Tekni-Plex et. al. v. Cain et. al

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Transcript of Tekni-Plex et. al. v. Cain et. al

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    IN THE UNITED STATES DISTRICT COURTFOR THE EASTERN DISTRICT OF PENNSYLVANIA

    TEKNI-PLEX, INC. and TRI-SEALHOLDINGS, INC.

    Plaintiffsv.

    R. MICHAEL CAIN and TAB-IT LLCDefendants

    )))))))

    COMPLAINT

    Civil Action No.

    JURY TRIAL DEMANDED

    1. Plaintiffs Tekni-Plex, Inc. and Tri-Seal Holdings, Inc. (hereinafter collectively"plaintiff') bring this action seeking a declaration, orders and award of monetary damages andinjunctive relief against defendants in order to, inter alia, halt defendants' misrepresentationsregarding ownership of plaintiff's proprietary technology and to correct inventorship of andaward ownership to plaintiff ofU.S. Patent No. 8,348,082 ("the ' 082 patent," attached as ExhibitA) and all U.S. and foreign counterpart applications and patents thereto (hereinafter collectively"the Patents").

    PARTIES2. Tekni-Plex, Inc. is a Delaware corporation having a place of business in King of

    Prussia, Pennsylvania. Tri-Seal Holdings, Inc. , a Delaware corporation and wholly ownedsubsidiary ofplaintiffTekni-Plex, Inc., is doing business in this District.

    3. Defendant Tab-IT, LLC is, and at all relevant times has been, a limited liabilitycompany organized and existing under the laws ofPennsylvania having its principal place ofbusiness in Mountville, Pennsylvania and conducting business generally in this District.

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    4. Defendant R. Michael Cain ("Cain") is an individual who, at all relevant times,has been residing and doing business in this District. On information and belief, Cain formed,organized and has, at all relevant times, been an officer and managing agent of defendant Tab-IT,LLC. Cain is the sole named inventor of the '082 patent and the Patents generally.

    JURISDICTION AND VENUE5. This is an action, inter alia, for Declaratory Judgment arising under 28 U.S.C.

    2201, 2202 and 35 U .S .C. 256 et seq., violation of the Lanham Act 15 U.S.C. 1125(a) et

    seq., violation ofthe Pennsylvania Uniform Trade Secrets Act, 12 Pa.C.S. 5301, 5302 et seq.,breach of contract, common law conversion and unfair competition

    6. Jurisdiction and venue are proper in this Court pursuant to 28 U.S.C. 1331,1338 and 1391.

    FACTS7. Plaintiff incorporates by reference each allegation contained in the paragraphs

    above as though fully set forth herein.8. Plaintiff, through one or more of its regular and full-time employees, including

    Patrick Santo Moschitto, originally conceived, designed, developed and reduced to practice anew, confidential and proprietary product design, structure and configuration comprising a pulltab innerseal and a method ofmanufacture therefor (hereinafter collectively "plaintiffsproprietary innerseal technology"). Substantially all of the details of and for the design,structure, composition and method of manufacture of plaintiffs proprietary innerseal technologyare described and claimed in the Patents including the '082 patent.

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    9. At and during the time that plaintiffs proprietary innerseal technology wasconceived, developed and reduced to practice, Cain was a full -time, regular employee of plaintiffand working with the design-and-development team, from whom Cain learned about saidtechnology together with plaintiffs confidential internal electronic and paper records.

    10. While Cain was employed by plaintiff, one of Cain' s duties was to work on theproject to develop plaintiffs proprietary innerseal technology, which Cain knew was confidentialand proprietary to plaintiff.

    11. At all relevant times , plaintiff required all employees involved with the

    proprietary innerseal technology to agree to maintain said technology in confidence and to assignany rights arising out of inventorship therein to plaintiff.

    12 . At all relevant times, Cain knew that plaintiffs proprietary innerseal technologywas confidential information proprietary to plaintiff and was not to be disclosed to or used byany third party including Cain without authorization from plaintiff.

    13 . In knowing violation of his obligations to plaintiff, Cain applied for the Patentsincluding the ' 082 patent in his own name as the purported sole inventor of an allegedinvention(s) that is comprised of plaintiffs proprietary innerseal technology.

    14. In knowing violation of his obligations to plaintiff, Cain caused the Patentsincluding the ' 082 patent to be applied for and issued naming himself as the sole inventor andfurther purporting to assign exclusive ownership of the Patents, including the ' 082 patent, toTab-IT, LLC.

    15 . On information and bel ief, Cain formed and is using defendant Tab-IT, LLC as avehicle for attempting to commercially exploit the Patents and the subject matter thereofincluding plaintiffs proprietary innerseal technology without authorization from plaintiff. In

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    furtherance of such attempted commercialization, Cain, alone or in conjunction with Tab-IT,LLC, has been and is misrepresenting to third parties and the public generally that Cain is thesole inventor of the subject matter of the Patents and that either Cain or Tab-IT, LLC is theowner of all intellectual property rights thereto.

    16. On information and belief, Cain and Tab-IT, LLC have attempted or areattempting to commercially exploit the Patents and the subject matter thereof by misrepresentingto third parties and the public generally that Cain or Tab-IT, LLC own exclusive rights to thePatents and offering rights of license to the Patents to third parties without authorization from

    plaintiff.17. On information and belief, Cain and Tab-IT, LLC have attempted or are

    attempting to sell or assign the Patents including the '082 patent to third parties bymisrepresenting to third parties and the public generally that Cain or Tab-IT, LLC own exclusiverights to the Patents including the '082 patent.

    18. On information and belief, Cain and Tab-IT, LLC are making, using, selling oroffering for sale, or assisting third parties in so doing, a product or process comprised ofplaintiffs proprietary innerseal technology and a product or process disclosed in or claimed bythe Patents including the '082 patent without authorization from plaintiff.

    COUNT I(35 U.S.C. 256, Declaratory Judgment Correcting lnventorship of the '082 Patent, AllOther Patents, and the Subject Matter Thereof)

    19. Plaintiff incorporates by reference each allegation contained in the paragraphsabove as though fully set forth herein.

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    20. This is a cause of action pursuant to 35 U.S.C. 256 and 28 U.S.C. 2201 , 2202seeking an order and declaration of correction of inventorship by the Court regarding the ' 082patent and the Patents generally. An actual controversy exists between plaintiff and defendantsregarding the inventorship of the ' 082 patent and the Patents generally.

    21. Inventorship of the '082 patent and the Patents should be corrected to namePatrick Santo Moschitto as inventor.

    22. Plaintiff is entitled to an order and declaration by the Court that corrects theinventorship ofthe '082 patent and the Patents.

    COUNT II(Declaratory Judgment Of Ownership ofOr Other Rights Under the '082 Patent And thePatents Generally)

    23. Plaintiff incorporates by reference each allegation contained in the paragraphsabove as though fully set forth herein.

    24. This is a cause of action pursuant to 28 U.S.C. 2201 , 2202 seeking an order anddeclaration of ownership of and other rights under the ' 082 patent and the Patents generally. Anactual controversy exists between plaintiff and defendants regarding ownership of the ' 082patent, the Patents generally and the subject matter thereof.

    25. Plaintiff is entitled to a declaration that plaintiff is the sole and exclusive owner oris a co-owner or licensee of the rights, title and interest, in under and to the ' 082 patent and thePatents.

    26. Plaintiff is entitled to a declaration that all ofthe subject matter ofthe ' 082 patentand the Patents generally is or was a confidential trade secret(s) owned by plaintiff, said tradesecret(s) being contained and disclosed in the ' 082 patent and the Patents generally.

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    27. To the extent that Cain might be found to have any rights in or to the ' 082 patentor the Patents, plaintiff is entitled to a declaration that Cain has assigned all such rights toplaintiff or, in the alternative, that plaintiff owns a shop right or perpetual non-exclusive licenseunder the '082 patent and the Patents.

    COUNT III(15 U.S.C. 1125(a), Unfair Competition And Misrepresentation As To The Nature, Kind

    Or Quality of Goods and Intellectual Property Rights Therein)28. Plaintiff incorporates by reference each allegation contained in the paragraphs

    above as though fully set forth herein.29. This is a cause of action for unfair competition arising out of defendants'

    misrepresentation to third parties, including prospective customers and direct competitors ofplaintiff, that Cain is the inventor of the ' 082 patent and the Patents, that Cain or Tab-IT, LLChave the right to license or assign rights under or ownership of the '082 patent and the Patents,

    and that Cain or Tab-IT, LLC have the right to make, use, sell or offer for sale products thatembody the subject matter ofthe ' 082 patent and the Patents.

    30. Such misrepresentations constitute a false and misleading misrepresentation as tothe nature, kind and quality ofplaintiffs and defendants ' prod