You are on page 1of 6

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF LOUISIANA DIS-TRAN WOOD PRODUCTS, LLC, * CIVIL ACTION NO.

[Number] * * * Plaintiff, * * VERSUS * * BROOKS MANUFACTURING COMPANY, * * Defendant. * ********************************************* COMPLAINT The plaintiff, Dis-Tran Wood Products, LLC, sues the defendant, Brooks Manufacturing Company, for a judgment declaring U.S. Patent Number 7,007,438 B11 invalid, unenforceable, and/or not infringed. JURISDICTION AND VENUE 1. This lawsuit arises under the Declaratory Judgment Act, 28 U.S.C. 2201-2202,

to determine an actual and justiciable controversy between the parties. The Court has subject matter jurisdiction pursuant to 28 U.S.C. 1331 and 1338(a). 2. This Court has personal jurisdiction over the defendant. This Court has general

jurisdiction over the defendant because, upon information and belief, the defendant engaged in systematic and continuous activities in Louisiana.2 In a declaratory judgment action involving patents, Federal Circuit law instead of regional circuit law applies to the jurisdictional issue.3 Upon information and belief, the defendant offers its products for sale in Alexandria, Louisiana, through its distributor and customer, Techline, Inc. The defendants activities with Techline
1 2

The 438 patent, attached as Exhibit A. LA. REV. STAT. ANN. 13:3201(B). 3 Akro Corp. v. Luker, 45 F.3d 1541, 1543 (Fed. Cir. 1995).
410023.3

include contracts, communications, and business originating in this district. Upon information and belief, the defendant also sells and delivers its products to Wesco and Irby in this district. Under Federal Circuit law, the defendants activities with Techline, Wesco, and Irby constitute continuous and systematic contacts with Louisiana such that general jurisdiction is proper under the Due Process Clause.4 3. Venue is proper in this district pursuant to 28 U.S.C. 1391(b) and (c). PARTIES 4. Dis-Tran is a Delaware limited liability company with a principal place of

business in Pineville, Louisiana. 5. is: Dwayne Carter 2120 Pacific Street Bellingham, Washington 98229-5825 6. Brooks Manufacturing Company may be served by serving the Louisiana Brooks Manufacturing Company is a Washington corporation. Its registered agent

Secretary of State.5 BACKGROUND 7. 8. The defendant owns by assignment the 438 patent. The 438 patent claims a method of supporting power lines from vertical utility

poles to which are secured wooden crossarms having nail endplates. The 438 patents claimed method requires the performance of at least twelve method steps, including: a. multiple steps for providing the wooden crossarm, bolts, pin assemblies, braces, and nail endplates;
4

LSI Indus., Inc. v. Hubbell Lighting, Inc., 232 F.3d 1369, 1375 (Fed. Cir. 2000); Viam Corp. v. Iowa ExportImport Trading Co., 84 F.3d 424, 430 (Fed. Cir. 1996). 5 LA. REV. STAT. ANN. 13:3424, 13:3471.
410023.3

b. additional multiple steps for forming holes in the crossarm and for forming nail projections in the endplates; and c. even more steps for assembling numerous parts onto the crossarm, brace, and pole. 9. 10. crossarms. 11. Dis-Trans sale of its crossarms does not meet the many required method steps of The defendant sells crossarms with nail endplates. Dis-Tran sells wooden crossarms with nail endplates, branded Dura-Arm

the 438 patent such as providing bolt assemblies, providing pin assemblies, providing brace assemblies, forming nail projections, and assembling the parts. 12. In 2011, the defendant sued Dis-Tran in the U.S. District Court in the Western

District of Washington for indirectly infringing the 438 patent.6 13. The defendants original complaint alleged Dis-Trans infringing acts include,

but are not limited to, their making, selling, and offering for sale their Dura-Arm endplate crossarm system.7 The defendant also alleged Dis-Trans acts of infringement have been, and continue to be, willful and deliberate as shownin partby prior conversations between representatives of [the defendant] and [Dis-Tran], in which [Dis-Trans] representatives conceded [its] knowledge of the 438 patent and [its] knowledge that [its] marketing and sale of endplate crossarms would result in the infringement of the 438 patent by others.8 14. The defendant repeated these allegations in its first amended complaint and

second amended complaint, its response to Dis-Trans first motion to dismiss, and its response to

6 7

Brooks Mfg. Co. v. Dis-Tran Wood Prods., LLC, No. 2:11-CV-00309 (W.D. Wash. Feb. 22, 2011). Id., Docket Entry #1 at 4, 16. 8 Id., Docket Entry #1 at 4, 18.
410023.3

Dis-Trans second motion to dismiss.9 During the course of the prior litigation, the defendant served numerous subpoenas on Dis-Trans customers. Upon information and belief, the uncertainty caused by the defendants acts caused virtually all of Dis-Trans customers to return their Dura-Arm crossarms to Dis-Tran or to refuse to buy them in the first instance. The district court in Washington ultimately dismissed the defendants lawsuit with prejudice on jurisdictional grounds that do not exist in the present case.10 Thus, the defendants judicial admissions show an actual and justiciable controversy exists between the parties regarding the invalidity and infringement of the 438 patent. 15. Despite the prior courts dismissal of the defendants lawsuit, the defendant

continues to attempt to influence the marketplace and fuel a controversy by touting the dismissal of its lawsuit as a victory for the 438 patent. FIRST CAUSE OF ACTION PATENT INVALIDITY 16. 17. Dis-Tran incorporates the allegations of the preceding paragraphs. An actual controversy has arisen and now exists between the parties concerning

the validity of the 438 patent claims. 18. All claims of the 438 patent are invalid because they are anticipated and lack

novelty under 35 U.S.C. 102. 19. 103. 20. All claims of the 438 patent are invalid because they fail to satisfy the All claims of the 438 patent are invalid because they are obvious under 35 U.S.C.

requirements of 35 U.S.C. 112.

10

Id., Docket Entry #17 at 9; Docket Entry #19 at 3-9; Docket Entry #52 at 3-14. Id., Docket Entry #56.

410023.3

21.

Dis-Tran seeks a judgment declaring all claims of the 438 patent invalid and

therefore unenforceable under 35 U.S.C. 102-103 and 112. SECOND CAUSE OF ACTION NON-INFRINGEMENT 22. 23. Dis-Tran incorporates the allegations of the preceding paragraphs. An actual controversy has arisen and now exists between the parties concerning

whether Dis-Trans activities in regard to its making, using and/or selling its Dura-Arm crossarm directly infringes any of the 438 patent claims. Also, an actual controversy has arisen and now exists concerning whether Dis-Tran and others (i.e. Dis-Trans customers) are each direct infringers as co-infringers of any of the 438 patent claims because of Dis-Tran making, using and/or selling its Dura-Arm crossarms in combination with the activities of others. And, an actual controversy has arisen and now exists between the parties concerning whether any of DisTrans activities in regard to its making, using and/or selling its Dura-Arm crossarms contributes to the direct infringement of any of the 438 claims by Dis-Trans customers. And, an actual controversy has arisen and now exists between the parties concerning whether Dis-Tran induced others to directly infringe any of the 438 claims. 24. Dis-Tran seeks judgment declaring any and all of its activities in making, using,

and selling of its Dura-Arm crossarms does not and will not infringedirectly, indirectly, contributorily, by inducement, or otherwiseany claim of the 438 patent. For these reasons, Dis-Tran prays: a. That citation issue and be served upon the defendant, b. The Court declares all claims of the 438 patent are invalid, c. The Court declares Dis-Tran did not and does not infringe any valid and enforceable claim of the 438 patent,
410023.3

d. The Court declares the use of Dis-Trans wooden crossarms with nail end plates by a third party in accordance with industry standards does not infringe any valid and enforceable claim of the 438 patent; e. The Court declares the use, by a third party, of Dis-Trans wooden crossarms with nail end plates already embedded does not infringe any valid and enforceable claim of the 438 patent; f. Dis-Tran recovers its reasonable costs and attorneys fees, g. Dis-Tran receives all other relief, at law and equity, as the Court deems just. Respectfully submitted, /s/ Juston M. OBrien Juston M. OBrien, La. Bar No. 26447 McGlinchey Stafford, PLLC One American Place 301 Main Street, 14th Floor Baton Rouge, Louisiana 70825 Telephone: (225) 383-9000 Facsimile: (225) 343-3076 jobrien@mcglinchey.com ATTORNEY-IN-CHARGE FOR THE PLAINTIFF DIS-TRAN WOOD PRODUCTS, LLC. JOEL W. MOHRMAN Federal Bar No. 5164 State Bar No. 14253500 jmohrman@mcglinchey.com and ANDERSON L. CAO Federal Bar No. 30284 State Bar No. 24031910 acao@mcglinchey.com MCGLINCHEY STAFFORD, PLLC 1001 McKinney, Suite 1500 Houston, Texas 77002 Tel: 713/520-1900 Fax: 713/520-1025 OF COUNSEL
410023.3