lanphere v. schwabe et. al
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IN THE UNITED STATES DISTRICT COURTFOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
DONALD J. LANPHERE, JR., )
) Civil Action No.:Plaintiff, )
v. ) Hon. Judge:)
TERRY SCHWABE, ) Magistrate Judge:TOM LAWRENCE, and )STEVE LUNDGREN, )
)Defendants. )
__________________________________________ ) JURY TRIAL DEMANDED
COMPLAINT
Plaintiff DONALD J. LANPHERE, JR. (hereinafter Don Lanphere), by his undersigned
attorneys, for his complaint against Defendants TERRY SCHWABE, TOM LAWRENCE, and
STEVE LUNDGREN (hereinafter collectively the Defendants), states and alleges as follows:
Cause of Action
1. This action arises from the Defendants fraud and inequitable conduct in obtaining U.S.
Design Patent No. US D651,355 S (the 355 patent) and in subsequently using this invalid patent
as an excuse or justification to infringe upon the rights of or otherwise unfairly compete with Don
Lanphere, thereby causing substantial damage to Don Lanphere as a result of this fraud, inequitable
conduct and unfair competition.
2. There is an actual case or controversy regarding the validity and use of the '355 patent. The
Defendants are knowingly using an invalid patent to unfairly compete with Don Lanphere. The
Defendants have also attached a copy of the 355 patent as Exhibit A to their Counterclaims against Don
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Lanphere in a co-pending lawsuit between the parties hereto, namely Civil Action No. 10-4774 pending
in this Court.
Parties
3. Plaintiff Don Lanphere is an individual, U.S. citizen residing at 1741 Ridgewood Ln. E.,
Glenview, Illinois 60025.
4. Upon information and belief, Defendant Terry Schwabe is an individual, U.S. citizen
residing in East Moline, Illinois, and has an address at 767 Fifty-Second Avenue, Suite 203, Moline,
Illinois 61265.
5. Upon information and belief, Defendant Tom Lawrence is an individual, U.S. citizen
residing in Moline, Illinois, and has an address at 767 Fifty-Second Avenue, Suite 203, Moline,
Illinois 61265.
6. Upon information and belief, Defendant Steve Lundgren is an individual, U.S. citizen
residing in Lenexa, Kansas, and has an address at 15621 W. 87th Parkway, Lenexa, Kansas, 66219.
Jurisdiction and Venue
7. This action arises under the provisions of the Patent Laws, Rules and Regulations, 35
U.S.C. 271 et seq., 37 C.F.R 1.56, under 15 U.S.C. 1125 et seq., under the Declaratory Judgments
Act, 28 U.S.C. 2201 et seq., and related state and/or common law.
8. This Court has jurisdiction of these claims under, inter alia, the provisions of 28 U.S.C.
2201, 2202, 1338, 1367, under the Patent Laws, Rules and Regulations, 35 U.S.C. 1 et seq., and
37 C.F.R 1.56 et seq., and under the Lanham Act, 15 U.S.C. 1501 et seq.
9. Venue is proper in this District under, inter alia, the provisions of Section 1391 of Title
28, United States Code.
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Background Facts
10. On January 15, 2008, United States Patent No. D559,502S (the 502 patent),
entitled Helmet-Shaped Hat with Facemask, was duly and legally issued to Don Lanphere, the
named inventor and sole owner of the subject matter claimed in the 502 patent. A true and correct
copy of the 502 patent is attached hereto as Exhibit A.
11. Effective March 7, 2011, United States Copyright Registration No. VA-1-768-794
(the 794 Copyright) entitled Helmet Shaped Hat With Flexible Removable Facemask was duly
and legally registered to Don Lanphere, the author and sole copyright claimant of sculpture/3-D
artwork subject matter in the 794 Copyright. A true and correct copy of the 794 Copyright is
attached hereto as Exhibit B.
12. In the late summer/early fall of 2009, an acquaintance of Don Lanphere, Mr. Todd
Potter, introduced him to Terry Schwabe, Tom Lawrence and Steve Lundgren, who agreed to secure
for Don Lanphere the necessary licenses to gain accesses to the collegiate market for, and to act as a
distributor of Don Lanpheres patented and copyrighted Huddle Hat products. The defendants
accepted an inventory of approximately 10,000 of Don Lanpheres Huddle Hat products, after
informing Don Lanphere that they would quickly obtain the necessary licenses and begin
distributing the patented products during the 2009 college football season.
13. Around this time, a number of Don Lanpheres Huddle Hat products were distributed
to, used by and/or sold to one or more third parties or otherwise publicly used or disclosed to the
public. The defendants were well aware of Don Lanpheres Huddle Hat products and the public
disclosure of the Huddle Hat products.
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14. After the inventory of Don Lanpheres Huddle Hat products was ready for sale, Don
Lanphere repeatedly asked these defendants when they would start distributing the patented
products. The defendants repeatedly kept telling Don Lanphere that they would start shipping the
Huddle Hat products within just a few days. Despite their assurances that the Huddle Hat products
would soon be distributed, days turned to weeks and the Huddle Hat products were never distributed.
15. After the defendants breached their agreement with Don Lanphere to obtain licenses
for, and to market and sell Don Lanpheres Huddle Hat products, the defendants extorted $8000
from Don Lanphere before they would allow Don Lanphere to pick up and leave with his inventory
of Huddle Hat products.
16. Upon information and belief, the defendants then decided to make and sell a modified
version of the Huddle Hat product as their own helmet-shaped hat with removable flexible face
mask. The defendants modified version of Don Lanpheres Huddle Hat product is called the
Fanaticap.
17. On July 2, 2010, the defendants filed a design patent application on their Fanaticap
product. On December 27, 2011, the defendants were issued U.S. Design Patent No. US D651,355
S on this application (the 355 patent). A true and correct copy of the 355 patent is attached hereto
as Exhibit C.
18. Upon information and belief, the Fanaticaps helmet shaped hat is substantially the
same overall shape as the Huddle Hat products helmet shaped hat. Further upon information and
belief, the Fanaticaps removable flexible face mask is substantially the same overall shape as a well
known NFL face mask known as the Schutt EGOP.
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19. Upon information and believe, the Fanaticap is an obvious combination of the Huddle
Hat products helmet-shaped hat with a removable flexible face mask in the shape of a well known
NFL face mask. Further, any slight variances thereto are simply an obvious matter of design choice.
As such, the 355 patent is invalid in view of this obvious combination.
20. Pursuant to 37 C.F.R 1.56, each of the defendants and their attorneys had a duty of
candor and good faith in dealing with the U.S. Patent & Trademark Office (USPTO), which
included a duty to disclose to the USPTO all information known to that individual to be material to
patentability. Each of the defendants acknowledged this duty in their Declarations filed with the
355 patents application.
21. Upon information and belief, during the prosecution of the 355 patents application,
the defendants filed four information disclosure statements disclosing various prior art to the
USPTO.
22. Upon information and belief, during the prosecution of the 355 patents application,
the defendants and/or their attorneys had knowledge of the Huddle Hat product, yet despite filing
four information disclosure statements, intentionally failed to disclose the Huddle Hat product to the
USPTO.
23. Upon information and belief, the defendants and/or their attorneys knew or should
have known that the Huddle Hat products were material to patentability of the Fanaticap. As such,
the defendants and/or their attorneys violated their duty of disclosure and breached their duty of
candor and good faith in dealing with the USPTO by failing to disclose the Huddle Hat products to
the USPTO in any one of their four information disclosure states or in a subsequent information
disclosure statement.
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24. Upon information and belief, through the defendants and/or defendants attorneys
intentional failure to disclose the Huddle Hat product to the USPTO, the defendants and/or their
attorneys practiced or attempted to practice fraud on the Office and/or violated their duty of
disclosure through bad faith and/or intentional misconduct.
25. Upon information and belief, during the prosecution of the 355 patents application,
the defendants and/or their attorneys had knowledge of the well known NFL face mask known as the
Schutt EGOP, worn by many NFL stars such as Eric Dickerson and Deion Sanders, yet despite filing
four information disclosure statements, intentionally failed to disclose the NFL face mask known as
the Schutt EGOP to the USPTO.
26. Upon information and belief, the defendants and/or their attorneys knew or should
have known that the well known NFL face mask known as the Schutt EGOP was material to
patentability of the Fanaticap. As such, the defendants and/or their attorneys violated their duty of
disclosure and breached their duty of candor and good faith in dealing with the USPTO by
intentionally failing to disclose the well known NFL face mask known as the Schutt EGOP to the
USPTO in any one of their four information disclosure states or in a subsequent information
disclosure statement.
27. Upon information and belief, through the defendants and/or defendants attorneys
intentional failure to disclose the well known NFL face mask known as the Schutt EGOP to the
USPTO, the defendants and/or their attorneys practiced or attempted to practice fraud on the Office
and/or violated their duty of disclosure through bad faith and/or intentional misconduct.
28. Further, during the course of the litigation ofCivil Action No. 10-4774, the defendants
and their attorneys have asserted that Don Lanpheres 502 patent is invalid in view of various prior art
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references. A true and correct copy of the defendants Final Invalidity Contentions regarding the
the 502 patent is attached hereto as Exhibit D. The assertions made by the defendants and their
attorneys in their Final Invalidity Contentions clearly is information known to these individual to
be material to patentability.
29. The Defendants assertions in their Final Invalidity Contentions are an admission
against interest with respect to the patentability of their Fanaticap. By their own reasoning in their
Final Invalidity Contentions, and in view of the Huddle Hat products, the Defendants knew or
should have known that their 355 patent is obvious in view of known prior art.
30. Upon information and belief, during the prosecution of the 355 patents application,
the defendants and/or their attorneys had knowledge of their Final Invalidity Contentions, yet
despite filing four information disclosure statements, intentionally failed to disclose their Final
Invalidity Contentions to the USPTO.
31. Upon information and belief, the defendants and/or their attorneys knew or should
have known that their Final Invalidity Contentions were material to patentability of the Fanaticap.
As such, the defendants and/or their attorneys violated their duty of disclosure and breached their
duty of candor and good faith in dealing with the USPTO by intentionally failing to disclose their
Final Invalidity Contentions to the USPTO in any one of their four information disclosure states or
in a subsequent information disclosure statement.
32. Upon information and belief, through the defendants and/or defendants attorneys
intentional failure to disclose their Final Invalidity Contentions to the USPTO, the defendants
and/or their attorneys practiced or attempted to practice fraud on the Office and/or violated their
duty of disclosure through bad faith and/or intentional misconduct. Upon information and belief, the
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above described fraudulent actions and/or omissions of the defendants and/or their attorneys were
intention, willful, wanton and in bad faith.
33. In view of the defendants above described fraud and inequitable conduct in
intentionally failing to disclose information known to be material to patentability, the 355 patent is
therefore invalid.
34. Upon information and belief, the Defendants have the knowledge or should have the
knowledge that the 355 patent is invalid for one or more of the above described reasons. Despite
this knowledge, the Defendants have used the fact the 355 patent issued, albeitfraudulently, as a
justification to infringe upon Don Lanpheres rights in and to the Huddle Hat products, as part of or
in support of their counterclaims against Don Lanphere in ofCivil Action No. 10-4774, to obtain one
or more collegiate licenses for their Fanaticaps and to sell their Fanaticaps, and to otherwise unfairly
compete with Don Lanphere, all to the severe damage and detriment of Don Lanphere.
COUNT I
Declaration of Invalidity of the 502 Patent based on Prior Art
35. Don Lanphere repeats and realleges paragraphs 1-34 as though fully stated herein.
36. An actual and justiciable controversy has arisen and now exists between Don
Lanphere and the defendants concerning whether the 355 patent is invalid.
37. The 355 patent is invalid for failure to comply with one or more provisions of the
Patent Laws of the United States, including, without limitation, 35 U.S.C. 102 and 103.
38. Absent a declaration that the 355 patent is invalid, the defendants will continue to
wrongfully maintain and use the 355 patent, and notify others of the 355 patent, in violation of the
laws and contrary to the public policy of the United States, and will thereby continue to cause Don
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Lanphere irreparable injury and damage.
39. Because the above activities and actions have created an actual and justiciable
controversy, Don Lanphere seeks a declaration that the 355 patent is invalid.
COUNT II
Declaration of Invalidity due to Inequitable Conduct
40. Don Lanphere repeats and realleges paragraphs 1-39 as though fully stated herein.
41. An actual and justiciable controversy has arisen and now exists between Don
Lanphere and the defendants concerning whether the 355 patent issued as a result of the defendants
and/or their attorneys fraud and inequitable conduct during the prosecution of the 355 patent.
42. The 355 patent is invalid due to the defendants and/or the defendants attorneys
willful, intentional and bad faith violation of their duty of candor and good faith in dealing with the
USPTO, under the provisions of the Patent Laws, Rules and Regulations, including, without
limitation, 37 C.F.R. 1.56.
43. Absent a declaration that the 355 patent was fraudulently obtained through
inequitable conduct and is therefore invalid, the defendants will continue to wrongfully maintain and
use the 355 patent, and notify others of the 355 patent, in violation of the laws and contrary to the
public policy of the United States, and will thereby continue to cause Don Lanphere irreparable
injury and damage.
44. Because the above activities and actions have created an actual and justiciable
controversy, Don Lanphere seeks a declaration that the 355 patent is invalid.
COUNT III
Fraud on the Patent Office
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45. Don Lanphere repeats and realleges paragraphs 1-44 as though fully stated herein.
46. The Defendants and/or their attorneys knowingly and intentionally withheld and did
not disclose to the USPTO, with the intent to deceive, the above describe information material to the
patentability of their Fanaticap as applied for in the 355 patents application.
47. The defendants and/or their attorneys knew of the above described material
information, knew that it was material, and made a deliberate and intentional decision to withhold it.
48. The USPTO would have refused the claim of the 355 patent based on this material
information.
49. Therefore, the defendants and/or their attorneys misconduct resulted in the unfair
benefit of receiving an unwarranted claim/patent.
50. Defendants fraudulent conduct as aforesaid has caused great and irreparable injury to
Don Lanphere, and unless the 355 is invalidated and held unenforceable, it will continue to cause
Don Lanphere great and irreparable injury.
COUNT IV
Federal Unfair Competition
51. Don Lanphere repeats and realleges paragraphs 1-50 as though fully stated herein.
52. The Defendants fraudulent procurement and use of a knowingly invalid patent has
resulted in unfair competition with Don Lanphere.
53. The acts of the Defendants complained of herein constitute are in violation of Section
43 of the Lanham Act, 15 U.S.C. 1125.
54. Defendants have, and on information and belief intend to continue to, willfully
engage in unfair competition under the federal law by the acts complained of herein, in complete
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disregard of Don Lanpheres rights.
55. On information and belief, the Defendants actions complained of herein were
committed willfully and intentionally.
56. As a result of the foregoing alleged actions of the Defendants, the Defendants are
being unjustly enriched and Don Lanphere has been and is being injured and damaged. Unless the
foregoing actions of the Defendants are restrained by this Court, Don Lanphere will continue to be
irreparably harmed, damaged and injured.
COUNT V
Common Law Unfair Competition
57. Don Lanphere repeats and realleges paragraphs 1-56 as though fully stated herein.
58. The acts of the Defendants complained of herein constitute unfair competition in
violation of the common law.
59. Defendants have, and on information and belief intend to continue to, willfully and
intentionally engage in unfair competition under the common law by the acts complained of herein,
in complete disregard of Don Lanpheres rights.
60. As a result of the foregoing alleged actions of the Defendants, the Defendants are
being unjustly enriched and Don Lanphere has been and is being injured and damaged. Unless the
foregoing alleged actions of the Defendants are restrained by this Court, Don Lanphere will continue
to be irreparably harmed, damaged and injured.
JURY DEMAND
Pursuant to Federal Rule of Civil Procedure 38(b), Plaintiff demands a trial by jury as to
all issues so triable in this action.
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WHEREFORE, plaintiff Don Lanphere prays that this Court enter judgment against the
Defendants as follows:
A. That the 355 patent is invalid under 35 U.S.C. 102 and/or 103;
B. That the 355 patent is invalid and unenforceable due to the defendants and/or their
attorneys inequitable conduct;
C. That the Defendants and/or their attorneys committed fraud on the USPTO and violated
their duty of candor and good faith in dealing with the Office;
D. That the Defendants have been and continue to compete unfairly with Don Lanphere
by obtaining the 355 patent through inequitable conduct and through their use of a knowingly
invalid patent;
E. That this Court award damages adequate to compensate Don Lanphere for the
Defendants fraud on the patent office;
F. That this Court award damages adequate to compensate Don Lanphere for the
Defendants unfair competition;
G. That this is an exceptional case pursuant to 35 U.S.C. 285 and 15 U.S.C. 1117;
H. That this Court award costs and reasonable attorneys fees pursuant to 35 U.S.C.
285 and 15 U.S.C. 1117; and
I. That this Court preliminarily, permanently and finally enjoin the Defendants, their
agents, officers, servants, employees, attorneys, successors, companies, customers and assignees, and all
those in active concert or participation with them, from competing unfairly with Don Lanphere;
J. That this Court grant all other relief as this Court may deem just and proper.
Respectfully submitted,
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DONALD J. LANPHERE, JR.
Date: June 27, 2012 By: s/Charles T. Riggs Jr.One of the Attorneys for Plaintiff
Timothy T. Patula (patula@patula.com)Charles T. Riggs Jr. (riggs@patula.com)PATULA & ASSOCIATES, P.C.116 S. Michigan Ave., 14th Fl.Chicago, Illinois 60603(312) 201-8220
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EXHIBIT A
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EXHIBIT B
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EXHIBIT C
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