Durabilt Industries v. Small - Complaint

8/10/2019 Durabilt Industries v. Small - Complaint

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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


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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. 2201et 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



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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.



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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.



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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:



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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. 98,098MOBAR No. 49,333Post Office Box 6727

Chesterfield, Missouri 63006

Phone: 636-519-5257Email: [email protected]

Attorney for Plaintiff

DURABILT LLC



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S 44 (Rev. 12/12) CIVIL COVER SHEETThe 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

rovided 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 theurpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)

. (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 OFTHE TRACT OF LAND INVOLVED.

(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)

I. BASIS OF JURISDICTION(Place an X in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES(Place an X in One Box for(For Diversity Cases Only) and One Box for Defendant

1 U.S. Government 3 Federal Question PTF DEF PTF D

Plaintiff (U.S. Government Not a Party) Citizen of This State 1 1 Incorporated orPrincipal Place 4

of Business In This State

2 U.S. Government 4 Diversity Citizen of Another State 2 2 Incorporated andPrincipal Place 5

Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State

Citizen or Subject of a 3 3 Foreign Nation 6

Foreign Country

V. 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 Reapportionm

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 Liabi lity 830 Patent 470 Racketeer Influence

152 Recovery of Defaulted Liability 368 Asbestos Personal 840 Trademark Corrupt Organizatio

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/Commod

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 Acti

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 Matt

196 Franchise Injury 385 Property Damage 751 Family and Medical 895 Freedom of Informa

362 Personal Injury - Product Liability Leave Act ActMedical Malpractice 790 Other Labor Litigation 896 Arbitration

REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS 791 Employee Retirement FEDERAL TAX SUITS 899 Administrative Proc

210 Land Condemnation 440 Other Civil Rights Habeas Corpus: Income Security Act 870 Taxes (U.S. Plaintiff Act/Review or Appe

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 OriginalProceeding

2 Removed fromState Court

3 Remanded fromAppellate Court

4 Reinstated orReopened

5 Transferred fromAnother District(specify)

6 MultidistrictLitigation

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 INCOMPLAINT:

CHECK IF THIS IS A CLASS ACTIONUNDER 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

0/31/2014 /s/ Douglas E. Warren MOBAR 49333

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)

, )

)

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 #: 8Reset

DURABILT INDUSTRIES

LLC

BYRON SMALL and

THE KBH CORPORATION

10/31/2014 /S/ DOUGLAS E. WARREN


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))

)Plaintiff(s), )

) Case No.vs. )

))

Defendant(s). )

DISCLOSURE OF CORPORATION INTERESTSCERTIFICATE

Pursuant to Rule 2.09 of the Local Rules of the United States District Court for the EasternDistrict of Missouri and Rule 7.1 of the Federal Rules of Civil Procedure, Counsel of recordfor hereby gives notice the following corporate interests aredisclosed:

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 wasserve (by mail, by hand delivery or by electronic notice) on all partiesthis Day of , 20 .


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


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EXHIBIT A

United States Design Patent

Number D700,918



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EXHIBIT B

Letter From Small and KBH

Attorneys

Dated October 15, 2014



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EXHIBIT C

DURABILT

Round Module Cotton Spear

Model CS2012



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DURABILT Round Module Cotton Spear Model CS2012


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Durabilt Industries v. Small - Complaint