Hub Pen v. Empire USA Pen - Complaint

8/10/2019 Hub Pen v. Empire USA Pen - Complaint

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UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

HUB PEN COMPANY, INC.

Civil Action No. 1:14-cv-14213

COMPLAINT AND DEMAND

FOR A JURY TRIAL

Plaintiff

V.

EMPIRE USA PEN AND PROMOTIONS, LLC

Defendant.

COMPLAINT

Plaintiff, Hub Pen Company, Inc. ("Hub " or "Plaintiff'), brings this action against defendant,

Empire USA Pen and Promotions, LLC ("Empire" or "Defendant"), for patent infringement. By this

Complaint, Hub seeks, inter alia, injunctive relief, monetary damages, and attorneys fees under

35 U.S.C. 283, 284 and 285, and alleges as follows:

THE PARTIES

1. Hub is a Massachusetts corporation, with its principal place of business at 1525

Washington Street, Braintree, MA 02184. Hub is the owner of numerous patents pertaining to pens and

styluses. Among the patents owned by Hub is U.S. Patent No. D 709,949, which claims a design for a

combined pen and stylus.

2. Upon information and belief, Defendant is a New York corporation with a principal place

of business located at 5620 1st Ave #3, Brooklyn, NY 11220.

Case 1:14-cv-14213 Document 1 Filed 11/20/14 Page 1 of 6


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JURISDICTION AND VENUE

3. This action arises under the patent laws of the United States, 35 U.S.C. 271, 281, 283-

285.

4. This Court has original and exclusive jurisdiction over the subject matter of this

Complaint pursuant to 28 U.S.C. 1338(a) because this action arises under an act of Congress relating

to patents. Jurisdiction is also conferred pursuant to 28 U.S.C. 1331 because this is a civil action

arising under the laws of the United States.

5. Upon information and belief Defendant regularly solicits and does business with parties

located and domiciled in Massachusetts, including through its website Empirepen.com (the Website).

Venue is proper in this District under 28 U.S.C. 1391(b) and (c) and/or 1400(b).

THE ASSERTED PATENT

6. U.S. Patent No. D 709,949 entitled Pen and Stylus (the 949 Patent), issued on

July 29, 2014 on an application filed on January 23, 2013. The 949 Patent is assigned to Hub. A true

and correct copy of the 949 Patent is attached hereto as Exhibit A.

BACKGROUND FACTS

7. Hub is a family owned company that sells and custom imprints over 100 million pens

annually, and is a leader in the promotional pen market.

8. One of Hubs most popular pen designs is the JAVALINApen which has been copied

extensively by Hubs competitors.

9. Because Hubs JAVALINAA copy of a 2011 catalog showing various versions of the

JAVALINApen was submitted on an Information Disclosure Statement (IDS) to the United States



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Patent and Trademark Office (USPTO) as prior art for the application. The IDS was initialed as being

considered by the Examiner and is attached hereto as Exhibit B.

10. Defendant Empire imports, offers for sale, uses and sells promotional writing

instruments, which are available through its website Empirepen.com.

11. Upon information and belief Empire imports, offers for sale, uses and sells a combination

pen and stylus under the name Jetstream, a photo of which is attached hereto as Exhibit C, which pen

and stylus infringes one or more claims of the 949 patent (the Infringing Device).

12. Figure 1 below shows a comparison of the Defendants Infringing Device with Figure 2.

Of the 949 patent.

Table 1

Empire Infringing Device

of 949 Patent



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13. Hub provided written notice to Empire by letter dated November 13, 2014 alleging

infringement of the 949 Patent by the Infringing Device.

14. Upon information and belief, Empire continues to import, offer for sale, use and sell the

Infringing Device.

15. As a direct and proximate result ofEmpires acts of infringement, Hub has suffered

damages.

16. As a direct and proximate result ofEmpires acts of infringement Hub has suffered and

continues to suffer irreparable harm for which there is no adequate remedy at law.

COUNT ONE

(Infringement of the 949 Patent - 35 U.S.C. 271)

17. The Plaintiff incorporates paragraphs 1-16, by reference and realleges them as originally

and fully set forth herein.

18. Empire has knowingly and intentionally infringed, and continues to infringe, the 949

Patent by importing, using, offering for sale, or selling, throughout the United States the Jetstream

stylus, which is covered by claims of the 949 Patent, and will continue to do so unless enjoined by this

Court.

19. As a direct and proximate consequence of theEmpires infringing acts, Hub has suffered

and will continue to suffer injury and damages, and unless such acts and practices are enjoined by the

Court, will continue to be injured in its business and property rights, and will suffer and continue to



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suffer injury and damages which are causing them irreparable harm and for which Hub is entitled to

relief under 35 U.S.C. 283, 284 and 285.

20. Upon information and belief, the aforementioned infringement is knowing, intentional

and willful.

WHEREFORE, Plaintiff Hub Pen Company, Inc. respectfully requests that this Court enter

judgment in its favor and against Defendant Empire USA Pen and Promotions, LLC and requests relief

as follows:

A. Judgment entered in its favor and against Empire on each count of the Complaint;

B. Declaring that Empire has infringed the 949 Patent;

C. Declaring that the foregoing infringement was willful and knowing;

D. Declaring this to be an exceptional case within the meaning of 35 U.S.C. 285,

entitling Hub to an award of its reasonable attorneys fees in this action;

E. Entry of a preliminary and thereafter permanent injunction prohibiting Empire from

violating 35 U.S.C. 271 by infringing the 949 Patent, all pursuant to 35 U.S.C. 283;

F. Entry of a preliminary and thereafter permanent injunction ordering Empire to recall and

remove from retail establishments all devices that infringe the 949 Patent;

G. Award Hub its damages in accordance with 35 U.S.C. 284, including actual damages,

compensatory damages in an amount no less than a reasonable royalty ofEmpires gross sales of all

Infringing Products, and treble damages;

H. Award Hub prejudgment interest;

I. Award Hub its costs, attorneys fees and expenses arising from this suit under

35 U.S.C. 285;

J. Entry of an Order thatEmpire:



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1. cease all sales of the InfringingDevice;

2. remove the Infringing Device from the Internet, catalogs, flyers, brochures,

displays, advertisements and all other channels of trade;

3. omit reference to the Infringing Device from the Internet, future catalogs, futureflyers, future brochures, future displays, future advertisements and all other

channels of trade;

4. recall from its employees, subsidiaries, dealers, distributors, resellers and

customers, any and all Infringing Device and advertising of the InfringingDevice;

5. surrender for destruction, or other disposition at the election ofHub, all extrusions,

molds, dies, components-in-progress, components, production materials, products,

castings, fixtures, prints, computer programs, solid modeling, models, prototypes,engineering records, and all means of manufacture associated with the production

of the InfringingDevice; and

M. Grant Hub such other relief as this Court deems just and proper

JURY DEMAND

Hub demands a trial by jury on all counts of their Complaint so triable.

Respectfully submitted,


By its attorneys,

/John T. McInnes/

John T. McInnes, Esq., BBO #657488Jodi-Ann McLane, Esq., BBO #635567

Dingman, McInnes & McLane, LLP

114 Turnpike Road, Suite 108Westborough, MA 01581

Phone: (508) 938-1567

Fax: (508) 898-9498

Date: November 20, 2014



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Case 1:14-cv-14213 Document 1-1 Filed 11/20/14 Page 1 of 6EXHIBIT A


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Case 1:14-cv-14213 Document 1-1 Filed 11/20/14 Page 2 of 6


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Case 1:14-cv-14213 Document 1-2 Filed 11/20/14 Page 1 of 4XHIBIT B


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of 3 11/20/14, 11:55

EXHIBIT C



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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



Norfolk

John T. McInnes, Esq., Dingman, McInnes & McLane, LLP,14 Turnpike Road, Suite 108, Westborough, MA 01581508) 898-9494 (Main); (508) 938-1567 (Direct)

EMPIRE USA PEN AND PROMOTIONS, LLC

35 U.S.C. 283, et. seq.

Patent Infringement

1/20/2014 /John T. McInnes/

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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 attime 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, noin 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. Marksection 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 belowsufficient 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 docketnumbers and the corresponding judge names for such cases.

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



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UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

1. Title of case (name of first party on each side only)

2. Category in which the case belongs based upon the numbered nature of suit code listed on the civil cover sheet. (See local

rule 40.1(a)(1)).

I. 410, 441, 470, 535, 830*, 891, 893, 895, R.23, REGARDLESS OF NATURE OF SUIT.

II. 110, 130, 140, 160, 190, 196, 230, 240, 290,320,362, 370, 371, 380, 430, 440, 442, 443, 445, 446, 448, 710, 720,740, 790, 820*, 840*, 850, 870, 871.

III. 120, 150, 151, 152, 153, 195, 210, 220, 245, 310, 315, 330, 340, 345, 350, 355, 360, 365, 367, 368, 375, 385, 400,422, 423, 450, 460, 462, 463, 465, 480, 490, 510, 530, 540, 550, 555, 625, 690, 751, 791, 861-865, 890, 896, 899,

950.

*Also complete AO 120 or AO 121. for patent, trademark or copyrigh t cases.

3. Title and number, if any, of related cases. (See local rule 40.1(g)). If more than one prior related case has been filed in thisdistri ct please indicate the title and number of the first fil ed case in this court.

4. Has a prior action between the same parties and based on the same claim ever been filed in this court?

YES 9 NO 9

5. Does the complaint in this case question the constitutionality of an act of congress affecting the public interest? (See 28 USC2403)

YES 9 NO 9If so, is the U.S.A. or an officer, agent or employee of the U.S. a party?

YES 9 NO 9

6. Is this case required to be heard and determined by a district court of three judges pursuant to title 28 USC 2284?

YES 9 NO 9

7. Do all of the parties in this action, excluding governmental agencies of the united states and the Commonwealth ofMassachusetts ( governmental agencies), residing i n Massachusetts reside in the same division? - (See Local Rule 40.1(d)).

YES 9 NO 9

A. If yes, in which d ivi sion do al l of the non-governmental par ties res ide?

Eastern Division 9 Central Division 9 Western Division 9

B. If no, in which division do the majority of the plaintiffs or the only parties, excluding governmental agencies,

residing in Massachusetts reside?

Eastern Division 9 Central Division 9 Western Division 9

8. If filing a Notice of Removal - are there any motions pending in the state court requiring the attention of this Court? (If yes,

submit a separate sheet identifying the motions)

YES 9 NO 9

(PLEASE TYPE OR PRINT)

ATTORNEY'S NAME

ADDRESS

TELEPHONE NO.

(CategoryForm12-2011.wpd - 12/2011)


Hub Pen Company v. Empire USA Pen and Promotions, LLC

John T. McInnes

Dingman, McInnes & McLane, LLP, 114 Turnpike Road, Suite 108, Westborough, MA 01581

(508) 898-9494 (main); (508) 938-1567 (Direct)


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AO 120 (Rev. 08/10)

TO:Mail Stop 8

Director of the U.S. Patent and Trademark Office

P.O. Box 1450Alexandria, VA 22313-1450

REPORT ON THE

FILING OR DETERMINATION OF AN

ACTION REGARDING A PATENT OR

TRADEMARK

In Compliance with 35 U.S.C. 290 and/or 15 U.S.C. 1116 you are hereby advised that a court action has been

filed in the U.S. District Court on the following

G Trademarks or G Patents.

( G the patent action involves 35 U.S.C. 292.):

DOCKET NO. DATE FILED U.S. DISTRICT COURT

PLAINTIFF DEFENDANT

PATENT OR

TRADEMARK NO.

DATE OF PATENT

OR TRADEMARKHOLDER OF PATENT OR TRADEMARK

1

2

3

4

5

In the aboveentitled case, the following patent(s)/ trademark(s) have been included:

DATE INCLUDED INCLUDED BY

G Amendment G Answer G Cross Bill G Other Pleading

PATENT OR

TRADEMARK NO.

DATE OF PATENT

OR TRADEMARK HOLDER OF PATENT OR TRADEMARK

1

2

3

4

5

In the aboveentitled case, the following decision has been rendered or judgement issued:

DECISION/JUDGEMENT

CLERK (BY) DEPUTY CLERK DATE

Copy 1Upon initiation of action, mail this copy to Director Copy 3Upon termination of action, mail this copy to Director


for the District of Massachusetts

11/20/2014 for the District of Massachusetts

Hub Pen Company, Inc. Empire USA Pen and Promotions, LLC

D709,949 7/29/2014 Hub Pen Company

Documents

Hub Pen v. Empire USA Pen - Complaint