therox et. al. v. blissfield manufacturing company et. al

8/3/2019 TherOx et. al. v. Blissfield Manufacturing Company et. al.

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UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN

THEROX, INC., a Delaware corporation, andDYNAMOX, INC., a Delaware corporation,

Plaintiffs,

v.

BLISSFIELD MANUFACTURING

COMPANY, a Michigan corporation,

VILLAGE OF BLISSFIELD, a Michiganmunicipality, BIODRI MICHIGAN, LLC,a Michigan limited liability company,

GREENER PLANET SOLUTIONS, aMichigan company, LAPIN SEPTIC TANK

SERVICE, INC., a Florida corporation,

BIODRI, LLC, a Florida limited liability

company, E-MEDIA SOLUTIONS, INC.,an Ohio corporation, E-MEDIA SOLUTIONSOF CENTRAL FLORIDA, INC., a Florida

corporation, DENNIS J. LAPIN, anindividual, PAUL JEPSON, an individual,

and PATRICK D. FARVER, an individual,

Defendants.

Case No. _____________

COMPLAINT AND DEMAND FOR JURY TRIAL


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Come now Plaintiffs TherOx, Inc. and DynamOx, Inc. for their Complaint against

Defendants Blissfield Manufacturing Company, Village of Blissfield, BioDri Michigan,

LLC, Greener Planet Solutions, Lapin Septic Tank Service, Inc., BioDri, LLC, E-Media

Solutions, Inc., E-Media Solutions of Central Florida, Inc., Dennis J. Lapin, Paul Jepson,

and Patrick D. Farver, allege as follows:

Nature of the Action

1. This action arises under the Patent Laws of the United States, Title 35,

United States Code, particularly Sections 271 and 281-285.

2. This action also arises under the Lanham Trademark Act of 1946, as

amended (the Lanham Act), Title 15, United States Code, particularly Sections 1114

and 1125(a).

Jurisdiction and Venue

3. This Court has jurisdiction over this action under Title 15, United States

Code, Section 1121, and Title 28, United States Code, Sections 1331, 1332, 1338 and

1367.

4. Venue is proper in this Judicial District under Title 28, United States Code,

Sections 1391, 1392 and 1400.

5. Defendants have substantial contacts with the forum as a result of pervasive

business activities conducted within the State of Michigan and within this Judicial

District, including but not limited to the selling or offering for sale and advertising the

sales of products, or providing or offering to provide and advertising services that use

such products, for waste water treatment under the trademark of DynamOx.

6. Defendants have committed acts of patent infringement, directly and/or

through agents and intermediaries, by offering for sale, and/or selling certain infringing


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products, or providing or offering to provide services that use such infringing products, in

the State of Michigan and particularly within this Judicial District.

7. Defendants have purposefully and voluntarily placed their infringing

products into the stream of commerce with the expectation that they will be purchased by

consumers in the State of Michigan and particularly in this Judicial District, who in turn

will use the products in an infringing manner in this Judicial District.

8. Defendants have committed acts of federal trademark infringement and

unfair competition, directly and/or through agents and intermediaries, by advertising for

sale of certain products, and advertising for providing services that use such products,

under an infringing mark, in the State of Michigan and particularly within this Judicial

District.

The Parties

9. Plaintiff TherOx, Inc. (TherOx) is a Delaware corporation having its

principal place of business located at 17500 Cartwright Road, Suite 100, Irvine,

California 92614-5846.

10. Plaintiff DynamOx, Inc. (DynamOx) (hereafter TherOx and DynamOx

are collectively referred to as Plaintiffs) is a Delaware corporation having its principal

place of business located at 17500 Cartwright Road, Suite 100, Irvine, California 92614-

5846.

11. TherOx is a privately held company, and DynamOx is a wholly-owned

subsidiary of Therox. Neither TherOx nor DynamOx is affiliated with any publicly

owned entity.

12. On information and belief, Defendant Blissfield Manufacturing Company

(BMC) is a company having its principal place of business located at 626 Depot Street,

Blissfield, Michigan 49228, and at all times relevant herein has been doing business

within this Judicial District.


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13. On information and belief, Defendant Village of Blissfield (Village) is a

municipality having its principal place of business located at 408 East Adrian Street,



14. On information and belief, Defendant BioDri Michigan, LLC (BioDri

Michigan) is a limited liability company having its principal place of business located at

30600 Telegraph Road, Suite 2345, Bingham Farms, Michigan 48025, and at all times

relevant herein has been doing business within this Judicial District.

15. On information and belief, Defendant Greener Planet Solutions (GPS) is

a company having its principal place of business located at 324 Sherman Street,



16. On information and belief, Defendant Lapin Septic Tank Service, Inc.

(LSTS) is a corporation having its principal place of business located at 3031 West

40th Street, Orlando, Florida 32839, and at all times relevant herein has been doing

business within this Judicial District.

17. On information and belief, Defendant BioDri, LLC (BioDri) is a limited

liability company having its principal place of business located at 3031 West 40th Street,

Orlando, Florida 32839, and at all times relevant herein has been doing business within

this Judicial District.

18. On information and belief, Defendant E-Media Solutions, Inc. (EMS) is a

corporation having its principal place of business located at 111 Legends Lane,

Marblehead, Ohio 43440, and at all times relevant herein has been doing business within


19. On information and belief, Defendant E-Media Solutions of Central

Florida, Inc. (EMS Florida) is a corporation having its principal place of business


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located at 3416 Gulf Breeze Pkwy, Gulf Breeze, Florida 32561, and at all times relevant

herein has been doing business within this Judicial District.

20. On information and belief, Defendant Dennis J. Lapin (Lapin) is an

individual having his principal place of business located at 3031 West 40th Street,



21. On information and belief, Defendant Paul Jepson (Jepson) is an

individual and having his principal place of business located at 3031 West 40th Street,



22. On information and belief, Defendant Patrick A. Farver (Farver) is an

individual and having his principal place of business located at 626 Depot Street,



Plaintiffs Intellectual Property

23. On October 29, 1996, United States Patent No. 5,569,180 (the 180

Patent) was issued for Method for Delivering a Gas-Supersaturated Fluid to a Gas-

Depleted Site and Use Thereof. A true and correct copy of the 180 Patent is attached

hereto as Exhibit A and made a part hereof.

24. On April 7, 1998, United States Patent No. 5,735,934 (the 934 Patent)

was issued for Method for Delivering a Gas-Supersaturated Fluid to a Gas-Depleted Site

and Use Thereof. A true and correct copy of the 934 Patent is attached hereto as

Exhibit B and made a part hereof.

25. On February 5, 2002, United States Patent No. 6,344,489 (the 489

Patent) was issued for Stabilized Gas-Enriched and Gas-Supersaturated Liquids. A


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true and correct copy of the 489 Patent is attached hereto as Exhibit C and made a part

hereof.

26. On April 29, 2003, United States Patent No. 6,555,059 (the 059 Patent)

was issued for Method of Forming Gas-Enriched Fluid. A true and correct copy of the

059 Patent is attached hereto as Exhibit D and made a part hereof.

27. On March 7, 2006, United States Patent No. 7,008,535 (the 535 Patent)

was issued for Apparatus and Method for Oxygenating Wastewater. A true and correct

copy of the 535 Patent is attached hereto as Exhibit E and made a part hereof.

28. On November 13, 2007, United States Patent No. 7,294,278 (the 278

Patent) was issued for Method for Oxygenating Wastewater. A true and correct copy

of the 278 Patent is attached hereto as Exhibit F and made a part hereof.

29. TherOx is an exclusive licensee of the 180, 934 and 489 Patents, with

substantive rights in and to these patents, including the right to prosecute this action and

enforce these patents against infringers, and to collect damages for all relevant times.

30. TherOx is the owner of the 059 Patent, with substantive rights in and to the

059 Patent, including the right to prosecute this action and enforce the patent against

infringers, and to collect damages for all relevant times.

31. TherOx and DynamOx are two of the three co-owners of the 535 and 728

Patents (hereafter the 180, 934, 489, 059, 535 and 728 Patents are collectively

referred to as the Patents-in-suit), with substantive rights in and to the 535 and 728

Patents, including the right to prosecute this action and enforce these patents against

infringers, and to collect damages for all relevant times.

32. As it pertains to this lawsuit, the Patents-in-suit generally relate to methods

and apparatuses that are applicable for treating wastewater by oxygenating the

wastewater.


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33. On July 29, 2003, United States Trademark Registration No. 2,745,068

(the 068 Registration) was issued for DynamOx. A true and correct copy of the

068 Registration is attached hereto as Exhibit G and made a part hereof.

34. DynamOx is the owner of the 068 Registration for DynamOx (hereafter

the 068 Registration is referred to as the Trademark-in-suit), with substantive rights in

and to the trademark, including the right to prosecute this action and enforce the 068

Registration against infringers, and to collect damages for all relevant times.

35. DynamOx is also conducting its business of advertising, promoting,

offering for sale and selling its products and services for wastewater treatment on an

Internet domain www.dynamox.capitalenergyholdings.com (hereafter Plaintiff

DynamOxs website). DynamOx has substantive rights in the original design,

appearance and graphic and text contents of the DynamOx website.

Defendants Infringing Activities

36. On information and belief, Defendants BMC, BioDri Michigan, GPS,

LSTS and BioDri are all closely inter-related and affiliated companies acting in concert

for a common scheme: Defendant Lapin is both an owner and president of Defendant

LSTS, and an owner of Defendants BioDri Michigan and BioDri; Defendant Jepson is

also an owner of BioDri Michigan and BioDri; Defendant BioDri Michigan is doing

business as Defendant GPS; Defendant GPS is also known as BioDri Michigan; and

Defendant BMC is Defendant GPS manufacturing arm.

37. On information and belief, Defendants BMC, BioDri Michigan, GPS,

LSTS and BioDri directly or through intermediaries, and acting as agent for each other,

made, had made, used, provided, supplied, distributed, sold, and/or offered for sale

wastewater treatment products and/or systems, including but not limited to Defendant

LSTS DO Aeration Systems and Defendant GPS PrO2Series, infringed or, when

used together with the wastewater treatment service they provide, infringed one or more


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claims of the Patents-in-suit. Defendant BioDri Michigan is doing business as

Defendants GPS, and Defendant BMC is manufacturing the hardware and equipment for

Defendant GPS. In addition, Defendants BMC, BioDri Michigan, GPS, LSTS and

BioDri induced infringement and/or contributed to the infringement of one or more of the

claims of the Patents-in-suit by others.

38. On information and belief, although marketed by different Defendants,

including but not limited to GPS and LSTS, under various names, all Defendants

infringing wastewater treatment products and/or systems are manufactured by Defendant

BMC and have substantially the same design, construction and/or functionalities that

infringe one or more claims of the Patents-in-suit.

39. On information and belief, Defendant Village has used or is using

wastewater treatment products and/or systems, including but not limited to Defendants

BMC, BioDri Michigan and GPS Ox 159 System, which infringes one or more claims

of the Patents-in-suit. In addition, by ordering, purchasing and using the Ox 159 System,

Defendant Village induced infringement and/or contributed to the infringement of one or

more of the claims of the Patents-in-suit by Defendants BMC, BioDri Michigan and GPS.

40. On information and belief, Defendants Lapin, Jepson and Farver

personally, and acting as agent for each other, took part in the commission of the patent

infringement by Defendants BMC, BioDri Michigan, GPS, LSTS and BioDri and

specifically engaged themselves and directed other officers or employees of Defendants

BMC, BioDri Michigan, GPS, LSTS and BioDri to commit the infringement act.

41. On information and belief, Defendants Lapin, Jepson and Farver personally

induced patent infringement as they specifically intended to encourage Defendants BMC,

BioDri Michigan, GPS, LSTS and BioDris patent infringement and actively and

knowingly intended to aid and abet the patent infringement by Defendants BMC, BioDri

Michigan, GPS, LSTS and BioDri.


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42. Defendant BioDri Michigan is also doing business as Defendant GPS,

which in turn is doing business under a trade-name and mark of DynamOx.

Defendants BioDri Michigan and GPS have committed acts of federal trademark

infringement and unfair competition, directly and/or through agents and intermediaries,

by advertising for sale of their infringing products, and advertising for providing services

that use such products, under an infringing mark DynamOx.

43. Defendant EMS and/or EMS Florida is the registrant of an Internet web-site

with the domain name of www.dynamoxgps.com, which is used and operated by

Defendants BioDri Michigan and GPS for advertising, selling and offering for sale of its

products and also advertising and offering its services that use such products on that

website and under the infringing mark DynamOx. Defendants EMS and EMS

Floridas activities in connection with the www.dynamoxgps.com has at least contributed

to and/or induced the patent infringement by others.

44. Defendants BioDri Michigan and GPS are using the

www.dynamoxgps.com website and Defendant LSTS and BioDri are using another

Internet web-site with the domain name of www.lapinservices.com (hereafter the

websites www.dynamoxgps.com and www/lapinservices.com are collectively

referred to as Defendants websites) to advertise, promote, sell and offer for sale their

products and services by using substantially similar design, appearance, graphic and text

contents, including verbatim languages, that were copied from Plaintiff DynamOxs

website, without Plaintiff DynamOxs consent or authorization.

45. Defendants patent and trademark infringing actions were and are without

the consent or authority of the Plaintiffs.

46. Defendants have been previously put on notice of Plaintiffs Patents-in-suit.

The infringement of the Patents-in-suit by Defendants is willful.


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47. On information and belief, Defendants (or their agents or alter egos) had

prior knowledge of Plaintiff DynamOx Trademark-in-suit. The infringement of the

Trademark-in-suit by Defendants is also willful.

48. This is an exceptional case and, accordingly, Plaintiffs are entitled to

enhanced damages and their attorneys fees pursuant to Title 35, United States Code,

Sections 284 and 285 and Title 15, United States Code, Section 1117.

49. Plaintiffs, collectively and individually, have suffered irreparable injury for

which there is no adequate remedy at law as a result of Defendants infringement of the

Patents-in-suit and Trademark-in-suit. Pursuant to Title 35, United States Code, Section

283 and Title 15, United States Code, Section 1116, Plaintiffs are entitled to an injunction

against further infringement by an order preventing Defendants from selling any of

Defendants infringing products or providing services that use Defendants infringing

product or advertising any products or services under the infringing DynamOx mark.

50. Defendants unauthorized copying of Plaintiff DynamOxs website design,

appearance and contents constitutes willful copyright infringement, which has caused,

and unless enjoined will continue to cause, irreparable injury to Plaintiff DynamOx.

FIRST CAUSE OF ACTION

Infringement of the 180 Patent[35 U.S.C. 271]

(Against All Defendants)

51. Plaintiffs repeat, reallege and reaver all of their allegations contained in the

above Paragraphs 1 through 50, Inclusive, and incorporate these allegations herein by

reference.

52. Plaintiff TherOx is the exclusive licensee of the 180 Patent and has right to

prosecute this action and enforce the 180 Patent against infringers, and to collect

damages for all relevant times.


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53. On information and belief, Defendants have infringed and are infringing the

180 Patent by making, using, offering to sell, or selling their infringing products or

providing or offering to provide services that use such infringing products within the

United States, in violation of Title 35, United States Code, Section 271.

54. On information and belief, Defendants Lapin, Jepson and Farver have

infringed and are infringing the 180 Patent by personally taking part in the commission

of the patent infringement by the other defendants and specifically by engaging

themselves and directing other officers or employees of the other defendants to commit

the patent infringement act, and by personally inducing patent infringement as they

specifically intended to encourage the other defendantspatent infringement and actively

and knowingly intended to aid and abet the patent infringement by the other defendants.

55. On information and belief, unless enjoined, Defendants will continue to

infringe the 180 Patent.

SECOND CAUSE OF ACTION





reference.









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specifically intended to encourage the other defendants patent infringement and actively




THIRD CAUSE OF ACTION





reference.













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FOURTH CAUSE OF ACTION



66. Plaintiffs repeat, reallege and reaver all of their allegations contained in theabove Paragraphs 1 through 65, Inclusive, and incorporate these allegations herein by

reference.

67. Plaintiff TherOx is the owner of the 059 Patent and has right to prosecu te

this action and enforce the 059 Patent against infringers, and to collect damages for all

relevant times.













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FIFTH CAUSE OF ACTIONInfringement of the 535 Patent

[35 U.S.C. 271]




reference.

72. Plaintiffs TherOx and DynamOx are co-owners of the 535 Patent and haveright to prosecute this action and enforce the 535 Patent against infringers, and to collect







infringed and are infringing the 535 Patent bypersonally taking part in the commission









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SIXTH CAUSE OF ACTION





reference.

77. Plaintiffs TherOx and DynamOx are co-owners of the 278 Patent and have

right to prosecute this action and enforce the 278 Patent against infringers, and to collect


78. On information and belief, Defendants have infringed and are infringing the278 Patent by making, using, offering to sell, or selling their infringing products or




infringed and are infringing the 278 Patent bypersonally taking part in the commission









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SEVENTH CAUSE OF ACTIONInfringement of the 068 Registration

[ 34 of the Lanham Act, 15 U.S.C. 1116]

(Against All Defendants except Village)



reference.

82. Plaintiff DynamOx is the owner of the 068 Registration and have right to

prosecute this action and enforce the 068 Registration against infringers, and to collect


83. On information and belief, Defendants have infringed and are infringing the068 Registration by advertising and selling their products, or advertising and offering

their services that use such products, within the United States, in violation of Title 15,

United States Code, Section 1114.

84. On information and belief, Defendants Lapin and Jepson have infringed

and are infringing the 068 Registration by personally taking part in the commission of

the trademark infringement by the other defendants and specifically by engaging


the trademark infringement act, and by personally inducing trademark infringement as

they specifically intended to encourage the other defendants trademark infringement and

actively and knowingly intended to aid and abet the trademark infringement by

Defendants.


infringe the 068 Registration.


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EIGHTH CAUSE OF ACTIONFederal Unfair Competition

[ 43(a) of the Lanham Act, 15 U.S.C. 1125(a)]




reference.

87. On information and belief, defendants have used Plaintiff DynamOx

DynamOx trademark protected by the 068 Registration in Defendants advertising in

connection with Defendants competing wastewater treatment products and services,

which is likely to cause confusion, mistake or deception in the public as to the affiliation,connection or association of Defendants with Plaintiff DynamOx, and/or as to the origin,

sponsorship, or approval of Defendants products or services by Plaintiff DynamOx.

88. On information and belief, Defendants had actual knowledge of Plaintiff

DynamOx extensive and continuous use of, and the federal registration for, Plaintiffs

DynamOx trademark, but nevertheless willfully and deliberately used Plaintiff

DynamOx trademark in interstate commerce in connection with Defendants competing

wastewater treatment products and services, for the express purpose of engaging in unfair

competition with the Plaintiffs.

89. On information and belief, Defendants above alleged conduct of unfair

competition is malicious and oppressive, and Defendants have willfully and deliberately

committed such malicious and oppressive conduct.

90. As a result of Defendants willful unfair competition with Plaintiffs,

Plaintiffs have suffered great and irreparable harm and are therefore entitled to receive

maximum damages allowable under the Lanham Act from and against the Defendants.


commit the above alleged malicious and oppressive acts of unfair competition.


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NINTH CAUSE OF ACTIONCommon Law Copyright Infringement




reference.

93. On information and belief, defendants have copied the original design,

appearance, graphic and text content of Plaintiff DynamOxs website and used the

same and/or substantially similar design, appearance, graphic and text content on

Defendants websites, without Plaintiffs consent and authorization, in connection with

Defendants infringing wastewater treatment products and services. For example,

Defendants websites, www.dynamoxgps.com and www.lapinservices.com, copy a

significant amount of protected works from Plaintiff DynamOxs website,

www.dynamox.capitalenergyholdings.com, including the following language regarding

Defendants aeration systems: New Patented DO Aeration Systems[:]We achieve this

by delivering extremely large amounts of dissolved oxygen into waste streams without

loss through bubbles; the oxygen rich water remains stable, odor-free and biologicallyavailable with virtually no off gassing.

94. On information and belief, Defendants had actual knowledge of Plaintiff

DynamOx original creation, authentic authorship and extensive prior use of the design,

appearance, graphic and text contents on Plaintiff DynamOxs website, but nevertheless

willfully and deliberately copied Plaintiff DynamOxs design, appearance, graphic and

text contents and used the same or substantially similar design, appearance, graphic and

text contents on Defendants websites in connection with advertising, promoting, offering

for sale and selling Defendants infringing wastewater treatment products and services.


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95. On information and belief, Defendants above alleged conduct of copyright

infringement is malicious and oppressive, and Defendants have willfully and deliberately

committed such malicious and oppressive conduct.

96. As a result of Defendants willful copyright infringement, Plaintiffs have

suffered great and irreparable harm and are therefore entitled to receive all damages

allowable under the common law from and against the Defendants.


commit the above alleged malicious and oppressive acts of copyright infringement.

PRAYER FOR RELIEF

WHEREFORE, Plaintiffs pray for judgment in their favor against the Defendants

as follows:

1. Adjudging, finding, and declaring that Defendants infringed, have infringed

and are infringing the Patents-in-suit;

2. Adjudging, finding, and declaring that Defendants (except Village)

infringed, have infringed and are infringing the Trademark-in-suit;


competed, have competed and are competing unfairly with the Plaintiffs;


infringed, have infringed and are infringing Plaintiffs copyrights;

5. Permanently enjoining Defendants, their officers, agents, servants,

employees, and attorneys, and those persons in active concert or participation with them,

from infringing the Patents-in-suit;



from infringing the Trademark-in-suit;


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from unfairly competing with the Plaintiffs by using Plaintiff DynamOx trademark or

any confusingly similar mark in connection with distributing and selling Defendants

products and devices;

8. Awarding the www.dynamoxgps.com Internet web-site and domain

name to Plaintiff DynamOx;



from infringing Plaintiffs copyrights by using any design, appearance, graphic or text

contents on Defendants websites or any other websites that are the same orsubstantially

similar to the design, appearance, graphic or text contents of Plaintiff DynamOx website;

10. Awarding Plaintiffs an accounting and damages against Defendants for

their patent and trademark infringement in a sum to be determined at trial, together with

interest and costs as fixed by the Court; all of these damages to be enhanced in amount up

to treble the amount of compensatory damages;


their unfair competition in a sum to be determined at trial, together with interest and costs

as fixed by the Court; all of these damages to be enhanced to the maximum amount

available under the Lanham Act;


their copyright infringement in a sum to be determined at trial, together with interest and

costs as fixed by the Court; all of these damages to be enhanced to the maximum amount

available under the common law;

13. Awarding Plaintiffs their reasonable attorneys fees, costs, and

disbursements in this action; and

14. Granting Plaintiffs such other and further relief as is just and proper.


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DEMAND FOR JURY TRIAL

Plaintiffs TherOx, Inc. and DynamOx, Inc. hereby demand a jury trial with

respect to all claims triable by a jury in this action.

Respectfully submitted,

BROOKS KUSHMAN P.C.

/s/ Christopher C. SmithMark A. Cantor (P32661)

Christopher C. Smith (P73936)

1000 Town Center, 22nd

FloorSouthfield, MI 48075

Tel: (248) 358-4400

Fax: (248) 358-3351Email: [email protected]

[email protected]

Dated: November 8, 2011

therox et. al. v. blissfield manufacturing company et. al

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