Case 1:20-cv-02095-AKH Document 9 Filed 04/29/20 Page 1 of 14

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

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:
AMEZIEL, INC., :
:
Plaintiff/Counterclaim-Defendant, :
: Case No: 1:20-cv-02095-AKH
v. :
: Hon. Alvin K. Hellerstein
WIESNER PRODUCTS, INC., :
:
Defendant/Counterclaim-Plaintiff. :
:
:
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ANSWER TO COMPLAINT AND COUNTERCLAIM

Defendant Wiesner Products, Inc. (hereinafter, “Defendant” or “Wiesner”) denies any

allegations in Plaintiff’s, Ameziel, Inc. (hereinafter, “Plaintiff” or “Ameziel”), Complaint to

which it does not specifically respond and reserves the right to assert any additional and future

defenses as may be revealed by discovery or otherwise.

Defendant, by its counsel, submits its Answer in response to the Complaint, as follows:

NATURE OF THE ACTION

1. Paragraph 1 is a statement of legal conclusions to which no response is required.

To the extent a response is required, Wiesner denies that there is any factual or legal basis for

Ameziel’s allegations that U.S. Patent No. RE45,533 (the “‘533 patent”) is invalid and that

Ameziel’s 50 Series hangers (as defined below in paragraph 12) do not infringe the ‘533 patent.

THE PARTIES

2. Wiesner lacks knowledge or information sufficient to form a belief as to the truth

of the allegations of this paragraph and on that basis denies them.

 
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3. Wiesner denies that it is doing business under the name of Studio 3B and admits

the remaining allegations of paragraph 3.

JURISDICTION AND VENUE

4. Paragraph 4 is a statement of legal conclusions and jurisdiction to which no

response is required. To the extent a response is required, Wiesner does not contest the subject

matter jurisdiction of this Court solely for the limited purposes of this action.

5. Paragraph 5 is a statement of legal conclusions and jurisdiction to which no

response is required. To the extent a response is required, Wiesner does not contest personal

jurisdiction in this Court solely for the limited purposes of this action.

6. Paragraph 6 is a statement of legal conclusions and venue to which no response is

required. To the extent a response is required, Wiesner does not contest the propriety of this

Court as venue for the claims alleged in Ameziel’s Complaint.

FACTUAL BACKGROUND

7. Wiesner lacks knowledge or information sufficient to form a belief as to the truth

of the allegations of this paragraph and on that basis denies them.

8. Wiesner admits that it is a distributor of footwear and apparel among other items.

Wiesner admits that it provides product design and licensing as part of its business. Wiesner

denies the remaining allegations of paragraph 8.

9. Wiesner admits that it is in the business of selling household products, including

clothes hangers, and that Ameziel is in the business of selling at least clothes hangers. Wiesner

denies the remaining allegations set forth in paragraph 9.

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10. The allegations of paragraph 10 reference documents and incorporate images

from said documents and therefore no response is required, the documents speak for themselves.

Wiesner denies any characterization of the referenced documents.

11. Wiesner lacks knowledge or information sufficient to form a belief as to the truth

of the allegations of this paragraph and on that basis denies them.

12. Wiesner admits that its counsel sent a letter to Ameziel dated November 8, 2019

regarding its patented rights in its clothes hanger design and accusing Ameziel of infringing by

“making or having made, importing, selling, and/or offering for sale in the United States a

product on Amazon.com identified as ‘SONGMICS Hangers, 50 Pack Plastic Coat Hangers,

Non-Slip, Durable 0.2-Inch Thickness, Space Saving, 360°Swivel Hooks’ (the ‘Infringing

Hangers’) … being sold in six different colors under the ASINs: B07W2VN4DZ,

B07GRXF8ZR, B06ZYW5BFF, B07VYRFM87, B07VZT5B9C and B07GRSVFZ5,”

(collectively the “50 Series hangers”). Wiesner lacks knowledge or information sufficient to

form a belief as to the truth of the remaining allegations of this paragraph and therefore denies

them.

13. Wiesner admits that it submitted a takedown request to Amazon regarding the 50

Series hangers sold by Ameziel in November 2019 based on infringement of Wiesner’s patented

rights in its clothes hanger design. Wiesner denies the remaining allegations set forth in

paragraph 13.

14. Denied.

15. Denied.

16. Denied.

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17. The allegations of paragraph 17 refer to documents and incorporate images from

said documents and, therefore, no response is required, the documents speak for themselves.

Wiesner denies any characterization of the referenced documents. Wiesner denies the remaining

allegations set forth in paragraph 17.

18. Denied with respect to the 50 Series hangers. Wiesner lacks knowledge or

information sufficient to form a belief as to the truth of the remaining allegations of this

paragraph and therefore denies them.

19. Wiesner admits that it had settlement discussions with Ameziel in which Wiesner

sought to grant Ameziel a non-exclusive license to the ‘533 patent for a fee, and that the

negotiations occurred over several months. Wiesner denies the remaining allegations set forth in

paragraph 19.

20. Admitted.

21. Admitted.

22. Wiesner admits that it received certain alleged sales information from Ameziel

and admits that Ameziel identified Korean Patent Registration No. 30-0550154 in a

correspondence. Wiesner denies the remaining allegations set forth in paragraph 22.

23. Denied.

24. Wiesner admits that its counsel sent an email to Ameziel on February 18, 2020

indicating that Wiesner was no longer interested in granting a license under the ‘533 patent to

Ameziel and further providing a settlement offer. Wiesner denies the remaining allegations in

paragraph 24.

25. Paragraph 25 is a statement of legal conclusions to which no response is required.

To the extent a response is required Wiesner does not contest that an actual controversy has

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arisen between the parties regarding Ameziel’s infringement of the ‘533 patent by the 50 Series

hangers, denies that a case or controversy exists with respect to the 20 Series and 41 Series

hangers, and Wiesner lacks knowledge or information sufficient to form a belief as to the truth of

the remaining allegations of this paragraph and therefore denies them.

COUNT I – DECLARATION OF NON-INFRINGEMENT

26. Wiesner realleges and incorporates by reference paragraphs 1-25 above.

27. Wiesner admits that it has accused Ameziel’s 50 Series hangers of infringing the

‘533 patent. Wiesner admits that it had accused Ameziel’s 20 Series and 41 Series hangers of

infringing the ‘533 patent. Wiesner denies the remaining allegations set forth in paragraph 27.

28. Denied as to the 50 Series hangers. Admitted as to the 20 Series and 41 Series

hangers. Wiesner lacks knowledge or information sufficient to form a belief as to the truth of the

remaining allegations of this paragraph and therefore denies them.

29. Paragraph 29 is a statement of legal conclusions to which no response is required.

To the extent a response is required Wiesner does not contest that an actual controversy has

arisen between the parties regarding Ameziel’s infringement of the ‘533 patent with respect to

the 50 Series hangers, denies that an actual controversy has arisen with respect to the 20 Series

and 41 Series hangers, and Wiesner lacks knowledge or information sufficient to form a belief as

to the truth of the remaining allegations of this paragraph and therefore denies them.

30. Denied.

COUNT II – DECLARATION OF INVALIDITY OF THE ASSERTED PATENT

31. Wiesner realleges and incorporates by reference paragraphs 1-30 above.

32. Denied.

33. Denied.

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34. Denied.

35. Denied.

36. Admitted.

37. Denied.

COUNT III – DECLARATION OF LACK OF DAMAGES TO DEFENDANT

38. Wiesner realleges and incorporates by reference paragraphs 1-37 above.

39. Denied.

PLAINTIFF’S PRAYER FOR RELIEF

Defendant denies that Plaintiff is entitled to any of the requested relief set forth in its

Prayer for Relief.

JURY DEMAND

No response is required to Plaintiff’s jury demand.

AFFIRMATIVE DEFENSES

For its Affirmative Defenses, Wiesner alleges as follows:

FIRST AFFIRMATIVE DEFENSE

The ‘533 patent is valid and enforceable under Title 35 of the United States Code.

SECOND AFFIRMATIVE DEFENSE

No actual controversy exists between Wiesner and Ameziel with respect to the

infringement of the ‘533 patent by Ameziel’s 20 Series hangers or 41 Series hangers as Wiesner

has admitted that those products do not infringe the ‘533 patent.

THIRD AFFIRMATIVE DEFENSE

Wiesner reserves the right to amend its Answer to include other affirmative defenses that

Wiesner may learn of during the course of its investigation.

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COUNTERCLAIM

Without admitting any of the Plaintiff’s allegations other than those expressly admitted

herein, and without prejudice of the rights of Defendant to plead additional Counterclaims as the

facts of the matter warrant, Defendant/Counterclaim-Plaintiff Wiesner Products, Inc. hereby

asserts the following Counterclaims against Ameziel, Inc. d/b/a SONGMICS.

THE PARTIES

1. Wiesner Products, Inc. (“Wiesner”) is a corporation organized and existing under

the laws of the State of New York with a principal place of business at 1333 Broadway, 6th Fl.,

New York, New York 10018

2. Upon information and belief, Ameziel, Inc. is a corporation organized and

existing under the laws of the State of California with a principal place of business at 4215 E.

Airport Drive, Ontario, California 91761.

JURISDICTION AND VENUE

3. Subject to Wiesner’s denials and defenses, this Court has subject matter

jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338.

4. Subject to Wiesner’s denials and defenses, venue is proper in this Court pursuant

to 28 U.S.C. §§ 1391 and 1400, and because Ameziel has come to this venue seeking declaratory

relief by filing its Complaint (Dkt. 1) against Wiesner in this action.

5. This Court has personal jurisdiction over Plaintiff/Counterclaim-Defendant,

which has availed itself of this district by filing its Complaint (Dkt. 1) against Wiesner in this

Court.

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FACTS COMMON TO ALL COUNTS

6. Wiesner is an industry leader in the design, marketing, sourcing and distribution

of various lifestyle products from footwear and apparel to household goods including hangers.

7. Wiesner owns the entire right, interest and title to United States Patent RE45,533

(the ‘533 Patent). The ‘533 Patent is entitled “Clothing Hanger” and names Samuel V. Cohen as

the inventor.

8. The ‘533 Patent is a Reissue of U.S. Patent No. D640,876 (the “D876 Patent”).

The D876 Patent was issued on July 5, 2011 and has a filing date of December 6, 2010.

9. The ‘533 Patent was reissued on June 2, 2015 and has a priority date of December

6, 2010. A true and correct copy if the ‘533 Patent is attached as Exhibit A hereto.

10. The ‘533 Patent is unexpired and enforceable and has not been licensed to

Ameziel.

11. The ‘533 Patent claims an ornamental design for a clothing hanger. One

depiction of the claim is shown below:

12. Wiesner identified infringing listings for Ameziel’s 50 Series clothes hangers

titled SONGMICS Hangers, 50 Pack High Qaulity [sic] Plastic Coat Hangers, Non Slip Durable,

0.2 Inch Thickness Space Saving, 360° Swivel Hooks (the “50 Series hangers”) on Amazon listed

for sale by Ameziel under the SONGMICS brand. Wiesner submitted takedown requests to

Amazon.com based on its patent rights.

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13. The Ameziel 50 Series hangers listed for sale on Amazon.com incorporate and

infringe Wiesner’s ‘533 Patent. A side by side comparison of the views of the ornamental design

claimed in the ‘533 Patent and corresponding views of a Ameziel hanger is below:

Perspective View

Front Elevational View

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Top Plan View Left Side Elevational View

14. Following a cease and desist letter sent on behalf of Wiesner, Wiesner and

Ameziel engaged in negotiations over a period of months in an attempt to resolve the dispute, but

ultimately the discussions were not successful.

15. Upon information and belief, Ameziel has manufactured and sold, and continues

to make and/or sell and presently intends to make and/or sell, in the United States, the 50 Series

hangers.

FIRST COUNTERCLAIM

16. Wiesner repeats and realleges the averments contained in all preceding

Paragraphs as if fully stated herein.

17. Ameziel’s actions, as set forth herein, constitute patent infringement under 35

U.S.C. § 271.

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18. Ameziel has infringed and continues to infringe the ‘533 Patent by using, selling

and/or offering to sell in the United States, and/or importing into the United States the 50 Series

hangers, which embody the ornamental design covered by the ‘533 Patent.

19. Ameziel has infringed literally and by application of the doctrine of equivalents,

and directly and indirectly.

20. Upon information and belief, Ameziel’s infringement of the ‘533 Patent has been

and continues to be intentional, willful, and without regard to Wiesner’s rights.

21. Upon information and belief, Ameziel has gained profits by virtue of its

infringement of the ‘533 Patent.

22. Wiesner has sustained damages as a direct and proximate result of Ameziel’s

infringement of the ‘533 Patent.

23. Wiesner is entitled to recover a reasonable royalty, Ameziel’s profits, attorney

fees, treble damages, and all other relief allowed under the Patent Act.

24. Wiesner will suffer and is suffering irreparable harm from Ameziel’s

infringement of the ‘533 Patent. Wiesner has no adequate remedy at law and is entitled to an

injunction against Ameziel’s continuing infringement of the ‘533 Patent. Unless enjoined,

Ameziel will continue its infringing conduct.

PRAYER FOR RELIEF

WHEREFORE, Wiesner prays for judgment against Ameziel as follows:

(a) The dismissal of Ameziel’s Complaint, in its entirety, and with prejudice;

(b) A judgment that Ameziel has directly and/or indirectly infringed Wiesner’s ‘533

Patent;

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(c) An order preliminarily and permanently enjoining Ameziel, its owners,

subsidiaries, divisions, branches, affiliates, predecessors or successors in business, parents and

wholly owned or partially owned entities, and any entities acting or purporting to act for or on

behalf of the foregoing, including any agents, employees, representatives, officers, directors,

servants, partners, and those persons in active concert or participation with them, from further

acts of infringement of Wiesner’s asserted ‘533 Patent;

(d) An award of damages to compensate Wiesner for Ameziel’s infringement

pursuant to 35 U.S.C. § 284;

(e) An order (a) requiring an accounting of Ameziel’s profits pursuant to Ameziel’s

unlawful activities and (b) awarding all of said profits to Wiesner as damages sustained by

Wiesner due to Ameziel’s acts complained of herein, including the award of Ameziel’s profits

from its infringement pursuant to 35 U.S.C. § 289;

(f) An order awarding Wiesner a reasonable royalty;

(g) An award of all damages including treble damages, based on any infringement

found to be willful, pursuant to 35 U.S.C. § 284;

(h) An order awarding Wiesner pre-judgment and post-judgment interest on all

applicable damages at the maximum rate(s) permitted by law;

(i) A judgment finding that this case is exceptional and awarding Wiesner its

attorney fees pursuant to 35 U.S.C. § 285; and

(j) Such other and further relief as the Court may deem just and proper.

JURY DEMAND

Wiesner demands a trial by jury on all issues triable to a jury.

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Dated: April 29, 2020 Respectfully submitted,

White Plains, New York
s/ Robert M. Isackson
Robert M. Isackson (RI 4304)
LEASON ELLIS LLP
One Barker Avenue
White Plains, New York 10601
Phone: (914) 288-0022
Fax: (914) 288-0023
Email: isackson@leasonellis.com

Attorneys for Defendant/Counterclaim-Plaintiff

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CERTIFICATE OF SERVICE

I hereby certify that on April 29, 2020, a true and correct copy of the foregoing

DEFENDANT’S ANSWER TO PLAINTIFF’S COMPLAINT AND COUNTERCLAIM, was

served upon all counsel of record by operation of the Court’s electronic filing system.

s/ Robert M. Isackson
Robert M. Isackson

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