OurPet's v. Doskocil - Answer & Counterclaims

8/11/2019 OurPet's v. Doskocil - Answer & Counterclaims

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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF OHIO

EASTERN DIVISION

OURPETS COMPANY

1300 East StreetFairport Harbor, Ohio 44077,

Plaintiff,

PETMATE2300 E. Randol Mill RoadArlington, Texas 76011,

Defendant

:

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Civil Action No. 1:14-cv-02020

JUDGE DONALD C. NUGENT

JURY TRIAL DEMANDED

DEFENDANTSANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TOCOMPLAINT FOR DESIGN PATENT INFRINGEMENT

Defendant, Doskocil Manufacturing Company, Inc. d/b/a Petmate (Petmate), by its

undersigned counsel, files this Answer, Affirmative Defenses and Counterclaims in response to

the Complaint for Design Patent Infringement (Complaint) filed on behalf of Plaintiff,

OurPets Company (OurPets) as follows:

THE PARTIES

1. Petmate lacks knowledge or information sufficient to form a belief as to the truth

of the allegations of Paragraph 1, and, therefore, denies the same.

2. Doskocil Manufacturing Company, Inc. d/b/a Petmate is a corporation organized

and existing under the laws of the State of Texas with its principal place of business at 2300 E.

Randol Mill Road, Arlington, TX 76011.

JURISDICTION AND VENUE

3. Petmate admits that the Complaint purports to allege an action for patent

infringement under the patent laws of the United States. Petmate further admits that subject

matter jurisdiction is properly based on 28 U.S.C. 1331, 1338, and 35 U.S.C. 281.

Case: 1:14-cv-02020-DCN Doc #: 9 Filed: 10/02/14 1 of 15. PageID #: 53


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4. Petmate admits that this action is between citizens of different states. The balance

of the allegations of Paragraph 4 are denied.

5. The allegations of Paragraph 5 are conclusions of law to which no response is

required. To the extent a response is required, the allegations of Paragraph 5 are denied.




required. To the extent a response is required, the allegations of Paragraph 7 are denied. It is

further denied Petmate supplies any infringing dog bowls that are sold within the state of Ohio.



FACTUAL ALLEGATIONS

9. Petmate lacks knowledge or information sufficient to form a believe as to the

truth of the allegations of Paragraph 9 and, therefore, denies the same.











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15. Petmate admits that a copy of United States Design Patent No. D467,045

(hereinafter referred to the 045 Patent)is attached to the Complaint and further admits that the

045 Patent identifies Steven Tsengas as the Inventor. As to the remaining allegations of

Paragraph 15, Petmate denies the same.

16. Petmate lacks knowledge or information sufficient to form a belief to the truth of

the allegations of Paragraph 16 and, therefore, denies the same.

17.

Petmate lacks knowledge or information sufficient to form a belief to the truth of






20. Petmate denies the allegations of Paragraph 20.




24. Petmate denies that it sells any infringing products and further denies that it

infringes any patent allegedly owned by OurPets. Petmate lacks knowledge or information

sufficient to form a belief as to the proof of the remaining allegations of Paragraph 24 and

therefore, denies the same.




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ANSWER TO CLAIM NO. I

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

26. Petmate realleges and incorporates by reference the preceding responses to the

allegations contained in the Complaint.









PRAYER FOR RELIEF/REQUEST FOR REMEDIES

Petmate denies that OurPetsis entitled to any relief whatsoever, including the relief

requested in its Complaint and requests that the Complaint be dismissed with prejudice and

judgment be entered in favor of Petmate and against OurPetsin this proceeding.

AFFIRMATIVE DEFENSES

Petmate asserts the following Affirmative Defenses to the causes of action asserted in

OurPetsComplaint undertaking to prove only those defenses upon which it bears the burden of

proof under applicable law.



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FIRST AFFIRMATIVE DEFENSE

35. OurPets Complaint fails to state a claim upon which relief can be granted.

SECOND AFFIRMATIVE DEFENSE

36. Petmates making, using, offering for sale and/or selling the Petmate iTalia

product line has not and does not directly or indirectly infringe any valid and enforceable claim

of the 045 Patent either literally, contributorily or by inducement or under the Doctrine of

Equivalents.

THIRD AFFIRMATIVE DEFENSE

37. The 045 Patent and each claim thereof is invalid for failing to satisfy one or more

requirements of the Patent Act, 35 U.S.C. 1 et seq., including, but not limited to, the statutory

and/or decisional requirements of patentability set forth in 35 U.S.C. 101, 102, 103 and/or 112

and/or 282.

FOURTH AFFIRMATIVE DEFENSE

38. OurPetsis or may be estopped from asserting that Petmate infringes any valid

claim of the 045 Patent for reasons, including, but not limited to, prosecution history estoppel

and positions taken and arguments made to the United States Patent and Trademark Office.

FIFTH AFFIRMATIVE DEFENSE

39. OurPetsclaims are barred in whole or in part based on settlement, accord and

satisfaction in a previous action filed in this Court at 1:13-cv-00111.



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SIXTH AFFIRMATIVE DEFENSE

40. OurPetsclaims for relief are barred in whole or in part by the Doctrines of

Acquiescence, Estoppel, Laches, Waiver, Prosecution Laches and/or other applicable equitable

doctrines.

SEVENTH AFFIRMATIVE DEFENSE

41. OurPetsclaims for relief are barred in whole or in part due to the Doctrine of

Unclean Hands.

EIGHTH AFFIRMATIVE DEFENSE

42.

OurPetsclaims for damages, if any, against Petmate for alleged infringement of

the 045 Patent is limited by 35 U.S.C. 286, 287 and 288.

NINTH AFFIRMATIVE DEFENSE

43. OurPetsclaims for relief are barred in whole or in part due to the Doctrine of

Misuse of Patent.

Petmate reserves the right to add to, amend or withdraw its Affirmative Defenses if

further investigation and discovery so dictates.

WHEREFORE, Petmate demands judgment in its favor and against OurPets dismissing

all claims of the Complaint with Prejudice.



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COUNTERCLAIMS

Petmate asserts the following Counterclaims against OurPets:

NATURE OF THE ACTION

1. This is an action for declaratory judgment pursuant to the Federal Declaratory

Act, 28 U.S.C. 2201 and 2202. Petmate seeks a declaratory judgment that the claim of the

045 Patent is not infringed by Petmate and/or is invalid under one or more of the provisions of

35 U.S.C. 101, 102, 103 and 112. Petmate also seeks a declaratory judgment that the claim of

the 045 Patent is unenforceable due to OurPets misuse of the 045 Patent and that this action is

barred by the terms of a settlement agreement, release and covenant not to sue entered into by

Petmate and OurPetswhich agreement has been breached by the commencement of this action

by OurPets. An actual controversy over the infringement, validity and enforceability of the 045

Patent exists between Petmate and OurPetsas evidenced by the allegations of OurPets

Complaint and Petmates Answer and Affirmative Defenses thereto.

THE PARTIES

2. Petmate is a corporation organized and existing under the laws of the State of

Texas with its principal place of business at 2300 Randol Mill Road, Arlington, Texas 76011.

3. OurPetsalleges that it is a corporation organized and existing under the laws of

the State of Colorado with its principal place of business at 1300 East Street, Fairport Harbor,

Ohio 44077.

JURISDICTION AND VENUE

4. Petmates Counterclaims arise under the Patent Laws of the United States, 35

U.S.C. 1, et seq. and the Federal Declaratory Judgment Act, 28 U.S.C. 2201 and 2202.

This Court has jurisdiction over the subject matter under 28 U.S.C. 1331 and 1338(a) as well



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as under 28 U.S.C. 1332 because the matter in controversy exceeds the sum or value of

$75,000, exclusive of interest and costs, and is between citizens of different states.

5. This Court has personal jurisdiction over OurPetsbecause OurPetshas

purposely availed itself of the benefits and protection of this jurisdiction by filing its Complaint

in this judicial district.

6. Venue is proper in this Judicial District under 28 U.S.C. 1391.

FACTS COMMON TO ALL COUNTS

7. Petmate realleges and incorporates Paragraphs 1 through 6 of these Counterclaims

as if set forth herein.

8. OurPets has engaged in a pattern and practice of unfair competition by

commencing numerous patent infringement actions against its competitors, including Petmate,

alleging that such competitorscompeting products infringe one or more of OurPetspatents on

pet feeder products.

9. During the past ten (10) years or so, OurPets has filed numerous pet feeder patent

infringement actions against its competitors using virtually the same form complaint prepared

and filed by the same law firm which represents OurPets in this action.

10. This action represents the third time OurPets has sued Petmate alleging

infringement of the 045 Patent based on double bowl dog feeders which have vastly different

design characteristics with the exception that they all have two functional (2) feeding bowls.

11. On January 16, 2013, OurPets filed an action against Petmate in this Court styled

OurPets Company v. Petmate, at Civil Action No. 1:13-cv-000111-50, (the 2013 Action)

alleging infringement of the 045 Patent based upon a Petmate dog feeder called the Easy Reach



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Diner dog feeder, a true and accurate copy of a photograph of which is attached hereto as

ExhibitA.

12. The 2013 Action was settled pursuant to a stipulation of dismissal and Settlement

Agreement and Mutual Release which, included a covenant not to sue Petmate for patent

infringement of the 045 Patent for any elevated double bowl pet feeders from the effective date

of the Agreement until the expiration of the 045 Patent. The Settlement Agreement and Mutual

Release is not attached hereto due to confidentiality provisions contained therein, but will be

made available to the court under seal.

13.

Paragraph 3 of the Settlement Agreement and Mutual Release provides as

follows:

Covenants of OurPets. OurPetscovenants and warrants thatfrom the effective date of this Agreement until the expiration of the045 Patent, OurPets will not file any lawsuit or otherwise initiateany proceeding against Petmate alleging infringement of anypatent by the Accused Feeder, including, but not limited to, the045 Patent, and will not encourage or assist others to do so.Should OurPets ever assert the 045 Patent against Petmate at anytime in the future, Petmate retains all defenses and rights supportedby the patent laws of the United States including, but not limitedto, the defenses of invalidity and unenforceability.

14. The term Accused Feeder is defined in the Settlement Agreement and Mutual

Release as:

certain elevated double bowl pet feeders under the name Easy

Reach Diner or such other names as may be designated by

Petmate. . ., . . .

15. Notwithstanding the aforementioned covenant not to sue, on January 15, 2014,

OurPets commenced a second action against Petmate in this Court styled OurPets Company v.

Doskocil Manufacturing Co. d/b/a Petmate, at Civil Action No. 1:14-cv-00091 (the First 2014

Action), alleging that a Bowl Mates elevated double bowl pet feeder infringed the 045



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Patent. A true and accurate copy of a photo of the alleged infringing Bowl Mates elevated dog

feeder is attached hereto as Exhibit B. The First 2014 Action was later voluntarily dismissed

when Petmate advised OurPets that Petmate did not make or sell the Bowl Mates elevated dog

feeder.

16. As can be seen from a comparison of the Easy Reach Diner elevated double

bowl dog feeder (Exhibit A hereto), and the Bowl Mates elevated dog feeder (Exhibit B

hereto) to each other and a comparison to the Stackable Pet Feederdepicted in the 045 Patent,

they are easily distinguished from each other and both are easily distinguishable from the design,

of the Stackable Pet Feeder shown in the 045 Patent.

17. OurPets has now commenced the instant action against Petmate (the Second

2014 Action) using the same form complaint alleging that the Petmate Italia dog feeder

infringes the 045 Patent. A true and accurate photograph of the Accused Feeder in this Second

2014 Action sold under the name Italiadesignated by Petmate is attached hereto as Exhibit

C.

18. A cursory review of the Italia Accused Feeder as compared to the Stackable Pet

Feeder depicted in the 045 Patent reveals that the ItaliaAccused Feeder bears no

resemblance to the Stackable Pet Feeder depicted in the 045 Patent.

19. The commencement of this Second 2014 Action by OurPets is in direct

contravention and breach of the covenant not to sue Petmate for alleged infringement of the 045

Patent.

20. OurPets has intentionally and improperly expanded the scope of the design claim

of the 045 Patent for the purpose of forcing competitors to agree to pay royalties to OurPets or



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cease making and selling competing products, all for the purpose of unfairly using its patents,

including the 045 Patent, to stifle competition.

21. OurPets has impermissiblybroadened the scope of the 045 Patent for the

purpose of unfairly competing in the dog feeder market.

22. OurPets seeks to use its patents, including the 045 Patent, to obtain a market

benefit beyond that which properly inheres in the statutory patent right granted to OurPets as the

patentee of the 045 Patent.

COUNT I

DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE 045 PATENT

23. Petmate realleges and incorporates Paragraphs 1 through 22 of these

Counterclaims as if fully set forth herein.

24. An actual and judiciable controversy exists between Petmate and OurPetsas to

whether the claims of the 045 Patent are infringed by Petmate

25. Petmate has not infringed, nor is it infringing, any claim of the 045 Patent, either

by direct or contributory infringement. Petmate has not induced and does not induce the

infringement of any claim of the 045 Patent.

COUNT II

DECLARATORY JUDGMENT OF INVALIDITY OF THE 045 PATENT



27. An actual and justiciable controversy exists between Petmate and OurPets as to

the validity of the 045 Patent.



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28. The claim of the 045 Patent is invalid and unenforceable for failure to satisfy one

or more of the requirements for patentability under Title 35 of the United States Code, including

the respective provisions of 101, 102, 103 and 112.

COUNT III

DECLARATORY JUDGMENT OF UNENFORCEABILITY OF THE 045 PATENT



30. An actual and justiciable controversy exists between Petmate and OurPets as to

the enforceability of the 045 Patent.

31. The claim of the 045 Patent is unenforceable as a consequence of OurPets

improper misuse of the 045 Patent to improperly stifle competition and unfairly compete with

Petmate in the pet feeder market.

COUNT IV

BREACH OF CONTRACT



33. The Settlement Agreement and Mutual Release is a valid and legally binding

agreement that was entered into on or about July 24, 2013by Petmate and OurPets.

34. Pursuant to the Settlement Agreement and Mutual Release, Petmate paid the

stated settlement amount to OurPets.

35. In consideration of the payment of the settlement amount, OurPets agreed to

discontinue with prejudice the 2013 Action, release Petmate from all claims asserted or which

could have been asserted in the 2013 Action and covenanted not to sue Petmate as set forth

above in Paragraphs 13 and 14.



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36. Petmate has performed all conditions, covenants and promises required by it on

its part to be performed in accordance with the terms and conditions of the Settlement

Agreement and Mutual Release.

37. The commencement of this action by OurPets constitutes a breach of the

Settlement Agreement and Mutual Release.

38. As the proximate result of the breach of the Settlement Agreement and Mutual

Release by OurPets, Petmate has suffered damages in the amount of the settlement amount,

being the consideration paid by Petmate to OurPets for the release and covenant not to sue.

REQUEST FOR RELIEF

Petmate respectfully requests that this Court grant the following relief:

A. Dismiss the Complaint for Design Patent Infringement with prejudice;

B. Declare that OurPetsrecovers nothing from Petmate;

C. Declare that Petmate has not infringed, either directly or indirectly, and isnot infringing, either directly or indirectly any valid and enforceable claimof the 045 Patent;

D. Declare that the 045 Patent is invalid;

E. Declare that the 045 Patent isunenforceable due to OurPets misuse ofthe 045 Patent;

F. Enjoin OurPetsand its representatives, and any successors and assignsthereof, from charging or asserting infringement of any claim of the 045Patent against Petmate or any person or entity in privity with Petmate;

G. Declare that this is an exceptional case under 35 U.S.C. 285;

H. Award Petmate its damages for OurPets breach of the covenant not tosue.

I. Award Petmate its costs, disbursements and reasonable attorneys fees(including expert fees), incurred in this action; and

J. Award such other and further relief as the Court deems just and proper.



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JURY DEMAND

Petmate hereby demands a trial by jury on all issues triable by right of Jury.

Dated: October 2, 2014 Respectfully Submitted,

CALFEE HALTER & GRISWOLD, LLP

By: /s/ Addisah SherwoodADDISAH SHERWOOD (0084399)[email protected] SCOTT JOHNSON (0064579)[email protected] Calfee Building1405 East Sixth StreetCleveland, Ohio 44114Telephone: 216-622-8245Facsimile: 216-241-0816

ECKERT SEAMANS CHERIN & MELLOTT, LLC

By: /s/ Mark WillardMark A. Willard, EsquirePA ID No. [email protected] V. Radack, EsquirePA ID No. [email protected]

600 Grant Street, 44thFloorPittsburgh, PA 15219Telephone: 412-566-6000Facsimile: 412-566-6099Attorneys for Defendant,

Doskocil Manufacturing Company, Inc.d/b/a Petmate



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CERTIFICATE OF SERVICE

I hereby certify that a copy of the foregoing Answer, Affirmative Defenses and

Counterclaims to PlaintiffsComplaint for Design Patent Infringement has been served

electronically, by operation of this Courts CM/ECF System, upon the parties of record this 2nd

day of October, 2014.

C. Vincent ChokenDavid A. WellingChoken Welling, LLP3020 West Market StreetAkron, Ohio 44333

John D. Gugliotta, Esq.Patent, Copyright & Trademark Law Group, LLC4199 Kinross Lake Parkway, Suite 275Richfield, Ohio 44286Attorneys for Plaintiff

By: /s/Addisah SherwoodAddisah D. Sherwood



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OurPet's v. Doskocil - Answer & Counterclaims