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Case 1:13-cv-00710-WSD Document 27 Filed 07/11/13 Page 1 of 19

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF GEORGIA ATLANTA DIVISION SPANX, INC., Plaintiff, v. TIMES THREE CLOTHIER, LLC d/b/a Yummie Tummie, Defendant. ) ) ) Case No. 13-CV-00710-WSD ) ) ) ) ) ) )

DEFENDANTS TIMES THREE CLOTHIER, LLCS FIRST AMENDED INITIAL DISCLOSURES Pursuant to Rule 26 of the Federal Rules of Civil Procedure, Defendant Times Three Clothier, LLC (TTC) makes the following initial disclosures: GENERAL OBJECTIONS 1. The following disclosures are based upon information reasonably

available to, and currently in the possession, custody or control of, TTC. To the best of TTCs knowledge, information and belief, these disclosures are complete and correct as of the date they are made. Nevertheless, TTC may obtain additional facts, identify additional persons who may have knowledge relevant to the issues in this action, remove certain persons from the list, and/or identify additional
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documents relevant to the factual disputes in this action, through its continuing pretrial research, investigation and analysis and through discovery of Plaintiff Spanx, Inc. (Spanx) and/or any third parties. TTC expressly reserves its rights: (a) to make subsequent revision, supplementation or amendment to these disclosures based upon any information, evidence, documents, facts and things which hereafter may be discovered, or the relevance of which may hereafter be discovered; and (b) to produce, introduce or rely upon additional or subsequently acquired or discovered writings, evidence and information at trial or in any pre-trial proceedings held herein. 2. TTC objects to any disclosure of information or documents beyond

that required by the Federal Rules of Civil Procedure, the Federal Rules of Evidence, the Local Rules of the Northern District of Georgia or other applicable law. 3. TTC does not, and will not, provide herein any information or

documents protected by the attorney-client, attorney work product, or any other valid privilege. 4. TTC objects to the identification or production of any documents or

information that contain trade secrets or other confidential research, development or commercial business information of TTC.
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5.

Any information or documents provided by TTC in connection with

these disclosures is subject to all objections as to competence, relevance, materiality and admissibility, as well as to any other objections on any grounds that would require the exclusion thereof if such information were offered into evidence, and TTC expressly reserves all such objections and grounds. DISCLOSURES (1) If the defendant is improperly identified, state defendant's correct identification and state whether defendant will accept service of an amended summons and complaint reflecting the information furnished in this disclosure response. Response: TTC has been correctly identified. (2) Provide the names of any parties whom defendant contends are necessary parties to this action, but who have not been named by plaintiff. If defendant contends that there is a question of misjoinder of parties, provide the reasons for defendant's contention. Response: There are no other parties that TTC contends are necessary parties. (3) Provide a detailed factual basis for the defense or defenses and any counterclaims or crossclaims asserted by defendant in the responsive pleading. Response: Times Three contends that Spanx has infringed U.S. Design Patent Nos. D606,285, D616,627 D622,477, D623,377, D665,558, and D666,384 (collectively, patents-in-suit), by making, using, selling, offering for sale and/or
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importing The Total Taming Tank, also known as The Spanx Total Taming Tank, the Top This Tank Style 1847, and the Top This Cami Style 1846 (collectively the Accused Products) as pictured in Exhibit 1, attached hereto. The Accused Products are offered for sale and sold directly to customers via Spanxs website. Certain of the Accused Products are also offered for sale and sold by retailers, such as JC Penney, Kohls and QVC. At a minimum, these three Spanx products infringe at least one of the patents-in-suit which can be readily ascertained by a comparison of the Accused Products and the claimed designs. For example, Exhibit 1 depicts the Accused Products and certain drawings from the patents-in-suit that the Accused Products infringe. Accordingly, under the standard for infringement set forth by Federal Circuit in Egyptian Goddess, Inc. v. Swisa, Inc., 564 F.3d 665 (Fed. Cir. 2008), in the eye of an ordinary observer, the designs at issues are substantially similar to the claimed designs, and thus the Accused Products infringe the patents-in-suit. (4) Describe in detail all statutes, codes, regulations, legal principles, standards and customs or usages, and illustrative case law which defendant contends are applicable to this action. Response: Times Three asserts that Spanx has infringed its patents pursuant to 35 U.S.C. 281, induced others, such as third party garment retailers, to infringe pursuant to 35 U.S.C. 271(b) and that Times Three is entitled to damages
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pursuant to 35 U.S.C. 284 and/or 289. Times Three also asserts that Spanx has willfully infringed, making this case an exceptional case. The Federal Circuit has set forth the standard for finding design patent infringement in Egyptian Goddess, Inc. v. Swisa, Inc., 564 F.3d 665 (Fed. Cir. 2008) and its progeny. Specifically, the Court held that the ordinary observer test, that is, the ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design, is the sole test for determining design patent infringement. Id. at 681, 678. See also Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295 (Fed. Cir. 2010). Times Three contends that the above cited case law and related cases are applicable in the Courts determination that Spanxs products, including the Accused Products, infringe certain of the patents-in-suit, as identified in Exhibit 1. (5) Provide the name and, if known, the address and telephone number of each individual likely to have discoverable information that you may use to support your claims or defenses, unless solely for impeachment, identifying the subjects of the information. Response: See Attachment A. (6) Provide the name of any person who may be used at trial to present evidence under Rules 702, 703, or 705 of the Federal Rules of Evidence. For all experts described in Fed.R.Civ.P. 26(a)(2)(B), provide a separate written report satisfying the provisions of that rule. Response: See Attachment B.
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(7) Provide a copy of, or description by category and location of, all documents, data compilations or other electronically stored information, and tangible things in your possession, custody, or control that you may use to support your claims or defenses unless solely for impeachment, identifying the subjects of the information. Response: See Attachment C. (8) In the space provided below, provide a computation of any category of damages claimed by you. In addition, include a copy of, or describe by category and location of, the documents or other evidentiary material, not privileged or protected from disclosure on which such computation is based, including materials bearing on the nature and extent of injuries suffered, making such documents or evidentiary material available for inspection and copying under Fed.R.Civ.P. 34. Response: See Attachment D. (9) If defendant contends that some other person or legal entity is, in whole or in part, liable to the plaintiff or defendant in this matter, state the full name, address, and telephone number of such person or entity and describe in detail the basis of such liability. Response: On information and belief, Times Three believes that JC Penney, Kohls and QVC (retailers) are liable, in whole or in part, for infringement of certain patents-in-suit because the retailers offer for sale or sell at least one of the Accused Products. Times Three reserves its right to amend and/or supplement these initial disclosures to identify other persons or legal entities as appropriate. (10) Attach for inspection and copying as under Fed.R.Civ.P. 34 any insurance agreement under which any person carrying on an insurance business may be liable to satisfy part or all of a judgment which may be entered in this action or to indemnify or reimburse for payments to satisfy the
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judgment. (Attach copy of insurance agreement to Initial Disclosures as Attachment E.) Response: See Attachment E.

Kilpatrick Townsend & Stockton LLP OF COUNSEL: By: s/Theodore H. Davis Jr. Steven B. Pokotilow Theodore H. Davis Jr. Laura Goldbard George Ga. Bar. No. 212913 Irah H. Donner 1100 Peachtree Street, Suite 2800 Binni N. Shah Atlanta, GA 30309-4528 tdavis@kilpatricktownsend.com STROOCK & STROOCK & LAVAN LLP 180 Maiden Lane New York, NY 10038-4982 (212) 806-5400 Attorneys for Defendant Times Three Dated: July 11, 2013 Clothier, LLC

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IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF GEORGIA ATLANTA DIVISION SPANX, INC., Plaintiff, v. TIMES THREE CLOTHIER, LLC d/b/a Yummie Tummie, Defendant. ) ) ) Case No. 13-CV-00710-WSD ) ) ) ) ) ) )

CERTIFICATE OF SERVICE I certify that on July 11, 2013, I electronically filed the foregoing document using the CM/ECF system which will send notification of such filing as follows: Natasha H. Moffitt Laura S. Huffman King & Spalding LLP 1180 Peachtree Street, N.E. Atlanta, GA 30309-3521 Kathleen E. McCarthy King & Spalding LLP 1185 Avenue of the Americas New York, NY 10036 s/ Theodore H. Davis Jr. Theodore H. Davis Jr.
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EXHIBIT 1: COMPARISON OF THE ACCUSED PRODUCTS TO THE CLAIMED DESIGNS IN THE PATENTS-IN-SUIT1

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Accused Product

Fig. 1 from D622,477

Fig. 1 from D623,377

Fig. 1 from D666,384

The figures from the patents-in-suit provided herein are an example of the figures as depicted in the patents. Given that discovery has just begun, Times Three reserves its right to amend and/or supplement these initial disclosures.

NY 74658671

Spanxs The Top This Cami Style 1846

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Accused Product

Fig. 1 from D616,627

Fig. 1 from D622,477

Fig. 1 from D665,558

Fig. 1 from D666,384

NY 74658671

Spanxs The Top This Tank Style 1847

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Accused Product

Fig. 1 from D606,285

Fig. 1 from D616,627

Fig. 1 from D622,477

Fig. 1 from D623,377

Fig. 1 from D665,558

Fig. 1 from D666,384

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NY 74658671

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ATTACHMENT A As of the date of these disclosures, TTC is informed and believes that the following individuals are likely to have discoverable information that TTC may use to support its design patent infringement claim set forth in TTCs Answer and Counterclaims, and damages therefor. TTC also deems any individual that Spanx discloses in its initial disclosures to be incorporated by reference herein as individuals that TTC may use to support its claim. By disclosing the names and titles of current employees of TTC and of other individuals who may have information, TTC does not consent to any effort to contact such witnesses other than through TTCs counsel. NAME ADDRESS SUBJECT Information relating to the creation of the garment design that led to U.S. Design Patent Nos. D606,285, D616,627 D622,477, D623,377, D665,558, and D666,384 (collectively, patents-insuit); Information relating to the sales, profits and revenues of the Yummie Tummie products; Nonobviousness and secondary considerations

Heather Thomson Schindler

561 Seventh Ave. 12th Floor New York, NY 10018

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Information relating to the production, manufacturing and/or development of Yummie Tummie products embodying the patents-in-suit; Michelle Daray 15614 Detroit Avenue, Suite 1 Lakewood, OH 44107 Information relating to the sales, profits and revenues of the Yummie Tummie products; Information relating to the first sale of products embodying the patents-in-suit Wendy Herman 561 Seventh Ave. 12th Floor New York, NY 10018 Information relating to the sales, profits and revenues of the Yummie Tummie products Information relating to sales, marketing, design and manufacture of Spanxs garments, including but not limited to The Total Taming Tank A226764, also known as The Spanx Total Taming Tank, The Top This Tank Style 1847 and The Top This Cami Style 1846 (the Accused Products). Information relating to sales, marketing, and design and manufacture of the Accused Products Information relating to Spanxs profits and revenues related to the garments that infringe the patents-in-suit

Laurie Ann Goldman CEO of Spanx

3344 Peachtree Rd NE Suite #1700 Atlanta, GA 30305

Sara Blakely Founder/Owner of Spanx Bradley Bell CFO of Spanx

3344 Peachtree Rd NE Suite #1700 Atlanta, GA 30305 3344 Peachtree Rd NE Suite #1700 Atlanta, GA 30305

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Tosha Hays 3344 Peachtree Rd NE Design Director Suite #1700 of Spanx Atlanta, GA 30305

Information relating to design of the Accused Products

Information relating to design of the Accused Products; Other employees of Spanx (not yet identified) Information relating to Spanxs contentions that it does not infringe the patents-in-suit; Not yet identified. Information relating to Spanxs contentions that the patents-in-suit are invalid or unenforceable, including but not limited to information relating to any prior art that Spanx contends renders the patents-in-suit obvious.

TTC reserves the right to amend or supplement this list of witnesses as necessary.

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ATTACHMENT B TTC states that identification of experts and disclosure of expert reports are premature at this point, given that discovery has just begun. TTC will, in due course, supplement these Initial Disclosures to identify any person who may be used at trial to present evidence under Rules 702, 703, or 705 of the Federal Rules of Evidence and submit written expert disclosures as applicable.

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ATTACHMENT C Pursuant to Rule 26(a)(1)(A)(ii) of the Federal Rules of Civil Procedure and subject to its General Objections, TTC will produce or make available for inspection the following categories of documents and things upon entry of a Courtapproved Protective Order to the extent they are in the possession, custody or control of TTC and can be located upon reasonable investigation, are not privileged, and upon which TTC may rely to support its design patent infringement claim set forth in TTCs Answer and Counterclaims, and damages therefor. 1. 2. Documents relating to the prosecution history of the patents-in-suit. Documents relating to the assignment of Heather Thomson Schindlers rights in the patents-in-suit to TTC. 3. Samples of TTCs garments that embody the patents-in-suit. Some of these samples are located at TTCs headquarters. 4. Samples of Spanxs accused products including but not limited to the Accused Products and/or any other product made by or for, used, or sold, or offered for sale by Spanx which has an appearance or design that is similar to the Accused Products. These samples are believed to be located at Spanxs headquarters.

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The above-referenced categories of documents are being compiled and will be maintained at the offices of Stroock & Stroock & Lavan LLP, 180 Maiden Lane, New York, NY 10038, except as otherwise noted. TTC reserves the right to amend or supplement this list of categories of documents as necessary.

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ATTACHMENT D TTC does not at this time possess sufficient information to estimate damages pursuant to Rule 26(a)(1)(A)(iii) of the Federal Rules of Civil Procedure. However, TTC intends to seek damages based on its lost profits, Spanxs profits, and/or a reasonable royalty rate. TTC also reserves its right to seek treble damages, reasonable attorney fees and costs to the extent such is recoverable under applicable law.

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ATTACHMENT E Pursuant to Fed. R. Civ. P. 26(a)(1)(A)(iv), and to the extent that any insurance agreements exist, TTC will produce or make available for inspection upon entry of a Court-approved Protective Order any insurance agreement under which any person carrying on an insurance business may be liable to satisfy part or all of a judgment, which may be entered in this action, or to indemnify or reimburse for payments made to satisfy such judgment.

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