Case 1:16-cv-12480-GAO Document 34 Filed 04/10/17 Page 1 of 2

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

CAFFEINATE LABS, INC., a Massachusetts Civil Action No. 1:16-cv-12480-GAO

corporation,
Plaintiff
PLAINTIFFS MOTION TO DISMISS
COUNT TWO FOR DESIGN PATENT
v. INFRINGEMENT WITH PREJUDICE

VANTE INC., a New York corporation, and

ALEXANDER SHLAFERMAN, an individual
residing in New York,

Defendants.

Plaintiff, Caffeinate Labs, Inc. (Caffeinate), by and through its undersigned counsel,

hereby moves this Court to dismiss, with prejudice, its Count Two for design patent

infringement of U.S. Patent No. D 707,091 as pled in its Complaint (Dkt. No. 1) and its First

Amended Complaint (Dkt. No. 15). Plaintiff files the following documents concurrently

herewith in support of this motion:

1. Memorandum in Support of Motion to Dismiss Count Two for Design Patent

Infringement with Prejudice;

2. Declaration of Anne-Marie Dinius in Support of Plaintiffs Motion to Dismiss

Count Two for Design Patent Infringement with Prejudice; and

3. [Proposed] Order Dismissing Count Two for Design Patent Infringement with

Prejudice.

RULE 7.1(a) CERTIFICATION

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Pursuant to Local Rule 7.1(a) the undersigned hereby certifies that counsel for the parties

have conferred and have attempted in good faith to resolve or narrow the issues raised in this

Motion. Defendants counsel has indicated that he will oppose this motion.

CAFFEINATE LABS, INC.

Date: April 10, 2017 By its attorneys,

/s/ Anne-Marie Dinius

Anne-Marie Dinius BBO# 647556
AMDinius Law
101 Great Road, #119
Bedford, MA 01730
(650) 814-0810

Jonathan Braverman BBO# 054740

JonathanB@BBB-lawfirm.com
Baker, Braverman & Barbadoro
300 Crown Colony Dr #500
Quincy, MA 02169
(781) 848-9610

Certification of Service

I hereby certify that on this day, I served a copy of the foregoing documents upon all
counsel via Electronic Case Filing system of the United States District Court for the District of
Massachusetts.

Date: April 10, 2017 /s/ Anne-Marie Dinius__________

Anne-Marie Dinius

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UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

Civil Action No. 1:16-cv-12480-GAO

CAFFEINATE LABS, INC., a Massachusetts
corporation,
Plaintiff DECLARATION OF ANNE-MARIE
DINIUS IN SUPPORT OF PLAINTIFFS
v. MOTION TO DISMISS COUNT TWO
FOR DESIGN PATENT INFRINGEMENT
VANTE INC., a New York corporation, and WITH PREJUDICE
ALEXANDER SHLAFERMAN, an individual
residing in New York,

Defendants.

I, Anne-Marie Dinius, declare as follows:

1. I am an attorney with the law firm of AMDinius Law, counsel for Caffeinate

Labs, Inc., the Plaintiff in the above-captioned action. I have personal knowledge of the facts

stated herein and could and would testify competently as a witness if called to do so in this

matter.

2. I declare that my email server received an email in the In Box for my law firms

email account, which included an attached Rule 11 Motion, purportedly sent from Richard

Stockton, counsel of record for Defendants Vante Inc. and Alexander Shlaferman, on Friday

March 17, 2017 at 8:55 pm. A true and correct copy of which is attached hereto as Exhibit A.

3. I read this email sometime on Saturday March 18, 2017.

4. On April 10, 2017, I contacted Defendants attorney to ask if Defendants would

stipulate to allowing Plaintiff to dismiss Count Two of the Complaint and First Amended

Complaint in this action.

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5. Defense counsel would not agree to allow Plaintiff to dismiss the patent

infringement claim for U.S. Patent No. D 707,091 unless Caffeinate Labs agrees to pay the

reasonable expenses, including but not limited to attorneys fees, incurred by Defendants in

defending against the design patent count, including but not limited to reasonable expenses

relating to preparing and/or filing Defendants Motion to Dismiss (ECF No. 19 filed March 2,

2017) and Defendants Motion for Sanctions (served on March 17, 2017). A true and correct

copy of Defendants email refusing to stipulate is attached hereto as Exhibit B.

6. Even after pointing out the safe harbor provisions of Rule 11 and Plaintiffs intent

to withdraw the complained of design patent infringement claim, Defense counsel would not

concede to allowing Plaintiff to dismiss the design patent infringement claim with prejudice

unless Plaintiff agreed to pay Defendants attorneys fees. A true and correct copy of an

additional email exchange between me and Defendants attorney of record is attached hereto as

Exhibit C.

I declare under penalty of perjury of the laws of the United States of America that the

foregoing is true and correct.

Executed on April 10, 2017

/s/ Anne-Marie Dinius

Anne-Marie Dinius

Certification of Service

I hereby certify that on this day, I served a copy of the foregoing documents upon all
counsel via Electronic Case Filing system of the United States District Court for the District of
Massachusetts.

Date: April 10, 2017 /s/ Anne-Marie Dinius__________

Anne-Marie Dinius

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UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

Civil Action No. 1:16-cv-12480-GAO

CAFFEINATE LABS, INC., a Massachusetts
corporation,
Plaintiff
PLAINTIFFS MEMORANDUM IN
v. SUPPORT OF ITS MOTION TO DISMISS
COUNT TWO FOR DESIGN PATENT
VANTE INC., a New York corporation, and INFRINGEMENT WITH PREJUDICE
ALEXANDER SHLAFERMAN, an individual
residing in New York,

Defendants.

I. INTRODUCTION
Plaintiff brought this case to seek redress for Defendants unlawful infringement and

unfair business practices. Before filing this lawsuit, Plaintiff reached out to Defendants via letter

and email to discuss the allegations raised in this case. Defendants never responded to Plaintiffs

attempts to amicably resolve the issues currently before the Court in this case. Plaintiff,

therefore, filed this lawsuit seeking redress for patent infringement, unfair competition,

intentional interference with business relations, and disparagement.

The First Amended Complaint raises seven counts, one of which is for patent

infringement of U.S. Patent No. D 707,091. Defendants have moved for dismissal of the design

patent infringement claim, and have served Plaintiff with notice of their intent to seek Rule 11

sanctions if Plaintiff does not voluntarily dismiss its design patent infringement claim. Although

Plaintiff believes that it has asserted valid and actionable facts with respect to design patent

infringement, it has decided, in the interest of judicial economy, to voluntarily dismiss its design

patent infringement claims with prejudice. Plaintiff met and conferred with Defendants counsel

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earlier today to seek a stipulation allowing it to file a second amended complaint withdrawing its

design patent infringement claim. Defendants refused to stipulate unless Plaintiff agreed to pay

their attorneys fees for filing their motion to dismiss the design patent infringement claims.

Defendants position is against the plain language of Rule 11(c)(2). As such, Plaintiff

respectfully requests this Court allow it to withdraw/dismiss Count Two of the First Amended

Complaint (FAC) with prejudice and without attorneys fees and costs being assessed.

II. FACTUAL BACKGROUND

Plaintiff is the creator of the PocketMonkey, the first flat, credit-card sized

multifunctional tool. The PocketMonkey is very popular because of its dimensions and because

of the variety of tools it offers. PocketMonkeys size is perfect because it fits into a wallet. It is

as thin as a credit card, making it unobtrusive and handy. Defendants sell a knock-off of the

PocketMonkey called the Wallet Ninja. Defendant Alex Shlaferman and Plaintiffs founder,

Nate Barr, know each other from having met at a toy exposition where Mr. Barr was displaying

the PocketMonkey. Mr. Shlaferman was enamored with the PocketMonkey and reached out to

Mr. Barr to explore the possibility of working together to increase sales volume and production

capacity for the PocketMonkey. Mr. Barr ultimately rejected Mr. Shlafermans proposals, which

included producing the PocketMoney in China, in part because he wanted to continue to

manufacture the PocketMonkey in the United States.

Not deterred, Mr. Shlaferman created a knock-off of the PocketMonkey, which he called

the Wallet Ninja. Mr. Shlaferman falsely marketed the Wallet Ninja as the Worlds First 100%

Flat Multi-Tool, even though he knew that the PocketMonkey was being sold and that it is a

flat, multi-tool. He even went so far as to launch an online disparagement campaign against the

PocketMonkey where he accused Plaintiff of knocking off his designs, when quite the opposite

was true. He also disparaged the PocketMonkey by calling it garbage. He asked his internet

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followers to post false negative reviews for the PocketMonkey, as compared with the Wallet

Ninja, on online marketplaces. Negative reviews were posted in response to Mr. Shlafermans

request, and Plaintiff was damaged as a result.

Prior to filing this lawsuit, Plaintiff tried to resolve these issues with Defendants and their

counsel via letters and email correspondence. Defendants did not provide a substantive

response.

It is Defendants position that Plaintiffs claim for design patent infringement is

insufficient under Rule 12(b)(6) of the Federal Rules of Civil Procedure. (Mot. Dismiss, Dkt.

No. 20). Toward that end, Defendants have moved for dismissal under Rule 12(b)(6). On

Friday, March 17, 2017 at 8:55 pm, Defendants counsel attempted to serve Plaintiffs counsel

with a motion pursuant to Rule 11(c)(2), seeking sanctions in the event Plaintiff did not

voluntarily dismiss its design patent infringement claim. A true and correct copy of Defendants

email is attached to the Declaration of Anne-Marie Dinius, Exhibit A (Dinius Decl.). This

attempt at service was ultimately received the following day, March 18, 2017. Plaintiffs counsel

did not read defendants email until the next day, Saturday, March 18, 2017. Dinius Decl. 3.

On April 10, 2017, Plaintiffs counsel met and conferred with Defendants counsel to

request that Defendant stipulate to leave for Plaintiff to withdraw the design patent infringement

claim with prejudice. Dinius Decl. 4. Defendants counsel refused to stipulate to Plaintiffs

request to dismiss its design patent infringement claim with prejudice unless Plaintiff agreed to

pay Defendants fees and costs associated with filing its Motion to Dismiss and Motion for

Sanctions. Dinius Decl. 5 -6 , Ex. B, Ex. C.

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III. ARGUMENT

According to the procedural requirements of Rule 11 of the Federal Rules of Civil

Procedure, a party believing it is entitled to sanctions must serve, under Rule 5, a motion for

sanctions on the non-moving party. Fed.R.Civ.P 11(c)(2). The non-moving party then has 21

days to withdraw the challenged paper, claim, defense, contention, or denial. Id. If the non-

moving party withdraws the complained of pleading, document, the Rule 11 motion is moot.

The purpose of the safe harbor [provision] is to give the offending party the opportunity, within

21 days after service of the motion for sanctions, to withdraw the offending pleading and thereby

escape sanctions. Barber v. Miller, 146 F.3d 707, 710 (9th Cir. 1998)(emphasis in original).

Rule 11 is straightforward in allowing parties a safe harbor to consider the issues raised

before deciding on a definitive course of action. Defendants ignore this safe harbor by

nonetheless trying to strong arm Plaintiff into paying their fees.

In this case, Plaintiff is within the 21-day safe harbor provision of Rule 11. Although

Defendants emailed their Rule 11 motion to Plaintiffs counsel on March 17, 2017, that email

was sent well after the 6:00 pm deadline for service. Specifically, Defendants notice of rule 11

motion was sent at 8:55 pm on March 17, 2017. Dinius Decl. 2, Ex. A. When a document is

filed after the 6:00 deadline, it is deemed to have been filed the next business day. Sneade v.

Rojas, (Case No. 11-CV-40061-TSH), 2014 WL 949635, at *2 (D. Mass. Mar. 10, 2014). While

the 6:00pm deadline is for filing, the same rationale underpins electronic service.

Rule 5(a)(2)(E) states that electronic service is not effective if the serving party learns that it did

not reach the party to be served. Here, Defendants email purporting to serve the Rule 11

Motion was sent at 8:55pm on Friday, March 17, 2017. Plaintiffs counsel did not receive it until

Saturday, March 18, 2017. Therefore, the filing of this Motion is within 21 days of the Rule 11

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safe harbor. Accordingly, Defendants Rule 11 motion was served on March 18, 2017, which

places Plaintiff inside of the 21 day safe harbor.

In order to preserve judicial economy, and in accordance with the very purpose of

Rule 11, Plaintiff sought a Stipulation from Defendants regarding dismissing its design claim

with prejudice. This is exactly what Defendants asked for in their Rule 11 motion. Seeking

perhaps to rewrite the strictures of Rule 11, Defendants would not agree to allow Plaintiff to

dismiss its design patent infringement claim unless Caffeinate Labs agrees to pay the reasonable

expenses, including but not limited to attorneys fees, incurred by Defendants in defending

against the design patent count, including but not limited to reasonable expenses relating to

preparing and/or filing Defendants Motion to Dismiss (ECF No. 19 filed March 2, 2017) and

Defendants Motion for Sanctions (served on March 17, 2017). Dinius Decl. 5, Ex. B.

Plainitff again asked Defendants to stipulate to allowing dismissal of the deisgn patent

claim via email on April 10, 2017 as follows As you are aware, Rule 11 provides a safe-

harbor provision for the non-moving party to withdraw the complained of document, claim etc.

Caffeinate has agreed to dismiss the design patent infringement claim with prejudice. Under the

safe harbor provisions of Rule 11, your client is not entitled to fees. As such, Caffeinate will not

provide an order with the language you request below. Dinius Decl. 6, Ex. C. Defendants

would not agree.

Defendants requirement for stipulating to dismiss the design patent infringement claim

runs counter to the policy underlying Rule 11 and to the law. Accordingly, Plaintiff respectfully

requests that this Court allow it to withdraw its design patent infringement claim with prejudice,

and that Defendant be ordered to answer the remaining allegations of the FAC within 21 days.

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Additionally, Plaintiff respectfully requests that the Court authorize the parties to begin

discovery. The discovery start date in this case was triggered by the date upon which the Court

decided Defendants motion to dismiss the design patent infringement claim, or June 7, 2017,

whichever occurred first. In the event the Court allows Plaintiff to dismiss the design patent

infringement claim, the motion to dismiss will become moot. Discovery should therefore begin

immediately so the parties can begin resolving the issues presented in this case.

IV. CONCLUSION

For the foregoing reasons, Caffeinate respectfully requests that this Court enter an order:

(1) dismissing Count Two (Infringement of U.S. Patent No. D707,091) of the First Amended

Complaint, or alternatively allowing Plaintiff to submit a Second Amended Complaint striking

Count Two from the pleading; and (2) opening fact discovery.

CAFFEINATE LABS, INC.

Date: April 10, 2017 By its attorneys,

/s/ Anne-Marie Dinius

Anne-Marie Dinius BBO# 647556
AMDinius Law
101 Great Road, #119
Bedford, MA 01730
(650) 814-0810

Jonathan Braverman BBO# 054740

JonathanB@BBB-lawfirm.com
Baker, Braverman & Barbadoro
300 Crown Colony Dr #500
Quincy, MA 02169
(781) 848-9610

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Certification of Service

I hereby certify that on this day, I served a copy of the foregoing documents upon all
counsel via Electronic Case Filing system of the United States District Court for the District of
Massachusetts.

Date: April 10, 2017 /s/ Anne-Marie Dinius__________

Anne-Marie Dinius

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UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

Civil Action No. 1:16-cv-12480-GAO

CAFFEINATE LABS, INC., a Massachusetts
corporation,
Plaintiff
[PROPOSED] ORDER DISMISSING
COUNT TWO FOR DESIGN PATENT
v. INFRINGEMENT WITH PREJUDICE
AND OPENING DISCOVERY

VANTE INC., a New York corporation, and

ALEXANDER SHLAFERMAN, an individual
residing in New York,

Defendants.

The Court, having considered Plaintiffs Motion to Dismiss Count Two for

Design Patent Infringement with Prejudice and its Memorandum in Support of its Motion

to Dismiss Count Two for Design Patent Infringement with Prejudice, hereby grants the

motion.

IT IS THEREFORE ORDERED that:

1. The design patent infringement claim for relief (Count II) is DISMISSED

WITH PREJUDICE; and

2. The parties may commence discovery.

_________________________

Honorable George A. OToole