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CASE 0:19-cv-01434-NEB-HB Document 1 Filed 05/30/19 Page 1 of 8

UNITED STATES DISTRICT COURT


FOR THE DISTRICT OF MINNESOTA

HALCON CORPORATION,

Plaintiff,
Civil Action No.
v.
JURY TRIAL DEMANDED
TUOHY FURNITURE CORPORATION,

Defendant.

COMPLAINT FOR PATENT INFRINGEMENT

For its Complaint against Defendant Tuohy Furniture Corporation (“Tuohy”),

Plaintiff Halcon Corporation (“Halcon”), states and alleges the following:

THE PARTIES

1. Plaintiff Halcon is a Minnesota corporation with its principal place of

business at 1811 2nd Ave NW, Stewartville, MN 55976.

2. Upon information and belief, Defendant Tuohy is a Minnesota corporation

with its principal place of business at 42 Saint Albans Place, Chatfield, MN 55923.

JURISDICTION AND VENUE

3. Halcon’s claims arise under the patent laws of the United States, 35 U.S.C.

§§ 1 et seq. Subject matter jurisdiction exists pursuant to 28 U.S.C. §§ 1331 and 1338(a).

4. This Court has personal jurisdiction over Tuohy. Upon information and

belief, Tuohy has a physical place of business in this judicial district located at 42 Saint

Albans Place, Chatfield, MN 55923.


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5. Tuohy has also committed the tortious acts complained of herein in

Minnesota, including but not limited to making, using, selling, or offering for sale

infringing products accused herein, and directs its infringing products at the residents in

the State of Minnesota and in this judicial district. Tuohy distributes its infringing

products within this judicial district. Finally, Halcon’s claims arise out of or relate to

Tuohy’s activities in Minnesota.

6. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391 and

1400(b) because Tuohy has committed acts of infringement in this judicial district where

the infringing product can be found, and has a regular and established physical place of

business in this judicial district located at 42 Saint Albans Place, Chatfield, MN 55923.

Tuohy also does business in this judicial district through a permanent and continuous

presence here.

FACTUAL BACKGROUND

7. Plaintiff Halcon is a family-owned and operated Minnesota company that

has made well-designed, well-crafted workplace furniture for over forty years. Halcon

uses its project management, engineering, and manufacturing experience to work with

customers to design custom-built furniture.

8. Halcon is an innovator in creating original, unique, and distinct designs for

its furniture products. To protect these designs, Halcon has sought and received

intellectual property protections in its designs, including United States Design Patent

D799,251 (the ’251 patent).

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9. The ’251 patent issued on October 10, 2017. Halcon is the exclusive owner

of all rights, title and interest in the ’251 patent by assignment. The ’251 patent is valid,

enforceable, and duly issued in compliance with Title 35 of the United States Code. A

true and correct copy of the ’251 patent is attached as Exhibit A.

10. The ’251 patent is entitled “Table.” Two figures from the ’251 patent are

shown below:

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11. Halcon’s Mesa product line features the ornamental design claimed in the

’251 patent.

12. Halcon’s Mesa product line has been marked in accord with 35 U.S.C. §

287. Halcon marks the ’251 patent number on its product literature and website.

13. Upon information and belief, Defendant Tuohy is engaged in furniture

design and manufacture.

14. Halcon has not authorized Tuohy to copy, reproduce, manufacture,

duplicate, disseminate, distribute, sell, offer for sale, or display furniture with the design

from the ’251 patent.

15. Upon information and belief, Tuohy offers for sale and sells Tuohy’s

“Carina Table” product. The design of the Carina Table product copies the ornamental

design claimed in the ’251 patent.

16. Tuohy has manufactured and advertises the Carina Table product at least at

the following website: https://www.instagram.com/p/BxBIT1ehf3n/

17. Additionally, Tuohy is planning to exhibit the Carina Table product in a

design competition at an industry conference in June 2019. Tuohy has entered the Carina

Table product in the conference room furniture category at the following website:

https://bestofneoconawards.secure-platform.com/a/gallery/rounds/5/details/1550

18. Tuohy’s infringing Carina Table product is depicted below as compared to

the ornamental design claimed in the ’251 patent.

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Tuohy Carina Table Product

Halcon ‘251 Patent

19. Without Halcon’s authorization, Tuohy has made, used, sold, offered for

sale, and/or imported into the United States, including but not limited to Minnesota, the

Carina Table product that infringes the ’251 patent.

20. An ordinary observer, familiar with the prior art in the field, would perceive

the overall appearance of the design of the ’251 patent and the design of the Carina Table

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product to be substantially the same. Such an ordinary observer would be deceived into

believing that the Carina Table product is the same as the design claimed in the ’251

patent.

21. The ordinary observer, informed by the relevant prior art, would be misled

by the Carina Table product into believing that Tuohy is authorized to distribute products

that copy the ornamental designs claimed in the ’251 patent.

22. The Carina Table product features the claimed design of the ’251 patent.

COUNT ONE

23. Halcon incorporates by reference, as if fully set forth herein, paragraphs 1-

22 of this Complaint.

24. On October 10, 2017, the United States Patent and Trademark Office duly

and legally issued the ’251 patent.

25. The ’251 patent is directed to an “an ornamental design for a table” as

shown in the figures of the ’251 patent.

26. Halcon is the owner of the entire right, title and interest in and to the ’251

patent, by assignment.

27. Tuohy has made, used, sold, and/or offered for sale within the United States

and/or imported into the United States, one or more accused products, including but not

limited to the Carina Table product. The design of Tuohy’s infringing product, in the eye

of the ordinary observer who is familiar with the prior art in the field, appears

substantially similar to the ornamental design of the ’251 patent.

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28. Tuohy has damaged and will continue to damage Halcon in an amount to

be determined at trial.

29. Tuohy has irreparably injured Halcon and such injury will continue unless

Tuohy is enjoined by this Court.

WHEREFORE, in consideration of the foregoing, Halcon respectfully requests

that this Court enter an Order granting the following relief:

A. Enjoin Tuohy and any person acting in concert with it from further

infringement of the ’251 patent pursuant to 35 U.S.C. § 283;

B. Declare that the ’251 patent is infringed by Tuohy;

C. Award Halcon the profits of Tuohy, in accordance with 35 U.S.C. § 289,

resulting from Tuohy’s infringement of the ’251 patent, actual damages to Halcon in an

amount not less than a reasonable royalty for Tuohy’s infringement, and other damages

and relief allowed as by 35 U.S.C. § 284:

(i) order the removal from the marketplace and destruction of all of
Tuohy’s products that infringe the ’251 patent;

(ii) prohibit Tuohy from further making, using, selling, offering for sale,
or importing all of Tuohy’s products that infringe the ’251 patent;

(iii) award Halcon reasonable attorney fees;

(iv) award Halcon interest and costs;

(v) order an accounting of Tuohy’s profits relating to infringement of


the ’251 patent;

(vi) order Tuohy to report to this Court of its compliance with the
foregoing within thirty (30) days of judgment; and

(vii) other and further relief that the Court deems just and proper.

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DEMAND FOR JURY TRIAL

Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff Halcon

respectfully requests a trial by jury of any and all issues on which a trial by jury is available

under applicable law.

Dated: May 30, 2019 FISH & RICHARDSON P.C.

By: /s/ Michael E. Florey


Michael E. Florey (0214322)
Ann E. Motl (0397599)
FISH & RICHARDSON P.C.
3200 RBC Plaza
60 South Sixth Street
Minneapolis, MN 55402
Telephone: (612) 335-5070
Facsimile: (612) 288-9696
florey@fr.com; motl@fr.com

Attorneys for Plaintiff


HALCON CORPORATION

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JS 44 (Rev. 06/17) CIVIL COVER SHEET
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)

I. (a) PLAINTIFFS DEFENDANTS


Halcon Corporation Tuohy Furniture Corporation

(b) County of Residence of First Listed Plaintiff Olmsted County of Residence of First Listed Defendant
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.

(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
Fish & Richardson P.C.
Michael E. Florey
60 South 6th Street, Minneapolis, MN 55402 (612) 335-5070

II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
u 1 U.S. Government u 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State u 1 u 1 Incorporated or Principal Place u 4 u 4
of Business In This State

u 2 U.S. Government u 4 Diversity Citizen of Another State u 2 u 2 Incorporated and Principal Place u 5 u 5
Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State

Citizen or Subject of a u 3 u 3 Foreign Nation u 6 u 6


Foreign Country
IV. NATURE OF SUIT (Place an “X” in One Box Only) Click here for: Nature of Suit Code Descriptions.
CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
u 110 Insurance PERSONAL INJURY PERSONAL INJURY u 625 Drug Related Seizure u 422 Appeal 28 USC 158 u 375 False Claims Act
u 120 Marine u 310 Airplane u 365 Personal Injury - of Property 21 USC 881 u 423 Withdrawal u 376 Qui Tam (31 USC
u 130 Miller Act u 315 Airplane Product Product Liability u 690 Other 28 USC 157 3729(a))
u 140 Negotiable Instrument Liability u 367 Health Care/ u 400 State Reapportionment
u 150 Recovery of Overpayment u 320 Assault, Libel & Pharmaceutical PROPERTY RIGHTS u 410 Antitrust
& Enforcement of Judgment Slander Personal Injury u 820 Copyrights u 430 Banks and Banking
u 151 Medicare Act u 330 Federal Employers’ Product Liability u 830 Patent u 450 Commerce
u 152 Recovery of Defaulted Liability u 368 Asbestos Personal u 835 Patent - Abbreviated u 460 Deportation
Student Loans u 340 Marine Injury Product New Drug Application u 470 Racketeer Influenced and
(Excludes Veterans) u 345 Marine Product Liability u 840 Trademark Corrupt Organizations
u 153 Recovery of Overpayment Liability PERSONAL PROPERTY LABOR SOCIAL SECURITY u 480 Consumer Credit
of Veteran’s Benefits u 350 Motor Vehicle u 370 Other Fraud u 710 Fair Labor Standards u 861 HIA (1395ff) u 490 Cable/Sat TV
u 160 Stockholders’ Suits u 355 Motor Vehicle u 371 Truth in Lending Act u 862 Black Lung (923) u 850 Securities/Commodities/
u 190 Other Contract Product Liability u 380 Other Personal u 720 Labor/Management u 863 DIWC/DIWW (405(g)) Exchange
u 195 Contract Product Liability u 360 Other Personal Property Damage Relations u 864 SSID Title XVI u 890 Other Statutory Actions
u 196 Franchise Injury u 385 Property Damage u 740 Railway Labor Act u 865 RSI (405(g)) u 891 Agricultural Acts
u 362 Personal Injury - Product Liability u 751 Family and Medical u 893 Environmental Matters
Medical Malpractice Leave Act u 895 Freedom of Information
REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS u 790 Other Labor Litigation FEDERAL TAX SUITS Act
u 210 Land Condemnation u 440 Other Civil Rights Habeas Corpus: u 791 Employee Retirement u 870 Taxes (U.S. Plaintiff u 896 Arbitration
u 220 Foreclosure u 441 Voting u 463 Alien Detainee Income Security Act or Defendant) u 899 Administrative Procedure
u 230 Rent Lease & Ejectment u 442 Employment u 510 Motions to Vacate u 871 IRS—Third Party Act/Review or Appeal of
u 240 Torts to Land u 443 Housing/ Sentence 26 USC 7609 Agency Decision
u 245 Tort Product Liability Accommodations u 530 General u 950 Constitutionality of
u 290 All Other Real Property u 445 Amer. w/Disabilities - u 535 Death Penalty IMMIGRATION State Statutes
Employment Other: u 462 Naturalization Application
u 446 Amer. w/Disabilities - u 540 Mandamus & Other u 465 Other Immigration
Other u 550 Civil Rights Actions
u 448 Education u 555 Prison Condition
u 560 Civil Detainee -
Conditions of
Confinement
V. ORIGIN (Place an “X” in One Box Only)
u 1 Original u 2 Removed from u 3 Remanded from u 4 Reinstated or u 5 Transferred from u 6 Multidistrict u 8 Multidistrict
Proceeding State Court Appellate Court Reopened Another District Litigation - Litigation -
(specify) Transfer Direct File
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
35 U.S.C. §§ 1 et seq. and 28 U.S.C. §§ 1331 and 1338(a)
VI. CAUSE OF ACTION Brief description of cause:

VII. REQUESTED IN u CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complaint:
COMPLAINT: UNDER RULE 23, F.R.Cv.P. JURY DEMAND: u Yes u No
VIII. RELATED CASE(S)
(See instructions):
IF ANY JUDGE DOCKET NUMBER
DATE SIGNATURE OF ATTORNEY OF RECORD
05/30/2019 /s/Michael Florey
FOR OFFICE USE ONLY

RECEIPT # AMOUNT APPLYING IFP JUDGE MAG. JUDGE


JS 44 Reverse (Rev. 06/17) CASE 0:19-cv-01434-NEB-HB Document 1-2 Filed 05/30/19 Page 2 of 2
INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
Authority For Civil Cover Sheet

The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as
required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of
Court for each civil complaint filed. The attorney filing a case should complete the form as follows:

I.(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and
then the official, giving both name and title.
(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
condemnation cases, the county of residence of the "defendant" is the location of the tract of land involved.)
(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
in this section "(see attachment)".

II. Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X"
in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.
Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment
to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes
precedence, and box 1 or 2 should be marked.
Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the
citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity
cases.)

III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this
section for each principal party.

IV. Nature of Suit. Place an "X" in the appropriate box. If there are multiple nature of suit codes associated with the case, pick the nature of suit code
that is most applicable. Click here for: Nature of Suit Code Descriptions.

V. Origin. Place an "X" in one of the seven boxes.


Original Proceedings. (1) Cases which originate in the United States district courts.
Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441.
When the petition for removal is granted, check this box.
Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing
date.
Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or
multidistrict litigation transfers.
Multidistrict Litigation – Transfer. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C.
Section 1407.
Multidistrict Litigation – Direct File. (8) Check this box when a multidistrict case is filed in the same district as the Master MDL docket.
PLEASE NOTE THAT THERE IS NOT AN ORIGIN CODE 7. Origin Code 7 was used for historical records and is no longer relevant due to
changes in statue.

VI. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service

VII. Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P.
Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.

VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket
numbers and the corresponding judge names for such cases.

Date and Attorney Signature. Date and sign the civil cover sheet.