Petsport et. al. v. Kong Company et. al

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Transcript of Petsport et. al. v. Kong Company et. al

  • 8/12/2019 Petsport et. al. v. Kong Company et. al.

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    COMPLAINT Case No. 3:14-cv-01045

    H

    olland&KnightLLP

    400

    SouthHopeStreet,8thF

    loor

    LosAngeles,

    CA

    90071

    Tel:21

    3.8

    96.2

    400

    Fax:213.8

    96.2

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    RICHARD E. LYON, JR. (SBN 46928)STACEY H. WANG (SBN 245195)HOLLAND & KNIGHT LLP400 South Hope Street, 8th FloorLos Angeles, California 90071Telephone 213.896.2400

    Facsimile 213.896.2450E-mail: [email protected] [email protected]

    Attorneys for PlaintiffsPetsport USA, Inc. and The Kroger Co.

    UNITED STATES DISTRICT COURT

    NORTHERN DISTRICT OF CALIFORNIA

    SAN FRANCISCO

    PETSPORT USA, INC., a Californiacorporation and THE KROGER CO., an Ohiocorporation,

    Plaintiffs,

    vs.

    THE KONG COMPANY, LLC, a ColoradoLimited Liability Company, and BOUNCE,INCORPORATED, a Colorado corporation,

    Defendants.

    )))))))))))))))))))))))))

    ))

    Case No. 3:14-cv-01045

    COMPLAINT FOR:

    (1) DECLARATORY RELIEF OFPATENT INVALIDITY,UNENFORCEABILITY ANDNON-INFRINGEMENT

    (2) FEDERAL UNFAIRCOMPETITION - LANHAM ACT,15 U.S.C. 1125

    (3) UNFAIR COMPETITION - CAL.BUS. & PROF. CODE 17200ETSEQ.

    (4) TORTIOUS INTERFERENCEWITH PROSPECTIVEECONOMIC ADVANTAGE

    (5) INTENTIONALMISREPRESENTATION

    (6) FRAUD

    DEMAND FOR JURY TRIAL

    Plaintiffs, Petsport USA, Inc. ("Petsport") and The Kroger Co. ("Kroger"), for their

    Complaint against Defendants The Kong Company, LLC ("Kong") and Bounce, Incorporated

    ("Bounce"), allege as follows:

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    COMPLAINT Case No. 3:14-cv-01045

    H

    olland&KnightLLP

    400

    SouthHopeStreet,8thF

    loor

    LosAngeles,

    CA

    90071

    Tel:213.8

    96.2

    400

    Fax:213.8

    96.2

    450

    THE PARTIES

    1. Plaintiff, Petsport, is a corporation organized and existing under the laws of the Staof California, having its principal place of business at 1160 Railroad Avenue, Pittsburg, Californi

    94565.

    2. Plaintiff, Kroger, is a corporation organized and existing under the laws of the Staof Ohio, having its principal place of business at 1014 Vine Street, Cincinnati, Ohio 45202.

    3. Upon information and belief, Defendant Kong is a Colorado Limited LiabilityCompany, having its principal place of business at 16191-D Table Mountain Parkway, Golden,

    Colorado 80403.

    4. Upon information and believe, Defendant Bounce is a Colorado corporation locateat 16191-D Table Mountain Parkway, Golden, Colorado 80403, and is and was at all relevant tim

    doing business as The Kong Company.

    JURISDICTION AND VENUE

    5. The first cause of action is for a declaratory judgment of patent invalidity,unenforceability and non-infringement. Included in the relief sought is a determination that U.S.

    Patent No. 5,947,061 (the " '061 patent," a copy of which is attached hereto as Exhibit A) is inva

    unenforceable and not infringed by Petsport or Kroger. The first cause of action arises under the

    Declaratory Judgment Act, 28 U.S.C. 2201-2202, and the Patent Laws of the United States, Ti

    35 United States Code. Subject matter jurisdiction over the first cause of action is vested in this

    Court by 28 U.S.C. 1331 and 1338(a).

    6. The second cause of action is for federal unfair competition under Section 43(a) ofthe Lanham Act, 15 U.S.C. 1125(a). Subject matter jurisdiction over the second cause of action

    vested in this court by 28 U.S.C. 1338(a) and 1338(b) and 15 U.S.C. 1121.

    7. The third through sixth causes of action are for unfair competition, tortiousinterference with prospective business advantage, intentional misrepresentation and fraud,

    respectively. Subject matter jurisdiction over the third through sixth causes of action is vested in

    this court by 28 U.S.C. 1367 and 1338(b).

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    COMPLAINT Case No. 3:14-cv-01045

    H

    olland&KnightLLP

    400

    SouthHopeStreet,8thF

    loor

    LosAngeles,

    CA

    90071

    Tel:213.8

    96.2

    400

    Fax:213.8

    96.2

    450

    8. Personal jurisdiction and venue are proper in this judicial district under 28 U.S.C. 1391 because, inter alia, the parties all do business in this district, a substantial part of the even

    giving rise to this litigation occurred in this district and a substantial part of the property that is

    subject to this litigation is situated in this district. Specifically, Defendant Bounce at all relevant

    times sold Kong-branded products to pet products retailers in the State of California and did

    business as The Kong Company. Defendant Kong currently sells Kong-branded products to pet

    products retailers in the State of California and did and continues to do business in the State of

    California.

    INTRADISTRICT ASSIGNMENT

    9. Under Local Rule 3.2(c), this is an Intellectual Property Action to be assigned on adistrict-wide basis.

    GENERAL ALLEGATIONS

    Defendant Kong sends a cease-and-desist letter to Plaintiff Kroger

    10. On or about January 22, 2014, counsel for Kong sent a letter to Kroger, d/b/a PetPride (sic), stating that Kroger is making and/or selling a product labeled "Crazy Bounce Treat

    Ball" (the "accused product") that may infringe various claims of the '061 patent that had been

    assigned to Kong. A copy of the January 22, 2014 cease-and-desist letter is attached hereto as

    Exhibit Band a photo of the accused product is shown in the attachment to the letter. Kong's

    counsel demanded that Kroger refrain from manufacturing and selling the accused product and

    informed Kroger that it was to sell off its remaining inventory of the accused product by "Februa

    2014."

    11. Plaintiff Petsport is a manufacturer of a wide variety of pet toys and other petproducts, including the accused product. The accused product is purchased by Kroger from

    Petsport and resold by Kroger as the Pet Pride-branded "Crazy Bounce Treat Ball." Petsport sell

    and sold the same pet toy, bearing Petsport's MOJO trademark, under its own brand to numerous

    other retailers throughout the United States and has done so since 2007. A photo of Petsport's

    MOJO-branded pet toy is attached hereto as Exhibit C.

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    COMPLAINT Case No. 3:14-cv-01045

    H

    olland&KnightLLP

    400

    SouthHopeStreet,8thF

    loor

    LosAngeles,

    CA

    90071

    Tel:213.8

    96.2

    400

    Fax:213.8

    96.2

    450

    not have recesses of different depths or shapes. Plaintiffs are not infringing and are not threatenin

    to infringe any valid, enforceable claims of the '061 patent, directly or indirectly.

    Defendant Kong's "Kong" toy

    16. Defendant Kong is a large manufacturer of pet toy products. Among the productsKong manufacturers is a three-lobed pet toy marketed under the trademark KONG which, on

    information and belief, has been available in the market since 1976, wellbeforeKong's patent

    application. Like the accused products, the Kong pet toy is generally hollow and has a small hole

    its upper end and larger hole in its lower end. The Kong pet toy also does not have any other

    recesses or openings therein. The Kong toy is the subject of U.S. Design Patent No. D256,958 th

    was issued on September 16, 1980 to Joseph P. Markham, who also is one of the co-inventors

    identified on the '061 patent. A copy of that Kong design patent is attached hereto as Exhibit D.

    17. Because the Kong toy's configuration is so materially similar to the accused produinsofar as the subject matter of the '061 patent claims are concerned, any claim that would read on

    the accused product would also read on the Defendants' Kong toy. If a claim in the '061 patent

    reads on the Kong toy, then it is anticipated by the Kong toy and would be invalid.

    The '061 Patent Application History

    18. During the prosecution of the parent application, Application No. 08/663,447, nowabandoned, Bounce distinguished prior art cited by the PTO on the grounds that the cited prior ar

    did not disclose providing edible food treats in combination with a pet toy. However, at the time

    Bounce made these arguments to the PTO, Bounce had actually been disclosing to the public,for

    over a year prior to the filing date of its application for the '061 patent, how to stuff the interior o

    its Kong pet toy with edible food