You are on page 1of 23

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MISSOURI


EASTERN DIVISION
Durabilt Industries, LLC )
St. Charles, Missouri, )
a Missouri limited liability company, )
)
Plaintiff, )
)
v. ) Cause No.:
)
) JURY TRIAL DEMANDED
Mr. Byron Small, )
an individual )
)
and )
)
The KBH Corporation, )
a Mississippi corporation, )
)
Defendants. )
COMPLAINT FOR DECLARATORY JUDGMENT
COMES NOW Durabilt Industries, LLC (DURABILT), by and through its attorneys,
and for its Complaint For Declaratory Judgment against Mr. Byron Small (SMALL) and The
KBH Corporation (KBH), states as follows:
Nature Of The Action
1. This Complaint seeks a judgment declaring that the claim of United States Patents
No. D700,918 (the 918 Patent) is not infringed by DURABILT, and that the 918 Patent is
invalid. A true and accurate copy of the 918 Patent is attached hereto as Exhibit A.
2. On information and belief, Mr. Byron Small claims to be the owner of all right,
title, and interest in the 918 Patent, which is entitled Cotton Module Spear Implement, issued
on March 11, 2014.
Case: 4:14-cv-01838 Doc. #: 1 Filed: 10/31/14 Page: 1 of 6 PageID #: 1
3. On information and belief, KBH entered into an agreement with SMALL that
grants KBH an exclusive license to market, manufacture, and sell products under the 918 Patent,
and that in that agreement SMALL has assigned to KBH the right to enforce the 918 Patent.
Parties
4. Plaintiff, DURABILT, is a limited liability company organized and existing under
the laws of the State of Missouri and has a principal place of business at 3220 Newtown Blvd.,
St. Charles, MO 63301.
5. On information and belief, Defendant, KBH, is a corporation incorporated under
the laws of the State of Mississippi with a principal place of business at 395 Anderson Blvd. Ext,
Clarksdale, MS 38614.
6. On information and belief, Defendant, SMALL, is an individual who is a
Missouri resident residing at 9408 State Highway V, Senath, Missouri, 63876.
Jurisdiction and Venue
7. This Court has subject matter jurisdiction pursuant to the Declaratory Judgment
Act, 28 U.S.C. 2201 et seq., under 38 U.S.C. 1338(a), and under the patent laws of the
United States, 35 U.S.C. 1, et seq.
8. This Court has personal jurisdiction over SMALL and KBH because, inter alia,
upon information and belief, KBH regularly and actively does business in this judicial district,
and SMALL and KBH purposefully directed acts at a resident in this district giving rise to this
Complaint, including directing threats of infringement of the 918 Patent against Missouri
resident DURABILT.
9. Venue in this district is proper pursuant to 28 U.S.C. 1391 and 1400 because,
among other reasons, SMALL and KBH are subject to personal jurisdiction in this judicial
district, SMALL and KBH and their directors have conducted and are presently conducting
Case: 4:14-cv-01838 Doc. #: 1 Filed: 10/31/14 Page: 2 of 6 PageID #: 2
business in this judicial district, or because a substantial part of the events or omissions giving
rise to the claims herein occurred in this judicial district.
Acts Giving Rise to the Claims
10. On October 15, 2014, the law firm of Henke-Bufkin, KBHs attorneys, expressly
communicated by letter to DURABILT that KBH concludes and believes that DURABILTs
Round Module Cotton Spear Model CS2012 (DURABILT Model CS2012) infringed the
patent rights of the 918 Patent that are allegedly owned by SMALL and assigned to KBH. A
true and correct copy of the October 15, 2014 letter from KBHs attorneys is attached hereto as
Exhibit B. An image of the DURABILT Round Module Cotton Spear Model CS2012 is
attached hereto as Exhibit C.
11. There are a number of significant and substantial differences between the
appearance of the DURABILT Model CS2012 device and the device shown in the figures of the
918 Patent.
12. Additionally, all of the elements of the device disclosed in the 918 Patent are
expressly dictated only by the functional performance of that device.
13. Therefore, DURABILT expressly denies that it has in any way or manner
infringed the 918 Patent and/or any valid claim thereof, and states that it is entitled to make, use,
offer for sale, sell, and otherwise commercially exploit the DURABILT Model CS2012 in
accordance with its rights and interests therein without interference from SMALL and KBH.
14. By their allegations, conduct, and actions, SMALL and KBH have created an
actual and justiciable case and controversy between themselves and DURABILT that is of
sufficient immediacy and reality to warrant declaratory relief concerning whether DURABILT is
infringing any valid and enforceable claim of the 918 Patent, as well as whether the 918 Patent
is valid.
Case: 4:14-cv-01838 Doc. #: 1 Filed: 10/31/14 Page: 3 of 6 PageID #: 3
Count I
Declaratory Judgment of Non-Infringement of U.S. Design Patent No. D700,918
15. DURABILT hereby incorporates by reference each and every allegation set forth
in Paragraphs 1 through 14 of this Complaint as if fully set forth and restated herein.
16. DURABILT has not infringed, and is not infringing, upon the claim of the 918
Patent.
17. By reason of the proceedings in the U.S. Patent and Trademark Office during the
prosecution of the application that matured into the 918 Patent, and related applications, and in
particular, the applicants conduct and/or his admissions during those proceedings, Defendant is
precluded and estopped from asserting that DURABILT has infringed upon the claim of the 918
Patent.
18. The claim of the 918 Patent it therefore invalid or is so restricted in scope that
DURABILT has not infringed, and does not infringe, that claim.
19. As a result of the acts described in the foregoing paragraphs, there exists a
substantial controversy of sufficient immediacy and reality to warrant the issuance of a
declaratory judgment.
20. A judicial declaration is necessary and appropriate so that DURABILT may
ascertain its rights regarding the 918 Patent.
21. DURABILT is entitled to a declaratory judgment that it has not infringed and
does not infringe, directly or indirectly, any valid and enforceable claim of the 918 patent.
Count II
Declaratory Judgment of Invalidity of U.S. Design Patent No. D700,918
22. DURABILT hereby incorporates by reference each and every allegation set forth
in Paragraphs 1 through 21 of this Complaint as if fully set forth and restated herein.
Case: 4:14-cv-01838 Doc. #: 1 Filed: 10/31/14 Page: 4 of 6 PageID #: 4
23. Upon information and belief, the claim of the 918 Patent is invalid, void, and/or
unenforceable for failure to comply with the requirements of the patent laws of the United States,
35 U.S.C. 171.
24. Upon information and belief, the claim of the 918 Patent is invalid and void for
one or more of the following reasons:
(a) The alleged invention was not new before the applicants alleged conception
and/or reduction to practice;
(b) The alleged invention was not original before the applicants alleged
conception and/or reduction to practice;
(c) The alleged invention does not disclose or claim any ornamental aspect
because the alleged ornamental appearance of the claimed design is dictated by the use or
purpose of the article and is thus functional;
(d) The difference between the subject matter sought to be patented in the 918
Patent and the prior art are such that the subject matter as a whole would have been obvious at
the time the alleged invention was made to a person having ordinary skill in the art to which said
subject matter pertains; and
(e) The alleged invention does not involve the exercise of inventive faculty, but
only the judgment, knowledge and skill possessed by persons having ordinary skill in the art at
the time of the alleged invention thereof by the patentee.
25. DURABILT is entitled to a declaratory judgment that the 918 Patent is invalid
for at least the reasons noted in the preceding paragraph.
WHEREFORE, DURABILT respectfully prays that the Court enter judgment in its
favor and award the following relief against SMALL and KBH:
Case: 4:14-cv-01838 Doc. #: 1 Filed: 10/31/14 Page: 5 of 6 PageID #: 5
A. Declare that DURABILT has not infringed and is not infringing the claim of U.S.
Design Patent No. D700,918;
B. Declare that the claim of U.S. Design Patent No. D700,918 is invalid and of no
force or effect;
C. Permanently enjoin SMALL and KBH and any of their officers, directors, agents,
servants, employees and attorneys, and any and all persons in active concert or participation with
any of them, from asserting, stating, implying or suggesting that DURABILT and/or any of its
respective officers, directors, agents, servants, employees, subsidiaries or customers, infringe any
of the claims of U.S. Design Patent No. D700,918;
D. Issue an order declaring that DURABILT is a prevailing party and that this is an
exceptional case, awarding DURABILT its costs, expenses, disbursements, and reasonable
attorneys fees under 35 U.S.C. 285, and all other statutes, rules, and common law; and
E. Award and grant DURABILT such other and further relief as the Court deems
just and proper under the circumstances.
Jury Demand
Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, DURABILT respectfully
demands a trial by jury on all issues so triable.
Dated: October 31, 2014 Respectfully submitted,
DOUGLAS E. WARREN,
E.D. Bar No. 98,098
MOBAR No. 49,333
Post Office Box 6727
Chesterfield, Missouri 63006
Phone: 636-519-5257
Email: dewarren@charter.net
Attorney for Plaintiff
DURABILT LLC
Case: 4:14-cv-01838 Doc. #: 1 Filed: 10/31/14 Page: 6 of 6 PageID #: 6
JS 44 (Rev. 12/12)
CIVIL COVER SHEET
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
I. (a) PLAINTIFFS DEFENDANTS
(b) County of Residence of First Listed Plaintiff County of Residence of First Listed Defendant
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.

(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
II. BASIS OF JURISDICTION (Place an X in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an X in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
1 U.S. Government 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State 1 1 Incorporated or Principal Place 4 4
of Business In This State
2 U.S. Government 4 Diversity Citizen of Another State 2 2 Incorporated and Principal Place 5 5
Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State
Citizen or Subject of a 3 3 Foreign Nation 6 6
Foreign Country
IV. NATURE OF SUIT (Place an X in One Box Only)
CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
110 Insurance PERSONAL INJURY PERSONAL INJURY 625 Drug Related Seizure 422 Appeal 28 USC 158 375 False Claims Act
120 Marine 310 Airplane 365 Personal Injury - of Property 21 USC 881 423 Withdrawal 400 State Reapportionment
130 Miller Act 315 Airplane Product Product Liability 690 Other 28 USC 157 410 Antitrust
140 Negotiable Instrument Liability 367 Health Care/ 430 Banks and Banking
150 Recovery of Overpayment 320 Assault, Libel & Pharmaceutical PROPERTY RIGHTS 450 Commerce
& Enforcement of Judgment Slander Personal Injury 820 Copyrights 460 Deportation
151 Medicare Act 330 Federal Employers Product Liability 830 Patent 470 Racketeer Influenced and
152 Recovery of Defaulted Liability 368 Asbestos Personal 840 Trademark Corrupt Organizations
Student Loans 340 Marine Injury Product 480 Consumer Credit
(Excludes Veterans) 345 Marine Product Liability LABOR SOCIAL SECURITY 490 Cable/Sat TV
153 Recovery of Overpayment Liability PERSONAL PROPERTY 710 Fair Labor Standards 861 HIA (1395ff) 850 Securities/Commodities/
of Veterans Benefits 350 Motor Vehicle 370 Other Fraud Act 862 Black Lung (923) Exchange
160 Stockholders Suits 355 Motor Vehicle 371 Truth in Lending 720 Labor/Management 863 DIWC/DIWW (405(g)) 890 Other Statutory Actions
190 Other Contract Product Liability 380 Other Personal Relations 864 SSID Title XVI 891 Agricultural Acts
195 Contract Product Liability 360 Other Personal Property Damage 740 Railway Labor Act 865 RSI (405(g)) 893 Environmental Matters
196 Franchise Injury 385 Property Damage 751 Family and Medical 895 Freedom of Information
362 Personal Injury - Product Liability Leave Act Act
Medical Malpractice 790 Other Labor Litigation 896 Arbitration
REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS 791 Employee Retirement FEDERAL TAX SUITS 899 Administrative Procedure
210 Land Condemnation 440 Other Civil Rights Habeas Corpus: Income Security Act 870 Taxes (U.S. Plaintiff Act/Review or Appeal of
220 Foreclosure 441 Voting 463 Alien Detainee or Defendant) Agency Decision
230 Rent Lease & Ejectment 442 Employment 510 Motions to Vacate 871 IRSThird Party 950 Constitutionality of
240 Torts to Land 443 Housing/ Sentence 26 USC 7609 State Statutes
245 Tort Product Liability Accommodations 530 General
290 All Other Real Property 445 Amer. w/Disabilities - 535 Death Penalty IMMIGRATION
Employment Other: 462 Naturalization Application
446 Amer. w/Disabilities - 540 Mandamus & Other 465 Other Immigration
Other 550 Civil Rights Actions
448 Education 555 Prison Condition
560 Civil Detainee -
Conditions of
Confinement
V. ORIGIN (Place an X in One Box Only)
1 Original
Proceeding
2 Removed from
State Court
3 Remanded from
Appellate Court
4 Reinstated or
Reopened
5 Transferred from
Another District
(specify)
6 Multidistrict
Litigation
VI. CAUSE OF ACTION
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):

Brief description of cause:
VII. REQUESTED IN
COMPLAINT:
CHECK IF THIS IS A CLASS ACTION
UNDER RULE 23, F.R.Cv.P.
DEMAND $ CHECK YES only if demanded in complaint:
JURY DEMAND: Yes No
VIII. RELATED CASE(S)
IF ANY
(See instructions):
JUDGE DOCKET NUMBER
DATE SIGNATURE OF ATTORNEY OF RECORD
FOR OFFICE USE ONLY
RECEIPT # AMOUNT APPLYING IFP JUDGE MAG. JUDGE
Case: 4:14-cv-01838 Doc. #: 1-1 Filed: 10/31/14 Page: 1 of 1 PageID #: 7

DURABIILT INDUSTRIES, LLC
ST. CHARLES

Douglas E. Warren, P.O. Box 6727, Chesterfield, MO 63006
BYRON SMALL
and
THE KBH CORPORATION
28 U.S.C. 2201 et seq.
Declaratory Judgment Action for Patent Non-Infringement and Patent Invalidity
10/31/2014 /s/ Douglas E. Warren MOBAR 49333
Print Save As... Reset
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
)
, )
)
Plaintiff, )
)
v. ) Case No.
)
, )
)
Defendant, )
)
ORIGINAL FILING FORM
THIS FORM MUST BE COMPLETED AND VERIFIED BY THE FILING PARTY
WHEN INITIATING A NEW CASE.
THIS SAME CAUSE, OR A SUBSTANTIALLY EQUIVALENT COMPLAINT, WAS
PREVIOUSLY FILED IN THIS COURT AS CASE NUMBER
AND ASSIGNED TO THE HONORABLE JUDGE .
THIS CAUSE IS RELATED, BUT IS NOT SUBSTANTIALLY EQUIVALENT TO ANY
PREVIOUSLY FILED COMPLAINT. THE RELATED CASE NUMBER IS AND
THAT CASE WAS ASSIGNED TO THE HONORABLE . THIS CASE MAY,
THEREFORE, BE OPENED AS AN ORIGINAL PROCEEDING.
NEITHER THIS SAME CAUSE, NOR A SUBSTANTIALLY EQUIVALENT
COMPLAINT, HAS BEEN PREVIOUSLY FILED IN THIS COURT, AND THEREFORE
MAY BE OPENED AS AN ORIGINAL PROCEEDING.
The undersigned affirms that the information provided above is true and correct.
Date:
Signature of Filing Party
Case: 4:14-cv-01838 Doc. #: 1-2 Filed: 10/31/14 Page: 1 of 1 PageID #: 8
Reset
DURABILT INDUSTRIES
LLC
BYRON SMALL and
THE KBH CORPORATION
10/31/2014 /S/ DOUGLAS E. WARREN
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
)
)
)
Plaintiff(s), )
) Case No.
vs. )
)
)
Defendant(s). )
DISCLOSURE OF CORPORATION INTERESTS
CERTIFICATE
Pursuant to Rule 2.09 of the Local Rules of the United States District Court for the Eastern
District of Missouri and Rule 7.1 of the Federal Rules of Civil Procedure, Counsel of record
for hereby gives notice the following corporate interests are
disclosed:
1. The parent companies of the corporation:
2. Subsidiaries not wholly owned by the corporation:
3. Any publicly held company that owns ten percent (10%) or more of the corporation:

Signature (Counsel for Plaintiff/Defendant)
Print Name:
Address:

City/State/Zip:
Phone:
I hereby certify a true copy of the foregoing Disclosure of Corporate Interest Certificate was
serve (by mail, by hand delivery or by electronic notice) on all parties
this Day of , 20 .
Case: 4:14-cv-01838 Doc. #: 1-3 Filed: 10/31/14 Page: 1 of 1 PageID #: 9
DURABILT INDUSTRIES LLC
BYRON SMALL & THE KBH CORPORATION
DURABILT INDUSTRIES LLC
NONE
NONE
NONE
DOUGLAS E. WARREN
P.O. BOX 6727
CHESTERFIELD, MO 63006
636-519-5257
31 OCTOBER 14
Reset
/s/ DOUGLAS E. WARREN
EXHIBIT A
United States Design Patent
Number D700,918
Case: 4:14-cv-01838 Doc. #: 1-4 Filed: 10/31/14 Page: 1 of 9 PageID #: 10
Case: 4:14-cv-01838 Doc. #: 1-4 Filed: 10/31/14 Page: 2 of 9 PageID #: 11
Case: 4:14-cv-01838 Doc. #: 1-4 Filed: 10/31/14 Page: 3 of 9 PageID #: 12
Case: 4:14-cv-01838 Doc. #: 1-4 Filed: 10/31/14 Page: 4 of 9 PageID #: 13
Case: 4:14-cv-01838 Doc. #: 1-4 Filed: 10/31/14 Page: 5 of 9 PageID #: 14
Case: 4:14-cv-01838 Doc. #: 1-4 Filed: 10/31/14 Page: 6 of 9 PageID #: 15
Case: 4:14-cv-01838 Doc. #: 1-4 Filed: 10/31/14 Page: 7 of 9 PageID #: 16
Case: 4:14-cv-01838 Doc. #: 1-4 Filed: 10/31/14 Page: 8 of 9 PageID #: 17
Case: 4:14-cv-01838 Doc. #: 1-4 Filed: 10/31/14 Page: 9 of 9 PageID #: 18
EXHIBIT B
Letter From Small and KBH
Attorneys
Dated October 15, 2014
Case: 4:14-cv-01838 Doc. #: 1-5 Filed: 10/31/14 Page: 1 of 3 PageID #: 19
Case: 4:14-cv-01838 Doc. #: 1-5 Filed: 10/31/14 Page: 2 of 3 PageID #: 20
Case: 4:14-cv-01838 Doc. #: 1-5 Filed: 10/31/14 Page: 3 of 3 PageID #: 21
EXHIBIT C
DURABILT
Round Module Cotton Spear
Model CS2012
Case: 4:14-cv-01838 Doc. #: 1-6 Filed: 10/31/14 Page: 1 of 2 PageID #: 22
DURABILT Round Module Cotton Spear Model CS2012
Case: 4:14-cv-01838 Doc. #: 1-6 Filed: 10/31/14 Page: 2 of 2 PageID #: 23