Illinois Tool Works v. Keen - Complaint

8/18/2019 Illinois Tool Works v. Keen - Complaint

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IN THE UNITED STATES DISTRICT COURTFOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

Illinois Tool Works Inc., )a Delaware corporation, ))

Plaintiff, ) Civil Action No.)

v. ))

KEEN Inc., )a Delaware corporation, )

)Defendant. )

COMPLAINT FOR PATENT INFRINGEMENT

AND BREACH OF CONTRACT

Plaintiff, Illinois Tool Works Inc. (“ITW”), through its attorneys, complains of KEEN

Inc. (“KEEN”) as follows:

I. NATURE OF THE ACTION

1.

This is a patent infringement action to stop defendant, KEEN’s, infringement of

plaintiff’s United States Patent No. 6,415,482, entitled “Attachment for a Zipper Cord,”

(hereinafter, “the “482 patent”), and for monetary damages for past infringement of the ‘482

patent and plaintiff’s United States Design Patent No. D436,556 entitled, “Attachment for a

Zipper Cord” (hereinafter the “D556 patent”). Copies of the patents are attached hereto as

Exhibits I and II, respectively. Collectively, the patents are referred to as the “Patents-In-Suit.”

II. THE PARTIES

2. Plaintiff, ITW, is a Delaware corporation with an office and place of business in this

District, at 155 Harlem Avenue, Glenview, IL 60025.

3.

Defendant, KEEN, is a Delaware corporation with an office and place of business

Case: 1:16-cv-04097 Document #: 1 Filed: 04/06/16 Page 1 of 10 PageID #:1


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located at 515 NW 13th Avenue, Portland, OR 97209, that does business throughout the United

States under the trade name “KEEN Footwear.”

4.

KEEN distributes and sells footwear, including shoes and sandals, in this District

and elsewhere, throughout the United States through national retail outlets, local retail stores,

mail-order catalog stores and over the Internet.

III. JURISDICTION AND VENUE

5. This is an action for patent infringement arising under the Patent Laws of the

United States, Title 35 of the United States Code.

6. This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a).

7. This Court has personal jurisdiction over KEEN because, among other things, it

transacts business in this judicial District. It offers for sale and sells products in this District via

the Internet.

8. Venue is proper in this District under 28 U.S.C. §§ 1391(b)–(d) and 1400(b) because

a substantial part of the events giving rise to the claims occurred in this judicial District, and

KEEN has committed acts of infringement in this District.

IV. THE PATENTS-IN-SUIT

9. ITW is the owner of all rights under the ‘482 patent (Exhibit I), duly and legally

issued on July 9, 2002.

10. The ‘482 patent is a utility patent with claims directed to a cord attachment device

which forms a continuous loop of a length of cord by attachment to the free ends of the cord.

11. ITW is the owner of all rights existing under the ‘D556 patent (Exhibit II) duly

and legally issued on January 23, 2001, which expired at the end of its term on January 23, 2015.

12. The ‘D556 patent is a design patent directed to the unique aesthetic design

features of the cord attachment device illustrated in the Figures of the ‘D556 patent.



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13. KEEN holds no rights under the Patents-in-Suit and is not a licensee of ITW.

V. RELEVANT FACTS

14. Through its NEXUS Division, located in this District, ITW has, and continues to,market a line of cord attachment devices under the “Aerohead” brand, which are the subject of

the Patents-In-Suit.

15. In or about September 2010, ITW observed that certain KEEN footwear then

marketed, included cord attachment devices similar in design, structure and function to the ITW

cord attachment device of the Patents-in-Suit.

16. In 2010, KEEN was not a purchaser of cord attachment devices from ITW, nor

was it a licensee of ITW.

17. By letter dated September 28, 2010, a representative of ITW notified KEEN of

the Patents-in-Suit, and of KEEN’s infringement, and provided pictures of cord attachment

devices on KEEN footwear as well as “Aerohead” cord attachment devices made and sold by the

NEXUS Division of ITW. (Exhibit III).

18. On February 24, 2011, following a meeting between representatives of the parties,

counsel for ITW wrote to counsel for KEEN seeking resolution of the claim of infringement of

the ITW Patents-in-Suit (Exhibit IV).

19. Subsequent negotiations between ITW and KEEN lead to an agreement

memorialized by a letter from ITW’s counsel to KEEN’s counsel, dated August 3, 2011,

(Exhibit V), under which KEEN agreed to pay ITW $25,000.00 and ITW agreed to forego

seeking damages for infringing pieces sold prior to August 3, 2011, specifically conditioned on

KEEN discontinuing any additional infringing sales of cord attachment devices covered by the

Patents-in-Suit.

20. The agreement provided that if KEEN desired to use or sell cord attachment

devices that fall under ITW’s ‘D556 patent or ‘482 patent, KEEN would obtain such products

from ITW NEXUS for so long as the patents remained in effect.



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21. In or about November 2011, KEEN paid ITW $25,000.00 and became a customer

of ITW’s NEXUS Division for “Aerohead” cord attachment devices.

22. On information and belief, subsequently, KEEN began to use cord attachmentdevices in its footwear not supplied by ITW. Such cord attachment devices infringe the Patents-

in-Suit.

23. On June 16, 2015, counsel for ITW notified KEEN by letter to Tim Naylor,

General Counsel for Fuerst Group, Inc., acting on behalf of KEEN, that infringing (counterfeit)

products sold on certain KEEN products could not be allowed to continue. (Exhibit VI).

24. KEEN did not respond to June 16, 2015 letter, nor did it cease its infringing

activities.

25. On November 20, 2015, representatives of ITW purchased a pair of KEEN model

“ARROYO II” men’s shoes in this District from an REI retail store in Schaumburg, IL

(Exhibit VII).

26. A comparison of the cord attachment devices on the KEEN shoes purchased

November 20, 2015 and “Aerohead” cord attachment devices sold to KEEN by ITW is shown at

Exhibit VIII. Such comparison confirms that the cord attachment devices on the KEEN shoes

purchased November 20, 2015 were not obtained from ITW NEXUS.

27. KEEN maintains an Internet website, www.keenfootwear.com, available in this

District and elsewhere, on which it advertises and offers for sale footwear which can be

purchased directly from KEEN through processes available on the website.

28. On February 9, 2016, Order No. K2302737 was placed on the KEEN website

from within this District for a pair of model “ARROYO II” men’s BlackOlive/Bombay Brown

shoes. (Exhibit IX).

29. On or after February 9, 2016, KEEN fulfilled Order No. K2302737 by causing

delivery within this District of a pair of model “ARROYO II” men’s BlackOlive/Bombay Brown

shoes. (Exhibit X).



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30. On information and belief, the cord attachment devices on the shoes delivered in

fulfillment of Order No. K2302737 (Exhibit X) also were not obtained from ITW NEXUS.

31. Since the initial contact by ITW and throughout numerous communications,

discussions and negotiations, KEEN never denied infringement of the Patents-in-Suit or

challenged the validity of ITW’s patents.

VI. COUNT I: INFRINGEMENT OF THE ‘482 PATENT

32. ITW realleges and incorporates by reference the foregoing paragraphs of this

Complaint, as though fully set forth herein.

33. Upon information and belief, KEEN has infringed the ‘482 Patent, either literally

or under the doctrine of equivalents by importing, using, selling, or offering for sale, directly, or

through intermediaries, in this District and elsewhere in the United States, devices connecting

ends of a cord to form a continuous loop that infringe at least claims 1 and 16 of the ‘482 Patent.

34. In particular, regarding claim 1, the cord attachment devices of the KEEN product

of Exhibit III, the KEEN Model “ARROYO II” men’s shoe of Exhibit VIII, and the KEEN

model “ARROYO II” men’s shoe purchased February 9, 2016, include: a female element with

a passageway therethrough, including first guide elements and first

detent elements; a maleelement to be received in the passageway, the male element including second guide elements

to engage the first guide elements and second detent elements for engaging the first detent

elements; wherein the first guide elements include at least one guide slot formed on an

internal wall of the female element and wherein the second guide elements include at

least one guide ridge formed on an external surface of the male element; the male element

further including cord channels for receiving ends of a cord and securing the ends of the cord

when the male element is received in said passageway of the female element; and wherein

pulling the cord tightens a grip on the ends of the cord in said cord channels.

35. In particular, regarding claim 16, the cord attachment devices of the KEEN

product of Exhibit III, the KEEN Model “ARROYO II” men’s shoe of Exhibit VIII, and the

KEEN model “ARROYO II” men’s shoe purchased February 9, 2016, include: a female portion



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including a first face that includes a guide channel; a second face opposite the first face; a

first support and a second support separating the first face and the second face; a passageway

formed between the first support and the second support; and a first detent element; and a

male portion including an exterior surface terminating in a first member and a second member;

a shank centrally positioned on the male portion and extending from said first member and

the second member, the shank including opposite first and second sides, a longitudinal guide

ridge received by the guide channel of the female portion, and a boss portion extending from

an end of the shank; a first cord channel defined by the first member, the boss and the first

side of the shank, the first cord channel being constructed and arranged to receive a first end

of a cord; a second cord channel defined by the second member, the boss and the second side

of the shank, the second cord channel being constructed and arranged to receive a second end

of a cord; and a second detent element positioned on

the boss and adapted to detent engage

the first detent element.

36. On information and belief, the cord attachment devices on the KEEN product of

Exhibit III, the KEEN model “ARROYO II” men’s shoe of Exhibit VIII and the cord attachment

devices shown on the KEEN model “ARROYO II” men’s shoe purchased February 9, 2016

(Exhibit X) satisfy each and every element of at least claims 1 and 16 of the ‘482 patent and

therefore infringe the ‘482 patent.

VII. COUNT II: INFRINGEMENT OF THE ‘D556 PATENT


Complaint, as though fully set forth herein.

38. On information and belief, KEEN has infringed the ‘D556 patent during its life by

importing, making, using, selling, or offering for sale, directly or through intermediaries, in this

District and elsewhere in the United States, devices connecting the ends of a cord to form acontinuous loop that appropriate the unique aesthetic design features of the cord attachment

device illustrated in the Figures of the ‘D556 patent.



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39. Exhibit XI, left-side, shows Fig. 3 of the ‘D556 patent depicting certain unique

ornamental features of the cord attachment device of the ITW ‘D556 patent, in particular, the

arrowhead shape of the female component.

40. Exhibit XI, right-side, shows the cord attachment device on KEEN footwear from

2010, Exhibit III, with the same unique ornamental arrowhead shape as the female component of

the ‘D556 patent.

41. Exhibit XII, left-side, shows Fig. 3 of the ‘D556 patent depicting certain unique


shape of the male component thereof.

42. Exhibit XII, right-side, shows the cord attachment device on the KEEN footwearfrom 2010, Exhibit III, with the same unique ornamental shape of the male component as the

‘D556 patent.

43. Exhibit XIII, left-side, shows Fig. 3 of the ‘D556 patent depicting certain unique


arrowhead shape of the female component thereof.

44. Exhibit XIII, right-side, shows the cord attachment device on the KEEN footwear

from November 2015, Exhibit VIII, with the same unique ornamental arrowhead shape of the

female component as the ‘D556 patent.

45. Exhibit XIV, left-side, shows Fig. 3 of the ‘D556 patent depicting certain unique


shape of the male component thereof.

46. Exhibit XIV, right-side, shows the cord attachment device on the KEEN footwear

from 2015, Exhibit VIII, with the same unique ornamental shape of the male component as the

‘D556 patent.

47. The various Figs. of the ‘D556 patent (Exhibit II) depict the overall unique

ornamental features and appearance of the cord attachment device of the ITW ‘D556 patent.



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Exhibit III illustrates that the cord attachment device on the KEEN footwear from 2010 includes

the overall unique ornamental features and appearance of the ITW ‘D556 patent.

48. The various Figs. of the ‘D556 patent (Exhibit II) depict the overall unique

ornamental features and appearance of the cord attachment device of the ITW ‘D556 patent.

Exhibit III illustrates that the cord attachment device on the KEEN footwear from 2015 includes

the overall unique ornamental features and appearance of the ITW ‘D556 patent.

49. On information and belief, KEEN imported, used, sold or offered for sale

footwear, including its model “ARROYO II” men’s shoes with cord attachment devices as

shown in Fig. VIII prior to the expiration of the ‘D556 patent, which included the unique

ornamental arrowhead shape of the female component of the ‘D556 patent and the unique

ornamental shape of the male component of the ‘D556 patent.

50. On information and belief, an ordinary observer would deem the cord attachment

devices of the KEEN footwear of Exhibit III as substantially similar to the claimed design of the

‘D556 patent, and hence, constitute an infringement of the ‘D556 patent.

51. On information and belief, an ordinary observer would deem the cord attachment

devices of the KEEN footwear of Exhibit VIII as substantially similar to the claimed design of

the ‘D556 patent, and hence, constitute an infringement of the ‘D556 patent.

52. On information and belief, KEEN continued to appropriate the unique design

features of the cord attachment device of the ‘D556 patent for a period commencing in at least

2010, until expiration of the ‘D556 patent, earning illegal profits on footwear incorporating the

patented design.

VIII. COUNT III: BREACH OF CONTRACT


complaint as though fully set forth herein.

54. On information and belief, KEEN imported, used and sold, or offered for sale,

cord attachment devices on its footwear received from sources other than ITW NEXUS that fall



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under ITW’s ‘D556 patent and ‘482 patent in contravention of its agreement with ITW

memorialized in the letter dated August 3, 2011.

55. Such action constitutes a breach of contract causing injury to ITW and resulted in

illegal profits to KEEN.

IX. PRAYER FOR RELIEF

WHEREFORE, ITW prays for relief as follows:

1. A judgment against KEEN that it has infringed one or more claims of the ‘482 Patent.

2. A judgment against KEEN that it has infringed the ‘D556 Patent during its life.

3. A judgment preliminarily and permanently enjoining KEEN and its officers,

directors, agents, servants, employees, affiliates, attorneys and all others in privity or in concert

with them, including but not limited to its parent company and its subsidiaries, divisions,

successors and assigns, from further infringement of the ‘482 Patent.

4. A judgment against KEEN for an accounting awarding ITW all damages adequate to

compensate ITW for KEEN’s infringement of the ‘482 Patent, no less than a reasonable royalty.

5.

A judgment against KEEN pursuant to Title 35 USC § 289 ordering KEEN to

disgorge its illegal profits on footwear incorporating the patented design of the ‘D556 patent.

6. A judgment against KEEN that it breached its contract with ITW and an award to

ITW of its damages, both actual and consequential.

7. A judgment against KEEN that its infringement was willful and an award of

attorneys’ fees.

8. A judgment that this was an exceptional case pursuant to Title 35 USC § 285 and

an award of treble damages to ITW.

9. A judgment against KEEN awarding pre-judgment interest, and post judgment

interest.



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10. An award of costs and expenses in this action.

11. An award of such other relief as this Court may deem just and appropriate.

X.

DEMAND FOR JURY TRIAL

Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, ITW hereby demands a

trial by jury for all issues so triable.

April 6, 2016

/ Wesley O. Mueller/

Wesley O. Mueller, IL Bar No. 6199650Robert V. Jambor, IL Bar No. 1322222LEYDIG, VOIT & MAYER, LTD.

Two Prudential Plaza180 N. Stetson, Suite 4900Chicago, IL 60601-Telephone: (312) 616-5602Facsimile: (312) [email protected] [email protected]

Attorneys for the Plaintiff Illinois Tool Works Inc.



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Illinois Tool Works v. Keen - Complaint