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UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF OHIO
EASTERN DIVISION

D&L Properties South, Inc. ) CASE NO. 4:21-cv-619

a Florida corporation, )
)
Plaintiff ) JUDGE
)
vs. )
)
BERK ENTERPRISES, INC., )
an Ohio corporation, ) COMPLAINT
)
and ) [Jury Demand Endorsed Hereon]
)
M.H. ENTERPRISES )
INTERNATIONAL, INC. d/b/a )
TERIYAKI MADNESS, )
a Colorado corporation, )
)
Defendants )

Plaintiff D&L Properties South, Inc. (“D&L South”) alleges as follows against

Defendants Berk Enterprises, Inc. (“Berk”) and M.H. Enterprises International, Inc. d/b/a

Teriyaki Madness (“TMad”), (collectively, “Defendants”).

NATURE OF THE ACTION

1. D&L South brings this civil action for patent infringement under the Patent Laws

of the United States, 35 U.S.C. §§ 1 et seq. and for such other relief as the Court deems just and

proper.

2. This action arises from Berk and TMad’s infringement of D&L South’s U.S.

Patent No. D601,389 (“the ‘389 Patent”), titled “Combination Chopstick Utensil.” The ‘389

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Patent was filed on June 2, 2009 and issued on October 6, 2009. A copy of the ‘389 Patent is

attached as Exhibit A.

THE PARTIES

3. D&L South is a Florida corporation having a principal place of business at 310

Marion Road, Princeton, KY 42445.

4. Berk is an Ohio corporation with its principal place of business at 1554 Thomas

Rd. S.E., Warren, OH 44484.

5. TMad, is a Colorado corporation with its principal place of business at 950 S.

Cherry St., Suite 850, Denver, CO 80246. Upon information and belief, TMad has a Teriyaki

Madness restaurant at 833 Polaris Pkwy, Westerville, OH 43082 (See

https://order.teriyakimadness.com/menu/teriyaki-madness-westerville).

JURISDICTION AND VENUE

6. This Court has original subject matter jurisdiction over claims concerning patent

infringement pursuant to 28 U.S.C. §§ 1331 and 1338(a) and 35 U.S.C. §§ 271 and 281.

7. This Court has personal jurisdiction over Defendants pursuant to the provisions of

the Ohio Long Arm Statute, O.R.C. § 2307.382, and the laws of the United States.

8. Defendants have sold and offered for sale in Ohio and this District products that

infringe the ‘389 Patent. Berk is an Ohio corporation with a principal place of business in

Warren, Ohio. Upon information and belief, Berk has imported, offered for sale and sold the

infringing products in Ohio and this District. Upon information and belief, TMad purchases the

infringing products from Berk, and then uses and sells the products in its restaurants like the one

in Westerville, Ohio. Upon information and belief, Defendants have derived substantial revenue

and monies from the sale and offer for sale of the infringing product in Ohio and this District.

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The infringing products are purposefully sold in Ohio and this District through the stream of

commerce and Defendants’ distribution networks. Defendants purposefully placed the infringing

products into the stream of commerce with the intent of the infringing products being sold and

offered for sale in Ohio and this District.

9. Upon information and belief, each Defendant regularly does and solicits business,

engages in other persistent courses of conduct, and derives substantial revenue from goods used

or consumed or services rendered in Ohio. Further, upon information and belief, D&L South’s

claims arise out of Defendants (1) transacting business in Ohio, (2) causing tortious injury by

acts in Ohio, and (3) causing tortious injury in Ohio. Defendants can reasonably be expected to

be hailed into court in Ohio.

10. This Court has specific personal jurisdiction over each of the Defendants because

each has purposefully directed its activities to the state of Ohio, and this action is based upon

and/or arises out of those activities and contacts.

11. Defendants did not contest personal jurisdiction in a previous case between the

parties related to infringement of the ‘389 Patent filed in the Northern District of Ohio. See

Chork Inc., v. Berk Enterprises, Inc. et al., Case No. 4:20-cv-02631-BYP, Docket Entry #41 and

#42.

12. Venue is proper in this District pursuant to 28 U.S.C. §§ 1391 and 1400(b). Berk

is an Ohio corporation. Upon information and belief, TMad has committed acts of infringement

in Ohio and maintains an established place of business here.

13. Berk and TMad did not contest venue in a previous case between the parties

related to infringement of the ‘389 Patent filed in the Northern District of Ohio. See Chork Inc.,

v. Berk Enterprises, Inc. et al., CASE NO. 4:20-cv-02631-BYP, Docket Entry #41 and #42.

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GENERAL ALLEGATIONS

BACKGROUND

14. D&L Properties, Inc. was incorporated by Dann T. Hughes in Kentucky on July

12, 1995. A copy of the Articles of Incorporation is attached as Exhibit B.

15. Jordan M. Brown is the sole inventor of the ‘389 Patent.

16. Jordan M. Brown assigned all rights to the ‘389 Patent to Brown Innovation

Group, Inc. (“BIG”) on January 18, 2010 in a patent assignment recorded with the United States

Patent and Trademark Office (“USPTO”) on January 19, 2010. A copy of this assignment is

attached as Exhibit C.

17. To secure a line of credit, BIG provided Hughes Acceptance Corporation a

security interest in the ‘389 Patent on December 1, 2010. This Line of Credit Addendum is

attached as Exhibit D.

18. D&L Properties, Inc. changed its name to D&L South through the filing of a

Florida Certificate of Domestication on September 16, 2013. Pursuant to Fla. Stat. § 607.1801,

the existence of D&L South is deemed to have commenced on July 12, 1995, or the date D&L

Properties, Inc. commenced existence in Kentucky, the jurisdiction where the corporation was

first formed. See ¶ 14. A copy of D&L South’s Articles of Incorporation is attached as Exhibit

E. A copy of the Certificate of Domestication is attached as Exhibit F.

19. On October 23, 2013, D&L South filed a Certificate of Authority to transact

business in Kentucky. A copy of the Certificate of Authority is attached as Exhibit G.

20. On July 3, 2014, D&L Properties, Inc. (now D&L South), filed a UCC-1

Financing Statement in Utah and obtained a security interest in the ‘389 Patent. A copy of the

UCC-1 Financing Statement is attached as Exhibit H.

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21. On September 10, 2014, D&L Properties, Inc. (now D&L South) purchased the

‘389 Patent. A copy of the Bill of Sale is attached as Exhibit I.

22. As of September 10, 2014, D&L South has been, and still is, the owner of all

rights, title and interest in the ‘389 Patent, including the right to exclude Defendants from

making, using, selling, offering to sell, or importing in this District and elsewhere into the United

States the patented designs of the ‘389 Patent. See Bill of Sale, Exhibit I.

23. The Chork, Inc. (“The Chork”) was incorporated in Florida on June 15, 2017. The

Chork’s principal place of business is 310 Marion Rd., Princeton, KY 42445. The Chork and

D&L South have common ownership.

24. The Chork imports, distributes, and sells a combination chopstick utensil

embodied in the ‘389 Patent (the “Chork Product”). The Chork Product can be found at the

following website: https://thechork.com/. A photograph of the Chork Product is found below:

25. The Chork marks its containers for the Chork Product with U.S. Patent No.

D601,389.

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DEFENDANTS’ INFRINGING ACTS

26. In August and September of 2017, The Chork had discussions with Berk and

TMad about The Chork manufacturing the Chork Product for distribution to Berk and TMad.

Further, The Chork discussed with TMad the possibility of TMad purchasing The Chork.

Ultimately, no agreement was reached between the parties.

27. In September 2017, The Chork discovered that Berk had manufactured infringing

utensils.

28. On or about September 28, 2017, The Chork called Berk to request that Berk

cease and desist manufacturing the infringing utensils.

29. Upon information and belief, Berk had notice of the ‘389 Patent at least as early

as September 28, 2017.

30. Upon information and belief, TMad had notice of the ‘389 Patent at least as early

as September 28, 2017.

31. On October 4, 2017, Berk agreed to destroy the temporary mold, send it to The

Chork, and not proceed with a stocking agreement.

32. On August 14, 2020, The Chork discovered that TMad was utilizing a utensil

identical or substantially similar to the Chork Product, which TMad called the “fork-chop/left-

handed fork-chop” (the “Infringing Product”). This infringement was discovered on TMad’s

Instagram and Twitter accounts. Screen shots from these social media accounts are attached as

Exhibit J.

33. TMad was recognized by QSR Magazine and Food Service Packaging Institute

and received a First Place “Wow Factor” Award for its use of the Infringing Product.

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34. Upon information and belief, Berk initially manufactured the Infringing Product

and then sold the Infringing Product to TMad and others.

35. Below are comparisons between exemplary figures of the ‘389 Patent and the

Infringing Product:

Figure from ‘389 Patent Infringing Product

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Figure from ‘389 Patent Infringing Product

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Figure from ‘389 Patent Infringing Product

36. As evidenced above, the design of the Infringing Product is the same or

substantially the same as the patented design of the ‘389 Patent. The designs are so similar that

an ordinary observer, giving such attention as a purchaser usually gives, would be so deceived by

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the substantial similarity between the designs so as to be induced to purchase the Infringing

Product believing it to be substantially the same as the design protected by the ‘389 Patent.

37. TMad has used the Infringing Product in its restaurant in Bend, Oregon. Upon

information and belief, TMad has utilized the Infringing Product at other TMad locations,

including its restaurant in Westerville, Ohio.

38. Upon information and belief, TMad authorized manufacture of the Infringing

Product, as evidenced at least by the words “Teriyaki Madness” printed on it. A photo depicting

“Teriyaki Madness” printed on the Infringing Product is attached as Exhibit K.

39. On August 28, 2020, legal counsel sent a cease and desist letter to Berk related to

the ‘389 Patent. See attached Exhibit L.

40. On September 30, 2020, legal counsel sent a cease and desist letter to TMad

related to the ‘389 Patent. A copy of this letter is attached as Exhibit M.

41. Additionally, upon information and belief, Berk and TMad have each acted in an

objectively reckless manner with respect to D&L South’s patent rights.

42. Upon information and belief, Berk made, imported, sold, and offered for sale the

Infringing Product knowing that it was highly likely that its acts would constitute infringement

of a valid patent.

43. Upon information and belief, TMad authorized the production of, purchased,

used, sold, and offered for sale the Infringing Product.

44. Upon information and belief, Berk and TMad knew or should have known, that

their actions were highly likely to result in the infringement of a valid patent.

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45. D&L South has not granted a license or any other authorization to Berk or TMad

to make, use, offer for sale, sell or import products that embody the design patented in the ‘389

Patent and which is proprietary to D&L South, particularly in relation to the Infringing Product.

CAUSE OF ACTION

(PATENT INFRINGEMENT OF THE ‘389 PATENT UNDER 35 U.S.C. § 271)

46. D&L South incorporates herein by reference each and every statement and

allegation set forth in the foregoing paragraphs 1-45 of this Complaint as if set forth fully herein.

47. Berk and TMad have infringed and continue to infringe the ‘389 Patent by

making (or having made), importing, using, offering to sell, or selling in the United States,

including the State of Ohio and within this District, a product that infringes the ornamental

design covered by the ‘389 Patent in violation of 35 U.S.C. § 271, including but not limited to

the Infringing Product.

48. Berk and TMad infringe the ‘389 Patent because, inter alia, in the eye of an

ordinary observer, giving such attention as a purchaser usually gives, the design of the ‘389

Patent and the products imported, sold, and offered for sale by Berk and TMad, including but not

limited to the Infringing Product, are substantially the same, wherein the resemblance being such

as to deceive such an ordinary observer, inducing him to purchase one supposing it to be the

other.

49. Defendants have actively induced others to infringe the ‘389 Patent. Upon

information and belief, Defendants knew that the use of the Infringing Product by its customers

would directly infringe the ‘389 Patent, and thus had specific intent to induce infringement of the

‘389 Patent.

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50. Berk and Tmad’s acts of infringement of the ‘389 Patent were undertaken without

authority, permission, or license from D&L South. Berk and TMad’s infringing activities violate

35 U.S.C. § 271.

51. Berk and TMad’s infringement has damaged and continues to damage and injure

D&L South. The injury to D&L South is irreparable and will continue unless and until Berk and

TMad are enjoined from further infringement.

52. D&L South is entitled to a complete accounting of all revenue and profits derived

by Berk and TMad from the unlawful conduct alleged herein, including without limitation, Berk

and TMad’s total profit pursuant to 35 U.S.C. § 289.

53. D&L South is entitled to Berk and TMad’s total profits derived from the unlawful

conduct alleged herein pursuant to 35 U.S.C. § 289.

54. Berk and TMad’s infringement has been, and is, willful, egregious, and in

conscious disregard of D&L South’s rights, thus entitling D&L South to a trebling of damages

pursuant to 35 U.S.C. § 284.

55. Berk and TMad’s infringing activities make this an exceptional case entitling

D&L South to the recovery of its reasonable attorneys’ fees under 35 U.S.C. § 285 or other

applicable law.

56. D&L South is entitled to a permanent injunction preventing Berk and TMad from

further infringing the ‘389 Patent.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff D&L South prays for:

A. A judgment that Berk has infringed the ‘389 Patent;

B. A judgment that TMad has infringed the ‘389 Patent;

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C. A permanent injunction enjoining Berk and TMad, its respective officers,

directors, agents, and employees and all those in concert or participation with it who receive

notice of judgment by personal service or otherwise, from making, importing, using, selling,

and offering to sell infringing products practicing the ‘389 Patent and from otherwise

infringing, contributing to infringement of, and actively inducing infringement of the ‘389

Patent.

D. A judgment and order that Berk and TMad deliver to D&L South for destruction

all plastic house-wares, moldings and production materials, previously manufactured and

ready-for-sale infringing products, packing and labeling materials, sales literature, customer

literature, and other trade pieces used in the infringement of the ‘389 Patent.

E. A judgment and order that Berk and TMad make an accounting to D&L South

and pay over to D&L South:

1. the extent of Berk and TMad’s total profit and revenue realized and

derived from its infringement of the ‘389 Patent pursuant to 35 U.S.C. § 289;

2. actual damages in an amount not less than a reasonable royalty for Berk

and TMad’s infringement pursuant to 35 U.S.C. § 284;

3. treble damages for Berk and TMad’s wanton, willful, and deliberate

infringement of the ‘389 Patent pursuant to 35 U.S.C. § 284;

F. An award of costs of this action together with D&L South’s reasonable

attorneys’ fees for this case being exceptional pursuant to 35 U.S.C. § 285;

G. An award of pre-judgment and post-judgment interest on its damages, as

allowed by law; and

H. Such other and further relief as this Court may deem just, equitable, and proper.

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JURY DEMAND

Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff D&L

Properties South, Inc. hereby demands a trial by jury of all issues so triable.

/s/ Mark W. McDougall

Angilee K. Dakic, (Utah #12722)

(pro hac vice motion forthcoming)
PEARSON | BUTLER
1802 South Jordan Parkway, Suite 200
South Jordan, Utah 84095
Tel: (801) 495-4104
angilee@pearsonbutler.com

and

Mark W. McDougall (Ohio Bar No. 0080698)

Dustin D. Likens (Ohio Bar No. 0097891)
CALFEE, HALTER & GRISWOLD LLP
The Calfee Building
Cleveland, Ohio 44114-1607
Telephone: (216) 622-8200
Facsimile: (216) 241-0816
mmcdougall@calfee.com
dlikens@calfee.com

Attorneys for Plaintiff, D&L Properties South,

Inc.

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