Malem Medical, LTD. et al v. Theos Medical Systems, Inc. et al

Filing 83

ORDER - CONSENT DECREE. Signed by Judge Edward M. Chen on 7/14/15. (bpf, COURT STAFF) (Filed on 7/14/2015)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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MALEM MEDICAL, LTD. and ENURESIS
ASSOCIATES, LLC,

CASE NO.: 3:13-cv-05236-EMC

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Plaintiffs,

CONSENT DECREE AND ORDER

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v.
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THEOS MEDICAL SYSTEMS, INC. and
SAKET BHATIA,

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Defendants.

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AND RELATED COUNTERCLAIMS
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IT IS HEREBY STIPULATED AND AGREED by and between Plaintiffs and Counter-

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Defendants MALEM MEDICAL, LTD. and ENURESIS ASSOCIATES, LLC (“PLAINTIFFS”) and

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Defendants and Counter-Claimants THEOS MEDICAL SYSTEMS, INC. and SAKET BHATIA

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(“DEFENDANTS”) (collectively, “the Parties”), that the Court shall enter an Order as follows:
DEFENDANTS’ OBLIGATIONS

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1.

DEFENDANTS will withdraw the opposition to PLAINTIFFS’ Bedwetting Store

trademark application within 10 days of entry of this Consent Decree.
2.

DEFENDANTS will not use the terms “Malem,” “Bedwetting Store,” “Easy-Clip”,

“Secure Grip,” “Quick Detect,” as well as other trademarks and registered trademarks of PLAINTIFFS
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CONSENT DECREE AND ORDER
CASE NO. 3:13-cv-05236-EMC

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now and in the future, except in bona fide comparative advertising.
3.

DEFENDANTS will remove allegedly copyrighted material from their website within

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10 days of entry of this Consent Decree, and will not use any of PLAINTIFFS copyrighted material

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in the future.

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4.

DEFENDANTS will remove all meta information containing the terms “Malem” or

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“Bedwetting Store,” as well as other brands sold by Enuresis Associates, which products are not

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currently sold by DEFENDANTS. The above conditions shall be accomplished within 30 days of

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entry of this Consent Decree.

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5.

DEFENDANTS will remove or modify specified statements (see items a-o below) from

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their website within 10 days of entry of this Consent Decree. DEFENDANTS will also remove these

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statements from Amazon and eBay websites in all countries within 30 days of entry of this Consent

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Decree. DEFENDANTS will not be required to guarantee or effect removal of statements made by

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others, such as third party resellers. This agreement is expressly subject to change in the event that

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further research, testing, or new information demonstrates that the below statements are verifiable and

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factually accurate.

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a.

DEFENDANTS will change the statement “#1 doctor recommended bedwetting

alarm” to “doctor recommended bedwetting alarm.”
b.

DEFENDANTS will change the statement “world’s #1 pediatrician

recommended alarm” to “widely recommended by pediatricians.”
c.

DEFENDANTS will remove the statement “urine detection is 50x faster than

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other bedwetting alarms.” This statement will be reinstated in the event that further research, testing,

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or new information demonstrates that the statement is verifiable and factually accurate.

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d.

DEFENDANTS will remove the statement “more pediatric urologists

recommend Chummie over other alarms.”
e.

DEFENDANTS will change the statement “Chummie is the only alarm that

stops bedwetting” to “Chummie alarms stop bedwetting.”
f.

DEFENDANTS will change the statement “Chummie’s urine detection area

is 100x larger than other alarms” to “Chummie’s urine detection area is significantly larger than other
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CONSENT DECREE AND ORDER
CASE NO. 3:13-cv-05236-EMC

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clip sensors.”
g.

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DEFENDANTS will remove all references to the safety of PLAINTIFFS’

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products, including references to “dangerous safety pins,” “sharp sensors - can cut skin,” and “contain

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lead and mercury.”
h.

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This statement will be further revised when new quantitative milestones are reached.
i.

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j.

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DEFENDANTS will change the statement “96% success rate” to “in a study

. . . 96% success rate.”
m.

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DEFENDANTS will remove the statement “only bedwetting alarm that has

passed the test required to be registered with the United States FDA.”

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DEFENDANTS will change the statement “does not cause skin rash caused by

all other alarms” to “does not cause skin rash.”

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DEFENDANTS will change the statement “only alarm carried by major

retailers in USA, Europe, and Asia” to “carried by major retailers in USA, Europe, and Asia.”

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DEFENDANTS will change references to “over 100,000” to “over 20,000.”

DEFENDANTS will change the statement “smallest and lightest bedwetting

alarm available” to “small and lightweight.”

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n.

DEFENDANTS will change the statement “loudest alarm available” to “loud.”

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o.

DEFENDANTS will remove the statements “faster urine detection equals rapid

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treatment,” or “faster detection equals quicker treatment.”
6.

DEFENDANTS will remove from their website all references to patented claims for

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which no patent has been approved within 10 days of entry of this Consent Decree. DEFENDANTS

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will also remove these references from Amazon and eBay websites within 45 days of entry of this

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Consent Decree.

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7.

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DEFENDANTS will refrain from making cash payments to individuals in exchange

for reviews of their products. This agreement does not apply to the exchange of goods for reviews.
8.

DEFENDANTS will submit, through Amazon Vendor Central, a letter from their

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attorneys to Amazon’s Buyers Review Team and Item Update Creation Team. The letter will ask for

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the removal of all nonverified reviews of Chummie products on all Amazon websites posted between
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CONSENT DECREE AND ORDER
CASE NO. 3:13-cv-05236-EMC

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June 1, 2014 and March 31, 2015 on the grounds that the validity of the reviews has come into

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question. This letter will be sent within 10 days of entry of this Consent Decree. If the subject

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reviews are not removed within 45 days of the date the letter is sent, DEFENDANTS will send,

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through Amazon Vendor Central, a second letter from their attorneys to Amazon’s Buyers Review

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Team and Item Update Creation Team. The second letter will reference this Agreement and the

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Court’s Consent Decree, and will identify the specific nonverified reviews to be removed.

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9.

DEFENDANTS will not disparage PLAINTIFFS or any of their products, services,

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officers, directors, or employees. For purposes of this agreement, disparage means to take any action

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which could reasonably be expected to adversely affect the reputation of PLAINTIFFS or any of their

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products, services, officers, directors, or employees. This paragraph does not apply to legitimate

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business concerns raised by DEFENDANTS or to allegations that PLAINTIFFS have violated this

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Agreement or this Consent Decree.

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10.

DEFENDANTS will not communicate with any person or entity through the use of a

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false or assumed identity such that the communication could reasonably be mistaken as coming from

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PLAINTIFFS or any of their officers, directors, or employees.
PLAINTIFFS’ OBLIGATIONS

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and other published materials (see items a-c below).
a.

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b.

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PLAINTIFFS will remove the statement “90% success rate within a few

c.

PLAINTIFFS will change the statement “each alarm cures, on average, 3

weeks.”

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PLAINTIFFS will change the statement “largest marketplace/ distributor of

bedwetting products” to “one of the largest.”

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PLAINTIFFS will remove or modify specified factual statements from their website

children per year” to “each alarm treats, on average, 3 children per year.”
12.

PLAINTIFFS will not use the terms: “Chummie,” “One Drop Detection,” “Flexitape,”

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“Comfy-Armband,” “Theos Medical Systems,” “Better technology for faster treatment,” “Active guard

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monitoring,” or “Enhanced protection plus care,” or the Chummie logo, Theos Medical Systems logo,

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or Chummie smiley face, as well as other trademarks and registered trademarks of DEFENDANTS
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CONSENT DECREE AND ORDER
CASE NO. 3:13-cv-05236-EMC

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now and in the future, except in bona fide comparative advertising.
13.

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PLAINTIFFS will remove all meta information containing the terms referenced in the

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above paragraph, as well as other brands sold by DEFENDANTS and not sold by PLAINTIFFS. This

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shall be accomplished within 30 days of entry of this Consent Decree.
14.

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PLAINTIFFS will refrain from making cash payments to individuals in exchange for

reviews of their products. This agreement does not apply to the exchange of goods for reviews.
15.

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PLAINTIFFS will not disparage DEFENDANTS or any of their products, services,

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officers, directors, or employees. For purposes of this agreement, disparage means to take any action

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which could reasonably be expected to adversely affect the reputation of DEFENDANTS or any of

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their products, services, officers, directors, or employees. This paragraph does not apply to legitimate

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business concerns raised by PLAINTIFFS or to allegations that DEFENDANTS have violated this

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Agreement or this Consent Decree.
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PLAINTIFFS will not communicate with any person or entity through the use of a false

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or assumed identity such that the communication could reasonably be mistaken as coming from

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DEFENDANTS or any of their officers, directors, or employees.
FURTHER ORDERS

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This Consent Decree is binding on PLAINTIFFS, DEFENDANTS, their officers,

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agents, servants, employees, affiliates, attorneys, successors, and assigns, as well as those persons in

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active concert or participation with them and who receive actual notice of this Consent Decree.
18.

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This Consent Decree shall inure to the benefit of, and shall be enforceable by,

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PLAINTIFFS, DEFENDANTS, their affiliates, successors, and assigns as their respective interests

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may appear.

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CONSENT DECREE AND ORDER
CASE NO. 3:13-cv-05236-EMC

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This Court shall retain jurisdiction of this matter for purposes of construction,

modification, and enforcement of this Consent Decree.

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APPROVED BY:

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CLAPP, MORONEY, VUCINICH,
BEEMAN and SCHELEY

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DATED: July 9, 2015

/s/ P. Christian Scheley
By:
P. CHRISTIAN SCHELEY, ESQ.
Attorneys for Defendants and CounterClaimants, THEOS MEDICAL SYSTEMS,
INC. and SAKET BHATIA

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CRAIGIE, McCARTHY & CLOW
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DATED: July 9, 2015

/s/ Peter W. Craigie
By:
PETER W. CRAIGIE, ESQ.
Attorneys for Plaintiffs and CounterDefendants, MALEM MEDICAL, LTD. and
ENURESIS ASSOCIATES, LLC

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ORDER
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IT IS SO ORDERED: All hearing and trial dates are vacated. The Clerk of the
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Court is directed to close this case.

July 14, 2015

ED

NO

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dward M

Judge E

ER

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A

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. Chen

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R NIA

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Honorable Edward O ORDEED
M. Chen
IT IS S
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United States District DIF Judge
AS MO Court

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DATED:

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CONSENT DECREE AND ORDER
CASE NO. 3:13-cv-05236-EMC

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CERTIFICATION OF CONCURRENCE FROM ALL SIGNATORIES

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I, Teela A. Crosthwaite, Esq., am the ECF user whose ID and password are being used to file

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this Consent Decree and Order. In compliance with N.D. Cal. Civ. L.R. 5-1(i)(3), I hereby attest that

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I have obtained the concurrence of each signatory to this document.

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Dated: July 9, 2015

/s/ Teela A. Crosthwaite
TEELA A. CROSTHWAITE, ESQ.

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CONSENT DECREE AND ORDER
CASE NO. 3:13-cv-05236-EMC