Rosado v. NY20 - Complaint

8/10/2019 Rosado v. NY20 - Complaint

1/102

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF NEW YORK

SHANE ROSADO,

Plaintiff,

-v-

NY2O, LLC, NEW DUTCH WATER CORP.,ELIAS SLUBSKI and ESTHER SLUBSKI,

Defendants.

Civil Action No.:

COMPLAINT

INJUNCTIVE RELIEF DEMANDEDDEMAND FOR JURY TRIAL

Plaintiff, SHANE ROSADO, sues Defendants NY2O, LLC, NEW DUTCH WATER

CORP., ELIAS SLUBSKI and ESTHER SLUBSKI, and states the following in support thereof:

NATURE OF THE ACTION

This is an action for correction of inventorship of four design patents for a bottle1.

design issued to defendant Esther Slubski and assigned to defendant New Dutch Water Corp.

(New Dutch), US Patent Nos. D576,495, D596,037, D611,819 and D663623 (collectively the

Bottle Patents).

Shane Rosado brings this action because Rosado, not Esther Slubski, is the true2.

sole inventor of the Bottle Patents, the designs for which were misappropriated by Elias Slubski

and Esther Slubski for the benefit of New Dutch and NY2O, LLC without the permission or

authority of Shane Rosado.

Rosado seeks a determination from the Court that based upon the evidence of his3.

conception of the designs in the Bottle Patents Rosado is the inventor of the Bottle Patents.

Rosado also seeks restitution from defendants Elias Slubski, New Dutch and NY2O, LLC who

Case 9:14-cv-06636 Document 1 Filed 11/12/14 Page 1 of 21 PageID #: 1


2/102

2

have been unjustly enriched by their use of and patenting of Rosados bottle design, an

accounting and the placement of a constructive trust on the Bottle Patents, and damages for loss

of income from royalties, loss of reputational interests, and other damages in an amount to be

proven at trial.

JURISDICTION AND VENUE

This is an action arising under the Patent Act for Correction of Inventorship4.

pursuant to 35 U.S.C. 256.

This Court has exclusive subject matter jurisdiction of plaintiffs patent claims5.

pursuant to 28 U.S.C. 1331 and 1338(a).

This Court has subject matter jurisdiction over the non-federal claims alleged in6.

this action, pursuant to 28 U.S.C. 1367(a), because such claims are so related to the federal

claim alleged in this action that they form part of the same case or controversy.

In the alternative, this Court has subject matter jurisdiction over the non-federal7.

claims alleged in this action, pursuant to 28 U.S.C. 1332(a), because complete diversity of

citizenship exists between the parties and the amount in controversy exceeds $75,000, exclusive

of interest and costs.

Defendants are citizens of New York and subject to personal jurisdiction in New8.

York.

Venue is proper in this district, pursuant 28 U.S.C. 1391(b)(2), because the9.

wrongful acts of Defendants, as discussed infra, occurred, in substantial part, in this judicial

district.

In the alternative, venue is proper in this district, pursuant 28 U.S.C. 1391(b)(3),10.

because Defendants are subject to personal jurisdiction in this judicial district.



3/102

3

PARTIES

Shane Rosado is an individual who resides in the State of New Jersey.11.

NY2O, LLC is a New York limited liability company with its principal place of12.

business in Elmsford, New York.

New Dutch Water Corp. is a New York corporation with its principal place of13.

business in Old Bethpage, New York.

Elias Slubski is an individual who resides in Old Bethpage, New York.14.

Esther Slubski is an individual who resides in Old Bethpage, New York.15.

FACTS COMMON TO ALL COUNTS

Shane Rosado is an accomplished industrial and product designer. Rosado studied16.

industrial and product design first at the Art Institute of Ft. Lauderdale, and thereafter at the Pratt

Institute School of Design. Rosados industrial and product design experience includes a myriad

of automotive accessories including wheel covers, floor mats, steering wheel covers, seat covers,

automotive LED lights, automotive speakers, amplifiers, mini-bikes, mini-choppers, and

packaging design for all these products and others.

Elias Slubski (Elias) is an entrepreneur.Elias incorporated New Dutch on April17.

21, 2005. Elias is the Chief Executive Officer of New Dutch and the Manager of NY2O, LLC.

Esther Slubski (Esther) is an architect and also is Eliass mother.18.

Rosado and Elias attended junior high school and high school together in Mill19.

Basin, Brooklyn. Rosado and Elias met in sixth grade, became friends, and continued their

friendship throughout junior high school and high school. After high school, the two kept in

touch and saw each other often. Elias was a groomsman in Rosados wedding in March of 2003.



4/102

4

Elias was aware of Rosados skills and abilities in industrial and product design.20.

In the summer of 2006, Elias contacted Rosado and requested his assistance with a matter in

Rosados area of expertise. Elias explained to Rosado that he was preparing to launch a

company to sell bottled water and wanted a unique bottle design that would distinguish his

product from the other bottled waters in the marketplace. Elias told Rosado that he had hired

Pentgram Design, a well known and highly regarded design firm with offices in Manhattan, to

design a bottle. Elias had agreed to pay Pentagram just under $100,000 for their design work,

and had already paid $33,000 to prepare initial concepts.

Elias said he was disappointed in Pentagrams initial concept work on the bottle.21.

Elias asked Rosado to accompany him to a meeting with Petagram because he thought Rosado,

with his extensive design experience, could be of assistance. Rosado agreed and attended a

meeting with Elias at Petagrams offices. After the meeting, Elias told Rosado that he was still

unhappy with Pentagrams concepts.

Elias asked Rosado if Rosado would design a bottle for Elias instead of22.

Pentagram. Rosado agreed to help his friend. Thereafter, Elias fired Pentagram.

Rosado began work on his bottle design in September of 2006. Rosado worked23.

on a PC computer in SolidWorks, a three-dimensional computer aided design (CAD) software

program commonly used by industrial and product designers. SolidWorks is very technical

and requires extensive training and a high level of proficiency to use and produce designs that

can be employed in product manufacturing. Rosado is experienced in SolidWorks, having

used it to design many products.

Rosado worked on his bottle design throughout the fall of 2006. Elias visited24.

Rosados home in New Jersey on several occasions to view his progress. Elias told Rosado that



5/102

5

he planned to bottle water from the Catskill watershed where New York Citys water originates.

Elias told Rosado he planned to call his water NY2O. Elias asked Rosado if he could also

design a logo for Eliass NY2O product and Rosado again agreed to help his friend.

At a certain point in the design process, Rosado advised Elias that prototypes of25.

his bottle design could be made. Rosado contacted a prototyping company in New Jersey and

gave the prototyping company his SolidWorks file containing his bottle design for their use in

making the prototypes. When they were ready, Rosado picked up the sample bottles and showed

Elias. Elias was pleased with the samples and with Rosados design.

In or about February of 2007 Rosados bottle design was complete. Rosado is in26.

possession of his final SolidWorks file for his bottle design and it reflects that he made his last

modifications to the design on February 13, 2007. That same month, Rosado gave his bottle

design in SolidWorks format and a logo design he created to Elias. Elias paid Rosado by

check approximately $6,000 for his work as an independent contractor. Rosado has not heard

from Elias since.

At no time prior to, during or after Rosado created his bottle design did Elias ever27.

inform Rosado that Elias intended to file patent applications and obtain patents on Rosados

bottle design.

Elias, acting on behalf of New Dutch, concealed from Rosado that Elias intended28.

to file patent applications and obtain patents on Rosados bottle design.

Elias and New Dutch owed Rosado a duty to disclose to Rosado that they29.

intended to file patent applications and obtain patents on Rosados bottle designs pursuant to the

Patent Act which requires the truthful disclosure of inventorship in connection with every

application for a patent.



6/102

6

Elias owed Rosado a duty to disclose to Rosado that he intended to file patent30.

applications and obtain patents on Rosados bottle designs pursuant to their close personal

relationship of over twenty years during which time the two friends frequently reposed trust and

confidence in each other.

At no time prior to, during or after Rosado created his bottle design did he ever31.

assign his rights in his bottle design to Elias or New Dutch.

THE BOTTLE PATENTS

On May 4, 2007, less than three months after Eliass receipt of Rosados bottle32.

design, Esther filed U.S. design patent application number 29/279,662 entitled Bottle (the

662 Application). The 662 Application claims the ornamental design for a bottle and

contains 6 drawings.

On September 9, 2008, U.S. Patent No. D576,495, which is based upon the 66233.

Application, was issued to Esther and assigned to New Dutch (the 495 Patent). A copy of the

495 Patent is attached hereto as Exhibit 1.

On September 8, 2008, Esther filed U.S. design application number 29/324,24434.

entitled Bottle (the 244 Application). The 244 Application claims the ornamental design

for a bottle and contains 6 drawings. The 244 Application was filed as a continuation-in-part of

the 662 Application and claims priority based upon it.

On July 14, 2009, U.S. Patent No. D596,037, which is based upon the 24435.



On September 9, 2008, Esther filed U.S. design application number 29/324,22736.

entitled Removable Elastic Band on a Bottle (the 227 Application). The 227 Application



7/102

7

claims the ornamental design for a removable elastic band on a bottle and contains 6 drawings.

The 227 Application was filed as a continuation-in-part of the 662 Application and claims

priority based upon it.

On March 16, 2010, U.S. Patent No. D611,819, which is based upon the 22737.



On December 23, 2010, Esther filed U.S. design application number 29/381,81638.

entitled Bottle (the 816 Application). The 816 Application claims the ornamental design

for a bottle and contains 6 drawings.

On July 17, 2012, U.S. Patent No. D663,623, which is based upon the 81639.



ROSADOS INVENTORSHIP

Rosado did not discover the existence of the Bottle Patents until recently.40.

Rosado is the sole inventor of the Bottle Patents.41.

The 495 Patent, the 037 Patent, and the 623 Patent are directed to designs for a42.

bottle.

Rosado conceived of his bottle design prior to the filing of the 662 Application,43.

the 244 Application, and the 816 Application.

The 819 Patent is directed to the design of a removable elastic band on a bottle.44.

Rosado conceived of his design for a removable elastic band on a bottle prior to45.

the filing of the 227 Application.



8/102

8

Rosado reduced his bottle design and his design for a removable elastic band on a46.

bottle to practice prior to the filing of the 662 Application, the 244 Application, the 227

Application, and the 816 Application, by creating his bottle design in SolidWorks and by

producing prototypes of his design.

Exhibits 5, 6, 7, and 8 attached hereto show side-by-side comparisons of Rosados47.

bottle design and each drawing sheet of the 495 Patent, the 037 Patent, the 819 Patent and the

623 Patent.

As demonstrated in Exhibits 5, 6, 7, and 8 attached hereto, Rosado is the true48.

inventor of the 495 Patent, the 037 Patent, the 819 Patent and the 623 Patent.

Esther is not an inventor of the Bottle Patents.49.

Esther was named as the inventor of the Bottle Patents through error without any50.

deceptive intent on the part of Rosado.

THE SUCCESS OF NY2O AT ROSADOS EXPENSE

In 2009, New Dutch launched the NY2O bottled water product using the Rosado51.

bottle design.

On July 6, 2012, Elias formed NY2O, LLC to market and sell NY2O bottled52.

water.

The NY2O bottled water product has enjoyed great success in the marketplace.53.

The success of NY2O has been due, in significant part, to Rosados innovative bottle design. On

its website atwww.ny2o.comand in press releases, the company has touted Rosados bottle

design as a key product attribute. The home page of the NY2O website devotes as much space to

laudatory statements praising Rosados bottle design as it does to descriptions of the water inside

http://www.ny2o.com/http://www.ny2o.com/http://www.ny2o.com/http://www.ny2o.com/


9/102

9

the bottle. Superimposed over images of Rosados bottle design, the NY2O website homepage

proclaims in all capitals and large type:

A VESSEL AS ICONIC AS THE CITY

FROM THE MOMENT YOU HOLD NY2O IN YOUR HAND,YOU CAN FEEL THE SPIRIT OF INNOVATION. THE SHAPECALLS TO MIND THE OUTLINE OF NEW YORKS FAMOUS

SKYLINE. THE CONTEMPORARY DESIGNCONSIDERATIONS REFLECT THE ARTISTRY AND VISION

OF ONE OF THE CITYS ORIGINAL ARCHITECTS, WHOALSO HAPPENS TO BE ONE OF OUR FOUNDERS.1

On the NY2O website, and on Facebook, Twitter and elsewhere, Elias and his54.

companies have repeatedly publicized the numerous international design awards that the Rosado

bottle design has received since the NY2O product was launched. To date, at least two

international awards for excellence in design have been bestowed upon the Rosado bottle design

for NY2O:

The 2013 Global Bottled Water Award for Best Package Design or Label

awarded by Zenith International, a leading international food and drinks

consultancy. According to NY2O, Zenith chose the Rosado bottle design because

NY2Os packaging achieves an effective stand-out through excellent and

original design.

The 2014 Silver Pentaward for Beverages, recognizing excellence in creative

packaging, a juried prize awarding creativity, innovation, impact, branding,

communication and quality of execution in packaging design. The Pentaward

jury is composed of thirteen personalities from the world of packaging design,

1This appears to be a reference to Esther Slubski claiming, falsely, that she conceived of the Rosado bottle design.



10/102


11/102

11

Rosado is the sole inventor of the claims in the 495 Patent.60.

Through omission and error, Rosado was not listed on the 495 Patent as the61.

inventor.

The omission of Rosado as the inventor on the 495 Patent was without any62.


Rosado has an expectation of ownership of the 495 Patent based upon his sole63.

inventorship and because he retained ownership of, and did not assign away, his bottle design.

Rosado has a concrete financial interest in the 495 Patent based upon his rightful64.

ownership of the 495 Patent, his financial interest in royalties from the 495 Patent as well as

damages in the form of an infringers profits earned from use of the 495 Patent, and from his

reputational interests that accrue from being named the sole inventor of the 495 Patent.

Based on the foregoing, Rosado prays that this Court issue an Order to the65.

Director of the USPTO and Defendants requiring that Rosado be listed as the sole inventor of the

495 Patent.

COUNT IICORRECTION OF INVENTORSHIP OF THE 037 PATENT

Rosado repeats and re-alleges the allegations of paragraphs 1 through57 as66.

though fully set forth herein.

This is a count against Esther Slubski and New Dutch for correction of67.

inventorship pursuant to 35 U.S.C. 256.



inventor.



12/102

12











037 Patent.

COUNT IIICORRECTION OF INVENTORSHIP OF THE 819 PATENT







inventor.





13/102

13


inventorship and because he retained ownership of, and did not assign away, his design for a

removable elastic band on a bottle.







819 Patent.

COUNT IVCORRECTION OF INVENTORSHIP OF THE 623 PATENT







inventor.







14/102

14







623 Patent.

COUNT VUNJUST ENRICHMENT



This is a count for common law unjust enrichment against New Dutch, NY2O,91.

LLC and Elias Slubski.

Rosado expended substantial time, labor, and skill to develop his bottle design.92.

Elias never disclosed to Rosado his intention to apply for patents on Rosados93.

bottle design.

Elias paid Rosado a de minimussum of money for his bottle design.94.

Elias, New Dutch and NY2O, LLC were enriched by their use of and patenting of95.

Rosados bottle design.

Elias, New Dutch and NY2O, LLC obtained immediate, direct, and substantial96.

commercial advantages from Rosados bottle design and the patents on Rosados bottle design.

These advantages include, but are not limited to, (i) not having to invest extensive significant

money, time, labor, or skill to develop Rosados bottle design, and (ii) preventing New Dutchs

and NY2O, LLCs direct competitors from copying and exploiting Rosados bottle design.



15/102

15

Defendantsaforementioned unjust enrichment was at the expense of Rosado.97.

Specifically, as result of Elias,New Dutchs and NY2O, LLCs use of and98.

patenting of Rosados bottle design, Rosado has been damaged, and continues to suffer damages

including, but not limited to, loss of income from royalties that he could have earned from the

licensing of his bottle design, as well as the reputational interests that would have accrued from

being named the sole inventor of the Bottle Patents.

Accordingly, by misappropriating Rosados bottle design, Defendants have been99.

unjustly enriched.

Based on the forgoing, equity and good conscience dictate that Defendants make100.

restitution to Rosado in an amount to be determined at trial.

COUNT VIFRAUDULENT CONCEALMENT



This is a count for fraudulent concealment under New York common law against102.

New Dutch and Elias Slubski.

Elias and Rosado had a close personal relationship that lasted over twenty years103.

during which time the two friends frequently reposed trust and confidence in each other.

Elias asked Rosado to utilize his skills and experience to create a bottle design for104.

Elias.

Elias, acting on behalf of himself and New Dutch, concealed from Rosado that105.

Elias intended to file patent applications and obtain patents on Rosado s bottle design.



16/102


17/102

17

Dutch was filing these applications to Rosado, and without disclosing Rosados inventorship to

the USPTO.

The Bottle Patents were issued to Esther and assigned to New Dutch as a result of115.

the filing of the applications for Rosados bottle design with the USPTO.

Elias and New Dutch obtained immediate, direct, and substantial commercial116.

advantages from Rosados bottle design and the patents on Rosados bottle design, including, but

are not limited to, (i) not having to invest extensive significant money, time, labor, or skill to

develop Rosados bottle design, and (ii) preventing New Dutchs and NY2O, LLCs direct

competitors from copying and exploiting Rosados bottle design.

Rosado was damaged, and continues to suffer damages including, but not limited117.

to, loss of income from royalties that he could have earned from the licensing of his bottle

design, as well as the reputational interests that would have accrued from being named the sole

inventor of the Bottle Patents.

Rosado was also damaged to his property because patents are a property right, and118.

by and through the acts set forth herein, Rosado was denied his right to his patents.

COUNT VIINEGLIGENT MISREPRESENTATION OR OMISSION



This is a count for negligent misrepresentation or omission under New York120.

common law against New Dutch and Elias Slubski.

Elias and Rosado had a close personal relationship that lasted over twenty years121.

during which time the two friends frequently reposed trust and confidence in each other.



18/102

18

Elias asked Rosado to utilize his skills and experience to create a bottle design for122.

Elias.

Elias, acting on behalf of himself and New Dutch, negligently concealed from123.

Rosado that Elias intended to file patent applications and obtain patents on Rosados bottle

design.

Elias, acting on behalf of himself and New Dutch, possessed superior knowledge,124.

not readily available to Rosado, that New Dutch intended to file patent applications and obtain

patents on Rosados bottle design.

Elias, acting on behalf of himself and New Dutch, knew or had reason to know125.

that Rosado had no knowledge that New Dutch intended to file patent applications and obtain

patents on Rosados bottle design, and knew or had reason to know that Rosado was acting

without such knowledge.

Elias had a duty to disclose to Rosado that he intended to file patent applications126.

and obtain patents on Rosados bottle designs.


and obtain patents on Rosados bottle designs pursuant to the Patent Act which requires the

truthful disclosure of inventorship in connection with every application for a patent.


and obtain patents on Rosados bottle designs pursuant to their close personal relationship.

The fact that Elias intended to file patent applications and obtain patents on129.

Rosados bottle designs was material to Rosado.

Rosado, in reliance upon Elias, created his bottle design, reduced it to practice,130.

and provided it to Elias for a de minimuspayment.



19/102

19

At no time prior to, during or after Rosado created his bottle design did Elias ever131.

inform Rosado that Elias intended to file patent applications and obtain patents on Rosado s

bottle design.

Elias caused New Dutch to file the 662 Application, the 244 Application, the132.

227 Application and the 816 Application with the USPTO without disclosing the fact that New

Dutch was filing these applications to Rosado, and without disclosing Rosados inventorship to

the USPTO.

The Bottle Patents were issued to Esther and assigned to New Dutch as a result of133.

the filing of the applications for Rosados bottle design with the USPTO.

Elias and New Dutch obtained immediate, direct, and substantial commercial134.

advantages from Rosados bottle design and the patents on Rosados bottle design, including, but

are not limited to, (i) not having to invest extensive significant money, time, labor, or skill to

develop Rosados bottle design, and (ii) preventing New Dutchs and NY2O, LLCs direct

competitors from copying and exploiting Rosados bottle design.

Rosado was damaged, and continues to suffer damages including, but not limited135.

to, loss of income from royalties that he could have earned from the licensing of his bottle

design, as well as the reputational interests that would have accrued from being named the sole

inventor of the Bottle Patents.

Rosado was also damaged to his property because patents are a property right, and136.

by and through the acts set forth herein, Rosado was denied his right to his patents.

PRAYER FOR RELIEF

WHEREFORE, Rosado demands judgment and relief against NY2O, LLC, New Dutch

Water Corp., Elias Slubski and Esther Slubski as follows:



20/102

20

A. An Order to the Director of the USPTO and Defendants requiring that Rosado

be listed as the sole inventor of the Bottle Patents;

B. Constructive trusts placed upon the Bottle Patents awarding Rosado all of the

benefits realized by New Dutch Water Corp., NY2O, LLC and Elias Slubski

from the Bottle Patents, and requiring that any and all references to the creator

of the Bottle Design made by defendants be corrected to reflect that Rosado is

the creator of the bottle design.

C. An order requiring New Dutch Water Corp. to assign all right, title, and

interest in and to the Bottle Patents to Rosado.

D. An accounting of all benefits realized by New Dutch Water Corp., NY2O,

LLC and Elias Slubski from the Bottle Patents;

E. Restitution be made to Rosado by New Dutch Water Corp., NY2O, LLC and

Elias Slubski for all benefits received by them from the Rosado bottle design;

F. Damages be awarded to Rosado for, inter alia, loss of income from royalties,

loss of reputational interests, and other damages to be proven at trial, along

with pre and post-judgment interest; and

G. Such other and further relief as is just and proper.



21/102

21

DEMAND FOR JURY TRIAL

Plaintiff demands a trial by jury on all claims so triable.

Dated: November 12, 2014

Respectfully submitted,

By:Joel B. Rothman (JR 0352)[email protected]

Schneider Rothman Intellectual Property LawGroup PLLC4651 North Federal HighwayBoca Raton, FL 33431

Tel: 561-404-4350Fax: 561-404-4353Attorneys for Plaintiff



22/102

JS44 (Rev. 1/2013)

CIVIL

C O V E R S H EE T

The JS44 civil coversheetand the information containedhereinneitherreplacenor supplementthefilingand serviceof pleadingsorotherpt^ere as requiredby law, exceptas

provided twlocal

rules

ofcourt. This

form, approved by the

Judicial Conference oflhe

United Slates

inSeptember 1974, is

required

for theuseofthe

(Jlerk

ofCourt forlhe

purpose ofinitiating thecivildocket sheet.

(SEE INSTRUCTIONS

ON

NliXT

PAGE OFTHIS

form.)

I. (a ) PLAINTIFFS

SHANE ROSADO

fb>

Countv ofResidence of First Listed

Plaintiff

Monmonth CountV. NJ

DEFENDANTS

NY20. LLC,

NEW DUTCH

WATER CORP., ELIAS

SLUBSKI an d

ESTHER SLUBSKI,

Countv ofResidence of First Lis ted Defendant Nassau

(EXCEPTIN

US PUINTIFF

CASES)

(c)

Attorneys

(Firm

Name,

Address,

and

TelephoneNumber)

Schneider Rothman Intellectual Property Law Group, 4651 North Federal

Highway,Boca Raton, FL33431; 561-404-4350

(INU.S. PLAINTIFFCASES ONLY)

NOTE:

IN

LAND

CONDEMNATION CASES. USE

THE

LOCATION

OF

TH E TR AC T O F LA N D I N VO LVED .

Attorneys (IfKnown)

Hoffman &Baron, LLP, 6900 Jericho Turnpike, Syosset, NY11791;

516 822 355

II .

BASIS OF JURISDICTION (Place an X mOneBoxOnly)

0 I U.S. Goveramenl 3 Federal Question

Plaintiff

(U S

Covemmeni Not a Party)

2 U.S. Govermnent 4 Divcraity

Defendant (Indicate Citizenship

of

Parties inItemIII)

III.

CITIZENSHIP

OF

PRINCIPAL PARTIES

(P/o

aw

X

InOneBox

far

Plain

(For DiversityCases Only) and One Boxfor Defendant)

PTF DEF PTE DEF

CitizenofThis Slate O 1 O 1 Incotporaiedor PrincipalPlace O 4 O 4

o f

Business

In

Th i sS t a t e

Citizen

of

Another State O 2 0 2 Incorporated an'ment O t h e n

d 462 Naturalization Application

44 6

Amer.

w/Disabilitics -

O 540 Mandamus &

Odier

O 465 Other Immigration

Other O 550 Civil

Ri^its

Actions

44 8 Education 55 5 Prison Condition

0 56 0 Civil

Detainee-

Conditions o f

Confinement

V. ORIGIN

(Place

cm X inOne

Box

Only)

1 Original 2 Removed from

Proceeding State Court

3 Remanded from

Appellate Court

4

Reinstated or

O 5

Transferred from

6

Multidistrict

Reopened Another District Litigation

(specify)

VI. CAUSE

OF ACTION

Cite theU.S. Civil Statute underwhich you are filing (Donotcitejurisdiclionalsiatuies unlessdiversity):

35 u s e 256

Brief

description ofcause;

Claimof (nventorship

VII.

REQUESTED

IN

CHECK TF THIS

is ACLASS

ACTION

COMPLAINT:

UNDERRULE23. F.RCv.P.

VIII. RELATED

CASE(S)

IF ANY

(See inslruciion':):

JUDGE

DEM ANDS

DATE * \

SIGNATUR

ORNEY

OF RECORD

FO R OFFICE

USE

ONLY

RECEIPT#

AMOUNT

APPLMN

JUDGE

CHECK YES only if demanded in complaint:

JURY DEMAND: Yes No

DOCKET NUMBER

MAG. JUDGE

Case 9:14-cv-06636 Document 1-1 Filed 11/12/14 Page 1 of 2 PageID #: 22


23/102

CERTIFICATION OF ARBITRATION

ELIGIBILITY

Local Arbitration Rule

83.10 provides

that

with

certain exceptions, actions seeking money damages only

inan

amount not

in

excess

of

150,000,

exclusive of

interest

and costs, areeligible forcompulsory arbitration. Tlie amount ofdamages ispresumed tobebelow thethreshold amount unless a

certification to the contrary is filed.

Joel

Rothman

,

counscl

for ,

do

hereby

certify

that the

above

captioned

civil

action is

ineligible for compulsory arbitration for the following reason(s):

monetary damages sought

are

in

excess of150,000,

exclusive

of

interest

and

costs,

[x] the complaint seeks injunctive relief,

the matter is otherwise ineligible for the following reason

DISCLOSURE STATEMENT - FEDERAL RULES CIVIL

PROCEDURE

7.1

Identify

anyparent corporation andany publicly held corporation thatowns10 ormoreor its stocks:

Not applicable.

RELATED

CASE STATEMENT (Section VIII on th e Front of this Forml

Please listallcases thatarearguably related pursuant toDivision of Business Rule 50.3.1 inSection VTIl onthe

front

of this

form.

Rule 50.3.1 (a)

provides that

A

civil case

is

telaied

to

another civil

case

for

purposes

of

tills guideline

when,

because

of

the similarity

of

facts and legal issues

or

because

the casesarisefrom the sametransactions or events,a substantial savingof judicial

resources

is likelyto result fromassigning bothcasesto the

same

judge and magistrate judge.

Rule 50.3.1 (b) provides

that A

civil

case

shall not be deemed related

to

another civil case merely

because

the civi

case:

0 ^

involves

identical

legal

issues,

or (B) involves the same parties. Rule 50.3.1 (c) ftuther provides tliat Presumptively, and subject tothepower

ofa judge to

determine

otherwise

pursuant

to

paragraph

(d),

civil

cases shall

not

be

deemed

tobe related

unless

both

cases

are still pending before the

court .

NY-E DIVISION

OF BUSINESS

RULE

50.Udlf2>

1.) Isthe civil

action

being filed intheEastern District removed from aNew

York

State Court

located in

Nassau

or

Suffolk

County: nq

2.)

If

you answered no above:

a)Didthe

events

or

omissions giving

risetotheclaim or

claims,

or a

substantial

part

thereof,

occur in

Nassau

or

Suffolk

County

b)Didtheeventsor omissions givingriseto theclaim or

claims,

or a

substantial

part thereof, occurin theEastern

Disu-ici? Yes

Ifyour answer to

question

2(b)is

No, docs

the

defendant

(ora

majority

ofthedefendants, if

there

ismore

than one) reside

in

Nassau

or

Suffolk County, or,inan

interpleader

action, does the

claimant

(oramajority oftheclaimants, if there is

more than

one) reside in

Nassau

or Suffolk County?

(Note:

A

corporation

shall be

considered

a

resident

of theCounty inwhich ithasthe

most significant

contacts).

B A R

ADMISS ION

I amcurrently admitted in the

Eastern

DistrictofNewYorkandcurrently a

member

ingood

standing

of the barof thiscourt.

g

Yes

No

Areyoucurrently thesubjectof anydisciplinary action (s) inthisor anyotherstateor federal court?

|~|

Yes (Ifyes,

please explain) ^

No

I

certify the ap


24/102

AO 440 (Rev. 06/12) Summons in a Civil Action

UNITED STATES DISTRICT COURTfor the

__________ District of __________

)

)))))))))))

Plaintiff(s)

v. Civil Action No.

Defendant(s)

SUMMONS IN A CIVIL ACTION

To: (Defendants name and address)

A lawsuit has been filed against you.

Within 21 days after service of this summons on you (not counting the day you received it) or 60 days if you

are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.P. 12 (a)(2) or (3) you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 ofthe Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiffs attorney,whose name and address are:

If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.You also must file your answer or motion with the court.

CLERK OF COURT

Date:Signature of Clerk or Deputy Clerk

DOUGLAS C. PALMER


Eastern District of New York

SHANE ROSADO,

NY20, LLC, NEW DUTCH WATER CORP., ELIAS

SLUBSKI and ESTHER SLUBSKI,

NY20 LLC

6 WESTCHESTER PLAZA

ELMSFORD, NEW YORK 10523

Joel B. RothmanSchneider Rothman Intellectual Property Law Group4651 North Federal HighwayBoca Raton, Florida 33431


25/102

AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)

Civil Action No.

PROOF OF SERVICE

(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))

This summons for (name of individual and title, if any)

was received by me on(date) .

I personally served the summons on the individual at(place)

on (date) ; or

I left the summons at the individuals residence or usual place of abode with (name)

, a person of suitable age and discretion who resides there,

on (date) , and mailed a copy to the individuals last known address; or

I served the summons on (name of individual) , who is

designated by law to accept service of process on behalf of (name of organization)

on (date) ; or

I returned the summons unexecuted because ; or

Other (specify):

.

My fees are $ for travel and $ for services, for a total of $ .

I declare under penalty of perjury that this information is true.

Date:Servers signature

Printed name and title

Servers address

Additional information regarding attempted service, etc:


0.00

Print Save As... Reset


26/102



__________ District of __________

)

)))))))))))

Plaintiff(s)

v. Civil Action No.

Defendant(s)







CLERK OF COURT


DOUGLAS C. PALMER



SHANE ROSADO,



NEW DUTCH WATER CORP.

14 MAHAN ROAD

OLD BETHPAGE, NEW YORK 11804



27/102


Civil Action No.

PROOF OF SERVICE





on (date) ; or






on (date) ; or


Other (specify):

.





Servers address



0.00



28/102



__________ District of __________

)

)))))))))))

Plaintiff(s)

v. Civil Action No.

Defendant(s)







CLERK OF COURT


DOUGLAS C. PALMER



SHANE ROSADO,



ELIAS SLUBSKI

14 MANHAN ROAD




29/102


Civil Action No.

PROOF OF SERVICE





on (date) ; or






on (date) ; or


Other (specify):

.





Servers address



0.00



30/102



__________ District of __________

)

)))))))))))

Plaintiff(s)

v. Civil Action No.

Defendant(s)







CLERK OF COURT


DOUGLAS C. PALMER



SHANE ROSADO,



ESTHER SLUBSKI

14 MANHAN ROAD




31/102


Civil Action No.

PROOF OF SERVICE





on (date) ; or






on (date) ; or


Other (specify):

.





Servers address



0.00



32/102

F=====i

I I

{ ] T u

I I

i I

Claim,

6 Drawing

Sheets

FIG. 1 is a top, front, right side perspective view

of

a bottle

showing my new design;

FIG. 2 is a top plan view thereof;

FIG.

3

is a front elevation view thereof;

FIG. 4 is a left side elevation view thereof;

FIG. 5 is a rear elevation view thereof; and,

FIG. 6 is a bottom plan view thereof.

The dot-dash broken lines shown in the drawings represent

unclaimed environment and are for illustrative purposes only,

forming no part

of

the claimed design.

DESCRIPTION

The ornamental design for a bottle, as shown and described.

CLAIM

57)

* cited by examiner

Primary Examiner=Ynii Simmons

Assistant Examiner=Deiu: L Sipos

74)

Attorney Agent or Firm~Hoffmann&

Baron, LLP

5/1998 Monaghanet al. D9/520

12/1998 Bell et al. D9/686

12/1998 Bell et al. D9/693

12/2003 Irvine D7/300.l

412004 Hall et al. D9/550

412006 Corbett et al. D9/500

D394,607 s *

D402,192 S *

D402,193 S *

D483,982

S

*

D488,386 S *

D518,722 S

*

12/1929 Burvenick 220/568

8/1965 Hershberger t al D32/30

4/1976 Hunt D9/522

10/1981 Epperson D9/522

3/1987 Hartung D9/522

12/1991 Knudsenet al. D9/516

12/1994 Klitsner D9/500

1,740,223 A *

D201,791 S *

D239,697 S *

D261,361 S

*

D288,530 S

*

D322,027 s

*

D353,771 s *

U.S. PATENT DOCUMENTS

56)

51)

LOC

8) Cl. 09-01

52) U.S. Cl. D9/537; D9/549

58)

Field of Classification Search

D9/500,

D9/516, 529, 549,557~558, 575, 682, 686~694,

D9/522, 545, 530, 537, 540, 767; 215/379,

215/381~384; 220/660, 662, 669~673, 675;

D7/608, 300.1

See application file for complete search history.

References Cited

May 4, 200722) Filed:

54) BOTTLE

75)

Inventor:

Esther

Slubskl, Old Bethpage, NY US)

73) Assignee:

New Dutch Water

Corp., Old Bethpage,

NY(US)

**) Term: 14 Years

21) Appl. No.: 29/279,662

US D576,495

S

Sep. 9, 2008

10) Patent No.:

45) Date of Patent:

c12) United States Design Patent

Slubski

I

l l l l l l l l l l l l l l l l l l l l l l l l l

USOOD576495S



33/102

US D576,495 S

~ - - - - - .. _

~ I I - - 0 f

I ' - - = - - -

~

. . . .

I

- - - -

- - - . . . _ _ _

- - - - -

1 I

I .

- - - - - - - -

~------~

..;::-------- I

- -

------

1 I

: I

~~-----~

~~~--=-. - : . : -

S h e e t 1o f 6

e p . 9 2 0 0 8

FIG. 1

U.S. Patent



34/102

. . . . . . . . . . . . _ _ _ _ _ _ _ _ _ _ /

. . . . . . . . . . . . . .

. . . . _ _

_

FIG. 2

US D576,495

S

h e e t

2

o f

6

ep . 9 2008.S. Patent



35/102

US D576,495

S

I

~-

, / __ ,

_ _ //

..----------------------

F--------~

- - - - - - - - - - 1

I

I

~--------)

L T _ _ : _ - - : - _ _ : _ - - : - _ _ : _ - - : - _ _ : _ _ : : : J

S h e e t

3

o f

6

ep . 9 2008

FIG. 3

U.S. Patent



36/102

&------ - ; : : )

- 1

j

i

-------------------

_ j

US D576,495

S

F

-------~

I - - - - - - - - - - 1

I I

I

:J

~-

= -

- = < = ; J

S h e e t 4 o f

6

ep . 9 2008

FIG.

4

U.S. Patent



37/102

US D576,495

S

I

I

~------~

----------------------

F

-------~

I - - - - - - - - - - 1

I I

~--------J

. . . . . : . . . . 7 . . . . . : . . . . 7 . . . . . : . . . . 7 . . . . . : . . . . _ : : . : . J

S h e e t

5

o f

6

ep . 9 2008

FIG.

5

U.S. Patent



38/102

US D576,495

S

h e e t

6

o f

6

ep . 9 2008

FIG. 6

U.S. Patent



39/102

Claim, 6

Drawing

Sheets

FIG. 1 is a top, front, right side perspective view

of

a bottle

showing my new design;


FIG.

3

is a front elevation view thereof;



FIG. 6 is a bottom plan view thereof.

The dot-dash broken lines shown in the drawings represent

unclaimed environment and are for illustrative purposes only,

forming no part

of

the claimed design.

DESCRIPTION

The ornamental design for a bottle, as shown and described.

CLAIM

57)

* cited by examiner

Primary Examiner=Ynii

Simmons

Assistant Examiner=Deiu:

L Sipos

74) Attorney Agent or Firm~Hoffmann& Baron, LLP

412004 Hall et al. D9/550

6/2004 Curtis et al. D9/556

412006 Corbett et al. D9/500

10/2006 Lalanne et

al

D9/544

3/2008 Reimann et al. . D9/516

9/2008 Slubski D9/537

1112008 Younget al. D9/516

D488,386 S *

D492,203 S *

D518,722 S *

D529,390

S

*

D563,788 S *

D576,495 S

*

D580,766 S

*

1,740,223 A

*

12/1929 Burvenick 220/568

D201,791

S

* 8/1965 Hershbergeret al D32/30

D483,982

S

* 12/2003 Irvine D7 300.


56)

( 51) LOC 9) Cl. 09-01

52)

U.S. Cl. D9/537;

D9/549

58) Field of Classification Search D9/500,

D9/516, 529, 549,557~558, 575, 682, 686~694,

D9/522, 545, 530, 537, 540, 767; 215/379,

215/381~384; 220/660, 662, 669~673, 675;

D7/608, 300.1


References

Cited

Related

U.S.

Application Data

63) Continuation-in-part

of

application No. 29/279,662,

filed on May 4, 2007, now Pat. No. Des. 576,495.

Sep.9 200822) Filed:

54) BOTTLE

75)

Inventor:

Esther

Slubskl, Old Bethpage, NY US)

73) Assignee:

New Dutch Water

Corp., Bethpage, NY

US)

**) Term: 14 Years

21) Appl. No.: 29/324,244

US D596,037

S

Jul.

14, 2009

10) Patent No.:

45) Date of Patent:

I

l l l l l l l l l l l l l l l l

U S O O D 5 9 6 0 3 7 S

c12)

United States Design Patent

Slubski



40/102

~-- -- - - - - - - -

- -

-

- - --

-

1

~

\ _ _ , / A

. . . . . . . . . .

,, , /1

I ~-----, I

I I

US D596,037

S

Jul. 14, 2009 Sheet 1 of

6

FIG. I

U.S. Patent



41/102

FIG. 2

US D596,037

S

heet

2

of

6ul.

14, 2009

.S. Patent



42/102

1 1

l \

l

-----

\

\

US D596,037 S

heet

3of6

ul.

14, 2009

FIG.

3

U.S. Patent



43/102

-------

\'

\;:

\ \

\ ~

'

/

\

I

/I

I

I

1 1

I

I

I

\

~

'

\

J

F--------=

- - - - - - - - - - 1

I I

L _ _J

C

'------~

r

. L .

Sheet 4 of

6 US D596,037

S

ul.

14, 2009

FIG. 4

U.S. Patent



44/102

/

US D596,037

S

heet

5

of

6ul.

14, 2009

F = : : . .

- - - - - - - - - - 1

I

I

i_

_J

C

_ ,

.__,

r

.

.:

\'\

0

I

\

\

\ \

I \ \

(

1

1 1

FIG. 5

U.S. Patent



45/102


46/102

Claim,

6

Drawing

Sheets

DESCRIPTION

FIG.

1

is a top, front, right side perspective view

of

a remov

able elastic band on a bottle showing my new design;


FIG. 3 is a front elevation view thereof;



FIG.

6

is a bottom plan view thereof.

The dot-dash broken lines in the drawings showing the major

ity

of

a bottle illustrate the portions

of

he design that form no

part

of

the claim. The evenly dashed broken lines in the

drawings define the bounds

of

the claim and form no part

thereof.

The ornamental design for a removable elastic band on a

bottle, as shown and described.

CLAIM

57)

Primary Examiner=Ynii

Simmons

Assistant Examiner=Deiu:

L Sipos

74) Attorney Agent or Firm~Hoffmann& Baron, LLP

Irvine D7/300.l

Brown Dll/4

Brown Dll/4

Brown

Dll/4

Brown Dll/4

Brown

Dll/4

Slubski D9/537

12/1929 Burvenick 220/568

1/1951 Gushard et al. 215/382

611971 Gruber et al.

222192

9/1971 Donoghue D9/501

9/1971 Donoghue D9/501

3/2000 Herrmann D9/69

10/2003 Owens D9/455

1,740,223 A *

2,538,684 A

*

3,583,602 A *

D222,032

S

*

D222,033 S *

D421,384 S

*

D480,969

S

*


56)

(

51)

LOC

(9) Cl. 09-01

52) U.S. Cl. D9/516; D9/434

58) Field of Classification Search D9/500,

D9/516, 529, 549,557~558, 575, 682, 686~694,

D9/522, 545,530,537,540, 767, 501, 517,

D9/719; 215/379, 381~384; 220/660, 662,

220/669~673, 675; D7/608, 300.1; D20/22;

Dll/3,

4,

6


References

Cited

Related U.S. Application Data

63) Continuation

of

application No. 29/279,662, filed on

May 4, 2007, now Pat. No. Des. 576,495.

22) Filed: Sep. 9, 2008

54) REMOVABLE ELASTIC BAND ON A BOTTLE

D483,982 S

*

12/2003

D542,167 S

*

5/2007

76)

Inventor:

Esther

Slubskl,

14

Mahan Rd., Old

D542,687 S

*

5/2007

Bethpage, NY US) 11804

D546,225

S

*

7/2007

D546,226 S

*

7/2007

**)

D546,227 S

*

7/2007

Term:

14 Years

D576,495 S

*

9/2008

21) Appl. No.: 29/324,227

* cited by examiner

US D611,819

S

Mar.

16, 2010

10) Patent No.:

45) Date of Patent:

I

l l l l l l l l l l l l l l l l

USOOD611819S

c12)

United States Design Patent

Slubski



47/102

VS

D611,819

S

>

4l~1lA

I .

j I

I

i i i

i i i

i

i

i

j I i

i

i

i

i

i

i

i i i

i i i

i

i

i

i

i

i

i i i

i

i

i

i

i

i

i

i

i

i

I

i

i

i

i i

i \

j

i

(

\ i j

~--.l_ , , / /

, . , . . . . - - - .. - ..

- - - -

. . . . . . . . .

'

~

~-----::::4.

------ -

I

-- .. --.,_.

I .

.

J

~ . . . ..

~ ~

( . . . . . . . : - : : : : : : = = = =

rzzs:

~-

__ .

" '

/' /'


48/102

US D611,819 S

/ . . : . : : : : : : - - ~:

~'

/ - ~

// \

./ \

l i }

J

\\ , .

. .

//

''

. .

.

. . . . . _

.//

r=:

i

. ....

t>

'' \

/'

Mar. 16, 2010 Sheet 2 of 6

FIG. 2

U.S. Patent



49/102

US D611,819

S

i I

i

I

i I

i I

i

I

i i

i

I

I

i

I i

i I i

\

j

i

\

1

I i

\ \

i i

i \ i

i

\

i

j

i

i

\

i

i

\

i j i

\ i i

i \ I I

I I

I

I

I I I

' I I )

\

I

I

~ \

~

...._ ~ __ .....l....___._

F

-------~

----------

. I

I .

~

: . . . . : . . : . . . . : . . : . . . . : . . : ~

-r=r=>:


50/102

US D611,819

S

i j

i i

i i

\ i

i i

i

j

\

i

i i

i i

\

j

\ i

\

i

\ j

\

i

\

i

\ i

\ j

\

i

\ i

\ I

\ j

'


51/102

US D611,819

S

i

i

i i

\

i

\

i

\ i

i

\

i

i

\ i

i

i

\

i

\ i

\ i

\

i

\ i

\

i

\

i

\ i

\ i

j

'

_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ ,

F

-------~

---------

. I

I .

~

.

...:....-:-...:....-:-...:....-:-)

J_=------::r

/'

-------

.,_

/'


52/102

US D611,819 S

heet

6

of

6a r . 16 2 0 10

FIG.

6

U.S. Patent



53/102


54/102

Sheet

1of6

US D663,623

S

ul.

17, 2012

.S. Patent



55/102

Sheet

2

of

6 US D663,623

S

ul.

17, 2012

.S. Patent



56/102

Sheet

3

of

6

US D663,623

S

ul.

17, 2012

.S. Patent



57/102

Sheet 4 of

6 US D663,623

S

ul.

17, 2012

.S. Patent



58/102

Sheet

5

of

6 US D663,623

S

ul.

17, 2012

.S. Patent



59/102

Sheet

6

of

6

US D663,623

S

ul.

17, 2012

.S. Patent



60/102

Shane Rosado Inventorship Chart for Patent Number US D576,495

1

Rosado SolidWorks File 2/13/07 495 Drawings filed 5/7/07



61/102


62/102


3




63/102


4




64/102


1




65/102


66/102


3




67/102


68/102


5




69/102


1




70/102


2




71/102


3




72/102


4




73/102


5




74/102


6




75/102


1




76/102


2




77/102


3




78/102


79/102


5




80/102


6




81/102

Shane Rosado Litigation Chart for Patent Number US D576,495

1

495 Drawings filed 5/7/07 NY20 Bottle Photo 10/12/14



82/102


2




83/102


3




84/102


4




85/102


5




86/102


1




87/102


2




88/102


3




89/102


4




90/102


5




91/102


1




92/102


2




93/102


94/102


4




95/102


5




96/102


6




97/102


1




98/102


2




99/102


3




100/102


4




101/102


5




102/102




Documents

Rosado v. NY20 - Complaint