Shenzhen Tange Li'An E-Commerce v. Drone Whirl - Complaint

Case 1:20-cv-00738 Document 1 Filed 07/09/20 Page 1 of 14
UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF TEXAS
Austin Division
SHENZHEN TANGE LI’AN E-COMMERCE

CO., LTD. and ITOMTE, INC.,
Case No.: 1:20-cv-738
Plaintiffs,
v.
JURY TRIAL DEMANDED
DRONE WHIRL LLC d/b/a
7PRODUCTGROUP and TATIANA
MIRONOVA,
Defendants.
COMPLAINT
Plaintiffs, Shenzhen Tange Li’An E-Commerce Co., Ltd. (“Shenzhen”) and ITOMTE,
Inc., (“ITOMTE”) (collectively, as “Plaintiffs”), by and through their counsel, for their
Complaint against the Defendants, Drone Whirl LLC (“Drone Whirl”) and Tatiana Mironova
(“Mironova”) (collectively, as “Defendants”) state as follows:
NATURE OF THE ACTION
1. This is an action for a declaratory judgment of invalidity and unenforceability of
U.S. Patent No. D819,756 (attached hereto as Exhibit A) arising under the Declaratory Judgment
Act, 28 U.S.C. §§ 2201 and, 2202, and the patent laws of the United States, including Title 35,
United States Code. In this action, Plaintiffs also assert related claims under Texas law for unfair
competition and tortious interference with contract.
PARTIES
2. Plaintiff Shenzhen Tange Li'An E-Commerce Co., Ltd. (hereinafter referred to as
"Shenzhen") is a foreign limited liability company registered and headquartered in China.

3. Shenzhen designs, manufactures, and wholesales toys and other goods to
customers in the United States through local distributors.
4. Plaintiff ITOMTE, Inc. is a California corporation that conducts business across
the United States, including Texas. ITOMTE Inc.’s headquarters and principal place of business
is 22 Columbus Avenue, Kenilworth, NJ 07033.
5. ITOMTE Inc. sells and distributes Shenzhen’s products through online channels
including Amazon and other e-commerce websites. Today, Shenzhen operates an Amazon
storefront under the name ITOMTE. In 2016, ITOMTE Inc. operated an Amazon storefront
under the name HI GNOME.
6. Defendant Drone Whirl, LLC d/b/a 7ProductsGroup ("Drone Whirl”) is a
Delaware corporation that is registered as a taxable entity Texas. On information and belief, it
maintains a regular and established place of business in Austin, Texas at 8600 N Farm-to-Market
620. Drone Whirl conducts business in the state of Texas and elsewhere, including, but not
limited to, business conducted by means of an internet website and through e-commerce
websites, wherein Defendants sell products.
7. Defendant Tatiana Mironova (“Mironova”) is an individual residing in Austin,
Texas at 8600 N Farm-to-Market 620. Mironova is also an officer, representative, and/or
shareholder of Defendant Drone Whirl, LLC and the representative agent of the company.
JURISDICTION AND VENUE
8. This action arises under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and
2202, and the patent laws of the United States, 35 U.S.C. § 1 et seq.
9. This court has original jurisdiction over the subject matter of this action pursuant
to 28 U.S.C. §§ 1331, 1338(a), 2201, and 2202. This court has subject matter jurisdiction arising
2
under Plaintiffs’ state law claims pursuant to 28 U.S.C. § 1367(a).
10. Personal jurisdiction over Defendants is proper in this judicial district because, on
information and belief, Defendants have sufficient contacts with this judicial district and/or
regularly conducts business within this judicial district. On information and belief, Defendant
Drone Whirl maintains a regular and established place of business in this district, and it directly
and/or through its agents distribute, offer for sale, sell and/or advertise its products and services
within the State of Texas. Defendant Mironova resides within this district and filed the
complaints alleged herein within the State of Texas.
11. Defendants’ acts have caused injury to Plaintiffs, its intellectual property,
reputation, and goodwill, and caused injury to other residents within the State of Texas and this
judicial district.
12. Venue is proper in this district under 28 U.S.C. § 1391(b) and (c) because
Defendants reside in or maintain a regular and continuous place of business in this district. As
well, Defendant is subject to personal jurisdiction in this judicial district, and the wrongful acts
and injury to Plaintiff occurred in this judicial district.
STATEMENT OF FACTS
13. Shenzhen designs, manufactures, and wholesales consumer products, including
toy products, to customers in the United States.
14. In 2016, Shenzhen conceived of a new design for a stuffed toy inspired by a
gnome-like character from Swedish lore known as a “tomte” (hereinafter referred to as “Tomte
Toy”). Based on this original design, Shenzhen began manufacturing the Tomte Toy.
15. In September 2016, Shenzhen contracted with ITOMTE Inc., a local distributor
based in Kenilworth, NJ, to sell and fulfill orders for the Tomte Toy in the United States.
3
16. The Tomte Toy was marketed and offered for sale on various online e-commerce
platforms, including Amazon.com. On the Amazon platform, Shenzhen offered its products for
sale under the virtual storefront “HI GNOME.”
17. The first public listing for the Tomte Toy on the Amazon platform was available
to the public in September 2016. This listing which offered the Tomte Toy for sale was the first
public disclosure of its design and included images of the Tomte Toy sufficient to enable a
person of ordinary skill to reproduce the design.
18. On November 1, 2016, Defendant Tatiana Mironova (hereinafter, “Mironova”)
contacted Shenzhen through its HI GNOME store requesting to distribute the Tomte Toy. After
the initial inquiry, Shenzhen and Mironova continued their correspondence over email. In these
email conversations, Mironova identified herself as the founder of 7ProductGroup.
7ProductGroup is the dba for Drone Whirl, LLC.
19. On November 14, 2016, Mironova placed an order of 400 units of the Tomte Toy
with Shenzhen.
20. Mironova received her first shipment of Tomte Toy products no later than
November 22, 2016.
21. Following the initial purchase, Mironova continued to place orders with Shenzhen
through the HI GNOME Amazon store. In 2016, Mironova placed at least thirteen orders for
Tomte Toy products.
22. Amazon.com uses Amazon Standard Identification Numbers (ASINs), consisting
of a series of ten letters and/or numbers, to identify products on its platform. Shenzhen
manufactures Tomte Toys in different color variations and each variation is assigned its own
unique ASIN.
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23. For example, on December 21, 2016, Mironova placed an order for a red Tomte
Toy having an assigned ASIN of B01M5AV83M. A few days later, on December 25 and
December 29, Mironova placed two additional orders for the same product having the same
ASIN.
24. On January 2, 2017, Mironova placed an order for a green Tomte Toy having an
assigned ASIN of B01MCT75MW.
25. On March 16, 2017, Mironova filed U.S. Design Patent Application No.
29/597,404 (hereinafter referred to as the “’404 application”), which issued and published as
U.S. Design Patent No. D819,756 (hereinafter referred to as the “’756 patent”) to Tatiana
Mironova on June 5, 2018. In the accompanying inventor declaration, Mironova claimed that she
was the inventor of the subject matter claimed in the ’404 application.
26. As set forth below, the ’404 application claims the identical ornamental design of
the Tomte Toy that Mironova purchased from Shenzhen on December 21, 2016 and January 2,
2017. Mironova made these purchases at least two months prior to filing the ’404 application.
Tomte Toy Tomte Toy Design Claimed by

(ASIN: B01M5AV83M) (ASIN: B01MCT75MW) Mironova in
Purchased by Mironova Purchased by Mironova the ’404 Application
on December 21, 2016 on January 2, 2017 on March 16, 2017
5
27. The Tomte Toy was designed with a hat made from soft, malleable fabric so that
the hat could be creased and shaped as desired.
28. Shenzhen did not authorize Mironova to file the ’404 application. Nor did
Shenzhen assign, license, transfer, or otherwise grant Mironova any ownership or other interest
in The Tomte Toy design.
29. Despite this, Mironova proceeded with her patent application, and the USPTO
issued her a design patent on June 5, 2018. On information and belief, Mironova is the current
owner of the ’756 patent.
30. On April 5, 2017, Shenzhen discovered that Defendants were selling a gnome toy
(hereinafter referred to as “Defendants’ Toy”) resembling the Tomte Toy on Amazon under
Drone Whirl’s d/b/a name 7ProductGroup. Furthermore, Defendants were selling Defendants’
Toy using the ITOMTE mark conceived by ITOMTE Inc., thereby giving consumers the false
impression that Defendants’ Toy was the same Tomte Toy originally produced by Shenzhen.
31. Shenzhen contacted Mironova about the origins of Defendants’ Toy. In response,
Mironova indicated that she took the design of the Tomte Toy to a competing manufacturer to
produce reproductions of the Tomte Toy. In the same conversation, Mironova also revealed to
Shenzhen for the first time that she had filed the ’404 application claiming the design of the
Tomte Toy.
32. On April 13, 2017, Shenzhen filed U.S. Design Application No. 29/600,526
claiming the ornamental design of the Tomte Toy.
33. On May 22, 2017, Plaintiffs delivered a letter to Defendants demanding that they
cease selling Defendants’ Toy and cease using the ITOMTE mark.
34. ITOMTE Inc. is the sole licensed distributor of the Tomte Toy authorized by
6
Shenzhen.
35. On December 15, 2017, Plaintiffs filed a complaint against Defendants in the
Eastern District of New York for, inter alia, copyright infringement, trademark infringement, and
unfair trade practices which was voluntarily dismissed without prejudice by Plaintiffs on January
25, 2018. See Shenzhen Tange Li’An E-Commerce Co., Ltd. et al v. Drone Whirl LLC et al, Case
No. 2:17-cv-07320-ADS-SIL (EDNY).
36. In opposition to a motion for temporary restraining order and preliminary
injunction, Mironova filed a declaration containing a recitation of events prior to her filing of the
’404 application. In the declaration, Mironova declares that she first purchased the Tomte Toy as
a “test product” and then “made several purchases from [Shenzhen] late 2016.”
37. On May 29, 2019, Shenzhen filed a petition to institute a derivation proceeding
labeled DER2019-00005 (“Derivation Petition”) at the Patent Trial and Appeal Board (the
“Board”). Shenzhen alleges that Mironova, the owner of the ’756 patent, is not an original
inventor of the claimed subject matter therein and that Shenzhen is the original inventor.
Shenzhen requests that the Board amend inventorship of the ’756 patent accordingly or grant a
new patent to Shenzhen. The petition is currently pending before the Board.
38. On June 18, 2019, counsel for Mironova sent a letter to Shenzhen seeking to settle
the matter before the Board, but failed to identify any facts characterizing Mironova as the
inventor of the subject matter claimed in the ’756 patent.
39. On information and belief, on October 4, 2019, Mironova filed at least seven
intellectual property complaints against various product listings for the Tomte Toy against
Shenzhen’s Amazon seller account alleging violations of the ’756 patent and copyright Mironova
claims is associated with the ’756 patent.
7
40. On October 4, 2019, Shenzhen received notices from Amazon informing
Shenzhen that Amazon has removed product listings associated with Mironova’s complaints.
41. As a result of the complaints filed by Mironova, Amazon delisted the accused
products from its website and suspended Plaintiffs’ Amazon store. To date, all Shenzhen
products remain delisted.
42. Plaintiffs derive the vast majority of their revenue from the Amazon platform.
Furthermore, based on historical sales figures, Plaintiffs revenues increase exponentially over the
calendar year, culminating in a holiday season when demand is greatest. Suspension and
continued suspension of Plaintiffs’ Amazon store has caused and will continue to cause financial
harm to the Plaintiffs.
43. If Defendants are allowed to continue its current practices and attempts to
interfere with Plaintiffs’ existing business relationships in Texas and nationwide, Plaintiffs will
continue to suffer irreparable harm to its reputation, goodwill, and business relationships.
Defendants’ actions have not only caused consumer confusion, but has tarnished Plaintiffs’
reputation through the false association and poor quality of Defendants’ infringing products.
Suspension of Plaintiffs’ stores has and will continue to undermine the trust and reliability that
customers associate with Plaintiffs’ reputation, brand, and products. In addition, continued
suspension of Plaintiffs’ store will continue to adversely affect their reputation and store ranking
on the Amazon platform.
44. There is a substantial controversy between Plaintiffs and Defendants. Plaintiffs
and Defendants have adverse legal interests.
45. As set forth in the foregoing statement of facts, there is a justiciable controversy
warranting declaratory relief.
8
CAUSES OF ACTION
COUNT ONE
(Declaratory Judgment of Invalidity of U.S. Patent No. D819,756)
46. Plaintiffs repeat and reallege paragraphs 1 through 45, as if fully set forth herein.
47. As a result of the acts described in the preceding paragraphs, there exists a
controversy of sufficient immediacy and reality to warrant the issuance of a declaratory
judgment of invalidity.
48. Shenzhen placed its first public listing for its Tomte Toy in September 2016
which included images of the Tomte Toy and offered the product for sale. The images of the
Tomte Toy were sufficient to enable a person of ordinary skill to reproduce the design.
49. Mironova placed multiple orders from Shenzhen for the Tomte Toy and received
the product no later than November 22, 2016.
50. Under 35 U.S.C. 102(a)(1), an applicant is not entitled to a patent if the claimed
subject matter was publically available before the effective filing date of the application.
51. Mironova filed the ’404 application on March 16, 2017, approximately six
months after Shenzhen first posted its listing for the Tomte Toy and approximately four months
after receiving a physical Tomte Toy specimen.
52. The ’404 application claims the ornamental design of the Tomte Toy.
53. Because Shenzhen’s listing for the Tomte Toy was publically available and
Mironova purchased and received the Tomte Toy before the filing of the ’404 application, the
claim of the ’756 patent is invalid. Indeed, the design Mironova claims in the patent is a copycat
of the Tomte Toy she purchased from Plaintiffs.
54. As alleged above, an ongoing controversy between the parties exists over rights in
the design claimed in the ‘756 patent and Defendants’ misuse of the patent to exclude Plaintiff
9
from selling its Tomte toy.
55. A judicial declaration is necessary and appropriate so that Plaintiffs may ascertain
their rights regarding the validity of the ’756 Patent.
56. Plaintiffs are entitled to a declaratory judgment that the claims of the '756 Patent
are invalid under one or more provisions of 35 U.S.C. §§ 102 and/or 103.
COUNT TWO
(Declaratory Judgment of Unenforceability of U.S. Patent No. D819,756)
58. As a result of the acts described in the preceding paragraphs, there exists a
controversy of sufficient immediacy and reality to warrant the issuance of a declaratory
judgment of unenforceability.
59. A judicial declaration is necessary and appropriate so that Plaintiffs may ascertain
their rights regarding the enforceability of the ’756 Patent.
60. Plaintiffs are entitled to a declaratory judgment that the ’756 Patent is
unenforceable due to inequitable conduct before the United States Patent and Trademark Office
(USPTO) as further described with particularity below.
61. The first message sent to Plaintiff Shenzhen from Defendant Mironova was an
Amazon message on November 1, 2016 in response to Shenzhen’s public listing of the Tomte
Toy product.
62. Defendant Mironova placed multiple orders for the Tomte Toy from Shenzhen
and received the Tomte Toy no later than November 22, 2016.
63. Defendant Mironova admitted in a declaration in another lawsuit between
Plaintiffs and Defendants that she made multiple purchases of the Tomte Toy in 2016 from
Shenzhen.
10
64. All of this shows that Mironova knew before she filed the ’404 application that
Shenzhen was the inventor of the design claimed in the ’756 patent.
65. Yet Defendant Mironova claimed in her declaration supporting the ’404
application that she was the original inventor of the Tomte Toy ornamental design claimed in the
application.
66. Based on these facts, a specific intent to deceive the USPTO is the single most
reasonable inference able to be drawn from Mironova’s conduct. The intentional
misrepresentation of herself as the inventor of the subject matter claimed in the ’404 application
constitutes a breach of the duty of candor owed to the Patent Office.
67. Thus, Plaintiffs are entitled to a declaratory judgment that Mironova’s inequitable
conduct renders the claim of the ’756 patent unenforceable.
COUNT THREE
(Unfair Competition Under Texas State Law)
69. Plaintiffs have invested significant time, labor, and resources in creating,
manufacturing, marketing, and selling its Tomte Toy product.
70. Defendants have taken unfair advantage of and misappropriated Plaintiffs’
intellectual property through its unauthorized filing of a patent application claiming Plaintiffs’
original design.
71. Further, Defendants use of its fraudulently obtained patent to lodge complaints
against Plaintiffs with Amazon has caused and is continuing to cause Plaintiff economic loss
through lost sales.
72. Defendants also have caused and continued to cause Plaintiff irreparable damage
to its reputation and goodwill to the ITOMTE brand.
11
73. Plaintiffs are entitled to recover damages under Texas law as a result of
Defendants’ unfair competition.
COUNT FOUR
(Tortious Interference with Existing Business Relationships Under Texas State Law)
75. Plaintiffs enjoys several existing contractual and other existing business
relationships with customers and businesses in Texas and other states to market and sell its
Tomte Toy products, including Amazon.com Inc.
76. Defendants have willfully and intentionally interfered with those existing
relationships by misrepresenting Plaintiffs’ intellectual property as its own.
77. Defendants use of its fraudulently obtained patent to lodge complaints against
Plaintiffs to Amazon.com has and is continuing to interfere with Plaintiffs’ relationship with
Amazon.com.
78. Defendants’ acts of interference have and continue to proximately cause
Plaintiffs’ damage in terms of lost sales due to the delisting of Plaintiffs’ products as a result of
Defendants’ interference as well as losing goodwill with existing customers causing further
economic loss.
79. Plaintiffs have incurred actual damage and loss as a result of Defendants’ acts,
including lost sales and suffering irreparable harm to its reputation and goodwill.
80. Thus, Plaintiffs are entitled to recover damages for Defendants’ tortious acts.
DEMAND FOR JURY TRIAL
81. Plaintiffs demand a trial by jury on all issues so triable.
PRAYER FOR RELIEF
Plaintiffs request judgment against Defendants as follows:
12
a) Declaring that the sole claim of the ’756 Patent is invalid;
b) Declaring that the ’756 Patent is unenforceable;
c) For preliminary and permanent injunctive relief against Defendants, including
without limitation enjoining Defendants from requesting that Amazon and others delist, block, or
remove Plaintiffs and Plaintiffs’ Tomte products.
d) For actual damages in such amount as may be found, or otherwise permitted by
law;
e) For an accounting of and the imposition of a constructive trust with respect to
Defendants’ profits attributable to their infringing and fraudulent activity;
f) Declaring Plaintiffs as the prevailing parties and this case as exceptional, and
awarding Plaintiffs their reasonable attorneys' fees, pursuant to 35 U.S.C. § 285 or any other
applicable statute or law;
g) That Defendants be ordered to pay all fees, expenses, and costs associated with
this action; and
h) Awarding such other and further relief as this Court deems just and proper.
Dated: July 9, 2020 Respectfully submitted,
/s/ JT Morris
JT Morris
Texas State Bar No. 24094444
jt@jtmorrislaw.com
Ramzi Khazen
Texas State Bar No. 24040855
ramzi@jtmorrislaw.com
JT Morris Law, PLLC
1105 Nueces Street, Suite B
Austin, Texas 78701
Tel: 512-717-5275
Fax: 512-582-2948
13
Jimmy Zhou (pro hac vice

application forthcoming)
Law Office of Jimmy Zhou, LLC
221 River Street, 9th Floor
Hoboken, NJ 07030
Tel: 201-857-7528
Fax: 201-812-9546
jimmy@jzhoulaw.com
John Handy (pro hac vice

application forthcoming)
IP Advanced LLC
2 Burlington Woods Drive, Suite 100
Burlington, MA 01803
Tel: 781-365-8250
Fax: 781-365-9499
jhandy@ipadvanced.com
Attorneys for Plaintiffs

Shenzhen Tange Li’An E-Commerce
Co., Ltd. and ITOMTE, Inc.
14
Case 1:20-cv-00738 Document 1-1 Filed 07/09/20 Page 1 of 9

EXHIBIT A
TO COMPLAINT
(US Pat. No.
D819,756)
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Shenzhen Tange Li'An E-Commerce v. Drone Whirl - Complaint

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Case 1:20-cv-00738 Document 1 Filed 07/09/20 Page 1 of 14

UNITED STATES DISTRICT COURT

SHENZHEN TANGE LI’AN E-COMMERCE

(“Mironova”) (collectively, as “Defendants”) state as follows:

NATURE OF THE ACTION

1. This is an action for a declaratory judgment of invalidity and unenforceability of

competition and tortious interference with contract.

2. Plaintiff Shenzhen Tange Li'An E-Commerce Co., Ltd. (hereinafter referred to as

"Shenzhen") is a foreign limited liability company registered and headquartered in China.

3. Shenzhen designs, manufactures, and wholesales toys and other goods to

customers in the United States through local distributors.

4. Plaintiff ITOMTE, Inc. is a California corporation that conducts business across

is 22 Columbus Avenue, Kenilworth, NJ 07033.

under the name HI GNOME.

6. Defendant Drone Whirl, LLC d/b/a 7ProductsGroup ("Drone Whirl”) is a

websites, wherein Defendants sell products.

7. Defendant Tatiana Mironova (“Mironova”) is an individual residing in Austin,

Texas at 8600 N Farm-to-Market 620. Mironova is also an officer, representative, and/or

JURISDICTION AND VENUE

under Plaintiffs’ state law claims pursuant to 28 U.S.C. § 1367(a).

complaints alleged herein within the State of Texas.

and injury to Plaintiff occurred in this judicial district.

13. Shenzhen designs, manufactures, and wholesales consumer products, including

toy products, to customers in the United States.

sale under the virtual storefront “HI GNOME.”

person of ordinary skill to reproduce the design.

18. On November 1, 2016, Defendant Tatiana Mironova (hereinafter, “Mironova”)

email conversations, Mironova identified herself as the founder of 7ProductGroup.

7ProductGroup is the dba for Drone Whirl, LLC.

November 22, 2016.

Tomte Toy products.

22. Amazon.com uses Amazon Standard Identification Numbers (ASINs), consisting

assigned ASIN of B01MCT75MW.

Tomte Toy Tomte Toy Design Claimed by

the hat could be creased and shaped as desired.

in The Tomte Toy design.

owner of the ’756 patent.

claiming the ornamental design of the Tomte Toy.

No. 2:17-cv-07320-ADS-SIL (EDNY).

36. In opposition to a motion for temporary restraining order and preliminary

inventor of the subject matter claimed in the ’756 patent.

claims is associated with the ’756 patent.

40. On October 4, 2019, Shenzhen received notices from Amazon informing

products remain delisted.

harm to the Plaintiffs.

on the Amazon platform.

44. There is a substantial controversy between Plaintiffs and Defendants. Plaintiffs

and Defendants have adverse legal interests.

warranting declaratory relief.

controversy of sufficient immediacy and reality to warrant the issuance of a declaratory

the product no later than November 22, 2016.

after receiving a physical Tomte Toy specimen.

of the Tomte Toy she purchased from Plaintiffs.

from selling its Tomte toy.

their rights regarding the validity of the ’756 Patent.

controversy of sufficient immediacy and reality to warrant the issuance of a declaratory

their rights regarding the enforceability of the ’756 Patent.

(USPTO) as further described with particularity below.

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