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ZACHERY MICHAEL CRAIN, Plaintiff, v. ZACHARY MICHAEL DEBARTOLO, Defendant.
Case No. ____________________
COMPLAINT FOR CORRECTION OF INVENTORSHIP UNDER 35 U.S.C. § 256 Plaintiff Zachery Michael Crain (“Crain”), pursuant to 35 U.S.C. § 256, makes this Complaint against Defendant Zachary Michael DeBartolo (“DeBartolo”), as follows: NATURE OF THE ACTION 1. This is an action for correction of inventorship under 35 U.S.C. § 256 with respect
to United States Patent No. 8,104,636 (“the ’636 patent”). A true and correct copy of the ’636 patent is attached hereto as Exhibit A. 2. The ’636 patent, entitled “Insulating Knitted Beverage Jacket Cozy,” issued on
January 31, 2012 from U.S. Patent Application Ser. No. 12/554,857 (“the ’857 Application”) filed September 4, 2009, and names Crain and DeBartolo as the inventors. There are no assignees of the ’636 patent. 3. DeBartolo is not a joint inventor of any invention claimed in the ’636 patent, but
through error was named as an inventor along with Crain.
Crain requests that the Court order the Director of the United States Patent and
Trademark Office (“USPTO”), or a party acting in that capacity, to correct the ’636 patent to remove DeBartolo as a joint inventor. THE PARTIES 5. Plaintiff Zachery Michael Crain is an individual and resident of the State of North
Carolina residing in Wilmington, North Carolina. 6. Upon information and belief, Defendant Zachary Michael DeBartolo is an
individual and resident of the State of North Carolina residing in Hillsborough, North Carolina. JURISDICTION AND VENUE 7. This action arises under the patent laws of the United States, 35 U.S.C. § 101 et
seq., and specifically under 35 U.S.C. § 256. This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338. 8. Personal jurisdiction and venue are proper in this District pursuant to 28 U.S.C.
§ 1391(b) because a substantial part of the events giving rise to the claims in this action occurred in this District. In addition, venue of this action is properly found in this District pursuant to 28 U.S.C. § 1391(b) and (c) because Defendant DeBartolo is subject to personal jurisdiction in this District. FACTUAL BACKGROUND 9. The invention(s) described in the ’636 patent relate to a novel container jacket
that, because of its novel construction, can adhere to a multiplicity of container shapes without wrinkling or other problems associated with prior cozies. The use of a jacket cozy over a beverage bottle, can or other container for the purpose of keeping the beverage container cold or hot, for preventing condensation or from preventing heat or cold transfer to the hand or container
while using the container, are fairly well known. Some cozies emphasize their insulating properties, such as ones made from Styrofoam or neoprene, while fabric and knitted cozies emphasize the look and feel of the cozy. One problem with knit cozies is that they tend to bunch up or fall off the bottle or can or other container, or consist of designs that do not work on a bottle or other type of beverage container with a neck. Typical knit cozies are comprised of a single material with a tapered design that does not allow it to stay in place easily, and must be made to the exact measurements of a specific bottle or beverage container despite the fact that beverage container designs vary greatly. 10. In or around 2007, Crain independently conceived of the idea of a container jacket
that could fit bottles and other containers, that could stay in place, and that could fit on a container without having to be comprised of the exact measurements of a specific bottle or container type. Crain began reducing his invention to practice by cutting up and re-configuring sweaters to fit beer bottles, 40 ounce bottles, or wine bottles. These original prototypes could stretch only to the extent allowed by the configured sweater material. In addition to old patterned sweaters, Crain then began cutting up and re-configuring nylon products (such as tee shirts) containing some amount of stretch, although not the full amount afforded by the claimed invention. 11. Based on these early configurations, Crain determined that he wanted certain
features to be present in his inventive container jacket. Crain sought to create a container jacket that could be made on a circular knit machine. He also wanted his inventive container jacket to be able to fit the shape of different containers while at the same time being able to retract back to the container jacket’s original shape when not in use. To achieve this result, he determined that his inventive container jacket could be comprised of a sufficiently stretchable material, such as,
but not limited to, Lycra and/or spandex, that could maintain its shape when not in use. Because Crain wanted his inventive container jacket to have insulating properties, to be able to resist soaking up moisture, and to be able to contain different designs, he also determined that his inventive container jacket may contain an acrylic component or other component containing these properties. 12. At the first meeting between the parties, Crain showed his existing product to
DeBartolo. DeBartolo expressed an interest in it, and in helping Crain manufacture and market the product. Consequently, Crain and DeBartolo formed a company, Freaker, Inc., to manufacture and market the product together. Crain continued to reduce his invention to practice by communicating, directly or indirectly, the desired features of his product to a mill for mass production. The mill used Crain’s hand-knit prototype and Crain’s desired features to manufacture prototypes of Crain’s product. At this point, however, the inventions described and/or claimed in the ’636 patent had already been conceived by Crain. 13. 14. DeBartolo made no inventive contribution to the claims of the ’636 Patent. On January 8, 2013, DeBartolo filed a complaint against Crain for various state
law claims (“DeBartolo’s complaint”), that were settled between the parties on October 9, 2013 (the “State Court Action”). In the State Court Action, DeBartolo admits the parties’ patent attorney who prosecuted the ’636 patent had concluded that DeBartolo was not an inventor of the ’636 patent, and that DeBartolo had been incorrectly included on the patent as an inventor. 15. Specifically, in DeBartolo’s complaint filed in the State Court Action, DeBartolo
quotes the patent attorney as follows: I have had a chance to go through each of the claims [of the ’636 patent] with Crain. It appears that the koosie was made based on the original unit that Crain made prior to his
association with DeBartolo which was given to a mill for mass production. My conclusion so far is that we have incorrectly included DeBartolo on the patent as an inventor. I have not received anything from DeBartolo at the moment but we need to give him a reasonable chance to respond. Absent any concrete information as to his contribution to the conception of any claim[,] I would recommend that the current listed inventors file and [sic] amendment correcting the inventorship. 16. In testimony provided under oath in the State Court Action, DeBartolo admitted
that his contribution occurred after Crain had conceived and reduced the invention to practice. 17. interrogatory: [D]escribe specifically how you developed the invention you allege in your Complaint to have developed on or about October 22, 2008. 18. follows: I was laying on my bed holding the UNC prototype in the air with both hands. I was looking at the product and playing with it thinking about why Crain did not like it so much. I keep thinking to myself it seems like a good start, looks good to me. Started to pull on it from top and bottom and also left and right just thinking about how to make it more like Crain’s original product. All the sudden hit me like a bolt of lightning, a product that can fit on many different containers. I jumped out of bed and straight to the recycling bin, started trying to see what the prototype could fit on. I was surprised to see it fit on many containers in the bin. I went straight to the phone and called Mr. Mayo. Accordingly, DeBartolo admits that the invention(s) described and/or claimed in the ’636 patent were already reduced to practice, as he held the product “with both hands” when he was hit “like a bolt of lightning” with his purported contribution to the invention. 5 Sworn to under oath, DeBartolo’s complete response to the interrogatory was as Specifically, in the State Court Action, DeBartolo was asked the following
Crain has provided notice to DeBartolo of the error in including DeBartolo as a
named inventor on the ’636 patent. DeBartolo has taken no action to correct the error, and in fact, has refused or been unresponsive to Crain’s requests to do so. COUNT I (Correction of Named Inventor on U.S. Patent No. 8,104,636 Pursuant to 35 U.S.C. § 256) 20. herein. 21. DeBartolo made no conceptual contributions to the inventions claimed in claims 1 Plaintiff Crain incorporates by reference paragraphs 1 – 19 as if fully set forth
through 11 of the ’636 patent. 22. Through inadvertence and/or error, DeBartolo was listed on the ’636 patent as an
inventor of the invention(s) claimed in the ’636 patent. 23. The inclusion of DeBartolo as an inventor on the ’636 patent occurred without
any deceptive intent on Crain’s or DeBartolo’s part. PRAYER FOR RELIEF WHEREFORE, as to Count I of this Complaint, Plaintiff Crain respectfully requests that the Court issue an order directing the Director of the United States Patent and Trademark Office, or a party acting in that capacity, to correct U.S. Patent No. 8,104,636 by removing Zachary Michael DeBartolo as a co-inventor thereon and for such other relief as the Court deems just and proper.
Dated: January 30, 2014
/s/Daniel Patrick McNally Daniel Patrick McNally (N.C. Bar. No. 32829) Gay, Jackson & McNally, L.L.P. 500 N. Arendell Avenue P.O. Box 10 Zebulon, North Carolina 27597 Tel: (919) 269-2234 Fax: (919) 269-2052 Email: firstname.lastname@example.org Attorneys for Plaintiff Zachery Michael Crain
Of Counsel: Jerry S. Podkopacz (MN Bar No. 234436) Glenna L. Gilbert (MN Bar No. 0389312) Larkin Hoffman Daly & Lindgren Ltd. 1500 Wells Fargo Plaza 7900 Xerxes Avenue South Minneapolis, Minnesota 55431-1194 Tel: (952) 835-3800 Fax: (952) 842-1723 Email: email@example.com firstname.lastname@example.org
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