Case: 21-2048 Document: 1-1 Page: 1 Filed: 06/14/2021

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT
717 MADISON PLACE, N.W.
WASHINGTON, D.C. 20439

PETER R. MARKSTEINER CLERK’S OFFICE

CLERK OF COURT 202-275-8000

June 14, 2021

NOTICE OF DOCKETING

Federal Circuit Docket No.: 2021-2048

Federal Circuit Short Caption: Sure Fit Home Products, LLC v. Maytex Mills, Inc

Date of Docketing: June 14, 2021

Originating Tribunal: United States District Court for the Southern District of New
York

Originating Case No.: 1:21-cv-02169-LGS

Appellants: Sure Fit Home Products, LLC, SF Home Decor, LLC, Zahner Design Group,
Ltd., Hookless Systems Of North America, Inc.

A notice of appeal has been filed and assigned the above Federal Circuit case number.
The court's official caption is included as an attachment to this notice. Unless otherwise
noted in the court's rules, the assigned docket number and official caption or short
caption must be included on all documents filed with this Court. It is the responsibility of
all parties to review the Rules for critical due dates. The assigned deputy clerk is noted
below and all case questions should be directed to the Case Management section at (202)
275-8055.

The following filings are due within 14 days of this notice:

• Entry of Appearance or Notice of Unrepresented Person. (Fed. Cir. R. 47.3.)

• Certificate of Interest. (Fed. Cir. R. 47.4; not required for unrepresented and
federal government parties unless disclosing information under Fed. Cir. R.
47.4(a)(6))
• Docketing Statement. Note: The Docketing Statement is due in 30 days if the
United States or its officer or agency is a party in the appeal. (Fed. Cir. R. 33.1 and
the Mediation Guidelines; no docketing statement is required in cases with an
unrepresented party)
• Statement Concerning Discrimination in MSPB or arbitrator cases. (Fed. Cir. R.
15(c); completed by petitioner only)
 Case: 21-2048 Document: 1-1 Page: 2 Filed: 06/14/2021

• Fee payment or appropriate fee waiver request, if the docketing fee was not
prepaid (see Fee Payment below).

FILING DOCUMENTS: Each counsel representing a party must be a member of the

court's bar and registered for the court's electronic filing system. Parties represented by
counsel must make all filings through the court's electronic filing system.

Unrepresented parties may choose to submit case filings to the court either in paper or
through the court's electronic filing system; electronic filing will only be permitted for
unrepresented parties after successful registration for the court's electronic filing system
and submission of a completed Notice of Unrepresented Person Appearance. Fed. Cir. R.
25(a). The court's Electronic Filing Procedures may be accessed at
www.cafc.uscourts.gov/contact/clerks-office/filing-resources.

CONTACT INFORMATION: Electronic filers, or unrepresented parties registered to

receive electronic service, must update their contact information in their PACER service
center profile whenever their contact information changes. Counsel must file an amended
Entry of Appearance and unrepresented parties must file an amended Notice of
Unrepresented Person Appearance whenever contact information changes. Fed. Cir. R.
25(a)(5).

FEE PAYMENT: Unless the filing fee was prepaid, fee payment must be submitted
within fourteen days after this notice. Fed. Cir. R. 52(d). For outstanding docketing fees
due to this court, electronic filers must pay the fee using the event Pay Docketing Fee
through the court’s electronic filing system. Fed. Cir. R. 52(e). Docketing fees due to other
courts, such as U.S. District Courts, the U.S. Court of Appeals for Veterans Claims, and
non-vaccine cases at the U.S. Court of Federal Claims, must be submitted to those courts
in accordance with their procedures. A filer wishing to proceed without fee payment must
submit a motion for leave to proceed in forma pauperis, or other fee waiver request,
within fourteen days.

OFFICIAL CAPTION: The court's official caption is attached and reflects the lower
tribunal's caption pursuant to Fed. R. App. P. 12(a), 15(a), and 21(a). Please review the
caption carefully and promptly advise this court in writing of any improper or inaccurate
designations.

/s/ Peter R. Marksteiner

Peter R. Marksteiner
Clerk of Court

By: K. Heidrick, Deputy Clerk

Attachments:

• Official caption
• Paper Copies of General Information and Forms (to unrepresented parties only):
 Case: 21-2048 Document: 1-1 Page: 3 Filed: 06/14/2021

o General Information and Overview of a Case in the Federal Circuit

o Notice of Unrepresented Person Appearance
o Informal Brief
o Informal Reply Brief (to be completed only after receiving the opposing
party's response brief)
o Motion and Affidavit for Leave to Proceed in Forma Pauperis (only to filers
owing the docketing fee)
o Supplemental in Forma Pauperis Form for Prisoners (only to filers in a
correctional institution)
o Statement Concerning Discrimination (only to petitioners in MSPB or
arbitrator case)

cc: United States District Court for the Southern District of New York
 Case: 21-2048 Document: 1-1 Page: 4 Filed: 06/14/2021

Official Caption

SURE FIT HOME PRODUCTS, LLC, SF HOME DECOR, LLC, ZAHNER

DESIGN GROUP, LTD., HOOKLESS SYSTEMS OF NORTH AMERICA, INC.,
Plaintiffs-Appellants

v.

MAYTEX MILLS, INC,

Defendant-Appellee

Short Caption

Sure Fit Home Products, LLC v. Maytex Mills, Inc

 Case:
Case 21-2048 Document:
1:21-cv-02169-LGS 1-2 60
Document Page: 1 06/08/21
Filed Filed: 06/14/2021
Page 1 of 2

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

SURE FIT HOME PRODUCTS, LLC, SF HOME

DÉCOR, LLC, ZAHNER DESIGN GROUP, LTD., Case No.:1:21-cv-02169 (LGS)
AND HOOKLESS SYSTEMS OF NORTH
AMERICA, INC.,

Plaintiffs,

v.

MAYTEX MILLS, INC. (JURY TRIAL DEMANDED)

Defendant and Counterclaimant.

PLAINTIFFS’ NOTICE OF APPEAL

Plaintiffs Sure Fit Home Products, LLC, SF Home Décor, LLC, Zahner Design

Group, Ltd. (“ZDG”), and Hookless Systems of North America, Inc. (collectively,

“Plaintiffs”) by their attorneys, hereby appeal to the United States Court of Appeals for

the Federal Circuit from this Court’s Opinion and Order (Dkt. 54) denying Plaintiffs’

Motion for a Preliminary Injunction, and from all adverse rulings, orders, and/or

judgments related thereto and/or issued by the Court to date.

Dated: June 8, 2021 /s/Morris E. Cohen

Morris E. Cohen (MC-4620)
Lee A. Goldberg (LG-9423)
Limor Wigder (LW-1986)
GOLDBERG COHEN LLP
1350 Avenue of the Americas, 3rd Floor
New York, New York 10019
(646) 380-2087 (phone)
(646) 514-2123 (fax)
[email protected]
[email protected]
[email protected]
 Case:
Case 21-2048 Document:
1:21-cv-02169-LGS 1-2 60
Document Page: 2 06/08/21
Filed Filed: 06/14/2021
Page 2 of 2

CERTIFICATE OF SERVICE

I hereby certify that on June 8, 2021, a true and correct copy of the foregoing
document was served via the Court's ECF system on counsel of record in this action.

Dated: June 8, 2021 /s/Morris E. Cohen

Morris E. Cohen

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APPEAL,CASREF,ECF

U.S. District Court

Southern District of New York (Foley Square)
CIVIL DOCKET FOR CASE #: 1:21-cv-02169-LGS

Sure Fit Home Products, LLC et al v. Maytex Mills Inc. Date Filed: 03/12/2021
Assigned to: Judge Lorna G. Schofield Jury Demand: Both
Referred to: Magistrate Judge Gabriel W. Gorenstein Nature of Suit: 830 Patent
(Settlement) Jurisdiction: Federal Question
Cause: 35:271 Patent Infringement
Plaintiff
Sure Fit Home Products, LLC represented by Lee A. Goldberg
Goldberg Cohen LLP
1350 Avenue of The Americas
New York, NY 10019
646-380-2087
Email: [email protected]
ATTORNEY TO BE NOTICED

Morris E. Cohen
Goldberg Cohen LLP
1350 Avenue of The Americas
New York, NY 10019
646-380-2087
Fax: 646-514-2123
Email: [email protected]
ATTORNEY TO BE NOTICED

Plaintiff
SF Home Decor, LLC represented by Lee A. Goldberg
(See above for address)
ATTORNEY TO BE NOTICED

Morris E. Cohen
(See above for address)
ATTORNEY TO BE NOTICED

Plaintiff
Zahner Design Group Ltd. represented by Lee A. Goldberg
(See above for address)
ATTORNEY TO BE NOTICED

Morris E. Cohen
(See above for address)
ATTORNEY TO BE NOTICED

Plaintiff

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Case: 21-2048 Document: 1-2 Page: 4 Filed: 06/14/2021

Hookless Systems of North America, represented by Lee A. Goldberg

Inc. (See above for address)
ATTORNEY TO BE NOTICED

Morris E. Cohen
(See above for address)
ATTORNEY TO BE NOTICED

V.
Defendant
Maytex Mills Inc. represented by Alan Murray Kindred
Leech Tishman Fuscaldo & Lampl, LLC
200 S Los Robles Ave Suite 300
Pasadena, CA 91101
818-636-5933
Fax: 626-795-6321
Email: [email protected]
LEAD ATTORNEY
ATTORNEY TO BE NOTICED

Douglas Hunt Morseburg

Leech Tishman Fuscaldo & Lampl
200 South Los Robles Avenue
Ste 300
Pasadena, CA 91101
626-796-4000
Email: [email protected]
LEAD ATTORNEY
ATTORNEY TO BE NOTICED

Alan Towner
Leech Tishman Fuscaldo & Lampl
525 William Penn Place
Ste 28th Floor
Pittsburgh, PA 15219
412-261-1600
Email: [email protected]
ATTORNEY TO BE NOTICED

Esther J.A. Choe

Leech Tishman Fuscaldo & Lampl
200 South Los Robles Avenue
Suite 300
Pasadena, CA 91101
626-796-4000
Email: [email protected]
ATTORNEY TO BE NOTICED

Ivan Miles Posey

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Leech Tishman Fuscaldo & Lampl

250 Park Avenue
7th Floor
New York, NY 10177
213-447-3077
Email: [email protected]
ATTORNEY TO BE NOTICED

John Joseph Jacko

Leech Tishman Fuscaldo & Lampl LLC
1417 Locust Street
Ste Floor 3
Philadelphia, PA 19102
267-938-4560
Fax: 267-938-4588
Email: [email protected]
ATTORNEY TO BE NOTICED

Counter Claimant
Maytex Mills Inc. represented by Alan Murray Kindred
(See above for address)
LEAD ATTORNEY
ATTORNEY TO BE NOTICED

Douglas Hunt Morseburg

(See above for address)
LEAD ATTORNEY
ATTORNEY TO BE NOTICED

Alan Towner
(See above for address)
ATTORNEY TO BE NOTICED

Esther J.A. Choe

(See above for address)
ATTORNEY TO BE NOTICED

Ivan Miles Posey

(See above for address)
ATTORNEY TO BE NOTICED

John Joseph Jacko

(See above for address)
ATTORNEY TO BE NOTICED

V.
Counter Defendant

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Case: 21-2048 Document: 1-2 Page: 6 Filed: 06/14/2021

Hookless Systems of North America, represented by Lee A. Goldberg

Inc. (See above for address)
ATTORNEY TO BE NOTICED

Morris E. Cohen
(See above for address)
ATTORNEY TO BE NOTICED

Counter Defendant
SF Home Decor, LLC represented by Lee A. Goldberg
(See above for address)
ATTORNEY TO BE NOTICED

Morris E. Cohen
(See above for address)
ATTORNEY TO BE NOTICED

Counter Defendant
Sure Fit Home Products, LLC represented by Lee A. Goldberg
(See above for address)
ATTORNEY TO BE NOTICED

Morris E. Cohen
(See above for address)
ATTORNEY TO BE NOTICED

Counter Defendant
Zahner Design Group Ltd. represented by Lee A. Goldberg
(See above for address)
ATTORNEY TO BE NOTICED

Morris E. Cohen
(See above for address)
ATTORNEY TO BE NOTICED

Date Filed # Docket Text

03/12/2021 1 FILING ERROR - DEFICIENT PLEADING - FILED AGAINST PARTY
ERROR -COMPLAINT against Sure Fit Home Products, LLC, Hookless Systems of
North America, Inc., SF Home Decor, LLC, Maytex Mills Inc.. (Filing Fee $ 402.00,
Receipt Number ANYSDC-24242995)Document filed by Sure Fit Home Products,
LLC, Hookless Systems of North America, Inc., Zahner Design Group Ltd., SF
Home Decor, LLC. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4
Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6).(Cohen, Morris) Modified on 3/15/2021 (pc).
(Entered: 03/12/2021)
03/12/2021 2 FILING ERROR - DEFICIENT PLEADING - PDF ERROR - CIVIL COVER
SHEET filed..(Cohen, Morris) Modified on 3/15/2021 (pc). (Entered: 03/12/2021)

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03/12/2021 3 RULE 7.1 CORPORATE DISCLOSURE STATEMENT. Identifying Corporate

Parent Sure Fit Home Decor Holdings Corp. for SF Home Decor, LLC, Sure Fit
Home Products, LLC. Document filed by Hookless Systems of North America, Inc.,
SF Home Decor, LLC, Sure Fit Home Products, LLC, Zahner Design Group Ltd...
(Cohen, Morris) (Entered: 03/12/2021)
03/12/2021 4 REQUEST FOR ISSUANCE OF SUMMONS as to Maytex Mills, Inc., re: 1
Complaint,. Document filed by Hookless Systems of North America, Inc., SF Home
Decor, LLC, Sure Fit Home Products, LLC, Zahner Design Group Ltd...(Cohen,
Morris) (Entered: 03/12/2021)
03/12/2021 5 AO 120 FORM PATENT - NOTICE OF SUBMISSION BY ATTORNEY. AO 120
Form Patent/Trademark for case opening submitted to court for review..(Cohen,
Morris) (Entered: 03/12/2021)
03/12/2021 6 PROPOSED ORDER TO SHOW CAUSE WITH EMERGENCY RELIEF.
Document filed by Hookless Systems of North America, Inc., SF Home Decor, LLC,
Sure Fit Home Products, LLC, Zahner Design Group Ltd...(Cohen, Morris)
Proposed Order to Show Cause to be reviewed by Clerk's Office staff. (Entered:
03/12/2021)
03/12/2021 7 FILING ERROR - WRONG EVENT TYPE SELECTED FROM MENU -
MOTION for Preliminary Injunction . Document filed by Hookless Systems of North
America, Inc., SF Home Decor, LLC, Sure Fit Home Products, LLC, Zahner Design
Group Ltd.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, #
5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10,
# 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, #
16 Exhibit 16, # 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19, # 20 Exhibit 20, #
21 Exhibit 21, # 22 Exhibit 22, # 23 Exhibit 23, # 24 Exhibit 24, # 25 Exhibit 25, #
26 Exhibit 26, # 27 Exhibit 27, # 28 Exhibit 28, # 29 Exhibit 29, # 30 Exhibit 30, #
31 Exhibit 31, # 32 Exhibit 32, # 33 Exhibit 33, # 34 Exhibit 34, # 35 Exhibit 35, #
36 Exhibit 36, # 37 Exhibit 37, # 38 Exhibit 38, # 39 Exhibit 39, # 40 Exhibit
40).(Cohen, Morris) Modified on 3/23/2021 (ldi). (Entered: 03/12/2021)
03/12/2021 8 DECLARATION of Robert Burbank in Support re: 7 MOTION for Preliminary
Injunction .. Document filed by Hookless Systems of North America, Inc., SF Home
Decor, LLC, Sure Fit Home Products, LLC, Zahner Design Group Ltd...(Cohen,
Morris) (Entered: 03/12/2021)
03/12/2021 9 DECLARATION of Morris E. Cohen in Support re: 7 MOTION for Preliminary
Injunction .. Document filed by Hookless Systems of North America, Inc., SF Home
Decor, LLC, Sure Fit Home Products, LLC, Zahner Design Group Ltd...(Cohen,
Morris) (Entered: 03/12/2021)
03/12/2021 10 DECLARATION of Stacy Dubinski in Support re: 7 MOTION for Preliminary
Injunction .. Document filed by Hookless Systems of North America, Inc., SF Home
Decor, LLC, Sure Fit Home Products, LLC, Zahner Design Group Ltd...(Cohen,
Morris) (Entered: 03/12/2021)
03/12/2021 11 DECLARATION of Ryan Erickson in Support re: 7 MOTION for Preliminary
Injunction .. Document filed by Hookless Systems of North America, Inc., SF Home
Decor, LLC, Sure Fit Home Products, LLC, Zahner Design Group Ltd...(Cohen,
Morris) (Entered: 03/12/2021)

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03/12/2021 12 DECLARATION of David Zahner in Support re: 7 MOTION for Preliminary

Injunction .. Document filed by Hookless Systems of North America, Inc., SF Home
Decor, LLC, Sure Fit Home Products, LLC, Zahner Design Group Ltd...(Cohen,
Morris) (Entered: 03/12/2021)
03/15/2021 ***NOTICE TO ATTORNEY REGARDING DEFICIENT CIVIL COVER
SHEET. Notice to attorney Morris E. Cohen to RE-FILE Document No. 2 Civil
Cover Sheet. The filing is deficient for the following reason(s): Multiple natures
of suit were selected. Choose one. (pc) (Entered: 03/15/2021)
03/15/2021 CASE OPENING INITIAL ASSIGNMENT NOTICE: The above-entitled action is
assigned to Judge Lorna G. Schofield. Please download and review the Individual
Practices of the assigned District Judge, located at https://nysd.uscourts.gov/judges
/district-judges. Attorneys are responsible for providing courtesy copies to judges
where their Individual Practices require such. Please download and review the ECF
Rules and Instructions, located at https://nysd.uscourts.gov/rules/ecf-related-
instructions..(pc) (Entered: 03/15/2021)
03/15/2021 Magistrate Judge Gabriel W. Gorenstein is so designated. Pursuant to 28 U.S.C.
Section 636(c) and Fed. R. Civ. P. 73(b)(1) parties are notified that they may consent
to proceed before a United States Magistrate Judge. Parties who wish to consent may
access the necessary form at the following link: https://nysd.uscourts.gov/sites
/default/files/2018-06/AO-3.pdf. (pc) (Entered: 03/15/2021)
03/15/2021 Case Designated ECF. (pc) (Entered: 03/15/2021)
03/15/2021 ***NOTICE TO ATTORNEY REGARDING DEFICIENT PLEADING. Notice
to Attorney Morris E. Cohen to RE-FILE Document No. 1 Complaint,. The
filing is deficient for the following reason(s): the wrong party/parties whom the
pleading is against were selected;. Re-file the pleading using the event type
Complaint found under the event list Complaints and Other Initiating
Documents - attach the correct signed PDF - select the individually named
filer/filers - select the individually named party/parties the pleading is against.
(pc) (Entered: 03/15/2021)
03/15/2021 Case Eligible for Patent Pilot Program. (pc) (Entered: 03/15/2021)
03/15/2021 13 AO 120 FORM PATENT - CASE OPENING - SUBMITTED. In compliance with
the provisions of 35 U.S.C. 290, the Director of the U.S. Patent and Trademark
Office is hereby advised that a court action has been filed on the following patent(s)
in the U.S. District Court Southern District of New York. Director of the U.S. Patent
and Trademark Office electronically notified via Notice of Electronic Filing
(NEF)..(pc) (Entered: 03/15/2021)
03/15/2021 14 ELECTRONIC SUMMONS ISSUED as to Maytex Mills Inc...(pc) (Entered:
03/15/2021)
03/15/2021 ***NOTICE TO COURT REGARDING PROPOSED ORDER TO SHOW
CAUSE WITH EMERGENCY RELIEF. Document No. 6 Proposed Order to
Show Cause With Emergency Relief was reviewed and approved as to form.
(km) (Entered: 03/15/2021)
03/15/2021 15 COMPLAINT against Maytex Mills Inc.. Document filed by Sure Fit Home
Products, LLC, Hookless Systems of North America, Inc., Zahner Design Group
Ltd., SF Home Decor, LLC..(Cohen, Morris) (Entered: 03/15/2021)

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03/15/2021 16 CIVIL COVER SHEET filed..(Cohen, Morris) (Entered: 03/15/2021)

03/16/2021 17 ORDER: It is hereby ORDERED that by March 31, 2021, Defendant shall file any
opposition per the Individual Rules. By April 7, 2021, Plaintiffs shall file any reply.
(As further set forth in this Order.) ( Responses due by 3/31/2021, Replies due by
4/7/2021.) (Signed by Judge Lorna G. Schofield on 3/16/2021) (cf) (Entered:
03/16/2021)
03/16/2021 18 LETTER addressed to Judge Lorna G. Schofield from Morris E. Cohen dated March
16, 2021 re: Corrected Exhibit 3 to the Preliminary Injunction Motion. Document
filed by Hookless Systems of North America, Inc., SF Home Decor, LLC, Sure Fit
Home Products, LLC, Zahner Design Group Ltd.. (Attachments: # 1 Exhibit
Corrected Exhibit 3).(Cohen, Morris) (Entered: 03/16/2021)
03/17/2021 19 CERTIFICATE OF SERVICE of Court's Order, Summons and Complaint (and
associated papers), Plaintiffs' Motion, Supporting Papers, and Plaintiffs' Letter to
Court of March 16, 2021 served on Maytex Mills on March 17, 2021. Service was
accepted by Registered Agent. Document filed by Hookless Systems of North
America, Inc., SF Home Decor, LLC, Sure Fit Home Products, LLC, Zahner Design
Group Ltd...(Cohen, Morris) (Entered: 03/17/2021)
03/18/2021 20 CERTIFICATE OF SERVICE of Court's Order, Summons and Complaint (and
associated papers), Plaintiffs' Motion, Supporting Papers, and Plaintiffs' Letter to
Court of March 16, 2021 served on Maytex Mills on March 17, 2021. Service was
accepted by Registered Agent. Document filed by Hookless Systems of North
America, Inc., SF Home Decor, LLC, Sure Fit Home Products, LLC, Zahner Design
Group Ltd...(Cohen, Morris) (Entered: 03/18/2021)
03/23/2021 ***NOTICE TO ATTORNEY TO RE-FILE DOCUMENT - EVENT TYPE
ERROR. Notice to Attorney Morris E. Cohen to RE-FILE Document 7
MOTION for Preliminary Injunction . Use the event type Memorandum of Law
in Support (non-motion) found under the event list Other Answers. (ldi)
(Entered: 03/23/2021)
03/24/2021 21 MEMORANDUM OF LAW in Support re: 7 MOTION for Preliminary Injunction . .
Document filed by Hookless Systems of North America, Inc., SF Home Decor, LLC,
Sure Fit Home Products, LLC, Zahner Design Group Ltd.. (Attachments: # 1 Exhibit
Exhibit 1, # 2 Exhibit Exhibit 2, # 3 Exhibit Corrected Exhibit 3, per letter of March
16, 2021, # 4 Exhibit Exhibit 4, # 5 Exhibit Exhibit 5, # 6 Exhibit Exhibit 6, # 7
Exhibit Exhibit 7, # 8 Exhibit Exhibit 8, # 9 Exhibit Exhibit 9, # 10 Exhibit Exhibit
10, # 11 Exhibit Exhibit 11, # 12 Exhibit Exhibit 12, # 13 Exhibit Exhibit 13, # 14
Exhibit Exhibit 14, # 15 Exhibit Exhibit 15, # 16 Exhibit Exhibit 16, # 17 Exhibit
Exhibit 17, # 18 Exhibit Exhibit 18, # 19 Exhibit Exhibit 19, # 20 Exhibit Exhibit 20,
# 21 Exhibit Exhibit 21, # 22 Exhibit Exhibit 22, # 23 Exhibit Exhibit 23, # 24
Exhibit Exhibit 24, # 25 Exhibit Exhibit 25, # 26 Exhibit Exhibit 26, # 27 Exhibit
Exhibit 27, # 28 Exhibit Exhibit 28, # 29 Exhibit Exhibit 29, # 30 Exhibit Exhibit 30,
# 31 Exhibit Exhibit 31, # 32 Exhibit Exhibit 32, # 33 Exhibit Exhibit 33, # 34
Exhibit Exhibit 34, # 35 Exhibit Exhibit 35, # 36 Exhibit Exhibit 36, # 37 Exhibit
Exhibit 37, # 38 Exhibit Exhibit 38, # 39 Exhibit Exhibit 39, # 40 Exhibit Exhibit
40).(Cohen, Morris) (Entered: 03/24/2021)
03/24/2021 22 NOTICE OF APPEARANCE by Ivan Miles Posey on behalf of Maytex Mills Inc...
(Posey, Ivan) (Entered: 03/24/2021)

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03/25/2021 23 NOTICE OF APPEARANCE by Alan Murray Kindred on behalf of Maytex Mills

Inc...(Kindred, Alan) (Entered: 03/25/2021)
03/26/2021 24 EMERGENCY LETTER MOTION for Extension of Time to File Opposition to
Plaintiffs' Motion for Preliminary Injunction addressed to Judge Lorna G. Schofield
from Alan Murray Kindred dated March 26, 2021. Document filed by Maytex Mills
Inc...(Kindred, Alan) (Entered: 03/26/2021)
03/26/2021 25 LETTER addressed to Judge Lorna G. Schofield from Morris E. Cohen dated March
26, 2021 re: Response to Defendant's Emergency Letter Motion dated March 26,
2021. Document filed by Hookless Systems of North America, Inc., SF Home Decor,
LLC, Sure Fit Home Products, LLC, Zahner Design Group Ltd...(Cohen, Morris)
(Entered: 03/26/2021)
03/26/2021 26 ORDER: It is hereby ORDERED that by April 14, 2021, Defendant shall file any
opposition per the Individual Rules. By April 21, 2021, Plaintiffs shall file any reply
per the Individual Rules. (As further set forth in this Order.) ( Responses due by
4/14/2021, Replies due by 4/21/2021.) (Signed by Judge Lorna G. Schofield on
3/26/2021) (cf). (Entered: 03/26/2021)
04/01/2021 27 NOTICE OF APPEARANCE by John Joseph Jacko on behalf of Maytex Mills Inc...
(Jacko, John) (Entered: 04/01/2021)
04/01/2021 28 RULE 7.1 CORPORATE DISCLOSURE STATEMENT. No Corporate Parent.
Document filed by Maytex Mills Inc...(Posey, Ivan) (Entered: 04/01/2021)
04/02/2021 29 ORDER: Initial Conference set for 5/13/2021 at 11:00 AM before Judge Lorna G.
Schofield. The conference will be telephonic. (As further set forth in this Order.)
(Signed by Judge Lorna G. Schofield on 4/2/2021) (cf) (Entered: 04/02/2021)
04/02/2021 30 FIRST LETTER MOTION for Extension of Time to File Answer to Complaint
addressed to Judge Lorna G. Schofield from Alan M. Kindred dated April 2, 2021.
Document filed by Maytex Mills Inc...(Kindred, Alan) (Entered: 04/02/2021)
04/05/2021 31 ORDER granting 30 Letter Motion for Extension of Time to Answer re 30 FIRST
LETTER MOTION for Extension of Time to File Answer to Complaint addressed to
Judge Lorna G. Schofield from Alan M. Kindred dated April 2, 2021. The
application is GRANTED. By May 7, 2021, Defendant shall answer, move or
otherwise respond to the Complaint. Maytex Mills Inc. answer due 5/7/2021 (Signed
by Judge Lorna G. Schofield on 4/5/2021) (cf) (Entered: 04/05/2021)
04/05/2021 32 AFFIDAVIT OF SERVICE of a copy of the Court Order dated April 2, 2021 and the
Individual Rules and Procedures for Civil Cases of Judge Lorna G. Schofield served
on Maytex Mills, Inc. on April 2, 2021. Service was accepted by Alan M. Kindred,
Partner. Document filed by Hookless Systems of North America, Inc., SF Home
Decor, LLC, Sure Fit Home Products, LLC, Zahner Design Group Ltd...(Cohen,
Morris) (Entered: 04/05/2021)
04/07/2021 33 NOTICE OF APPEARANCE by Lee A. Goldberg on behalf of Hookless Systems of
North America, Inc., SF Home Decor, LLC, Sure Fit Home Products, LLC, Zahner
Design Group Ltd...(Goldberg, Lee) (Entered: 04/07/2021)
04/14/2021 34 MEMORANDUM OF LAW in Opposition re: 7 MOTION for Preliminary Injunction
. . Document filed by Maytex Mills Inc.. (Attachments: # 1 Affidavit of David Baines
and Exhibits 1, 2 and 3, # 2 Affidavit of Douglas H. Morseburg, # 3 Exhibit A to

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Morseburg Declaration, # 4 Exhibit B to Morseburg Declaration, # 5 Exhibit C to

Morseburg Declaration, # 6 Exhibit D to Morseburg Declaration, # 7 Exhibit E to
Morseburg Declaration, # 8 Exhibit F to Morseburg Declaration, # 9 Exhibit G to
Morseburg Declaration, # 10 Exhibit H to Morseburg Declaration).(Kindred, Alan)
(Entered: 04/14/2021)
04/14/2021 35 RESPONSE to Motion re: 7 MOTION for Preliminary Injunction . Objections to
Plaintiffs' Evidence Submitted in Support of Motion for Preliminary Injunction.
Document filed by Maytex Mills Inc...(Kindred, Alan) (Entered: 04/14/2021)
04/16/2021 36 LETTER MOTION for Extension of Time to File Response/Reply addressed to
Judge Lorna G. Schofield from Morris E. Cohen dated April 16, 2021. Document
filed by Hookless Systems of North America, Inc., SF Home Decor, LLC, Sure Fit
Home Products, LLC, Zahner Design Group Ltd...(Cohen, Morris) (Entered:
04/16/2021)
04/16/2021 37 MOTION for Douglas H. Morseburg to Appear Pro Hac Vice . Filing fee $ 200.00,
receipt number ANYSDC-24413366. Motion and supporting papers to be
reviewed by Clerk's Office staff. Document filed by Maytex Mills Inc..
(Attachments: # 1 Affidavit of Douglas H. Morseburg, # 2 Certificate of Standing, #
3 Text of Proposed Order).(Morseburg, Douglas) (Entered: 04/16/2021)
04/16/2021 38 MOTION for Alan G. Towner to Appear Pro Hac Vice . Filing fee $ 200.00, receipt
number ANYSDC-24413399. Motion and supporting papers to be reviewed by
Clerk's Office staff. Document filed by Maytex Mills Inc.. (Attachments: # 1
Affidavit of Alan Towner, # 2 Certificate of Standing (Maryland), # 3 Certificate of
Standing (Pennsylvania), # 4 Text of Proposed Order).(Morseburg, Douglas)
(Entered: 04/16/2021)
04/16/2021 39 MOTION for Esther J. Choe to Appear Pro Hac Vice . Filing fee $ 200.00, receipt
number ANYSDC-24413462. Motion and supporting papers to be reviewed by
Clerk's Office staff. Document filed by Maytex Mills Inc.. (Attachments: # 1
Affidavit of Esther Choe, # 2 Certificate of Standing, # 3 Text of Proposed Order).
(Choe, Esther) (Entered: 04/16/2021)
04/19/2021 >>>NOTICE REGARDING PRO HAC VICE MOTION. Regarding Document
No. 39 MOTION for Esther J. Choe to Appear Pro Hac Vice . Filing fee $
200.00, receipt number ANYSDC-24413462. Motion and supporting papers to
be reviewed by Clerk's Office staff., 38 MOTION for Alan G. Towner to Appear
Pro Hac Vice . Filing fee $ 200.00, receipt number ANYSDC-24413399. Motion
and supporting papers to be reviewed by Clerk's Office staff.. The document
has been reviewed and there are no deficiencies. (wb) (Entered: 04/19/2021)
04/19/2021 >>>NOTICE REGARDING PRO HAC VICE MOTION. Regarding Document
No. 37 MOTION for Douglas H. Morseburg to Appear Pro Hac Vice . Filing fee
$ 200.00, receipt number ANYSDC-24413366. Motion and supporting papers to
be reviewed by Clerk's Office staff.. The document has been reviewed and there
are no deficiencies. (wb) (Entered: 04/19/2021)
04/19/2021 40 ORDER granting 36 Letter Motion for Extension of Time to File Response/Reply re
36 LETTER MOTION for Extension of Time to File Response/Reply addressed to
Judge Lorna G. Schofield from Morris E. Cohen dated April 16, 2021.
ENDORSEMENT: The application is GRANTED. By April 28, 2021, Plaintiffs shall
file their reply brief. Replies due by 4/28/2021. (Signed by Judge Lorna G. Schofield

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on 4/19/2021) (cf) (Entered: 04/19/2021)

04/28/2021 41 REPLY MEMORANDUM OF LAW in Support re: 7 MOTION for Preliminary
Injunction . . Document filed by Hookless Systems of North America, Inc., SF Home
Decor, LLC, Sure Fit Home Products, LLC, Zahner Design Group Ltd..
(Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5,
# 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8).(Cohen, Morris) (Entered: 04/28/2021)
04/28/2021 42 DECLARATION of Morris E. Cohen in Support re: 7 MOTION for Preliminary
Injunction .. Document filed by Hookless Systems of North America, Inc., SF Home
Decor, LLC, Sure Fit Home Products, LLC, Zahner Design Group Ltd...(Cohen,
Morris) (Entered: 04/28/2021)
04/28/2021 43 DECLARATION of David Zahner in Support re: 7 MOTION for Preliminary
Injunction .. Document filed by Hookless Systems of North America, Inc., SF Home
Decor, LLC, Sure Fit Home Products, LLC, Zahner Design Group Ltd...(Cohen,
Morris) (Entered: 04/28/2021)
04/29/2021 44 ORDER granting 37 Motion for Douglas H. Morseburg to Appear Pro Hac Vice;
granting 38 Motion for Alan G. Towner to Appear Pro Hac Vice; and granting 39
Motion for Esther J. Choe to Appear Pro Hac Vice. (HEREBY ORDERED by Judge
Lorna G. Schofield)(Text Only Order) (jcs) (Entered: 04/29/2021)
05/05/2021 45 PROPOSED CASE MANAGEMENT PLAN. Document filed by Hookless Systems
of North America, Inc., SF Home Decor, LLC, Sure Fit Home Products, LLC,
Zahner Design Group Ltd...(Cohen, Morris) (Entered: 05/05/2021)
05/05/2021 46 JOINT LETTER addressed to Judge Lorna G. Schofield from Morris E. Cohen and
Douglas Morseburg dated May 5, 2021 re: Letter in Advance of Initial Pretrial
Conference (per Dkt. 29). Document filed by Hookless Systems of North America,
Inc., SF Home Decor, LLC, Sure Fit Home Products, LLC, Zahner Design Group
Ltd...(Cohen, Morris) (Entered: 05/05/2021)
05/07/2021 47 ANSWER to 15 Complaint with JURY DEMAND., COUNTERCLAIM against All
Plaintiffs. Document filed by Maytex Mills Inc.. (Attachments: # 1 Exhibit A - 232
Patent, # 2 Exhibit B - P853 Application, # 3 Exhibit C - 248 Patent, # 4 Exhibit D -
D091 Patent).(Morseburg, Douglas) (Entered: 05/07/2021)
05/10/2021 48 ORDER: Accordingly, it is hereby ORDERED that the initial pre-trial conference is
adjourned to May 20, 2021, at 11:00 a.m. (As further set forth in this Order.) ( Initial
Conference set for 5/20/2021 at 11:00 AM before Judge Lorna G. Schofield.) (Signed
by Judge Lorna G. Schofield on 5/7/2021) (cf) (Entered: 05/10/2021)
05/12/2021 49 NOTICE OF APPEARANCE by Alan Towner on behalf of Maytex Mills Inc...
(Towner, Alan) (Entered: 05/12/2021)
05/12/2021 50 LETTER addressed to Judge Lorna G. Schofield from Douglas H Morseburg dated
May 12, 2021 re: Authority re Disqualification and Claim Construction Schedule.
Document filed by Maytex Mills Inc.. (Attachments: # 1 Exhibit A - Proposed Patent
Case Management Plan).(Morseburg, Douglas) (Entered: 05/12/2021)
05/18/2021 51 LETTER addressed to Judge Lorna G. Schofield from Morris E. Cohen dated May
18, 2021 re: Opposition to Defendant Maytex's Letter Seeking Disqualification, and
its Allegations of Inequitable Conduct, and its Claim Construction Proposal.
Document filed by Hookless Systems of North America, Inc., SF Home Decor, LLC,
Sure Fit Home Products, LLC, Zahner Design Group Ltd.. (Attachments: # 1 Exhibit

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1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4).(Cohen, Morris) (Entered: 05/18/2021)

05/20/2021 Minute Entry for proceedings held before Judge Lorna G. Schofield: Initial Pretrial
Conference held on 5/20/2021. (Court Reporter Present) (jcs) (Entered: 05/20/2021)
05/20/2021 52 ORDER OF REFERENCE TO A MAGISTRATE JUDGE. Order that case be
referred to the Clerk of Court for assignment to a Magistrate Judge for Settlement.
Referred to Magistrate Judge Gabriel W. Gorenstein. (Signed by Judge Lorna G.
Schofield on 5/20/2021) (kv) (Entered: 05/20/2021)
05/20/2021 53 CIVIL CASE MANAGEMENT PLAN AND SCHEDULING ORDER: All parties
do not consent to conducting all further proceedings before a United States
Magistrate Judge, including motions and trial. See 28 U.S.C. § 636(c). Amended
Pleadings due by 7/13/2021. Joinder of Parties due by 7/13/2021. Claim
Construction. All claim construction discovery shall be complete by June 3, 2021. By
June 17, 2021, Plaintiffs shall file their opening claim construction brief. By July 1,
2021, Defendant shall file any opposition. No reply shall be filed. All submissions
shall be per the Individual Rules. All Fact Discovery due by 8/11/2021. Deposition
due by 8/11/2021. Expert Discovery due by 9/27/2021. This case is to be tried to a
jury. Counsel for the parties have conferred and their present best estimate of the
length of trial is 3-5 days. Pre-Motion Conference set for 10/21/2021 at 11:00 AM
before Judge Lorna G. Schofield, and as previously and further set forth in this Civil
Case Management Plan and Scheduling Order. So ordered. (Discovery due by
6/3/2021. Motions due by 6/17/2021. Responses due by 7/1/2021.) (Signed by Judge
Lorna G. Schofield on 5/20/2021) (rjm) (Entered: 05/20/2021)
05/26/2021 54 OPINION AND ORDER re: 24 EMERGENCY LETTER MOTION for Extension of
Time to File Opposition to Plaintiffs' Motion for Preliminary Injunction addressed to
Judge Lorna G. Schofield from Alan Murray Kindred dated March 26, 2021. filed by
Maytex Mills Inc.. All of the preliminary injunction factors, except the balance of
equities, weigh against a preliminary injunction. Accordingly, Plaintiffs' motion for a
preliminary injunction is denied. The Clerk of Court is respectfully directed to close
the motion at Docket No. 24. (Signed by Judge Lorna G. Schofield on 5/26/2021)
(kv) (Entered: 05/26/2021)
05/27/2021 55 JOINT LETTER addressed to Magistrate Judge Gabriel W. Gorenstein from Morris
E. Cohen dated May 27, 2021 re: Scheduling of a settlement conference. Document
filed by Hookless Systems of North America, Inc., SF Home Decor, LLC, Sure Fit
Home Products, LLC, Zahner Design Group Ltd...(Cohen, Morris) (Entered:
05/27/2021)
05/27/2021 56 MEMO ENDORSEMENT on re: 55 Letter, filed by SF Home Decor, LLC, Sure Fit
Home Products, LLC, Zahner Design Group Ltd., Hookless Systems of North
America, Inc. ENDORSEMENT: Application Granted. So Ordered. (Signed by
Magistrate Judge Gabriel W. Gorenstein on 5/27/2021) (vfr) (Entered: 05/27/2021)
06/01/2021 57 RESPONSE re: 47 Answer to Complaint,, Counterclaim, . Document filed by
Hookless Systems of North America, Inc., SF Home Decor, LLC, Sure Fit Home
Products, LLC, Zahner Design Group Ltd.. (Attachments: # 1 Exhibit 1, # 2 Exhibit
2, # 3 Exhibit 3, # 4 Exhibit 4).(Cohen, Morris) (Entered: 06/01/2021)
06/03/2021 58 JOINT LETTER addressed to Magistrate Judge Gabriel W. Gorenstein from Morris
E. Cohen dated June 3, 2021 re: Scheduling of settlement conference. Document
filed by Hookless Systems of North America, Inc., SF Home Decor, LLC, Sure Fit

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Home Products, LLC, Zahner Design Group Ltd...(Cohen, Morris) (Entered:

06/03/2021)
06/03/2021 59 MEMO ENDORSEMENT on re: 58 Letter, filed by SF Home Decor, LLC, Sure Fit
Home Products, LLC, Zahner Design Group Ltd., Hookless Systems of North
America, Inc. ENDORSEMENT: The parties shall write a joint letter to the Court
when both sides are prepared to proceed with the settlement conference. Before
sending the letter, counsel should call Chambers to obtain information about the
Court's availability. The letter itself should propose one or more dates for the
conference. (Signed by Magistrate Judge Gabriel W. Gorenstein on 6/3/2021) (rro)
(Entered: 06/03/2021)
06/08/2021 60 NOTICE OF APPEAL TO THE FEDERAL CIRCUIT from 54 Memorandum &
Opinion,,. Form 7 and Form 22 are due within 14 days. Document filed by Hookless
Systems of North America, Inc., SF Home Decor, LLC, Sure Fit Home Products,
LLC, Zahner Design Group Ltd.. Filing fee $ 505.00, receipt number ANYSDC-
24645746..(Cohen, Morris). (Entered: 06/08/2021)
06/08/2021 Transmission of Notice of Appeal and Certified Copy of Docket Sheet to US Court
of Appeals for the Federal Circuit re: 60 Notice of Appeal to the Federal Circuit. (tp)
(Entered: 06/08/2021)
06/08/2021 Appeal Record Sent to USCA (Electronic File). Certified Indexed record on Appeal
Electronic Files for 60 Notice of Appeal to the Federal Circuit, filed by SF Home
Decor, LLC, Sure Fit Home Products, LLC, Zahner Design Group Ltd., Hookless
Systems of North America, Inc. were transmitted to the U.S. Court of Appeals for the
Federal Circuit. (tp) (Entered: 06/08/2021)

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Page 1 of 18

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
-------------------------------------------------------------X
:
SURE FIT HOME PRODUCTS, LLC et al., :
Plaintiffs, :
: 21 Civ. 2169 (LGS)
-against- :
: OPINION AND ORDER
MAYTEX MILLS, INC., :
Defendant. :
------------------------------------------------------------ X

LORNA G. SCHOFIELD, District Judge:

Plaintiffs Sure Fit Home Products, LLC, SF Home Décor, LLC (collectively, “Sure Fit”),

Zahner Design Group, Ltd. (“ZDG”), and Hookless Systems of North America, Inc. (“HSNA”)

(collectively, “Plaintiffs”) claim that Defendant Maytex Mills, Inc.’s shower curtains infringe

their design patent and trade dress. Plaintiffs seek a preliminary injunction barring Defendant

from selling its allegedly infringing products. For the reasons set forth below, the motion is

denied.

I. BACKGROUND

A. Patent History

Plaintiffs and Defendant make shower curtains. On October 2, 2012, the United States

Patent and Trademark Office (“USPTO”) issued the patent asserted in this case, Design Patent

No. 668,091 (the “D091 Patent”), to David Zahner, Plaintiff ZDG’s owner. 1 That patent, which

expires in 2026, claims a shower curtain with reinforcing rings containing a slit, as depicted

below.

1
Patent protection is available for a “new, original and ornamental design for an article of
manufacture.” 35 U.S.C. § 171(a). A patentable design “gives a peculiar or distinctive
appearance to the manufacture, or article to which it may be applied, or to which it gives form.”
Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429, 432 (2016).
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D091 Patent Figures 1-3

The D091 Patent followed issuance to Zahner of several utility patents, which, unlike

design patents, cover functional and utilitarian features of inventions. As relevant to the present

motion, on February 16, 1993, the USPTO issued Utility Patent Number 5,186,232, entitled

“Accessory” (the “’232 Patent”). The ’232 Patent claimed a sheet of material, such as a shower

curtain, that could be installed on a rod while the rod was fixed in place. The ’232 Patent

accomplished this by placing pairs of holes near the edge of the sheet, with a horizontal slit

between holes. Those slits allowed the rod to be passed through the holes without removing the

rod from its mount. Each opening was surrounded by a reinforcing ring to (1) prevent tearing of

the sheet and (2) improve movement of the sheet on the rod and improve the engagement of the

holes with the rod. This invention is depicted below.

’232 Patent Figures 1 and 3

2
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On December 17, 2002, the USPTO issued to Zahner Utility Patent Number 6,494,248,

entitled “Suspended Materials Having External Slits” (the “’248 Patent”). The ’248 Patent

incorporated the invention of the ’232 Patent but improved upon that patent by relocating the

slits so that they ran from the edge of the holes to the edge of the sheet material, as depicted

below.

’248 Patent Figure 6

As with the ’232 Patent, this design allowed the sheet to be mounted without moving the rod.

Both the ’232 and ’248 Patents expired on July 17, 2020.

B. Trade Dress History

Trade dress is the “total image of a product and may include features such as size, shape,

color or color combinations, texture, or graphics.” LeSportSac Inc. v. K mart Corp., 754 F.2d 71,

75 (2d Cir. 1985); accord GeigTech E. Bay LLC v. Lutron Electronics Co., No. 18 Civ. 5290,

2018 WL 4360792, at *5 (S.D.N.Y. Sept. 5, 2018). Plaintiffs claim their trade dress (the

“Asserted Trade Dress”) comprises their:

rights to the visual appearance of their shower curtain products, which provide the
visual appearance of:

a. a shower curtain wherein the curtain lacks any hooks protruding above the
upper edge of the curtain, so that Plaintiffs’ shower curtain provides the visual
appearance of an essentially “neat” and “orderly” upper edge;

3
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b. and wherein the shower curtain has a row of rings along the upper portion of
the shower curtain, those rings being attached to the material of the shower
curtain such that the bottom surface of each ring (on one or both sides of the
shower curtain) is essentially co planar with the material of the shower curtain,
also providing an essentially “neat” and “orderly” appearance;

c. wherein each ring includes a slit or gap in the ring;

d. and wherein the shower curtain’s rings or pairs of rings, and the associated slits
or gaps, are each fixed in place on the shower curtain and provide an organized
and symmetrical repeating visual pattern along the top width of the shower
curtain.

Trade dress need not be registered with the USPTO to be valid. See 15 U.S.C. § 1125(a)(3).

Plaintiffs identify no registration for the Asserted Trade Dress.

C. The Parties’ History

In July 2020, Defendant began selling a line of shower curtains under the label “Glacier

Bay.” Plaintiffs sell shower curtains under the label “Hookless.” In March 2021, Plaintiffs filed

their Complaint, alleging that Defendant’s Glacier Bay products (the “Accused Products”)

infringe the D091 Patent, the Asserted Trade Dress, and Plaintiffs’ EZ-UP trademark. The same

day, Plaintiffs filed the present motion, seeking injunctive relief due to infringement of the D091

Patent and Asserted Trade Dress.

II. STANDARD

A. Preliminary Injunctions For Patent Claims

Federal Circuit law governs a motion for preliminary injunction targeting patent

infringement. Revision Military, Inc. v. Balboa Mfg. Co., 700 F.3d 524, 525 (Fed. Cir. 2012);

accord Ever Victory Tech. Ltd. v. SAS Grp., Inc., No. 19 Civ. 486, 2019 WL 4291670, at *1 n.2

(S.D.N.Y. Sept. 11, 2019). A party seeking the “extraordinary relief” of a preliminary injunction

must “establish [1] that he is likely to succeed on the merits, [2] that he is likely to suffer

4
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irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in his

favor, and [4] that an injunction is in the public interest.” Takeda Pharms. U.S.A., Inc. v. Mylan

Pharms. Inc., 967 F.3d 1339, 1345, 1349 (Fed. Cir. 2020) (alterations in original, internal

quotation marks omitted). Although “[t]hese factors, taken individually, are not dispositive,

Federal Circuit case law establishes that a movant cannot be granted a preliminary injunction

unless it establishes both of the first two factors, i.e., likelihood of success on the merits and

irreparable harm.” Ever Victory Tech., 2019 WL 4291670, at *1 (quoting Amazon.com, Inc. v.

Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001)).

To show a likelihood of success on the merits in a patent case, a plaintiff “must prove that

success in establishing infringement is more likely than not.” Trebro Mfg., Inc. v. Firefly Equip.,

LLC, 748 F.3d 1159, 1166 (Fed. Cir. 2014) (internal quotation marks omitted); accord Ever

Victory Tech, 2019 WL 4291670, at *1. To establish irreparable harm, a plaintiff must “articulate

and adduce proof of actual or imminent harm which cannot otherwise be compensated by money

damages” and may not rest on unsupported allegations that such harm is likely to occur. Takeda,

967 F.3d at 1349-50.

B. Preliminary Injunctions For Trade Dress Claims

Second Circuit law governs a preliminary injunction motion targeting trade dress

infringement. See Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 376 (2d Cir.

1997) (applying Second Circuit law to trade dress preliminary injunction motion); accord Daily

Harvest, Inc. v. Imperial Frozen Foods Op Co. LLC, No. 18 Civ 05838, 2018 WL 3642633, at *2

(S.D.N.Y. Aug. 1, 2018). To obtain a preliminary injunction that would change the status quo --

for example, by requiring Defendant to stop selling its competing shower curtains -- Plaintiffs

must (1) show a “clear or substantial” likelihood of success on the merits; (2) make a “strong

5
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showing” of irreparable harm; (3) show that the balance of equities tips in Plaintiffs’ favor and

(4) show that a preliminary injunction is in the public interest. A.H. by & through Hester v.

French, 985 F.3d 165, 176 (2d Cir. 2021).

III. DISCUSSION

A. Likelihood of Success 2

1. Patent Claims

The patentee seeking a preliminary injunction must show it is more likely than not that it

will prove infringement and withstand any challenges to the validity of the patent. Tinnus

Enterprises, LLC v. Telebrands Corp., 846 F.3d 1190, 1202 (Fed. Cir. 2017). An accused

infringer can defeat this showing of likelihood of success by demonstrating a substantial question

of infringement or validity. Id.

a. Infringement.

A design patent is infringed “if, in the eye of an ordinary observer, giving such attention

as a purchaser usually gives, two designs are substantially the same.” Samsung Elecs. Co. v.

Apple Inc., 137 S. Ct. 429, 432 (2016); accord Artskills, Inc. v. Royal Consumer Prod., LLC, No.

17 Civ. 1552, 2019 WL 1930751, at *6 (D. Conn. May 1, 2019). “In some instances, the claimed

design and the accused design will be sufficiently distinct that it will be clear without more that

2
The parties dispute whether certain declarations, affidavits and exhibits Plaintiffs submitted
with their motion should be considered. Because (1) “the decision of whether to award
preliminary injunctive relief is often based on ‘procedures that are less formal and evidence that
is less complete than in a trial on the merits,’” Mullins v. City of New York, 626 F.3d 47, 51-52
(2d Cir. 2010) (quoting Univ. of Tex. v. Camenisch, 451 U.S. 390, 395 (1981)); accord 725
Eatery Corp. v. City of New York, 408 F. Supp. 3d 424, 455 (S.D.N.Y. 2019), and (2) “courts
routinely consider hearsay evidence in determining whether to grant preliminary injunctive
relief, including affidavits, depositions, and sworn testimony,” Mullins, 626 F.3d at 52; accord
725 Eatery, 408 F. Supp. 3d at 455, the Court has considered the full evidentiary record
submitted by the parties.
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the patentee has not met its burden of proving the two designs would appear substantially the

same.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (internal

quotation marks omitted); accord Wine Enthusiast, Inc. v. Vinotemp International Corporation,

317 F. Supp. 3d 795, 800-01 (S.D.N.Y. 2018). In other instances, “differences between the

claimed and accused designs that might not be noticeable in the abstract can become significant

to the hypothetical ordinary observer who is conversant with the [state of the art in the field].”

Egyptian Goddess, 543 F.3d at 678.

Defendant has raised a substantial question as to whether it is more likely than not that an

ordinary observer, applying the level of attention normally given to a purchase, would conclude

that the design of the D091 Patent and the Accused Products are substantially the same.

Plaintiffs rest their arguments on side-by-side pictures of the D091 Patent and the Accused

Products, and the observation that both designs involve shower curtains containing embedded

rings and slits. Beyond those high-level details, the resemblance ends. The below images show

Figures 2 and 3 of the D091 Patent, depicting the front and back of the claimed invention,

respectively.

D091 Patent Figures 2 and 3

7
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When compared with the front and back of the Accused Products, below, several key differences

are immediately apparent.

Front of Accused Product

Front of Accused Product Back of Accused Product

Comparing the front of the two products, it is apparent that the front of Defendant’s rings

has a rounded, beveled edge that differs from the flat rings in Plaintiffs’ D091 Patent. Those

rings extend far closer to the top edge of the sheet than those in the D091 Patent. The back of the

two designs also differ significantly. Most obviously, the Accused Products have a small hook

hanging from the back of each ring. The back of each ring in the Accused Products also has

beveled inner and outer rims, unlike the D091 Patent. The Accused Products’ ring backs also

have a series of post holes on their surfaces. These differences are plainly apparent upon

inspection. For that reason, Plaintiffs have not shown it is more likely than not that they will be

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able to prove infringement under the ordinary observer test, and a substantial question as to

infringement exists. Accordingly, Plaintiffs have not shown a likelihood of success on the

merits.

In response, Plaintiffs cite Gorham Co. v. White, 81 U.S. 511, 526-27 (1871), which

noted that the ordinary observer test can be met even with some degree of design variation. That

observation is true, but beside the point, as the differences between the two designs are

significant and obvious upon plain view. Because Plaintiffs have not shown a likelihood of

success on the merits, this Opinion and Order does not address the parties’ arguments on validity.

2. Trade Dress Claims

Plaintiffs have not made a “clear and substantial” showing that they are likely to succeed

on their trade dress claims because the key features of the Asserted Trade Dress are likely

dictated by functional, utilitarian aspects of Plaintiffs’ products, and are thus ineligible for

protection under the trademark statute.

Unregistered trade dress like the Asserted Trade Dress is protected under the Lanham Act

if: (1) it provides a precise expression of the character and scope of what is claimed; (2) it is not

functional and (3) the trade dress is distinctive -- it has acquired secondary meaning such that the

allegedly infringing product is likely to be confused with the product for which protection is

sought. GeigTech, 352 F. Supp. 3d at 275 (collecting cases). The parties do not dispute that the

Asserted Trade Dress is adequately specified under prong (1), but dispute whether the Asserted

Trade Dress is functional and distinctive under prongs (2) and (3). “If a plaintiff fails to prove

that its purported product design trade dress is nonfunctional, there is no need for a court to

analyze whether it has acquired secondary meaning.” Id. (citing TrafFix Devices, Inc. v.

Marketing Displays, Inc., 532 U.S. 23 (2001)).

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Because trade dress, like trademark law more generally, is intended to promote

competition, it cannot extend to product features that are functional, and thus covered by patent

law’s time-limited monopoly on utilitarian inventions. See id. As the Second Circuit has

explained, “[this] functionality doctrine prevents trademark law, which seeks to promote

competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by

allowing a producer to control a useful product feature.” Sulzer Mixpac AG v. A&N Trading Co.,

988 F.3d 174, 181 (2d Cir. 2021) (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159,

164 (1995)). Accordingly, “[t]rade dress protection must subsist with the recognition that in

many instances there is no prohibition against copying goods and products.” Id. (quoting

TrafFix, 532 U.S. at 29). The Supreme Court has “advised against overextension of trade dress,

noting that ‘product design almost invariably serves purposes other than source identification.’”

Id. (quoting Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 213 (2000)).

In the Second Circuit, “a product feature is considered to be ‘functional’ in a utilitarian

sense if it is (1) essential to the use or purpose of the article, or if it (2) affects the cost or quality

of the article.” Id. at 182 (internal quotation marks omitted). “Product features are essential

when they are dictated by the functions to be performed by the article.” Id. (internal quotation

marks omitted). “A feature affects cost or quality when it permits the article to be manufactured

at a lower cost or constitutes an improvement in the operation of the goods.” Id. (internal

quotation marks omitted). The Supreme Court has observed that a prior utility patent claiming

the same feature that is central to an item of trade dress “has vital significance in resolving the

trade dress claim,” and “is strong evidence that the features therein claimed are functional.”

TrafFix, 532 U.S. at 29; accord Rubik’s Brand Ltd. v. Flambeau, Inc., No. 17 Civ. 6559, 2021

WL 363704, at *8 (S.D.N.Y. Jan. 31, 2021). Because the Asserted Trade Dress is not published

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on the Federal Trademark Register, Plaintiffs bear the burden of showing its design elements are

not functional. 15 U.S.C. § 1125(a)(3).

Plaintiffs provide two images of products allegedly embodying the Asserted Trade Dress.

Plaintiffs’ Products Embodying the Asserted Trade Dress

Plaintiff’s written description of the Asserted Trade Dress identifies four specific features: (1) a

shower curtain lacking hooks above the upper edge, providing a neat and orderly appearance; (2)

a row of rings or pairs of rings along the upper edge of the curtain that are attached to the

curtain; (3) a slit or gap in each ring and (4) rings or pairs of rings, and associated slits or gaps,

that provide an organized and symmetrical repeating visual pattern.

Plaintiffs have not met their burden of making a “clear and substantial” showing that

these features are nonfunctional, as they must to obtain a preliminary injunction. Instead, these

features appear to be amply influenced by engineering necessity. Plaintiffs’ ’232 Patent touts the

functional benefits of a sheet containing a set of holes or pairs of holes along its upper edge, or

“end portion,” which are organized in a symmetrical manner or regularly spaced so as to

“improve the support of the [curtain] accessory along its length,” and the inclusion of an “open

path between two openings . . . accomplished by respective cuts through the respective pairs of

rings and the sheet” that enables the key advance set forth in the patent: “a simple and effective

accessory for attaching a curtain or the like to a rod while maintaining an aesthetic appearance”

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by “easily attaching a curtain or the like to a rod without the necessity of threading the rod.” A

side-by-side comparison shows the ’232 Patent’s illustration of the invention’s preferred

embodiment is largely identical to one of Plaintiffs’ examples of the Asserted Trade Dress.

’232 Patent Figures 1 and 3

Asserted Trade Dress

Similarly, Plaintiffs’ ’248 Patent repeatedly describes the benefits of a hanging sheet

containing fastener elements such as rings with “the slit extending through the fastener” in order

to “facilitate[] the attachment of the material to [a] rod without the need to remove the rod from

its supports” which “may be used to provide certain patterns of flow of a curtain (e.g. the way it

folds, hangs, etc)” or arranged in a regular pattern to “eliminate the problem of possible

drooping” caused by “a large spacing between the rings.” A side-by-side comparison of the ’248

Patent’s preferred embodiment with one of Plaintiffs’ examples of the Asserted Trade Dress

shows that the two are largely identical.

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’248 Patent Figure 6 Asserted Trade Dress

Both the ’232 and ’248 Patent repeatedly identify the key point of novelty in their

claimed inventions as the inclusion of a row of rings, each containing a slit that allows a curtain

to be installed and supported on a rod without detaching that rod, and without the need for

external hooks or clips that would present a disorderly or un-aesthetic appearance. Because the

Asserted Trade Dress claims those features, Plaintiffs have not met their burden of showing non-

functionality. Sulzer Mixpac, 988 F.3d at 181. Plaintiffs thus cannot show a “clear and

substantial” likelihood of success on the merits, and it is not necessary to address the parties’

arguments regarding the Asserted Trade Dress’s distinctiveness. 3

3
Some of the Plaintiffs have brought claims under the Asserted Trade Dress in a separate action
in this District, Focus Products Group International, LLC v. Kartri Sales Co., Inc., No. 15 Civ.
10154 (S.D.N.Y.). The court granted the defendants summary judgment on the trade dress
claim, holding that the Asserted Trade Dress was generic and had not acquired secondary
meaning. See Kartri, 454 F. Supp. 3d 229, 250, 253 (S.D.N.Y. 2020), reconsideration denied,
2020 WL 2115344 (May 3, 2020). The court did not reach the issue of functionality. See Kartri,
454 F. Supp. 3d 229, 250, 253 (S.D.N.Y. 2020), reconsideration denied, 2020 WL 2115344
(May 3, 2020). On a second motion for reconsideration, the court found for Plaintiffs on the
functionality issue because the defendant had failed to put forth evidence to put the fact in issue,
but denied Plaintiffs summary judgment on the trade dress claim, finding that the secondary
meaning element presented a question of fact for the jury. Kartri, 2021 WL 22630, at *3-*5
(S.D.N.Y. Jan. 4, 2021). The case is distinguishable because the court in Kartri was bound by
the evidentiary record before it. To the extent that the Kartri analysis is otherwise inconsistent
with this Opinion and Order, this court respectfully disagrees.
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In the face of the Supreme Court’s observation that a prior utility patent “is strong

evidence that the features therein claimed are functional,” TrafFix, 532 U.S. at 29, Plaintiffs first

argue that the Asserted Trade Dress cannot be functional because the ’232 and ’248 Patents

provide alternative embodiments of the claimed inventions that do not resemble the Asserted

Trade Dress. Plaintiffs rely on a non-binding Second Circuit decision, Cartier, Inc. v. Sardell

Jewelry, Inc., which declined to find functionality because of “many alternative designs that

could perform the same function.” 294 F. App’x 615, 621 (2d Cir. 2008) (summary order).

Plaintiffs’ reliance on Cartier is unpersuasive. Unlike that case, this case involves Plaintiffs’

own expired utility patents that directly claimed the specific features integral to the Asserted

Trade Dress. In those circumstances, courts have declined to “engage . . . in speculation about

other design possibilities . . . which might serve the same purpose,” because “the functionality of

the [] design means that competitors need not explore whether other [configurations] might be

used . . . it is the reason the device works. Other designs need not be attempted.” TrafFix, 532

U.S. at 33-34. The same reasoning applies here. Plaintiffs’ use of regularly spaced rings and

associated slits at the top of a sheet of material serve the functional purpose of enabling the sheet

to be hung on a fixed rod without using unsightly clips or hooks. Whether another design serves

the same purpose does not render Plaintiffs’ engineering-driven ring-and-slit design non-

functional. Finding otherwise would create the exact issue the Supreme Court has repeatedly

cautioned against: overextending patent law’s monopoly on useful product features through the

instrument of trade dress. See TrafFix, 532 U.S. at 29; Qualitex, 514 U.S. at 164-65.

Plaintiffs also note in passing that the Asserted Trade Dress covers aesthetic aspects of

their products. The Supreme Court has noted that where a party asserts trade dress on a product

covered by a utility patent “to protect arbitrary, incidental, or ornamental aspects of features of

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[the] product found in the patent claims,” then “a different result might obtain” as to

functionality. TrafFix, 532 U.S. at 34; accord Schutte Bagclosures Inc. v. Kwik Lok Corp., 193

F. Supp. 3d 245, 261-62 (S.D.N.Y. 2016), aff’d, 699 F. App’x 93 (2d Cir. 2017) (summary

order). That principle does not apply here. The Asserted Trade Dress claims to provide aesthetic

features to create a “neat and orderly appearance” -- by (1) eliminating the need for hooks above

the curtain, (2) providing a row of rings along the upper portion of the curtain, arranged in a

manner co-planar with the curtain and (3) providing that the rings and slits should be arranged in

“an organized and symmetrical repeating visual pattern.” To the extent Plaintiffs claim these

portions of the Asserted Trade Dress constitute arbitrary, incidental or ornamental features of the

’232 and ’248 Patents, the argument is unpersuasive. The patents themselves explain how these

features are driven by their functionality.

The ’232 Patent notes that its design “overcome[s] the difficulty in the prior art of easily

attaching a curtain or the like to a rod without . . . the use of support clips while maintaining an

attractive appearance to the mounted curtain” (emphasis added). The ’232 Patent also explains

the functional benefits of the Asserted Trade Dress’s claim to regularly-spaced rings oriented co-

planar to the sheet, stating that (1) a “plurality of pairs of openings . . . improve the support of

the [sheet] along its length” (emphasis added), (2) “a spacing of 10 to 20 cm. can be used for

both” and (3) that the rings “reinforce the opening [in the sheet]” to prevent tearing and ripping

while “improv[ing] the movement of the mounted sheet on the rod as well as improv[ing] the

engagement of the holes with the rod.”

The ’248 Patent states that its design (1) “allows a curtain . . . to be attached to a

mounting rod without the need for hanging support hooks” (emphasis added), (2) that the slits

may be arranged “to provide certain patterns of flow of a curtain (e.g. the way it folds, hangs,

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etc)” and to ensure that the curtain hangs concave to the wall, which contains water more

effectively in the shower while blocking more light and (3) that the use of spaced rings allows

“the width and the spacing of the flow of the curtain to be adjusted more readily.” These

disclosures demonstrate that the Asserted Trade Dress’s disclosure of rings and slits co-planar to

the curtain surface, whether arranged in an attractive, symmetric or repeated manner, is driven

by functional considerations described in the ’232 and ’248 Patents. Accordingly, those features

of the Asserted Trade Dress are not merely arbitrary, incidental or ornamental.

B. Irreparable Harm

Plaintiffs have not made an adequate showing of irreparable harm. “Irreparable harm is

injury that is neither remote nor speculative, but actual and imminent and that cannot be

remedied by an award of monetary damages.” New York v. United States Dep’t of Homeland

Sec., 969 F.3d 42, 86 (2d Cir. 2020); see also Takeda, 967 F.3d at 1349.

Plaintiffs claim that irreparable harm arises from the fact that Plaintiffs and Defendant are

competing for the same retailers and customers. Plaintiffs identify no reason why damages

would be insufficient to compensate them for any lost business or customers and instead quantify

a portion of lost revenue they attribute to Defendant’s competition. See, e.g., Tait v. Accenture

PLC, No. 18 Civ. 10847, 2019 WL 2473837, at *3 (S.D.N.Y. June 13, 2019) (finding no

irreparable harm where plaintiff claimed financial harm and lost business opportunities, and

collecting cases where plaintiffs showed irreparable harm, which involved “a qualitatively

different harm from monetary loss standing alone”).

Plaintiffs also: (1) identify a potential loss of business from their top retail customer to

Defendant’s allegedly-infringing product lines; (2) speculate that the retail customer will launch

private lines using Defendant’s products that further harm Plaintiffs’ market position; (3) state

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that Plaintiffs’ business goodwill might be eroded by confusion with Defendant’s products; (4)

claim Plaintiffs could lose potential follow-on business opportunities because their shower

curtain products act as entry points for retailers and (5) speculate that Plaintiffs’ entire business is

at risk from Defendant’s alleged infringement. 4 Such speculative issues are not the type of actual

and imminent harm that justify the extraordinary remedy of a preliminary injunction. See

Takeda, 967 F.3d at 1349-50; New York v. United States Dep’t of Homeland Sec., 969 F.3d at 86.

Plaintiffs have not shown they will suffer irreparable harm absent a preliminary injunction. For

that reason, this Opinion and Order does not address the parties’ arguments as to whether

Plaintiffs have established a “sufficiently strong causal nexus” between their claimed harms and

Defendant’s alleged patent infringement. Bio-Rad Lab’ys, Inc. v. 10X Genomics Inc., 967 F.3d

1353, 1378 (Fed. Cir. 2020).

C. Balance of Equities and Public Interest

In balancing the equities, courts must weigh the harm to the movant if the injunction is

not granted against the harm to the non-moving party if the injunction is granted. Ticor Title Ins.

Co. v. Cohen, 173 F.3d 63, 68 (2d Cir. 1999); accord In re Tronox Inc., No. 14 Civ. 5495, 2014

WL 5825308, at *9 (S.D.N.Y. Nov. 10, 2014). The equities here tip slightly in favor of Plaintiffs.

As competitors, both parties will lose some degree of business and goodwill if an injunction

issues. However, Plaintiffs identify their shower curtain line of products as central to their

4
Plaintiffs cite cases stating that loss of an entire business can be an irreparable harm. Those
cases involved an imminent risk of loss not present here. Plaintiffs state that they have lost (1)
several hundred thousand dollars in revenue from one of their major retail customers, which they
speculate is due to competition from Defendant’s competing products and (2) business to
Defendant from their largest retail customer in the field of slipcovers. From those claims,
Plaintiffs extrapolate that the customer’s shower curtain business “could easily be next” and thus
their entire business is at stake. These claims are too speculative to sustain a showing of
irreparable harm at the preliminary injunction stage.
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business, whereas Defendant does not dispute that the Accused Products constitute a small

portion of its business.

The public interest would not be served by an injunction. Enjoining sales of the Accused

Products would be premature given that (1) the Accused Products appear plainly different from

the D091 Patent and (2) functional considerations likely underlie the Asserted Trade Dress, and

so an injunction would potentially extend the utilitarian protection of the expired ’232 and ’248

Patents beyond their lifespan.

IV. CONCLUSION

All of the preliminary injunction factors, except the balance of equities, weigh against a

preliminary injunction. Accordingly, Plaintiffs’ motion for a preliminary injunction is denied.

The Clerk of Court is respectfully directed to close the motion at Docket No. 24.

Dated: May 26, 2021

New York, New York

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