2010-09-17 - Complaint - Lutz v Respond Associates Et Al 2 10-Cv-13718 SJM-MAR

8/8/2019 2010-09-17 - Complaint - Lutz v Respond Associates Et Al 2 10-Cv-13718 SJM-MAR

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UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF MICHIGAN

SOUTHERN DIVISION

JOHN F. LUTZ, JR., ))

Plaintiff and Relator, )

)

v. ) Civil Action No.:)

RESPOND ASSOCIATES, INC.; and ) Jury Trial RequestedFrank McClelland )RESPOND, INC.; )

)Defendants. )

COMPLAINT

Plaintiff and Relator, John F. Lutz, Jr. (Lutz or Plaintiff), by and through his counsel

Dobrusin & Thennisch, P.C., hereby pleads the following against Defendants Respond Associates,

Inc. (Respond Associates), Frank McClelland (McClelland) and Defendant Respond, Inc.(Respond), wherein Respond, McClelland and Respond Associates are collectively referred to as

Defendants:

NATURE OF ACTION

1. This is a patent infringement action for Defendants infringement of U.S. Patent No.5,892,170 under 35 U.S.C. 271.

2. This is also a qui tam action for false patent marking under 35 U.S.C. 292.3. As set forth in detail below, Defendants have violated 35 U.S.C. 271 and 292(a)

by making, using, offering for sale, selling and exporting the SKATE FENDERS product in

violation of Plaintiffs U.S. Patent No. 5,829,170 and by falsely advertising and marking the

Defendants SKATE FENDERS product with U.S. Patent No. 7,523,567 for the purpose of

Case 2:10-cv-13718-SJM -MAR Document 1 Filed 09/17/10 Page 1 of 23


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deceiving its competitors and the public into believing that such articles are covered by the falsely

advertised and marked patent.

4. Plaintiff seeks an award of monetary damages and an injunction against theDefendants for infringement of its exclusive patent rights and Plaintiff seeks an award of monetary

damages against the Defendants, one-half of which shall be paid to the United States, the other half

of which shall be paid to Plaintiff pursuant to 35 U.S.C. 292(b).

THE PARTIES

PLAINTIFF

5. Plaintiff, John F. Lutz, Jr., is a natural person and citizen of the United States ofAmerica and is a resident of Caspar, Wyoming.

DEFENDANTS

6. Defendant Respond, Inc. is a Michigan corporation, having a place of businesslocated at 5922 Foothills Trail, Gaylord, Michigan. 49735. A copy of the Articles of Incorporation

for Respond, Inc. is attached as Exhibit A, and is hereby made a part of this Complaint.

7. The Resident Agent for Respond, Inc. is Frank McClelland. See Exhibit A, page 1attached.

8. The Resident Address for Respond, Inc. is 5922 Foothills Trail, Gaylord, Michigan.49735. See Exhibit A, page 1 attached.

9. On February 11, 2010, Respond, Inc. filed a Certificate of Assumed Name with theMichigan Department of Energy, Labor & Economic Growth, Bureau of Commercial Services, for

the assumed name SKATE FENDERS. The Assumed Name Certificate is signed by Frank



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McClelland and is dated February 5, 2010. A copy of the Assumed Name Certificate is attached as

Exhibit B, and is hereby made a part of this Complaint.

10. Upon information and belief, Defendant Frank McClelland is a natural person andcitizen of the United States of America and resides in Gaylord, Michigan.

11. Defendant Respond Associates, Inc. is a Michigan corporation, having a businessaddress at 5922 Foothills Trail, Gaylord, Michigan. 49735. A copy of the 2005 through 2009

Annual Reports for Respond Associates, Inc. is attached as Exhibit C, and is hereby made a part of

this Complaint.

12. The Resident Agent for Respond Associates, Inc. is Frank McClelland. See ExhibitC attached.

13. The Resident Address for Respond Associates, Inc. is 5922 Foothills Trail, Gaylord,Michigan. 49735. See Exhibit C attached.

JURISDICTION AND VENUE

14. This is a civil action for violations of the Patent Laws of the United States, 35U.S.C. 1 et. seq. This Court has exclusive subject matter jurisdiction under 28 U.S.C. 1331

and 1338(a).

15. This Court has personal jurisdiction over Defendants because Defendants engage insubstantial, continuous and systematic business within this District; place infringing products into

the stream of commerce in this judicial District; and have falsely marked such products and

advertised and sole such falsely marked products to consumers in this District.



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16. Venue is proper in this judicial district under 28 U.S.C. 1400(b) and 1391,because, among other reasons, Defendants are subject to personal jurisdiction in this judicial district

and commit acts of patent infringement in this district.

17. Plaintiff has standing to bring this action for violations of 35 U.S.C. 1 et. seq. asthe patentee of the U.S. Patent being infringed and to bring the false marking claim in violation of

35 U.S.C. 292, which provides that any person may sue for civil monetary penalties for false

marking in connection with any unpatented article and/or marking of patents. Stauffer v. Brooks

Brothers, Inc., et al. 2010 WL 3397419 (Fed. Cir. August 31, 2010). See also Vermont Agency of

Natural Resources v. United States ex rel. Stevens, 529 U.S. 765, 768 n.1 (2000), (listing section

292(b) as one of four qui tam statutes currently in force); andPequignot v. Solo Cup Co., 608 F.3d

1356 (Fed. Cir. 2010).

BACKGROUND

18. Plaintiff incorporates the above paragraphs as if fully set forth herein.19. Plaintiff Lutz grew up in Michigan and played organized youth ice hockey.20. After graduating from Hillsdale College and going to work at a family business in

Macomb, Michigan, Plaintiff Lutz was playing on an ice hockey team as part of an organized mens

hockey league.

21. During a scheduled game, an opposing player took a slap shot at Plaintiff Lutzsteams goal and the puck hit him square in the side of the foot. Because of the impact of the puck

on the side of his skate, Plaintiff Lutz was out for the rest of that game from the pain of the injury.

The pain of that injury caused Plaintiff Lutz to become timid when playing defense in future ice



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hockey games. Plaintiff Lutz believed that there must be a better way to prevent this type of injury

to a hockey player's foot.

22. Soon after that foot injury, Plaintiff Lutz began to develop ideas for a piece ofhockey equipment that would protect a players foot from not only the impact of a puck but also

from the impact of a slash with a hockey stick. Plaintiff Lutz began experimenting and making

prototypes of samples and then sought patent protection for his skate protector invention.

Plaintiffs 170 Patent

23. Plaintiff is the owner and patentee of U.S. Patent No. 5,829,170, which was dulyand lawfully issued by the United States Patent and Trademark Office on November 3, 1998,

entitled PROTECTIVE COVER FOR AN ICE HOCKEY SKATE (the 170 Patent). A true

and correct copy of the 170 Patent is attached as Exhibit D and is hereby made a part of this

Complaint.

24. Figure 2 of Plaintiffs 170 Patent reproduced below is a representative drawing ofthe device disclosed and patented in the Claims of the 170 Patent.



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25. The 170 Patent includes Claims 1 through 6. Claims 1 and 6 are in independentform. 35 U.S.C. 112 3. Claim 1 of the 170 Patent states:

1. A protective cover apparatus for partially covering the foot of a

player wearing a hockey skate, said hockey skate having a front

portion including a tongue portion, a first side portion and a second

side portion, said protective cover apparatus comprising:

a unitary layer having a first portion covering said front portion of

said skate; a second portion unitary with said first portion and

covering said first side portion of said hockey skate; and a third

portion unitary with said first and said second portions and covering

said second side portion of said hockey skate, said second and third

side portions extending in a direction away from said first side

portion to cover the ankle area of said hockey skate; and

means for connecting said layer to said skate, said connecting means

having a means for creating a gap between said layer and said skate,

said means for creating said gap being located between said hockey

skate and said second and third portions of said layer such that said

protective cover apparatus may be displaced toward said skate by an

impact force and partly dissipate such force through said connection

means before said layer makes contact with said skate.

SeeExhibitD,column8,lines39through62.

False Patent Marking Statute

26. The false marking patent statute, 35 U.S.C. 292, exists to insure that the public hasaccurate information on the existence of patent rights. As summarized by the United States Court of

Appeals for the Federal Circuit inForest Group, Inc. v. Bon Tool Company, et al., 590 F.3d 1295

(Fed. Cir. 2009), falsely marking a product can impose on the public the following injuries:



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a. Congress intended the public to rely on marking as a ready means

of discerning the status of intellectual property embodied in an article

of manufacture or design.

b. Acts of false marking deter innovation and stifle competition in themarketplace.

c. If an article that is within the public domain is falsely marked,

potential competitors may be dissuaded from entering the same

market.

d. False marks may also deter scientific research when an inventor

sees a mark and decides to forego continued research to avoid

possible infringement.

e. False marking can also cause unnecessary investment in designaround or costs incurred to analyze the validity or enforceability of a

patent whose number has been marked upon a product with which a

competitor would like to compete.

f. In each instance where it is represented that an article is patented, a

member of the public desiring to participate in the market for the

marked article must incur the cost of determining whether the

involved patents are valid and enforceable.

g. The more articles that are falsely marked the greater the chance thatcompetitors will see the falsely marked article and be deterred from

competing. In sum, knowledge of the patentee's identity facilitates

avoidance of infringement with design changes, negotiations for

licenses, and even early resolution of rights in a declaratory judgment

proceeding.

Id. at pp. 1302-1303.

27. In addition to the injuries referred to inForest Group, the U.S. Court of Appeals inPequignot v. Solo Cup Company, 608 F.3d 1356 (Fed. Cir. 2010) acknowledged additional injuries

due to false patent marking as follows:



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a. As with a never-patented article, an article marked with an expired

patent number imposes on the public the cost of determining whether

the involved patents are valid and enforceable.

b. Confusing and misleading the public, as the expiration date of aU.S. patent is not easily ascertainable by the public at the time of

purchase.

c. Moreover, while basic information about a patent may be available

to the public via the website of the U. S. Patent and Trademark

Office, a member of the public must conduct a thorough and

complicated analysis to determine whether a patent is expired,

thereby imposing on the public the cost of determining whether the

involved patents are valid and enforceable.

Id. at 1362.

28. When a patent expires, all monopoly rights in the patent terminate irrevocably.Therefore, a product marked with an expired patent is unpatented within the meaning of 35

U.S.C. 292.Pequignot v. Solo Cup Company, 608 F.3d 1356, 1361 (Fed. Cir. 2010).

29. An article that was once protected by a now-expired patent is no different from anarticle that has never received protection from a patent. Both are in the public domain. Furthermore,

an article that is no longer protected by a patent is not patented, and is more aptly described as

unpatented.Pequignot at 1361.

30. The consequences of false patent markings described above constitute injuries infact to the United States that occur each time an article is falsely marked. Forest Group, Inc. v.

Bon Tool Company, et al., 590 F.3d 1295, 1303 (Fed. Cir. 2009).



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Defendants 606 Application and 567 Patent

31. On November 14, 2006, Defendant Frank McClelland filed U.S. Patent Application,Serial No. 11/559,606 (the 606 Application) with the U.S. Patent Office. On April 28, 2009 the

606 Application issued as U.S. Patent No. 7,523,567 B1 (the 567 Patent). A true and correct

copy of the 567 Patent is attached as Exhibit E and hereby made a part of this Complaint.

32. FIG 3 of the 606 Application and of the 567 Patent is representative of thedevice disclosed in the 567 Patent.

33. Defendants 567 Patent lists the Plaintiffs 170 Patent as a U.S. PATENTDOCUMENT. See Exhibit E, first page.

34. The 606 Application, as filed, and the 567 Patent each include aBACKGROUND OF THE INVENTION AND DESCRIPTION OF RELATED ART section that

states the following about the Plaintiffs 170 Patent:

U.S. Pat. No. 5,829,170 to Lutz, Jr. shows a removable protective

shell cover molded into a boot-fitting shape, covering the upper andsides (including the ankle region), and fastened with straps running

behind the heel and under the sole of the boot. The strap ends are

folded and secured through slots in an effort to uniformly space the

shell off the boot to allow the shell to absorb and dissipate impact

away from the surface of the boot. The strap arrangement also

specifically tensions the upper surface of the shell against the boot



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lacing on top of the boot, using the lacing to help define the gap and

to serve as a cushion. The shell is molded from a flat blank with

constant thickness, and thus only "approximates" the shape of the

boot and does not cover or wrap around any part of the heel area.

Lutz, Jr. criticizes the Crane et al. device as complicated to put on and

take off, heavy, and prone to having the padding ripped off during a

game.

See Exhibit E attached, 567 Patent at column 1, lines24 through 37 and lines 49 through

52.

35. Along with the filing of the 606 Application, Defendant Frank McClelland signed aDECLARATION FOR UTILITY OR DESIGN PATENT APPLICATION (37 CFR 1.63)

stating:

I hereby state that I have reviewed and understand the contents of the

above identified specification, including the claims, as amended by

any amendment specifically referred to above.

. . .

I hereby declare that all statements made herein of my own

knowledge are true and that all statements made on information and

belief are believed to be true; and further that these statements were

made with the knowledge that willful false statements and the like so

made are punishable by fine or imprisonment, or both, under 18

U.S.C. 1001 and that such willful false statements may jeopardize the

validity of the application or any patent issued thereon.

See Exhibit F at Pages 1 and 2, attached and incorporated herein.

36. The 606 Application Declaration is dated 11-13-06 and is signed by FrankMcClelland having a Mailing Address of 5922 Foothills Trail, Gaylord, Michigan 49735 U.S.

See Exhibit F at page 2.



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37. Along with the filing of the 606 Application, Frank McClelland signed aNONPUBLICATION REQUEST UNDER 35 U.S.C. 122(b)(2)(B)(i) stating:

I hereby certify that the invention disclosed in the attached

application has not and will not be the subject of an application filed

In another country, or under a multilateral international agreement,

that requires publication at eighteen months after filing.

I hereby request that the attached application not be published under

35 U.S.C. 122(b).

See Exhibit G, attached and incorporated herein.

38. The 606 Application as originally filed on 11/14/2006 includes only one claim inindependent form. Independent Claim 1 of the 606 Application as originally filed states:

[Claim 1] A protective cover for a hockey skate boot, the cover

comprising:

a one-piece molded protective shell having sidewalls covering

substantial portions of the ankles and sides of the boot, the sidewallsconnected by an instep-covering top portion and spaced by an open

bottom and contiguous split rear, the shell comprising heel-cupping

sidewall portions adapted to partially wrap around opposite sides of a

rounded heel portion of a hockey skate boot, the heel-cupping

sidewall portions capable of being flexed apart by hand to fit the

cover diagonally over a top instep portion of a boot, the shell having a

molded-in flex bias along a diagonal line from the heel-cupping

portions toward the instep-covering top portion tending to draw the

heel-cupping sidewall portions together to grip a rounded heel portion

of a boot when the heel-cupping sidewall portions are released; and,

spaced pads on an underside of the shell, the spaced pads spacing the

shell from the boot.



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See Exhibit H, 606 Application as originally filed, Page 10 of 12, attached and

incorporated herein.

39. In reliance upon the representations made by Frank McClelland, and after havingexamined the 606 Application, on January 30, 2009, the U.S. Patent Office issued a NOTICE OF

ALLOWANCE AND ISSUE FEE(S) DUE which included a Notice of Allowability

indicating it was responsive to the application filed 11/14/06 and that the allowed claim(s) is/are

1-10. See Exhibit I, page 4 attached and incorporated herein.

40.

On March 19, 2009, the Issue Fee for the 606 Application was paid. See Exhibit J,

attached and incorporated herein.

41. On April 8, 2009, the U.S. Patent Office mailed an ISSUE NOTIFICATION forthe 606 Application indicating it would issue on April 28, 2009 as PATENT NO. 7523567.

See Exhibit K, attached and incorporated herein.

42. On April 23, 2009, after payment of the Issue Fee Due and after issuance of theIssue Notification by the U.S. Patent Office, a RESCISSION OF PREVIOUS

NONPUBLICATION REQUEST was filed in the 606 Application. The RESCISSION OF

PREVIOUS NONPUBLICATION REQUEST is signed by Frank McClelland and is dated 4-22-

09. See Exhibit L, attached and incorporated herein.

43. A search of the U.S. Patent Office records indicates no assignment, transfer orlicense of U.S. Patent No. 7,523,567 has been recorded with the U.S. Patent Office. See Exhibit M,

attached and incorporated herein.



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SKATE FENDERS THE INFRINGING AND FALSELY MARKED PRODUCT

44. True and accurate digital images of a SKATE FENDERS product are shown below.

45. Upon information and belief a true and accurate digital image of a SKATEFENDERS product on an ice hockey skate is shown below left.

46. Upon information and belief, a true and accurate digital image of the SKATEFENDERS product being worn by Niklas Hjalmarsson of the 2010 Stanley Cup Champion Chicago

Black Hawks is shown above right.



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47. The product packaging of the SKATE FENDERS product includes a clear plasticbag-type package for holding the SKATE FENDERS skate cover products in the clear bag. The

clear bag has an open end that is closed using a glossy, printed card stock-type material bearing the

SKATE FENDERS mark and a reference to the http://www.skatefenders.com website. There is

no other understood information on the SKATE FENDERS product packaging clearly identifying

the manufacturer of the SKATE FENDERS product. A true and accurate copy of the SKATE

FENDERS printed product packaging is attached hereto as Exhibit N and a print out of the

www.skatefenders.com/index.html web page is attached hereto as Exhibit O, which are hereby

incorporated in this Complaint.

48. The SKATE FENDERS products are sold via retail store locations as shown on theSKATE FENDERS website http://www.skatefenders.com/wheretobuy.cfm including many stores

within this judicial District as well as being sold online at www.skatefenders.com/contact.cfm.

See Exhibit P, attached and incorporated herein.

49. The SKATE FENDERS product packaging and the websitehttp://www.skatefenders.com indicate the SKATE FENDERS products are Proudly Made in

USA and the website indicates the Defendants moved our production operation from Traverse

City, Michigan to Gaylord, Michigan. See Exhibits N, O and P.

50. Every page of the SKATE FENDERS website, the SKATE FENDERS product, andthe SKATE FENDERS product packaging each include a conspicuous and express reference to

U.S. Patent 7523567 as well as stating Canadian Patent Pending. See Exhibits N, O, P and Q

and the digital image below which is a true and accurate image of an actual SKATE FENDERS

product.



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51. The home page of the SKATE FENDERS website (http://www.skatefenders.com)includes a message that states it is from Frank McClelland, President, Skate Fenders. Exhibit O.

52. The TECHNICAL STUFF web page athttp://www.skatefenders.com/history.cfm of the SKATE FENDERS website states: Skate

Fenders are injection molded of high grade, impact resistant, lightweight, clear polycarbonate. See

Exhibit Q, attached and incorporated herein.

53. Upon information and belief, the Defendants make, use, sell and offer for sale in theUnited States; and/or import and export with the United States the SKATE FENDERS protective

covers for ice hockey skates.

54. The SKATE FENDERS product is a protective cover apparatus for partiallycovering the foot of a player wearing a hockey skate.

55. The SKATE FENDERS product is made from a a unitary layer having a firstportion for covering the front portion of the skate, a second portion unitary with said first

portion for covering the first side portion of the hockey skate, and a third portion unitary with

[the] first and [the] second portions for covering the second side portion of the hockey skate. The

second and third side portions extend in a direction away from [the] first side portion to cover the



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ankle area of [the] hockey skate. Further, the SKATE FENDERS product includes straps having

hook and loop fastener material (Velcro) for connecting [the] layer to [the] skate and the ends of

the straps create a gap between [the] layer and [the] skate such that the protective cover apparatus

may be displaced toward the skate by an impact force and partly dissipate such force as set forth in

the claims of the 170 Patent.

COUNT I

35 U.S.C. 271(a) Infringement of U.S. Patent No. 5,829,170

56.

For this Count I, Plaintiff hereby incorporates the above paragraphs.

57. Plaintiff is the sole inventor and owner (and the patentee) of the 170 Patent.58. In obtaining the 170 Patent, Plaintiff complied with all applicable requirements of

35 U.S.C. 112 of the Patent Laws of the United States.

59. The 170 Patent is presumed valid and enforceable. 35 U.S.C. 282.60. Regarding the 170 Patent, Plaintiff has never offered for sale, or sold within the

United States, and has never imported or exported with the United States, any article covered by the

Claims of the 170 Patent. Plaintiff has never authorized or licensed any person to make, offer for

sale, or sell within the United States, and has never authorized or licensed any person to import or

export with the United States, any article covered by the claims of the 170 Patent.

61. Defendants have at no time been licensed under the 170 Patent.62. Defendants directly, indirectly and/or contributorily infringe and continue to

infringe the Claims of the 170 Patent (Asserted Claims), in violation of 35 U.S.C. 271(a) by

making, using, selling and offering to sell in the United States, and/or by the importing and

exporting with the United States, the SKATE FENDERS Infringing Products.



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63. Defendants have direct knowledge of the 170 Patent and are believed to beintentionally and willfully infringing the 170 Patent.

64. Plaintiff has been injured and damaged by Defendants direct infringements of the170 Patent.

65. Plaintiff is entitled to damages adequate to compensate for Defendantsinfringements of the 170 Patent, but in no event is Plaintiff entitled to recover less than a

reasonable royalty for Defendants infringement, together with interest and costs.

66.

Plaintiff is entitled to have the Court increase the damages up to three times the

amount found or assessed.

67. Plaintiff is entitled to prevail on the merits and to have the Court find this anexceptional case and to be awarded its reasonable attorney fees.

68. Defendants direct infringements have caused, and will continue to cause,irreparable harm to Plaintiff, for which Plaintiff has no adequate remedy at law, unless and until

Defendants are enjoined by this Court.

COUNT II

35 U.S.C. 271(b) Inducement to Infringe U.S. Patent No. 5,829,170

69. For this Count II, Plaintiff hereby incorporates the above paragraphs.70. Defendants induce infringement of at least Claim 6 of the 170 Patent by inducing

their customers to use the SKATE FENDERS product in the United States in violation of 35 U.S.C.

271(b).

71. Defendants have direct knowledge of the 170 Patent and are believed to beintentionally and willfully inducing infringement of the 170 Patent.



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72. Plaintiff has been injured and damaged by Defendants inducement of infringementof the 170 Patent.

73. Plaintiff is entitled to damages adequate to compensate for Defendants inducementof infringement of the 170 Patent, but in no event is Plaintiff entitled to recover less than a

reasonable royalty for Defendants infringement, together with interest and costs.

74. Plaintiff is entitled to have the Court increase the damages up to three times theamount found or assessed.

75.

Plaintiff is entitled to prevail on the merits and to have the Court find this an

exceptional case and to be awarded its reasonable attorney fees.

76. Defendants inducement of infringement has caused, and will continue to cause,irreparable harm to Plaintiff, for which Plaintiff has no adequate remedy at law, unless and until

Defendants are enjoined by this Court.

COUNT III

35 U.S.C. 292 False Marking

77. For this Count III, Plaintiff hereby incorporates the above paragraphs.78. Upon information and belief Defendant Frank McClelland is the co-incorporator, a

shareholder and President of Defendant Respond, Inc.

79. Defendant Frank McClelland has been and is personally involved in thedevelopment, marketing, attempted patenting, and commercializing of the SKATE FENDERS

product as asserted on the SKATE FENDERS website (http://www.skatefenders.com). See

Exhibit O.



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80. Defendant Frank McClelland is the sole named inventor and remains the sole ownerof record for the 567 Patent.

81. Since at least 2005, Defendant Frank McClelland has been the Registered Agentand the President of Respond Associates, Inc. and since 2009 for Respond, Inc.

82. The SKATE FENDERS product includes the name RESPOND ASSOCIATES,INC. of which Defendant Frank McClelland is the President and Registered Agent.

83. Upon information and belief Defendants Respond, Inc. and Respond Associates,Inc. are small, closely-held Michigan corporations owned, operated and controlled by Defendant

Frank McClelland and Defendant Respond Inc. does business as SKATE FENDERS.

84. Upon information and belief, commercialization of the SKATE FENDERS producthas commenced within the last few years and has accelerated substantially in 2010 with the use of

the SKATE FENDERS product by National Hockey League players.

85. U.S. Patent No. 7523567 was issued by the U.S. Patent Office on April 9, 2009 andDefendants could have only begun marking their SKATE FENDERS products with the U.S.

Patent No. 7523457 notice after this date.

86. Defendants necessarily had (and have) a conscious working knowledge of the 567Patent and the scope of the Claims of the 567 Patent.

87. The SKATE FENDERS product is in fact not covered by the Claims of DefendantFrank McClellands U.S. Patent No. 7523567.

88. Defendants make unceasing use of the U.S. Patent No. 7523567 notice on theSKATE FENDERS product, the product packaging, and the advertising of the SKATE FENDERS

product, particularly on all of the pages of the www.skatefenders.com web site.



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89. Upon information and belief, the instances of marking are representative and notexhaustive of the Defendants false marking of the 567 Patent number in regard to the SKATE

FENDERS product.

90. Defendants knew, or reasonably should have known, that the purpose of theiraggressive advertising of the false marking of the SKATE FENDERS product with the 567 Patent

number was to put competitors and the public at large on notice of exclusive and legally

enforceable patent rights.

91.

Defendants knew, or reasonably should have known, that the SKATE FENDERS

products they advertised for sale and continue to advertise and falsely mark with the 567 Patent

number were not covered by the 567 Patent.

92. Defendants statements and marking that its SKATE FENDERS products wereprotected by the 567 Patent and Defendants knowledge that the statements were false create a

rebuttable presumption of a specific intent to deceive the public into believing that the SKATE

FENDERS product was actually patented. Pequignot v. Solo Cup Company, 608 F.3d 1356, 1362

(Fed. Cir. 2010).

93. In view of the above, it is asserted that Defendants could not have obtained a goodfaith opinion of counsel supporting an assertion that the Claims of the 567 Patent cover the

SKATE FENDERS product.

94. Defendants advertised, marked and continue to advertise and mark the SKATEFENDERS product with the 567 Patent number with the specific intent to deceive the public into

believing that the marked products are covered by the 567 Patent in violation of 35 U.S.C. 292.



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95. By advertising, offering for sale and selling the falsely marked SKATE FENDERSproduct with the 567 Patent number, Defendants have benefitted commercially and financially.

96. Given the nature and timing of the first Office Action Allowance and the issuanceof the Defendants 567 Patent and the close proximity in time to the Defendants aggressive and

near plenary marking of the 567 Patent number in Defendants advertising, product packaging and

on the SKATE FENDERS product, and given the Defendants specific knowledge of the Plaintiffs

170 Patent, it is clear that the Defendants specifically intended to dissuade competitors from

entering the same market; deter research in the product area by implied possible infringement of the

567 Patent; cause unnecessary investment by competitors in design-around or costs incurred to

analyze the validity or enforceability of the 567 Patent number marked upon the SKATE

FENDERS product; and greatly increase the chance that competitors will see the falsely marked

article and deter them from competing.

97. Each instance of false patent marking of Defendants products is likely to, or at leasthas the potential to, discourage or deter persons and companies from making or selling similar or

competing products or otherwise cause harm to the public, as set forth above, thereby causing an

injury in fact to the United States of America.

98. By advertising, marking and continuing to advertise or otherwise falsely mark theSKATE FENDER product with the 567 Patent number, Plaintiff and the United States of America

have suffered an injury in fact, causally connected to Defendants intentional misconduct in

violation of 35 U.S.C. 292, that is likely to be redressed by this Court. See Stauffer v. Brooks

Brothers, Inc., et al,supra.



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99. Plaintiff hereby requests this Court fine the Defendants $500 for each falselymarked product in violation of 35 U.S.C. 292 with one-half going to the Plaintiff and one-half

going to the use of the United States and award Plaintiffs its actual and reasonable attorney fees

and costs.

RELIEF

Plaintiff hereby requests this Court provide Plaintiff an expeditious adjudication of this action

resulting in a judgment that:

A. Defendants actions of making, using, selling, exporting and offering for sale

Defendants SKATE FENDERS product infringes Plaintiffs 170 Patent in violation of 35 U.S.C.

271(a) and (b);

B. Defendants infringements of the 170 Patent is intentional and willful;

C. Defendants, their officers, directors, employees, agents, subsidiaries, licensees,

servants, successors and assigns, and any and all persons acting in privity or in concert or

participation with Defendants, be reasonably, preliminarily and permanently enjoined from

infringement of the 170 Patent pursuant to 35 U.S.C. 283;

D. Awards Plaintiff all damages adequate to compensate Plaintiff for Defendants

infringements of the 170 Patent and that such damages be trebled pursuant to 35 U.S.C. 284

and awarded to Plaintiff, with prejudgment interest and costs;

E. Finds this action an exceptional case pursuant to 35 U.S.C. 285 and awards

Plaintiff its actual and reasonable attorneys fees and its actual costs and expenses incurred in

bringing this action;



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G. Finds that the SKATE FENDERS product is not covered by any valid or

enforceable Claim of the 567 Patent;

H. Finds that Defendants falsely marked the SKATE FENDERS product with the

567 Patent number;

H. Finds the Defendants false marking of the SKATE FENDERS product with the

567 Patent number was for the purpose of intentionally deceiving the public;

I. Finds that each sale the Defendants made of a SKATE FENDERS product falsely

marked with the 567 Patent number violates 35 U.S.C. 292 and fines the Defendants $500 for

each such violation with one-half going to the Plaintiff and one-half going to the use of the

United States of America; and

J. Awards Plaintiff such other and further relief as the Court deems just.

JURY DEMAND

Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiff hereby requests a trial by

Jury on all issues triable by jury.

Dated: September 17, 2010 DOBRUSIN & THENNISCH, P.C.

By/John VanOphem/

John VanOphem P48804

[email protected]

Jeffrey Thennisch [email protected]

29 W. Lawrence Street

Pontiac, MI 48342

(248) 292-2920 (Phone)(248) 292-2910 (Facsimile)

Attorneys for Plaintiff, John F. Lutz, Jr.


2010-09-17 - Complaint - Lutz v Respond Associates Et Al 2 10-Cv-13718 SJM-MAR

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