1 Paul E. Burns (State Bar No. 208731) paul.burns@procopio.com 2 Stephen C. Beuerle (State Bar No. 181990) stephen.beuerle@procopio.com 3 Procopio, Cory, Hargreaves & Savitch LLP 525 B Street, Suite 2200 4 San Diego, CA 92101-4469 Tel: (619) 238-1900 5 Fax: (619) 235-0398 6 Attorneys for Plaintiff INNERLITE, INC. dba ISOLITE SYSTEMS 7 8 9 10 11 UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION Civil Action No: __________________________ COMPLAINT FOR PATENT INFRINGEMENT DEMAND FOR JURY TRIAL

INNERLITE, INC. dba ISOLITE 12 SYSTEMS, a California corporation, 13 Plaintiff, 14 v. 15 ZIRC DENTAL PRODUCTS, INC., a 16 Minnesota corporation. 17 18 19 Defendant.

Plaintiff Innerlite, Inc. dba Isolite Systems (hereinafter referred to as

20 “Plaintiff” or “Isolite Systems”), by and through its undersigned attorneys, for its 21 Complaint against Defendant Zirc Dental Products, Inc., a Minnesota corporation 22 (hereinafter referred to as “Zirc”), hereby alleges as follows: 23 24 1. INTRODUCTION This is an action for patent infringement under 35 U.S.C. § 271, trade

25 dress infringement under Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)), 26 and violation of California Business and Professions Code Section 17200 et seq. 27 against Defendant Zirc. 28
 
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1 2 2.

PARTIES, JURISDICTION AND VENUE Plaintiff Isolite Systems is a corporation duly organized and existing

3 under the laws of the State of California, with its principal place of business located 4 at 111 Castilian Drive, Santa Barbara, California. 5 3. On information and belief, Defendant Zirc is a corporation duly 6 organized and existing under the laws of the State of Minnesota, with its principal 7 place of business located in Buffalo, Minnesota. 8 4. This Court has subject matter jurisdiction over this action (a) pursuant 9 to 28 U.S.C. § 1331 in that it concerns federal questions, (b) pursuant to 28 U.S.C. § 10 1338 in that it concerns violations of the Patent Act (35 U.S.C. §1 et seq.), (c) 11 pursuant to 28 U.S.C. § 1338 and 15 U.S.C. § 1121 in that it concerns violations of 12 the Federal Lanham Act (15 U.S.C. § 1125(a)), and (d) as to state law claims 13 pursuant to 28 U.S.C. §1338(b) and 28 U.S.C. §1367(a) under the doctrine of 14 supplemental jurisdiction. 15 5. This Court has personal jurisdiction over Defendant Zirc in that acts 16 complained of in this action took place in California, including in this judicial 17 district, as more fully described below. 18 6. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b) 19 and (c) and 1400(b) because, among other reasons, this Court has personal 20 jurisdiction over Defendant Zirc, and Defendant Zirc has committed acts of 21 infringement and other acts complained of in this action in this judicial district. 22 23 7. FACTUAL ALLEGATIONS Plaintiff Isolite Systems is a family-owned company founded in or

24 around 2001 by brothers James A. Hirsch and Dr. Thomas R. Hirsch (collectively 25 sometimes referred to herein as “the Hirsch Brothers”) in Santa Barbara, California. 26 8. In or around 1998, The Hirsch Brothers invented a revolutionary new 27 dental device intended for use by dental professionals (i) to isolate the work area in a 28 patient’s mouth, (ii) to retract the tongue and cheek, (iii) to evacuate fluids and oral   2
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1 debris, and (iv) to prevent inadvertent aspiration of material. 2 hereinafter sometimes referred to as “the Isolite Product”. 3 9.

This device is

On November 17, 1998, the Hirsch Brothers filed a patent application

4 covering their invention that issued on February 8, 2000 as U.S. Patent No. 5 6,022,214 (hereinafter referred to as “the ‘214 patent”). 6 assigned the ‘214 patent to Plaintiff Isolite Systems. 7 10. On February 27, 2003, the Hirsch Brothers filed the application for U.S. 8 Patent No. 6,974,321 (hereinafter referred to as “the ‘321 patent”), which issued on 9 December 13, 2005, covering a modification in the design of the Isolite Product. 10 The Hirsch Brothers assigned the ‘321 patent to Plaintiff Isolite Systems. 11 11. For approximately ten years, Plaintiff Isolite Systems has manufactured, 12 distributed and sold a model of the Isolite Product currently known as “the Isolite 13 Dryfield illuminator system,” that includes an internal LED light source that 14 provides illumination throughout the oral cavity and is sold under the federally 15 registered trademark “ISOLITE”. 16 12. Since 2010, Plaintiff Isolite Systems has manufactured, distributed and 17 sold a model of the Isolite Product without the LED light source that is sold under 18 the federally registered trademark “ISODRY”, and is intended for use by dental 19 professionals who prefer to work with external lighting. 20 13. For the past decade, Plaintiff Isolite Systems has invested large sums of 21 money and countless hours of human resources to build the strong reputation and 22 valuable goodwill that it presently enjoys in its market niche, i.e. dental professionals 23 such as dentists, dental hygienists and dental assistants, as well as oral surgeons. 24 14. Plaintiff Isolite Systems is the owner by assignment of all right, title, 25 and interest in and to United States Patent No. 8,297,973 entitled “Intraoral Device” 26 (hereinafter referred to as “the ‘973 patent”), which was duly and legally issued by 27 the United States Patent and Trademark Office (“USPTO”) on October 30, 2012 28 naming James A. Hirsch and Thomas R. Hirsch as inventors. On February 5, 2013,   3
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The Hirsch Brothers

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1 the USPTO issued a Certificate of Correction for the ‘973 patent. The ‘973 patent is 2 valid, enforceable, and currently in full force and effect. A true and accurate copy of 3 the ‘973 patent with the Certificate of Correction is attached hereto as Exhibit “A” 4 and incorporated herein by reference. 5 15. Plaintiff Isolite Systems is the owner by assignment of all right, title, 6 and interest in and to United States Patent No. 8,057,228 entitled “Intraoral Device” 7 (hereinafter referred to as “the ‘228 patent”), which was duly and legally issued by 8 the USPTO on November 15, 2011 naming James A. Hirsch and Thomas R. Hirsch 9 as inventors. The ‘228 patent is valid, enforceable, and currently in full force and 10 effect. A true and accurate copy of the ‘228 patent is attached hereto as Exhibit “B” 11 and incorporated herein by reference. 12 16. Plaintiff Isolite Systems is the owner by assignment of all right, title, 13 and interest in and to United States Patent No. D615,203 (the “D203 patent”), which 14 was duly and legally issued by the USPTO on May 4, 2010, for the ornamental 15 design of an intraoral device shown therein and naming James A. Hirsch and 16 Thomas R. Hirsch as inventors. The D203 patent is valid, enforceable and currently 17 in full force and effect. A true and accurate copy of the D203 patent is attached 18 hereto as Exhibit “C” and incorporated herein by reference. 19 17. On information and belief, Dr. Brian P. Black (hereinafter referred to as 20 “Dr. Black”) is an individual who resides in this judicial district in Mentone, 21 California. 22 18. On information and belief, in 2006, Dr. Black was a member of the 23 faculty of the Loma Linda University School of Dentistry in Loma Linda, California. 24 19. In Fall 2006, Dr. Black informed Parker Francis (“Mr. Francis”), an 25 employee of Plaintiff Isolite Systems that Dr. Black desired to receive information 26 about the Isolite Product. 27 20. On or about November 15, 2006, Dr. Black met with Plaintiff Isolite 28 Systems’ employees at the Malibu, California dental office of Dr. Thomas R. Hirsch,   4
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1 an officer of Plaintiff Isolite Systems and co-inventor of the Isolite Product 2 (hereinafter referred to as “Dr. Hirsch”). 3 21. At the November 15, 2006 meeting, Dr. Black witnessed a 4 demonstration of the Isolite Product, and received from Plaintiff Isolite Systems 5 information about the design, manufacturing and operation of the Isolite Product. 6 22. On information and belief, Dr. Black informed Plaintiff Isolite Systems 7 that he was interested in convincing Loma Linda University School of Dentistry to 8 acquire the Isolite Product so that its dental students could be trained to use it in the 9 school’s dental clinic. 10 23. Dr. Black arranged for Plaintiff Isolite Systems’ Dr. Hirsch and Mr. 11 Francis to visit Loma Linda University School of Dentistry on November 17, 2006 12 and again on December 4, 2006 to give a demonstration of the Isolite Product to the 13 dental faculty. 14 24. On information and belief, at some point in time after Plaintiff Isolite 15 Systems’ presentation and demonstration, Loma Linda University School of 16 Dentistry decided not to acquire the Isolite Product. 17 25. On information and belief, unbeknownst to Plaintiff Isolite Systems, Dr. 18 Black had used information that he received from Plaintiff Isolite Systems about the 19 Isolite Product to formulate a plan to develop an imitation product (hereinafter 20 referred to “Dr. Black’s Imitation Product”) to be sold to existing and prospective 21 customers of Plaintiff Isolite Systems (hereinafter referred to as “Dr. Black’s Plan”). 22 26. On or about September 24, 2007, Mr. Francis forwarded to Plaintiff 23 Isolite Systems’ management an e-mail that he received from Dr. Black containing 24 information about a company that Dr. Black referred to as “truly formidable 25 competition” that will be “going head to head with Isolite.” The September 24, 2007 26 Dr. Black e-mail contained a “product description” of a “new dental product” and a 27 representation that “we feel this product is far superior in function and provides a 28 larger working field compared to either a rubber dam or an isolite device [sic].”   5
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1

27.

The next day, on September 25, 2007, Mr. Francis sent an e-mail to

2 Plaintiff Isolite Systems’ management announcing his resignation from Isolite 3 Systems. 4 28. On information and belief, Dr. Black and Mr. Francis subsequently 5 began working together to develop, manufacture and sell Dr. Black’s Imitation 6 Product with the intention of inducing existing and prospective customers of Plaintiff 7 Isolite Systems to purchase Dr. Black’s Imitation Product in lieu of the Isolite 8 Product. 9 29. On information and belief, in December, 2007, Dr. Black formed a 10 corporation organized and existing under the laws of the State of California by the 11 name of Edge Medical Technologies, Inc. for the purpose of carrying out Dr. Black’s 12 Plan to develop, manufacture and sell Dr. Black’s Imitation Product. 13 30. On information and belief, sometime in 2009, Defendant Black 14 launched an intra-oral device constituting Dr. Black’s Imitation Product sold under 15 the trademark “Airbug” (hereinafter referred to as “Dr. Black’s Airbug”). 16 31. Dr. Black’s Airbug was an imitation of the Isolite Product design and 17 features (excluding the LED light source) including, but not limited to, the Airbug’s 18 “tongue shield”, which copied the Isolite Product’s mouthpiece component’s 19 distinctive fish-tail shape and translucent color. 20
32.

On information and belief, copies of certain pages from the former

21 active website controlled by Dr. Black and/or his corporation Edge Medical 22 Technologies, Inc. (found at http://air-bug.sqserver.com.) are attached hereto as 23 Exhibit “D” and incorporated herein by reference. 24 33. On information and belief, after Dr. Black launched Dr. Black’s Airbug, 25 one or more dental professionals have referred to Dr. Black’s Airbug as an “Isolite 26 knock off”. 27 34. On information and belief, sometime in 2010, Dr. Black’s Airbug was 28 no longer offered for sale by Dr. Black, Edge Medical Technologies, Inc. or any   6
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1 other person or entity until the further developments described below. 2 35. On information and belief, sometime in 2012, Defendant Zirc and Dr. 3 Black entered into a license or other agreement pursuant to which Dr. Black 4 provided instructions, plans and/or other assistance to Defendant Zirc to enable 5 Defendant Zirc to make, use, sell and/or offer to sell Dr. Black’s Airbug. 6 36. On information and belief, Defendant Zirc manufactures, distributes, 7 sells and/or offers to sell Defendant Black’s Airbug under a new mark known as 8 “Mr. Thirsty” (hereinafter referred to as “Zirc’s Mr. Thirsty”). 9 37. On information and belief, Dr. Black and/or his corporation, Brian P. 10 Black, DDS, Inc., a California corporation (“Dr. Black’s corporation”), advertises 11 and promotes Zirc’s Mr. Thirsty on the website of Dr. Black’s dental practice at 12 www.desertpearldentistry.com by (a) asserting that “Dr. Black invented, patented 13 and sold an intraoral isolation device, Mr. Thirsty, used by schools and clinics across 14 the country,” and (b) displaying a video of Zirc’s Mr. Thirsty with Zirc’s logo on the 15 first frame. On information and belief, Dr. Black’s corporation does business under 16 the fictitious name “Desert Pearl Dentistry,” and the dental practice is located in this 17 judicial district in Palm Desert, California. On information and belief, Dr. Black 18 resides in this judicial district in Mentone, California, and Dr. Black’s corporation 19 has places of business in this judicial district in Mentone, California and Palm 20 Desert, California. 21 38. On information and belief, Defendant Zirc distributes, offers for sale 22 and sells Zirc’s Mr. Thirsty directly via its website at www.zirc.com and through 23 numerous distributors and/or sales representatives all over the United States and 24 exports it outside of the United States. 25 39. The California Dental Association holds “CDA Presents conventions” 26 which its website at http://www.cdapresents.com/Exhibitors.aspx describes as being 27 “among the largest dental tradeshows in the United States.” The CDA Presents 28 convention in Anaheim, California took place from April 11-13, 2013 (hereinafter   7
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1 referred to as “the 2013 CDA Anaheim Trade Show”).

The CDA Presents

2 convention in San Francisco, California took place from August 15-17, 2013 3 (hereinafter referred to as “the 2013 CDA San Francisco Trade Show”). 4 40. On or about April 11-13, 2013, Defendant Zirc attended the 2013 CDA 5 Anaheim Trade Show at which Defendant Zirc advertised, promoted, demonstrated, 6 offered for sale and/or, on information and belief, sold Zirc’s Mr. Thirsty in this 7 judicial district in Anaheim, California. 8 41. On information and belief: (a) Defendant Zirc regularly markets, 9 distributes and sells Zirc’s Mr. Thirsty in California through a distributor known as 10 Pearson Dental pursuant to a distributorship agreement or other agreement to sell 11 Zirc’s Mr. Thirsty; (b) Pearson Dental has its headquarters in this judicial district in 12 Sylmar, California; (c) Pearson Dental was an exhibitor at both the 2013 CDA 13 Anaheim Trade Show and the 2013 CDA San Francisco Trade Show; and (d) 14 Pearson Dental was offering for sale Zirc’s Mr. Thirsty at its trade show booth at the 15 2013 CDA San Francisco Trade Show in that attendees could order Zirc’s Mr. 16 Thirsty from a Pearson Dental catalog and/or from Pearson Dental’s website. 17 42. On information and belief: (a) Defendant Zirc regularly markets, 18 distributes and sells Zirc’s Mr. Thirsty in California through a distributor known as 19 Benco Dental pursuant to a distributorship agreement or other agreement to sell 20 Zirc’s Mr. Thirsty; (b) Benco Dental has dental showrooms in this judicial district in 21 Costa Mesa, as well as in Fresno, Sacramento and San Diego, California; (c) Benco 22 Dental was an exhibitor at both the 2013 CDA Anaheim Trade Show and the 2013 23 CDA San Francisco Trade Show; and (d) Benco Dental was offering for sale Zirc’s 24 Mr. Thirsty at its trade show booth at the 2013 CDA San Francisco Trade Show in 25 that attendees could order Zirc’s Mr. Thirsty from a Benco Dental catalog and/or 26 from Benco Dental’s website. 27 43. On information and belief: (a) Defendant Zirc regularly markets, 28 distributes and sells Zirc’s Mr. Thirsty in California through a distributor known as   8
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1 Patterson Dental pursuant to a distributorship agreement or other agreement to sell 2 Zirc’s Mr. Thirsty; (b) Patterson Dental has offices throughout California including 3 in El Segundo, California in this judicial district; and (c) Patterson Dental was an 4 exhibitor at both the 2013 CDA Anaheim Trade Show and the 2013 CDA San 5 Francisco Trade Show. 6 44. On information and belief: (a) Defendant Zirc regularly markets, 7 distributes and sells Zirc’s Mr. Thirsty in California through a distributor known as 8 Henry Schein Dental pursuant to a distributorship agreement or other agreement to 9 sell Zirc’s Mr. Thirsty; (b) Henry Schein Dental has dental centers in this judicial 10 district in Orange and Los Angeles, as well as in San Francisco, San Jose, San Diego, 11 Fresno and Dublin, California; and (c) Henry Schein Dental was an exhibitor at both 12 the 2013 CDA Anaheim Trade Show and the 2013 CDA San Francisco Trade Show. 13 45. On information and belief, Defendant Zirc regularly markets, distributes 14 and sells Zirc’s Mr. Thirsty in California through a distributor known as Tinman 15 Dental pursuant to a distributorship agreement or other agreement to sell Zirc’s Mr. 16 Thirsty. 17 California. 18 46. On information and belief, one or more dental professionals perceive 19 Zirc’s Mr. Thirsty as a cheaper “Isolite knock-off”. 20 47. Defendant Zirc’s manufacture, distribution, sale and/or offers to sell 21 Zirc’s Mr. Thirsty have caused and continue to cause Plaintiff Isolite Systems to lose 22 numerous existing and prospective customers, and therefore to suffer severe 23 irreparable harm for which no adequate remedy at law exists. 24 48. As described below, by making, using, selling, and/or offering for sale 25 Zirc’s Mr. Thirsty, Defendant Zirc is infringing Plaintiff Isolite Systems’ patents 26 referred to herein as the ‘973 patent, the ‘228 patent and the D203 patent. 27 49. Zirc’s Mr. Thirsty tongue shield appears to have a fish-tail shape and 28 translucent color that is substantially and confusingly similar to the distinctive fish  9
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On information and belief, Tinman Dental has offices in Redding,

COMPLAINT FOR PATENT INFRINGEMENT

 

1 tail shape of the Isolite Product’s mouthpiece. 2 50. On information and belief, prior to offering Zirc’s Mr. Thirsty for sale, 3 Defendant Zirc had knowledge of Plaintiff Isolite Systems and the design of the 4 Isolite Product, including the distinctive fish-tail shape and translucent color of its 5 mouthpiece component. 6 7 8 51. FIRST COUNT (Infringement of U.S. Patent No. 8,297,973 against Defendant Zirc) Plaintiff Isolite Systems repeats and realleges the allegations contained

9 in paragraphs 1 through 50 above and hereby incorporates them herein by reference. 10 11 52. 53. This is a claim for patent infringement arising under 35 U.S.C. § 271. Plaintiff Isolite Systems is the owner by assignment of all right, title,

12 and interest in and to United States Patent No. 8,297,973 entitled “Intraoral Device” 13 (hereinafter referred to as “the ‘973 patent”), which was duly and legally issued by 14 the United States Patent and Trademark Office (“USPTO”) on October 30, 2012 15 naming James A. Hirsch and Thomas R. Hirsch as inventors. On February 5, 2013, 16 the USPTO issued a Certificate of Correction for the ‘973 patent. The ‘973 patent is 17 valid, enforceable, and currently in full force and effect. A true and accurate copy of 18 the ‘973 patent with the Certificate of Correction is attached hereto as Exhibit “A”. 19 54. Defendant Zirc has committed infringement of the ‘973 patent in 20 violation of 35 U.S.C. § 271(a) by directly infringing (either literally or under the 21 doctrine of equivalents) by making, using, selling, and/or offering to sell Zirc’s Mr. 22 Thirsty in the United States, which is covered by at least one claim of the ‘973 patent 23 and therefore embodies the patented invention described in the ‘973 patent. 24 55. As a direct and proximate result of Defendant Zirc’s infringement of the 25 ‘973 patent, Defendant Zirc has derived and received gains, profits and advantages in 26 an amount not presently known to Plaintiff Isolite Systems. 27 56. As a further direct and proximate result of Defendant Zirc having 28 infringed and continuing to infringe the ‘973 patent, Plaintiff Isolite Systems has   10
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1 suffered, and will continue to suffer, irreparable harm in one or more of the 2 following ways: 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 57. (a) Plaintiff Isolite System’s relationships with certain of its customers and prospective customers will be permanently and irrevocably damaged in that they will be induced to purchase the infringing Zirc’s Mr. Thirsty and components thereof from Defendant Zirc and/or its distributors and sales representatives and may refrain from purchasing the Isolite Product; (b) Plaintiff Isolite Systems will lose existing customers as well as prospective customers to Defendant Zirc (and/or its distributors and sales representatives) and thereby permanently and irrevocably lose a substantial share of the market for the Isolite Product and components thereof to Defendant Zirc and/or its distributors and sales representatives; (c) Plaintiff Isolite Systems will be forced to lower the purchase price of the Isolite Product and components thereof; (d) Plaintiff Isolite Systems will lose a substantial and inestimable amount of revenue and profits that will cause the market value of Plaintiff Isolite Systems to permanently diminish; and/or (e) Plaintiff Isolite Systems will lose the value of the ‘973 patent in that ownership of the ‘973 patent gives Plaintiff Isolite Systems the statutory and constitutionally protected right to exclude others, especially competitors, from making, using, offering to sell and/or selling embodiments of the invention described in the ‘973 patent’s claims. Pursuant to 35 U.S.C. § 284, Plaintiff Isolite Systems is entitled to

20 damages for Defendant Zirc’s infringing acts. 21 58. As a direct and proximate result of Defendant Zirc’s infringing acts, 22 Plaintiff Isolite Systems continues to suffer great and irreparable harm as described 23 above, for which Plaintiff Isolite Systems has no adequate remedy at law, unless 24 Defendant Zirc is enjoined by this Court. 25 26 27 59. SECOND COUNT (Infringement of U.S. Patent No. 8,057,228 Against Defendant Zirc) Plaintiff Isolite Systems repeats and realleges the allegations contained

28 in paragraphs 1 through 50 above and hereby incorporates them herein by reference.   11
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1 2

60. 61.

This is a claim for patent infringement arising under 35 U.S.C. § 271. Plaintiff Isolite Systems is the owner by assignment of all right, title,

3 and interest in and to United States Patent No. 8,057,228 entitled “Intraoral Device” 4 (hereinafter referred to as “the ‘228 patent”), which was duly and legally issued by 5 the USPTO on November 15, 2011 naming James A. Hirsch and Thomas R. Hirsch 6 as inventors. The ‘228 patent is valid, enforceable, and currently in full force and 7 effect. A true and accurate copy of the ‘228 patent is attached hereto as Exhibit “B”. 8 62. Defendant Zirc has committed infringement of the ‘228 patent in 9 violation of 35 U.S.C. § 271(a) by directly infringing (either literally or under the 10 doctrine of equivalents) by making, using, selling, and/or offering to sell Zirc’s Mr. 11 Thirsty in the United States, which is covered by at least one claim of the ‘228 patent 12 and therefore embodies the patented invention described in the ‘228 patent. 13 63. As a direct and proximate result of Defendant Zirc’s infringement of the 14 ‘228 patent, Defendant Zirc has derived and received gains, profits and advantages 15 in an amount not presently known to Plaintiff Isolite Systems. 16 64. As a further direct and proximate result of Defendant Zirc having 17 infringed and continuing to infringe the ‘228 patent, Plaintiff Isolite Systems has 18 suffered, and will continue to suffer, irreparable harm in one or more of the 19 following ways: 20 21 22 23 24 25 26 27 28
 
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(a) Plaintiff Isolite System’s relationships with certain of its customers and prospective customers will be permanently and irrevocably damaged in that they will be induced to purchase the infringing Zirc’s Mr. Thirsty and components thereof from Defendant Zirc and/or its distributors and sales representatives and may refrain from purchasing the Isolite Product; (b) Plaintiff Isolite Systems will lose existing customers as well as prospective customers to Defendant Zirc (and/or its distributors and sales representatives) and thereby permanently and irrevocably lose a substantial share of the market for the Isolite Product and components thereof to Defendant Zirc and/or its distributors and sales representatives; (c) Plaintiff Isolite Systems will be forced to lower the 12
COMPLAINT FOR PATENT INFRINGEMENT

 

1 2 3 4 5 6 7 8 9 65.

purchase price of the Isolite Product and components thereof; (d) Plaintiff Isolite Systems will lose a substantial and inestimable amount of revenue and profits that will cause the market value of Plaintiff Isolite Systems to permanently diminish; and/or (e) Plaintiff Isolite Systems will lose the value of the ‘228 patent in that ownership of the ‘228 patent gives Plaintiff Isolite Systems the statutory and constitutionally protected right to exclude others, especially competitors, from making, using, offering to sell and/or selling embodiments of the invention described in the ‘228 patent’s claim. Pursuant to 35 U.S.C. § 284, Plaintiff Isolite Systems is entitled to

10 damages for Defendant Zirc’s infringing acts. 11 66. As a direct and proximate result of Defendant Zirc’s infringing acts, 12 Plaintiff Isolite Systems continues to suffer great and irreparable harm as described 13 above, for which Plaintiff Isolite Systems has no adequate remedy at law, unless 14 Defendant Zirc is enjoined by this Court. 15 16 17 67. THIRD COUNT (Infringement of U.S. Patent No. D615,203 Against Defendant Zirc) Plaintiff Isolite Systems repeats and realleges the allegations contained

18 in paragraphs 1 through 50 above and hereby incorporates them herein by reference. 19 20 68. 69. This is a claim for patent infringement arising under 35 U.S.C. § 271. Plaintiff Isolite Systems is the owner by assignment of all right, title,

21 and interest in and to United States Patent No. D615,203 (the “D203 patent”), which 22 was duly and legally issued by the USPTO on May 4, 2010, for the ornamental 23 design of an intraoral device shown therein and naming James A. Hirsch and 24 Thomas R. Hirsch as inventors. The D203 patent is valid, enforceable and currently 25 in full force and effect. A true and accurate copy of the D203 patent is attached 26 hereto as Exhibit “C”. 27 70. Defendant Zirc has committed infringement of the D203 patent in 28 violation of 35 U.S.C. § 271(a) by directly infringing by making, using, selling,   13
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1 and/or offering to sell Zirc’s Mr. Thirsty tongue shield component, which embodies 2 the patented invention described in the D203 patent. 3 71. As a direct and proximate result of Defendant Zirc’s infringement of the 4 D203 patent, Defendant Zirc has derived and received gains, profits and advantages 5 in an amount not presently known to Plaintiff Isolite Systems. 6 72. As a further direct and proximate result of Defendant Zirc having 7 infringed and continuing to infringe the D203 patent, Plaintiff Isolite Systems has 8 suffered, and will continue to suffer, irreparable harm in one or more of the 9 following ways: 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 73. (a) Plaintiff Isolite System’s relationships with certain of its customers and prospective customers will be permanently and irrevocably damaged in that they will be induced to purchase the infringing Zirc’s Mr. Thirsty tongue shield component from Defendant Zirc and/or its distributors and sales representatives, and may refrain from purchasing the Isolite Product; (b) Plaintiff Isolite Systems will lose existing customers as well as prospective customers to Defendant Zirc and/or its distributors and sales representatives, and thereby permanently and irrevocably lose a substantial share of the market for the Isolite Product and components thereof to Defendant Zirc and/or its distributors and sales representatives; (c) Plaintiff Isolite Systems will be forced to lower the purchase price of the Isolite Product and components thereof; (d) Plaintiff Isolite Systems will lose a substantial and inestimable amount of revenue and profits that will cause the market value of Plaintiff Isolite Systems to permanently diminish; and/or (e) Plaintiff Isolite Systems will lose the value of the D203 patent in that ownership of the D203 patent gives Plaintiff Isolite Systems the statutory and constitutionally protected right to exclude others, especially competitors, from making, using, offering to sell and/or selling embodiments of the invention described in the D203 patent. Pursuant to 35 U.S.C. § 284, Plaintiff Isolite Systems is entitled to

27 damages for Defendant Zirc’s infringing acts. 28
 
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74.

Pursuant to 35 U.S.C. § 289, Plaintiff Isolite Systems is entitled to 14
COMPLAINT FOR PATENT INFRINGEMENT

 

1 Defendant Zirc’s total profits from its infringement of the D203 patent. 2 75. As a direct and proximate result of Defendant Zirc’s infringing acts, 3 Plaintiff Isolite Systems continues to suffer great and irreparable harm as described 4 above, for which Plaintiff Isolite Systems has no adequate remedy at law, unless 5 Defendant Zirc is enjoined by this Court. 6 7 8 9 76. FOURTH COUNT (Trade Dress Infringement in Violation of Section 43(a) of the Federal Lanham Act [15 U.S.C. § 1125(a)] Against Defendant Zirc) Plaintiff Isolite Systems repeats and realleges the allegations contained

10 in paragraphs 1 through 50 above and hereby incorporates them herein by reference. 11 77. Plaintiff Isolite Systems owns a valid and protectable interest in the 12 product design trade dress of the Isolite Product, including but not limited to its fish13 tail shape and/or translucent color (“the Isolite Trade Dress”). 14 78. Plaintiff Isolite Systems adopted the Isolite Trade Dress and used it in 15 interstate commerce for the Isolite Product for over ten years. 16 79. As a result of Plaintiff Isolite Systems’ continuous, exclusive and 17 extensive promotion, advertising and sale of the Isolite Product incorporating the 18 Isolite Trade Dress in interstate commerce and the commercial success of the Isolite 19 Product, the Isolite Trade Dress has developed secondary meaning among dental 20 professionals as an identifier of the source of the Isolite Product. 21 80. On information and belief, Defendant Zirc knew of the Isolite Product 22 and the Isolite Trade Dress prior to Defendant Zirc’s use of the Isolite Trade Dress. 23 81. Defendant Zirc is using the Isolite Trade Dress in connection with the 24 Zirc’s Mr. Thirsty tongue shield component in that it incorporates the fish-tail shape 25 and translucent color of the Isolite Trade Dress without authorization from Plaintiff 26 Isolite Systems. 27 82. Defendant Zirc has caused Zirc’s Mr. Thirsty’s tongue shield 28 components incorporating the Isolite Trade Dress to enter into interstate commerce.   15
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1

83.

Defendant Zirc’s unauthorized use of the Isolite Trade Dress is likely to

2 cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or 3 association of Defendant Zirc with Plaintiff Isolite Systems and/or as to the origin, 4 sponsorship, or approval of Zirc’s Mr. Thirsty and/or its tongue shields thereof by 5 Plaintiff Isolite Systems. 6 84. Defendant Zirc’s acts as described above are in violation of 15 U.S.C. § 7 1125(a) in that Defendant Zirc has used in connection with goods or services trade 8 dress which is likely to cause confusion, and to cause mistake, and/or to deceive as to 9 the affiliation, connection or association of Defendant Zirc with Plaintiff Isolite 10 Systems and/or as to the origin, sponsorship, and approval of Defendant Zirc’s 11 goods, services and commercial activities by Plaintiff Isolite Systems. 12 85. On information and belief, Defendant Zirc’s above-described violations 13 of 15 U.S.C. § 1125(a) have been committed with the intent to cause confusion, to 14 cause mistake and/or to deceive. 15 86. As a direct and proximate result of Defendant Zirc’s violation of 15 16 U.S.C. § 1125(a), Defendant Zirc has damaged and will continue to damage Plaintiff 17 Isolite Systems’ business, goodwill and reputation, and has caused and is likely to 18 continue to cause lost sales and profits, as well as loss of exclusive ownership and 19 use of the Isolite Trade Dress, resulting in public confusion and damage to Plaintiff 20 Isolite Systems’ reputation. 21 87. Defendant Zirc’s actions as described above have caused and will 22 continue to cause irreparable harm to Plaintiff Isolite Systems and to consumers who 23 are or are likely to be confused by Defendant Zirc’s violation of 15 U.S.C. § 1125(a), 24 unless Defendant Zirc is restrained and enjoined by this Court, and Plaintiff Isolite 25 Systems has no adequate remedy at law. 26 88. As a further direct and proximate result of Defendant Zirc’s actions as 27 described above, Plaintiff Isolite Systems has been damaged and will continue to 28 sustain damage, and is entitled to receive compensation arising from its lost sales,   16
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COMPLAINT FOR PATENT INFRINGEMENT

 

1 lost profits, and efforts necessary to minimize and/or prevent customer confusion, in 2 an amount to be proven at the time of trial. 3 89. In addition, Plaintiff Isolite Systems is entitled to recover Defendant 4 Zirc’s profits in an amount to be proven at the time of trial. 5 90. Pursuant to 15 U.S.C. § 1116(a), Plaintiff Isolite Systems is further 6 entitled to injunctive relief to enjoin Defendant Zirc from any further violation of 15 7 U.S.C. § 1125(a), and to all other and further forms of relief this Court deems 8 appropriate. 9 91. The damages sustained by Plaintiff Isolite Systems as a result of the 10 conduct alleged herein should be trebled in accordance with 15 U.S.C. § 1117(a) due 11 to Defendant Zirc’s willful violation of 15 U.S.C. § 1125(a). 12 92. Plaintiff Isolite Systems is entitled to a determination that this is an 13 exceptional case and to recover reasonable attorneys’ fees for the necessity of 14 bringing this claim. 15 16 17 18 FIFTH COUNT (Unfair Competition in Violation of Cal. Bus. & Prof. Code §17200 et seq. Against Defendant Zirc) 93. Plaintiff Isolite Systems repeats and realleges the allegations contained

19 in paragraphs 1 through 92 above and hereby incorporates them herein by reference. 20 94. Defendant Zirc’s actions as described above constitute unlawful, unfair 21 and/or fraudulent business acts or practices and unfair competition in violation of 22 Cal. Bus. & Prof. Code §17200. 23 95. As a direct and proximate result of Defendant Zirc’s conduct, Plaintiff 24 Isolite Systems has suffered an injury in fact, including without limitation, damages 25 in an amount to be proven at trial, loss of money or property, and diminution in the 26 value of its trade dress and goodwill associated therewith, as well as diminution in its 27 market value. Accordingly, Plaintiff Isolite Systems has standing to assert this claim 28 pursuant to Cal. Bus. & Prof. Code §17204.   17
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COMPLAINT FOR PATENT INFRINGEMENT

 

1

96.

Defendant Zirc’s actions have caused, and will continue to cause

2 Plaintiff Isolite Systems to suffer irreparable harm unless enjoined by this Court 3 pursuant to Cal. Bus. & Prof. Code §17203. 4 97. In addition, Plaintiff Isolite Systems is entitled to an order that 5 Defendant Zirc disgorge all profits wrongfully obtained as a result of its unfair 6 competition, and an order that Defendant Zirc pay restitution to Plaintiff Isolite 7 Systems in an amount to be proven at trial. 8 98. Plaintiff Isolite Systems is entitled to recover reasonable attorneys’ fees 9 for the necessity of bringing this claim. 10 11 12 1. PRAYER FOR RELIEF WHEREFORE, Plaintiff Isolite Systems prays for the following relief: An Order adjudging Defendant Zirc to have infringed the ‘973 patent

13 under 35 U.S.C. § 271; 14 2. An Order adjudging Defendant Zirc to have infringed the ‘228 patent 15 under 35 U.S.C. § 271; 16 3. An Order adjudging Defendant Zirc to have infringed the D203 patent 17 under 35 U.S.C. § 271; 18 19 20 21 22 23 24 25 26 27 28
 
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4.

Pursuant to 35 U.S.C. § 283: (a) a preliminary and permanent injunction enjoining Defendant Zirc and its directors, officers, agents, servants, employees, representatives, successors and assigns, and all persons and entities in active concert or participation with Defendant Zirc, from infringing the ‘973 patent, the ‘228 patent, and the D203 patent; (b) an Order directing Defendant Zirc to destroy all infringing Zirc’s Mr. Thirsty dental devices and all components thereof in their possession, custody or control of Defendant Zirc and to file a declaration with the Court within thirty (30) days of such order 18
COMPLAINT FOR PATENT INFRINGEMENT

 

1 2 5.

that Defendant Zirc have complied with same; Pursuant to 35 U.S.C. § 284, damages adequate to compensate Plaintiff

3 Isolite Systems for Defendant Zirc’s infringement, but in no event less than a 4 reasonable royalty for the use made of the inventions contained in the ‘973 patent, 5 the ‘228 patent and the D203 patent by Defendant Zirc; 6 6. Pursuant to 35 U.S.C. § 289, an Order that Defendant Zirc account for 7 all gains, profits, and advantages derived by Defendant Zirc’s infringement of the 8 D203 patent; 9 7. Pursuant to 35 U.S.C. § 285, an Order adjudging this case to be an 10 exceptional case and awarding attorneys’ fees and costs to Plaintiff Isolite Systems; 11 8. For Defendant Zirc’s violation of 15 U.S.C. § 1125(a), a preliminary 12 and permanent injunction enjoining Defendant Zirc, and its directors, officers, 13 employees, agents, servants, representatives and attorneys, and all persons in active 14 concert or participation with them, from infringing the trade dress of Plaintiff Isolite 15 Systems, including the Isolite Trade Dress; 16 17 18 19 20 21 22 23 24 25 26 27 28
 
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9.

For Defendant Zirc’s violations of 15 U.S.C. § 1125(a), an Order: (a) directing Defendant Zirc to destroy all of Zirc’s Mr. Thirsty tongue shield components infringing the Isolite Trade Dress, as well as any plates, molds and/or other means of making same, in the possession, custody or control of Defendant Zirc; and (b) directing Defendant Zirc to file a declaration with the Court within thirty (30) days of such order that Defendant Zirc has complied with same;

10.

For Defendant Zirc’s violations of 15 U.S.C. § 1125(a): (a) (b) (c) Compensatory damages, including lost profits and goodwill; Disgorgement of Defendant Zirc’s profits; and an Order declaring that Defendant Zirc’s violation of 15 U.S.C. § 1125(a) be deemed to be willful, that this is an exceptional case, 19
COMPLAINT FOR PATENT INFRINGEMENT

 

1 2 3 11.

and that Plaintiff Isolite Systems is entitled to treble and/or enhanced damages and reasonable attorneys’ fees and costs; For Defendant Zirc’s violation of Cal. Bus. & Prof. Code §17200, a

4 preliminary and permanent injunction enjoining Defendant Zirc, and its directors, 5 officers, employees, agents, servants, representatives and attorneys, and all persons 6 in active concert or participation with them, (a) from infringing any trade dress of 7 Plaintiff Isolite Systems, including the Isolite Trade Dress, and/or (b) from any 8 further violations of Cal. Bus. & Prof. Code §17200; 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 /// 28 ///
 
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12. For Defendant Zirc’s violation of Cal. Bus. & Prof. Code §17200, an Order: (a) directing Defendant Zirc to destroy all of Zirc’s Mr. Thirsty tongue shield components that infringe the Isolite Trade Dress, as well as any plates, molds and/or other means of making same, in the possession, custody or control of Defendant Zirc; and (b) directing Defendant Zirc to file a declaration with the Court within thirty (30) days of such order that Defendant Zirc has complied with same; 13. For Defendant Zirc’s violation of Cal. Bus. & Prof. Code §17200: (a) (b) (c) (d) (e) Compensatory damages, including for lost profits and goodwill; Disgorgement of Defendant Zirc’s profits; Restitution in an amount to be proven at trial; Exemplary or punitive damages; and Reasonable attorneys’ fees and costs;

14. An award of pre-judgment and post-judgment interest; 15. Costs of this action, including reasonable attorneys’ fees; and 16. Such other and further relief as this court deems just and proper.

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COMPLAINT FOR PATENT INFRINGEMENT

 

1 2 3 a jury. 4 Dated: October 9, 2013 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
 
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DEMAND FOR JURY TRIAL Plaintiff Isolite Systems respectfully requests a jury trial on all issues triable to

Respectfully submitted,

PROCOPIO, CORY, HARGREAVES & SAVITCH, LLP By: /s/ Paul E. Burns Paul E. Burns Attorneys for Plaintiff Innerlite Inc. dba Isolite Systems

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COMPLAINT FOR PATENT INFRINGEMENT