EXHIBIT &

Case 1:22-cv-24270-DPG Document 56-3 Entered on FLSD Docket 04/07/2023 Page 1 of 5
 

K&L GATES LLP 

2801 VIA FORTUNA SUITE 350 AUSTIN TX 78746 

T +1 512 482 6800 F +1 512 482 6859 klgates.com 

February 5, 2023 Henry Pogorzelski 

henry.pogorzelski@klgates.com 

T + 1 512 482 6826 

C + 1 713 824 3103 

Legal Demands from Waxman Sales LLC dba BIRDROCK Home, incl. 

Demand that Plaintiff Retract Preliminary Injunction to Amazon.com

By E-mail: hrubio@rubiolegal.com; 

apuentes@rubiolegal.cm; 

frubio@rubiolegal.com; 

info@rubiolegal.com 

Mr. Humberto Rubio, Jr. 

Mr. Felipe Rubio, Esq. 

Ms. Arabella Puentes 

Law Firm of Rubio & Associates, P.A. 

8950 SW 74 Ct., Suite 1804 

Miami, Florida 33156 

Re: XYZ Corporation v. The Individuals, Partnerships and Unincorporated Associations 

Identified on Schedule “A”, Case No. 1:22-cv-24270-DPG (S.D. Fla.) 

Demands from Defendant Waxman Sales dba BIRDROCK Home

Dear Counsel: 

We are intellectual property legal counsel for Waxman Sales, LLC, which does business 

on Amazon.com and elsewhere as BIRDROCK Home. Waxman Sales is a Texas LLC with its 

home office in Austin, Texas. See https://www.birdrockhome.com/. We understand that 

Waxman Sales has been named in the above-styled case in which your client has asserted a 

claim of design patent infringement against a number of ostensively foreign entities. 

Be advised that as a result of the TRO / Preliminary Injunction / Order Restraining 

Transfer of Asserts (collectively, the “Preliminary Injunction” or “PI”) that you sent to 

Amazon.com, Amazon.com is withholding a payment to Waxman Sales of $785,115.03. 

This is causing irreparable harm to Waxman Sales. As applied against Waxman Sales, your 

preliminary injunction is invalid and was obtained under false premises. 

Waxman Sales hereby demands that you immediately contact Amazon.com to 

retract the Preliminary Injunction as applied against Waxman Sales and its BIRDROCK 

HOME storefront, including a statement that plaintiff’s assertion of the Preliminary 

Injunction was submitted in error. 

Case 1:22-cv-24270-DPG Document 56-3 Entered on FLSD Docket 04/07/2023 Page 2 of 5
February 5, 2023 2 

As you consider the foregoing demand, please keep in mind the following: 

1. Waxman Sales Is Obviously an Established Domestic Company: Your complaint, your 

ex parte TRO and preliminary relief motions, and indeed all of your filings in this case, 

are premised upon defendants being aliens who are likely to try to hide assets. Any 

modicum of research would have revealed that Waxman Sales dba BIRDROCK Home is 

an established domestic entity with a substantial presence in the United States. 

2. Your Preliminary Injunction Is Void on Its Face: Rule 65 and supporting caselaw are 

clear that a court may not issue a preliminary injunction with notice and a hearing. See, 

e.g., Dunbar v. Prelesnik, 2015 WL 1393376, at * 5 (W.D. Mich. Mar. 25, 2015) (“[T]he 

Court may not issue an ex parte preliminary injunction.”); Phillips v. Chas. Schreiner 

Bank, 894 F.2d 127, 130–31 (5th Cir.1990) (“[t]he courts consistently have treated rule 

65(a)(1) as mandatory and have not hesitated to dissolve preliminary injunctions issued 

without notice or the opportunity for a hearing on disputed questions of fact and law.”). 

3. Your Preliminary Injunction Is Causing Extreme and Irreparable Harm: Waxman Sales 

sells over 900 different items on Amazon.com, not just the one or two items that your 

complaint apparently accuses of infringement. Waxman Sales relies upon substantial 

periodic payments from Amazon.com in order to (i) pay its vendors; (ii) continue 

designing and sourcing new products, and (iii) most importantly, make payroll for about 

43 citizens of the United States, plus about 13 individuals residing outside of the United 

States. 

4. Waxman Sales Will Succeed in Dissolving the Asset Restraining Portion of Your 

Preliminary Injunction: Regardless of the merits of your design patent infringement 

claim—a claim that we have no way to evaluate1 due to the ex parte nature of your 

filings—it should go without saying that once Judge Gayles learns that plaintiff has 

misused the asset restraining order portion of his Preliminary Injunction to seize without 

notice almost one million dollars from an establish American company, thereby risking 

the livelihoods of over 40 American families, Judge Gayles will take a very close look at 

your firm’s previous representations to the Court. 

5. Waxman Sales Will Succeed in Having This Case Dismissed: The patent venue statute 

permits defendants to be sued only in districts in which they reside or have a regular and 

established place of business. TC Heartland LLC v. Kraft Food Brands LLC, 137 S. Ct. 

1514 (2017). Waxman Sales resides in Texas and has no operations or employees in 

Florida. Any patent lawsuit against Waxman Sales should be brought in the Western 

District of Texas. 

 

1 We look forward to learning the identity of the design patent that you are asserting. Be advised that 

one of the Waxman Sales products that you have apparently accused of infringement has been on sale 

on Amazon.com since at least as early as October 2017. If this fact invalidates your client’s design 

patent, then obviously your entire lawsuit will be proven to be completely without merit. 

Case 1:22-cv-24270-DPG Document 56-3 Entered on FLSD Docket 04/07/2023 Page 3 of 5
February 5, 2023 3 

You will see that my firm has now appeared in this case. Please be advised that 

Waxman Sales intends to defend its interests vigorously, including pursuing your client, and if 

necessary your law firm, for its damages caused by Amazon.com’s withholding of payment. 

We hope that you will be mindful of the extreme damage that your injunction is doing to 

Waxman Sales, and we expect that you will do everything within your power to convince 

Amazon.com to cease withholding payments to Waxman Sales. 

Demand for Pleadings 

Waxman Sales demands that you immediately forward to my firm via email all ex parte 

pleadings and transcripts for this case. 

Demand for Meet and Confer 

Waxman Sales intends to a file a motion to dismiss for improper venue, followed by an 

emergency motion to dissolve your Preliminary Injunction as to Waxman Sales. Pursuant to 

Rule 7.1(a)(3) the S.D. Fla. Local Rules, please state your firm’s availability any time on 

Monday, February 6, 2023, to discuss the foregoing intended motions and the contents of this 

letter. 

Preservation Obligation 

There is a high likelihood that Waxman Sales will pursue its damages, including attorney fees and 

possible sanctions. Please be reminded that you (including plaintiff and any third party 

consultancies giving advice to plaintiff) are required by law to preserve, and to protect from 

destruction, all documents (including all electronic documents) relating to plaintiff’s investigation 

of Waxman Sales and its products, including its decision to include Waxman Sales in the case. 

Conclusion: 

We look forward to hearing from you as soon as possible. Once Amazon.com is no 

longer wrongly withholding payments from Waxman Sales, we are happy to discuss any 

contention that any product of Waxman Sales may violate your client’s design patent or other 

intellectual property rights. 

Very truly yours, 

K&L Gates LLP 

Henry Pogorzelski 

Partner 

Case 1:22-cv-24270-DPG Document 56-3 Entered on FLSD Docket 04/07/2023 Page 4 of 5
February 5, 2023 4 

cc: Stewart Mesher, Esq. 

 Jonathan Morton, Esq. 

 Rasheem Johnson, Esq. 

Case 1:22-cv-24270-DPG Document 56-3 Entered on FLSD Docket 04/07/2023 Page 5 of 5