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Bahnmaier v. Derrick

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					Case 4:11-cv-00286-GKF -FHM Document 2 Filed in USDC ND/OK on 05/10/11 Page 1 of 14




                                UNITED STATES DISTRICT COURT
                               NORTHERN DISTRICT OF OKLAHOMA

   (1) DONALD J. BAHNMAIER, an                       §
   individual,                                       §
                                                     §
                  Plaintiff,                         §
                                                     §
   v.                                                §        CASE NO. 11-CV-286-GKF-FHM
                                                     §
   (1) DERRICK CORPORATION, a New                    §
   York corporation,                                 §
                                                     §
                  Defendant.                         §

                         COMPLAINT FOR PATENT FALSE MARKING

          This action is not related to any previously filed case in this Court. Plaintiff Donald J.

   Bahnmaier (“Bahnmaier” or “Plaintiff”) alleges as follows:

                                      NATURE OF THE ACTION

          1.      This is an action for false patent marking in violation of 35 U.S.C. § 292 (“False

   Marking Statute”). Defendant Derrick Corporation (“Derrick”) manufactures, markets, and sells

   the PMD500 DX-A140 model vibratory screen (“PMD500 DX-A140”), which is marked with a

   label listing numerous patents. However, the configuration of the PMD500 DX-A140 falls

   outside of the claim limitations for several of the patents listed on the product. Plaintiff brings

   this action to recover the penalty provided by the False Marking Statute, one-half of which shall

   go to Plaintiff and the other half to the use of the United States.

                                                PARTIES

          2.      Plaintiff Donald J. Bahnmaier is an individual residing in Tulsa County,

   Oklahoma.

          3.      Defendant Derrick Corporation (“Derrick”) is a New York corporation with its

   principal place of business located at 590 Duke Road, Buffalo, New York 14225.
Case 4:11-cv-00286-GKF -FHM Document 2 Filed in USDC ND/OK on 05/10/11 Page 2 of 14




                                      JURISDICTION AND VENUE

           4.      This action arises under the patent laws of the United States, Title 35 of the

   United States Code. This Court has subject matter jurisdiction over this action pursuant to 28

   U.S.C. §§ 1331, 1338, and 1355.

           5.      Venue is proper in this district pursuant to 28 U.S.C. § 1391(c) because Derrick is

   subject to personal jurisdiction in this district. Derrick has sufficient contacts in Oklahoma and

   this district due to the business activities it conducts in this district, including the marketing and

   selling of its products in this district.

           6.      The False Marking Statute is a qui tam statute, which authorizes Plaintiff to

   pursue this action on behalf of the government, as well as himself. Plaintiff, as the statutory

   assignee to the United States, asserts that Derrick’s false marking has caused injury to the United

   States and its citizens. This injury is sovereign in that Derrick has violated a law of the United

   States that prohibits false marking. Derrick’s false marking has caused further injury by quelling

   competition with respect to similar products thereby causing harm to the economy of the United

   States. These injuries are likely to be redressed by the relief sought herein.

                     BACKGROUND OF DERRICK’S BUSINESS & PATENTS

           7.      Derrick describes itself as a designer and manufacturer of high frequency

   vibrating machines and screen surfaces used to screen a variety of wet or dry fine materials for

   mining, aggregate, chemical, plastics, wastewater and forest products industries.

           8.      Derrick is a sophisticated company experienced in applying for and obtaining

   patents.




                                                                           COMPLAINT FOR PATENT FALSE MARKING
                                                                                 CASE NO. 11-CV-286-GKF-FHM
                                                                                                       PAGE 2
Case 4:11-cv-00286-GKF -FHM Document 2 Filed in USDC ND/OK on 05/10/11 Page 3 of 14




          9.      Derrick has held itself out to be the owner of U.S. Patent No. 5,221,008, (the

   “‘008 Patent”) which is entitled “Vibratory Screening Machine and Non-Clogging Wear-

   Reducing Screen Assembly Therefor,” issued on June 22, 1993.

          10.     Derrick has held itself out to be the owner of U.S. Patent No. 6,000,556, (the

   “‘556 Patent”) which is entitled “Screen Assembly for Vibratory Screening Machine,” issued on

   December 14, 1999.

          11.     Derrick has held itself out to be the owner of U.S. Patent No. 6,161,700, (the

   “‘700 Patent”) which is entitled “Vibratory Screening Screen and Method of Fabrication

   Thereof,” issued on December 19, 2000.

                               PMD500 DX-A140 CONFIGURATION

          12.     The PMD500 DX-A140 includes a “plate.”

          13.     The PMD500 DX-A140 includes a single “supporting screen” or “bolting cloth.”

          14.     The PMD500 DX-A140 includes two “fine screening screens.”

          15.     The PMD500 DX-A140 does not include three “fine screening screens.”

          16.     Said “supporting screen” or “bolting cloth” of the PMD500 DX-A140 is

   “proximate” said “plate.”

          17.     Said “supporting screen” or “bolting cloth” of the PMD500 DX-A140 is

   “abutting” said “plate.”

          18.     Said “supporting screen” or “bolting cloth” of the PMD500 DX-A140 is

   “touching” said “plate.”

          19.     One of the two “fine screening screens” of the PMD500 DX-A140 is “proximate”

   said “supporting screen” or “bolting cloth.”




                                                                     COMPLAINT FOR PATENT FALSE MARKING
                                                                           CASE NO. 11-CV-286-GKF-FHM
                                                                                                 PAGE 3
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          20.     One of the two “fine screening screens” of the PMD500 DX-A140 is “abutting”

   said “supporting screen” or “bolting cloth.”

          21.     One of the two “fine screening screens” of the PMD500 DX-A140 is “touching”

   said “supporting screen” or “bolting cloth.”

          22.     Neither of said two “fine screening screens” of the PMD500 DX-A140 is

   “proximate” said “plate.”

          23.     Neither of said two “fine screening screens” of the PMD500 DX-A140 is

   “abutting” said “plate.”

          24.     Neither of said two “fine screening screens” of the PMD500 DX-A140 is

   “touching” said “plate.”

          25.     The PMD500 DX-A140 does not include “plate bands” of varying widths.

          26.     The PMD500 DX-A140 does not include a screen having the dimension of the

   openings in the warp direction that are longer than the dimension of the openings in the woof

   direction.

                                  DERRICK’S FALSE MARKING

          27.     Derrick manufactures, markets, and sells in the United States the PMD500 DX-

   A140 model vibratory screening screen (“PMD500 DX-A140”).

          28.     Affixed to each PMD500 DX-A140 is a label that states, in part, “Patented –

   and/or: 5,221,008 5,417,793 5,417,858 5,417,859 5,636,749 5,720,881 5,783,077 5,868,929

   5,876,552 5,944,993 5,958,236 6,000,556 6,053,332 6,161,700 6,340,089 6,564,947 6,669,027

   680385 680386 690096 693086 2137356 2152602 2152610.”

          29.     Derrick chose, of its own volition, to affix the above-referenced label to the

   PMD500 DX-A140.



                                                                     COMPLAINT FOR PATENT FALSE MARKING
                                                                           CASE NO. 11-CV-286-GKF-FHM
                                                                                                 PAGE 4
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             30.   Derrick attempted to provide notice pursuant to and obtain the rights associated

   with 35 U.S.C. § 287 by affixing the above-referenced label to the PMD500 DX-A140.

             31.   The label affixed to each PMD500 DX-A140 that states, in part, “Patented []

   5,221,008” refers to the ‘008 Patent.

             32.   Independent claims 1, 32, and 40 of the ‘008 Patent require three fine screening

   screens.

             33.   Because the PMD500 DX-A140 contains only two fine screening screens, the

   PMD500 DX-A140 does not meet the claim limitations of independent claims 1, 32, or 40 of the

   ‘008 Patent.

             34.   Independent claim 33 of the ‘008 Patent requires two fine screening screens, one

   “located proximate said plate.”

             35.   Because the PMD500 DX-A140 contains a “supporting screen” or “bolting cloth”

   “located proximate said plate” and not a “fine screening screen located proximate said plate,” the

   PMD500 DX-A140 does not meet the claim limitations of independent claim 33 of the ‘008

   Patent.

             36.   Because the PMD500 DX-A140 does not meet the claim limitations of the ‘008

   Patent, the PMD500 DX-A140 is an unpatented article under 35 U.S.C. § 292 with respect to the

   ‘008 Patent.

             37.   Derrick is the assignee of the ‘008 Patent.

             38.   Derrick has knowledge of all claims of the ‘008 Patent.

             39.   Derrick understands all claims of the ‘008 Patent.

             40.   Derrick has knowledge of the structure of PMD500 DX-A140 model vibratory

   screening screens.



                                                                        COMPLAINT FOR PATENT FALSE MARKING
                                                                              CASE NO. 11-CV-286-GKF-FHM
                                                                                                    PAGE 5
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             41.   Derrick understands the structure of PMD500 DX-A140 model vibratory

   screening screens.

             42.   The PMD500 DX-A140 model vibratory screening screens are marked with the

   ‘008 Patent.

             43.   Derrick knows that the PMD500 DX-A140 model vibratory screening screens are

   marked with the ‘008 Patent.

             44.   Derrick chose, of its own volition, to mark the PMD500 DX-A140 with the ‘008

   Patent.

             45.   Derrick attempted to provide notice pursuant to and obtain the rights associated

   with 35 U.S.C. § 287 by marking the PMD500 DX-A140 with the ‘008 Patent.

             46.   No reasonable person would compare the PMD500 DX-A140 model vibratory

   screening screens with the ‘008 Patent and conclude that the PMD500 DX-A140 model vibratory

   screening screens are properly marked with respect to the ‘008 Patent.

             47.   Upon information and belief, Derrick does not and cannot have a reasonable

   belief that the PMD500 DX-A140 is properly marked with respect to the ‘008 Patent.

             48.   Upon information and belief, Derrick knows, and at all times has known, that the

   PMD500 DX-A140 is not properly marked with respect to the ‘008 Patent.

             49.   The label affixed to each PMD500 DX-A140 that states, in part, “Patented []

   6,000,556” refers to the ‘556 Patent.

             50.   Independent claims 1 and 19 of the ‘556 Patent require plate bands of varying

   width.




                                                                       COMPLAINT FOR PATENT FALSE MARKING
                                                                             CASE NO. 11-CV-286-GKF-FHM
                                                                                                   PAGE 6
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             51.   Because the PMD500 DX-A140 does not contain plate bands of varying width,

   the PMD500 DX-A140 does not meet the claim limitations of independent claims 1 or 19 of the

   ‘556 Patent.

             52.   Because the PMD500 DX-A140 does not meet the claim limitations of the ‘556

   Patent, the PMD500 DX-A140 is an unpatented article under 35 U.S.C. § 292 with respect to the

   ‘556 Patent.

             53.   Derrick is the assignee of the ‘556 Patent.

             54.   Derrick has knowledge of all claims of the ‘556 Patent.

             55.   Derrick understands all claims of the ‘556 Patent.

             56.   Derrick has knowledge of the structure of PMD500 DX-A140 model vibratory

   screening screens.

             57.   Derrick understands the structure of PMD500 DX-A140 model vibratory

   screening screens.

             58.   The PMD500 DX-A140 model vibratory screening screens are marked with the

   ‘556 Patent.

             59.   Derrick knows that the PMD500 DX-A140 model vibratory screening screens are

   marked with the ‘556 Patent.

             60.   Derrick chose, of its own volition, to mark the PMD500 DX-A140 with the ‘556

   Patent.

             61.   Derrick attempted to provide notice pursuant to and obtain the rights associated

   with 35 U.S.C. § 287 by marking the PMD500 DX-A140 with the ‘556 Patent.




                                                                        COMPLAINT FOR PATENT FALSE MARKING
                                                                              CASE NO. 11-CV-286-GKF-FHM
                                                                                                    PAGE 7
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          62.     No reasonable person would compare the PMD500 DX-A140 model vibratory

   screening screens with the ‘556 Patent and conclude that the PMD500 DX-A140 model vibratory

   screening screens are properly marked with respect to the ‘556 Patent.

          63.     Upon information and belief, Derrick does not and cannot have a reasonable

   belief that the PMD500 DX-A140 is properly marked with respect to the ‘556 Patent.

          64.     Upon information and belief, Derrick knows, and at all times has known, that the

   PMD500 DX-A140 is not properly marked with respect to the ‘556 Patent.

          65.     The label affixed to each PMD500 DX-A140 that states, in part, “Patented []

   6,161,700” refers to the ‘700 Patent.

          66.     Independent claim 1 of the ‘700 Patent requires a screening screen having a

   dimension of the openings in the warp direction that are longer than the dimension of the

   openings in the woof direction.

          67.     Because the PMD500 DX-A140 does not include a screening screen having the

   dimension of the openings in the warp direction longer than the dimension of the openings in the

   woof direction, the PMD500 DX-A140 does not meet the claim limitations of independent claim

   1 of the ‘700 Patent.

          68.     Because the PMD500 DX-A140 does not meet the claim limitations of the ‘700

   Patent, the PMD500 DX-A140 is an unpatented article under 35 U.S.C. § 292 with respect to the

   ‘700 Patent.

          69.     Derrick is the assignee of the ‘700 Patent.

          70.     Derrick has knowledge of all claims of the ‘700 Patent.

          71.     Derrick understands all claims of the ‘700 Patent.




                                                                       COMPLAINT FOR PATENT FALSE MARKING
                                                                             CASE NO. 11-CV-286-GKF-FHM
                                                                                                   PAGE 8
Case 4:11-cv-00286-GKF -FHM Document 2 Filed in USDC ND/OK on 05/10/11 Page 9 of 14




             72.   Derrick has knowledge of the structure of PMD500 DX-A140 model vibratory

   screening screens.

             73.   Derrick understands the structure of PMD500 DX-A140 model vibratory

   screening screens.

             74.   The PMD500 DX-A140 model vibratory screening screens are marked with the

   ‘700 Patent.

             75.   Derrick knows that the PMD500 DX-A140 model vibratory screening screens are

   marked with the ‘700 Patent.

             76.   Derrick chose, of its own volition, to mark the PMD500 DX-A140 with the ‘700

   Patent.

             77.   Derrick attempted to provide notice pursuant to and obtain the rights associated

   with 35 U.S.C. § 287 by marking the PMD500 DX-A140 with the ‘700 Patent.

             78.   No reasonable person would compare the PMD500 DX-A140 model vibratory

   screening screens with the ‘700 Patent and conclude that the PMD500 DX-A140 model vibratory

   screening screens are properly marked with respect to the ‘700 Patent.

             79.   Upon information and belief, Derrick does not and cannot have a reasonable

   belief that the PMD500 DX-A140 is properly marked with respect to the ‘700 Patent.

             80.   Upon information and belief, Derrick knows, and at all times has known, that the

   PMD500 DX-A140 is not properly marked with respect to the ‘700 Patent.

             81.   With respect to the patents in suit, “supporting screen” is synonymous with

   “bolting cloth.”

             82.   With respect to the patents in suit, “coarse supporting screen” is synonymous with

   “bolting cloth.”



                                                                        COMPLAINT FOR PATENT FALSE MARKING
                                                                              CASE NO. 11-CV-286-GKF-FHM
                                                                                                    PAGE 9
Case 4:11-cv-00286-GKF -FHM Document 2 Filed in USDC ND/OK on 05/10/11 Page 10 of 14




           83.     With respect to the patents in suit, “coarse supporting screen” is synonymous with

    “supporting screen.”

           84.     With respect to the patents in suit, “supporting screen” is not synonymous with

    “fine screening screen.”

           85.     With respect to the patents in suit, “coarse supporting screen” is not synonymous

    with “fine screening screen.”

           86.     With respect to the patents in suit, “bolting cloth” is not synonymous with “fine

    screening screen.”

           87.     With respect to the patents in suit, “proximate” means “abutting.”

           88.     With respect to the patents in suit, “proximate” means “touching.”

                                               COUNT I
                               (False Marking: U.S. Patent No. 5,221,008)

           89.     Plaintiff re-alleges and incorporates by reference each and every allegation set

    forth in the preceding paragraphs as though alleged in full herein.

           90.     The PMD500 DX-A140 model vibratory screening screens manufactured,

    marketed, and sold by Derrick are unpatented articles under 35 U.S.C. § 292 with respect to the

    ‘008 Patent.

           91.     The PMD500 DX-A140 is not properly marked with respect to the ‘008 Patent.

           92.     Upon information and belief, Derrick knows the PMD500 DX-A140 is not

    properly marked with respect to the ‘008 Patent.

           93.     Upon information and belief, Derrick does not and cannot have a reasonable

    belief that the PMD500 DX-A140 is properly marked with respect to the ‘008 Patent. Therefore,

    Derrick has falsely marked the PMD500 DX-A140 with the ‘008 Patent with the intent of

    deceiving the public.


                                                                          COMPLAINT FOR PATENT FALSE MARKING
                                                                                CASE NO. 11-CV-286-GKF-FHM
                                                                                                      PAGE 10
Case 4:11-cv-00286-GKF -FHM Document 2 Filed in USDC ND/OK on 05/10/11 Page 11 of 14




           94.     Derrick has committed “offenses” as defined by and in violation of 35 U.S.C. §

    292 for every PMD500 DX-A140 it has falsely marked with the ‘008 Patent.

           95.     Derrick should be fined for every offense, one-half of which shall go to Plaintiff,

    and the other half to the use of the United States.

                                               COUNT II
                                (False Marking: U.S. Patent No. 6,000,556)

           96.     Plaintiff re-alleges and incorporates by reference each and every allegation set

    forth in the preceding paragraphs as though alleged in full herein.

           97.     The PMD500 DX-A140 model vibratory screening screens manufactured,

    marketed, and sold by Derrick are unpatented articles under 35 U.S.C. § 292 with respect to the

    ‘556 Patent.

           98.     The PMD500 DX-A140 is not properly marked with respect to the ‘556 Patent.

           99.     Upon information and belief, Derrick knows the PMD500 DX-A140 is not

    properly marked with respect to the ‘556 Patent.

           100.    Upon information and belief, Derrick does not and cannot have a reasonable

    belief that the PMD500 DX-A140 is properly marked with respect to the ‘556 Patent. Therefore,

    Derrick has falsely marked the PMD500 DX-A140 with the ‘556 Patent with the intent of

    deceiving the public.

           101.    Derrick has committed “offenses” as defined by and in violation of 35 U.S.C. §

    292 for every PMD500 DX-A140 it has falsely marked with the ‘556 Patent.

           102.    Derrick should be fined for every offense, one-half of which shall go to Plaintiff,

    and the other half to the use of the United States.

                                              COUNT III
                                (False Marking: U.S. Patent No. 6,161,700)



                                                                          COMPLAINT FOR PATENT FALSE MARKING
                                                                                CASE NO. 11-CV-286-GKF-FHM
                                                                                                      PAGE 11
Case 4:11-cv-00286-GKF -FHM Document 2 Filed in USDC ND/OK on 05/10/11 Page 12 of 14




           103.    Plaintiff re-alleges and incorporates by reference each and every allegation set

    forth in the preceding paragraphs as though alleged in full herein.

           104.    The PMD500 DX-A140 model vibratory screening screens manufactured,

    marketed, and sold by Derrick are unpatented articles under 35 U.S.C. § 292 with respect to the

    ‘700 Patent.

           105.    The PMD500 DX-A140 is not properly marked with respect to the ‘700 Patent.

           106.    Upon information and belief, Derrick knows the PMD500 DX-A140 is not

    properly marked with respect to the ‘700 Patent.

           107.    Upon information and belief, Derrick does not and cannot have a reasonable

    belief that the PMD500 DX-A140 is properly marked with respect to the ‘700 Patent. Therefore,

    Derrick has falsely marked the PMD500 DX-A140 with the ‘700 Patent with the intent of

    deceiving the public.

           108.    Derrick has committed “offenses” as defined by and in violation of 35 U.S.C. §

    292 for every PMD500 DX-A140 it has falsely marked with the ‘700 Patent.

           109.    Derrick should be fined for every offense, one-half of which shall go to Plaintiff,

    and the other half to the use of the United States.

                                            ATTORNEY FEES

           110.    Plaintiff seeks attorney fees and costs for bringing this action. Plaintiff is entitled

    to attorney fees pursuant to 38 U.S.C. § 285 because this is an exceptional case. Plaintiff is

    further entitled to fees and costs because this is a qui tam action.

                                         PRAYER FOR RELIEF

           WHEREFORE, Plaintiff respectfully requests that judgment be entered in its favor and

    prays that the court grant the following relief:



                                                                           COMPLAINT FOR PATENT FALSE MARKING
                                                                                 CASE NO. 11-CV-286-GKF-FHM
                                                                                                       PAGE 12
Case 4:11-cv-00286-GKF -FHM Document 2 Filed in USDC ND/OK on 05/10/11 Page 13 of 14




           A.      Fining Derrick $500 for each article falsely marked in violation of 35 U.S.C. §

    292(a), and awarding one half of the fine to the United States and one half of the fine to Plaintiff

    in accordance with 35 U.S.C. § 292(b);

           B.      An order declaring that Plaintiff is the prevailing party and that this is an

    exceptional case under 35 U.S.C. § 285 and awarding Plaintiff his reasonable attorney fees,

    expenses, and costs in this action; and

           C.      Such other and further relief as this Court may deem just and proper.

    May 10, 2011                                       Respectfully submitted,



                                                       ______________________________
                                                       Cornelius P. Dukelow
                                                       Oklahoma Bar No. 19086
                                                       ABINGTON COLE
                                                       320 South Boston Avenue, Suite 1705
                                                       Tulsa, Oklahoma 74103
                                                       918.588.3400 (telephone & facsimile)
                                                       cdukelow@abingtonlaw.com
                                                       www.abingtonlaw.com

                                                       and,

                                                       William B. Federman
                                                       Oklahoma Bar No. 2853
                                                       FEDERMAN & SHERWOOD
                                                       10205 N. Pennsylvania Avenue
                                                       Oklahoma City, Oklahoma 73120
                                                       405.235.1560 (telephone)
                                                       405.239.2112 (facsimile)
                                                       wbf@federmanlaw.com
                                                       www.federmanlaw.com

                                                       and,

                                                       Jennifer S. Montagna
                                                       Oklahoma Bar No. 21914
                                                       FEDERMAN & SHERWOOD
                                                       10205 N. Pennsylvania Avenue


                                                                          COMPLAINT FOR PATENT FALSE MARKING
                                                                                CASE NO. 11-CV-286-GKF-FHM
                                                                                                      PAGE 13
Case 4:11-cv-00286-GKF -FHM Document 2 Filed in USDC ND/OK on 05/10/11 Page 14 of 14




                                          Oklahoma City, Oklahoma 73120
                                          405.235.1560 (telephone)
                                          405.239.2112 (facsimile)
                                          jsm@federmanlaw.com
                                          www.federmanlaw.com

                                          Counsel to Plaintiff,
                                          Donald J. Bahnmaier




                                                            COMPLAINT FOR PATENT FALSE MARKING
                                                                  CASE NO. 11-CV-286-GKF-FHM
                                                                                        PAGE 14

				
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