RiverSmith v. Omnisin - Complaint

Case 1:18-cv-01927-MSK Document 1 Filed 07/30/18 USDC Colorado Page 1 of 9
IN THE UNITED STATES DISTRICT COURT

DISTRICT OF COLORADO
Civil Action No. ________________
RIVERSMITH INC.,
Plaintiff,
v.
OMNISIN INC. DBA DENVER OUTFITTERS, INC.,
Defendant.
______________________________________________________________________________
COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF

PATENT AND JURY DEMAND
______________________________________________________________________________
Plaintiff, RiverSmith Inc., (“RiverSmith” or “Plaintiff”) brings this action against
Defendant Omnisin Inc. dba Denver Outfitters, Inc. (“Denver Outfitters” or “Defendant”), a
Colorado corporation, and for its cause of action alleges:
THE PARTIES
1. RiverSmith is a corporation organized and existing under the laws of the State of
Colorado and having a business address of 1835 38th Street, Boulder, CO 80301.
2. On information and belief, Denver Outfitters is a corporation organized and
existing under the laws of the State of Colorado and having a business address and mailing
address of 1120 Delaware St. #110, Denver, CO 80204 and a registered agent at 1120 Delaware
St. #403, Denver, CO 80204.
JURISDICTION AND VENUE
3. RiverSmith seeks a declaratory judgment that it does not infringe U.S. Design
Patent No. 653,446 (the “’446 patent”, attached hereto as Exhibit A).
1
4. This action is brought under 28 U.S.C. § 2201 and the patent laws of the United
States, 35 U.S.C. § 1, et. seq., and, as described below, RiverSmith and Denver Outfitters have
adverse legal interests presenting a concrete, real and substantial, justiciable controversy between
them.
5. This Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C.
§§ 1331, 1338(a).
6. This Court also has personal jurisdiction over Denver Outfitters pursuant to the
Colorado Long-Arm Statute (Colo. Rev. Stat. § 13-1-124) and the Due Process Clause of the
Fourteenth Amendment to the United States. Denver Outfitters is incorporated in the state of
Colorado, has a business and mailing address in the state of Colorado, and regularly transacts
business in the State of Colorado including offering products for sale within this judicial district
and throughout the United States. Denver Outfitters has also specifically directed activities to
the state of Colorado by sending a letter to RiverSmith, a Colorado corporation, accusing it of
patent infringement.
7. Venue is proper under at least 28 U.S.C. § 1391(b).
FACTS
8. RiverSmith is a new start-up company founded by avid fly fishermen and
engineers passionate about evolving the sport of fishing. The first product to be promoted by
RiverSmith is the River Quiver which is a fly fishing rod holder that protects rods and guides
from damage yet still enables easy rod entry. RiverSmith is currently promoting the River
Quiver which will be ready to ship in August of 2018.
9. In an attempt to unfairly limit competition and prevent the sale of the River
Quiver, Denver Outfitters has accused RiverSmith of patent infringement.
2
10. On July 19, 2018 RiverSmith received a letter from Denver Outfitters accusing
RiverSmith of infringing the ’446 patent. (Exhibit B (RiverSmith “is marketing and plans to
begin selling fly fishing rod holders that appear to infringe Denver Outfitters’ U.S. Patent No.
D653,446.”)) The letter identified the River Quiver as the allegedly infringing product and
provided a comparison of the River Quiver to a drawing from the ’446 patent.
11. The letter further stated that Denver Outfitters was “willing to enforce its patents
through court proceedings” and that if RiverSmith wished to avoid litigation RiverSmith should
“provide its assurances by no later than July 31, 2018 that RiverSmith will cease from making,
selling, and offering to sell its River Quiver products . . . .” (Exhibit B.)
12. RiverSmith should not be required to cease making, selling, and offering its River
Quiver product because the River Quiver does not infringe the ’446 patent.
13. The ’446 patent covers the ornamental design for a fishing rod storage device as
shown and described in Figures 1-8 of the ’446 patent. (Exhibit A.)
14. The infringement analysis for design patents is two-pronged and is done through
the eyes of an ordinary observer. First, there is a threshold analysis to determine whether the
overall appearance of the claimed and accused designs appear substantially the same to an
ordinary observer such that the ordinary observer would confuse one product for another. If the
claimed and accused designs are plainly dissimilar, i.e. not substantially the same, there is no
infringement and the analysis ends. If the claimed and accused designs are not plainly
dissimilar, a second analysis occurs under which the question becomes whether the ordinary
observer would consider the two designs to be substantially the same in view of a comparison of
the claims and accused designs with the prior art.
3
15. The claimed design of the ’446 patent and the design of RiverSmith’s River
Quiver are plainly dissimilar to an ordinary observer as shown below, and the first requirement
for patent infringement is not met, obviating the need for consideration of the second
requirement.
’446 PATENT RIVER QUIVER
Fig. 1: Four pole:
Two pole:
Fig. 2:
Fig. 3:
4
Fig. 4:
16. As can be seen above, the design of RiverSmith’s River Quiver is plainly
dissimilar from the design claimed in the ’446 patent. For example, an ordinary observer would
notice that the River Quiver has four mounting brackets present, while the patented design has no
mounting brackets.
17. The River Quiver also differs from the patented design in that the River Quiver
has T-slots (top and bottom of rod tube) and one, wide coupler that uses the T-slot and is a
simple clam shell design. The patented design has no T-slots and uses two, narrow couplers in
which the rod tubes are inserted.
18. Furthermore, the River Quiver has either two extrusions (for a two pole holder) or
four extrusions (for a four pole holder). The extrusions are custom-shaped (i.e., not
commercially available) and are not round. This provides for high strength while still being
light-weight. The patented design has three extrusions which are round-shaped and which are
spaced further apart than the River Quiver’s two or four extrusions (i.e., the patented design has
a gap between extrusions while the River Quiver does not).
19. There is also a distinct difference between the River Quiver and the patented
design with regard to the box/tube interface (i.e., how the wheel box meets the rod-tube). The
River Quiver’s box/tube interface is aerodynamic and monolithic. On the patented design,
however, the box/tube interface is non-aerodynamic and has three separate interfaces, one per
tube.
5
20. The shapes of the wheel boxes and the noses of the River Quiver and the patented
design also differ. For instance, the River Quiver’s wheel box design opens to the side, has a
round barrel lock offset to the side of the box, and does not possess a bumped-out rear lid design.
The patented design’s wheel box design, on the other hand, opens upward, has a rectangular-
shaped lock on the bottom of the box, and has a bumped-out feature (i.e., the box contours the
shape of a fly-rod grip).
21. As an ordinary observer would certainly notice, the only similarity between the
River Quiver design and the patented design is the purely functional characteristic of a shape that
accommodates the shape of a rod and reel, as a fishing rod storage device must. The two designs
are different in the ornamental aspects of the design and shape, and, therefore, they are plainly
dissimilar. Denver Outfitter’s allegation of patent infringement fails the first prong of the
analysis.
22. Denver Outfitter’s allegation of design patent infringement also fails the second
prong of the analysis because no ordinary observer would consider the two designs to be
substantially the same in view of a comparison of the claimed and accused designs with the prior
art.
23. Shown below is one example of the prior art, U.S. 6,760,994, which the ordinary
observer can readily see is more similar to the claimed design of the ’446 patent than the River
Quiver.
6
24. As shown by the prior art above, the scope of coverage of the ’446 patent is
narrow and cannot be viewed as broad enough to encompass the design of RiverSmith’s product.
If it was viewed so broadly, the ’446 patent would be invalid because it would lack novelty and
non-obviousness as compared to the prior art.
COUNT 1
DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’446 PATENT
25. RiverSmith hereby realleges and incorporates by reference the allegations in
paragraphs 1 through 24 of this Complaint as though fully set forth herein.
26. RiverSmith’s River Quiver product does not and will not infringe the ’446 patent.
27. Accordingly, RiverSmith is entitled to a judicial declaration that it has not
infringed, literally or under the doctrine of equivalents, directly or indirectly, the ’446 patent.
28. RiverSmith will suffer permanent and irreparable injury for which RiverSmith has
no adequate remedy at law unless Denver Outfitters is permanently enjoined as provided by 35
U.S.C. § 283.
7
29. This is an exceptional case and RiverSmith is entitled to its attorney fees under 35
U.S.C. § 285.
PRAYER FOR RELIEF
Wherefore, RiverSmith requests that judgment be entered in its favor and against Denver
Outfitters as follows:
A. A declaration that RiverSmith has not infringed and does not infringe the ’446
patent;
B. A declaration that this is an exceptional case;
C. A declaration that RiverSmith is entitled to its fees, costs, and expenses in this
action pursuant to 35 U.S.C. § 285 and any other applicable statute, and awarding such fees,
costs, and expenses;
D. Entering a permanent injunction ordering Denver Outfitters and each of its
officers, directors, agents, counsel, servants, employees, and all persons in active concert to
withdraw their claims of infringement and be restrained from alleging, representing, or otherwise
stating that the River Quiver and any substantially similar RiverSmith product infringes the ’446
patent or from instituting any action or proceeding alleging infringement of the ’446 patent
against RiverSmith or any customers, manufacturers, users, importers, or sellers of RiverSmith’s
River Quiver or substantially similar RiverSmith products; and
E. An award of such other relief as deemed appropriate.
JURY DEMAND
RiverSmith demands a trial by jury on all issues so triable.
8
Dated: July 30, 2018
Respectfully Submitted,
Merchant & Gould P.C.
By: /s/ Ryan J. Fletcher

Ryan J. Fletcher # 43027
1801 California Street, Suite 3300
Denver, CO 80202
Phone: (303) 357-1651
Fax: (612) 332-9081
E-Mail: rfletcher@merchantgould.com
Attorney for Plaintiff
9
Case 1:18-cv-01927-MSK Document 1-1 Filed 07/30/18 USDC Colorado Page 1 of 5
EXHIBIT A
USOOD653446S
(12) United States Design Patent (10) Patent No.: US D653,446S

Bode (45) Date of Patent: Feb. 7, 2012
(54) FISHING ROD STORAGE DEVICE OTHER PUBLICATIONS
“Semi-Custom Dual rod reel holders FS.” Teton Gravity Research
(76) Inventor: Douglas R. Bode, Bailey, CO (US) Forums, http://www.tetongravity.com/forums/show thread.php
(**) Term: 14 Years &t+192171&page=2, printed May 17, 2010.
* cited by examiner
(21) Appl. No. 29/367,594
Primary Examiner — Catheri Oliver
(22) Filed: Aug. 10, 2010
(51) LOC (9) Cl. .................................................. 03-01 (57) ornamental design forCLAIM
The a fishing rod storage device, as
(52) U.S. Cl. ........................................................ D3A260 shown and described.
(58) Field of Classification Search ................... D3/260,
D3/905; 43/21.2, 26, 54.1, 57.1: 224/922: DESCRIPTION
206/315.11; D22/147
See application file for complete search history. FIG. 1 is a perspective view of a fishing rod storage device
showing my new design;
(56) References Cited FIG. 2 is another perspective view showing a portion of the
fishing rod storage device in a second position of use:
U.S. PATENT DOCUMENTS FIG. 3 is a top plan view thereof;
2,749,645. A * 6/1956 McKern ............................ 43.26 FIG. 4 is a front elevation view thereof;
D284423 S * 7/1986 McCallum ... D3,260 FIG. 5 is a right elevation view thereof;
4,967,504 A * 1 1/1990 Craft ................................. 43.26 FIG. 6 is a left elevation view thereof
D321,281 S
* 1 1/1991 Cooper ............ ... D3,260 FIG. 7 is a bottom plan view thereof; and,
5,341,590 A * 8/1994 Hepworth et al. ................ 43.26 FIG. 8 is a rear elevation view thereof.
D458,747 S * 6/2002 Hields et al. ... ... D3,260
6,760,994 B2 * 7/2004 Henault et al. .................... 43.26
D530,085 S * 10/2006 Quinnan ........................ D3,260 1 Claim, 3 Drawing Sheets
U.S. Patent Feb. 7, 2012 Sheet 1 of 3 US D653,446S

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EXHIBIT B
July 19, 2018 DIRECT DIAL 216.696.5663 | patrick.clunk@tuckerellis.com
VIA FEDERAL EXPRESS AND EMAIL
chris.koske@riversmith.com
RiverSmith, Inc.
1835 38th Street
Boulder, CO 80301
Re: RiverSmith Infringement of Denver Outfitters’ U.S. Patent No. D653,446
To Whom It May Concern:
We represent Denver Outfitters in its intellectual property matters. Denver Outfitters is a leading
manufacturer of fly fishing rod holders and related accessories, and is the owner of valuable intellectual
property rights that cover its product line. It has come to our attention that RiverSmith, Inc. (“RiverSmith”)
is marketing and plans to begin selling fly fishing rod holders that appear to infringe Denver Outfitters’ U.S.
Patent No. D653,446 (“D446 Patent”). A copy of the D446 Patent is attached to this letter as Exhibit A.
The infringing products include the River Quiver fly fishing rod holders. A comparison between
Denver Outfitters’ D446 Patent and RiverSmith’s product as it appears online is seen below:
Denver Outfitters’ U.S. Patent No. D653,446 RiverSmith River Quiver
Your intent to infringe Denver Outfitters’ IP is evident from your Instagram activity. When
introducing your product, you tagged Denver Outfitters’ Rod Vault in an attempt to confuse consumers and
to trade off of Denver Outfitters’ good will.
RiverSmith, Inc.
July 19, 2018
Page 2
https://www.instagram.com/p/BlEVCpog55n/?utm_source=ig_share_sheet&igshid=1rdwas747p15b
Denver Outfitters demands that RiverSmith immediately stop all manufacturing and advertising of,
and discontinue its plans to begin selling in the U.S., any items that infringe the D446 Patent, including the
River Quiver fly fishing rod holders. Any sale or offering for sale of infringing products will constitute willful
infringement, which may entitle Denver Outfitters to treble damages and its attorneys’ fees.
Although Denver Outfitters is willing to enforce its patents through court proceedings, it prefers to
avoid litigation when practicable. If RiverSmith shares Denver Outfitters’ desire to avoid litigation, Denver
Outfitters requests that RiverSmith provide its assurances by no later than July 31, 2018 that RiverSmith will
cease from making, selling, and offering to sell its River Quiver products or any other products that infringe
Denver Outfitters’ intellectual property rights in the U.S.
Nothing in this letter shall be deemed a waiver of any rights, remedies or defenses of Denver
Outfitters, all of which are hereby expressly reserved under all applicable laws.
Sincerely,
Tucker Ellis LLP
Patrick Clunk
PFC:mme
Enclosures
Exhibit A
Exhibit A
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Case 1:18-cv-01927-MSK Document 1 Filed 07/30/18 USDC Colorado Page 1 of 9

IN THE UNITED STATES DISTRICT COURT

Civil Action No. ________________

OMNISIN INC. DBA DENVER OUTFITTERS, INC.,

COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF

Plaintiff, RiverSmith Inc., (“RiverSmith” or “Plaintiff”) brings this action against

Colorado corporation, and for its cause of action alleges:

2. On information and belief, Denver Outfitters is a corporation organized and

St. #403, Denver, CO 80204.

JURISDICTION AND VENUE

the state of Colorado by sending a letter to RiverSmith, a Colorado corporation, accusing it of

7. Venue is proper under at least 28 U.S.C. § 1391(b).

8. RiverSmith is a new start-up company founded by avid fly fishermen and

Quiver which will be ready to ship in August of 2018.

Quiver, Denver Outfitters has accused RiverSmith of patent infringement.

the claims and accused designs with the prior art.

’446 PATENT RIVER QUIVER

Fig. 1: Four pole:

which the rod tubes are inserted.

a gap between extrusions while the River Quiver does not).

shape of a fly-rod grip).

non-obviousness as compared to the prior art.

25. RiverSmith hereby realleges and incorporates by reference the allegations in

paragraphs 1 through 24 of this Complaint as though fully set forth herein.

27. Accordingly, RiverSmith is entitled to a judicial declaration that it has not

no adequate remedy at law unless Denver Outfitters is permanently enjoined as provided by 35

PRAYER FOR RELIEF

B. A declaration that this is an exceptional case;

costs, and expenses;

D. Entering a permanent injunction ordering Denver Outfitters and each of its

against RiverSmith or any customers, manufacturers, users, importers, or sellers of RiverSmith’s

River Quiver or substantially similar RiverSmith products; and

E. An award of such other relief as deemed appropriate.

RiverSmith demands a trial by jury on all issues so triable.

Dated: July 30, 2018

Merchant & Gould P.C.

By: /s/ Ryan J. Fletcher

(12) United States Design Patent (10) Patent No.: US D653,446S

U.S. Patent Feb. 7, 2012 Sheet 1 of 3 US D653,446S

U.S. Patent Feb. 7, 2012 Sheet 2 of 3 US D653,446S

U.S. Patent Feb. 7, 2012 Sheet 3 of 3 US D653,446S

July 19, 2018 DIRECT DIAL 216.696.5663 | patrick.clunk@tuckerellis.com

VIA FEDERAL EXPRESS AND EMAIL

Re: RiverSmith Infringement of Denver Outfitters’ U.S. Patent No. D653,446

To Whom It May Concern:

Denver Outfitters’ U.S. Patent No. D653,446 RiverSmith River Quiver

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