Archer Mobility v. Penco Medical - Complaint

8/12/2019 Archer Mobility v. Penco Medical - Complaint

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UNITED STATES DISTRICT COURTDISTRICT OF NEW HAMPSHIRE

Archer Mobility Products, LLC, ))Plaintiff, )

)v. ) Civil Action No. ________

)Penco Medical, Inc., ) DEMAND FOR JURY TRIAL

)Defendant. )

ARCHER MOBILITY PRODUCTS, LLC COMPLAINT FOR DECLARATORYJUDGMENT FOR NON-INFRINGEMENT

Plaintiff Archer Mobility Products, LLC (“Archer”), through counsel, hereby

brings its Complaint for Declaratory Judgment against Penco Medical, Inc. (“Penco”),

and alleges as follows:

NATURE OF ACTION

1. This is an action for a declaratory judgment of non-infringement of

United States Patent No. D442,123 (the “’123 Patent”) under 28 U.S.C. §220l

(Declaratory Judgment Act). Archer also seeks declaratory judgment that the '123 patent

is invalid.

PARTIES

2. Archer is a limited liability New Hampshire company with a principal

place of business at 20 Circle Drive, PO Box 611, Holderness NH 03245.

3. Upon information and belief, Penco is a corporation organized and

existing under the laws of the State of Pennsylvania, with a principal place of business at

One Ice Lake Drive, Mountaintop, PA 18707.

Case 1:14-cv-00257 Document 1 Filed 06/10/14 Page 1 of 6



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JURISDICTION AND VENUE

4. This is an action arising under the Patent Laws of the United States, 35

U.S.C. §§101 and 171 et seq. and the Federal Declaratory Judgment Act, 28 U.S.C. §§

2201 and 2202.

5. Upon information and belief, this court has personal jurisdiction over

Penco through Penco’s purposeful minimum contacts with New Hampshire, by Penco’s

transacting of business in this State, through Penco’s selling of its goods and services in

connection with the alleged patent which is the subject of the ‘123 Patent, and through

Penco’s contact with Archer.

6. Venue is proper pursuant to 28 U.S.C. §§ 139l(b)-(c) because the events

and communications between the parties that give rise to Archer’s claim for declaratory

relief occurred in New Hampshire, and because upon information and belief, Penco is

subject to the personal jurisdiction in this Court.

7. An actual case or controversy has arisen between the parties. Penco

demanded that Archer cease and desist from any use and/or sale of Archer’s Universal

Walker Ski Glides product, and has asked Archer for an accounting of damages in order

to determine the damages owned to Penco.

FACTS

DEFENDANT'S THREAT OF LITIGATION

8. On June 3, 2014 Penco sent a threating letter to Archer which alleged that

the sales, and offering for sale, of Archers' Universal Walker Ski Glides product

constitutes patent infringement and asserted that it would bring a lawsuit against Archer




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for said infringement if Archer does not immediately cease and desist their commercial

activities involving their Universal Walker Ski Glides product. Exhibit A.

9. As a result of Penco's threat of litigation and the circumstances

surrounding this threat, an actual, present, and justiciable controversy has arisen between

Archer and Penco regarding Archer's sale of its Top Glide product.

PLAINTIFF'S NON-INFRINGEMENT OF

DEFENDANT'S ALLEGED PATENT

10. The '123 patent is limited in scope to the design set forth in the figures in

the patent.

11. There are many differences between the visual appearance of Archer's

Universal Walker Ski Glides and the design covered by the '123 patent, including

differences in plug shape and ski shape, among others.

12. Archer’s Universal Walker Ski Glides contains a square plug. In contrast,

Penco's '123 patent has a figure showing the plug as circular in shape.

13. As a further example, the ‘123 patent figures show the front section of the

base of the glider to have straight lined edges. In contract, Archer’s Universal Walker Ski

Glides product’s front section is curved.

14. As a further example, the ‘123 patent figures show a tab in the plug of the

invention. In contract, Archer’s Universal Walker Ski Glides product’s does not contain

any tabs in the plug.

15. Archer's product does not infringe on the '123 patent because an ordinary

observer would not believe that the Archer product is the same or substantially similar to

the design required by the '123 patent.




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INVALIDITY OF DEFENDANT'S ALLEGED PATENT

16. The '123 patent is invalid and unenforceable for failure to comply with

one or more of the conditions for patentability set forth in the Patent Laws of the United

States Code, Title 35 at least in Sections 102, 103, 112, and 171.

17. The '123 patent should be declared invalid due to the functional nature of

Penco’s product.

18. Penco’s patent, including, but not limited to, the plug and the glider is

directed to a set of functional features used to support and utilize the walker.

19. Penco cannot legally own or assert design patent rights to a functional

design.

COUNT 1: Declaration of Non-Infringement of Defendant's Alleged Patent

20. Archer repeats and re-alleges each and every allegation set forth in the

preceding paragraphs of this Complaint.

21. Penco has asserted that Archer' sale of its Universal Walker Ski Glides

product infringes the '123 patent and has threatened to bring a lawsuit against Archer. An

actual, present, and justiciable controversy has arisen between Penco and Archer

concerning Archer’s use and sale of its Universal Walker Ski Glides.

22. Archer seeks declaratory judgment that its manufacture, use, offer for sale,

and/or sale of the Universal Walker Ski Glides product does not infringe on Penco's

alleged design patent, and does not otherwise violate any of Penco’s patent rights under

federal law including, but not limited to, 35 U.S.C. §§ 101 and 171, et seq.




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COUNT 2: Declaration of Invalidity and

Unenforceability of Defendant's Alleged Patent

23. Archer repeats and re-alleges each and every allegation set forth in the

preceding paragraphs of this Complaint.

24. The '123 patent for a walker glide with retractable keyed plug is functional

and should therefore be invalidated.

25. Archer seeks declaratory judgment that the '123 patent is invalid and/or

unenforceable, for at least these grounds, and for any and all other grounds of invalidity

and unenforceability available under federal law, the Patent Act, including, but not

limited to, 35 U.S.C. §§ 102, 103, 112, and 171.

26. Archer reserves the right to amend its allegations and/or this Complaint to

add any further defenses once further discovery has been conducted in this matter.

PRAYER FOR RELIEF

WHEREFORE, pursuant to the Patent Act, 35 U.S.C. §§ 101 and 171, et seq., and

the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, Archer prays for

relief as follows:

A. Declare that Archer and their customers and suppliers have the right to

make, use, sell, offer for sale the Universal Walker Ski Glides product and that this

product does not infringe Penco's design patent rights, if any rights are established;

B. Declare that Penco's '123 patent entitled "Walker Glide with Retractable

Keyed Plug" is invalid and unenforceable;

C. Award Archer its costs and Attorney's fees under 15 U.S.C. §1117 and 35

U.S.C. § 285, and any other applicable laws; and,

D. Awarding such other relief as this Court may deem just and proper.




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JURY TRIAL DEMAND

Archer demands a trial by jury on all issues triable by right of jury.

Date: June 10, 2014 Respectfully submitted by,

Attorneys for PlaintiffArcher Mobility Products, LLC

/s/ Gary E. LambertGary E. Lambert (NH Bar # 16245)

LAMBERT & ASSOCIATES92 State Street

Boston, MA 02109Telephone: (617) 720-0091

Facsimile: (617) [email protected]




82286087

Salans FMC SNR Denton

dentons.com

[email protected]

D +1 816 460 2605

Dentons US LLP

4520 Main Street

Suite 1100

Kansas City, MO 64111-7700 USA

T +1 816 460 2400

F +1 816 531 7545

Brian R. McGinley

Partner

June 3, 2014

By FedEx & E-Mail

URGENT

Robert Epp

Manager

Archer Mobility Products, LLC

PO Box 611

Holderness, NH 03245

Robert Epp

Manager


20 Circle Dr.

Holderness, NH 03245

[email protected]

Re: Notice of Infringement of U.S. Pat. No. D442123

Our Ref. No. 70000814-0004

Dear :

This lawfirm represents Penco Medical, Inc. (Penco). Penco owns U.S. Pat. No. D442,123 titled Walker

Glide with Retractable Keyed Plug (the '123 Patent) (copy attached as Exhibit A). The '123 Patent

discloses and claims an ornamental design for a walker glide with retractable key plug.

It has come to our attention that Archer Mobility Products, LLC d/b/a "Top Glides" (Top Glides) appears to

be using, selling, importing and/or offering to sell walker glides within the United States under the mark

TOP GLIDES that infringe the '123 Patent. For example, we have provided printouts from Top Glides'

website at www.topglides.net showing an exemplary "top selling" walker glide design which appears

substantially identical to and within the scope of our client’s '123 Patent (see Exhibit B).

Top Glides' aforementioned unauthorized activities violates our client’s patent rights, which subjects Top

Glides to claims for monetary damages and injunctive relief and other liabilities including attorney fees

and treble damages for willful infringement, particularly in light of the fact that Penco has provided

constructive notice of its rights at least through marking its own walker glides in accordance with 35

U.S.C. § 287.

In addition, we consider it likely that in offering for sale the walker glide designs shown in Exhibit B, youare passing off your glides as Penco products and therefore are in breach of the Lanham Act and similar

state laws governing unfair competition. Resulting confusion amongst consumers is even more likely

given that Top Glides apparently has until recently sold authorized Penco walker glides under the PENCO

mark through the website at www.topglides.net. (See Exhibit C)

On Penco’s behalf, we demand that you immediately cease and desist from any and all direct and indirect

use, sale, or offers to sell within the U.S., or importation into the U.S. of infringing products, or other

commercial activities which violate Penco’s legal rights. Without limitation we demand that you

immediately cease and desist from selling or offering for sale those walker glide products illustrated in

Exhibit B and otherwise within the scope of the '123 Patent..

Case 1:14-cv-00257 Document 1-1 Filed 06/10/14 Page 1 of 2



82286087

June 3, 2014

Page 2

Salans FMC SNR Denton

dentons.com

Without limitation, we further demand that you provide an accounting of damages to Penco and

immediately disclose in writing the identities and locations of all third parties to which you have ever sold

or distributed infringing product, and that you identify the numbers of infringing product you have ever

sold or distributed. We require this information so that we can determine the amount of monetary

damages to which it is entitled.

We must receive your written assurances of compliance with these demands no later than 5:00 p.m. CDT

June 12, 2014. If we do not hear from you within this timeframe, Penco is prepared to take appropriate

actions to further investigate this matter and protect its legal rights.

This letter shall not constitute a waiver of, or otherwise prejudice, any of Penco’s legal rights, which are

expressly reserved.

Sincerely,

Dentons US LLP

By:

Brian R. McGinley

cc: Penco Medical, Inc.




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 or Principal Place ’ 4

of Business In This State

’ 2 U.S. Government ’ 4 Diversity Citizen of Another State ’ 2 ’ 2 Incorporated and Principal 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 Veteran’s 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 Act Medical 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 IRS—Third 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 or Reopened

’ 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


Grafton, NH

Gary E. LambertLambert & Associates92 State Street, Suite 200 Boston, MA 02109

Penco Medical, Inc.

Luzerne, PA

28 U.S.C. 2201 (Declaratory Judgment Act)

Declaratory judgment of non-infringement of patent rights

6/10/2014 /Gary E. Lambert/




JS 44 Reverse (Rev. 12/12)

INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44

Authority For Civil Cover Sheet

The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as

required by law, except as provided 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 the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk o

Court for each civil complaint filed. The attorney filing a case should complete the form as follows:

I.(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, us

only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency andthen the official, giving both name and title.

(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at

time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In lan

condemnation cases, the county of residence of the "defendant" is the location of the tract of land involved.)

(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, no

in this section "(see attachment)".

II. Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an

in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.

United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here

United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.

Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendm

to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code tak

precedence, and box 1 or 2 should be marked.

Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the

citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversitycases.)

III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark

section for each principal party.

IV. Nature of Suit. Place an "X" in the appropriate box. If the nature of suit cannot be determined, be sure the cause of action, in Section VI below

sufficient to enable the deputy clerk or the statistical clerk(s) in the Administrative Office to determine the nature of suit. If the cause fits more th

one nature of suit, select the most definitive.

V. Origin. Place an "X" in one of the six boxes.

Original Proceedings. (1) Cases which originate in the United States district courts.

Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441.

When the petition for removal is granted, check this box.Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the fili

date.

Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.

Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers o

multidistrict litigation transfers.

Multidistrict Litigation. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C. Section 140

When this box is checked, do not check (5) above.

VI. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictionstatutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service

VII. Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P.

Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.

Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.

VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket

numbers and the corresponding judge names for such cases.

Date and Attorney Signature. Date and sign the civil cover sheet.




AO 440 (Rev. 06/12) Summons in a Civil Action

U NITED STATES DISTRICT COURTfor the

__________ District of __________

)

)))))))))))

Plaintiff(s)

v. Civil Action No.

Defendant(s)

SUMMONS IN A CIVIL ACTION

To: (Defendant’s name and address)

A lawsuit has been filed against you.

Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you

are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,whose name and address are:

If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.You also must file your answer or motion with the court.

CLERK OF COURT

Date:Signature of Clerk or Deputy Clerk

District of New Hampshire


Penco Medical, Inc.

Penco Medical, Inc.One Ice Lake DriveMountaintop, PA 18707

Gary E. LambertLambert & Associates92 State StreetSuite 200Boston, MA 02109




AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)

Civil Action No.

PROOF OF SERVICE

(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))

This summons for (name of individual and title, if any)

was received by me on (date) .

’ I personally served the summons on the individual at (place)

on (date) ; or

’ I left the summons at the individual’s residence or usual place of abode with (name)

, a person of suitable age and discretion who resides there,

on (date) , and mailed a copy to the individual’s last known address; or

’ I served the summons on (name of individual) , who is

designated by law to accept service of process on behalf of (name of organization)

on (date) ; or

’ I returned the summons unexecuted because ; or

’ Other (specify):

.

My fees are $ for travel and $ for services, for a total of $ .

I declare under penalty of perjury that this information is true.

Date:Server’s signature

Printed name and title

Server’s address

Additional information regarding attempted service, etc:

0.00


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Archer Mobility v. Penco Medical - Complaint

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