Free Answer to Complaint - District Court of California - California

Case 3:08-cv-01493-JM-BLM

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1 AMY WINTERSHEIMER FINDLEY (BAR NO. 163074) MICHAEL R. ADELE (BAR NO. 138339) 2 CHARLENE J. WILSON (BAR NO. 222497) ALLEN MATKINS LECK GAMBLE 3 MALLORY & NATSIS LLP 501 West Broadway, 15th Floor 4 San Diego, California 92101-3541 Phonet (619) 233-1155 5 Fax: (619) 233-1158 E-Mail: [email protected] 6 [email protected] [email protected] 7 Attorneys for Defendant 8 BIoRx, LLC 9 10 11 12 N-UTRiSHARE, INC., a California corporation,Case No. 3:08-cv-01493-JM-BLM 13 14
V.

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA

Plaintiff,

Complaint filed June 4, 2008 ANSWER OF DEFENDANT BIoRX, LLC TO PLAINTIFF'S COMPLAINT

15 BIoRX, LLC, an Ohio Limited Liability Company, 16 Defendant. 17 18 Defendant BioRx, LLC ("Defendant" or "BioRx"), answers Plaintiffs Complaint as

19 follows: 20 21 22 1.
' I,

TIlE PARTIES Defendant admits that Plaintiff is in the business of providing total parenteral

23 nutrition ("TPN") products and services, but is without knowledge or information sufficient to 24 form a belief as to the truth of each and every remaining allegation in paragraph 1 of Plaintiffs 25 Complaint and therefore denies such allegations. 26 2. Defendant admits that BioRx is a limited liability company organiz.ed and existing

27 under the laws of the State of Ohio, and has its principal place of business in Cincinnati, Ohio. 28 Defendant further admits that BioRx, doing business as NutriThrive, is engaged in the business of
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1 providing TPN products and services and that NutriThrive is not separately registered as a formal 2 business entity with the Ohio Secretary of State. Further answering, Defendant also provides 3 other products and services under the "NutriThrive" name, including enteral therapy and other 4 medical products and services that do not compete with Plaintiff's "Nutrishare" products and 5 services. 6 7 8 3. II. JURISDICTION Defendant admits that the federal district courts have jurisdiction over claims

9 arising under the Lanham Act, 15 U.S.C. § 1051 etseq, pursuant to 28 U.S.C. § 1331, 28 U.S.C. 10 § 1338(a) and 15 U.S.C. § 1121, but denies that this Court has personal jurisdiction over 11 Defendant. 12 4. Defendant admits that the federal district courts have jurisdiction over unfair

13 competition claims pursuant to 28 U.S.C. § 1338(b), but denies that this Court has personal 14 jurisdiction over Defendant. 15 5. Defendant admits that the federal district courts may exercise supplemental

16 jurisdiction over state law claims pursuant to 28 U.S.C. § 1367(a), but denies that this Court has 17 personal jurisdiction over Defendant. 18 19 20 6. III. VENUE Defendant denies the allegations of paragraph 6 of Plaintiffs Complaint. Further

21 answering, the Court in this matter has determined that venue was not proper in the Eastern 22 District of California. While Defendant denies that jurisdiction is proper in California, it admits 23 that the Southern District is. the only appropriate venue given the Court's finding that jurisdiction is 24 proper. 25 ///// 26 ///// 27 ///// 28 /////
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1 2 3 7. FACTUAL BACKGROUND Defendant is without knowledge or information sufficient to form a belief as to the

4 truth of the allegations in paragraph 7 of Plaintiffs Complaint and therefore denies such 5 allegations. 6

8. 9.

Defendant admits the fact~ alleged in paragraph 8 of Plaintiffs Complaint. Defendantis without knowledge or information sufficient to form a belief as to the

7

8 truth of the allegations in paragraph 9 of Plaintiff's Complaint and therefore denies such 9 -allegations. 10 10. Defendant is without knowledge or information sufficient to form a belief as to the

11 truth of the allegations in paragraph 10 of Plaintiffs Complaint and therefore denies such 12 allegations. 13 11. Defendant is without knowledge or information sufficient to form a belief as to the

14 truth of the allegations in paragraph 11 of Plaintiffs Complaint and therefore denies such 15 allegations. 16 12. Defendant is without knowledge or information sufficient to form a belief as to the

17 truth of the allegations in paragraph 12 of Plaintiffs Complaint and therefore denies such 18 allegations. 19 13. Defendant denies the allegations set forth in paragraph 13 of Plaintiffs Complaint.

20 Further answering, Defendant introduced its NutriThrive products and services to the market in or 21 about June, 2007, and it has been marketing those products and services since that time. 22 14. Defendant admits that NutriThrive is not a separate business entity, but rather is a

23 division and trade name of Defendant BioRx, a limited liability company organized under the law 24 of the State of Ohio. 25 15. Defendant admits the allegations set forth in paragraph 15 of Plaintiffs Complaint.

26 Further answering, Defendant also develops, advertises, markets and distributes other products 27 and services under the "NutriThrive" name, including enteral therapy and other medical products 28 and services that do not compete with Plaintiff's "Nutrishare" products and services.
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16. 17. 18.

Defendant denies the allegations set forth in paragraph 16 of Plaintiffs Complaint. Defendant denies the allegations set forth in paragraph 17 of Plaintiffs Complaint. Defendant denies the allegations set forth in paragraph 18 of Plaintiffs Complaint.

Further answering, Plaintiff acquiesced in Defendant's use of the "NutriThrive" name with full

5 knowledge of such use from at least June, 2007 to June, 2008. 6 7 8 9 10 11 19. Defendant denies the allegations set forth in paragraph 19 of Plaintiffs Complaint.
Wo

CLAIMS FOR RELIEF FIRST CLAIM FOR RELIEF (Trademark Infringement- Violation of Lanham Act § 32(1), 15 U.S.C. § 1114(1)) 20. Defendant incorporates by reference its responses to paragraphs 1 through 1.9 set

12 forth above. 13 21. Defendant is without knowledge or ir~formation sufficient to form a belief as to the

14 truth of the allegations in paragraph 21 of Plaintiffs Complaint and therefore denies such i5 16 allegations. 22. Defendant is without knowledge or information suf~cient to form a belief as to the

17 truth of the allegations in paragraph 22 of Plaintiffs Complaint and therefore denies such 18 allegations. 19 23. Defendant admits that it advertises, markets, sells and offers to sell in interstate

20 commerce products and services under the "NutriThrive" name, including, but not limited to, TPN 21 products and services, which are similar to TPN products and services offered byPlaintiff. 22 Defendant denies each and every remaining allegation in paragraph 23 of Plaintiffs Complaint. 23 24 25 26 27 28
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24. 25. 26. 27. 28. 29.

Defendant denies the allegations set forth in paragraph 24 of Plaintiffs. Complaint. Defendant denies the allegations set forth in paragraph 25 of Plaintiffs Complaint. Defendant denies the allegations set forth in paragraph 26 of Plaintiffs Complaint. Defendant denies the allegations set forth in paragraph 27 of Plaintiffs Complaint~ Defendant denies the allegations set forth in paragraph 28 of Plaintiffs Complaint. Defendant denies the allegations set forth in paragraph 29 of PlaintiffS Complaint.
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30.

Defendant denies the allegations set forth in paragraph 30 of Plaintiff's Complaint. SECOND CLAIM FOR RELIEF (Common Law Trademark Infringement )

31.

Defendant incorporates by reference its responses to paragraphs 1 through 30 set

5 forth above. 6 32. Defendant admits that Plaintiff does business under the name "Nutrishare."

7 Defendant is without knowledge or information sufficient to form a belief as to the truth of the 8 remaining allegations in paragraph 32 of Plaintiffs Complaint and therefore denies such 9 allegations. 10 33. Defendant is without knowledge or information sufficient to form a belief as to the

11 truth of the allegations in paragraph 33 of Plaintiffs Complaint and therefore denies such 12 allegations. 13 34. Defendant is without knowledge or information sufficient to form a belief as to the

14 truth of the allegations in. paragraph 34 of Plaintif-Ps Complaint and therefore denies such 15 allegations. 16 35. Defendant admits that it advertises, markets, sells and offers to sell in interstate

17 commerce products and services under the "NutriThrive" name, including, but not limited to, TPN 18 products and services, which are similar to TPN products and services offered by Plaintiff. 19 Defendant denies each and every remaining allegation in paragraph 35 of Plaintiffs Complaint. 20 21 22 23 24 25 26 IIIII 27 IIIII 28 IIIII
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36. 37. 38. 39. 40. 41.

Defendant denies the allegations set forth in paragraph 36 of PlaintiNs Complaint. Defendant denies the allegations set forth in paragraph 37 of Plaintif2s Complaint. Defendant denies the allegations set forth in paragraph 38 of Plaintiffs Complaint. Defendant denies the allegations set forth in paragraph 39 of Plaintiff's Complaint. Defendant denies the allegations set forth in paragraph 40 0f Plaintif-Ps Complaint. Defendant denies the allegations set forth in paragraph 41 of PlaintiNs Complaint.

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THIRD CLAIM FOR RELIEF (Unfair Competition- Violation of Lanham Act § 43(a), 15 U.S.C. § 1125(a)) 42. Defendant incorporates by reference its responses to paragraphs 1 through 41 set

4 forth above. 5 43. Defendant is without knowledge or information sufficient to form a belief as to the

6 truth of the allegations in paragraph 43 of Plaintiffs Complaint and therefore denies such 7 allegations. 8 44. Defendant is without knowledge or information sufficient to form a belief as to the

9 truth of the allegations in paragraph 44 of Plaintiffs Complaint and therefore denies such 1.0 allegations. 11 12 13 45. 46. 47. Defendant denies the allegations set forth in paragraph 45 of Plaintiffs Complaint. Defendant- denies the allegations set forth in paragraph 46 of Plaintiffs Complaint. Defendant admits that it advertises, markets, sells and offers to sell in interstate

14 commerce products and services under the "NutriThrive" name, including, but not limited to, TPN 15 products and services, which are similar to TPN products and services offered by Plaintiff. 16 Defendant denies each and every remaining allegation in paragraph 47 of Plaintiffs Complaint. 17 18 19 20 21 22 23 48. 49. 50. 51. Defendant denies the allegations set forth in paragraph 48 of Plaintiffs Complaint. Defendant denies the allegations set forth in paragraph 49 of Plaintiffs Complaint. Defendant denies the allegations set forth in paragraph 50 of Plaintiffs Complaint. Defendant denies the allegations set forth in paragraph 51 of Plaintiffs Complaint. FOURTH CLAIM FOR RELIEF (Unfair Competition - California Business and Professions Code § 17200 et. seq.)
52.

Defendant incorporates by reference its responses to paragraphs 1 through 51 set

24 forth above. 25
53.

Defendant admits that it advertises, markets, sells and offers to sell in interstate

26 commerce products and services under the "NutriThrive" name, including, but not limited to, TPN 27 products and services, which are similar to TPN products and services offered by Plaintiff. 28 Defendant denies each and every remaining allegation in paragraph 53 of Plaintiffs Complaint.
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54. 55. 56. 57. 58.

Defendant denies the allegations set forth in paragraph 54 of Plaintiffs Complaint. Defendant denies the allegations set forth in paragraph 55 of Plaintiffs Complaint. Defendant denies the allegations set forth in paragraph 56 of Plaintiffs Complaint. Defendant denies the allegations set forth in paragraph 57 of Plaintiffs Complaint. Defendant denies the allegations set forth in paragraph 58 of Plaintiffs .Complaint. VI. PRAYER FOR. RELIEF

Defendant admits that Plaintiff seeks the relief identified in its Prayer for Relief, but denies

9 any liability entitling Plaintiff to the relief requested. 10 11 12 13 14 15 VII. JURY DEMAND No response is required to the request for jury trial. VIII. AFFIRMATIVE DEFENSES As a separate and further answer to Plaintiffs Complaint, Defendant alleges upon

16 information and belief the following affirmative defenses: 17 18 19 FIRST AFFIRMATIVE DEFENSE (Failure to State a Claim) Plaintiffs Complaint, and each claim.therein, fails to state facts sufficient to constitute a

20 cause of action. 21 22 23 SECOND AFFIRMATIVE DEFENSE (Statute of Limitation) Plaintiffs causes of action are barred, in whole or in part, by the applicable statutes of

24 limitation. 25 ///// 26 ///// 27 / /// 28 /////
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THIRD AFFIRMATIVE DEFENSE (Failure to Mitigate) Defendant is informed and believes, and on that basis alleges, that Plaintiff has failed,

4 refused, or neglected to mitigate or avoid the damages complained of in the Complaint. By reason 5 of the foregoing, Plaintiff is barred in whole or in part from recovering monetary damages from 6 Defendant. 7 8 9 FOURTH AFFIRMATIVE DEFENSE (Comparative Negligence) As to each of Plaintiffs claims, Defendant alleges that if it is liable to Plaintiff for

10 damages, which it denies, those damages must be reduced by the amount attributable to the 11 negligence or fault of Plaintiff or any other persons. 12 13 14 FIFTH AFFIRMATIVE DEFENSE Unclean Hands, Estoppel and/or Waiver) Plaintiffs causes of action are barred by the doctrines of unclean hands, estoppel and/or

15 waiver. 16 17 18 SIXTH AFFIRMATIVE DEFENSE (Laches) Plaintiffs claims fail because Plaintiff delayed challenging the alleged infringement in an

19 unreasonable manner causing prejudice to Defendant under the equitable doctrine of laches. 20 21 22 SEVENTH AFFIRMATIVE DEFENSE (Acquiescence, Estoppel and Laches Relating to Trademark Applications) Defendant is informed and believes, and on that basis alleges, that Plaintiffs claims fail by

23 reason of Plaintiffs acquiescence, estoppel and laches relating to Defendant's trademark 24 applications. The Defendant's trademark applications were filed on July 13, 2007 and referred to 25 the Examiner in charge of registration of marks at the United States Patent and Trademark Office 26 pursuant to Section 12(a) of the Trademark Act of 1946. Pursuant to the provisions of Section 27 12(a), the trademarks for which applications were made were duly published on January 1, 2008 28 (for services in International Class 044) and January 15, 2008 (for goods in International Class
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1 005) in the Official Gazette. Plaintiff made no attempt to object or oppose said trademark 2 applications, although it had the opportunity to do so under the provisions of Section 13 of the 3 Trademark Act of 1946. Thereat~er, on August 12, 2008, Defendant's trademark for services in 4 International Class 44 was registered on was published upon the Principal Register. A Notice of 5 Allowance for Defendant's trademark for goods in International Class 005 was issued on April 8, 6 2008. Defendant relied upon such acquiescence and delay and has instituted use of its trademarks 7 and invested large sums in reliance thereon. Plaintiff is thereby estopped to allege that any acts of 8 Defendant constitute an infringement of Plaintiffs alleged trademark. 9 10 1I EIGHTH AFFIRMATIVE DEFENSE 0mplied License) Defendant is informed and believes, and thereon alleges, that Plaintiffs claims fail because

12 the conduct of the parties during the period in dispute was in conformance with an implied license 13 with respect to thedisputed trademark. 14 15 16 NINTH AFFIRMATIVE DEFENSE (Abandonment) Defendant is informed and believes, and thereon alleges, that Plaintiffs claims fail because

17 the implied license above was a naked license due to Plaintiff's conduct and lack of control over 18 the disputed trademark resulting in abandonment of the disputed trademark. 19 20 21 TENTH AFFIRMATIVE DEFENSE (No Intentional Infringement) Defendant is informed and believes, and thereon alleges, that Plaintiffs claims fail because

22 Defendant has not intentionally infringed any valid trademark owned by Plaintiff. 23 24 25 ELEVENTH AFFIRMATIVE DEFENSE (Trademark Misuse/Anti-Trust Violation) Defendant is informed and believes, and thereon alleges, that Plaintiffs claims fail because

26 Plaintiff is misusing its mark to maintain a monopoly and otherwise unfairly compete against 27 Defendant. Despite Plaintiffs knowledge of Defendant's use of the NutriThrive trademark, 28 Plaintiff delayed objecting to Defendant's use of the trademark and delayed filing a lawsuit until
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1 after NutriThrive had invested considerable sums into advertising and promoting the trademark, 2 such that Defendant's silence and delay constitutes unfair competition and misuse of a trademark 3 to maintain a monopoly. 4 5 6 TWELFTH AFFIRMATIVE DEFENSE (To All Causes of Action) Defendant presently has insufficient knowledge and/or information with which to form a

7 belief as to whether or not it may have additional as yet unstated affirmative defenses. Defendant 8 reserves the right to asser~ additional affirmative defenses in the event that discovery and/or 9 investigation indicates that additional affirmative defenses would be appropriate. 10 11 12 13 14 15 16 Dated: August 28, 2008 17 18 19 2O 21 22 23 24 25 26 27 28
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WHEREFORE, this answering Defendant prays that: Plaintiffbe denied relief by way of its Complaint; 2. 3. 4. Plaintiffs Complaint be dismissed with prejudice; Defendant be dismissed with its costs of suit and attorneys' fees; and For such other and further relief as the court deems proper.

ALLEN MATKINS LECK GAMBLE MALLORY & NATSIS LLP By: /s/Amy Wintersheimer Findley AMY WINTERSHEIMER FINDLEY Attorneys for Defendant BIORX, LLC

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CERTIFICATE OF SERVICE BY ECF AND/OR MAIL

I am employed in the County of San Diego, State of California. I am over the age of 18 and not a party to the within action. My business address is 501 West Broadway, 15th Floor, San 3 Diego, California 92101. On August 28, 2008, I electronically filed: ANSWER OF DEFENDANT BIORX, LLC TO PLAINTIFF'S COMPLAINT

4 5 6

Said document(s) is/are available for viewing and downloading from the Court's ECF System and 7 said document(s) was/were served upon all interested parties listed below in the manner indicated. 8 9 10 11 12 13 Michael John Thomas, Esq. Aparna Rajagopal-Durbin, Esq. DOWNEY BRAND LLP 555 Capitol Mall, 10th Floor Sacramento, CA 95814-4686
Via CM/ECF System & Mail

Attorneys for Plaintiff NUTRISHARE, INC. Telephone: (916) 444-1000 Facsimile: (916) 444-2100

[~] (MAIL) by placing a true copy thereof in sealed envelope(s) addressed as stated above and 14 causing such envelope(s) to be deposited inthe U.S. Mail at San Diego, California. I am readily familiar with this firm'spractice of collection and processing, correspondence for mailing. Under 15 that practice it would be deposited with the U.S. Postal Service on that same day in the ordinary course of business. I am aware that on motion of party served, service is presumed invalid if postal cancellation date or postage meter date is more than 1 day after date of deposit for mailing !6 in affidavit. I declare under penalty of perjury under the laws of the State of California that I am 17 employed by a member of the bar of this Court and that the foregoing is true and correct.
Executed on August 28, 2008, at San Diego,~ ~Q~

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(Signature)

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