Skinify v. Buller - Complaint

Case 5:20-cv-00988 Document 1 Filed 05/07/20 Page 1 of 16 Page ID #:1
1 David C. Bohrer (SBN 212397)

[email protected]
2 GREENFIELD LLP
55 S. Market Street, Suite 1500
3 San Jose, CA 95113
Telephone: (408) 995-5600
4 Facsimile: (408) 995-0308
5 Attorneys for Plaintiff SKINIFY, LLC
6
UNITED STATES DISTRICT COURT
7
CENTRAL DISTRICT OF CALIFORNIA
8
SKINIFY, LLC, a Delaware company Case No.:
9 Plaintiff, COMPLAINT
10 1. Declaratory Judgment of
vs. Invalidity of the ‘211 Design
11 Patent
JONATHAN BLAKE BULLER, an 2. Declaratory Judgment of
individual Noninfringement of the ‘211
12
Defendant Design Patent
13 3. Declaratory Judgment of
Invalidity of the ‘891 Design
14 Patent
4. Declaratory Judgment of
15 Noninfringement of the ‘891
Design Patent
16 5. Intentional Interference with
Prospective Economic Advantage
17 6. Unfair Competition Under the
California Business and
18 Professions Code§§ 17200 et seq.
19
JURY TRIAL DEMANDED
20
_____________________________________________________________________________________________
1
1 Plaintiff, Skinify, LLC (“Skinify”) files this Complaint for Declaratory
2 Judgment (“Complaint”) against Defendant Jonathan Blake Buller (“Buller”).
3 Skinify seeks declaratory relief pursuant to 28 U.S.C. §§ 2201 and 2201, declaring
4 United States Patent Nos. D815,211S (“the ´211 Design patent”) and D837,891S
5 (“the ´891 Design patent”) (collectively the “patents-in-suit”) to be not infringed
6 and to be invalid, and asserts a common law claim for intentional interference with
7 prospective economic advantage and a state-law claim for unfair competition under
8 California Unfair Competition Law, Cal. Bus. & Prof. Code §§ 17200 et seq.
9 THE PARTIES
10 1. Plaintiff Skinify is a Delaware limited liability company with its
11 principal place of business located at 35770 Airport Road, Rehoboth Beach,
12 Delaware 19971.
13 2. Defendant Buller is an individual who resides in Temecula,
14 California. Upon information and belief, Buller’s current address is 27321 Via
15 Industria, Temecula, California 92590.
16 JURISDICTION AND VENUE
17 3. This Court has subject matter jurisdiction over Skinify’s request for a
18 declaratory judgment under 28 U.S.C. §§ 2201 and 2202. This action arises under
19 the patent laws of the United States, 35 U.S.C. §§ 100 et seq., which are within the
20 subject matter jurisdiction of this Court under 28 U.S.C. §§ 1331 and 1338(a). This
_____________________________________________________________________________________________
2
1 Court has supplemental jurisdiction over claims asserted under California statutes
2 and common law under 28 U.S.C. § 1367.
3 4. The Court has personal jurisdiction over Buller because Buller is a
4 resident of Riverside County, California.
5 5. Venue is proper in this judicial district under 28 U.S.C. § 1391
6 because Buller resides in this judicial district and, as described below, a substantial
7 part of the events giving rise to the claims at issue occurred in this judicial district
8 and because Buller is subject to personal jurisdiction within this judicial district.
9 FACTUAL BACKGROUND
10 6. Skinify, doing business as DecalGirl®, designs and sells protective
11 covers that are removably attachable to electronic devices, including but not
12 limited to electronic game controllers and docking stations. The protective covers
13 are commonly called “skins”. The protective covers are specially tailored to cover
14 exterior surfaces of individual electronic devices. When applied, the protective
15 covers inhibit scratching or soiling of the exterior surfaces of the electronic
16 devices. The protective covers are adhesively sealed to the exterior surfaces, but do
17 not cover display screens and control buttons. The protective covers can be
18 removed (peeled off) upon applying moderate heat to soften the adhesive.
19 7. Among the protective covers sold by Skinify are skins specially
20 designed for use with the Nintendo Switch® game console sold by Nintendo of
_____________________________________________________________________________________________
3
1 America Inc. One example of a Nintendo Switch game console, including a
2 docking station and controller, is shown below:
8
8. The Nintendo Switch® game controller and docking station was first
9
offered for sale in the United States on or about March 3, 2017.
10
9. Skinify displays and sells its protective covers for the Nintendo
11
Switch® game controllers and docking stations on-line using its own website
12
www.decalgirl.com. Skinify also displays and sells the protective covers for
13
Nintendo Switch® game controllers and docking stations on-line with product
14
listings on Amazon.com. The Amazon.com on-line marketplace represents the
15
major portion of Skinify’s sales.
16
10. One example of Skinify’s protective covers for the Nintendo Switch®
17
game controller and docking station is set out in Exhibit A. The protective covers
18
are configured to closely conform to the exterior contours of each game controller
19
and docking station, without covering display screens or control buttons. The
20
_____________________________________________________________________________________________
4
1 shapes of the protective covers used with the Nintendo Switch® game controller
2 and docking station are dictated by the exterior contours of each game controller
3 and docking station.
4 11. Skinify sold its first protective covers for the Nintendo Switch® game
5 controller and docking station on March 6, 2017. Exhibit B to this Complaint is a
6 copy of Web Order #1937617 dated March 6, 2017, with a product ship date of
7 March 8, 2017. In Exhibit B, identifying details for the customer have been
8 redacted.
9 12. At least as early as March 7, 2017 Skinify advertised on its
10 DecalGirl® website that DecalGirl® protective covers for Nintendo Switch game
11 controllers and docking stations were available for sale. Exhibit C to this
12 Complaint is a screen print of the March 7, 2017 advertisement.
13 13. At least as early as March 8, 2017, and continuing to the present,
14 Skinify has displayed on www.youtube.com a video demonstrating how easily the
15 DecalGirl® protective covers can be applied to and removed from a Nintendo
16 Switch® game controller and docking station. See
17 https://www.youtube.com/watch?v=B1moGRpsl70.
18 14. Skinify’s protective covers are produced with different coloration and
19 artwork to appeal to the aesthetic tastes and preferences of its customers. Except
20 for such variations of colors and artwork displayed thereon, since its first sale in
_____________________________________________________________________________________________
5
1 early March 2017, Skinify has offered and sold the same configuration of
2 protective covers for the Nintendo Switch® game controller and docking station.
3 15. Buller owns the ´211 Design patent. The ´211 Design patent is titled
4 “Skin Cover for a Game Controller”, and issued on April 10, 2018, from
5 application serial number 29/600,482, filed April 12, 2017. Buller is identified as
6 the applicant and inventor of the ´211 Design patent. A copy of the ´211 Design
7 patent is attached as Exhibit D.
8 16. Buller owns the ´891 Design patent. The ´891 Design patent is titled
9 “Skin Cover Set for a Gaming Console and Console Docking Station”, and issued
10 on January 8, 2019, from application serial number 29/612,861, filed August 4,
11 2017. Buller is identified as the applicant and inventor of the ´891 Design patent.
12 A copy of the ´891 Design patent is attached as Exhibit E.
13 17. On December 2, 2019, during the important Christmas holiday
14 shopping season, Buller filed complaints with Amazon.com to cause Amazon.com
15 to take down over 250 of Skinify’s product listings (called ASIN) for DecalGirl®
16 protective covers/skins adapted for use on the Nintendo Switch® game controller
17 and docking station. Buller asserted that Skinify’s products infringed the ´211
18 Design patent. In response to Buller’s complaints, Amazon.com disabled over 250
19 of Skinify’s product listings for DecalGirl® protective covers/skins adapted for the
20 Nintendo Switch® game controller and docking station.
_____________________________________________________________________________________________
6
1 18. On December 4, 2019, counsel for Skinify requested that Buller
2 retract the complaints he had filed with Amazon.com. Counsel for Skinify
3 informed Buller, and Buller’s attorney, that Skinify’s product listings should not
4 have been taken down from Amazon.com because the ´211 Design patent is
5 invalid. Skinify’s sale in March 2017 of its accused protective covers for the
6 Nintendo Switch® game controller and docking station occurred before Buller
7 filed the application serial number 29/600,482 (April 12, 2017) which issued as the
8 ´211 Design patent. If the claim of the ´211 Design patent is construed to cover
9 Skinify’s protective covers for the Nintendo Switch® game controller and docking
10 station, then the design claimed in the ´211 Design patent was not invented by
11 Buller.
12 19. Buller retracted the December 2, 2019 complaints against Skinify’s
13 ASIN with Amazon.com on or about December 16, 2019. Notwithstanding the
14 retraction, Skinify lost the opportunity to sell its skins for the Nintendo Switch®
15 game controller and docking station on Amazon.com during two weeks of the
16 holiday shopping season. Skinify lost profits due to the take down of its product
17 listings in December 2019.
18 20. On April 28, 2020, April 29, 2020 and April 30, 2020, Buller filed
19 more complaints with Amazon.com to cause Amazon.com again to take down over
20 50 of Skinify’s product listings (ASIN) for protective covers/skins for the Nintendo
_____________________________________________________________________________________________
7
1 Switch® game controller and docking station. In the April 2020 complaints filed
2 with Amazon.com Buller asserted that Skinify’s products infringed the ´211
3 Design patent and the ´891 Design patent. In response to Buller’s April 2020
4 complaints, Amazon.com disabled Skinify’s product listings for the over 50 of the
5 DecalGirl® protective covers/skins for the Nintendo Switch® game controller and
6 docking station. Some of the ASINs for Skinify products that were disabled by
7 Amazon.com in April 2020 were the same ASINs that had previously been taken
8 down and reinstated in December 2019. Skinify has lost the opportunity to sell its
9 skins for the Nintendo Switch® game controller and docking station on
10 Amazon.com due to the take down based on Buller’s April 2020 complaints.
11 Skinify lost profits due to the take down of its product listings in April 2020.
12 21. Skinify’s sale in March 2017 of its accused protective covers for the
14 filed the application serial number 29/600,482 (April 12, 2017) which issued as
15 ´211 Design patent. Buller has asserted infringement of the ´211 Design patent in
16 his Amazon.com take down complaints notwithstanding that he knows the ´211
17 Design patent is invalid under 35 U.S.C. §102.
18 22. Skinify’s sale in March 2017 of its accused protective covers for the
20 filed the application serial number 29/612,861 (August 4, 2017) which issued as
_____________________________________________________________________________________________
8
1 the ´891 Design patent. Buller has asserted infringement of the ´891 Design patent
2 in his Amazon.com complaints notwithstanding that he knows the ´891 Design
3 patent is invalid under 35 U.S.C. §102.
4 23. Buller has acted with malicious intent to disrupt Skinify’s rightful
5 continuing sales of its protective covers for the Nintendo Switch® game controller
6 on Amazon.com.
7 24. Buller asserted infringement of the patents-in-suit knowing that the
8 patents-in-suit are not valid.
9 COUNT I
10 Declaratory Judgment of Invalidity of the ´211 Design Patent
11 25. Skinify incorporates the foregoing paragraphs by reference as though
12 set forth herein.
13 26. The claim of the ´211 Design patent is invalid for failure to comply
14 with the requirements of patentability as specified in 35 U.S.C. §§1 et seq.,
15 including, without limitation, 35 U.S.C. §§ 171, 102 and 103, and/or based on
16 other judicially-created bases for invalidation.
17 27. The claim of the ´211 Design patent is invalid because the design
18 depicted in the Figures of ´211 Design patent is functional.
19 28. As a result of the acts described in the foregoing paragraphs, there
20 exists a substantial controversy of sufficient immediacy and reality between Buller
_____________________________________________________________________________________________
9
1 and Skinify to warrant the issuance of a declaratory judgment that the claim of the
2 ´211 Design patent is invalid.
3 COUNT II
4 Declaratory Judgment of Noninfringement of the ´211 Design Patent
6 fully set forth herein.
7 30. The claim of the ´211 Design patent has not been and is not infringed,
8 either directly or indirectly, by Skinify or the purchasers of Skinify’s products
9 through their use of Skinify’s products.
12 and Skinify to warrant the issuance of a declaratory judgment that Skinify has not
13 infringed, and does not infringe, directly or indirectly, the claim of the ´211 Design
14 patent.
15 COUNT III
16 Declaratory Judgment of Invalidity of the ´891 Design Patent
18 set forth fully herein.
19 33. The claim of the ´891 Design patent is invalid for failure to comply
20 with the requirements of patentability as specified in 35 U.S.C. §§1 et seq.,
_____________________________________________________________________________________________
10
1 including, without limitation, 35 U.S.C. §§ 171, 102 and 103, and/or based on
2 other judicially-created bases for invalidation.
3 34. The claim of the ´891 Design patent is invalid because the design
4 depicted in the Figures of ´891 Design patent is functional.
7 and Skinify to warrant the issuance of a declaratory judgment that the claim of the
8 ´891 Design patent is invalid.
9 COUNT IV
10 Declaratory Judgment of Noninfringement of the ´891 Design Patent
13 37. The claim of the ´891 Design patent has not been and is not infringed,
14 either directly or indirectly, by Skinify or the purchasers of Skinify’s products
15 through their use of Skinify’s products.
18 and Skinify to warrant the issuance of a declaratory judgment that Skinify has not
19 infringed, and does not infringe, directly or indirectly, the claim of the ´891 Design
20 patent.
_____________________________________________________________________________________________
11
1 COUNT V
2 Intentional Interference with Prospective Economic Advantage
4 fully set forth herein.
5 40. There was an economic relationship between Skinify and Amazon
6 that had the probability of a future economic benefit to Skinify from consumers
7 purchasing DecalGirl® protective covers for Nintendo Switch® game controllers
8 and docking stations listed on Amazon.com.
9 41. Buller was fully aware of this relationship between Skinify and
10 Amazon.
11 42. In April 2020, Buller filed complaints with Amazon in which he
12 knowingly made false and misleading statements that he owned the ‘211 Design
13 Patent and the ‘891 Design Patent, that these patents were not invalid, and that
14 these patents were infringed by Skinify. Buller made these statements despite
15 knowing that each of these patents was invalid based among other things on prior
16 communications with Skinify and its counsel that caused Buller to retract previous
17 complaints filed with Amazon in December 2019 asserting infringement of the
18 same patents by the same or substantially similar Skinify products.
19 43. Buller’s false and misleading statements disrupted Skinify’s
20 relationship with Amazon, which disabled Skinify’s DecalGirl® product listings
_____________________________________________________________________________________________
12
1 for over 50 protective covers causing Skinify to be unable to make these sales and
2 incur other economic harm.
3 44. Skinify’s economic harm is proximately caused by Buller’s false and
4 misleading statements.
5 COUNT VI
6 Unfair Competition and Deceptive Trade Practices

Under the California Business and Professions Code §§ 17200, et seq.
7
10 46. Buller has engaged in unfair competition in violation of the California
11 Unfair Competition Law (“UCL”), §§ 17200 et seq. in one or more of the
12 following ways:
13 a. By engaging in unlawful acts or practices including tortious
14 interference with prospective economic advantage as alleged in Skinify’s fifth
15 cause of action, as well as by filing and prosecuting in bad faith objectively
16 baseless complaints with Amazon asserting that Skinify was infringing valid
17 patents owned by Buller.
18 b. By engaging in unfair acts and practices that significantly
19 threaten or harm competition from Skinify and/or any other party seeking to list the
20 same or substantially similar protective covers on Amazon.com.
_____________________________________________________________________________________________
13
1 47. As a result of Buller’s unfair competition, Skinify has been injured in
2 fact and lost money or property, including without limitation lost sales of its
3 protective covers for the Nintendo Switch® game controller and docking station.
4 48. Skinify and/or other parties similarly situated have already sustained
5 economic harm and continue to face the real and imminent threat of continuing and
6 future harm from Buller’s unfair competition.
7 49. Skinify is entitled to injunctive relief enjoining the unfair competition,
8 restitution and other appropriate equitable relief under UCL §§ 17203-17204.
9 Jury Demand
10 50. Skinify requests a trial by jury, pursuant to Rule 38(b) of the Federal
11 Rules of Civil Procedure, on all issues triable to a jury.
12 Prayer for Relief
13 WHEREFORE, Plaintiff Skinify seeks a judgment against Defendant
14 Jonathan Blake Buller that includes the following:
15 A. A declaration that Skinify and the purchasers of Skinify’s products
16 have not infringed and are not infringing, either directly or indirectly, the claims of
17 the ´211 Design patent and the ´891 Design patent;
18 B. A declaration that the claims of the ´211 Design patent and the ´891
19 Design patent are invalid;
20
_____________________________________________________________________________________________
14
1 C. An order that Buller and any persons or entities in active concert or
2 participation with him are restrained and enjoined from further prosecuting or
3 instituting any action against Skinify or the purchasers of Skinify’s products
4 claiming that the ´211 Design patent and the ´891 Design patent are infringed;
5 D. An order that Buller and any persons or entities in active concert or
6 participation with him are restrained and enjoined from instituting any take down
7 complaint against any ASIN on Amazon.com claiming that the ´211 Design patent
8 and the ´891 Design patent are infringed by any of Skinify’s products;
9 E. An order that Buller and any persons or entities in active concert or
10 participation with him are restrained and enjoined from further unfair competition;
11 F. An award to Skinify of damages suffered by Skinify attributable to
12 Buller’s unwarranted take down complaints and/or in an amount equal to
13 compensate Skinify for its economic losses;
14 G. For restitution in an amount equal to the value of the money or
15 property taken by Buller from Skinify or in which Skinify has a vested interest;
16 H. A declaration that this is an exceptional case under 35 U.S.C. § 285;
17 I. An assessment of Skinify’s costs against Buller;
18 J. An assessment of Skinify’s reasonable attorneys’ fees under 35 U.S.C.
19 § 285 against Buller; and
20 K. Such other and further relief as this Court may deem just and proper.
_____________________________________________________________________________________________
15
1 Date: May 7, 2020 Respectfully submitted,
2 /s/ David C. Bohrer

David C. Bohrer (SBN 212397)
3 GREENFIELD LLP
55 S. Market Street, Suite 1500
4 San Jose, CA 95113
Tel: (408) 995-5600
5 [email protected]
6 Of Counsel
7 Patricia Smink Rogowski (to be admitted

pro hac vice, Del. Bar ID #2632)
8 ROGOWSKI LAW LLC
501 Silverside Road, Suite 11
9 Silverside Carr Executive Center
Wilmington, DE 19809
10 Tel: (302) 893-0048
[email protected]
11
Attorneys for Plaintiff, Skinify LLC
12
13
14
15
16
17
18
19
20
_____________________________________________________________________________________________
16
Case 5:20-cv-00988 Document 1-1 Filed 05/07/20 Page 1 of 2 Page ID #:17
EXHIBIT A
EXHIBIT B
EXHIBIT C
EXHIBIT March 7, 2017 product announcement

EXHIBIT D
EXHIBIT E

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Case 5:20-cv-00988 Document 1 Filed 05/07/20 Page 1 of 16 Page ID #:1

1 David C. Bohrer (SBN 212397)

5 Attorneys for Plaintiff SKINIFY, LLC

1 Plaintiff, Skinify, LLC (“Skinify”) files this Complaint for Declaratory

2 Judgment (“Complaint”) against Defendant Jonathan Blake Buller (“Buller”).

5 (“the ´891 Design patent”) (collectively the “patents-in-suit”) to be not infringed

10 1. Plaintiff Skinify is a Delaware limited liability company with its

11 principal place of business located at 35770 Airport Road, Rehoboth Beach,

13 2. Defendant Buller is an individual who resides in Temecula,

15 Industria, Temecula, California 92590.

16 JURISDICTION AND VENUE

2 and common law under 28 U.S.C. § 1367.

3 4. The Court has personal jurisdiction over Buller because Buller is a

4 resident of Riverside County, California.

5 5. Venue is proper in this judicial district under 28 U.S.C. § 1391

10 6. Skinify, doing business as DecalGirl®, designs and sells protective

14 exterior surfaces of individual electronic devices. When applied, the protective

15 covers inhibit scratching or soiling of the exterior surfaces of the electronic

19 7. Among the protective covers sold by Skinify are skins specially

1 America Inc. One example of a Nintendo Switch game console, including a

2 docking station and controller, is shown below:

3 and docking station.

5 controller and docking station on March 6, 2017. Exhibit B to this Complaint is a

9 12. At least as early as March 7, 2017 Skinify advertised on its

12 Complaint is a screen print of the March 7, 2017 advertisement.

13 13. At least as early as March 8, 2017, and continuing to the present,

14 Skinify has displayed on www.youtube.com a video demonstrating how easily the

15 DecalGirl® protective covers can be applied to and removed from a Nintendo

16 Switch® game controller and docking station. See

7 patent is attached as Exhibit D.

10 on January 8, 2019, from application serial number 29/612,861, filed August 4,

12 A copy of the ´891 Design patent is attached as Exhibit E.

13 17. On December 2, 2019, during the important Christmas holiday

14 shopping season, Buller filed complaints with Amazon.com to cause Amazon.com

18 Design patent. In response to Buller’s complaints, Amazon.com disabled over 250

20 Nintendo Switch® game controller and docking station.

1 18. On December 4, 2019, counsel for Skinify requested that Buller

12 19. Buller retracted the December 2, 2019 complaints against Skinify’s

13 ASIN with Amazon.com on or about December 16, 2019. Notwithstanding the

17 listings in December 2019.

17 Design patent is invalid under 35 U.S.C. §102.

2 in his Amazon.com complaints notwithstanding that he knows the ´891 Design

3 patent is invalid under 35 U.S.C. §102.

7 24. Buller asserted infringement of the patents-in-suit knowing that the

8 patents-in-suit are not valid.

10 Declaratory Judgment of Invalidity of the ´211 Design Patent

11 25. Skinify incorporates the foregoing paragraphs by reference as though

12 set forth herein.

14 with the requirements of patentability as specified in 35 U.S.C. §§1 et seq.,

16 other judicially-created bases for invalidation.

18 depicted in the Figures of ´211 Design patent is functional.

19 28. As a result of the acts described in the foregoing paragraphs, there

20 exists a substantial controversy of sufficient immediacy and reality between Buller

2 ´211 Design patent is invalid.

4 Declaratory Judgment of Noninfringement of the ´211 Design Patent

5 29. Skinify incorporates the foregoing paragraphs by reference as though

6 fully set forth herein.

8 either directly or indirectly, by Skinify or the purchasers of Skinify’s products

9 through their use of Skinify’s products.