Case 1:17-cv-00093-UNA Document 1 Filed 01/30/17 Page 1 of 10 PageID #: 1

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE
SPEAKMAN COMPANY,
Plaintiff,
v.
ACORN ENGINEERING COMPANY d/b/a
WHITEHALL MANUFACTURING,
Defendant.

)
)
)
) Civil Action No.:
)
)
)
DEMAND FOR A JURY TRIAL
)
)
)
)

COMPLAINT FOR PATENT INFRINGEMENT AND UNFAIR COMPETITION

Plaintiff Speakman Company (Speakman), for its Complaint against Defendant
Acorn Engineering Company d/b/a Whitehall Manufacturing (Defendant), hereby alleges as
follows:
THE PARTIES
1.

Plaintiff Speakman Company is a corporation organized and existing under the

laws of Delaware, having its principal place of business at 400 Anchor Mill Road, New Castle,
Delaware 19720.
2.

On information and belief, Acorn Engineering Company is a corporation

organized and existing under the laws of California, having a place of business and registered
agent address at 15125 Proctor Avenue, City of Industry, California 91746.
3.

On information and belief, Defendant offers certain goods and services under the

fictitious business name Whitehall Manufacturing. According to their websites, Acorn

Engineering Company and Whitehall Manufacturing are members of Morris Group International,
a group of companies having the same business address of 15125 Proctor Avenue, City of
Industry, California 91746.

Case 1:17-cv-00093-UNA Document 1 Filed 01/30/17 Page 2 of 10 PageID #: 2

JURISDICTION AND VENUE

4.

This Court has jurisdiction over the subject matter of this action pursuant to 28

U.S.C. 1331 and 1338.

5.

This Court has personal jurisdiction over Defendant by virtue of the fact that,

interalia, it has committed the tortious act of patent infringement pursuant to 35 U.S.C. 271
that has led to foreseeable harm and injury to Speakman in the State of Delaware, and throughout
the United States.
6.

This Court also has personal jurisdiction over Acorn by virtue of the fact that

Acorn is at home in Delaware as reflected by the fact that it regularly does or solicits business in
Delaware, engages in other persistent courses of conduct in Delaware, and/or derives substantial
revenue from services or things used or consumed in Delaware, including by selling its products
in Delaware and, therefore, can reasonably expect to be subject to jurisdiction in the Delaware
courts. Among other things, on information and belief, Acorn conducts marketing and sales
activities in the State of Delaware, including, but not limited to, distribution, marketing, and
sales of products to Delaware residents that are continuous and systematic.
7.

Venue is proper in this judicial district pursuant to 28 U.S.C. 1391 and

1400(b).
8.

On information and belief, Acorn is subject to personal jurisdiction in this District

and thus resides in this District under 28 U.S.C. 1391(b)(1).

NATURE OF THE ACTION
9.

This is an action for infringement of United States Patent No. D635,386 under the

Patent Laws of the United States, 35 U.S.C. 100 etseq.

-2-

Case 1:17-cv-00093-UNA Document 1 Filed 01/30/17 Page 3 of 10 PageID #: 3

SPEAKMANS PATENT RIGHTS

10.

Since opening its doors nearly a century and a half ago, Speakman has been an

innovative and leading manufacturer of shower heads, faucets, and bathroom accessories. In
connection with its research and development efforts to improve its product offerings, Speakman
developed an innovative new design for a liquid dispenser that is currently protected by the valid
and subsisting United States patent referenced below.
11.

On April 5, 2011, United States Patent No. D635,386 (the 386 patent), entitled

Liquid Dispenser, was duly and legally issued to Speakman Company. The 386 patent
claims, interalia, the ornamental design for a liquid dispenser. A true and correct copy of the
386 patent is attached hereto as Exhibit A.
12.

Speakman is the owner, by assignment, of all right, title, and interest in the 386

patent, and has the right to bring this suit for patent infringement thereon.
13.

Pursuant to an agreement entered into between Speakman and Behavioral Safety

Products, Inc. (BSP), BSP is the sole distributor of liquid dispensers covered by the 386
patent.
14.

Speakman has been manufacturing, and BSP has been advertising, promoting,

marketing, and selling, BSPs SKU# SF370 Ligature Resistant Sensor Faucet and SKU#
SF380 Ligature Resistant Metering Faucet (collectively, BSPs Patented Products) which are
commercial embodiments of the ornamental design of the 386 patent, since at least as early as
December 2010. BSPs Patented Products products have been commercially successful and
well-received by the industry.
15.

The advertising materials and website for BSPs Patented Products products were

duly marked with the 386 patent number since at least as early as March 2012, and on
information and belief at least as early as April 2011. The product packaging materials for
-3-

Case 1:17-cv-00093-UNA Document 1 Filed 01/30/17 Page 4 of 10 PageID #: 4

BSPs Patented Products products were duly marked with the 386 patent number since at least
as early as 2014.
DEFENDANTS INFRINGING ACTIVITY
16.

Acorn is a competitor of Speakman and advertises itself as a manufacturer of

plumbing fixtures, products and systems for institutional and commercial markets. Whitehall
Manufacturing is a fictitious name and division of Defendant that advertises itself as a provider
of in-room patient care units and toilets, surgical scrub sinks, and other products.
17.

Defendant sells through the same or similar trade channels as Speakman and BSP,

including directly to consumers and through nationwide industrial supply distributors such as
Grainger and Ferguson.
18.

Defendant, through Whitehall Manufacturing, has been making, using, offering

for sale, selling and/or importing products that fall within the scope of the 386 patent (the
Infringing Products).
19.

The Infringing Products offered for sale and sold by Defendant include the

Whitehall Ligature Resistant Sensor Activated Faucet 4 Centerset, Model No. WH3375-SO.
20.

Pictured below on the left are FIGs. 1, 3, and 7 from the 386 patent, and pictured

below on the right is Defendants Model No. WH3375-SO product.

-4-

Case 1:17-cv-00093-UNA Document 1 Filed 01/30/17 Page 5 of 10 PageID #: 5

US D635,386

WH3375-SO Faucet

-5-

Case 1:17-cv-00093-UNA Document 1 Filed 01/30/17 Page 6 of 10 PageID #: 6

21.

On information and belief, Defendant was aware of the 386 patent and/or BSPs

Patented Products prior to developing the Infringing Products, and took efforts to copy the
design of the 386 patent and/or BSPs Patented Products.
22.

Defendant intended to confuse, deceive, and mislead the public through its

wrongful conduct.
23.

Defendants acts are likely to cause consumer confusion because of, interalia, the

similarity between the Infringing Products and BSPs Patented Products.

24.

Defendants manufacturing, selling, offering for sale, and/or importing of the

Infringing Products, including into this judicial district, has been without the permission,
authority, or license of Speakman, and constitutes infringement of the 386 patent.
COUNT I
Infringement of the 386 Patent
25.

Speakman incorporates each of the preceding paragraphs 1 to 24 as if fully set

forth herein.
26.

Defendant has infringed and is continuing to infringe the 386 patent by making,

using, offering for sale, selling and/or importing within the United States, including within this
judicial district, Infringing Products that fall within the scope of the 386 patent.
27.

These acts constitute patent infringement under 35 U.S.C. 271(a), for which

Defendant has no permission, license, or consent from Speakman.

28.

On information and belief, the Defendant will continue to infringe the 386 patent

unless enjoined by the Court. Speakman is entitled to a preliminary and permanent injunction
pursuant to 35 U.S.C. 283 restraining Defendant, its officers, agents, employees, and all
persons acting in concert with them from engaging in further infringement of the 386 patent.

-6-

Case 1:17-cv-00093-UNA Document 1 Filed 01/30/17 Page 7 of 10 PageID #: 7

29.

Speakman is entitled to recover damages sustained as a result of the Defendants

infringement that are adequate to compensate for the infringement pursuant to 35 U.S.C. 284,
and damages for infringement of a design patent, including all the Defendants profits resulting
from the infringement pursuant to 35 U.S.C. 289, but in any event no less than a reasonable
royalty pursuant to 35 U.S.C. 284.
30.

Speakman is entitled to recover its costs, expenses, and reasonable attorneys fees

incurred in bringing the present action pursuant to 35 U.S.C. 285.

31.

The circumstances of the infringement renders this case an exceptional case under

35 U.S.C. 285, with the appropriate resulting award.

32.

The circumstances of this case justify enhanced damages under 35 U.S.C. 284,

up to three times the damages found or assessed.

33.

Speakman will be substantially and irreparably harmed by the infringing activities

described above unless those activities are precluded by this Court. Speakman has no adequate
remedy at law.
COUNT II
Unfair Competition in Violation of Section 43(a) of the Lanham Act
34.

Speakman incorporates each of the preceding paragraphs 1 to 33 as if fully set

forth herein.
35.

Defendants wrongful acts are likely to cause consumer confusion based on

Defendants advertising of a product with a substantially identical appearance to BSPs Patented

Products.
36.

The aforesaid acts constitute unfair competition with Speakman in violation of

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

-7-

Case 1:17-cv-00093-UNA Document 1 Filed 01/30/17 Page 8 of 10 PageID #: 8

37.

On information and belief, Defendants acts as described herein were undertaken

and/or continued with full knowledge of Speakmans rights, thus constituting willful unfair
competition.
38.

Defendants wrongful acts and unfair competition greatly and irreparably damage

Speakman and will continue to damage Speakman unless restrained by this Court. Speakman is
without an adequate remedy at law.
COUNT III
Unfair Competition under Delaware Common Law
39.

Speakman incorporates each of the preceding paragraphs 1 to 38 as if fully set

forth herein.
40.

This claim arises under Delaware common law for unfair competition, namely

Defendants unauthorized and confusing advertisement of a product with a substantially identical

appearance to BSPs Patented Products.
41.

Defendants acts create a likelihood of confusion, mistake, or deception, and

Speakman has suffered and will continue to suffer damage to its business, trade, reputation, and
goodwill as a result of the erroneous perception that the goods and services of Defendant are
affiliated with, sponsored by, approved by, or originate from Speakman.
42.

The aforesaid acts of Defendant constitute unfair competition in violation of

Delaware common law.

43.

On information and belief, Defendants acts as described herein were undertaken

and/or continued with full knowledge of Speakmans rights, thus constituting willful unfair
competition.

-8-

Case 1:17-cv-00093-UNA Document 1 Filed 01/30/17 Page 9 of 10 PageID #: 9

44.

Defendants wrongful acts and unfair competition greatly and irreparably damage

Speakman and will continue to damage Speakman unless restrained by this Court. Speakman is
without an adequate remedy at law
PRAYER FOR RELIEF
WHEREFORE, Speakman respectfully requests the following relief:
A.

A declaration that Defendant has infringed the patented design claimed in the

386 patent;
B.

An order preliminarily and permanently enjoining the continuing infringement of

the 386 patent by Defendant, its officers, agents, employees, attorneys, representatives, and all
others acting in concert therewith;
C.

An order for an accounting for all monies received by or on behalf of Defendant

and all damages sustained by Speakman as a result of Defendants aforementioned

infringements, that such monies and damages be awarded to Speakman, and that interest and
costs be assessed against Defendants pursuant to 35 U.S.C. 284;
D.

An order, in the alternative, for an accounting of the total profit of Defendant

arising from Defendants aforementioned infringement of Speakmans design patent, and that
such total profits be awarded to Speakman pursuant to 35 U.S.C. 289;
E.

A determination that this case is exceptional under 35 U.S.C. 285 and an

award of attorneys fees;

F.

Costs and expenses in this action; and

G.

Such other and further relief as the Court may deem just and proper.

-9-

Case 1:17-cv-00093-UNA Document 1 Filed 01/30/17 Page 10 of 10 PageID #: 10

DEMAND FOR A JURY TRIAL

Pursuant to Fed. R. Civ. P. 38, Speakman hereby demands trial by jury as to all issues so
triable in this action.

Dated: January 30, 2017

/s/D ana K .Severance

Dana K. Severance (#4869)
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
222 Delaware Avenue, Suite 1501
Wilmington, DE 19801
Telephone: (302) 252-4383
DSeverance@wcsr.com

OF COUNSEL:
Preston H. Heard
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
271 17th Street, NW, Suite 2400
Atlanta, GA 30363
Telephone: (404) 888-7366
PHeard@wcsr.com

A ttorneys forP laintiff Speakman

C ompany

38360329

-10-

Case 1:17-cv-00093-UNA Document 1-1 Filed 01/30/17 Page 1 of 6 PageID #: 11

EXHIBIT A

Case 1:17-cv-00093-UNA Document 1-1 Filed 01/30/17 Page 2 of 6 PageID #: 12

Case 1:17-cv-00093-UNA Document 1-1 Filed 01/30/17 Page 3 of 6 PageID #: 13

Case 1:17-cv-00093-UNA Document 1-1 Filed 01/30/17 Page 4 of 6 PageID #: 14

Case 1:17-cv-00093-UNA Document 1-1 Filed 01/30/17 Page 5 of 6 PageID #: 15

Case 1:17-cv-00093-UNA Document 1-1 Filed 01/30/17 Page 6 of 6 PageID #: 16

@I // %HTe) ,-*,-&

Case 1:17-cv-00093-UNA Document 1-2 Filed 01/30/17 Page 1 of 1 PageID #: 17

CIVIL COVER SHEET

JWT @I // RXeX[R^eTabWTTc P]S cWT X]U^a\ PcX^]R^]cPX]TS WTaTX]]TXcWTaaT_[PRT ]^abd __[T\ T]c cWT UX[X]V P]S bTaeXRT ^U _[TPSX]V b ^a^cWTa_P_Tab Pb aT`d XaTS Qh [Pf ' TgRT_c Pb
_a^eXSTS Qh [^RP[ad [Tb ^U R^d ac) JWXb U^a\ ' P__a^eTS Qh cWT @d SXRXP[8^]UTaT]RT ^U cWT K ]XcTS IcPcTb X]IT_cT\ QTa,42/' Xb aT`d XaTS U^acWT d bT ^U cWT 8[TaZ ^U 8^d ac U^acWT
_d a_^bT ^U X]XcXPcX]V cWT RXeX[S^RZ Tc bWTTc) (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)

I. (a) PLAINTIFFS

DEFENDANTS

ACORN ENGINEERING COMPANY d/b/a

WHITEHALL MANUFACTUING

SPEAKMAN COMPANY

New Castle, DE

(b) 8^d ]ch ^U HTbXST]RT ^U <Xabc BXbcTS F[PX]cXUU

8^d ]ch ^U HTbXST]RT ^U <Xabc BXbcTS 9TUT]SP]c

(EXCEPT IN U.S. PLAINTIFF CASES)

DEJ; 5

(c) 6 cc^a]Thb (Firm Name, Address, and Telephone Number)

(IN U.S. PLAINTIFF CASES ONLY)

?DB6 D9 8ED9; C D6 J?ED86 I; I' K I; J>; BE86 J?EDE<
J>; JH6 8J E< B6 D9 ?DLEBL; 9)

6 cc^a]Thb (If Known)

Dana K. Severance, Womble Carlyle Sandridge & Rice, LLP

222 Delaware Ave., Suite 1501, Wilmington, DE 19801 302-252-4329

II. BASIS OF JURISDICTION (Place an X in One Box Only)

" ,

K )I) = ^eTa]\ T]c

F[PX]cXUU

" .

<TSTaP[G d TbcX^]
(U.S. Government Not a Party)

" -

K )I) = ^eTa]\ T]c

9TUT]SP]c

" /

9XeTabXch
(Indicate Citizenship of Parties in Item III)

III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an X in One Box for Plaintiff

(For Diversity Cases Only)
PTF
8XcXiT]^U JWXb IcPcT
" ,

DEF
" ,

and One Box for Defendant)

PTF
DEF
?]R^a_^aPcTS or FaX]RX_P[F[PRT
" /
" /
^U 7d bX]Tbb ?]JWXb IcPcT

8XcXiT]^U 6 ]^cWTaIcPcT

" -

"

?]R^a_^aPcTS and FaX]RX_P[F[PRT

^U 7d bX]Tbb ?]6 ]^cWTaIcPcT

" 0

" 0

8XcXiT]^aId QYTRc ^U P
<^aTXV ]8^d ]cah

" .

"

<^aTXV ]DPcX^]

" 1

" 1

IV. NATURE OF SUIT (Place an X in One Box Only)

CONTRACT
"
"
"
"
"
"
"
"
"
"
"
"

TORTS

,,+
,-+
,.+
,/+
,0+

?]bd aP]RT
C PaX]T
C X[[Ta6 Rc
DTV ^cXPQ[T ?]bcad \ T]c
HTR^eTah ^U EeTa_Ph\ T]c
$ ; ]U^aRT\ T]c ^U @d SV \ T]c
,0, C TSXRPaT 6 Rc
,0- HTR^eTah ^U 9TUPd [cTS
Icd ST]c B^P]b
%; gR[d STb LTcTaP]b&
,0. HTR^eTah ^U EeTa_Ph\ T]c
^U LTcTaP]k
b 7T]TUXcb
,1+ Ic^RZ W^[STabkId Xcb
,4+ EcWTa8^]caPRc
,40 8^]caPRc Fa^Sd Rc BXPQX[Xch
,41 <aP]RWXbT

"
"
"
"
"
"
"
"
"
"

"
"
"
"
"
"

REAL PROPERTY
-,+ BP]S 8^]ST\ ]PcX^]
--+ <^aTR[^bd aT
-.+ HT]c BTPbT $ ; YTRc\ T]c
-/+ J^acb c^ BP]S
-/0 J^ac Fa^Sd Rc BXPQX[Xch
-4+ 6 [[EcWTaHTP[Fa^_Tach

"
"
"
"
"
"
"

PERSONAL INJURY
.,+ 6 Xa_[P]T
.,0 6 Xa_[P]T Fa^Sd Rc
BXPQX[Xch
.-+ 6 bbPd [c' BXQT[$
I[P]STa
..+ <TSTaP[; \ _[^hTabk
BXPQX[Xch
./+ C PaX]T
./0 C PaX]T Fa^Sd Rc
BXPQX[Xch
.0+ C ^c^aLTWXR[T
.00 C ^c^aLTWXR[T
Fa^Sd Rc BXPQX[Xch
.1+ EcWTaFTab^]P[
?]Yd ah
.1- FTab^]P[?]Yd ah (
C TSXRP[C P[_aPRcXRT
CIVIL RIGHTS
//+ EcWTa8XeX[HXV Wcb
//, L^cX]V
//- ; \ _[^h\ T]c
//. >^d bX]V *
6 RR^\ \ ^SPcX^]b
//0 6 \ Ta) f *9XbPQX[XcXTb (
; \ _[^h\ T]c
//1 6 \ Ta) f *9XbPQX[XcXTb (
EcWTa
//3 ; Sd RPcX^]

FORFEITURE/PENALTY

PERSONAL INJURY
" .10 FTab^]P[?]Yd ah (
Fa^Sd Rc BXPQX[Xch
" .12 >TP[cW 8PaT*
FWPa\ PRTd cXRP[
FTab^]P[?]Yd ah
Fa^Sd Rc BXPQX[Xch
" .13 6 bQTbc^b FTab^]P[
?]Yd ah Fa^Sd Rc
BXPQX[Xch
PERSONAL PROPERTY
" .2+ EcWTa<aPd S
" .2, Jad cW X]BT]SX]V
" .3+ EcWTaFTab^]P[
Fa^_Tach 9P\ PV T
" .30 Fa^_Tach 9P\ PV T
Fa^Sd Rc BXPQX[Xch
PRISONER PETITIONS
Habeas Corpus:
" /1. 6 [XT]9TcPX]TT
" 0,+ C ^cX^]b c^ LPRPcT
IT]cT]RT
" 0.+ = T]TaP[
" 0.0 9TPcW FT]P[ch
Other:
" 0/+ C P]SP\ d b $ EcWTa
" 00+ 8XeX[HXV Wcb
" 000 FaXb^]8^]SXcX^]
" 01+ 8XeX[9TcPX]TT (
8^]SXcX^]b ^U
8^]UX]T\ T]c

" 1-0 9ad V HT[PcTS ITXid aT

^U Fa^_Tach -, K I8 33,
" 14+ EcWTa

BANKRUPTCY
" /-- 6 __TP[-3 K I8 ,03
" /-. M XcWSaPf P[
-3 K I8 ,02
PROPERTY RIGHTS
" 3-+ 8^_haXV Wcb
" 3.+ FPcT]c
" 3/+ JaPST\ PaZ

"
"
"
"
"
"

LABOR
2,+ <PXaBPQ^aIcP]SPaSb
6 Rc
2-+ BPQ^a*C P]PV T\ T]c
HT[PcX^]b
2/+ HPX[f Ph BPQ^a6 Rc
20, <P\ X[h P]S C TSXRP[
BTPeT 6 Rc
24+ EcWTaBPQ^aBXcXV PcX^]
24, ; \ _[^hTT HTcXaT\ T]c
?]R^\ T ITRd aXch 6 Rc

"
"
"
"
"

SOCIAL SECURITY
31, >?6 %,.40UU&
31- 7[PRZ Bd ]V %4-.&
31. 9?M 8*9?M M %/+ 0%V &&
31/ II?9 JXc[T NL?
310 HI?%/+ 0%V &&

FEDERAL TAX SUITS

" 32+ JPgTb %K )I) F[PX]cXUU
^a9TUT]SP]c&
" 32, ?HIj JWXaS FPach
-1 K I8 21+ 4

OTHER STATUTES
"
"
"
"
"
"
"
"
"
"
"
"
"
"
"
"

"

.20 <P[bT 8[PX\ b 6 Rc

/+ + IcPcT HTP__^acX^]\ T]c
/,+ 6 ]cXcad bc
/.+ 7P]Z b P]S 7P]Z X]V
/0+ 8^\ \ TaRT
/1+ 9T_^acPcX^]
/2+ HPRZ TcTTa?]U[d T]RTS P]S
8^aad _c EaV P]XiPcX^]b
/3+ 8^]bd \ Ta8aTSXc
/4+ 8PQ[T*IPc JL
30+ ITRd aXcXTb*8^\ \ ^SXcXTb*
; gRWP]V T
34+ EcWTaIcPcd c^ah 6 RcX^]b
34, 6 V aXRd [cd aP[6 Rcb
34. ; ]eXa^]\ T]cP[C PccTab
340 <aTTS^\ ^U ?]U^a\ PcX^]
6 Rc
341 6 aQXcaPcX^]
344 6 S\ X]XbcaPcXeT Fa^RTSd aT
6 Rc*HTeXTf ^a6 __TP[^U
6 V T]Rh 9TRXbX^]
40+ 8^]bcXcd cX^]P[Xch ^U
IcPcT IcPcd cTb

IMMIGRATION
" /1- DPcd aP[XiPcX^]6 __[XRPcX^]
" /10 EcWTa?\ \ XV aPcX^]
6 RcX^]b

V. ORIGIN (Place an X in One Box Only)

" , EaXV X]P[
Fa^RTTSX]V

" - HT\ ^eTS Ua^\

IcPcT 8^d ac

" .

HT\ P]STS Ua^\

6 __T[[PcT 8^d ac

" / HTX]bcPcTS ^a
HT^_T]TS

" 0 JaP]bUTaaTS Ua^\

6 ]^cWTa9XbcaXRc
(specify)

" 1 C d [cXSXbcaXRc
BXcXV PcX^]

8XcT cWT K )I) 8XeX[IcPcd cT d ]STaf WXRW h^d PaT UX[X]V (Do not cite jurisdictional statutes unless diversity)5

35 U.S.C. Section 271

VI. CAUSE OF ACTION 7aXTU STbRaX_cX^]^U RPd bT5

Patent infringement

" 8>; 8A ?< J>?I ?I 6 CLASS ACTION

VII. REQUESTED IN
K D9; H HK B; -.' <)H)8e)F)
COMPLAINT:
VIII. RELATED CASE(S)
(See instructions):
IF ANY
@K 9= ;
96 J;

8>; 8A O; I ^][h XU ST\ P]STS X]R^\ _[PX]c5

" OTb
" D^
JURY DEMAND:

DEMAND $

9E8A ; J DK C 7; H

I?= D6 JK H; E< 6 JJEHD; O E< H; 8EH9

/s/ Dana K. Severance

01/30/2017
FOR OFFICE USE ONLY
H; 8; ?FJ #

6 C EK DJ

6 FFBO?D= ?<F

@K 9= ;

C 6 = ) @K 9= ;