superior profiles v. nox-crete products group et. al

8/13/2019 Superior Profiles v. Nox-Crete Products Group Et. Al.

http://slidepdf.com/reader/full/superior-profiles-v-nox-crete-products-group-et-al 1/10

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COMPLAINT FOR DECLARATORY RELIEF

Doug as H. Morse urg (SBN 12 205)[email protected] M. Lloyd (SBN 242224)[email protected] MAK & ANDERSON100 Corson Street, Third FloorPasadena, CA 91103-3842Tel: 626.796.4000Fax: 626.795.6321

Attorneys for Plaintiff Superior Profiles, Inc.

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

WESTERN DIVISION

SUPERIOR PROFILES, INC., aCalifornia corporation,

Plaintiff,

v.

NOX-CRETE PRODUCTSGROUP, INC., a Nebraska

corporation, and DOES 1-10,inclusive,Defendants.

C SE NO. CV1 -1197

COMPLAINT OF SUPERIORPROFILES INC. FOR DECLARATORYRELIEF REGARDING U.S. PATENTNO. 7,797,899

REQUEST FOR JURY TRIAL



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1

COMPLAINT FOR DECLARATORY RELIEF

Superior Profiles, Inc., through its attorneys Sheldon Mak & Anderson,

alleges as follows:

PARTIES

1. Superior Profiles, Inc. (hereafter “Plaintiff” or “Superior ”) is a

corporation duly organized and existing under the laws of the State of California

and having its principal place of business within the County of Los Angeles.

2. Nox-Crete Products Group, Inc. (hereafter “Nox-Crete”) is, upon

information and belief, a corporation duly organized and existing under the laws of

the State of Nebraska. Upon further information and belief, Nox-Crete is the owner

by assignment of U.S. Patent No. 7,797,899 (hereafter the “‘899 Patent”). A copy

of the ‘899 Patent is attached as Exhibit “A”.

3. On information and belief, the defendants sued herein as Does 1-10 are

individuals and entities whose names and identities are currently unknown to

Plaintiff and who are engaged in the acts described below. Plaintiff will amend its

complaint to identify these individuals or entities as soon as their identities become

known.

4. Plaintiff is informed and believes and, based thereon it alleges, that at

all times relevant to this complaint, there existed a relationship between each of the

defendants in the nature of a joint venture, partnership, principal and agent,

employer and employee, master and servant, aider and abettor, and principal and/or

conspirator. Each and every act of each of the defendants was duly authorized or

ratified by each of the other defendants and carried out within the course and scope

of such relationship. Hereafter, defendants Nox-Crete and Does 1-10 shall be

referred to collectively as “Defendants.”

JURISDICTION AND VENUE

5. The Court has subject matter jurisdiction over this action pursuant to

28 U.S.C. §§ 1338, 2201 and 2202 in that there is an actual controversy between

Superior and the Defendants regarding their rights with respect to the ‘899 Patent.



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2COMPLAINT FOR DECLARATORY RELIEF

6. The Court has personal jurisdiction over the Defendants because, upon

information and belief, they conduct business in this forum continuously and

systematically and they sell or cause to be sold in this forum products which are

allegedly covered by the ‘899 Patent.

7. Venue in this district is proper under 28 U.S.C. §§ 1391(b) and (c) in

that a substantial part of the events giving rise to the within claims occurred here.

BACKGROUND FACTS

8. Plaintiff is a manufacturer of plastic extrusions for customers

throughout the United States.

9. On November 7, 2013, Nox-Crete caused to be sent to Plaintiff a letter

(the “November 7 Letter”) claiming that Plaintiff was selling a product (the “Saw

Cut Cover”) designed to be inserted into saw-cut crack control joints that infringes

the ‘899 Patent. A true and correct copy of the November 7 Letter is attached

hereto as Exhibit “B”. On information and belief, the remaining defendants

consented to and ratified the sending of the November 7 Letter.

10. Plaintiff denies that the Saw Cut Cover infringes any valid,

enforceable claim of the ‘899 Patent and it alleges, on information and belief, that

each and every claim of the ‘899 Patent is invalid and/or unenforceable. By

“invalid,” Plaintiff means that each of the claims is invalid for any of the reasons a

patent can be declared invalid, including failure to meet the provisions of

35 U.S.C. §§ 101, 102, 103, and 112.

FIRST CLAIM

(Against All Defendants for Judicial Declaration of Non-Infringement,

Invalidity and/or Unenforceability – Dewhirst Patent)

11. Plaintiff incorporates in this paragraph by reference each and every

allegation contained in paragraphs 1-10, above.

12. Superior is informed and it believes and, on that basis it alleges, that

some or all of Nox-Crete’s claims are barred because Nox-Crete committed fraud



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on the United States Patent and Trademark Office (“PTO”) by, among other things,

failing to inform the PTO of issued United States Patent no. 2,156,681 (hereinafter

the “Dewhirst Patent”) which was filed on June 18, 1936 and published on May 2,

1939. A copy of the Dewhirst Patent is attached hereto as Exhibit “C”.

13. The filing and publication dates of the Dewhirst Patent are both prior

to the filing date of the ‘899 Patent. Moreover, the Dewhirst Patent completely

discloses the subject matter of the claims of the ‘899 Patent, as a consequence of

which the claims of the ‘899 Patent are invalid. In addition, the Dewhirst Patent

constitutes material prior art which should have been disclosed to the PTO in

connection with the prosecution of the application for the ‘899 Patent.


Nox-Crete and one of the two named inventors on the ‘899 Patent, Carl Linn

(“Linn”), were aware of the Dewhirst Patent during the pendency of the application

for the ‘899 Patent. Nox-Crete and Linn owed a duty of disclosure to the PTO

under 37 C.F.R. § 1.56 in connection with the prosecution of the ‘899 Patent.

15. On further information and belief, Nox-Crete and Linn intended to

deceive the PTO by intentionally failing to disclose the Dewhirst Patent to the PTO.

Had Nox-Crete and/or Linn disclosed the Dewhirst Patent to the PTO, the PTO

would not have issued the ‘899 Patent.

16. Based upon the foregoing, the ‘899 Patent is invalid and/or

unenforceable due to, among other things, inequitable conduct committed during

the course of the prosecution of the application leading to the issuance of the ‘899

Patent.

17. On information and belief, at the time Nox-Crete caused the November

7 Letter to be sent to Superior, Nox-Crete and the remaining Defendants knew or

should have known that the ‘899 Patent is invalid and/or unenforceable for one or

more of the reasons set forth above. Nox-Crete has, however, in bad faith, and/or in

reckless disregard of the invalidity and/or unenforceability of the ‘899 Patent,



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charged Superior with patent infringement, thereby making this case an exceptional

within the meaning of 35 U.S.C. § 285.

18. As set forth above, an actual controversy exists between Plaintiff and

Defendants as to the validity, enforceability, and infringement of the ‘899 Patent

and Superior is entitled to a declaration as to the parties’ rights with respect to it.

SECOND CLAIM


Invalidity and/or Unenforceability – Smith Patent)


allegation contained in paragraphs 1-10 and 16-18, above.

20. Superior is further informed and it believes and, on that basis it

alleges, that some or all of Nox-Crete’s claims are barred because Nox-Crete

committed fraud on the PTO by, among other things, failing to inform the PTO of

issued United States Patent no. 3,604,169 (hereinafter the “Smith Patent”) which

was filed on June 2, 1969 and published on September 14, 1971. A copy of the

Smith Patent is attached hereto as Exhibit “D”.

21. The filing and publication dates of the Smith Patent are both prior to

the filing date of the ‘899 Patent. Moreover, the Smith Patent completely discloses

the subject matter of the claims of the ‘899 Patent, as a consequence of which the

claims of the ‘899 Patent are invalid. In addition, the Smith Patent constitutes

material prior art which should have been disclosed to the PTO in connection with

the prosecution of the application for the ‘899 Patent.


Nox-Crete and Linn were aware of the Smith Patent during the pendency of the

application for the ‘899 Patent. Nox-Crete and Linn owed a duty of disclosure to

the PTO under 37 C.F.R. § 1.56 in connection with the prosecution of the ‘899

Patent.



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deceive the PTO by intentionally failing to disclose the Smith Patent to the PTO.

Had Nox-Crete and/or Linn disclosed the Smith Patent to the PTO, the PTO would

not have issued the ‘899 Patent.

THIRD CLAIM


Invalidity and/or Unenforceability – Mass Patent)




alleges, that some or all of Nox-Crete’s claims are barred because Nox-Crete

committed fraud on the PTO by, among other things, failing to inform the PTO of

issued United States Patent no. 4,362,427 (hereinafter the “Mass Patent”) which

was filed on May 30, 1980 and published on December 7, 1982. A copy of the

Mass Patent is attached hereto as Exhibit “E”.

26. The filing and publication dates of the Mass Patent are both prior to

the filing date of the ‘899 Patent. Moreover, the Mass Patent completely discloses


claims of the ‘899 Patent are invalid. In addition, the Mass Patent constitutes




Nox-Crete and Linn were aware of the Mass Patent during the pendency of the



Patent.


deceive the PTO by intentionally failing to disclose the Mass Patent to the PTO.



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Had Nox-Crete disclosed the Mass Patent to the PTO, the PTO would not have

issued the ‘899 Patent.

FOURTH CLAIM


Invalidity and/or Unenforceability – Eyring Patent)



30. Superior is further and it believes and, on that basis it alleges, that

some or all of Nox-Crete’s claims are barred because Nox-Crete committed fraud

on the PTO by, among other things, failing to inform the PTO of issued United

States Patent no. 6,219,982 (hereinafter the “Eyring Patent”) which was filed on

February 17, 2000 and published on April 24, 2001. A copy of the Eyring Patent is

attached hereto as Exhibit “F”.

31. The filing and publication dates of the Eyring Patent are both prior to

the filing date of the ‘899 Patent. Moreover, the Eyring Patent completely discloses


claims of the ‘899 Patent are invalid. In addition, the Eyring Patent constitutes




Nox-Crete and Linn were aware of the Eyring Patent during the pendency of the



Patent.


deceive the PTO by intentionally failing to disclose the Eyring Patent to the PTO.

Had Nox-Crete disclosed the Eyring Patent to the PTO, the PTO would not have

issued the ‘899 Patent.



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FIFTH CLAIM


Invalidity and/or Unenforceability – Prior Pubic Use)




alleges, that at the time Nox-Crete caused the application for the ‘899 Patent to be

filed, Superior had been manufacturing, selling and offering for sale products that

incorporated the invention that is claimed in the ‘899 Patent for more than two

years prior to the filing date of the ‘899 Patent application, as a consequence of

which the claims of the ‘899 Patent are invalid.

36. In addition, the fact that Superior had been manufacturing, selling and

offering for sale products that incorporated the invention that is claimed in the ‘899

Patent for more than two years prior to the filing date of the ‘899 Patent is a

material fact that should have been disclosed to the PTO in connection with the

prosecution of the application for the ‘899 Patent.

37. Superior is informed and it believes and, on that basis it alleges, that at

the time Nox-Crete filed the application for the ‘899 Patent, it and Linn were aware

that Superior had been manufacturing, selling and offering for sale products that

incorporated the invention that is claimed in the ‘899 Patent for more than two

years. Under 37 C.F.R. § 1.56, Nox-Crete and Linn were obligated, but failed, to

disclose that fact to the PTO. On information and belief, Nox-Crete and Linn

intended to deceive the PTO by intentionally failing to disclose that fact to the

PTO. Had Nox-Crete and Linn disclosed that fact to the PTO, the PTO would not

have issued the ‘899 Patent.

PRAYER FOR RELIEF

WHEREFORE, Superior prays:



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1. For a judicial declaration that Superior has not infringed any valid

claims of the ‘899 Patent;

2. For a judicial declaration that the ‘899 Patent is invalid and/or

unenforceable;

3. That Nox-Crete, its assigns and all those in privity with it be enjoined

from asserting the ‘899 Patent against Superior or any of its customers or suppliers;

4. For a finding that this case is exceptional within the meaning of

35 U.S.C. § 285;

5. For an award of attorneys’ fees and costs (including expert fees);

6. For such other and further relief Superior as the Court deems just and

proper.

Dated: February 14, 2014 SHELDON MAK & ANDERSON

By:_/s/______________________Douglas H. MorseburgLaura M. Lloyd

ttorneys or P a nt Super orProfiles, Inc.



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REQUEST FOR JURY TRIAL

Pursuant to Rule 38(a) and (b) of the Federal Rules of Civil Procedure,

Superior hereby requests a trial by jury for all issues so triable.

Dated: February 14, 2014 SHELDON MAK & ANDERSON

By:_/s/______________________Douglas H. MorseburgLaura M. Lloyd

ttorneys or P a nt Super orProfiles, Inc.

superior profiles v. nox-crete products group et. al

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