Case 1:23-cv-01563-MSN-LRV Document 18 Filed 12/07/23 Page 1 of 20 PageID# 127

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA
ALEXANDRIA DIVISION

THOUSAND OAKS BARREL CO., LLC, a

Virginia limited liability company, Case No. 1:23-cv-01563-MSN-LRV

Plaintiff,

v.

THE PARTNERSHIPS, COMPANIES, and

UNINCORPORATED ASSOCIATIONS
IDENTIFIED ON SCHEDULE A,

Defendants.

DEFENDANT DIGITAL DISTILLERY LLC’S MEMORANDUM

OF LAW IN SUPPORT OF EMERGENCY MOTION TO
DISSOLVE TEMPORARY RESTRAINING ORDER

Defendant Digital Distillery LLC dba Aged & Charred (“Digital Distillery”) (Defendant

No. 11 on Schedule A) submits this Memorandum of Law in Support of its Emergency Motion to

Dissolve the Temporary Restraining Order against Digital Distillery (the “Motion”).

I. INTRODUCTION

Patent infringement is famously regarded as a “fact-intensive issue,” requiring a detailed

comparison of an asserted patent claim to an accused device. But in this case, Plaintiff Thousand

Oaks Barrel Co., LLC (“Plaintiff”) ignores the precise nature of patent law in favor of sweeping

generalizations applied against scores of competitors. Incredibly, Plaintiff accuses 161 different

Defendants—and 236 different product listings—of infringing U.S. Patent No. 11,744,256 (the
Case 1:23-cv-01563-MSN-LRV Document 18 Filed 12/07/23 Page 2 of 20 PageID# 128

“’256 Patent”), in violation of 35 U.S.C. § 299.1 And Plaintiff brings this lawsuit—in the midst of

the holiday shopping season—for the clear purpose of doing violence to its legal competition.

Incredibly, in seeking a TRO, Plaintiff analyzes just one product of the 236 that allegedly infringe

its patent (i.e., the Doe No. 68 product). But the Doe No. 68 product considered by the Court is

not sold by Digital Distillery; and Plaintiff provides the Court with no evidence that Digital

Distillery’s products were (a) the same as the Doe No. 68 product or (b) infringed the ’256 Patent.

In fact, Digital Distillery’s products are not the same and do not infringe the ’256 Patent.

Plaintiff provides zero evidence of anything regarding Digital Distillery or its products

except to generally suggest—in the most conclusory statements possible—that all of the

Defendants infringe its patent.2 As a result, the Court entered a TRO that froze all Digital

Distillery’s Amazon accounts. (See ECF No. 14.) The TRO is causing tens of thousands of dollars

in losses each day to Digital Distillery’s owners and employees in Missouri. The result is

particularly shocking because (a) the Digital Distillery products were not considered by this Court;

(b) its products do not actually infringe the ’256 Patent; and (c) Digital Distillery was provided no

notice or process.

1
35 U.S.C. § 299 prohibits the joinder of multiple defendants in a patent suit unless the right to
relief “is asserted…with respect to or arising out of the same…series of transactions or occurrences
relating to…the same accused product or process” and “questions of fact common to all defendants
will arise in the action.” The statute states that “accused infringers may not be joined in one
action…based solely on allegations that they each have infringed the patent or patents in suit.”
2
Plaintiff’s Motion for TRO generally alleges that “Defendants 1-161 in Schedule ‘A’ of the
Complaint have, under 35 U.S.C. §271(a), directly infringed, and continue to directly infringe,
literally and/or under the doctrine of equivalents, one or more claims of the ’256 Patent by making,
using, testing, selling, offering for sale and/or importing into the United States the Accused
Products.” (See Pl. Mem. Supp. Mot. TRO, ECF No. 3, at 13.)

2
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For the reasons set forth herein, Digital Distillery respectfully requests that the Temporary

Restraining Order (ECF No. 14) be dissolved as against Digital Distillery.

II. STATEMENT OF FACTS

Digital Distillery is a respected seller of craft cocktail accessories based in Kansas City,

Missouri. (See Declaration of Jim Passantino in Support of Emergency Motion to Dissolve

Temporary Restraining Order (“Passantino Decl.”) at ¶ 1.) Founded in 2021, Digital Distillery

does business under the trade name “Aged and Charred” through its own website

(www.AgedandCharred.com) and Amazon store (link). (Id. ¶ 2.) Digital Distillery’s corporate

information and location in Missouri are easily ascertainable from its website or Amazon store.

(Id. ¶ 3.) Digital Distillery sells products for flavoring cocktails including smoker kits, infusion

kits, glassware, barrels for flavoring alcoholic beverages, and associated supplies. (Id. ¶ 7.)

A. Plaintiff’s Allegations Are Not Directed to Digital Distillery Products

There can be no dispute as to whether Digital Distillery sells the “Accused Products”

depicted in the Complaint and in the Plaintiff’s Motion for TRO: it does not. (See Passantino

Decl. ¶ 14; see Compl. ¶ 28, ECF No. 1; see also Pl. Mem. Supp. Mot. for T.R.O., at 14-17, ECF

No. 3.) Not even close. And there is no specific allegation to the contrary in the Complaint; nor

does Plaintiff specifically even allege that Digital Distillery’s products are the same as the

exemplary Accused Product. Rather, Plaintiff weakly (and wrongly) suggests and concludes—

without evidence—that all of the 236 products sold by 161 separate Defendants are necessarily the

same as its exemplar. Plaintiff cites the following as an example product:

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Example Accused Product

(See Compl., ECF No. 1; see also Compl., Exh. B, ECF No. 1.)

But the fundamental problem is that—just as the Defendants are very different from each other—

the products each Defendant sells are also very different from each other. The products have

different shapes, different designs, and different configurations. There is not even the thinnest

allegation that Digital Distillery sells a product functionally or substantially identical to the

Accused Products briefed by the Plaintiff and considered by the Court. And yet, without a factual

basis, Plaintiff asks the Court to conclude—on the ipse dixit of counsel unsupported by any

evidence—that “[t]he remaining Defendants’ accused devices would also directly infringe the

claims of the ’256. (sic)” (See Pl. Mem. Supp. Mot. TRO, at 17.)

Digital Distillery does sell a Smoke Lid product for infusing flavors into alcoholic drinks,

which it calls the “Aged & Charred Cocktail Smoke Lid.” (See Passantino Decl. ¶ 8.) However,

neither Plaintiff’s Motion for TRO (ECF No. 3) nor the Court’s Order (ECF No. 14) considered

any facts regarding the actual Digital Distillery product (the “A&C Smoke Lid”). And as discussed

below, Digital Distillery’s product is different from the Accused Products and under no

interpretation does it infringe the ’256 Patent.

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B. The Exemplary Product Analyzed by Plaintiffs is Not

Representative of Digital Distillery’s Products

The specific allegations in the Complaint are directed to one “exemplary” product out of

236 allegedly infringing products sold by the 161 individual Defendants in this litigation. With

no analysis or factual basis, Plaintiff implicitly asserts that because Defendant Doe No. 68’s

product with ASIN B0BQRG43B6 infringes claim 1 of the ’256 Patent, each of the five products

of Digital Distillery identified as “Accused Products” must also necessarily infringe. No facts and

no analysis were provided to establish how Doe No. 68’s product is similar to Digital Distillery’s

products. No analysis or facts support a conclusion that a separate infringement analysis is not

required. Plaintiff’s fatal pleading deficiency is not surprising: given the extraordinary differences

between the products, no analysis would have withstood even the slightest scrutiny; accordingly,

Plaintiff chose to hide behind its baseless “exemplary” assertion.

The five Digital Distillery products identified by the Plaintiff (“the Accused Digital

Distillery Products”)—products with Amazon ASIN’s B0BWTYM6D3, B0BWTXP6YZ,

B09B47CX61, B09XVJ8T3R and B09BGRT2HM—each include an A&C Smoke Lid with the

same design as that disclosed in the figures of Digital Distillery’s ’D737 Patent. (Passantino Decl.

at ¶¶ 9-10.) Each of these products has many dissimilarities with the so-called “exemplary”

product analyzed by Plaintiffs. Most glaring is the fact that none of the Accused Digital Distillery

Products include an aperture through the wall of the “conduit portion” of the product. As shown

below, the Accused Digital Distillery Products (as represented by Figures 5 and 8 of the ’D737

Patent) do not have the required “aperture” that is identified with respect to the “exemplary”

product of Doe No. 68:

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’256 Patent, Fig. 3 Doe No. 68 Accused Product

Aperture
through wall

’256 Pat., col 4, ln. 6-9

“aperture through wall”
(see ECF 1-4, at p.7)

Digital Distillery Product Digital Distillery Product

no “aperture
through wall” 6 no “aperture
through wall”
Case 1:23-cv-01563-MSN-LRV Document 18 Filed 12/07/23 Page 7 of 20 PageID# 133

As shown above, there is no aperture through the walls of the Digital Distillery product.

Instead, the flow of smoke proceeds down through the bottom of the center of the lid (which, based

on its claim charts (See ECF No. 1-4) Plaintiff would presumably identify as the “conduit.”). The

lack of infringement will be addressed in more detail below.

III. THE COURT SHOULD DISSOLVE THE TEMPORARY RESTRAINING

ORDER AS TO DEFENDANT DIGITAL DISTILLERY

A. The TRO Should be Dissolved Because Plaintiff Failed to Comply

with the Procedural Requirements of Fed. R. Civ. P. 65(b)(1)(B)

Rule 65(b)(1) includes two factual predicates for the issuance of a temporary restraining

order without notice to an adverse party:

(b) TEMPORARY RESTRAINING ORDER.

(1) Issuing Without Notice. The court may issue a temporary restraining
order without written or oral notice to the adverse party or its
attorney only if:

(A) specific facts in an affidavit or a verified complaint clearly

show that immediate and irreparable injury, loss, or damage will
result to the movant before the adverse party can be heard in
opposition; and

(B) the movant’s attorney certifies in writing any efforts made

to give notice and the reasons why it should not be required.

See Fed. R. Civ. P. 65(b)(1)(A) (emphasis added). Because the Plaintiff failed to comply with

either requirement, the TRO should be dissolved for its failure to comply with Rule 65(b)(1).

1. Plaintiff Failed to Provide Specific Facts in a Declaration or

Affidavit Showing That Immediate and Irreparable Injury,
Loss, or Damage Would Result.

In support of its Motion, Plaintiff provided the Weisberg Declaration. (See ECF No. 3-1.)

But the Weisberg Declaration does not contain specific facts regarding any of the 161 Defendants.

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Nor does the Weisberg Declaration contain any specific facts regarding any of the 236 accused

products, their function, packaging, or alleged infringement of any patent claim. Rather, the

Weisberg Declaration contains general allegations and conclusory statements. For example, the

Weisberg Declaration generally alleges that Plaintiff’s success resulted in “significant

counterfeiting” and that the Plaintiff will suffer irreparable injury “if infringers are allowed to

continue to infringe . . . .” (See Weisberg Decl. at ¶¶ 10, 22.) But Weisberg fails to provide any

specific facts regarding Digital Distillery’s products or its alleged infringement. And that is what

the rule requires. General statements regarding counterfeiting or infringement do not meet the

requirements of Rule 65(b)(1) for specific facts that clearly show the existence of an immediate

and irreparable injury or loss. For example, if—as Digital Distillery contends—its products do

not infringe patents owned by the Plaintiff, there would be no irreparable injury. Moreover, Digital

Distillery is not a Chinese counterfeiter, has no incentive to move its funds offshore, and

Weisberg’s concern with the dissipation of funds simply does not apply. In short, Weisberg’s

general declaration regarding counterfeiting and patent infringement fails to meet the requirements

of Rule 65(b)(1)(A) with respect to Digital Distillery.

2. Plaintiff’s Attorney Failed to Certify “In Writing” The Reasons

Why Notice to the Adverse Party Should Not be Required.

A second requirement of Rule 65(b)(1) is that the “movant’s attorney [must certify] in

writing any efforts made to give notice and the reasons why it should not be required.” Fed. R.

Civ. P. 65(b)(1)(B). Plaintiff totally fails to comply with part (B) of the rule. In fact, Plaintiff

partially quotes Rule 65(b)(1) and inserts a period where none exists, and entirely omits this

requirement from its brief. (See Pl. Mem. Supp. Mot. TRO, at 8.) In any event, Plaintiff’s counsel

failed to provide a certification “. . . in writing [of] any efforts made to give notice [to each adverse
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party] and the reasons why it should not be required.” This requirement of Rule 65 is not merely

a procedural formality: notice and an opportunity to be heard are fundamental in our entire system

of jurisprudence. Granny Goose Foods, Inc. v. Brotherhood of Teamsters & Auto Truck Drivers

Local No. 70 of Alameda Cty., 415 U.S. 423, 438-39 (1974). Here, if Plaintiff had complied with

Rule 65, the Court would have had the additional information needed to consider whether to enter

a TRO. Because the Plaintiff failed to comply with the procedural requirements of Rule 65, the

Court should dissolve the TRO as it applies to Digital Distillery.

B. The Plaintiffs Have Failed to Make The Required Showing for an Ex

Parte Temporary Restraining Order

The Supreme Court has made clear that an ex parte temporary restraining order is an

extraordinary remedy: “[O]ur entire jurisprudence runs counter to the notion of court action taken

before reasonable notice and an opportunity to be heard has been granted both sides of a dispute.”

Granny Goose, 415 U.S. at 438-39. A temporary restraining order is an extraordinary remedy

available only “if the plaintiff establish[es] that (1) he is likely to succeed on the merits, (2) he is

likely to suffer irreparable harm in the absence of preliminary relief, (3) the balance of equities

tips in his favor, and (4) an injunction is in the public interest.” E.g., Winter v. Natural Res. Def.

Council, Inc., 555 U.S. 7, 20 (2008). “[A]ll four requirements must be satisfied.” Cantley v. W.

Va. Reg'l Jail & Corr. Facility Auth., 771 F.3d 201, 207 (4th Cir. 2014). Because none of the four

requirements were satisfied with respect to Digital Distillery, the Temporary Restraining Order

against Digital Distillery should be immediately dissolved.

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1. Plaintiff Is Unlikely To Succeed on the Merits of its Patent

Claims Against Digital Distillery.3

a. The Complaint Fails to Set Forth Sufficient Facts to

Support a Finding of Infringement.

Under Federal Rule of Civil Procedure 12(b)(6), the Court must dismiss a complaint that

does not state a claim for relief that is “plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678

(2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). The complaint must

include sufficient factual allegations “to raise a right to relief above the speculative level.”

Twombly, 550 U.S. at 555. The complaint must be facially plausible or contain enough “factual

content that allows the court to draw the reasonable inference that the defendant is liable for the

misconduct alleged.” Iqbal, 556 U.S. at 678. Conclusory allegations will not suffice to state a

claim. See Iqbal, 556 U.S. at 678 (“[T]he tenet that a court must accept as true all of the allegations

contained in a complaint is inapplicable to legal conclusions. Threadbare recitals of the elements

of a cause of action, supported by mere conclusory statements, do not suffice.”).

Even accepting the factual allegations in the Complaint as true, the Complaint fails to state

a plausible claim against Digital Distillery. As noted supra at Sections II.A-B, Plaintiff did not

provide the Court with any specific evidence regarding the Accused Digital Distillery Products.

Rather, the entirety of Plaintiff’s argument for likelihood of success regarding patent infringement

3
With respect to the required showing of a likelihood of success, the Court’s Order is based solely
on the Court’s finding that “Plaintiff has established that it is likely to succeed on its patent
infringement claim.” ECF No. 14 at 2. The Order does not address Plaintiff’s Motion for TRO
with respect to its allegations of trade dress infringement. (See ECF No. 3 at 17-21.) Accordingly,
the likelihood of success of Plaintiff’s trade dress infringement claims are not specifically
addressed herein. Nevertheless, Defendant notes that Plaintiff did not provide the Court with any
evidence regarding the packaging of Digital Distillery’s products to support its trade dress claim
against Digital Distillery.
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is based on: (1) comparing the characteristics of the Accused Doe No. 68 product to claim 1 of the

’256 Patent; and (2) equating all 235 of the other Accused Products to the Accused Doe No. 68

product. (See Pl. Mem. Supp. Mot. TRO at 13-17.) The totality of Plaintiff’s effort to equate the

other 235 products accused of infringement to the Doe No. 68 product consists of the following

wholly unsupported statement:

The claims of the ’256 Patent are not limited to any particular shape
of a smoker device. Any shape of a smoker device having a base
with a fuel chamber portion and conduit portion below the floor
would meet the limitations of the ’256 Patent claims. The remaining
Defendants’ accused devices would also directly infringe the
claims of the ’256. Plaintiff has downloaded Webstore pages and
images from the Webstores of each Defendant and can produce
these to the Court if desired.

Id. at 17 (emphasis added). These blanket assertions with no supporting factual basis are

insufficient to state a plausible claim because it cannot be disputed that the Accused Digital

Distillery Products have significant differences compared to the “exemplary” product relied upon

by Plaintiffs. See supra at Section II.B. Most importantly, the Accused Digital Distillery Products

lack the crucial feature of an aperture through the wall of the conduit portion of the product. Id.

In light of these crucial differences and the fact that no additional evidence was provided by

Plaintiff regarding the Accused Digital Distillery Products, no reasonable fact finder could find

patent infringement as a matter of law and the Complaint against Digital Distillery should be

dismissed. See Iqbal, 556 U.S. at 678.

Nevertheless, necessarily relying on Plaintiff’s bald assertion that the claim chart was

exemplary and sufficient to show infringement by the entirely different Accused Digital Distillery

Products, the Court found a likelihood of success of patent infringement for all of the Accused

Products. ECF No. 14 at 2 (“The accused products, as Plaintiff has demonstrated through
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examples, likely contain all of the elements of claim 1 of the utility patent at issue.”). The Court’s

reliance on the ipse dixit of counsel unsupported by any evidence as the basis for the Order was

inappropriate and the Order should be dissolved as against Digital Distillery. Indeed, given that

the Complaint fails to even meet the threshold to withstand a Rule 12(b)(6) challenge, it follows

that a determination of a likelihood of success with respect to Digital Distillery is without

evidentiary support and should be rejected.

b. The Accused Digital Distillery Products Do Not Infringe the

’256 Patent.

If the Plaintiff had bothered to investigate the Accused Digital Distillery Products, as it was

required to do under Fed. R. Civ. P. 11,4 and had made allegations of infringement based on its

pre-filing investigation, the facts would still fall far short of supporting a finding of a likelihood of

success. Indeed, as set forth below, the facts would establish that Plaintiff has no chance of success

with regard to the Accused Digital Distillery Products.

The burden of demonstrating a likelihood of success on the merits falls squarely and

4
“[I]n the context of a patent infringement suit, Rule 11 requires a party to construe and then apply
the claims of the patent-in-suit to each accused system or process and then conclude that there is a
reasonable basis for a finding of infringement of at least one claim.” DE Technologies, Inc. v. Dell
Inc., Civil Action No. 7:04cv00628, p. 6 (W.D. Va. Feb. 28, 2006) (citing Q-Pharma, Inc. v.
Andrew Jergens Co., 360 F.3d 1295, 1300-01 (Fed. Cir. 2004); View Eng’g, Inc. v. Robotic Vision
Sys., 208 F.3d 981, 986 (Fed. Cir. 2000)). The obvious and clear differences between the Accused
Digital Distillery Products and the “exemplary” product relied upon by the Plaintiff raise the
question of whether Plaintiff satisfied its Rule 11 obligation to perform a reasonable pre-filing
investigation. Indeed, only two scenarios seem possible. Either Plaintiff did a proper investigation,
by which it could not have reasonably failed to notice the obvious differences and consciously
chose to misleadingly include Digital Distillery’s products or it failed to do any investigation into
the technical attributes and physical characteristics of Digital Distillery’s products before accusing
them of infringement even though those products were available for sale long before the issuance
of the ’256 Patent. (See Passantino Decl. ¶ 12.) Digital Distillery expressly reserves all rights
regarding appropriate sanctions against Plaintiff for its apparent malfeasance.
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entirely upon Plaintiff. Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008). Patent

infringement can occur in two ways: there can either be literal infringement or infringement under

the doctrine of equivalents. “Literal infringement exists if each of the limitations of the asserted

claim(s) read on, that is, are found in, the accused device.” Baxter Healthcare Corp. v.

Spectramed, Inc., 49 F.3d 1575, 1583 (Fed. Cir. 1995). “The absence of even a single

limitation…precludes a finding of literal infringement.” Kahn v. General Motors Corp., 135 F.3d

1472, 1477 (Fed. Cir. 1998).5

Accordingly, in order to prove patent infringement here, the Plaintiff must prove by a

preponderance of the evidence that each and every element of claim 1 of the ‘256 Patent is literally

or equivalently present in the Accused Digital Distillery Products. Plaintiff cannot meet this

burden.

Asserted claim 1 of the ’256 Patent is set forth below:

1. A device for imparting smoked flavors to beverages and foodstuffs,

comprising:

a base having a fuel chamber portion at its upper end and a conduit
portion at its lower end, the fuel chamber portion comprising an upper
wall portion defining a perimeter edge of the fuel chamber portion and a
floor defining a bottom end, the floor extending from the upper wall
portion to an opening in the floor,

wherein the fuel chamber portion is oriented to hold fuel, and

5
Under some circumstances, if there is no literal infringement, there might still be infringement
under the “doctrine of equivalents.” This doctrine may apply where, for each limitation that is not
literally present, the accused product nevertheless contains a permissible “equivalent.” Warner-
Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997). If an asserted equivalent causes
a corresponding claim limitation to be “effectively eliminate[d],” Warner-Jenkinson, 520 U.S. at
29, “entirely vitiate[d],” id. at 39 n.8, or “eliminate[d] completely,” id. at 40, then application of
the doctrine of equivalents would be inappropriate.
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wherein the conduit portion is disposed below the floor and comprises
a channel through the conduit portion so that, when the fuel in the fuel
chamber portion is ignited, the channel facilitates flow of smoke
downward from the fuel chamber portion through at least one aperture
that extends from the channel space through a wall of the conduit
portion.

’256 Patent claim 1 (emphasis added). Figure 3 of the ’256 Patent, which is representative of every

embodiment disclosed in the ‘256 Patent, clearly demonstrates the meaning of the claim language

highlighted above.

Claimed “channel”
facilitates downward
flow of smoke

Claimed “aperture”
is through a wall of
conduit and extends
from channel

In describing Figure 3, the ’256 Patent states that “[e]ach aperture 114 is an open hole through an

outer wall of the conduit portion 108 that can extend a vent for smoke from the channel space to

the exterior of the conduit portion 108.” (’256 Patent at col. 4, ln. 6-9.). As illustrated above, the

“channel facilitates the flow of smoke downward from the fuel chamber” (shown by crosshatched

blue arrow) and the apertures receive that flow and redirect it through a wall of the conduit (as
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illustrated by solid blue arrows showing flow out of two of the apertures). When the claim language

is analyzed in view of this sole embodiment, it is unequivocal that an aperture that extends through

a wall (i.e, not the bottom) of the conduit is required.

The design of the Accused Digital Distillery Products is entirely different than that covered

by claim 1 of the ‘256 Patent. There are no apertures through a wall of the conduit. Instead, as

shown below in annotated Figures 5 and 8 of the ‘D737 Patent (which is representative of all of

the Accused Digital Distillery Products) the smoke flows directly downward and out the bottom

of the conduit.

Alleged “conduit” has no

Path of smoke
“aperture” through a wall

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Because none of the Accused Digital Distillery Products have an aperture extending through a wall

of the only feature that could conceivably be identified as a “conduit” there can be no literal

infringement6 by any Digital Distillery product identified by Plaintiff in its Complaint. As a result,

Plaintiff has zero likelihood of success on the merits with respect to patent infringement and the

Order should accordingly be dissolved as against Digital Distillery.

2. Plaintiff is Unlikely to Suffer Irreparable Harm

Plaintiff argues it will suffer irreparable harm for two reasons, but neither of those reasons

applies to Digital Distillery. First, Plaintiff contends it will lose customers and goodwill because

of the Defendants’ infringing activities. (See Pl. Mem. Supp. Mot. TRO at 21.) But with regard

to Digital Distillery’s products, Plaintiff has yet to plead or argue any facts that would substantiate

an allegation of infringement; absent an infringing product, the Plaintiff suffers no harm—and

certainly no irreparable harm. Thus, Plaintiff fails to establish irreparable harm with respect to

infringement by Digital Distillery.

Even if Plaintiff is somehow able to establish infringement by Digital Distillery, it cannot

demonstrate that its harm is irreparable. Plaintiff’s second argument is that a TRO and an asset

freeze are justified “due to the likelihood that a counterfeiter will dissipate funds . . . and thereby

deprive the plaintiff of an adequate remedy.” (Pl. Mem. Supp. Mot. TRO at 21.) It is true that

6
Plaintiff also cannot show infringement under the doctrine of equivalents because an entire
element – the aperture – is missing. See Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520
U.S. 17, 29, 39 n.8, 40 (1997), (Application of the doctrine of equivalents is not appropriate if an
asserted equivalent causes a corresponding claim limitation to be “effectively eliminate[d],”
“entirely vitiate[d],” or “eliminate[d] completely”); Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160
(Fed. Cir. 1998) (“If a theory of equivalence would vitiate a claim limitation, however, then there
can be no infringement under the doctrine of equivalents as a matter of law.”); Akzo Nobel
Coatings, Inc. v. Dow Chemical Co., 811 F.3d 1334, 1342 (Fed. Cir. 2016) (an argument under
the doctrine of equivalents “fails if it renders a claim limitation inconsequential or ineffective.”).
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“the issues of irreparable harm and adequacy of remedies at law are inextricably linked.”

Activevideo Networks Inc. v. Verizon Communications, Inc., 827 F. Supp. 2d 641, 650 (E.D. Va.

2011), aff’d in part, rev’d in part, 694 F.3d 1312 (Fed. Cir. 2012). But Plaintiff paints with too

broad a brush—labeling all the Defendants as “Chinese” and “counterfeiters.” Digital Distillery is

based in the United States and all of its employees and principals are based in Kansas City,

Missouri. (Passantino Decl. ¶ 4.) It has never transferred assets out of any account in the United

States as a result of having a lawsuit filed against it and has no plans to do so now. (Passantino

Decl. ¶ 6.) It is also not a “counterfeiter,” but instead has developed its own innovative products.

Indeed, the product at issue here is covered by Digital Distillery’s own U.S. Patent No. D984,737.

(Passantino Decl. ¶¶ 8-12.) Thus, Plaintiff’s arguments for irreparable harm do not apply to Digital

Distillery. Instead, the facts demonstrate that Plaintiff will have an adequate remedy at law from

Digital Distillery if it is somehow found to infringe Plaintiff’s patent and therefore there is no

irreparable harm for Plaintiff with respect to Digital Distillery.

Finally, Plaintiff’s allegations of irreparable harm ring hollow with respect to Digital

Distillery because of Plaintiff’s delay in bringing this lawsuit. Digital Distillery has been making

sales since 2021. (Passatino Decl. ¶ 12.) Plaintiff has known since July and August 2023 that its

patent would issue on September 5,7 and yet Plaintiff has taken nearly five months since it knew

about the impending issuance of its patent to bring this suit. Nor did Plaintiff contact Digital

Distillery regarding its alleged infringement of the ’256 Patent or trade dress infringement prior to

7
The U.S. Patent and Trademark Office issued a Notice of Allowance for the ’256 Patent to
Plaintiff’s counsel on July 10, 2023, and on August 16, 2023 informed Plaintiff’s counsel that the
patent would issue on September 5. (Ex. A, July 10, 2023 Notice of Allowance; Ex. B, August 16,
2023 Issue Notification.)
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bringing this suit. (Passatino Decl. ¶ 13.) If the harm to Plaintiff from Digital Distillery’s actions

was so great and so irreparable as it claims, Plaintiff would have and should have acted more

quickly. Plaintiff’s claims of irreparable harm with respect to Digital Distillery are not only

unsupported but also belied by its own actions.

3. The Balance of the Equities Tips Sharply Away from Entry of

an Ex Parte TRO Without First Considering Any Evidence of
Infringement

Plaintiff wrongly suggests that the balance of equities weighs in favor of “maintaining the

status quo” by freezing the Amazon accounts of 161 Defendants, including Digital Distillery. This

assertion is misleading, at best. For Digital Distillery, the TRO resulted in a shutdown of its

profitable and competitive business before this Court’s consideration of any evidence regarding

its alleged infringement. In fact, the Plaintiff’s conclusory infringement analysis—for all

Defendants other than Doe No. 68—is reproduced below:

The remaining Defendants’ accused devices would also directly infringe the
claims of the ’256. Plaintiff has downloaded Webstore pages and images
from the Webstores of each Defendant and can produce these to the Court
if desired.

(See Pl. Mem. Supp. Mot. TRO at 17.) As discussed supra, Plaintiff has provided no evidence of

Digital Distillery’s infringement; and objectively, Digital Distillery’s products do not infringe.

Moreover, the entry of a TRO against Digital Distillery’s Amazon accounts is causing

thousands of dollars in lost sales every day. Plaintiff’s suggestion that the TRO “maintain[s] the

status quo” ignores the violence done to Digital Distillery’s business during the holiday shopping

season. (See Passantino Decl. ¶ 17.) Lastly, Plaintiff repeatedly avers that the Defendants are

primarily “Chinese” and “counterfeiters,” thus justifying entry of a TRO against them so that they

will not dissipate assets. (See Pl. Mem. Supp. Mot. TRO at n.1, passim.) As explained above,
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those smears do not apply to Digital Distillery, which is an innovative small business in the State

of Missouri.

In this case, the balance of equities tips sharply in Digital Distillery’s favor for three key

reasons: (1) the Plaintiff is unlikely to succeed on the merits; (2) the Plaintiff has provided the

Court with no evidence of Digital Distillery’s infringement; and (3) the TRO is causing a

substantial financial hardship to Digital Distillery. The Court should conclude that the balance of

equities weighs against the TRO.

4. The Public Interest Weighs Strongly Against Entry of a TRO

Against Digital Distillery Without Notice and Without Any
Evidence of Infringement.

This factor is often “inextricably intertwined with the Court’s determination [of] likelihood

of success on the merits.” MicroAire Surgical Instruments, LLC v. Arthrex, Inc., 726 F. Supp. 2d

604, 641 (W.D. Va. 2010). Plaintiff first suggests that the public interest would be served in

preventing the sale of infringing products. (See Pl. Mem. Supp. Mot. TRO at 23.) But Plaintiff

has provided the Court with no evidence that any Digital Distillery product infringes any patent

claim. Thus, because Plaintiff is unlikely to succeed on the merits against Digital Distillery, the

public interest weighs against the TRO. See MicroAire, 726 F. Supp. 2d at 641. Plaintiff also

suggests that the public interest weighs against “infringing misconduct,” and that the public “has

a right not to be confused or defrauded.” (See Pl. Mem. Supp. Mot. TRO at 24.) But again,

Plaintiff’s argument presumes too much because the Plaintiff has failed to provide evidence of

infringing misconduct by Digital Distillery.

Lastly, the public interest weighs heavily against a TRO for another reason: an ex parte

TRO is an extraordinary remedy. “[O]ur entire jurisprudence runs counter to the notion of court

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action taken before reasonable notice and an opportunity to be heard has been granted both sides

of a dispute.” Granny Goose Foods, 415 U.S. at 438-39. Justice and the public interest prefer a

decision on the merits after notice and an opportunity to be heard.8

IV. CONCLUSION

For the reasons set forth herein, Digital Distillery respectfully requests that the Court

dissolve the Temporary Restraining Order (ECF No. 14) as against Defendant Digital Distillery.

DATED December 7, 2023. Respectfully submitted,

/s/ Craig C. Reilly

By: Craig C. Reilly
VSB #20942
LAW OFFICES OF CRAIG C. REILLY, ESQ.
209 Madison Street, Suite 501
Alexandria, Virginia 22314
craig.reilly@ccreillylaw.com
Phone: 703-549-5354
Fax: 703-549-5355

Of counsel:
Brian N. Platt (pro hac vice to be filed)
Utah State Bar No. 17099
Kenneth J. Dyer (pro hac vice to be filed)
Cal. State Bar No. 191192
WORKMAN NYDEGGER
60 East South Temple Suite 1000
Salt Lake City, Utah 84111
(801) 533-9800 (main line)
(801) 328-1707 (facsimile)
bplatt@wnlaw.com

Attorneys for Digital Distillery LLC

8 Other defenses that Digital Distillery reserves and will assert in its Rule 12 response include
lack of personal jurisdiction, improper venue, insufficient process, insufficient service of process,
and failure to state a claim.
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