Caldwell v. Haney Enters. - Complaint

8/20/2019 Caldwell v. Haney Enters. - Complaint

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Page 1 - COMPLAINT FOR PATENT INFRINGEMENTSCHWABE, WILLIAMSON & WYATT, P.C.

Attorneys at Law1211 SW 5th Ave., Suite 1900

Portland, OR 97204Telephone: 503.222.9981

Fax: 503.796.2900

PDX\119820\163828\DZN\16285537.1

Devon Zastrow Newman, OSB #014627

Email: [email protected]

SCHWABE, WILLIAMSON & WYATT, P.C.1211 SW 5th Ave., Suite 1900

Portland, OR 97204

Telephone: 503.222.9981Facsimile: 503.796.2900

David Ludwig, VSB No. 73157, pro hac vice pending

Email: [email protected] BENNETT & LUDWIG PLLC

211 Church Street, SE

Leesburg, VA 20175Telephone: 703.777.7319

Facsimile: 703.777.3656

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

PORTLAND DIVISION

PAUL E. CALDWELL,

Plaintiff,

vs.

HANEY ENTERPRISES, LLC,

Defendant.

No. __________

COMPLAINT FOR PATENT

INFRINGEMENT

DEMAND FOR JURY TRIAL

COMES NOW Plaintiff Paul E. Caldwell (“Plaintiff”), by counsel, in support of this

Complaint against Defendant Haney Enterprises, LLC (“Defendant”) for patent infringement,

states as follows:

NATURE OF THE ACTION

1. This is an action for patent infringement arising under the patent laws of the

United States, including 35 U.SC. § 271, §§ 281-285 and § 289.

Case 3:15-cv-01494 Document 1 Filed 08/07/15 Page 1 of 6


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PARTIES

2. Plaintiff is an individual citizen of the State of Alabama and resides at 139 River

Run Road, Childersburg, AL 35044.

3. Defendant is a Kentucky limited liability corporation having its principal place of

business at 817 Broadway, Barlow, Kentucky 42024.

JURISDICTION AND VENUE

4. Plaintiff’s cause of action for patent infringement against Defendant arises under

the patent laws of the United States, 35 U.S.C. § 101 et seq., including § 271, §§ 281-285 and §

289. This court has original jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).

5. This Court has personal jurisdiction over Defendant because Defendant has

infringed Plaintiff’s patent in this district by selling an infringing product – distillery equipment

– to a customer who resides in Hillsboro, Oregon. The customer, Big Bottom Distillery, LLC,

currently uses the infringing product in this district; the product is installed on Big Bottom

Distillery, LLC’s premises. Defendant has offered its infringing products for sale to other

potential customers, including in this district, through the two internet sites Defendant maintains

that are available to consumers within this district, and from which Defendant shipped product to

Big Bottom Distillery. Defendant’s advertising efforts targeted toward consumers in this district

include attending the American Distilling Institute conference in Seattle in 2014 and 2015 to

promote the infringing product to consumers in the Pacific Northwest.

6. Venue is proper in this District pursuant to 28 U.S.C. § 1391 (b) & (c) and

1400(b). Defendant has infringed Plaintiff’s patent in this district by selling and offering to sell

products in this district. The infringing product is installed and in use in this district.

FACTUAL BACKGROUND



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7. Plaintiff is a manufacturer and distributor of distilling equipment.

8. On December 30, 2014, United States Design Patent No. D720,425 (“the ‘425

patent”) was issued to Plaintiff for a distillation tank façade. Plaintiff has owned all right, title,

and interest in the ‘425 patent at all times since it was issued and continues to own the ‘425

patent. A copy of the ‘425 patent is attached to this Complaint as Exhibit A.

9. Defendant produces and distributes distilling equipment and supplies to customers

across the United States through their websites www.hillbillystills.com and

www.hbscopper.com.

10. On or about May 17, 2013, Plaintiff and Defendant began doing business with

each other. Defendant sold Plaintiff’s distillation tanks through its website and Plaintiff and

Defendant manufactured a number of distillation tanks together.

11. On or about July 31, 2013, Plaintiff and Defendant ended their professional

relationship.

12. On August 9, 2013, Plaintiff filed a design patent application for which the ‘425

patent was eventually issued.

13. On or about October 7, 2013, Plaintiff informed Defendant and Defendant’s

counsel that Plaintiff had submitted a patent application covering his distillation tank façade

design and demanded that Defendant cease selling, marketing, and manufacturing distillation

tanks that infringed on Plaintiff’s design.

14. Upon information and belief, Defendant continues to manufacture, market, and

distribution distillation tanks containing elements that infringe the ‘425 patent. Upon information

and belief, Defendant has sold the distillation tanks that infringe upon the ‘425 patent to Big



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Bottom Distilling LLC, an Oregon limited liability corporation having its principal place of

business at 21420 NW Nicholas Ct, Ste D-9, Hillsboro, Oregon 97124.

15. Thus Defendant is, among other things, manufacturing, using, selling, and/or

offering the distillation tank product, which infringes upon the ‘425 patent, and which has been

sold to, and is presently being used in, this judicial district.

COUNT I – INFRINGEMENT OF U.S. DESIGN PATENT NO. D720,425

16. Plaintiff realleges and incorporates by reference the allegations set forth in

paragraphs 1-15.

17. Defendant has infringed and continues to infringe the ‘425 patent within this

judicial district by making or selling whiskey stills that embody the patented invention disclosed

in the ‘425 patent, in violation of 35 U.S.C. §§ 271 and 289.

18. Defendant is not licensed or otherwise authorized by Plaintiff to make, use,

import, sell or offer to sell any distillation façade that embodies the patented invention disclosed

in the ‘425 patent, and its conduct is, in every instance, willful and without Plaintiff’s consent.

19. The design of Defendant’s façade so closely resembles the invention disclosed in

the ‘425 patent that an ordinary observer would be deceived into purchasing Defendant’s façade

in the mistaken belief that it includes the invention disclosed in the ‘425 patent. Defendant will

continue to manufacture and sell its infringing façade unless enjoined by this Court.

20. Defendant has profited through infringement of the ’425 patent. As a result of

Defendant’s unlawful infringement, Plaintiff has suffered and will continue to suffer damage.

Due to Defendant’s infringement, Plaintiff is entitled to recover from Defendant damages

adequate to compensate for the infringement in an amount subject to proof at trial, but in no

event less than a reasonable royalty, together with interest and costs as fixed by this Court under



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35 U.S.C. § 284. Alternatively, Plaintiff is entitled to recover Defendant’s total profits from the

sale of its infringing facades pursuant to 35 U.S.C. § 289.

21. On information and belief, Defendant’s infringement of the ‘435 Patent is willful

and deliberate, entitling Plaintiff to enhanced damages and reasonable attorney’s fees and costs.

22. On information and belief, Defendant intends to continue its unlawful infringing

activity, and Plaintiff will continue to suffer irreparable harm from such unlawful infringing

activity, for which there is no adequate remedy at law, unless Defendant is enjoined by this

Court.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff prays for relief as follows:

1. A declaration that the ‘425 patent is valid and enforceable;

2. For a judgment and declaration that Defendant has infringed the ‘425 patent;

3. For a judgment awarding Plaintiff compensatory damages as a result of

Defendant’s infringement of the ’425 patent, together with interest and costs, and in no

event less than a reasonable royalty;

4. For a judgment declaring that Defendant’s infringement of the ‘425 patent has

been willful and deliberate;

5. Enhancement of the damage award based on Defendant’s willful infringement of

Plaintiff’s patent pursuant to 35 U.S.C. § 284 .

6. For and pre-judgment interest on the amount of the award;

7. For judgment declaring that this case is exceptional and awarding Plaintiff its

expenses, costs, and attorney’s fees in accordance with 35 U.S.C. §§ 284 and 285 and

Rule 54(d) of the Federal Rules of Civil Procedure;



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8. For judgment that, pursuant to 35 U.S.C. § 289, Defendant is liable to Plaintiff to

the extent of Defendant’s total profit, and an award corresponding to such a judgment;

9. For the granting of a permanent injunction enjoining Defendant and its agents,

servants, officers, directors, employees, affiliated entities and all persons in active

concern or participation with them from further acts of infringement pursuant to 35

U.S.C. § 283; and

10. For any other or further relief the Court deems just and proper.

Dated this 7th

day of August, 2015.

Respectfully submitted,

SCHWABE, WILLIAMSON & WYATT, P.C.

By: /s/ Devon Zastrow NewmanDevon Zastrow Newman, OSB No. 014627

Telephone: 503.222.9981

Facsimile: 503.796.2900

David Ludwig, VSB No. 73157DUNLAP BENNETT & LUDWIG PLLC

Trial Attorney: Devon Zastrow Newman

Of Attorneys for Plaintiff



7/13EXHIBIT A - Page 1 of 4

Case 3:15-cv-01494 Document 1-1 Filed 08/07/15 Page 1 of 4


11/13

rs44

(Rev

r2lr2)

CIVIL

COVER

SHEET

þurposeolinitiatingthecivil

docketsheet,

(S[EINST]ìUCTIqNSoNNEn'PAclioFTHISFORM)

L

(a)

PLAINTIFFS

Paul E. Caldwell

(b)

County

of

Residence

of

First

Listed

Plaintifl

Talladeoa

(DXCDPT

IN

U.S,

PLA]NTIFF CASES)

IL BASIS

OF

JURISDICTION

(Ptace

an x

in

otrc

Box

onty)

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USGovemrìent

ts3 FederalQuestion

Plaintiff

(U.5,

Government

Nol

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Pqrly)

D

2 US

Covement

Defendml

DEFENDANTS

Haney

Enterprises,

LLC

County

ofResidence

ofFirst

Listed Defendant

Ballard

(lN

U.S, PI]1tN7Il;'F

CASDS ONLY)

NOTE:

IN LAND CONDEMNATION

CASES, USE

THE

LOCATION

OF

THE

TRACT OF LAND TNVOLVED

Attorneys

(lf

Known)

IIL

CITIZENSHIP

OF

PRINCIPAL

PARTIES

Qtace

an

x

in one Boxlor Ptoin

(For

Diversily

Cases Only)

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(C)

Attorneys

(Firm

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Number)

Devon

Zastrow

Newman;

Schwabe, Williamson

&

Wyatt,

P.C.

1211

SW Fifth Avenue,

Suite

1900

Portland,

OR

97204

503-222-9981

I

4 Diversity

(Ind¡cøte

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NATURE OF SUIT

qn

X

in

One Box

O I

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Insurance

O

120

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0

130 Miller

Act

O

140 Negotiable lnstrument

O

150 Recovery ofOverpayment

&

Enforcement

of

Judgmenl

O

l5l Medicue Act

O

152 Recovery

ofDefaulted

Student

Loans

(Exoludes

Veterans)

D

153 Recovery

ofovcrpayment

of

Velerm's

Benefits

D

160 Stockholders'

Suits

O 190

Other Contract

0

195 Contraçl

Product

Liability

D

196

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D

2l0LandCondemnation

D

220

Foreclosurc

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230 Rent

Lease

&

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All

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ORIGIN

(Place

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Original

Proceeding

D

2

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State

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VI. CAUSE OF

ACTION

VII

STED

IN

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375 False Ctaims

Açt

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D 410 Antitrust

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430

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D 480 Consu¡rcr

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Reinstated

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DEMAND

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COMPLAINT

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315

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320 Assault,

Libel

&

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330 Federal

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340 Mmne

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345 Muine

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350 Motor Vehicle

D 355

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0

360 Other Personal

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362 Persona.l hrjury

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367 He¿lth Ctrel

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740 Railway

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440 Other C¡vil

Rights

O

441

Voting

O 442

Employment

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443 Housrng/

Accommodatiols

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445 Amer

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O 446 Aner. w/Disabilitics

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Habeas

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530 Gcneral

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(See

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OF ATTORNEY



12/13

AO 440 (Rev. 06/12) Summons in a Civil Action

U NITED STATES DISTRICT COURTfor the

__________ District of __________

)

)))))))))))

Plaintiff(s)

v. Civil Action No.

Defendant(s)

SUMMONS IN A CIVIL ACTION

To: (Defendant’s name and address)

A lawsuit has been filed against you.

Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you

are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,whose name and address are:

If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.You also must file your answer or motion with the court.

CLERK OF COURT

Date:Signature of Clerk or Deputy Clerk


District of Oregon

Paul E. Caldwell

Haney Enterprises, LLC, a Kentucky limited liabilitycorporation

Haney Enterprises, LLCc/o Robert Matthew Haney, Registered Agent839 BroadwayBarlow, Kentucky 42024

Devon Zastrow NewmanSchwabe, Williamson & Wyatt, P.C.1211 SW Fifth Avenue, Suite 1900Portland, OR 97204


13/13

AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)

Civil Action No.

PROOF OF SERVICE

(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))

This summons for (name of individual and title, if any)

was received by me on (date) .

’ I personally served the summons on the individual at (place)

on (date) ; or

’ I left the summons at the individual’s residence or usual place of abode with (name)

, a person of suitable age and discretion who resides there,

on (date) , and mailed a copy to the individual’s last known address; or

’ I served the summons on (name of individual) , who is

designated by law to accept service of process on behalf of (name of organization)

on (date) ; or

’ I returned the summons unexecuted because ; or

’ Other (specify):

.

My fees are $ for travel and $ for services, for a total of $ .

I declare under penalty of perjury that this information is true.

Date:Server’s signature

Printed name and title

Server’s address

Additional information regarding attempted service, etc:


0.00

Caldwell v. Haney Enters. - Complaint

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