`SAND, SEBOLT & WERNOW Co., LPA
`AEGIS TOWER – Suite 1100
`4940 Munson Street NW
`Canton, Ohio 44718
`Phone: 330-244-1174
`Fax: 330-244-1173
`Howard.Wernow@sswip.com
`
`Ryan E. Hatch
`(Pro hac vice forthcoming)
`LAW OFFICE OF RYAN E. HATCH, PC
`13323 Washington Blvd., Suite 100
`Los Angeles, CA 90066
`Work: 310-279-5076
`Mobile: 310-435-6374
`Fax: 310-693-5328
`ryan@ryanehatch.com
`
`Attorneys for Plaintiffs RK Solutions, LLC, Axcess
`Global Sciences, LLC and Compound Solutions,
`Inc.
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`20
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