2010-09-17 - Complaint - Lutz V Respond Associates Et Al 2 10-Cv-13718 SJM-MAR

Case 2:10-cv-13718-SJM -MAR Document 1 Filed 09/17/10 Page 1 of 23
UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
JOHN F. LUTZ, JR., )

)
Plaintiff and Relator, )
)
v. ) Civil Action No.:
)
RESPOND ASSOCIATES, INC.; and ) Jury Trial Requested
Frank McClelland )
RESPOND, INC.; )
)
Defendants. )
COMPLAINT
Plaintiff and Relator, John F. Lutz, Jr. (“Lutz” or “Plaintiff”), by and through his counsel
Dobrusin & Thennisch, P.C., hereby pleads the following against Defendants Respond Associates,
Inc. (“Respond Associates”), Frank McClelland (“McClelland”) and Defendant Respond, Inc.
(“Respond”), wherein Respond, McClelland and Respond Associates are collectively referred to as
“Defendants”:
NATURE OF ACTION
1. This is a patent infringement action for Defendants’ infringement of U.S. Patent No.
5,892,170 under 35 U.S.C. § 271.
2. This is also a qui tam action for false patent marking under 35 U.S.C. § 292.
3. As set forth in detail below, Defendants have violated 35 U.S.C. §§ 271 and 292(a)
by making, using, offering for sale, selling and exporting the SKATE FENDERS product in
violation of Plaintiff’s U.S. Patent No. 5,829,170 and by falsely advertising and marking the
Defendants’ SKATE FENDERS product with U.S. Patent No. 7,523,567 for the purpose of

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deceiving its competitors and the public into believing that such articles are covered by the falsely
advertised and marked patent.
4. Plaintiff seeks an award of monetary damages and an injunction against the
Defendants for infringement of its exclusive patent rights and Plaintiff seeks an award of monetary
damages against the Defendants, one-half of which shall be paid to the United States, the other half
of which shall be paid to Plaintiff pursuant to 35 U.S.C. § 292(b).
THE PARTIES
PLAINTIFF
5. Plaintiff, John F. Lutz, Jr., is a natural person and citizen of the United States of
America and is a resident of Caspar, Wyoming.
DEFENDANTS
6. Defendant Respond, Inc. is a Michigan corporation, having a place of business
located at 5922 Foothills Trail, Gaylord, Michigan. 49735. A copy of the Articles of Incorporation
for Respond, Inc. is attached as Exhibit A, and is hereby made a part of this Complaint.
7. The Resident Agent for Respond, Inc. is Frank McClelland. See Exhibit A, page 1
attached.
8. The Resident Address for Respond, Inc. is 5922 Foothills Trail, Gaylord, Michigan.
49735. See Exhibit A, page 1 attached.
9. On February 11, 2010, Respond, Inc. filed a Certificate of Assumed Name with the
Michigan Department of Energy, Labor & Economic Growth, Bureau of Commercial Services, for
the assumed name SKATE FENDERS. The Assumed Name Certificate is signed by Frank
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McClelland and is dated February 5, 2010. A copy of the Assumed Name Certificate is attached as
Exhibit B, and is hereby made a part of this Complaint.
10. Upon information and belief, Defendant Frank McClelland is a natural person and
citizen of the United States of America and resides in Gaylord, Michigan.
11. Defendant Respond Associates, Inc. is a Michigan corporation, having a business
address at 5922 Foothills Trail, Gaylord, Michigan. 49735. A copy of the 2005 through 2009
Annual Reports for Respond Associates, Inc. is attached as Exhibit C, and is hereby made a part of
this Complaint.
12. The Resident Agent for Respond Associates, Inc. is Frank McClelland. See Exhibit
C attached.
13. The Resident Address for Respond Associates, Inc. is 5922 Foothills Trail, Gaylord,
Michigan. 49735. See Exhibit C attached.
JURISDICTION AND VENUE
14. This is a civil action for violations of the Patent Laws of the United States, 35
U.S.C. § 1 et. seq. This Court has exclusive subject matter jurisdiction under 28 U.S.C. §§ 1331
and 1338(a).
15. This Court has personal jurisdiction over Defendants because Defendants engage in
substantial, continuous and systematic business within this District; place infringing products into
the stream of commerce in this judicial District; and have falsely marked such products and
advertised and sole such falsely marked products to consumers in this District.
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16. Venue is proper in this judicial district under 28 U.S.C. §§ 1400(b) and 1391,
because, among other reasons, Defendants are subject to personal jurisdiction in this judicial district
and commit acts of patent infringement in this district.
17. Plaintiff has standing to bring this action for violations of 35 U.S.C. § 1 et. seq. as
the patentee of the U.S. Patent being infringed and to bring the false marking claim in violation of
35 U.S.C. § 292, which provides that “any person” may sue for civil monetary penalties for false
marking in connection with any unpatented article and/or marking of patents. Stauffer v. Brooks
Brothers, Inc., et al. 2010 WL 3397419 (Fed. Cir. August 31, 2010). See also Vermont Agency of
Natural Resources v. United States ex rel. Stevens, 529 U.S. 765, 768 n.1 (2000), (listing section
292(b) as one of four qui tam statutes currently in force); and Pequignot v. Solo Cup Co., 608 F.3d
1356 (Fed. Cir. 2010).
BACKGROUND
18. Plaintiff incorporates the above paragraphs as if fully set forth herein.
19. Plaintiff Lutz grew up in Michigan and played organized youth ice hockey.
20. After graduating from Hillsdale College and going to work at a family business in
Macomb, Michigan, Plaintiff Lutz was playing on an ice hockey team as part of an organized men’s
hockey league.
21. During a scheduled game, an opposing player took a slap shot at Plaintiff Lutz’s
team’s goal and the puck hit him square in the side of the foot. Because of the impact of the puck
on the side of his skate, Plaintiff Lutz was out for the rest of that game from the pain of the injury.
The pain of that injury caused Plaintiff Lutz to become timid when playing defense in future ice
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hockey games. Plaintiff Lutz believed that there must be a better way to prevent this type of injury
to a hockey player's foot.
22. Soon after that foot injury, Plaintiff Lutz began to develop ideas for a piece of
hockey equipment that would protect a player’s foot from not only the impact of a puck but also
from the impact of a slash with a hockey stick. Plaintiff Lutz began experimenting and making
prototypes of samples and then sought patent protection for his skate protector invention.
Plaintiff’s ‘170 Patent
23. Plaintiff is the owner and patentee of U.S. Patent No. 5,829,170, which was duly
and lawfully issued by the United States Patent and Trademark Office on November 3, 1998,
entitled “PROTECTIVE COVER FOR AN ICE HOCKEY SKATE” (“the ‘170 Patent”). A true
and correct copy of the ‘170 Patent is attached as Exhibit D and is hereby made a part of this
Complaint.
24. Figure 2 of Plaintiff’s ‘170 Patent reproduced below is a representative drawing of
the device disclosed and patented in the Claims of the ‘170 Patent.
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25. The ‘170 Patent includes Claims 1 through 6. Claims 1 and 6 are in independent
form. 35 U.S.C. 112 ¶3. Claim 1 of the ‘170 Patent states:

1. A protective cover apparatus for partially covering the foot of a

player wearing a hockey skate, said hockey skate having a front
portion including a tongue portion, a first side portion and a second
side portion, said protective cover apparatus comprising:
a unitary layer having a first portion covering said front portion of

said skate; a second portion unitary with said first portion and
covering said first side portion of said hockey skate; and a third
portion unitary with said first and said second portions and covering
said second side portion of said hockey skate, said second and third
side portions extending in a direction away from said first side
portion to cover the ankle area of said hockey skate; and
means for connecting said layer to said skate, said connecting means
having a means for creating a gap between said layer and said skate,
said means for creating said gap being located between said hockey
skate and said second and third portions of said layer such that said
protective cover apparatus may be displaced toward said skate by an
impact force and partly dissipate such force through said connection
means before said layer makes contact with said skate.
See Exhibit D, column 8, lines 39 through 62.
False Patent Marking Statute
26. The false marking patent statute, 35 U.S.C. § 292, exists to insure that the public has
accurate information on the existence of patent rights. As summarized by the United States Court of
Appeals for the Federal Circuit in Forest Group, Inc. v. Bon Tool Company, et al., 590 F.3d 1295
(Fed. Cir. 2009), falsely marking a product can impose on the public the following injuries:

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a. Congress intended the public to rely on marking as a ready means

of discerning the status of intellectual property embodied in an article
of manufacture or design.
b. Acts of false marking deter innovation and stifle competition in the

marketplace.
c. If an article that is within the public domain is falsely marked,

potential competitors may be dissuaded from entering the same
market.
d. False marks may also deter scientific research when an inventor

sees a mark and decides to forego continued research to avoid
possible infringement.
e. False marking can also cause unnecessary investment in design

around or costs incurred to analyze the validity or enforceability of a
patent whose number has been marked upon a product with which a
competitor would like to compete.
f. In each instance where it is represented that an article is patented, a

member of the public desiring to participate in the market for the
marked article must incur the cost of determining whether the
involved patents are valid and enforceable.
g. The more articles that are falsely marked the greater the chance that
competitors will see the falsely marked article and be deterred from
competing. In sum, knowledge of the patentee's identity facilitates
avoidance of infringement with design changes, negotiations for
licenses, and even early resolution of rights in a declaratory judgment
proceeding.
Id. at pp. 1302-1303.
27. In addition to the injuries referred to in Forest Group, the U.S. Court of Appeals in
Pequignot v. Solo Cup Company, 608 F.3d 1356 (Fed. Cir. 2010) acknowledged additional injuries
due to false patent marking as follows:
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a. As with a never-patented article, an article marked with an expired

patent number imposes on the public the cost of determining whether
the involved patents are valid and enforceable.
b. Confusing and misleading the public, as the expiration date of a

U.S. patent is not easily ascertainable by the public at the time of
purchase.
c. Moreover, while basic information about a patent may be available

to the public via the website of the U. S. Patent and Trademark
Office, a member of the public must conduct a thorough and
complicated analysis to determine whether a patent is expired,
thereby imposing on the public the cost of determining whether the
involved patents are valid and enforceable.
Id. at 1362.
28. When a patent expires, all monopoly rights in the patent terminate irrevocably.
Therefore, a product marked with an expired patent is “unpatented” within the meaning of 35
U.S.C. § 292. Pequignot v. Solo Cup Company, 608 F.3d 1356, 1361 (Fed. Cir. 2010).
29. An article that was once protected by a now-expired patent is no different from an
article that has never received protection from a patent. Both are in the public domain. Furthermore,
an article that is no longer protected by a patent is not “patented,” and is more aptly described as
“unpatented.” Pequignot at 1361.
30. The consequences of false patent markings described above constitute injuries in
fact to the United States that occur each time an article is falsely marked. Forest Group, Inc. v.
Bon Tool Company, et al., 590 F.3d 1295, 1303 (Fed. Cir. 2009).
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Defendants’ ‘606 Application and ‘567 Patent
31. On November 14, 2006, Defendant Frank McClelland filed U.S. Patent Application,
Serial No. 11/559,606 (the “’606 Application”) with the U.S. Patent Office. On April 28, 2009 the
‘606 Application issued as U.S. Patent No. 7,523,567 B1 (the “’567 Patent”). A true and correct
copy of the ‘567 Patent is attached as Exhibit E and hereby made a part of this Complaint.
32. FIG – 3 of the ‘606 Application and of the ‘567 Patent is representative of the
device disclosed in the ‘567 Patent.
33. Defendant’s ‘567 Patent lists the Plaintiff’s ‘170 Patent as a “U.S. PATENT
DOCUMENT.” See Exhibit E, first page.
34. The ‘606 Application, as filed, and the ‘567 Patent each include a
“BACKGROUND OF THE INVENTION AND DESCRIPTION OF RELATED ART” section that
states the following about the Plaintiff’s ‘170 Patent:

U.S. Pat. No. 5,829,170 to Lutz, Jr. shows a removable protective

shell cover molded into a boot-fitting shape, covering the upper and
sides (including the ankle region), and fastened with straps running
behind the heel and under the sole of the boot. The strap ends are
folded and secured through slots in an effort to uniformly space the
shell off the boot to allow the shell to absorb and dissipate impact
away from the surface of the boot. The strap arrangement also
specifically tensions the upper surface of the shell against the boot

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lacing on top of the boot, using the lacing to help define the gap and
to serve as a cushion. The shell is molded from a flat blank with
constant thickness, and thus only "approximates" the shape of the
boot and does not cover or wrap around any part of the heel area.
Lutz, Jr. criticizes the Crane et al. device as complicated to put on and
take off, heavy, and prone to having the padding ripped off during a
game.
See Exhibit E attached, ‘567 Patent at column 1, lines24 through 37 and lines 49 through
52.
35. Along with the filing of the ‘606 Application, Defendant Frank McClelland signed a
“DECLARATION FOR UTILITY OR DESIGN PATENT APPLICATION (37 CFR 1.63)”
stating:
I hereby state that I have reviewed and understand the contents of the
above identified specification, including the claims, as amended by
any amendment specifically referred to above.
...
I hereby declare that all statements made herein of my own
knowledge are true and that all statements made on information and
belief are believed to be true; and further that these statements were
made with the knowledge that willful false statements and the like so
made are punishable by fine or imprisonment, or both, under 18
U.S.C. 1001 and that such willful false statements may jeopardize the
validity of the application or any patent issued thereon.
See Exhibit F at Pages 1 and 2, attached and incorporated herein.
36. The ‘606 Application Declaration is dated “11-13-06” and is signed by “Frank
McClelland” having a “Mailing Address” of “5922 Foothills Trail, Gaylord, Michigan 49735 U.S.”
See Exhibit F at page 2.
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37. Along with the filing of the ‘606 Application, “Frank McClelland” signed a
“NONPUBLICATION REQUEST UNDER 35 U.S.C. 122(b)(2)(B)(i)” stating:

I hereby certify that the invention disclosed in the attached

application has not and will not be the subject of an application filed
In another country, or under a multilateral international agreement,
that requires publication at eighteen months after filing.
I hereby request that the attached application not be published under

35 U.S.C. 122(b).
See Exhibit G, attached and incorporated herein.
38. The ‘606 Application as originally filed on 11/14/2006 includes only one claim in
independent form. Independent Claim 1 of the ‘606 Application as originally filed states:

[Claim 1] A protective cover for a hockey skate boot, the cover

comprising:
a one-piece molded protective shell having sidewalls covering

substantial portions of the ankles and sides of the boot, the sidewalls
connected by an instep-covering top portion and spaced by an open
bottom and contiguous split rear, the shell comprising heel-cupping
sidewall portions adapted to partially wrap around opposite sides of a
rounded heel portion of a hockey skate boot, the heel-cupping
sidewall portions capable of being flexed apart by hand to fit the
cover diagonally over a top instep portion of a boot, the shell having a
molded-in flex bias along a diagonal line from the heel-cupping
portions toward the instep-covering top portion tending to draw the
heel-cupping sidewall portions together to grip a rounded heel portion
of a boot when the heel-cupping sidewall portions are released; and,
spaced pads on an underside of the shell, the spaced pads spacing the
shell from the boot.
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See Exhibit H, ‘606 Application as originally filed, Page 10 of 12, attached and
incorporated herein.
39. In reliance upon the representations made by Frank McClelland, and after having
examined the ‘606 Application, on January 30, 2009, the U.S. Patent Office issued a “NOTICE OF
ALLOWANCE AND ISSUE FEE(S) DUE” which included a “Notice of Allowability”
indicating it was responsive to the “application filed 11/14/06” and that the allowed claim(s) is/are
1-10.” See Exhibit I, page 4 attached and incorporated herein.
40. On March 19, 2009, the Issue Fee for the ‘606 Application was paid. See Exhibit J,
attached and incorporated herein.
41. On April 8, 2009, the U.S. Patent Office mailed an “ISSUE NOTIFICATION” for
the ‘606 Application indicating it would issue on April 28, 2009 as “PATENT NO.” “7523567”.
See Exhibit K, attached and incorporated herein.
42. On April 23, 2009, after payment of the Issue Fee Due and after issuance of the
Issue Notification by the U.S. Patent Office, a “RESCISSION OF PREVIOUS
NONPUBLICATION REQUEST” was filed in the ‘606 Application. The “RESCISSION OF
PREVIOUS NONPUBLICATION REQUEST” is signed by Frank McClelland and is dated “4-22-
09.” See Exhibit L, attached and incorporated herein.
43. A search of the U.S. Patent Office records indicates no assignment, transfer or
license of U.S. Patent No. 7,523,567 has been recorded with the U.S. Patent Office. See Exhibit M,
attached and incorporated herein.
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SKATE FENDERS – THE INFRINGING AND FALSELY MARKED PRODUCT
44. True and accurate digital images of a SKATE FENDERS product are shown below.
45. Upon information and belief a true and accurate digital image of a SKATE
FENDERS product on an ice hockey skate is shown below left.
46. Upon information and belief, a true and accurate digital image of the SKATE
FENDERS product being worn by Niklas Hjalmarsson of the 2010 Stanley Cup Champion Chicago
Black Hawks is shown above right.
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47. The product packaging of the SKATE FENDERS product includes a clear plastic
bag-type package for holding the SKATE FENDERS skate cover products in the clear bag. The
clear bag has an open end that is closed using a glossy, printed card stock-type material bearing the
SKATE FENDERS mark and a reference to the http://www.skatefenders.com website. There is
no other understood information on the SKATE FENDERS product packaging clearly identifying
the manufacturer of the SKATE FENDERS product. A true and accurate copy of the SKATE
FENDERS printed product packaging is attached hereto as Exhibit N and a print out of the
www.skatefenders.com/index.html web page is attached hereto as Exhibit O, which are hereby
incorporated in this Complaint.
48. The SKATE FENDERS products are sold via retail store locations as shown on the
SKATE FENDERS website http://www.skatefenders.com/wheretobuy.cfm including many stores
within this judicial District as well as being sold online at www.skatefenders.com/contact.cfm.
See Exhibit P, attached and incorporated herein.
49. The SKATE FENDERS product packaging and the website
http://www.skatefenders.com indicate the SKATE FENDERS products are “Proudly Made in
USA” and the website indicates the Defendants “moved our production operation from Traverse
City, Michigan to Gaylord, Michigan.” See Exhibits N, O and P.
50. Every page of the SKATE FENDERS website, the SKATE FENDERS product, and
the SKATE FENDERS product packaging each include a conspicuous and express reference to
“U.S. Patent 7523567” as well as stating “Canadian Patent Pending.” See Exhibits N, O, P and Q
and the digital image below which is a true and accurate image of an actual SKATE FENDERS
product.
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51. The home page of the SKATE FENDERS website (http://www.skatefenders.com)
includes a message that states it is from “Frank McClelland, President, Skate Fenders.” Exhibit O.
52. The “TECHNICAL STUFF” web page at
http://www.skatefenders.com/history.cfm of the SKATE FENDERS website states: “Skate
Fenders are injection molded of high grade, impact resistant, lightweight, clear polycarbonate.” See
Exhibit Q, attached and incorporated herein.
53. Upon information and belief, the Defendants make, use, sell and offer for sale in the
United States; and/or import and export with the United States the SKATE FENDERS protective
covers for ice hockey skates.
54. The SKATE FENDERS product is “a protective cover apparatus for partially
covering the foot of a player wearing a hockey skate.”
55. The SKATE FENDERS product is made from a “a unitary layer having a first
portion” for covering the front portion of the skate, “a second portion unitary with said first
portion” for covering the first side portion of the hockey skate, and “a third portion unitary with
[the] first and [the] second portions” for covering the second side portion of the hockey skate. The
“second and third side portions extend in a direction away from [the] first side portion to cover the
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ankle area of [the] hockey skate.” Further, the SKATE FENDERS product includes straps having
hook and loop fastener material (Velcro) for “connecting [the] layer to [the] skate” and the ends of
the straps create a gap between [the] layer and [the] skate such that the protective cover apparatus
may be displaced toward the skate by an impact force and partly dissipate such force as set forth in
the claims of the ‘170 Patent.
COUNT I
35 U.S.C. § 271(a) Infringement of U.S. Patent No. 5,829,170
56. For this Count I, Plaintiff hereby incorporates the above paragraphs.
57. Plaintiff is the sole inventor and owner (and the patentee) of the ‘170 Patent.
58. In obtaining the ‘170 Patent, Plaintiff complied with all applicable requirements of
35 U.S.C. § 112 of the Patent Laws of the United States.
59. The ‘170 Patent is presumed valid and enforceable. 35 U.S.C. § 282.
60. Regarding the ‘170 Patent, Plaintiff has never offered for sale, or sold within the
United States, and has never imported or exported with the United States, any article covered by the
Claims of the ‘170 Patent. Plaintiff has never authorized or licensed any person to make, offer for
sale, or sell within the United States, and has never authorized or licensed any person to import or
export with the United States, any article covered by the claims of the ‘170 Patent.
61. Defendants have at no time been licensed under the ‘170 Patent.
62. Defendants directly, indirectly and/or contributorily infringe and continue to
infringe the Claims of the ‘170 Patent (“Asserted Claims”), in violation of 35 U.S.C. § 271(a) by
making, using, selling and offering to sell in the United States, and/or by the importing and
exporting with the United States, the SKATE FENDERS Infringing Products.
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63. Defendants’ have direct knowledge of the ‘170 Patent and are believed to be
intentionally and willfully infringing the ‘170 Patent.
64. Plaintiff has been injured and damaged by Defendants’ direct infringements of the
‘170 Patent.
65. Plaintiff is entitled to damages adequate to compensate for Defendants’
infringements of the ‘170 Patent, but in no event is Plaintiff entitled to recover less than a
reasonable royalty for Defendants’ infringement, together with interest and costs.
66. Plaintiff is entitled to have the Court increase the damages up to three times the
amount found or assessed.
67. Plaintiff is entitled to prevail on the merits and to have the Court find this an
“exceptional case” and to be awarded its reasonable attorney fees.
68. Defendants’ direct infringements have caused, and will continue to cause,
irreparable harm to Plaintiff, for which Plaintiff has no adequate remedy at law, unless and until
Defendants are enjoined by this Court.
COUNT II
35 U.S.C. § 271(b) Inducement to Infringe U.S. Patent No. 5,829,170
69. For this Count II, Plaintiff hereby incorporates the above paragraphs.
70. Defendants induce infringement of at least Claim 6 of the ‘170 Patent by inducing
their customers to use the SKATE FENDERS product in the United States in violation of 35 U.S.C.
§ 271(b).
71. Defendants’ have direct knowledge of the ‘170 Patent and are believed to be
intentionally and willfully inducing infringement of the ‘170 Patent.
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72. Plaintiff has been injured and damaged by Defendants’ inducement of infringement
of the ‘170 Patent.
73. Plaintiff is entitled to damages adequate to compensate for Defendants’ inducement
of infringement of the ‘170 Patent, but in no event is Plaintiff entitled to recover less than a
reasonable royalty for Defendants’ infringement, together with interest and costs.
74. Plaintiff is entitled to have the Court increase the damages up to three times the
amount found or assessed.
75. Plaintiff is entitled to prevail on the merits and to have the Court find this an
“exceptional case” and to be awarded its reasonable attorney fees.
76. Defendants’ inducement of infringement has caused, and will continue to cause,
irreparable harm to Plaintiff, for which Plaintiff has no adequate remedy at law, unless and until
Defendants are enjoined by this Court.
COUNT III
35 U.S.C. § 292 False Marking
77. For this Count III, Plaintiff hereby incorporates the above paragraphs.
78. Upon information and belief Defendant Frank McClelland is the co-incorporator, a
shareholder and President of Defendant Respond, Inc.
79. Defendant Frank McClelland has been and is personally involved in the
development, marketing, attempted patenting, and commercializing of the SKATE FENDERS
product as asserted on the SKATE FENDERS website (http://www.skatefenders.com). See
Exhibit O.
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80. Defendant Frank McClelland is the sole named inventor and remains the sole owner
of record for the ‘567 Patent.
81. Since at least 2005, Defendant Frank McClelland has been the Registered Agent
and the President of Respond Associates, Inc. and since 2009 for Respond, Inc.
82. The SKATE FENDERS product includes the name “RESPOND ASSOCIATES,
INC.” of which Defendant Frank McClelland is the President and Registered Agent.
83. Upon information and belief Defendants Respond, Inc. and Respond Associates,
Inc. are small, closely-held Michigan corporations owned, operated and controlled by Defendant
Frank McClelland and Defendant Respond Inc. does business as SKATE FENDERS.
84. Upon information and belief, commercialization of the SKATE FENDERS product
has commenced within the last few years and has accelerated substantially in 2010 with the use of
the SKATE FENDERS product by National Hockey League players.
85. U.S. Patent No. 7523567 was issued by the U.S. Patent Office on April 9, 2009 and
Defendants could have only begun marking their SKATE FENDERS products with the “U.S.
Patent No. 7523457” notice after this date.
86. Defendants necessarily had (and have) a conscious working knowledge of the ‘567
Patent and the scope of the Claims of the ‘567 Patent.
87. The SKATE FENDERS product is in fact not covered by the Claims of Defendant
Frank McClelland’s U.S. Patent No. 7523567.
88. Defendants make unceasing use of the “U.S. Patent No. 7523567” notice on the
SKATE FENDERS product, the product packaging, and the advertising of the SKATE FENDERS
product, particularly on all of the pages of the www.skatefenders.com web site.
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89. Upon information and belief, the instances of marking are representative and not
exhaustive of the Defendants’ false marking of the ‘567 Patent number in regard to the SKATE
FENDERS product.
90. Defendants knew, or reasonably should have known, that the purpose of their
aggressive advertising of the false marking of the SKATE FENDERS product with the ‘567 Patent
number was to put competitors and the public at large on notice of exclusive and legally
enforceable patent rights.
91. Defendants knew, or reasonably should have known, that the SKATE FENDERS
products they advertised for sale and continue to advertise and falsely mark with the ‘567 Patent
number were not covered by the ‘567 Patent.
92. Defendants’ statements and marking that its SKATE FENDERS products were
protected by the ‘567 Patent and Defendants’ knowledge that the statements were false create a
rebuttable presumption of a specific intent to deceive the public into believing that the SKATE
FENDERS product was actually patented. Pequignot v. Solo Cup Company, 608 F.3d 1356, 1362
(Fed. Cir. 2010).
93. In view of the above, it is asserted that Defendants could not have obtained a good
faith opinion of counsel supporting an assertion that the Claims of the ‘567 Patent cover the
SKATE FENDERS product.
94. Defendants advertised, marked and continue to advertise and mark the SKATE
FENDERS product with the ‘567 Patent number with the specific intent to deceive the public into
believing that the marked products are covered by the ‘567 Patent in violation of 35 U.S.C. § 292.
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95. By advertising, offering for sale and selling the falsely marked SKATE FENDERS
product with the ‘567 Patent number, Defendants have benefitted commercially and financially.
96. Given the nature and timing of the first Office Action Allowance and the issuance
of the Defendants ‘567 Patent and the close proximity in time to the Defendants’ aggressive and
near plenary marking of the ‘567 Patent number in Defendants’ advertising, product packaging and
on the SKATE FENDERS product, and given the Defendants’ specific knowledge of the Plaintiff’s
‘170 Patent, it is clear that the Defendants specifically intended to dissuade competitors from
entering the same market; deter research in the product area by implied possible infringement of the
‘567 Patent; cause unnecessary investment by competitors in design-around or costs incurred to
analyze the validity or enforceability of the ‘567 Patent number marked upon the SKATE
FENDERS product; and greatly increase the chance that competitors will see the falsely marked
article and deter them from competing.
97. Each instance of false patent marking of Defendants products is likely to, or at least
has the potential to, discourage or deter persons and companies from making or selling similar or
competing products or otherwise cause harm to the public, as set forth above, thereby causing an
injury in fact to the United States of America.
98. By advertising, marking and continuing to advertise or otherwise falsely mark the
SKATE FENDER product with the ‘567 Patent number, Plaintiff and the United States of America
have suffered an injury in fact, causally connected to Defendants’ intentional misconduct in
violation of 35 U.S.C. § 292, that is likely to be redressed by this Court. See Stauffer v. Brooks
Brothers, Inc., et al, supra.
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99. Plaintiff hereby requests this Court fine the Defendants $500 for each falsely
marked product in violation of 35 U.S.C. § 292– with one-half going to the Plaintiff and one-half
going to the use of the United States and award Plaintiff’s its actual and reasonable attorney fees
and costs.
RELIEF
Plaintiff hereby requests this Court provide Plaintiff an expeditious adjudication of this action
resulting in a judgment that:
A. Defendants’ actions of making, using, selling, exporting and offering for sale
Defendant’s SKATE FENDERS product infringes Plaintiff’s ‘170 Patent in violation of 35 U.S.C.
§ 271(a) and (b);
B. Defendant’s infringements of the ‘170 Patent is intentional and willful;
C. Defendants, their officers, directors, employees, agents, subsidiaries, licensees,
servants, successors and assigns, and any and all persons acting in privity or in concert or
participation with Defendants, be reasonably, preliminarily and permanently enjoined from
infringement of the ‘170 Patent pursuant to 35 U.S.C. § 283;
D. Awards Plaintiff all damages adequate to compensate Plaintiff for Defendants
infringements of the ‘170 Patent and that such damages be trebled pursuant to 35 U.S.C. § 284
and awarded to Plaintiff, with prejudgment interest and costs;
E. Finds this action an exceptional case pursuant to 35 U.S.C. § 285 and awards
Plaintiff its actual and reasonable attorneys’ fees and its actual costs and expenses incurred in
bringing this action;
22

G. Finds that the SKATE FENDERS product is not covered by any valid or
enforceable Claim of the ‘567 Patent;
H. Finds that Defendants falsely marked the SKATE FENDERS product with the
‘567 Patent number;
H. Finds the Defendants’ false marking of the SKATE FENDERS product with the
‘567 Patent number was for the purpose of intentionally deceiving the public;
I. Finds that each sale the Defendants made of a SKATE FENDERS product falsely
marked with the ‘567 Patent number violates 35 U.S.C. § 292 and fines the Defendants $500 for
each such violation –with one-half going to the Plaintiff and one-half going to the use of the
United States of America; and
J. Awards Plaintiff such other and further relief as the Court deems just.
JURY DEMAND
Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiff hereby requests a trial by
Jury on all issues triable by jury.
Dated: September 17, 2010 DOBRUSIN & THENNISCH, P.C.
By /John VanOphem/
John VanOphem P48804

JVanOphem@patentco.com
Jeffrey Thennisch P51499
JThennisch@patentco.com
29 W. Lawrence Street
Pontiac, MI 48342
(248) 292-2920 (Phone)
(248) 292-2910 (Facsimile)
Attorneys for Plaintiff, John F. Lutz, Jr.

23

2010-09-17 - Complaint - Lutz V Respond Associates Et Al 2 10-Cv-13718 SJM-MAR

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Case 2:10-cv-13718-SJM -MAR Document 1 Filed 09/17/10 Page 1 of 23

UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF MICHIGAN

JOHN F. LUTZ, JR., )

5,892,170 under 35 U.S.C. § 271.

advertised and marked patent.

4. Plaintiff seeks an award of monetary damages and an injunction against the

of which shall be paid to Plaintiff pursuant to 35 U.S.C. § 292(b).

America and is a resident of Caspar, Wyoming.

6. Defendant Respond, Inc. is a Michigan corporation, having a place of business

49735. See Exhibit A, page 1 attached.

Exhibit B, and is hereby made a part of this Complaint.

citizen of the United States of America and resides in Gaylord, Michigan.

11. Defendant Respond Associates, Inc. is a Michigan corporation, having a business

Michigan. 49735. See Exhibit C attached.

JURISDICTION AND VENUE

and commit acts of patent infringement in this district.

1356 (Fed. Cir. 2010).

to a hockey player's foot.

Plaintiff’s ‘170 Patent

24. Figure 2 of Plaintiff’s ‘170 Patent reproduced below is a representative drawing of

form. 35 U.S.C. 112 ¶3. Claim 1 of the ‘170 Patent states:

1. A protective cover apparatus for partially covering the foot of a

a unitary layer having a first portion covering said front portion of

False Patent Marking Statute

a. Congress intended the public to rely on marking as a ready means

b. Acts of false marking deter innovation and stifle competition in the

c. If an article that is within the public domain is falsely marked,

d. False marks may also deter scientific research when an inventor

e. False marking can also cause unnecessary investment in design

f. In each instance where it is represented that an article is patented, a

Id. at pp. 1302-1303.

due to false patent marking as follows:

a. As with a never-patented article, an article marked with an expired

b. Confusing and misleading the public, as the expiration date of a

c. Moreover, while basic information about a patent may be available

“unpatented.” Pequignot at 1361.

Defendants’ ‘606 Application and ‘567 Patent

device disclosed in the ‘567 Patent.

DOCUMENT.” See Exhibit E, first page.

“BACKGROUND OF THE INVENTION AND DESCRIPTION OF RELATED ART” section that

states the following about the Plaintiff’s ‘170 Patent:

U.S. Pat. No. 5,829,170 to Lutz, Jr. shows a removable protective

“DECLARATION FOR UTILITY OR DESIGN PATENT APPLICATION (37 CFR 1.63)”

See Exhibit F at Pages 1 and 2, attached and incorporated herein.

See Exhibit F at page 2.

“NONPUBLICATION REQUEST UNDER 35 U.S.C. 122(b)(2)(B)(i)” stating:

I hereby certify that the invention disclosed in the attached

I hereby request that the attached application not be published under

See Exhibit G, attached and incorporated herein.

[Claim 1] A protective cover for a hockey skate boot, the cover

a one-piece molded protective shell having sidewalls covering

ALLOWANCE AND ISSUE FEE(S) DUE” which included a “Notice of Allowability”

1-10.” See Exhibit I, page 4 attached and incorporated herein.

attached and incorporated herein.

See Exhibit K, attached and incorporated herein.

Issue Notification by the U.S. Patent Office, a “RESCISSION OF PREVIOUS

NONPUBLICATION REQUEST” was filed in the ‘606 Application. The “RESCISSION OF

PREVIOUS NONPUBLICATION REQUEST” is signed by Frank McClelland and is dated “4-22-

09.” See Exhibit L, attached and incorporated herein.

attached and incorporated herein.

SKATE FENDERS – THE INFRINGING AND FALSELY MARKED PRODUCT

FENDERS product on an ice hockey skate is shown below left.