Placon Corp. v. Sabert Corp. - Complaint

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Transcript of Placon Corp. v. Sabert Corp. - Complaint

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    IN THE UNITED STATES DISTRICTFOR THE WESTERN DISTRICT OF WISCONSIN

    PLACON CORPORATION6096 McKee Road

    Madison, WI 53719,

    Plaintiff,

    v.

    SABERT CORPORATION2288 Main Street ExtensionSayreville, NJ 08872,

    Defendant.

    ))

    )))))))))))))

    )

    Civil Action No. 14-cv-587

    COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND

    INVALIDITY

    Plaintiff Placon Corporation (Placon), for its Complaint against Defendant Sabert

    Corporation (Sabert) alleges as follows:

    THE PARTIES

    1. Placon is a Wisconsin corporation with a principal place of business at 6096 McKee

    Road, Fitchburg, Wisconsin, 53719.

    2. Upon information and belief, Sabert is a New Jersey corporation with a principal place of

    business at 2288 Main Street Extension, Sayreville, New Jersey, 08872.

    BACKGROUND

    3. This is an action for a declaratory judgment of noninfringement and invalidity of U.S.

    States Patent No. D527,956 (the 956 patent), which is attached as Exhibit A to this Complaint.

    This action therefore arises under 35 U.S.C. 1 et seq.and 28 U.S.C. 2201et seq.

    Case: 3:14-cv-00587 Document #: 1 Filed: 08/22/14 Page 1 of 5

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    4. Placon is a nationwide leader in the design and manufacture of thermoformed plastic

    packaging for the food, retail, and medical device industries. Placon designs, produces and sells a

    variety of food packaging materials for bakeries, catering companies, convenience stores, the

    food processing industry, supermarkets, and the food service industry.

    5. Placon manufactures, sells, and offers for sale its Fresh n Clear brand of bowls and

    lids for storing food products for display and use in supermarkets, delis, quick marts, restaurants,

    cafeterias, and similar venues. Included among this line of products is a12 ounce bowl, SBS-12,

    and a lid, SDLS-2. A copy of a brochure depicting the SBS-12 and the SDLS-2 is attached as

    Exhibit B.

    6. Sabert purports to own the 956 patent. On or about August 15, 2014, Sabert, through its

    counsel, sent Placon a letter alleging that Placon was infringing the 956 patent by

    manufacturing, using, selling, offering for sale and/or importing a food container that matches

    the description of Placons SBS-12 bowl used with a SDLS-2 lid (the Placon Product).The

    letter and attached exhibits received from Saberts counsel is attached as Exhibit C.

    7. In the letter from Sabert, Sabert demanded that Placon cease and desist with respect to all

    sales activities of the Placon Product, provide the names and addresses of customers to which

    Placon had sold the Placon Product, the numbers of units sold, information about inventories of

    the Placon Product, and information about molds and tools used to manufacture the Placon

    Product. Sabert also attached a purported complaint for patent infringement and threatened to sue

    Placon if Placon did not accede to its demands by August 25, 2014.

    8. Placon has a reasonable apprehension that Sabert will disrupt Placons business by filing

    suit against Placon for alleged infringement of the 956 patent and attempting to enjoin Placons

    activities and/or claim it is entitled to monetary damages.

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    JURISDICTION AND VENUE

    9. Placon incorporates all previous allegations by reference. Based on the foregoing, a

    present, genuine, actual and justiciable controversy exists under 28 U.S.C. 2201 and 2202 and

    the patent laws, 35 U.S.C. 1 et seq.,between Placon and Sabert regarding, among other things,

    Placons alleged infringement of the 956 patent and the validity of the 956 patent.

    10.This Court has subject matter jurisdiction over this action under 28 U.S.C. 1331, 1338,

    2201.

    11.Upon information and belief, Sabert regularly conducts business throughout the United

    States and sells products within this judicial district and within this state. Sabert has contracts

    and/or key sales or distribution relationships throughout the state of Wisconsin, including with

    DJ Payne, Advance Sales, Joshen Milwaukee, Sysco, Culvers, Reinhart Foods, Roundys, Kwik

    Trip, US Foods, and the University of Wisconsin. Upon further information and belief, Saberts

    sales within the state of Wisconsin amount to at least $10 million annually. Saberts business

    activities in Wisconsin are so continuous and systematic as to essentially render it at home in

    Wisconsin. This Court has personal jurisdiction over Sabert pursuant to Wis. Stat. 801.05.

    12.Venue in this case is proper pursuant to 28 U.S.C. 1391(b)-(c) and 1400(b).

    COUNT I DECLARATORY JUDGMENT OF NONINFRINGEMENT

    13.Placon incorporates all previous allegations by reference.

    14.The Placon Product, and any product similar to the Placon Product that is used,

    manufactured, sold, offered for sale, and/or imported by Placon does not and will not infringe

    the 956 patent.

    15.Accordingly, Placon is entitled to a declaratory judgment of noninfringement.

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    COUNT II DECLARATORY JUDGMENT OF INVALIDITY

    16.Placon incorporates all previous allegations by reference.

    17.The 956 patent is invalid under one or more of 35 U.S.C. 102, 103 and/or 112 in view

    of at least United States Patent No. D450,983, Saberts Freshpack all set to go Brochure dated

    1997, and /or a bowl and lid product manufactured and sold by Placon to Leeann Chin Inc., a

    design of which is attached as Exhibit D, prior to the priority date of the 956 patent.

    18.Accordingly, Placon is entitled to a declaratory judgment on invalidity.

    PRAYER FOR RELIEF

    Wherefore, Placon requests that judgment be entered in its favor and against Sabert as

    follows:

    A. Declaring that Placon has not, and will not, infringe the 956 patent;

    B. Declaring that the 956 patent is invalid;

    C. Declaring that Placon is entitled to its fees and costs in this action pursuant to 35

    U.S.C. 285 and any other applicable statute, and awarding such fees and costs; and

    D. Awarding such other relief as deemed appropriate.

    JURY DEMAND

    Placon demands a trial by jury on all issues so triable.

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    Dated: August 22, 2014 MERCHANT & GOULD P.C.

    /s/ Edward J. Pardon

    Jeffrey S. Ward

    jward@merchantgould.comEdward J. Pardonepardon@merchantgould.com10 East Doty Street, Suite 600Madison, WI 53703(T) 608-280-6750(F) 612-332-9081

    Case: 3:14-cv-00587 Document #: 1 Filed: 08/22/14 Page 5 of 5

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    EXHIBIT A

    Case: 3:14-cv-00587 Document #: 1-1 Filed: 08/22/14 Page 1 of 15

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    111111

    1111111111111111111111111111111111111111111111111111111111111

    USOOD527956S

    (12) United States Design Patent (10)

    Patent No.: US D527 956 S

    Sep. 12 2006

    oliwa

    (45)

    Date of Patent:

    (54)

    COMBINED SQUARE BOWL AND LID

    (75) Inventor: Wojciech Doliwa Sayreville, NJ (US)

    (73) Assignee: Sabert Corporation Sayreville, NJ

    (US)

    (**) Tenn: 14 Years

    (21) Appl. No.: 291243 360

    (22) Filed: Nov. 23 2005

    Related U.S. Application Data

    (62) Division

    of

    application No.

    291205,921,

    filed on May 21,

    2004, now abandoned.

    (51) LOC (8) Cl.

    ....................................................

    07-01

    (52) U.S. Cl.

    ..........................................

    D7/629; D9/432

    (58)

    Field

    of

    Classification Search

    ..................

    D7/601,

    D7/602,

    629, 538-542; D9/424-432;

    220/360,

    220/366, 574, 780-806, 912, 913;

    229/406,

    229/407, 902-906

    See application file for complete search history.

    (56)

    References Cited

    U.S. PATENT DOCUMENTS

    4,412,630 A * 1111983 Daenen ......................

    2201792

    D355,814 S * 211995 VanValkenburg et

    aI .....

    D7/629

    5,992,679 A * 1111999 Porchia et al. ...... ...... ..

    2201782

    D439,159 S *

    3/2001

    Chen ...........................

    D9/425

    D441,615 S

    * 5/2001

    Dretzka .......................

    D7/629

    D450,983 S *

    11/2001

    Tucker et al. ................

    D7/629

    D475,620 S

    * 6/2003

    Chen et al. .. ..... ..... ..... .

    D9/425

    D490,278 S

    * 5/2004

    Welsh .........................

    D7/629

    * cited by examiner

    Primary Examiner-Terry

    A. Wallace

    (74) Attorney, Agent,

    or Firm-Erza

    Sutton, Esq.

    (57)

    CLAIM

    The ornamental designs for a combined square bowl and lid,

    as shown and described.

    DESCRIPTION

    FIG. 1 is a front perspective view

    of

    a combined square bowl

    and lid embodying a first embodiment of my new design;

    FIG. 2 is a front view thereof;

    FIG. 3 is a rear view thereof;

    FIG. 4 is a left side view thereof;

    FIG. 5 is a right side view thereof;

    FIG. 6 is a front perspective view

    of