Minnesota Diversified Industries_ Inc. v. Technology Container Corp by patentdata

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									                    IN THE UNITED STATES DISTRICT COURT
                       FOR THE DISTRICT OF MINNESOTA



MINNESOTA DIVERSIFIED
INDUSTRIES, INC.

                     Plaintiff,                  CIVIL ACTION NO.

v.


TECHNOLOGY CONTAINER
CORP.,

                     Defendant.



 COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT


       Plaintiff, Minnesota Diversified Industries, Inc. (“MDI”) states and alleges as

follows:

                                         Parties

       1.     Plaintiff MDI is a Minnesota non-profit corporation serving people with

disabilities while delivering high quality products and services to business customers.

MDI is based in Minnesota with locations in St. Paul (1700 Wynne Ave., St. Paul, MN

55108), Grand Rapids (825 Lily Lane, Grand Rapids, MN 55744), and Hibbing (1937 4th

Ave. E., Hibbing, MN 55746).
       2.     Upon information and belief, Defendant Technology Container Corp.

(“TCC”) is a Massachusetts corporation, having a principle place of business at 207

Greenwood St., Worcester, MA 01607.

                                     Jurisdiction and Venue

       3.     This is an action for a Declaratory Judgment under 28 U.S.C. §§ 2201 and

2202 relating to an actual controversy between the parties with regard to the non-

infringement of United States Patent No. 6,257,484 (“‘484 patent”) (Copy attached as

Exhibit A).

       4.     Upon information and belief, Defendant, TCC is the assignee of the ‘484

patent to Dowd, entitled “Collapsible Corrugated Plastic Box Having Tear-Resistant

Hand Holds,” which issued on July 10, 2001.

       5.     MDI makes, uses, and sells, among other things, corrugated plastic

products.

       6.     In a July 27, 2012, letter sent to MDI in Minnesota, TCC stated that “[i]t is

apparent to us that MDI is selling corrugated plastic boxes having the hand holds set forth

in the claims of the [‘484] patent. Accordingly, MDI is infringing the patent.

Technology Container Corporation goes to great lengths to protect its intellectual

property. Since Technology Container Corporation sells products that embody its

intellectual property, it is particularly concerned with ensuring that its competitors do not

use its patented IP, as such unauthorized acts of infringement greatly affect Technology

Container Corporation’s business and thus cause it direct damage. This letter serves as

formal notice of your company’s infringement of the subject patent . As you are likely
aware, continued infringement of the patent after notice thereof can subject your

company to enhanced damages of up to three times Technology Container Corporation’s

lost profits for each infringing product that your company sells. Willful infringement of a

patent can also expose your company to payment of Technology Container Corporation’s

attorney’s fees if it has to enforce the subject patent against your company.” (Copies of

correspondence is attached as Exhibit B).

       7.     Through these statements, among other things, Defendant, or those acting

for Defendant, has created a reasonable apprehension of suit for infringement of the ‘484

patent with respect to Plaintiff’s ability to make, use, or sell at least some of its products.

       8.     This court has subject matter jurisdiction in accordance with 28 U.S.C. §§

1338, 2201, and 2202.

       9.     Upon information and belief, Defendant TCC has conducted business in the

State of Minnesota, including the sale of boxes in Minnesota.

       10.    For purposes of venue and personal jurisdiction, Defendant TCC resides in

Minnesota. Upon information and believe, TCC has conducted business in the State of

Minnesota.

       11.    The exercise of personal jurisdiction comports with Minn. Stat. § 543.19.

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

                           Count I – Declaration of Non-Infringement

       12.    The allegations of the preceding paragraphs 1-11 are incorporated herein by

reference.
       13.     Plaintiff has not infringed, is not now infringing, and has not contributorily

infringed or induced infringement of any valid claim of the ‘484 patent.

       14.     The ‘484 patent includes three independent claims: 1, 8, and 12. Each of

the independent claims are generally directed to a collapsible box (or a blank for a

collapsible box) made of corrugated plastic.

       15.     Each of the independent claims recites the following limitation relating to a

handle of the box: “said cut line having a downwardly concave U-shaped end portion on

both ends thereof on opposite ends of said hinge line” (claim 1); “a cut line through said

corrugated plastic to define a hinged flap in the side wall and said cut line has a

downwardly concave U-shaped end on both sides of the flap” (claim 8); “said cut line

configured as an upwardly open U-shape to define a depending flap, and the ends of said

U-shaped cut line include downwardly concave U-shaped end portions to provide

improved tear resistance” (claim 12).1

       16.     Exhibit D shows a box made and sold by Plaintiff. As may be seen, the

handle of the box does not include a “downwardly concave U-shaped end portion on both



1
  Figure 10a of the ‘484 patent (included as Exhibit C with element 76a circled) illustrates the
collapsible box claimed in the ‘484 patent including the limitations related to the handle.
Column 6, lines 23-36 of the ‘484 patent describes the handle as claimed: “FIG. 10a shows an
alternative hand hold 28a of this invention. In this embodiment, the cut line 30a that defines the
generally U-shaped flap 29a in each width wall 12a has downwardly concave U-shaped terminal
ends 76a on both ends of a hinge line 32a across the top of the flap. The terminal ends 76a each
has a width w of about ½ to 1 inch, and more preferably about ¾ inch, and a height h of about
1/8 to ¼ inch, and more preferably about 3/16 inch. The arcuate ends 76a may help to distribute
the lifting force that is applied to the hand hold and may thereby help reduce tearing of the
plastic material at the hand hold. The hinge line 32a may include weakening of the plastic
material such as by a perforated score through one of the facing sheets, or a crushed score, both
of which are described above.”
ends” of a “hinge line.” This may be seen even more clearly in Exhibit E, which shows

an enlarged view of the handle of Plaintiff’s box.

         17.    Exhibit F provides a schematic drawing of a blank used to make a box sold

by the Plaintiff. Again, it is clear that the handle (circled and identified on Exhibit F)

does not include a “downwardly concave U-shaped end portion on both ends” of a “hinge

line.”

         18.    All RSC (Regular Slotted Container)/HSC (Half Slotted Container) boxes

made and sold by MDI have handles substantially similar to the handle(s) shown in

Exhibits D-F.

         19.    Because the products made, used, and/or sold by Plaintiff do not include

each and every element of any claim of the ‘484 patent, Plaintiff does not infringe the

‘484 patent.

                                      Prayer for Relief

         WHEREFORE, Plaintiff prays for judgment against Defendants as follows:

         A.     A declaratory judgment that U.S. Patent No. 6,257,484 is not infringed,

contributorily infringed, or infringed through inducement by Plaintiff.

         B.     An order enjoining Defendants, and those in active concert or participation

with Defendants who receive actual notice thereof, from in any way charging or

threatening patent infringement against Plaintiff or any of Plaintiff’s current or

prospective customers, dealers, licensees, agents, servants, or employees based on the

patent-in-suit.
            C.   An order awarding Plaintiff its reasonable costs and attorneys’ fees, in

accordance with 35 U.S.C. § 285.

Dated: August 2, 2012                               WINTHROP & WEINSTINE, P.A.


                                                    s/Devan V. Padmanabhan
                                                    Devan V. Padmanabhan (No. 240126)
                                                    Paul J. Robbennolt (No. 240497)
                                                    Michelle Dawson (No. 388610)
                                                    225 South Sixth Street
                                                    Suite 3500
                                                    Minneapolis, Minnesota 55402
                                                    (612) 604-6400

                                                    Attorneys for Plaintiff
                                                    Minnesota Diversified Industries, Inc.




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