dustless depot et. al. v. secco international et. al

7/30/2019 Dustless Depot et. al. v. Secco International et. al.

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Perry S. Clegg (USB 7831)

CLEGG, P.C.299 S. Main Street, Suite 1300

Salt Lake City, Utah 84111Tel: (801) 532-3040/Fax: (801) [email protected]; [email protected]

Attorneys for Plaintiffs,

Dustless Depot, LLC and Love-Less Ash Company, Inc. d.b.a. Dustless Technologies

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF UTAH, CENTRAL DIVISION

DUSTLESS DEPOT, LLC, a Utah limited

liability company; and LOVE-LESS ASH

COMPANY, INC. d.b.a. DUSTLESSTECHNOLOGIES, a Utah corporation,

Plaintiffs,

vs.

SECCO INTERNATIONAL, INC., a

California corporation; SPECIALTYDIAMOND, a subsidiary of SECCO

INTERNATIONAL, INC.; and DOES 1through 5,

Defendants.

COMPLAINT

And

JURY DEMAND

Case No.: ______________

Judge: _________________

COMPLAINT

Plaintiffs Dustless Depot, LLC and Love-Less Ash Company, Inc. d.b.a. Dustless

Technologies (collectively Dustless or Plaintiffs) hereby complain against Defendants Secco


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International, Inc. (Secco), Specialty Diamond (Specialty Diamond); and DOES 1-5 (each a

Defendant and collectively the Defendants), and allege as follows:

PARTIES

1. Plaintiff, Dustless Depot, LLC (Dustless Depot) is a limited liability companyorganized and existing under the laws of the State of Utah and has offices in Price, Utah.

2. Plaintiff, Love-Less Ash Company, Inc. d.b.a. Dustless Technologies (DustlessTechnologies) is a corporation organized and existing under the laws of the State of Utah and

has offices in Price, Utah.

3. Defendant, Secco International, Inc. (Secco) is a corporation organized andexisting under the laws of the State of California and has a business address in Santa Barbara,

California. On information and belief, Secco has made sales of products, including the

infringing products at issue in this case, to consumers in the State of Utah. Furthermore, on

information and belief, Secco is the moving, active, conscious force behind the infringing

conduct set forth herein, and at all relevant times has controlled, directed, approved and

authorized the infringing activities, including the conduct and actions of Specialty Diamond.

4. On information and belief, Defendant, Specialty Diamond (Specialty Diamond)is a subsidiary of Defendant Secco and has a business address in Santa Barbara, California. See,

e.g., screenshot of Specialty Diamonds website attached hereto as Exhibit A. Specialty

Diamond has made sales of products, including the infringing products at issue in this case, to

consumers in the State of Utah.


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5. On information and belief, DOES 1-5 are business entities and individuals whohave participated in the acts alleged herein and have infringed Dustless Depots patent by

making, importing, using, selling, and/or offering for sale Infringing Product in the United

States.

6. Plaintiffs Dustless Depot and Dustless Technologies are sometimes hereinafterreferred to collectively as Dustless or Plaintiffs. Defendants Secco, Specialty Diamond, and

DOES 1-5 are sometimes hereinafter referred to collectively as Defendants.

JURISDICTION AND VENUE

7. This action arises under the patent laws of the United States, 35 U.S.C. 1 et seq.This Court has jurisdiction over the patent claims under 28 U.S.C. 1331 and 1338(a).

8. Venue is proper in this district by virtue of 28 U.S.C. 1391 and 1400 because,on information and belief, Defendants are subject to personal jurisdiction in this District and

because Defendants acts of infringement took place and/or are taking place within this

jurisdiction by selling or offering for sale infringing product in this judicial district. On

information and belief, a substantial part of the events or omissions giving rise to the claims

herein occurred in this judicial district, or a substantial part of property that is the subject of the

action is situated in this judicial district.


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GENERAL ALLEGATIONS

9. Plaintiff, Dustless Depot, is the owner of United States Patent No. 8,137,165entitled Dust Shroud with Adjustable Mounting Mechanism (the 165 Patent), which issued

March 20, 2012. A copy of the 165 Patent is attached hereto as Exhibit B and is expressly

incorporated herein.

10. Dustless Depot has been the owner of the 165 Patent since it issued andcontinues to own the 165 Patent. As the owner of the 165 Patent, Dustless Depot has the

exclusive right to make, use, sell, offer for sale, import, or otherwise benefit from the rights

granted by the 165 Patent in the United States or the license said patent rights.

11. Dustless Technologies is the exclusive licensee of Dustless Depots rights underthe 165 Patent.

12. The scope of the claims of the 165 Patent encompass dust shrouds withadjustable mounting mechanisms.

13. The 165 Patent is valid and enforceable.14. Dustless Technologies currently manufactures and sells dust shrouds with

adjustable mounting mechanisms within the United States. A photograph of a dust shroud which

Dustless Technologies sells is attached hereto as Exhibit C.

15. Defendants sell and offer for sale dust shrouds under the brand name Hardinwhich infringe at least claim 1 of the 165 Patent (the Infringing Product). A photograph of

the Infringing Product is attached hereto as Exhibit D.


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16. As can be seen from Exhibit D, the Infringing Product is substantially a copy ofDustless Technologies dust shroud product.

17. Defendants sell and offer for sale and/or have sold or offered for sale theInfringing Product and associated parts in combination therewith in their stores through their

interactive websites and/or through various e-commerce websites, such as on Amazon.com and

eBay.

18. On information and belief, Defendants have sold and/or offered for sale at leastone unit of the Infringing Product in Utah.

19. On information and belief, Defendants also manufacture, have had manufacturedon their behalf, and/or import the Infringing Product in violation of the 165 Patent.

20. On information and belief, customers of Defendants also infringe the 165 Patentwhen the customers use the Infringing Product assembled with the combination of associated

parts provided by Defendants in the Infringing Product packaging.

21. On information and belief, Defendants induce infringement by providingcustomers all of the parts for a dust shroud with an adjustable mounting mechanism and by

providing instructions on the internet for the subsequent use of the combination thereof, which

during use by the customer infringes the 165 Patent, and which conduct, along with other

conduct alleged herein, was done with such knowledge regarding Plaintiffs rights in the 165

Patent that the inducement was intentional and/or with willful blindness.

22. On information and belief, Defendants commit contributory infringement byproviding customers with a combination of dust shroud parts that, as provided by Defendants to


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customers, have no general use other than infringement of the 165 Patent when assembled and

used by the customers.

23. The sale and offer for sale of Infringing Product will irreparably harm Plaintiffs ifnot enjoined because, among other reasons:

a. The Infringing Product directly competes with Dustless dust shrouds andits sale for a substantially lower price will cause price erosion for Dustless

patented dust shroud, which will irreparably injure Dustless.

b.

Consumers are likely to confuse the Infringing Product with Dustless

patented dust shroud and, on information and belief, because the

Infringing Product is of lesser quality, any negative reactions by

consumers to the Infringing Product are likely to be incorrectly associated

with Dustless, which will irreparably injure Dustless good will associated

with its business and associated with its patented dust shroud technology.

FIRST CLAIM FOR RELIEF

DIRECT INFRINGEMENT OF PATENT 35 U.S.C. 271(a)

24. Plaintiffs incorporate herein each and every allegation of paragraphs 1 through 23of this Complaint as if fully set forth herein and further allege as follows:

25. The 165 Patent has at all times subsequent to its issue date been valid and fullyenforceable.


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26. Dustless is the owner of record and/or the exclusive licensee of the 165 Patentand holds all rights under the 165 Patent, including the right to sue for infringement.

27. Defendants make, use, sale, offer for sale, and/or import the Infringing Productwithin the United States.

28. The Infringing Product literally infringes at least claim 1 of the 165 Patent.29. The Infringing Product infringes at least claim 1 of the 165 Patent at least under

the Doctrine of Equivalents.

30.

Dustless has not authorized or licensed the Defendants to make, use, sell, offer to

sale, and/or import the Infringing Product, and thus all such actions have been in violation of

Dustless rights, thereby infringing the 165 Patent.

31. Dustless is entitled to damages in an amount to be determined at trial adequate tocompensate for the Defendants infringement, but in no event less than a reasonable royalty for

all Infringing Product made, used, sold, offered for sale, and/or imported by Defendants.

32. Harm to Plaintiffs arising from Defendants acts of infringement is not fullycompensable by money damages. Rather, Plaintiffs have suffered, and continue to suffer,

irreparable harm for which there is no adequate remedy at law and which will continue until

Defendants conduct is enjoined.

33. Plaintiffs are entitled to an order enjoining Defendants from infringing the 165Patent.


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SECOND CLAIM FOR RELIEF

INDUCEMENT OF PATENT INFRINGEMENT 35 U.S.C. 271(b)


35. On information and belief, Defendants customers and other third parties areinfringing the 165 Patent by using the Infringing Product and associated parts provided by

Defendants.

36.

On information and belief, Defendants have actively induced, and are now

inducing their customers and/or other third parties to make or use Infringing Product that come

within the scope of at least claim 1 of the 165 Patent.

37. On information and belief, Defendants induce infringement by providingcustomers all of the parts for a dust shroud with an adjustable mounting mechanism and by

providing instructions on the internet for the subsequent use of the combination, which during

use by the customer infringes the 165 Patent.

38. On information and belief, Defendants conduct constitutes inducement to infringethe 165 Patent under 35 U.S.C. 271(b).

39. Defendants conduct alleged herein constituting inducement to infringe was donewith such knowledge regarding Dustless rights in the 165 Patent that the inducement was

intentional and or with willful blindness.


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40. On information and belief, Defendants have unlawfully derived, and continue tounlawfully derive income and profits by inducing customers and/or other third parties to infringe

the 165 Patent.

41. On Information and belief, Plaintiffs have suffered and continue to sufferdamages as a result of Defendants inducement to infringe the 165 Patent.

42. On information and belief, Plaintiffs have suffered and will continue to sufferirreparable harm for which there is no adequate remedy at law because of Defendants

inducement of others to make and use products that infringe the 165 Patent, and will continue to

be harmed unless Defendants are enjoined from further acts of inducement.

43. Plaintiffs are entitled to damages in an amount to be determined at trial adequateto compensate for the infringement of the 165 Patent, but in no event less than a reasonable

royalty for all Infringing Product made, used, sold, offered for sale, and/or imported.

44. Plaintiffs are entitled to an order enjoining Defendants from inducinginfringement of the 165 Patent.

THIRD CLAIM FOR RELIEF

CONTRIBUTORY PATENT INFRINGEMENT 35 U.S.C. 271(c)



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46. On information and belief, Defendants customers and other third parties areinfringing the 165 Patent by using the Infringing Product and associated parts provided by

Defendants.

47. On information and belief, Defendants have sold, or have offered to sell withinthe United States, dust shroud components for dust shrouds infringing at least claim 1 of the 165

Patent, which component(s) constitute a material component of the invention.

48. On information and belief, Defendants knew that such components as sold incombination by Defendants were especially made or adapted for use to infringe at least claim 1

of the 165 Patent.

49. On information and belief, Defendants commit contributory infringement byproviding customers with a combination of dust shroud parts that, as provided by Defendants to

customers, have no general use other than infringement of the 165 Patent when assembled and

used by the customers.

50. On information and belief, Defendants conduct constitutes contributoryinfringement of the 165 Patent under 35 U.S.C. 271(c).

51. On Information and belief, Plaintiffs have suffered and continue to sufferdamages as a result of Defendants contributory infringement of the 165 Patent.

52. On information and belief, Plaintiffs have suffered and will continue to sufferirreparable harm for which there is no adequate remedy at law because of Defendants

contributory infringement, and will continue to be harmed unless Defendants are enjoined from

further acts of contributory infringement.


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53. Plaintiffs are entitled to damages in an amount to be determined at trial adequateto compensate for the infringement of the 165 Patent, but in no event less than a reasonable

royalty for all Infringing Product made, used, sold, offered for sale, and/or imported.

54. Plaintiffs are entitled to an order enjoining Defendants from engaging incontributory infringement of the 165 Patent.

FOURTH CLAIM FOR RELIEF

INJUNCTIVE RELIEF 35 U.S.C. 283


56. As a result of Defendants actions, Plaintiffs have suffered and will continue tosuffer irreparable harm, including loss of goodwill, the loss of customers, and irreparable damage

to their good will and to the market for their dust shrouds in the form of price erosion.

57. The injury to Plaintiffs outweighs the harm an injunction may cause toDefendants.

58. The order and injunction will not be adverse to the public interest.59. There is a substantial likelihood that Plaintiffs will prevail on the merits of the

underlying claims, because the Infringing Product meet each element of at least one claim of the

165 Patent.


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60. Plaintiffs are entitled to an injunction prohibiting Defendants from making, using,selling, offering for sale, and/or importing the Infringing Product, from inducing others to engage

in said infringing activities, and from engaging in contributory infringement of the 165 Patent.

PRAYER FOR RELIEF

WHEREFORE, Plaintiffs Dustless Depot and Dustless Technologies pray for judgment

as follows:

A. A judgment finding Defendants jointly and severally liable for infringement of the

165 Patent;

B. For injunctive relief enjoining Defendants, and their respective officers, directors,

agents, employees, representatives and all persons operating in concert with Defendants, as

follows;

a. from manufacturing any products falling within the scope of the claims of

the 165 Patent;

b. from using any product or method falling within the scope of any of the

claims of the 165 Patent;

c. from selling, offering to sell, licensing or purporting to license any product

or method falling within the scope of any of the claims of the 165 Patent;

d. from importing any product into the United States which falls within the

scope of any of the claims of the 165 Patent;


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e. from actively inducing others to infringe any of the claims of the 165

Patent;

f. from engaging in acts constituting contributory infringement of any of the

claims of the 165 Patent; and

g. from all other acts of infringement of the 165 Patent;

C. For judgment finding the infringement of the Defendants to be willful, and for an

award of enhanced damages in connection with such finding;

D. For judgment finding this to be an exceptional case and awarding Plaintiffs their

costs and attorneys fees incurred herein;

E. An award of damages adequate to compensate Plaintiffs for infringement of the

165 Patent, in an amount to be proven at trial, including treble damages, lost profits damages,

reasonable royalty damages, and other damages allowed by 35 U.S.C. 284;

F. An award of Plaintiffs costs in bringing this action, pursuant to at least 28 U.S.C.

1920 and 35 U.S.C. 284;

G. An order that Plaintiffs be granted pre-judgment and post-judgment interest; and

H. For such other and further relief as the Court deems just and equitable.

JURY DEMAND

Plaintiffs demand a jury by trial on all claims for relief and all issues so triable.


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DATED: May 3, 2013 CLEGG, P.C.

Perry S. Clegg

Attorneys for Plaintiffs,

Dustless Depot, LLC, andLove-Less Ash Company, Inc.


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EXHIBIT A


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EXHIBIT B


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EXHIBIT C


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EXHIBIT D


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dustless depot et. al. v. secco international et. al

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