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7/30/2019 Guidecraft v. Magformers
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IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
GUIDECRAFT, INC.,
Plaintiff,
v.
MAGFORMERS, LLC,
Defendant.
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Civil Action No. ________________
COMPLAINT
(Jury Trial Demanded)
For its complaint against Defendant Magformers, LLC ("Magformers" or “Defendant”),
Plaintiff Guidecraft, Inc. (“Guidecraft” or “Plaintiff”) hereby states as follows:
Nature of the Case
1. This is an action for a declaratory judgment of non-infringement of a United
States patent and an action for unfair competition and misconduct in the marketplace under the
Lanham Act. This action is commenced pursuant to the Declaratory Judgment Act, 28 U.S.C.
§ 2201, and arises under the United States patent laws, 35 U.S.C. § 1, et seq. and the Lanham Act
15 U.S.C § 1051 et seq.
Parties
2. Plaintiff, Guidecraft is a New York corporation with places of business at 55508
State Highway, 19 West, Winthrop, Minnesota, 55396 and 204 Route 17, 2nd
floor, Tuxedo Park,
NY 10987-4410. Guidecraft is a worldwide leader in the design and manufacture of toys,
furniture for children, and art and craft products that are designed for children.
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3. Plaintiff offers to sell and sells its products nationally, internationally, and within
this judicial district.
4. Plaintiff sells toys and other products in this judicial district, including stores such
as USA Baby, located at 2257 Babcock Blvd., Pittsburgh, PA 15237 and All About Kids, located
at 3043 Washington Rd., McMurray, PA 15317. Plaintiff also offers its products in catalogs that
are distributed throughout the United States including this judicial district.
5. Plaintiff further advertises its products and provides customer service and other
services throughout the world and in this judicial district via its website, www.guidecraft.com.
6.
On information and belief, Defendant is a Utah limited liability company having a
place of business located at 1440 East 4045, Salt Lake City, Utah 84124.
7. On information and belief, Defendant sells its products throughout the United
States and internationally, including in this judicial district.
8. On information and belief, Defendant advertises its products in this judicial
district, sells its products in this judicial district, and offers to sell its products in this judicial
district.
9. On information and belief, Defendant sells its products to retailers such as
Amazon.com, which sells Defendant’s products in this judicial district and throughout the United
States
10. On information and belief, Defendant also advertises its products, offers its
products for sale, and sells its products at its website, www.magformers.com.
11. On information and belief, Defendant offers to sell its products in this judicial
district via its online store at the uniform resource locator (URL)
http://www.magformers.com/shop.html.
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12. On information and belief, Defendant sells its products in this judicial district via
its online store that is available via the internet.
13. On information and belief, Defendant sells its products to retailers in this judicial
district, such as the Learning Express store located at 4100 William Penn Highway, Monroeville,
PA 15146 and the Learning Express store located at 20418 Route 19, Cranberry Township, PA
16066.
14. On information and belief, Defendant also has offered to sell and sells its products
to national retailers such as Toys “R” Us.
Jurisdiction And Venue
15. This action arises under the patent laws of the United States. 35 U.S.C.
§ 1, et seq. This Court enjoys subject matter jurisdiction over this controversy pursuant to 28
U.S.C. §§ 1331 and 1338, and is empowered to grant declaratory relief pursuant to 28 U.S.C.
§ 2201.
16. This Court has personal jurisdiction over Defendant because Defendant has
established minimum contacts with the forum such that the exercise of personal jurisdiction over
Defendant will not offend the traditional notions of fair play and substantial justice.
17. Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400(b) at least
because Defendant resides in this judicial district, a substantial part of the events or omissions
giving rise to these events are located within this judicial district, and Defendant is subject to the
Court’s personal jurisdiction.
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Defendant’s Allegations Of Patent Infringement
18. At the Toy Fair tradeshow held in New York on February 10-13, 2013, Guidecraft
displayed and offered for sale its PowerClixTM
toys, which are toys that include spherical
magnets encased within different shaped structures. The PowerClixTM
toys provide a 3D
building system that lets children or other users build models while learning the basics of
science, construction, and engineering.
19. An employee or agent of Defendant came to Guidecraft’s booth at Toy Fair, saw
PowerClixTM
toys displayed and offered for sale and told Guidecraft’s representatives that the
sale of the PowerClix
TM
products infringed Defendant’s patent. Customers and potential
customers were present and heard this allegation.
20. On information and belief, Defendant’s representatives have told customers of
Guidecraft and prospective customers of Guidecraft, including customers who do business in this
judicial district that the sale of the PowerClixTM
products infringed Defendant’s patent.
21. On information and belief, the allegations made by Defendant have led some
customers and potential customers to not purchase the PowerClixTM products.
22. In a letter dated August 8, 2013, an attorney for Defendant sent a letter to
GuideCraft stating that “Magformers is the owner of the U.S. Patent No. 7,154,363” (“the ‘363
patent”) and that “Guidecraft’s sale of Power Clix infringes the Patent and breaches
Magformers’ rights under 35 U.S.C. § 271”. A copy of this letter is provided herewith as
Exhibit A. A copy of the ‘363 patent is provided herewith as Exhibit B.
23. In the letter of August 8, 2013, Defendant asserts that if Guidecraft does not stop
selling its PowerClixTM
products, Defendant “will pursue all available legal remedies; including,
but not limited to, seeking injunctive relief, disgorgement of profits, costs and attorneys’ fees.”
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24. The letter of August 8, 2013 was the first time that Defendant identified the ‘363
patent to Guidecraft.
25. The letter of August 8, 2013 does not cite a single claim that Defendant contends
cover the PowerClixTM
toys.
26. The letter of August 8, 2013 quotes language from the Abstract of the ‘363 patent
to assert that Guidecraft’s PowerClixTM
toys infringe the ‘363 patent.
27. The letter of August 8, 2013 explicitly states Guidecraft’s sale of PowerClixTM
products infringes the ‘363 patent” because they are a ‘plurality of magnetic connector bodies in
various different forms for magnetic connection of two or more bodies together along mutually-
confronting, longitudinally-elongated, linear peripheral border edges, each linear peripheral
border edge having at least one particularly-configured longitudinally elongated, cylindrical
magnet supported adjacent thereto for rotation of the magnet adjacent said peripheral edge of
each connector body for orientation of the magnetic polarity of magnets of confronting connector
bodies for mutual magnetic attraction along, mutually confronting, linear, peripheral border
edges of magnetic connector bodies.’ See the Patents abstract.”
U.S. Patent No. 7,154,363
28. The ‘363 patent is entitled “Magnetic Connector Apparatus”, lists Larry Dean
Hunt as the sole inventor, and issued on December 26, 2006.
29. On information and belief, no assignment has been recorded with the United
States Patent and Trademark Office for the rights to the ‘363 patent as of the filing date of this
Complaint.
30. In the Background Of The Invention section of the patent the ‘363 patent says that
U.S. Patent No. 5,347,253 to Ogikubo “provides a connector body arranged to contain a
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spherical magnet rotatably within its interior, for substantially universal rotation of the
spherical magnet body on any diametric axis through the magnet for orientation of the opposite,
north and south poles of the magnet as needed for proper magnetic attraction to a corresponding
magnet of a second body member.” (Exhibit B at Col. 1, lines 28-34).
31. The ‘363 patent, says, “Of critical importance to the present invention is the
particular, required configuration of the particular magnet body 16 contained in the
aforementioned magnet pocket 14 disposed adjacent each peripheral linear confronting border
edge of each connector body 10”. (Exhibit B at Col. 5, lines 35-39) (emphasis added).
32.
The ‘363 patent explicitly states that “the magnet 16 is specifically provided in
the form of a longitudinally elongated cylinder having a selected, longitudinal length
dimension that is greater than its selected uniform diameter dimension, the magnet body
arranged for rotatable containment within the particular, corresponding magnet pocket 14
provided in a linear leg 12 of the connector bodies.” (Exhibit B at Col. 5, lines 40-45) (emphasis
added).
33. Claim 1 of the ‘363 patent is the lone independent claim of this patent.
34. Claim 1 is for a magnetic connector apparatus and recites that the connector
apparatus comprises, among other limitations, “a longitudinally extending, cylindrical magnet
in each said at least one magnet pocket of each said body member, each said magnet arranged
with opposite magnetic poles occupying opposite diametric halves of the cylindrical magnet
throughout its entire longitudinal length, each magnet supported in a magnet pocket for
rotation therein about the longitudinally-extending axis of the diametric center line
through the longitudinal length of the magnet, said axis of rotation extending substantially
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parallel to said longitudinally extending, linear peripheral border edge of the connector
body” (emphasis added).
35. Claims 2-6 of the ‘363 patent depend from claim 1 and therefore include the
limitations of claim 1.
The PowerClixTM
Toys
36. Guidecraft makes and sells PowerClixTM
toys that permit a child to build a model.
37. The PowerClixTM toys made and sold by Guidecraft include parts that each
contains spherical magnets at each corner or end of the part.
38.
Each of the spherical magnets of the PowerClix
TM
toys rotate within the interior
of the part in which the magnet is located for substantially universal rotation of the spherical
magnet body on any diametric axis through the magnet for orientation of the opposite, north and
south poles of the magnet as needed for proper magnetic attraction to a corresponding magnet of
another part.
39. The spherical magnets provide a quick connect for fast, simple, and powerful 3D
modeling so that a child may build different structures (e.g. a model of a bridge, building, car, or
animal).
40. Below is an annotated image of different parts of the PowerClixTM toy system that
permits the building of different objects:
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41. Below is a first annotated image of one of the numerous different structures that
could be made by use of the PowerClix
TM
toys:
Spherical magnets
providing quick connection to other
parts
Spherical magnets
providing quick
connection to other
parts
Spherical magnetsproviding quick
connection between
adjacent parts
Spherical magnets
providing quick connection between
adjacent parts
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42. Below is a second annotated image of one of the numerous different structures
that could be made by use of the PowerClixTM toys:
43. Each of the spherical magnets within the different parts of the PowerClixTM
toys
does not have an elongated length that is greater than its diameter dimension.
44. Each of the spherical magnets within the different parts of the PowerClixTM
toys
does not have a longitudinally-extending axis of a diametric center line through a longitudinal
length of the magnet.
45. Each of the spherical magnets within the different parts of the PowerClixTM
toys
does not have an axis of rotation extending substantially parallel to a longitudinally extending,
linear peripheral border edge of a connector body.
46. None of the parts in the PowerClixTM
toys contain a cylindrical magnet.
47. None of the parts in the PowerClixTM toys contain a magnet that is elongated.
Spherical magnets
providing quick
connection between
adjacent parts
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48. None of the parts in the PowerClixTM
toys contain a magnet that is longitudinally
elongated.
49. None of the parts of the PowerClixTM
toys contain a magnet that has a
longitudinal length.
Defendant’s Review Of The PowerClixTM
Toys
50. On information and belief, Defendant asserted that Guidecraft infringed the ‘363
patent prior to reviewing the claims of the ‘363 patent to determine whether any of the claims of
the ‘363 patent were infringed.
51.
On information and belief, Defendant was unable to explain its basis for asserting
patent infringement by Guidecraft at the Toy Fair tradeshow in New York.
52. In the letter of August 8, 2013, Defendant did not identify a single claim that was
infringed by the PowerClixTM toys.
53. In the letter dated August 8, 2013, Defendant never explained how a spherical
magnet found in the PowerClixTM
toys could be a cylindrical magnet.
54. On information and belief, Defendant never had a patent attorney review the
PowerClixTM
toys to determine whether any claim of the ‘363 patent was infringed by the ‘363
patent.
55. On information and belief, Defendant never had a patent agent review the
PowerClixTM
toys to determine whether any claim of the ‘363 patent was infringed by the ‘363
patent.
COUNT I
DECLARATORY JUDGMENT OF NON-INFRINGEMENT
56. Paragraphs 1-55 are incorporated by reference herein as if fully recited herein.
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57. Guidecraft reasonably apprehends that Defendant will commence infringement
litigation against Guidecraft alleging that the manufacture, sale and/or use of Guidecraft’s
PowerClixTM
toys infringes the '363 patent.
58. Consequently, there is an actual case and controversy between Guidecraft and
Defendant concerning whether Guidecraft infringes any valid claim of the '363 patent.
59. Guidecraft has not infringed and does not infringe any valid claim of the ‘363
patent.
60. The manufacture, use and sale of Guidecraft’s PowerClixTM
toys do not infringe
any valid claim of U.S. Patent No. 7,154,363.
COUNT II
LANHAM ACT VIOLATION
61. Paragraphs 1-60 are incorporated by reference herein as if fully recited herein.
62. Defendant, through its public statements and actions asserting that sale of the
PowerClixTM infringes its patent has violated 15 U.S.C. § 1125 of the Lanham Act.
63. Due to Defendant’s actions and erroneous allegations made with respect to the
‘363 patent, customers and the marketplace for toys are confused and are likely to be confused as
to whether or not Guidecraft infringes the ‘363 patent.
64. There are numerous express limitations of claims 1-6 of the ‘363 patent that are
clearly not found within the PowerClixTM toys.
65. Defendant’s erroneous allegations of patent infringement that have been publicly
made to the toys marketplace misrepresent the nature, characteristics, and qualities of
Guidecraft’s PowerClixTM toys.
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66. On information and belief, Defendants actions are in bad faith and are objectively
baseless.
WHEREFORE, Guidecraft prays that this honorable Court grant Guidecraft the following
relief:
A. Declare that the manufacture, use and sale of Guidecraft’s PowerClixTM toys do
not infringe any valid claim of U.S. Patent No. 7,154,363.
B. If the facts demonstrate that this is an exceptional case pursuant to 35 U.S.C.
§ 285, order Defendants to reimburse Guidecraft for its attorneys' fees and cost reasonably
incurred in prosecuting this action; and
C. Enjoin Defendant, its offers, employees, sales representatives, and agents from
telling others that Guidecraft’s PowerClixTM
toys infringes U.S. Patent No. 7,154,363; and
D. Award Guidecraft such further relief as this Court deems just and reasonable
under the circumstances.
Jury Demand
Guidecraft hereby demands trial by jury of all issues properly so triable.
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Dated: August 23, 2013 Respectfully submitted,
GUIDECRAFT, INC.
/s/ Lynn J. Alstadt
Lynn J. AlstadtRalph G. Fisher
Buchanan Ingersoll & Rooney, PC
One Oxford Center301 Grant Street
Pittsburgh, PA 15219
(412) 562-1632 (tel.)
lynn.alstadt@bipc.comralph.fischer@bipc.com
Attorneys for Plaintiff
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