caldwell v. haney enters. - complaint
TRANSCRIPT
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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.
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Page 2 - 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
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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Page 3 - 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
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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Page 4 - 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
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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Page 5 - 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
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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Page 6 - 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
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
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7/13EXHIBIT A - Page 1 of 4
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9/13EXHIBIT A - Page 3 of 4
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rs44
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Case 3:15-cv-01494 Document 1-2 Filed 08/07/15 Page 1 of 1
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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
Case 3:15-cv-01494 Document 1-3 Filed 08/07/15 Page 1 of 2
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
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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:
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