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Case: 1:19-cv-07140 Document #: 1 Filed: 10/30/19 Page 1 of 5 PageID #:1

IN THE UNITED STATES DISTRICT COURT


FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

HANDI-FOIL CORPORATION,
Plaintiff,

No.
v.
Jury Trial Demanded
DURABLE PACKAGING
INTERNATIONAL, INC.
Defendant.

COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff, Handi-Foil Corporation ("Handi-Foil"), complains as follows against Defendant

Durable Packaging International, Inc. ("Durable"):

Nature of the Action

1. This is a patent infringement action arising under the United States patent laws,

35 U.S.C. §§ 1 et seq., in which Handi-Foil asserts that its U.S. Design Patent D653,901 has

been and continues to be infringed by virtue of Defendant Durable's manufacture, use, offer for

sale, sale, or import in/into the United States of products such as its aluminum foil pans labeled

as Deluxe Smooth wall by DurableFoil Entrée Pan, UPC#0 74729 09664 4, said pans stamped

"DPI 9664" (hereinafter referred as "the accused Pan"), the accused pan being currently sold in

Stater Bros. Markets Stores. Handi-Foil is seeking an injunction prohibiting further sales of all

infringing products such as the accused Pan and asks for monetary damages and related

remedies.

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The Parties

2. Plaintiff Handi-Foil Corporation is an Illinois corporation, with its principal place

of business at 135 E. Hintz Rd., Wheeling, Illinois 60090 and is engaged in part in the business

of manufacturing, distributing, and selling disposable aluminum foil pans and containers and

other aluminum products for home and food service.

3. Defendant Durable is a corporation organized under the laws of the State of

Illinois with a principal place of business at 750 Northgate Parkway, Wheeling, Illinois 60090,

and is engaged in, among other things, the business of manufacturing, distributing, offering for

sale, selling and/or importing in/into the United States aluminum foil pans and the accused Pan.

Jurisdiction and Venue

4. Exclusive original jurisdiction over the subject matter of this action is conferred

on this Court under 28 U.S.C. §§ 1331 and 1338(a) because this action arises under the patent

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

5. Venue properly lies in the Northern District of Illinois, Eastern Division, under 28

U.S.C. §§ 1391(b) and (c), and 1400(b), in that that Defendant Durable has committed one or

more infringing acts in this District and the Defendant "resides" in this District in that it has a

regular and established place of business in this District. Venue is also appropriate because

Defendant Durable does business in this District, including the commission therein of one or

more infringing acts of offering for sale, selling, using infringing products, or providing service

and support to Defendant's customers in this District, which Defendant does through established

distribution channels including a regular and established place of business at 750 Northgate

Parkway, Wheeling, Illinois 60090.

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6. Defendant Durable has established contacts with this forum and purposefully

availed itself of this jurisdiction by committing and continuing to commit acts of patent

infringement, or actively inducing or contributing to others to commit acts of patent

infringement, in the Northern District of Illinois, Eastern Division.

The Defendant's Infringement of U.S. Design Patent D653,901

7. On February 14, 2012, United States Design Patent No. Des. 653,901 (the 'D901

Patent), entitled "PAN" was legally issued by the United States Patent and Trademark Office. A

copy of the 'D901 Patent is attached hereto as Exhibit A.

8. Plaintiff Handi-Foil is the assignee and owner of the entire right, title, and interest

in the 'D901 Patent with full rights to sue for the past and current infringement, and to enjoin

further infringement, of the 'D901 Patent.

9. Defendant Durable manufactures, uses, offers for sale, sells, and/or imports,

and/or has manufactured, used, offered for sale, sold, and/or imported in/into the United States

unauthorized products such as the accused Pan that are covered by the design claim of and hence

infringe Handi-Foil's 'D901 Patent. The accused Pan is depicted in Group Exhibit B attached

hereto.

10. Defendant Durable has infringed and is continuing to infringe the 'D901 Patent by

manufacturing, using, offering for sale, selling and/or importing in/into the United States

infringing products such as the accused Pan and will continue to infringe the 'D901 patent unless

and until enjoined by this Court.

11. Defendant Durable's actions constitute infringement of the 'D901 Patent under at

least 35 U.S.C. §§ 271(a) and (b). Such acts of infringement have been and are continuing to be

committed in this District, in Illinois, and elsewhere in the United States. Handi-Foil is entitled to

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compensatory damages from Defendant Durable under 35 U.S.C. § 284 in addition to other relief

requested below.

12. Defendant Durable has had knowledge of the 'D901 Patent at least as early as the

date of service of this Complaint, and, upon information and belief, before the service of this

Complaint through its business dealings with Stater Bros. Markets Stores. Defendant Durable has

therefore infringed the 'D901 Patent willfully and deliberately, thereby rendering this case

exceptional under 35 U.S.C. § 285.

13. By reason of the foregoing unlawful acts of Defendant Durable relative the '901

Patent, Handi-Foil has been seriously and irreparably damaged and, unless Defendant is

restrained from continuing such unlawful acts, Handi-Foil will continue to be so damaged.

Plaintiff Handi-Foil is without adequate remedy at law to compensate it for the injury caused by

Defendant's acts of infringement.

Demand for Jury Trial

Plaintiff, under Rule 38 of the Federal Rules of Civil Procedure, requests a trial by jury of

any issues so triable by right.

Relief Sought

WHEREFORE, Plaintiff Handi-Foil Corporation prays for judgment against Defendant

Durable as follows:

A. Adjudging United States Design Patent D653,901 valid, enforceable, and

infringed by Defendant Durable;

B. Entering preliminary and permanent injunctions against Defendant Durable, its

officers, agents, servants, employees, successors, assigns, parents, subsidiaries, affiliates, and all

others controlling, controlled by, affiliated with, in privity with, or in active concert or

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participation with it from infringing, contributing to the infringement of, or inducing

infringement of the 'D901 Patent, as well as all further and proper relief under 35 U.S.C. § 285;

C. Ordering the impounding and destruction of all products of Defendant Durable

that infringe the 'D901 Patent, including all molds used in connection with manufacturing of

such infringing product;

D. Awarding to Handi-Foil (and assessing against Defendant Durable) all damages

sustained by Handi-Foil by reason of Defendant's infringement, in an amount to be determined,

including, either (1) total profits from the infringer's sales under § 289, or (2) damages in the

form of the patentee's lost profits or a reasonable royalty under § 284, or (3) statutory damages

under § 289, whichever is greater, together with pre judgment and post judgment interest, such

damages to be trebled pursuant to 35 U.S.C. § 285 for willful infringement;

E. Awarding to Handi-Foil (and assessing against Defendant Durable) its costs,

disbursements, and attorneys' fees for this action and such other compensatory damages as this

Court may determine to be fair and appropriate pursuant to 35 U.S.C. § 285; and

F. Granting such other and further relief as this Court deems just and appropriate.

Dated: October 30, 2019.

Plaintiff Handi-Foil Corporation

By: /s/ James P. Hanrath


Attorney for Plaintiff

James P. Hanrath,
MUCH SHELIST P.C.
191 North Wacker Drive, Suite 1901
Chicago, Illinois 60606
Tel: (312) 521-2000
Fax: (312) 521-2100
jhanrath(ii)muchlaw.com

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EXHIBIT A
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1111011111111111
0111111q11
11,111111,1,1!1,1111111111
(12) United States Design Patent (10) Patent No.: US D653,901 S
Sarnoff et al. (45) Date of Patent: ** Feb. 14, 2012

(54) PAN D418,017 S • 12/1999 Henry D7/545


1)483,618 S • 12/2003 Watson D7/545
D489,567 S • 5/2004 Groll D71354
(75) Inventors: Norton Sarnoff, Northbrook, IL (US); D551,492 S • 9/2007 Schuler D7/354
Raj Patel, Zurich, IL (US) D581,203 S 6 11/2008 Simon et al. D7/354
(Continued)
(73) Assignee: Handi-Foil Corporation, Wheeling, IL
(US) Primary Examiner - Ricky Pham
(luk ) (74) Attorney, Agent, or Finn - Adam K. Scharoff
Term: 14 Years
(57) CLAIM
(21) Appl. No.: 29/377,952 The ornamental design for a pan, as shown and described.
DESCRIPTION
(22) Filed: Oct. 28, 2010
(51) LOC (9) CI. 07-02 FIG. 1 is a top side perspective view of a pan in accordance
(52) U.S. Cl. D7/354 with one embodiment of the invention shown;
(58) Field of Classification Search D7/323, FIG. 2 is a left side view of the pan from FIG. 1;
D7/329-332, 337, 339, 346-347, 350.1-350.4, FIG. 3 is a right side view of the pan from FIG. 1;
D7/354-363, 391, 393, 395, 402, 409, 538, FIG. 4 is a front side view of the pan from FIG. 1;
D7/542-545, 554.2, 552.2, 566, 570, 584-587, FIG. 5 is a back side view of the pan from FIG. 1;
D7/601-602, 610, 667; 99/279, 324-325, FIG. 6 is a top side view of the pan from FIG. 1;
99/330-332, 337-340, 369, 403-425, 444, FIG. 7 is a bottom side view of the pan from FIG. 1;
99/450; 126/25 A, 41 R, 275 R, 380.1, 390.1; FIG. 8 is a top side perspective view of a pan in accordance
206/501-505, 507-508; 219/400, 405, 435-442, with a second embodiment of the invention shown;
219/620-624, 725, 730-735, 754-755; 220/4.26, FIG. 9 is a left side view of the paa from FIG. 8;
220/485, 491, 573.1-573.5, 574, 607, 658, FIG. 10 is a right side view of the pan from FIG. 8;
220/676, 759, 771, 912; 229/110, 406; 249/61, FIG. 11 is a front side view of the pan from FIG. 8;
249/127, 163; 426/438, 441, 523 FIG. 12 is a back side view of the pan from FIG. 8;
See application file for complete search history. FIG. 13 is a top side view of the pan from FIG. 8; and,
FIG. 14 is a bottom side view of the pan from FIG. 8.
(56) References Cited The broken lines showing are for the purpose of illustrating
portions of the environmental structure and forms no part of
U.S. PATENT DOCUMENTS the claimed design.
D212,821 S • 11/1968 Benes D7/545
D417,367 S * 12/1999 Laib 1)7/602 1 Claim, 10 Drawing Sheets

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US D653,901 S
Page 2

U.S. PATENT DOCUMENTS D599,610 S * 9/2009 Logan D7/354


D599,623 S • 9/2009 de Groote D7/545
D581,204 S ' 11/2008 Simon et a]. D7/354 D631,300 S * 1/2011 Sarnaitgis D7/602
D583,615 S • 12/2008 Simon et al. D7/354
D588,859 S * 3/2009 Simon et a]. D7/354 • cited by examiner
Case: 1:19-cv-07140 Document #: 4 Filed: 10/30/19 Page 4 of 13 PageID #:9

U.S. Patent Feb. 14, 2012 Sheet 1 of 10 US D653,901 S


Case: 1:19-cv-07140 Document #: 4 Filed: 10/30/19 Page 5 of 13 PageID #:9

U.S. Patent Feb. 14, 2012 Sheet 2 of 10 US D653,901 S

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Case: 1:19-cv-07140 Document #: 4 Filed: 10/30/19 Page 6 of 13 PageID #:9

U.S. Patent Feb. 14, 2012 Sheet 3 of 10 US D653,901 S

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Case: 1:19-cv-07140 Document #: 4 Filed: 10/30/19 Page 7 of 13 PageID #:9

U.S. Patent Feb. 14, 2012 Sheet 4 of 10 US D653,901 S

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Case: 1:19-cv-07140 Document #: 4 Filed: 10/30/19 Page 8 of 13 PageID #:9

U.S. Patent Feb. 14, 2012 Sheet 5 of 10 US D653,901 S

FIG. 7
Case: 1:19-cv-07140 Document #: 4 Filed: 10/30/19 Page 9 of 13 PageID #:9

U.S. Patent Feb. 14, 2012 Sheet 6 of 10 US D653,901 S


Case: 1:19-cv-07140 Document #: 4 Filed: 10/30/19 Page 10 of 13 PageID #:9

U.S. Patent Feb. 14, 2012 Sheet 7 of 10 US D653,901 S

FIG.

FIG.10
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U.S. Patent Feb. 14, 2012 Sheet 8 of 10 US D653,901 S

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U.S. Patent Feb. 14, 2012 Sheet 9 of 10 US D653,901 S


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U.S. Patent Feb. 14, 2012 Sheet 10 of 10 US D653,901 S

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GROUP EXHIBIT B
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