Hanchett Entry Systems v. Rutherford Controls International et. al

8/2/2019 Hanchett Entry Systems v. Rutherford Controls International et. al.

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Ronald J. Kisicki, Esq.

Woods Oviatt Gilman LLP

7047 East Greenway Parkway

Suite 250

Scottsdale, Arizona 85254

State Bar No. 022533Fax: 585-362-4614

E-mail: [email protected].: 480-659-2213 or 585-362-4514

Attorneys for Plaintiff Hanchett Entry Systems, Inc.

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF ARIZONA

Hanchett Entry Systems, Inc., an Arizona ) No.:

corporation, )

Plaintiff; )

)

vs. ) COMPLAINT AND

) JURY DEMAND

Rutherford Controls Int'l Corp., )

a Canadian corporation; and )

)Rutherford Controls Int'l Corp., )

a Virginia corporation, )

)

Defendants. )

_________________________________)

Plaintiff, Hanchett Entry Systems, Inc. (HES or plaintiff), for its complaint

against the defendants, Rutherford Controls Int'l Corp. (Canada) (RCI (CA)) and

Rutherford Controls Int'l Corp. (Virginia) (RCI (VA)) (collectively referred to as the

defendants), alleges as follows:


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PRELIMINARY STATEMENT

1. This is an action brought by HES against the defendants for infringement ofUnited States Patent No. 8,146,966 (the 966 Patent), in violation of the United States Patent

Laws 35 U.S.C. 1 et seq.; and for copyright infringement of U.S. Copyright Registration No.

VA0001785746 (the 746 Registration) and U.S. Copyright Registration No. TX0007421582

(the 582 Registration), in violation of United States Copyright Laws 17 U.S.C. 1 et seq.,

both of which registrations having been filed in the United States Copyright Office.

THE PARTIES

2.

HES is, and at all times hereinafter mentioned was, a corporation organized and

existing under the laws of the State of Arizona, with its principal place of business located in

Phoenix, Arizona.

3. Upon information and belief, RCI (CA) is, and at all times hereinafter mentionedwas, a company organized and existing under the laws of the province of Ontario, Canada,

located at 210 Shearson Crescent, Cambridge, Ontario, Canada N1T 1J6.

4. Upon information and belief, RCI (CA) conducts business within the UnitedStates of America and the State of Arizona.

5. Upon information and belief, defendant RCI (VA) is, and at all times hereinaftermentioned was, a company organized and existing under the laws of the State of Virginia located

at 2697 International Parkway, Building 5, Suite 100, Virginia Beach, VA 23452.

6. Upon information and belief, RCI (VA) conducts business within the UnitedStates of America and the State of Arizona.

JURISDICTION AND VENUE

7. This Court has exclusive jurisdiction over the subject matter of the complaint


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pursuant to 28 U.S.C. 1331, 1332 and 1338(a).

8. Personal jurisdiction over the defendants is consistent with the United StatesConstitution and 4.2(a) of the Arizona Rules of Civil Procedure because, upon information and

belief, the defendants have minimum contacts within the State of Arizona; the defendants have

purposefully availed themselves of its privileges of transacting business within the State by

selling and offering for sale products to its distributors and/or customers situated within the

State; and have committed and continue to commit acts of direct and/or indirect patent and

copyright infringement in this District as alleged in this complaint.

9.

Venue is proper pursuant to 28 U.S.C. 1391 and 1400(b).

10. Upon information and belief, each of the defendants has sufficient contacts withthe United States District Court for the District of Arizona to support the exercise of personal

jurisdiction and the preservation of venue within this District.

PATENT-IN-SUIT: U.S. PATENT NO. 8,146,966

11. The United States Patent and Trademark Office duly and legally issued U.S.Patent No. 8,146,966 on April 3, 2012 (a copy of the 966 Patent is attached hereto as Exhibit

1).

12. HES owns by assignment the entire right, title, and interest in and to the 966Patent, including the right to bring this suit for injunctive relief and damages.

13. The 966 Patent is valid and enforceable.COPYRIGHTS-IN-SUIT: U.S. REGISTRATION NO. VA0001785746

AND U.S. REGISTRATION NO. TX0007421582

14. Plaintiff owns valid copyrights in text and/or images that it provides to itscustomers along with one or more of its electric strike products, including as set forth in U.S.

Registration No. VA0001785746 and U.S. Registration No. TX0007421582.


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15. The United States Copyright Office duly and legally issued U.S. Registration No.VA0001785746 on July 6, 2011 (a copy of the 746 Registration is attached hereto as Exhibit

2).

16. The date of first publication of the work covered under the 746 registration is onor about October 1, 2007.

17. Beginning on or about October 1, 2007, HES affixed the following notice: 2007 HES, Inc. on the work that is registered under the 746 Registration.

18. The United States Copyright Office duly and legally issued U.S. Registration No.TX0007421582 on July 6, 2011 (a copy of the 582 Registration is attached hereto as Exhibit

3).

19. The date of first publication of the work covered under the 582 Registration is onor about October 1, 2007.

20. Beginning at on or about October 1, 2007, HES affixed the following notice: 2007 HES, Inc. on the work that is registered under the 582 Registration.

21. HES owns the entire right, title, and interest in and to the 746 Registration andthe 582 Registration, including the right to bring this suit for injunctive relief and damages.

22. The 746 Registration and the 582 Registration are valid and enforceable.AS AND FOR A FIRST CAUSE OF ACTION,

PLAINTIFF ALLEGES AS FOLLOWS:

Patent Infringement U.S. Patent No. 8,146,966

23. HES repeats and re-alleges the allegations of paragraphs 1 through 22 as ifmore fully set forth herein.

24. Upon information and belief, one or both defendants have in the past and continueto make, use, sell, offer for sale, and/or import into the United States products that both directly


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and indirectly infringe the 966 Patent in violation of 35 U.S.C. 271(a), (b), and/or (c).

25. Specifically, in violation of 35 U.S.C. 271(a), one or both defendants haveinfringed and are infringing the 966 Patent, either literally or under the doctrine of equivalents,

by making, using, selling, offering for sale and/or importing into the United States, without

authority, electric strike products having a vertical adjustability feature (hereinafter Infringing

Products), including but not limited to, the 5 Series Easy Mount Electric Strike product,

covered by one or more claims of the 966 Patent.

26. Upon information and belief, one or both defendants have knowingly induced,and continue to knowingly induce, others to infringe the 966 Patent in violation of 35 U.S.C.

271(b), in this District and elsewhere in the United States, by taking active steps with specific

intent to encourage and facilitate direct infringement by others, such as by distributors and others

in the chain of distribution selling or offering to sell Infringing Products and/or by their

customers using the Infringing Products, with knowledge of the distributors' and customers'

infringement.

27. For example, the defendants have entered into commercial arrangements withdistributors to offer for sale and sell Infringing Products to defendants' customers.

28. Defendants have encouraged and facilitated direct infringement by distributors,their customers, and others in the chain of distribution, by contracting for the distribution of the

Infringing Products, by marketing, promoting, and advertising the Infringing Products on the

defendants' website, and by creating and publishing installation instructions on installing and

using the Infringing Products.

29. Upon information and belief, the defendants with knowledge of the '966 Patenthave contributorily infringed, and continue to contributorily infringe, the '966 patent in violation


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of 35 U.S.C. 271(c) by selling and/or offering to sell, in this District and elsewhere in the

United States, Infringing Products, and facilitating the sale or offer for sale of Infringing

Products by its distributors and others in the chain of distribution, and, in turn, use of Infringing

Products by defendants' customers.

30. This sale and offer for sale of Infringing Products by defendants' distributors andothers in the chain of distribution, and, in turn, use by defendants' customers, embodies a

material part of the Infringing Products described in the '966 patent.

31. The Infringing Products are specially made or specially adapted for use ininfringement of the '966 patent, and are not staple articles suitable for a commercially significant

non-infringing use.

32. The sale and offer for sale of the Infringing Products by defendants' distributors,and the use of Infringing Products by defendants' customers constitutes direct infringement of the

'966 Patent.

33. Defendants knowingly continue to make, use, sell, and offer to sell products thatinfringe the '966 Patent.

34. Pursuant to 35 U.S.C. 287(a), defendants received notice of the 966 patent atleast as early as the filing date of the present action for infringement.

35. HES has been and continues to be damaged by defendants infringement of the966 Patent in an amount to be determined at trial.

36. HES has suffered irreparable injury for which there is no adequate remedy at lawand will continue to suffer such irreparable injury unless defendants infringement of the 966

Patent is enjoined by this Court.

37. Upon information and belief, defendants infringement is willful because


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defendants have, and continue to, knowingly infringe the 966 Patent.

38. Defendants infringement of the 966 Patent is exceptional and entitles HES toattorneys fees and costs incurred in prosecuting this action under 35 U.S.C. 285.

AS AND FOR A SECOND CAUSE OF ACTION,


Copyright Infringement U.S. Copyright Registration No. VA0001785746

39. HES repeats and re-alleges paragraphs 1 through 38 as if more fully set forthherein.

40. Upon information and belief, one or both defendants have in the past and continueto reproduce, distribute to the public by sale or other transfer of ownership, and/or publicly

display unauthorized copies of text and/or images that both directly and indirectly infringe the

copyrights as set forth in the 746 Registration in violation of 17 U.S.C. 106 and 501 et seq.

41. Specifically, one or both defendants have infringed and are infringing thecopyrights set forth in the 746 Registration by reproducing, distributing to the public by sale or

other transfer of ownership, and/or publicly displaying, without permission, text and/or images

pertaining to electric door strikes set forth in the 746 Registration into installation instructions

for electric strike products having vertical adjustability, including but not limited to, the 5 Series

Easy Mount Electric Strike product.

42. One or both defendants have knowingly contributed to, and will continue toknowingly contribute to, the infringement of the copyrights set forth in the 746 Registration by

others in this District and elsewhere in the United States, by providing its distributors with the

installation instructions that include the plaintiff's copyrighted works, with the direct

infringement being accomplished by distributors of defendants distributing copies of the

installation instructions to the public by sale or other transfer of ownership.


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43. One or both defendants have knowingly induced, and will continue to knowinglyinduce, the infringement of the copyrights set forth in the 746 Registration by others in this

District and elsewhere in the United States, by taking active steps with specific intent to

encourage and facilitate direct infringement by others, such as by distributors and others in the

chain of commerce by distributing copies of the installation instructions to the public by sale or

other transfer of ownership, with knowledge of the distributors infringement.

44. Defendants had notice of HESs copyrights in the work registered under the 746Registration at least as early as October 1, 2007.

45.

HES has been and continues to be damaged by defendants infringement of the

copyrights set forth in the 746 Registration in an amount to be determined at trial.

46. HES has suffered irreparable injury for which there is no adequate remedy at lawand will continue to suffer such irreparable injury unless defendants infringement of the

copyrights set forth in the 746 Registration is enjoined by this Court.

47. Upon information and belief, defendants infringement is willful becausedefendants have, and continue to, knowingly infringe the copyrights set forth in the 746

Registration.

48. Defendants infringement of the copyrights set forth in the 746 Registrationentitles HES to attorneys fees and costs incurred in prosecuting this action under 17 U.S.C.

505.

AS AND FOR A THIRD CAUSE OF ACTION,


Copyright Infringement U.S. Copyright Registration No. TX0007421582



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50. Upon information and belief, one or both defendants have in the past and continueto reproduce, distribute to the public by sale or other transfer of ownership, and/or publicly

display unauthorized copies of text and/or images that both directly and indirectly infringe the

copyrights set forth in 582 Registration in violation of 17 U.S.C. 106 and 501 et seq.

51. Specifically, one or both defendants have infringed and are infringing thecopyrights set forth in the 582 Registration by reproducing, distributing to the public by sale or

other transfer of ownership, and/or publicly displaying, without permission, text and/or images

pertaining to electric door strikes set forth in the 582 Registration into installation instructions

for electric strike products having vertical adjustability, including but not limited to, the 5 Series

Easy Mount Electric Strike product.

52. One or both defendants have knowingly contributed to, and will continue toknowingly contribute to, the infringement of the copyrights set forth in the 582 Registration by

others in this District and elsewhere in the United States, by providing its distributors with the

installation instructions that include the plaintiff's copyrighted works, with the direct

infringement being accomplished by distributors of defendants distributing copies of the

installation instructions to the public by sale or other transfer of ownership.

53. One or both defendants have knowingly induced, and will continue to knowinglyinduce, the infringement of the copyrights set forth in the 582 Registration by others in this

District and elsewhere in the United States, by taking active steps with specific intent to

encourage and facilitate direct infringement by others, such as by distributors and others in the

chain of commerce by distributing copies of the installation instructions to the public by sale or

other transfer of ownership, with knowledge of the distributors infringement.

54. Defendants have notice of HESs copyrights in the work registered under the 582


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Registration at least as early as October 1, 2007.

55. HES has been and continues to be damaged by defendants infringement of thecopyrights set forth in the 582 Registration in an amount to be determined at trial.

56. HES has suffered irreparable injury for which there is no adequate remedy at lawand will continue to suffer such irreparable injury unless defendants infringement of the

copyrights set forth in the 582 Registration is enjoined by this Court.

57. Upon information and belief, defendants infringement is willful becausedefendants have, and continue to, knowingly infringe the copyrights set forth in the 582

Registration.

58. Defendants infringement of the copyrights set forth in the 582 Registrationentitles HES to attorneys fees and costs incurred in prosecuting this action under 17 U.S.C.

505.

AS AND FOR A FOURTH CAUSE OF ACTION,


Injunction (35 U.S.C. 283)


60. As provided above, the defendants have made, used, sold, offered to sell and/orimported electric strike products having a vertical adjustability feature which infringe the 966

patent and continue to do so in violation of HES's rights, for which there is no adequate remedy

at law.

61. Unless the defendants are permanently enjoined from making, using, selling,offering to sell and/or importing such Infringing Products, HES will suffer irreparable harm.

62. As a result of the foregoing, HES is entitled to a permanent injunction, in


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accordance with 35 U.S.C. 283, enjoining and restraining the defendants from making, using,

selling, offering to sell and/or importing any electric strikes which infringe upon one or more

claims of the 966 patent.

AS AND FOR A FIFTH CAUSE OF ACTION,


Injunction (17 U.S.C. 502)


64. As provided above, the defendants have reproduced, distributed to the public bysale or other transfer of ownership, and/or publicly displayed unauthorized copies of text and/or

images set forth in U.S. Copyright Registration Nos. VA0001785746 and TX0007421582 that

both directly and indirectly infringe HES's copyrights and continue to do so in violation of HES's

rights, for which there is no adequate remedy at law.

65. Unless the defendants are permanently enjoined from reproducing, distributing tothe public by sale or other transfer of ownership, and/or publicly displaying such text and/or

images, HES will suffer irreparable harm.

66. As a result of the foregoing, HES is entitled to a permanent injunction, inaccordance with 17 U.S.C. 502, enjoining and restraining the defendants from reproducing,

distributing to the public by sale or other transfer of ownership, and/or publicly displaying any

text and/or images which infringe upon HES's copyrights.

AS AND FOR A SIXTH CAUSE OF ACTION,


Declaratory Judgment

67. HES repeats and re-alleges paragraphs 1 through 66 as if more fully set forth


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herein.

68. HES is entitled to a judgment, declaring that the defendants have infringed, andcontinue to infringe one or more claims of the 966 patent and further declaring their respective

rights and responsibilities of the parties.

69. HES is entitled to a judgment, declaring that the defendants have infringed, andcontinue to infringe HES's copyrights set forth in U.S. Copyright Registration Nos.

VA0001785746 and TX0007421582 and further declaring their respective rights and

responsibilities of the parties.

WHEREFORE, the plaintiff, Hanchett Entry Systems, Inc., requests judgment as

follows:

A. Declaring that the one or more claims of United States Patent No.8,146,966 have been infringed by one or more of the defendants and/or by

third parties to whose infringement the defendants have contributed and/or

by third parties whose infringement has been induced by the defendants;

B. Declaring that the copyrights reflected in one or more of United StatesCopyright Registration No. VA0001785746 and/or United States

Copyright Registration No. TX0007421582 have been infringed by one or

more of the defendants and/or by third parties to whose infringement the

defendants have contributed and/or by third parties whose infringement

has been induced by the defendants;

C. Granting a permanent injunction, restraining and enjoining defendants,their officers, directors, agents, servants, employees, and all others in

privity, concert or participation with them or on their behalf, from further


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acts of patent infringement, including the manufacture, use, sale, offering

for sale and/or importing infringing electric strike products;

D. Granting a permanent injunction, restraining and enjoining defendants,their officers, directors, agents, servants, employees, and all others in

privity, concert or participation with them or on their behalf, from further

acts of copyright infringement, including the use, reproduction,

distribution, publication, preparation of derivative works, or maintaining

of infringing installation instructions;

E.

Granting an accounting for damages adequate to compensate plaintiff for

infringement of the 966 Patent, such damages to be trebled to the extent

allowed by law due to the willful and deliberate character of the

infringement;

F. Granting an accounting for damages adequate to compensate plaintiff forinfringement of the 746 Registration and/or the 582 Registration;

G. Awarding to plaintiff all of defendants profits and further awarding toplaintiff its damages as a result of defendants copyright infringement in

an amount to be determined by an accounting if necessary;

H. Awarding to plaintiff all compensatory damages suffered as a result of thedefendants actions;

I. Awarding to the plaintiff its attorneys fees and costs; andJ. Awarding the plaintiff such other and further relief as to this Court may

seem just and proper.


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DEMAND FOR JURY TRIAL

Plaintiff, Hanchett Entry Systems, Inc., hereby requests a trial by jury on all issues so

triable.

DATED: May 1, 2012 WOODS OVIATT GILMAN LLP

Scottsdale, Arizona/S/ Ronald J. Kisicki

Ronald J. Kisicki, Esq.

Woods Oviatt Gilman LLP

7047 East Greenway Parkway

Suite 250

Scottsdale, Arizona 85254

Fax: 585-362-4614E-mail: [email protected].: 480-659-2213 or 585-362-4514


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EXHIBIT "3"


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Documents

Hanchett Entry Systems v. Rutherford Controls International et. al