JJG IP Holdings v. Polymeric Technology - Complaint

8/20/2019 JJG IP Holdings v. Polymeric Technology - Complaint

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5:15-CV-1137(GTS/TWD)

Case 5:15-cv-01137-GTS-TWD Document 1 Filed 09/21/15 Page 1 of 5

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF NEW YORK

JJG IP HOLDINGS, LLC

AND

GREEN MACHINE SALES, LLC

Plaintiffs,

v

POLYMERIC TECHNOLOGY, INC.,

Defendant.

COMPL INT

Civil Action No.

Plaintiffs JJG

IP

Holdings, LLC ( JJG ) and Green Machine Sales, LLC (Green

Machine ) (collectively, Plaintiffs ), by and through their attorneys, Bond, Schoeneck

&

King, PLLC, hereby alleges as its Complaint against defendant Polymeric Technology,

Inc. ( Poly-Tech ) as follows:

JURISDICTION

1 This

is an

action for design patent infringement brought under the patent

laws of the United States, including 35 U.S.C. §§ 271 et seq

2. This Court has subject matter jurisdiction in this action pursuant to 28

U.S.C. 1331 and 1338(a).

PARTIES

3. JJG is a limited liability company organized and existing under the laws of

the State of New Hampshire and having a place of business at 5 Gigante Drive,

Hampstead, NH 03841.

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4. Green Machine is a limited liability company organized and existing under

the laws of New Hampshire and having places of business at 11 E. Genesee St.,

Baldwinsville, NY 13027 and 8300 NY

Rte. 79

Whitney Point, NY 13862.

5.

Upon information and belief, Poly-Tech is a corporation organized and

existing under the laws of the State of California, and is authorized to do business

in

the

State of New York.

DESIGN PATENT INFRINGEMENT

6.

JJG is a holding company.

7. Green Machine is

an

operating and sales company that designs,

manufactures, markets and sells waste recycling equipment, including a consumable

product referred to as a Star for use on a waste separator machine.

8.

JJG is the owner of all right, title and interest

in

U.S. Design Patent No.

690,749 ( the '749 patent ), which duly issued

on

October 1 2013. A copy of the '749

patent

is

attached

as

Exhibit

A

9.

Green Machine is the exclusive licensee under the '749 patent,

possessing the exclusive right to make, have made, offer for sale, and sell the patented

Star in

the United States.

10. JJG and Green have discovered that Poly-Tech is making, offering for

sale and/or selling Stars with substantially the same design as that depicted and

claimed in the '7 49 patent.

11.

In sales initiatives, Poly-Tech specifically refers to replacement stars for

use on Green's separators. One Poly-Tech quote made to a Green customer contained

the following wording and pictures:

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: We

make recycling stars/discs for MRFs with sorters such as

JJ

achine for 40-50% less than the OEM price with better quality than the

OEM. This is a potential savings of $10,000's per vear. We supply

customers such as WM and Republic with our high-quality stars.

The price for the standard split 6 spoke 13 JJG Machine star

s

$33.00/star

This

s

the star I'm talking about:

Let me know if I can get you some free samples. .

12. The making, using, selling, offering for sale, and/or importing of the knock-

off Stars by Poly-Tech constitutes patent infringement under 35 U.S.C.

§ 271.

13. Poly-Tech, upon information and belief, is committing willful infringement

by making, using, selling, and/or offering for sale its knock-off Stars with knowledge that

the products infringe the '7 49 patent.

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14. On September 15, 2014, JJG notified Poly-Tech in a letter that it

considered the manufacture and sale of the Stars to be

an

infringement of the 749

patent and demanded that Poly-Tech cease and desist from further infringing the 749

patent. A copy of this letter is attached as Exhibit B.

15. Poly-Tech has failed to cease and desist the infringing acts.

16. Poly-Tech s willful infringement and deliberate disregard for Plaintiff s

statutory rights warrant a trebling of damages pursuant to 35 U.S.C. § 284, and a

finding that this case is exceptional under

35

U.S.C. § 285, thereby entitling Plaintiffs to

an award of costs and attorneys fees.

17. Plaintiffs have no adequate remedy at law.

PL INTIFF DEM NDS TRI L BY JURY

WHEREFORE, Plaintiffs pray that the Court:

a)

Enter judgment that Poly-Tech has infringed U.S. Design Patent No. 690,749;

b) Enter judgment that Poly-Tech s acts of infringement are willful;

c) Enter judgment that this is an exceptional case under 35 U.S.C. § 285;

d) Pursuant to 35 U.S.C. § 283, enjoin Poly-Tech, its officers, agents, servants, and

employees, and all parties who are in active concert or participation with them, from

directly or indirectly making, having made, selling, offering for sale, distributing, using, or

importing into the United States any products that infringe U.S. Design Patent

No.

690,749;

e) Order Poly-Tech to account for and pay to Plaintiffs damages adequate to

compensate for the infringement under 35 U.S.C. § 284, but

in

no event less than a

reasonable royalty;

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f) Order Poly-Tech to account for and pay to Plaintiffs all profits derived by Poly-

Tech from infringing U.S. Design Patent

No.

690,749 under 35 U.S.C. § 289;

g)

Award Plaintiffs treble damages pursuant to 35 U.S.C.

§

284;

h)

Award Plaintiffs their prejudgment interest and costs pursuant to 35 U.S.C. §

284, and its attorneys' fees under 35 U.S.C. § 285;

i) Grant Plaintiffs such other and further relief as the Court may deem just and

proper.

Dated: September 21, 2015 Respectfully submitted,

BOND, SCHOENECK KING, PLLC

By: s/ Georqe

R.

McGuire

George R. McGuire (509056)

One Lincoln Center

Syracuse, NY 13202-1355

Telephone: (315) 218-8000

Facsimile: (315) 218-8100

Attorneys for Plaintiff

5

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Case 5:15-cv-01137-GTS-TWD Document 1-1 Filed 09/21/15 Page 1 of 9

EXHIBIT


7/18


(12)

United States Design Patent

Green et al.

(54)

SORTING

ISK

(75) Inventors:

John

F

Green,

Baldwinsville,

NY

(US);

Peter Mendre,

Haverhill,

MA

(US);

Thomas M. Taylor, Lisle, NY (US)

(73)

Assignee:

JJG IP Holdings, LLC,

Hampstead,

NH

US)

(**)

Term: 14 Years

(21) Appl. No.:

29/422,960

(22) Filed:

May 25, 2012

(63)

(51)

(52)

(58)

56)

Related U.S. Application Data

Continuation

of application No. 12/762,430, filed on

Apr. 19, 2010, now abandoned.

LOC 9) CI. .................................................. 15-99

U.S.CI.

USPC

.........................................................

D15/147

Field of Classification Search

USPC ................. DS/349,

354; 0151147;

209/262,

209/282, 283, 309,

363,

365.1, 659, 660,

209/664, 666, 667, 668, 671, 672, 930; 403/344

See application file for complete search history.

References Cited

U.S. PATENT

DOCUMENTS

136,105 A *

D369,817 s *

6,371,305 Bl

2/1873 Hamachck ....

.. ..

....

.. .. ..

4/3 51

5/1996 Hauch ............ ............. D15/147

412 2

Austin et al.

USOOD690749S

(10)

Patent No.:

(45) Date of Patent:

US D690,749 S

**

Oct. 1, 2013

6,648,145 132 11/2003 Davis eta .

7,004,332 132

212 6

Davis

7,661,537

Bl

2/2010 Sewell

D630,659

s

*

1/2011 Dibbs ........... DIS/147

D631,900 s

*

2/2011 Prochaska et a . ........... 015/147

D680,419

s

* 4/2013 Green eta .

'

..... D8/354

2009/0045032 A I * 2/2009

Yamagishi eta .

........... 194/344

20 I

0/0264069 A

I

* 10/2010

Green eta .

......... 209 262

201110108467 AI* 5/2011

Campbell eta . ............. 209/522

201110147281

A1

*

6/2011 Davis ...... ....... ....... ...... .. 209/671

2011/0303587

A1

*

12/2011

Doppstadt ct

a .

............

2 91672

2012/0325729 AI* 12/2012 Cappozzo ..................... 209 369

*

cited by examiner

Primary Examiner

Patricia Palasik

(74) Attorney Agent

or

Firm···· Maine

Cemota Rardin

57) CLAIM

The

ornamental design

for a sorting disk,

as shown and

described.

DESCRIPTION

FIG. is a perspective view of a

sorting

disk;

FIG. 2 is a top view thereof;

FIG.

3

is a left

side view

thereof;

FIG.

4

is a

bottom view

thereof;

FIG. 5 is a right

side view

thereof;

FIG. 6 is a front view thereof; and,

FIG. 7 is a

back view

thereof.

1 Claim, 7 D rawing Sheets


8/18


U.S.

atent

Oct. 1, 2013

Sheet of 7 US D690,749 S

F

l(- 1

J .


9/18


U S Patent Oct 1 2013

Sheet 2 of

US

D690

749 S

FIG 2


10/18


U.S. atent

Oct. 1 2013 Sheet 3 of US D690 749 S

FIG. 3


11/18


U.S. Patent

Oct. 1 2013

Sheet 4 of

US D690 749 S

..-

FIG

4


12/18


U.S.

atent

Oct. 1 2013 Sheet 5

of US D690 749 S

FIG. 5


13/18


U.S. atent

Oct. 1 2013

Sheet 6

of

US D690 749 S

FIG. 6


14/18


U.S. atent

Oct. l 2013

Sheet 7

of7

US D690 749 S

FIG. 7


15/18


EXHI IT


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VIA FIRST CLASS MAIL

AND

EMAIL

to

[email protected]

Mr. Steven Tool

Director

o

Sales Marketing

Polymeric Technology,

Inc.

(D/B/A Poly-Tek)

1900

Marina

Blvd.

San

Leandro, CA 94577

Re: Patent Infringement

Dear Mr. Tool:

M INE CERNOTA RARDlN

ADVOCATI RES MENTIS

September I

5

20

14

We

are counsel

to

JJG

IP

Holdings, LLC owner

o

federal patent rights

in

and

to

a sorting

elise

design, which

is

used in

their

line o

sorting equipment

for use in

material recovery facilities. Enclosed

for

yom reference

is

a copy ol'

United States Patent

No.

D 690,749.

t

has

come

to

our attention that your company

has been

offering a copy

o

our client's patented sorting disc (see

attached), without authorization, even going

so far

as

to

solicit current Green Machine customers

via email.

This

activity is causing irreparable harm and

may

constitute patent infringement.

We

must insist that you immediately cease

all

sales o

the

sorting

elise

destroy your entire inventory

o

such product

and refrain from offering it for sale during the remaining term o the aforementioned patent. While JJG IP Holdings,

LLC

has

no

desire to institute a lawsuit, if

you fail

to accede to our requests

we

shall be forced to consider our

options.

We

will expect your confirmation o compliance

by

October I 2014.

Enclosure:

United States Patent Number D690,749

Picture

o

Polymeric Technology,

Inc.

Sorting

Disc

547 Amherst Street- 3rd Floor· Nashua N 03063-4000

·Office:

603.886.6100 ·Fax:

603.886.4796

AOVOCA:fl RES Mr:N'riS


17/18

5:15-CV-1137 (GTS/TWD)

#0206-3422480$400 GTS TWD

5:15-cv-1137


JS 44 (Rev. 12/12)

CIVIL COVER SHEET

The

JS

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18/18

Case 5:15-cv-01137-GTS-TWD Document 1-3 Filed 09/21/15 Page 2 of 2 IS 44 Reverse (Rev. 12/12)

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Documents

JJG IP Holdings v. Polymeric Technology - Complaint