Total Import v. Surf City - Complaint

Case 8:16-cv-02142 Document 1 Filed 12/01/16 Page 1 of 11 Page ID #:1
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David M. Stein (State Bar No. 198256)

Evan W. Woolley (State Bar No. 286385)
Michael D. Wilburn (State Bar No. 303181)
ALSTON & BIRD LLP
333 South Hope Street, 16th Floor
Los Angeles, CA 90071-1410
Phone: 213.576.1000
E-Mail:
david.stein@alston.com
evan.woolley@alston.com
michael.wilburn@alston.com
Attorneys for Declaratory Judgment Plaintiff
TOTAL IMPORT SOLUTIONS, INC.
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UNITED STATES DISTRICT COURT
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CENTRAL DISTRICT OF CALIFORNIA
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SOUTHERN DIVISION
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TOTAL IMPORT SOLUTIONS, INC, d/b/a Case No.:

Nanoskin Car Care Products, a California
company,
COMPLAINT FOR: (1)
Plaintiff,
DECLARATORY RELIEF OF NONINFRINGEMENT OF PATENT; (2)
v.
DECLARATORY RELIEF OF
INVALIDITY OF PATENT; and (3)
SURF CITY GARAGE BRANDS, LLC., a DECLARTORY RELIEF OF NONCalifornia Company, and TIMOTHY D.
BREACH OF CONTRACT
MILLER, an individual,
Defendants.
Filed: December 1, 2016
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LEGAL02/36833972v1
TOTAL IMPORT SOLUTIONS COMPLAINT
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Plaintiff Total Import Solutions, Inc. d/b/a Nanoskin Car Care Products
(Plaintiff or TIS) alleges as follows:
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INTRODUCTION
1.
This action arises out of Surf City Garage Brands, LLCs (Defendant or
SCG) efforts to eliminate its competition in the crowded and competitive market of
automotive appearance products.
competitors in the automotive appearance aftermarket, specifically with regard to
cleansing products. TIS and SCG entered into a supplier agreement (the Agreement)
on October 21, 2015 that, among other things, established a seller-buyer relationship
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between the Parties, and allowed TISs continued manufacture and sale of products that
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did not trespass SCGs existing intellectual property rights. Less than one year later,
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Mr. Timothy Miller of SCG contacted Mr. Jerry Heilan of TIS, threatening legal action
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for infringement of U.S. Design Patent No. D716,631 (the D631 Patent) and breach
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of the Agreement. TIS has attempted to clarify and resolve the issue informally, but
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Mr. Miller and SCG now demand that TIS agree, by December 1, 2016, to cease and
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desist from manufacturing or selling products, even though these products do not
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infringe SCGs patent(s) or cause a breach of the Agreement, or face legal action,
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including threats to seek injunctive relief barring TIS from conducting its business.
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Miller and SCG appear determined to eliminate TIS as a competitor by improperly
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removing TIS products from the market through threatened injunction relief. The
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removal of TIS products will undoubtedly result in a loss of sales and goodwill for TIS.
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SCGs conduct, claims of infringement, and continued threat of legal action gives rise
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to an actual controversy.
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TIS and SCG (collectively, the Parties) are
PARTIES TO THE ACTION

2.
Plaintiff Total Import Solutions, Inc., d/b/a Nanoskin Car Care Products
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(TIS), is a California company with its principal address at 14700 Radburn Ave.,
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Santa Fe Springs, CA 90670. TIS is a manufacturer and wholesaler of popular
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automotive appearance products, including Clayzilla, which it sells to SCG. TIS also
LEGAL02/36833972v1
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manufactures and sells products including Mothers Clay 2.0 (Clay 2.0) and Griots
Garage Brilliant Finish Synthetic Clay (Synthetic Clay) (collectively, the Clay
Products).
3.
On information and belief, Defendant SCG Brands LLC, is a California
company with its principal address at 5872 Engineer Dr., Huntington Beach, CA 92649.
SCG is a competitor to TIS in the market for automotive appearance products.
4.
On information and belief, Defendant Tim Miller is an individual residing
in California. Mr. Miller is the principal of SCG and the owner of record of United
States Design Patent D716,631, so TIS believes he may be a necessary party.
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JURISDICTION AND VENUE

5.
This action arises under the Patent Laws of the United States, 35 U.S.C.
1, et seq., and the Declaratory Judgment Act, 28 U.S.C. 2201(a) and 2202.
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This Court has exclusive federal jurisdiction over the parties and the
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subject matter of the action pursuant 28 U.S.C. 1331, 1332, and 1338. Pursuant to
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28 U.S.C. 1367, this Court has supplemental jurisdiction over the claims not brought
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under a federal statute because those claims are related to, and form part of the same
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case or controversy, as the federal question claims.
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7.
This Court has personal jurisdiction over SCG because SCG markets its
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products in California, its products are sold in California, and SCG agreed to purchase
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its manufactured product from a California company while in California. In addition,
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the Agreement requires any legal dispute to be pursued here.
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8.
This Court has personal jurisdiction over Tim Miller because, as the
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principal of SCG, he participates in the manufacture, marketing, and selling of SCG
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products in California. On information and belief, Mr. Miller constructively licensed
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U.S. Design Patent D716,631 to TIS in connection with SCGs manufacture, marketing,
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selling, and purchase of products in California.
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9.
Venue is proper under 28 U.S.C. 1392(b). Mr. Miller and SCG
purchase and market their products in this district, the alleged acts have occurred or are
LEGAL02/36833972v1
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occurring in this district, and Mr. Miller and SCG are subject to personal jurisdiction in
this district. In addition, the Agreement requires any legal dispute to be pursued here.
FACTUAL BACKGROUND
The Crowded Market for Automotive Appearance Products
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The market for automotive appearance products is crowded and
competitive.
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Competitors seek to gain certain market share through the manufacture,
use, and sale of products that provide a cleaner vehicle to the customer.
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Common products used and sold in this industry include an applicator and
pad to clean the surface of a vehicle.

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Although applicator designs may appear similar at first glance, they vary
widely by their function and design.
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Similarly, cleaning pads vary in both material and design.
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One of the now common materials used in cleaning pads is a derivative of
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an earlier Clay Bar originally developed in Japan around 1995.

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Since that time, the use, manufacture, and sale of pads from different
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materials has evolved, but the Clay name has remained in the name of many cleaning
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bars, even though they may actually contain no clay at all.
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For example, a product purportedly embodying the D631 Patent is
referred to as ClayZilla even though it does not contain clay.

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The D631 Patent was filed on October 10, 2013 and issued on November
4, 2014.
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The claimed ornamental features of the D631 Patent are functional. For
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example, the shape and finger grooves allow for better grip, the hemispherical profile
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of the pad allows for a comfortable grip, the pattern on the cleaning pad allows for
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effective cleaning of a surface, and the oval shape of the pad allows for even pressure
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distribution while cleaning.
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20.
The claimed ornamental features of the D631 Patent are found in the prior
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art. For example, the D631 Patent claims a textured bottom and pads with textured
bottoms that were well-known in the prior art. Features like finger grooves and
hemispherical shapes were well-known techniques for improving grip. An oval shape
is a common shape for a cleaning pad.
The October 21, 2015 Supplier Agreement Between TIS and SCG
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On October 21, 2015, TIS and SCG entered into a Supplier Agreement
whereby TIS agreed to sell and supply certain products to SCG, including the Clayzilla
pad and applicator.
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In accordance with the Agreement, SCG agreed to buy, on a non-exclusive
basis, the ClayZilla product from TIS.

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SCG was aware that TIS sold other Clay Bar cleaning pads before
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entering into the Agreement. For example, in late 2011, TIS introduced a new cleaning
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pad made from a polymerized rubber skin material. TIS has sold a variety of products
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similar to those involved here for several years.
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The Agreement provided that TIS was free to manufacture and sell non-
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similar products to third parties, so long as it did not infringe certain of SCGs rights,
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including the D631 Patent or a related pending utility patent application.
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The TIS Clay Products Do Not Infringe the D631 Patent Because the
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Designs are Plainly Dissimilar
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There are numerous differences between the ornamental features of the
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TIS Clay Products and the D631 Patent. Some of these are described and depicted
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below.
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For example, the D631 is egg-shaped, but the Clay 2.0 is mouse shaped.
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The grooves on the top of the D631 design are biased towards the back end of the
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pad, but the grooves on the top of the Clay 2.0 are biased towards the front of the pad.
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D631 Patent, Figure 3, Top View

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The Clay 2.0 Product, Top View
The D631 has side finger grooves while the Clay 2.0 has no finger
groove on the side. The D631 also has a taller vertical profile than the Clay 2.0.
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D631 Patent, Figure 4, Side View

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The Clay 2.0 Product, Top View
Griots Synthetic Clay also differs from the D631in that it is round in
shape, flat on top, and has no finger grooves.
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Griots Synthetic Clay, Top View
Griots Synthetic Clay, Side View
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TIS is not Violating the Agreement by Selling the Clay Products Because
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They Differ in Design and Utility from the ClayZilla Product
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There are numerous design and utility differences between the ClayZilla
Product and the Clay Products.

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For example, the profile of the D631 Patent is defined by a thin bottom
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pad with the same egg-shaped exterior outline, and a relatively thick base and textured
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bottom surface. The Clay 2.0, in contrast, has a thinner base and thicker pad.
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The textured bottom surface of the D631 Patent is significantly different
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from the bottom surface of the Clay 2.0, providing a different method for cleaning a
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surface. For example, the textured bottom surface (polymerized rubber skin) of
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Clayzilla features a flat and smooth surface, which can be used only with water-based
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lubricants containing silicone/glycerine/propylene glycol when the car surface is free of
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loose dirt. It does not have the utility/function of clay-as-you-wash. The textured
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bottom surface of the Mothers Clay 2.0 and Griots Clay Products features a diamond-
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patterned groove with loose dirt collection ability, which enables one to use them with
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regular detergent/dish washing soap to allow for clay-as-you-wash utility/function.
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The cleaning pad of the D631 Patent is removable, whereas the cleaning
pad of the Clay 2.0 is fixed.

LEGAL02/36833972v1
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SCGs Multiple Threats of Legal Action
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In October, 2016, less than one year after entering the Agreement with TIS,
Mr. Miller of SCG sent a letter to Mr. Heilan of TIS threatening legal action for
infringement of the D631 Patent and breach of the Agreement by the Clay 2.0 Product.
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In a response letter, TIS acknowledged SCG and Mr. Millers concern and
attempted to clarify the issue, explaining that TISs products did not infringe, and
providing a detailed explanation of several differences.
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On November 29, 2016, Mr. Miller sent another letter to Mr. Heilan that
again threatened legal action, including to seek an injunction barring TIS from selling
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its products, with a deadline set for December 1, 2016 at 5:00 p.m. Pacific if TIS did
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not immediately cease and desist from the Violating Practices and notify [SCG] of
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same in writing.
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Despite TISs attempts to alleviate SCG and Mr. Millers concerns, it is
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apparent that SCG and Mr. Miller are determined to pursue legal action against TIS to
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improperly remove TISs products from the market.
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Mr. Millers continued threats of legal action for patent infringement and
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under the Agreement put TIS in the precarious position of either abandoning the legal
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manufacture and sale of the its Clay Products or pursuing alleged improper behavior.
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TIS therefore seeks a declaratory judgment to avoid the obvious harm
caused by SCGs apparent attempt to eliminate TIS as a competitor.
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FIRST CAUSE OF ACTION
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(Declaration of Non-Infringement of Design Patent Against Defendant Surf City
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Garage Brands, LLC and Timothy Miller
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(35 U.S.C. 289; 28 U.S.C. 2201)

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TIS re-alleges and incorporates by reference, as if fully set forth here, the
allegations of the preceding paragraphs.

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TISs products, the Mothers Clay 2.0 and the Griots Garage Brilliant
Finish Synthetic Clay, do not infringe U.S. Design Patent D716,631.

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41.
By virtue of the foregoing, there is a justiciable controversy between TIS
and SCG as to TISs right to make, sell, or use these products.

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TIS is entitled to a declaratory judgment that it is not infringing, and has
not infringed, U.S. Design Patent D716,631.
SECOND CAUSE OF ACTION
(Declaration of Design Patent Invalidity Against Defendant Tim Miller)
(35 U.S.C. 101 et seq.; 28 U.S.C. 2201)
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TIS re-alleges and incorporates by reference, as if fully set forth here, the

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U.S. Design Patent D716,631 is invalid under 35 U.S.C. 171 for failure
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to claim design patent-eligible ornamental features. U.S. Design Patent D716,631 is
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directed to functional features. Based on how SCG is apparently construing the scope
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of its intellectual property rights, it also appears that the design patent is invalid over
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the prior art under various sections of the Patent Act, including 35 U.S.C. 101, 102,
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and/or 103.
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and Timothy Miller as to the validity of U.S. Design Patent D716,631, and as to TISs
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right to make, sell, import, or use the Clay Products.
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is invalid.
TIS is entitled to a declaratory judgment that U.S. Design Patent D716,631
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THIRD CAUSE OF ACTION
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(Declaration of Compliance of Contract with SCG)
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TIS re-alleges and incorporates by reference, as is fully set forth here, the

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TISs sale of the Clay Products is not precluded by, or in violation of, the
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Supplier Agreement. Nevertheless, SCG continues to allege that the sale of these
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products violates this Agreement. TIS references the Agreement in this complaint but
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does not attach it due to confidentiality considerations.

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and SCG as to the compliance of the Parties with the Supplier Agreement.
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TIS is entitled to declaratory judgment that TIS has not breached the
Supplier Agreement with SCG.
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PRAYERS FOR RELIEF
WHEREFORE, Plaintiff prays for judgment as follows:
ON ALL CAUSES OF ACTION
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For costs of suit incurred herein; and
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For such other and further relief as the court may deem necessary and
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proper.
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ON THE FIRST CAUSE OF ACTION
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For a declaration that TISs product do not infringe United States Design
Patent D716,631; and
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For a finding that this is an exceptional case giving rise to an award of
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reasonable attorney fees to TIS.
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ON THE SECOND CAUSE OF ACTION
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For a declaration that the Design Patent D716,631 is invalid; and
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For a finding that this is an exceptional case giving rise to an award of
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reasonable attorney fees to TIS.
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ON THE THIRD CAUSE OF ACTION
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For a declaration that SCGs sale of the Clay Products does not breach the
October 21, 2015 Supplier Agreement between TIS and SCG.
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LEGAL02/36833972v1
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DATED: December 1, 2016
RESPECTFULLY SUBMITTED,
ALSTON & BIRD LLP
BY: /S/ David M. Stein

DAVID M. STEIN
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Attorneys for Declaratory Judgment Plaintiff

TOTAL IMPORT SOLUTIONS, INC.
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LEGAL02/36833972v1
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Total Import v. Surf City - Complaint

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Case 8:16-cv-02142 Document 1 Filed 12/01/16 Page 1 of 11 Page ID #:1

David M. Stein (State Bar No. 198256)

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

TOTAL IMPORT SOLUTIONS, INC, d/b/a Case No.:

Filed: December 1, 2016

TOTAL IMPORT SOLUTIONS COMPLAINT

Case 8:16-cv-02142 Document 1 Filed 12/01/16 Page 2 of 11 Page ID #:2

automotive appearance products.

competitors in the automotive appearance aftermarket, specifically with regard to

Miller and SCG appear determined to eliminate TIS as a competitor by improperly

TIS and SCG (collectively, the Parties) are

PARTIES TO THE ACTION

Santa Fe Springs, CA 90670. TIS is a manufacturer and wholesaler of popular

Case 8:16-cv-02142 Document 1 Filed 12/01/16 Page 3 of 11 Page ID #:3

On information and belief, Defendant SCG Brands LLC, is a California

SCG is a competitor to TIS in the market for automotive appearance products.

On information and belief, Defendant Tim Miller is an individual residing

States Design Patent D716,631, so TIS believes he may be a necessary party.

JURISDICTION AND VENUE

case or controversy, as the federal question claims.

its manufactured product from a California company while in California. In addition,

the Agreement requires any legal dispute to be pursued here.

principal of SCG, he participates in the manufacture, marketing, and selling of SCG

products in California. On information and belief, Mr. Miller constructively licensed

selling, and purchase of products in California.

Venue is proper under 28 U.S.C. 1392(b). Mr. Miller and SCG

Case 8:16-cv-02142 Document 1 Filed 12/01/16 Page 4 of 11 Page ID #:4

The Crowded Market for Automotive Appearance Products

The market for automotive appearance products is crowded and

Competitors seek to gain certain market share through the manufacture,

pad to clean the surface of a vehicle.

widely by their function and design.

Similarly, cleaning pads vary in both material and design.

One of the now common materials used in cleaning pads is a derivative of

an earlier Clay Bar originally developed in Japan around 1995.

bars, even though they may actually contain no clay at all.

For example, a product purportedly embodying the D631 Patent is

referred to as ClayZilla even though it does not contain clay.

distribution while cleaning.

Case 8:16-cv-02142 Document 1 Filed 12/01/16 Page 5 of 11 Page ID #:5

is a common shape for a cleaning pad.

pad and applicator.

In accordance with the Agreement, SCG agreed to buy, on a non-exclusive

basis, the ClayZilla product from TIS.

similar to those involved here for several years.

including the D631 Patent or a related pending utility patent application.

Designs are Plainly Dissimilar

There are numerous differences between the ornamental features of the

Case 8:16-cv-02142 Document 1 Filed 12/01/16 Page 6 of 11 Page ID #:6

D631 Patent, Figure 3, Top View

The Clay 2.0 Product, Top View

D631 Patent, Figure 4, Side View

The Clay 2.0 Product, Top View

shape, flat on top, and has no finger grooves.

Case 8:16-cv-02142 Document 1 Filed 12/01/16 Page 7 of 11 Page ID #:7

Griots Synthetic Clay, Top View

Griots Synthetic Clay, Side View

They Differ in Design and Utility from the ClayZilla Product

Product and the Clay Products.

The textured bottom surface of the D631 Patent is significantly different

lubricants containing silicone/glycerine/propylene glycol when the car surface is free of

regular detergent/dish washing soap to allow for clay-as-you-wash utility/function.

pad of the Clay 2.0 is fixed.