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CASREF,STAYED

U.S. District Court
District of Maryland (Greenbelt)
CIVIL DOCKET FOR CASE #: 8:23-cv-00889-TDC


Yao v. Chen et al
Assigned to: Judge Theodore D. Chuang
Referred to: Magistrate Judge Ajmel Ahsen Quereshi (Settlement)
Demand: $75,000
Cause: 15:1125 Trademark Infringement (Lanham Act)

Date Filed: 03/31/2023
Jury Demand: Defendant
Nature of Suit: 890 Other Statutory Actions
Jurisdiction: Federal Question
Plaintiff
Li Fen Yao
as Administrator of the Estate of Sam Mingsan Chen, deceased
represented by Daniel M Kennedy , III
Barkley & Kennedy, Chartered
51 Monroe Street
Suite 1407
Rockville, MD 20850
301-251-6600
Fax: 301-762-2606
Email: dkennedy@barkenlaw.com
LEAD ATTORNEY
ATTORNEY TO BE NOTICED

Madelyn K. White
Carter Ledyard & Milburn LLP
28 Liberty Street
41st Floor
New York, NY 10005
212-732-3200
Fax: 212-732-3232
Email: white@clm.com
PRO HAC VICE
ATTORNEY TO BE NOTICED

Nathan D. Harp
Carter Ledyard & Milburn LLP
28 Liberty St. FL 41
New York, NY 10005
212-238-8608
Email: harp@clm.com
PRO HAC VICE
ATTORNEY TO BE NOTICED

Stephen M. Plotnick
Carter Ledyard & Milburn LLP
28 Liberty Street - 41st Floor
New York, NY 10005
212-238-8772
Email: plotnick@clm.com
PRO HAC VICE
ATTORNEY TO BE NOTICED

V.
Defendant
Robert Chen represented by Rachel M. Clattenburg
Levy Firestone Muse LLP
900 17th St. NW
Suite 1200
Washington, DC 20006
202-845-3215
Email: rmc@levyfirestone.com
LEAD ATTORNEY
ATTORNEY TO BE NOTICED

Joshua Aaron Levy
Levy Firestone Muse LLP
900 17th Street NW
Suite 1200
Washington, DC 20006
202-845-3215
Fax: 202-595-8253
Email: jal@levyfirestone.com
ATTORNEY TO BE NOTICED

Justin Andrew DiCharia
Levy Firestone Muse LLP
900 17th St. NW
Suite 1200
Washington, DC 20006
202-819-2716
Email: jdicharia@levyfirestone.com
ATTORNEY TO BE NOTICED

Kevin P. Crenny
Levy Firestone Muse LLP
900 17th Street NW
Suite 1200
Washington, DC 20003
202-845-3215
Fax: 202-595-8253
Email: kcrenny@levyfirestone.com
PRO HAC VICE
ATTORNEY TO BE NOTICED
Defendant
Otter Audits LLC represented by Rachel M. Clattenburg
(See above for address)
LEAD ATTORNEY
ATTORNEY TO BE NOTICED

Joshua Aaron Levy
(See above for address)
ATTORNEY TO BE NOTICED

Justin Andrew DiCharia
(See above for address)
ATTORNEY TO BE NOTICED

Kevin P. Crenny
(See above for address)
PRO HAC VICE
ATTORNEY TO BE NOTICED
Defendant
RC Security LLC represented by Rachel M. Clattenburg
(See above for address)
LEAD ATTORNEY
ATTORNEY TO BE NOTICED

Joshua Aaron Levy
(See above for address)
ATTORNEY TO BE NOTICED

Justin Andrew DiCharia
(See above for address)
ATTORNEY TO BE NOTICED

Kevin P. Crenny
(See above for address)
PRO HAC VICE
ATTORNEY TO BE NOTICED

Date Filed # Docket Text
03/31/2023 1  COMPLAINT against All Defendants, filed by Li Fen YAO. (Attachments: # 1 Civil Cover Sheet Cover Sheet, # 2 Summons Summons Robert Chen, # 3 Summons Otter Audit Summons, # 4 Summons RC Security Summons)(Kennedy, Daniel) (Entered: 03/31/2023)
04/04/2023 [FILED IN ERROR - change in NOS] Deficiency Notice -- Report on Filing Patent/Trademark form (AO 120) has not been filed. The form is located at http://www.mdd.uscourts.gov/publications/DisplayForms.asp?ActiveTab=Civil . Please fully complete and file the form by selecting Civil > Other Filings > Other Documents > Report on Filing Patent/Trademark. The form must be filed by 4/11/2023 (kk5s, Deputy Clerk) Modified on 4/5/2023 (kk5s, Deputy Clerk). (Entered: 04/04/2023)
04/04/2023 3  Summons Issued 21 days as to Robert Chen, Otter Audits LLC, RC Security LLC.(kk5s, Deputy Clerk) (Entered: 04/04/2023)
04/07/2023 4  CASE MANAGEMENT ORDER. Signed by Judge Theodore D. Chuang on 4/7/2023. (ybs, Deputy Clerk) (Entered: 04/07/2023)
04/12/2023 5  NOTICE by Li Fen Yao Notice of Plaintiff's Invocation of Waiver Procedure Pursuant to Fed.R.Civ.P.4(d) (Kennedy, Daniel) (Entered: 04/12/2023)
05/04/2023 6  MOTION to Appear Pro Hac Vice for Stephen M. Plotnick (Filing fee $100, receipt number AMDDC-10580945.) by Li Fen Yao(Kennedy, Daniel) (Entered: 05/04/2023)
05/04/2023 7  CORRECTED MOTION to Appear Pro Hac Vice for Stephen Plotnick by Li Fen Yao. The fee has already been paid.(Kennedy, Daniel) (Entered: 05/04/2023)
05/04/2023 8  MOTION to Appear Pro Hac Vice for Nathan D. Harp (Filing fee $100, receipt number AMDDC-10581086.) by Li Fen Yao(Kennedy, Daniel) (Entered: 05/04/2023)
05/08/2023 PAPERLESS ORDER granting 6 Motion to Appear Pro Hac Vice on behalf of Stephen M. Plotnick. Directing attorney Stephen M. Plotnick to register for pro hac vice filing in the District of Maryland through PACER at https://pacer.uscourts.gov/ if attorney has not already done so. The Pro Hac Vice option must be selected when registering. Signed by Clerk on 5/8/2023. (mh4s, Deputy Clerk) (Entered: 05/08/2023)
05/08/2023 10  PAPERLESS ORDER granting 8 Motion to Appear Pro Hac Vice on behalf of Nathan D. Harp. Directing attorney Nathan D. Harp to register for pro hac vice filing in the District of Maryland through PACER at https://pacer.uscourts.gov/ if attorney has not already done so. The Pro Hac Vice option must be selected when registering. Signed by Clerk on 5/8/2023. (mh4s, Deputy Clerk) (Entered: 05/08/2023)
05/10/2023 11  WAIVER OF SERVICE Returned Executed by Li Fen Yao. RC Security LLC waiver sent on 4/5/2023, answer due 6/5/2023.(Kennedy, Daniel) (Entered: 05/10/2023)
05/10/2023 12  WAIVER OF SERVICE Returned Executed by Li Fen Yao. Robert Chen waiver sent on 4/5/2023, answer due 6/4/2013.(Kennedy, Daniel) Modified on 5/11/2023 (ybs, Deputy Clerk). (Entered: 05/10/2023)
05/10/2023 13  WAIVER OF SERVICE Returned Executed by Li Fen Yao. Otter Audits LLC waiver sent on 4/5/2023, answer due 6/5/2023.(Kennedy, Daniel) (Entered: 05/10/2023)
06/02/2023 14  NOTICE of Appearance by Rachel M. Clattenburg on behalf of All Defendants (Clattenburg, Rachel) (Entered: 06/02/2023)
06/02/2023 15  MOTION to Appear Pro Hac Vice for Kevin Crenny (Filing fee $100, receipt number AMDDC-10634073.) by Robert Chen, Otter Audits LLC, RC Security LLC(Clattenburg, Rachel) (Entered: 06/02/2023)
06/02/2023 16  MOTION to Appear Pro Hac Vice for Justin DiCharia (Filing fee $100, receipt number AMDDC-10634093.) by Robert Chen, Otter Audits LLC, RC Security LLC(Clattenburg, Rachel) (Entered: 06/02/2023)
06/02/2023 17  PAPERLESS ORDER granting 15 Motion to Appear Pro Hac Vice on behalf of Kevin P. Crenny. Directing attorney Kevin P. Crenny to register for pro hac vice filing in the District of Maryland through PACER at https://pacer.uscourts.gov/ if attorney has not already done so. The Pro Hac Vice option must be selected when registering. Signed by Clerk on 6/2/2023. (mh4s, Deputy Clerk) (Entered: 06/02/2023)
06/02/2023 18  PAPERLESS ORDER granting 16 Motion to Appear Pro Hac Vice on behalf of Justin DiCharia. Directing attorney Justin DiCharia to register for pro hac vice filing in the District of Maryland through PACER at https://pacer.uscourts.gov/ if attorney has not already done so. The Pro Hac Vice option must be selected when registering. Signed by Clerk on 6/2/2023. (mh4s, Deputy Clerk) (Entered: 06/02/2023)
06/02/2023 19  MOTION to Appear Pro Hac Vice for Joshua Aaron Levy (Filing fee $100, receipt number AMDDC-10634494.) by Robert Chen, Otter Audits LLC, RC Security LLC(Clattenburg, Rachel) (Entered: 06/02/2023)
06/02/2023 20  PAPERLESS ORDER granting 19 Motion to Appear Pro Hac Vice on behalf of Joshua A Levy. Directing attorney Joshua A Levy to register for pro hac vice filing in the District of Maryland through PACER at https://pacer.uscourts.gov/ if attorney has not already done so. The Pro Hac Vice option must be selected when registering. Signed by Clerk on 6/2/2023. (mh4s, Deputy Clerk) (Entered: 06/02/2023)
06/05/2023 21  NOTICE by Robert Chen, Otter Audits LLC, RC Security LLC of Intent to File Motion to Dismiss (Clattenburg, Rachel) (Entered: 06/05/2023)
07/18/2023 22  MOTION to Appear Pro Hac Vice for Madelyn K. White (Filing fee $100, receipt number AMDDC-10713295.) by Li Fen Yao(Kennedy, Daniel) (Entered: 07/18/2023)
07/19/2023 23  PAPERLESS ORDER granting 22 Motion to Appear Pro Hac Vice on behalf of Madelyn K. White. Directing attorney Madelyn K. White to register for pro hac vice filing in the District of Maryland through PACER at https://pacer.uscourts.gov/ if attorney has not already done so. The Pro Hac Vice option must be selected when registering. Signed by Clerk on 7/19/2023. (mh4s, Deputy Clerk) (Entered: 07/19/2023)
09/13/2023 24  PAPERLESS NOTICE. A CASE MANAGEMENT CONFERENCE is scheduled for September 15, 2023 at 5:00 p.m. to discuss 21 NOTICE OF INTENT TO FILE A MOTION TO DISMISS. To join the call at the scheduled time: (1) Dial 1-888-557-8511. (2) Enter access code 3008173, followed by the # key. You will then be placed on hold until Chambers dials into the call, at which point you will be prompted to enter a security code. (3) When prompted, enter security code 09150500 followed by the # key. The call will be recorded, so please do not use speakerphones as they compromise sound quality. Also, we ask that parties not remain on the conference line after the Judge has left the call, to ensure that the line is free for other calls that may be on the Judge's calendar. The parties should also be prepared to address whether they consent to have all further proceedings before a Magistrate Judge and whether they wish to participate in a mediation session with a Magistrate Judge, whether before, during, or after discovery. Parties are expected to consult with their clients and confer with each other on these issues in advance of the Case Management Conference and, if possible, present joint views to the Court. (ds2s, Deputy Clerk) (Entered: 09/13/2023)
09/15/2023 25  Case Management Conference held on 9/15/2023 before Judge Theodore D. Chuang. (FTR Recording/2B/Gomez) (dg3s, Deputy Clerk) (Entered: 09/15/2023)
09/19/2023 26  ORDER memorializing the September 15, 2023 Case Management Conference. Signed by Judge Theodore D. Chuang on 9/18/2023. (ybs, Deputy Clerk) (Entered: 09/19/2023)
10/06/2023 27  MOTION to Dismiss for Lack of Jurisdiction by Robert Chen, Otter Audits LLC, RC Security LLC (Attachments: # 1 Memorandum in Support of Motion to Dismiss for Lack of Personal Jurisdiction, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Text of Proposed Order)(Clattenburg, Rachel) (Entered: 10/06/2023)
11/06/2023 28  RESPONSE in Opposition re 27 MOTION to Dismiss for Lack of Jurisdiction filed by Li Fen Yao. (Attachments: # 1 Declaration of Stephen M. Plotnick in Opposition to Defendants' Motion to Dismiss Complaint for Lack of Personal Jurisdiction, # 2 Exhibit A to Plotnick Declaration, # 3 Exhibit B to Plotnick Declaration, # 4 Exhibit C to Plotnick Declaration, # 5 Declaration of David Chen in Opposition to Defendants' Motion to Dismiss Complaint for Lack of Personal Jurisdiction, # 6 Exhibit A to Chen Declaration, # 7 Exhibit B to Chen Declaration, # 8 Exhibit C to Chen Declaration, # 9 Exhibit D to Chen Declaration, # 10 Exhibit E to Chen Declaration, # 11 Exhibit F to Chen Declaration, # 12 Exhibit G to Chen Declaration, # 13 Exhibit H to Chen Declaration, # 14 Text of Proposed Order)(Plotnick, Stephen) (Entered: 11/06/2023)
11/20/2023 29  REPLY to Response to Motion re 27 MOTION to Dismiss for Lack of Jurisdiction filed by Robert Chen, Otter Audits LLC, RC Security LLC. (Attachments: # 1 Exhibit Exhibit A)(Clattenburg, Rachel) (Entered: 11/20/2023)
02/01/2024 30  ORDER directing parties to file a Joint Record withing 7 days; directing parties to file corrected briefs on the Motion to Dismiss for Lack of Personal Jurisdiction; directing parties to file a hard copy of the Joint Record within 7 days. Signed by Judge Theodore D. Chuang on 2/1/2024. (ybs, Deputy Clerk) (Entered: 02/01/2024)
02/05/2024 31  NOTICE by Robert Chen, Otter Audits LLC, RC Security LLC re 30 Order, Filing of Joint Record (Clattenburg, Rachel) (Entered: 02/05/2024)
02/05/2024 32  NOTICE by Robert Chen, Otter Audits LLC, RC Security LLC re 30 Order, 31 Notice (Other) Table of Exhibits for Joint Record (Clattenburg, Rachel) (Entered: 02/05/2024)
02/05/2024 33  Memorandum re 27 MOTION to Dismiss for Lack of Jurisdiction CORRECTED memorandum filed by Robert Chen, Otter Audits LLC, RC Security LLC.(Clattenburg, Rachel) (Entered: 02/05/2024)
02/05/2024 34  REPLY to Response to Motion re 27 MOTION to Dismiss for Lack of Jurisdiction CORRECTED Reply Brief filed by Robert Chen, Otter Audits LLC, RC Security LLC.(Clattenburg, Rachel) (Entered: 02/05/2024)
02/05/2024 35  Memorandum re 27 MOTION to Dismiss for Lack of Jurisdiction - CORRECTED Plaintiff's Memo of Law in Opposition to Defendants' Motion to Dismiss filed by Li Fen Yao.(Plotnick, Stephen) (Entered: 02/05/2024)
03/11/2024 36  MEMORANDUM OPINION. Signed by Judge Theodore D. Chuang on 3/11/2024. (dass, Deputy Clerk) (Entered: 03/11/2024)
03/11/2024 37  ORDER denying Defendants' 27 Motion to Dismiss for Lack of Jurisdiction; setting answer deadline. Signed by Judge Theodore D. Chuang on 3/11/2024. (dass, Deputy Clerk) (Entered: 03/11/2024)
03/25/2024 38  ANSWER to 1 Complaint by Robert Chen, Otter Audits LLC, RC Security LLC.(Clattenburg, Rachel) (Entered: 03/25/2024)
03/26/2024 39  SCHEDULING ORDER: Status Report due by 8/8/2024.. Signed by Judge Theodore D. Chuang on 3/26/2024. (ybs, Deputy Clerk) (Entered: 03/26/2024)
03/26/2024 40  PAPERLESS NOTICE. A RULE 16 CONFERENCE is scheduled for April 9, 2024 at 10:30 a.m. To join the call at the scheduled time: (1) Dial 1-888-557-8511. (2) Enter access code 3008173, followed by the # key. You will then be placed on hold until Chambers dials into the call, at which point you will be prompted to enter a security code. (3) When prompted, enter security code 04091030 followed by the # key. The call will be recorded, so please do not use speakerphones as they compromise sound quality. Also, we ask that parties not remain on the conference line after the Judge has left the call, to ensure that the line is free for other calls that may be on the Judge's calendar. The parties are reminded that they should be prepared to address whether they consent to have all further proceedings before a Magistrate Judge and whether they wish to participate in a mediation session with a Magistrate Judge, whether before, during, or after discovery. Parties are expected to consult with their clients and confer with each other on these issues in advance of the Rule 16 Case Management Conference and, if possible, present joint views to the Court. (ds2s, Deputy Clerk) (Entered: 03/26/2024)
03/26/2024 41  Local Rule 103.3 Disclosure Statement by Otter Audits LLC identifying Other Affiliate DIGITAL ASSET NETWORK SECURITY PTE. LTD. for Otter Audits LLC.(Clattenburg, Rachel) (Entered: 03/26/2024)
03/26/2024 42  Local Rule 103.3 Disclosure Statement by RC Security LLC (Clattenburg, Rachel) (Entered: 03/26/2024)
04/04/2024 43  NOTICE by Robert Chen, Otter Audits LLC, RC Security LLC of Intent to File Motion for Judgment on the Pleadings (Clattenburg, Rachel) (Entered: 04/04/2024)
04/04/2024 44  NOTICE by Robert Chen, Otter Audits LLC, RC Security LLC re 39 Scheduling Order Notice of Motion to Stay Discovery and Other Deadlines (Clattenburg, Rachel) (Entered: 04/04/2024)
04/09/2024 45  Case Management Conference held on 4/9/2024 before Judge Theodore D. Chuang. (Court Reporter: FTR Recording\2B) (ds2s, Deputy Clerk) (Entered: 04/09/2024)
04/09/2024 46  ORDER memorializing the April 9, 2024 Case Management Conference; referring case to a United States Magistrate Judge for mediation; granting Defendants leave to file a proposed Motion for Judgment on the Pleadings and Motion for a Stay of Discovery and Deadlines. Signed by Judge Theodore D. Chuang on 4/9/2024. (ybs, Deputy Clerk) (Entered: 04/09/2024)
04/09/2024 47  ORDER REFERRING CASE to Magistrate Judge Ajmel Ahsen Quereshi for Mediation. Signed by Judge Theodore D. Chuang on 4/9/2024. (mg3s, Deputy Clerk) (Entered: 04/09/2024)
04/11/2024 48  ORDER Scheduling Settlement Conference virtually via Zoom.Gov for June 25, 2024, at 10:00 a.m. Signed by Magistrate Judge Ajmel Ahsen Quereshi on 4/11/2024. (ybs, Deputy Clerk) (Entered: 04/11/2024)
04/12/2024 49  AMENDED ANSWER to 1 Complaint by Robert Chen, Otter Audits LLC, RC Security LLC. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit)(Clattenburg, Rachel) (Entered: 04/12/2024)
04/19/2024 50  MOTION for Judgment on the Pleadings , MOTION to Stay re 1 Complaint, 49 Amended Answer to Complaint by Robert Chen, Otter Audits LLC, RC Security LLC (Attachments: # 1 Memorandum in Support, # 2 Text of Proposed Order, # 3 Text of Proposed Order)(Clattenburg, Rachel) (Entered: 04/19/2024)
05/09/2024 51  Joint MOTION to Amend/Correct 39 Scheduling Order by Robert Chen, Otter Audits LLC, RC Security LLC (Attachments: # 1 Text of Proposed Order)(Clattenburg, Rachel) (Entered: 05/09/2024)
05/09/2024 52  ORDER granting 51 Joint MOTION to Amend/Correct 39 Scheduling Order; status report due 10/4/2024. Signed by Judge Theodore D. Chuang on 5/9/2024. (ybs, Deputy Clerk) (Entered: 05/09/2024)
05/10/2024 53  NOTICE by Robert Chen, Otter Audits LLC, RC Security LLC Stipulated Confidentiality Agreement and Protective Order (Clattenburg, Rachel) (Entered: 05/10/2024)
05/10/2024 54  STIPULATED CONFIDENTIALITY AGREEMENT AND PROTECTIVE ORDER. Signed by Judge Theodore D. Chuang on 5/10/2024. (Attachments: # 1 Exhibit A)(ybs, Deputy Clerk) (Entered: 05/10/2024)
05/10/2024 55  RESPONSE in Opposition re 50 MOTION for Judgment on the Pleadings MOTION to Stay re 1 Complaint, 49 Amended Answer to Complaint filed by Li Fen Yao.(Plotnick, Stephen) (Entered: 05/10/2024)
05/24/2024 56  REPLY to Response to Motion re 50 MOTION for Judgment on the Pleadings MOTION to Stay re 1 Complaint, 49 Amended Answer to Complaint filed by Robert Chen, Otter Audits LLC, RC Security LLC.(Clattenburg, Rachel) (Entered: 05/24/2024)
05/28/2024 57  NOTICE by Robert Chen, Otter Audits LLC, RC Security LLC Filing of Joint Record re Defendants' Motion for Judgment on the Pleadings and to Stay Discovery (Clattenburg, Rachel) (Entered: 05/28/2024)
05/28/2024 58  NOTICE by Robert Chen, Otter Audits LLC, RC Security LLC Table of Exhibits for Joint Record (Clattenburg, Rachel) (Entered: 05/28/2024)
05/28/2024 59  Memorandum re 50 MOTION for Judgment on the Pleadings MOTION to Stay re 1 Complaint, 49 Amended Answer to Complaint CORRECTED Memorandum in Support of Defendants' Motion filed by Robert Chen, Otter Audits LLC, RC Security LLC.(Clattenburg, Rachel) (Entered: 05/28/2024)
05/29/2024 60  Correspondence re: Requesting Permission to File a Short Sur-Reply to the Reply Memo of Law in Further Support of Defendants' Motion for Summary Judgment on the Pleadings (Plotnick, Stephen) (Entered: 05/29/2024)
05/30/2024 61  ORDER granting 60 Correspondence Requesting Permission to File a Short Sur-Reply. Signed by Judge Theodore D. Chuang on 5/30/2024. (ybs, Deputy Clerk) (Entered: 05/30/2024)
05/31/2024 62  RESPONSE in Opposition re 50 MOTION for Judgment on the Pleadings MOTION to Stay re 1 Complaint, 49 Amended Answer to Complaint - Plaintiff's Sur-Reply as Permitted By Order (ECF#61) filed by Li Fen Yao.(Plotnick, Stephen) (Entered: 05/31/2024)
06/25/2024 63  Settlement Conference held on 6/25/2024 before Magistrate Judge Ajmel Ahsen Quereshi. (Quereshi, Ajmel) (Entered: 06/25/2024)
06/27/2024 64  Joint MOTION to Stay Discovery by Li Fen Yao (Attachments: # 1 Text of Proposed Order)(Plotnick, Stephen) (Entered: 06/27/2024)
06/28/2024 65  Marginal ORDER granting 64 Joint MOTION to Stay Discovery; STAYING case. Signed by Judge Theodore D. Chuang on 6/28/2024. (ybs, Deputy Clerk) (Entered: 06/28/2024)
07/26/2024 66  Joint MOTION to Stay Discovery by Li Fen Yao (Attachments: # 1 Text of Proposed Order)(Plotnick, Stephen) (Entered: 07/26/2024)
07/26/2024 67  ORDER granting 66 Joint Motion to Extend Stay of Discovery. Signed by Judge Theodore D. Chuang on 7/26/2024. (heps, Deputy Clerk) (Entered: 07/26/2024)