Discovery Inc. v. Lisi Group - Complaint

Discovery Inc.
(Discovery or Plaintiff) is a corporation organized under the
PARTIES
Defendant Ningbo Lisi Plastic & Rubber Co., Ltd, (Ningbo Lisi Plastic) is, on
Page 1 of 8
information and belief, a limited liability company established under the laws of the Peoples
2.
consumers in the United States and Canada.
In particular, Discovery designs, has made, and sells housewares that improve storage options for
recognized throughout the world as a leading designer and merchandiser of houseware products.
laws of California, having its principal place of business in Ross, California. Discovery is
1.
Limited, alleges as follows:
Plastic & Rubber Co., Ltd.; Ningbo Lisi Houseware Co., Ltd. and Lisi Group (Holdings)
Plaintiff Discovery Inc., for its First Amended Complaint against defendants Ningbo Lisi
FIRST AMENDED COMPLAINT
)
)
Plaintiff
) No. 16-cv-4156
)
v.
)
)
Ningbo Lisi Plastic & Rubber Co., Ltd., a
)
Chinese limited liability company; Ningbo
)
Lisi Houseware Co., Ltd., a Chinese limited )
liability company; and Lisi Group
)
(Holdings) Limited, a Bermuda
)
corporation,
)
)
Defendants.
)
)
Discovery Inc., a California corporation
IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
Case: 1:16-cv-04156 Document #: 9 Filed: 07/15/16 Page 1 of 8 PageID #:43
Defendant Ningbo Lisi Houseware Co., Ltd, (Ningbo Lisi Hardware) is, on
Defendant Lisi Group (Holding) Limited (Lisi Group) is, on information and
Discovery has developed a distinctive family of storage baskets known as the
BACKGROUND
Discoverys HANDI BASKETSTM have a distinctive appearance, which includes
The design of Discoverys baskets is protected by various design patents,
described, in part, as follows:
Page 2 of 8
attached as Exhibit A. The 931 patent claims the ornamental design of a basket, as shown and
including United States Design Patent No. D720,931 S (the 931 patent), a copy of which is
7.
consumers and their popularity continues to grow.
a single handle on one end of the basket. These baskets have gained great popularity with
6.
HANDI BASKETSTM, which are sold under the PERFECT PANTRY brand.
5.
New Territories, Hong Kong, China.
Workshop 06 & 07, 36th Floor, King Palace Plaza, No. 52A Sha Tsui Road, Tsuen Wan,
belief, a corporation organized under the laws of Bermuda with a principal place of business at
4.
YinZhou Investment & Business Incubation of Ningbo, Zhejiang Province, China.
Republic of China with a principal place of business at Floor 7&8, No. 518 ChengXin Road,
information and belief, a limited liability company established under the laws of the Peoples
3.
YinZhou Investment & Business Incubation of Ningbo, Zhejiang Province, China.
Republic of China with a principal place of business at Floor 7&8, No. 518 ChengXin Road,
On March 6, 2016 Plaintiff attended the International Home and Housewares
Page 3 of 8
Home and Housewares Show at McCormick Place:
and accurate picture of the storage baskets exhibited and sold by Defendants at the International
and sales of infringing storage baskets at the Ningbo Lisi Plastic booth. The following is a true
information and belief, other employees of Defendants also actively participated in the display
display and sales of the infringing storage baskets at the Ningbo Lisi Plastic booth. On
of both Defendant Lisi Group and Defendant Ningbo Lisi Houseware, actively participated in the
registered to Defendant Ningbo Lisi Plastic. In addition, Mr. Alan Lam, an officer and employee
baskets and infringe its 931 patent were being displayed for sale and were being sold at a booth
Show at McCormick Place and observed that storage baskets that mimic Discoverys storage
8.
On March 7, 2016, Plaintiff gave Defendants notice of infringement by letter from
Thereafter, Defendants removed the infringing storage baskets from the displays,
When Plaintiff learned of Defendants private back room showings of the
Page 4 of 8
infringing storage baskets, Plaintiff followed up with another letter, which again demanded that
11.
but Defendants continued to offer them for sale to customers at private back room showings.
10.
immediately and permanently cease.
Home and Housewares Show and written confirmation that further infringement would
the immediate removal of the infringing storage baskets from the display at the International
its counsel, a copy of which in attached as Exhibit B. Plaintiff demanded, among other things,
9.
Despite notice of the 931 patent and Plaintiffs claim of infringement,
This Court has subject matter jurisdiction pursuant to 28 U.S.C. 1331 and 1338,
This Court has personal jurisdiction over each Defendant because each Defendant
Each Defendant has purposefully availed itself of the benefits of this forum by
Page 5 of 8
of this action. Each Defendant knew that its conduct and presence in this district are such that it
International Home and Housewares Show, including the infringing products that are the subject
coming into this forum for the purpose of displaying and offering to sell products at the
15.
play and substantial justice.
4(k)(2) of the Federal Rules of Civil Procedure and would not offend traditional notions of fair
exercise of personal jurisdiction over each Defendant is consistent with the procedure of Rule
was held in Chicago at McCormick Place from March 5, 2016 through March 8, 2016. The
Illinois and displaying them for sale at the International Home and Housewares Show, which
for sale, and imported infringing products into Illinois by transporting the infringing products to
of Illinois relating to the causes of action herein. In particular, each Defendant has sold, offered
has at least minimum contacts with this forum as a result of business conducted within the state
14.
and 35 U.S.C. 281 for claims arising under the Patent Laws of the United States.
13.
JURISDICTION AND VENUE
for sale, and import into the United States storage baskets that infringe the 931 patent.
importing infringing storage baskets. To the contrary, Defendants have continued to sell, offer
Defendants have never provided any statement that they have ceased selling, offering for sale, or
12.
Exhibit C.
immediately. A copy of the March 9, 2016 letter from counsel for Discovery is attached as
the infringing storage baskets must be removed entirely from the booth and disposed of
Plaintiff repeats and realleges the allegations of paragraphs 1 through 14 of this
COUNT I -- DESIGN PATENT INFRINGEMENT
Venue in this Court is proper under 28 U.S.C. 1391 and 1400(b).
United States Design Patent No. D720,931 (the 931 patent) was duly and legally
Discovery is the owner of the entire right, title, and interest in and to the 931
Defendants have infringed and are infringing the 931 patent, either literally or
Plaintiff has been damaged and continue to be damaged by Defendants
Plaintiff has suffered, is suffering, and will continue to suffer irreparable injury
After a reasonable opportunity for further investigation or discovery, it is likely
Page 6 of 8
Defendants knowledge of Plaintiffs rights in and to the 931 patent and despite knowledge that
that the evidence will show that Defendants infringing activities have continued despite
23.
is enjoined by this Court.
for which there is no adequate remedy at law unless Defendants infringement of the 931 patent
22.
infringement of the 931 patent, in an amount to be determined at trial.
21.
violation of 35 U.S.C. 271.
United States, storage baskets that fall within the scope of the claim of the 931 patent, all in
under the doctrine of equivalents, by using, offering to sell, selling, and/or importing into the
20.
patent, including the right to bring suit for injunctive relief and damages.
19.
assignee.
issued on January 13, 2015 and identifies Mark Levie as the inventor and Discovery as the
18.
complaint as if fully set forth at length.
17.
16.
for claims relating to its conduct here.
should reasonably have anticipated being brought into court in the Northern District of Illinois
An injunction permanently enjoining each Defendant, their directors, officers,
2.
Continuing to make, have made, use, sell, or offer to sell a product that infringes
b.
Assisting, inducing, or aiding and abetting any other person in engaging in any of
An order requiring the impounding and destruction of all products in the
An order requiring each Defendant to file with the Court and serve on the
A judgment in favor of Plaintiff and against Defendants for all damages sustained
Page 7 of 8
prejudgment and post-judgment interest at the maximum rate allowed by law.
profits under 35 U.S.C. 289, costs and attorneys fees of this action, treble damages, and
by Plaintiff and/or any applicable statutory damages, including disgorgement of Defendants
5.
Defendant has complied with this Courts injunction and order.
form of proof) in writing under oath setting forth in detail the manner and form in which that
Plaintiff, within 30 days after service of the Courts order as prayed for above, a report (or other
4.
possession, custody, or control of each Defendant that infringe the 931 patent.
3.
the activities prohibited in subparagraphs (a) and (b) above.
c.
the 931 patent; and
Directly or indirectly infringing the 931 patent;
a.
them from:
agents, servants, employees and all other persons in active concert or participation with any of
A finding that the 931 patent is valid and has been infringed by each Defendant.
1.
WHEREFORE, Plaintiff prays for the following relief:
Accordingly, Defendants infringement of the 931 patent is and has been willful.
Defendants did not have any right to practice the design claimed by the 931 patent.
An accounting from each Defendant of all gains, profits, and advantages of any
An order requiring that all gains, profits, and advantages of any sort derived from
A finding that this case is exceptional within the meaning of 35 U.S.C. 285 and
An order for such other and further relief as the Court deems just, equitable or
Dated: July 15, 2016

Page 8 of 8
MEDLEY, BEHRENS & LEWIS LLC

__/s/ Lorri W. Cooper____________
Lorri W. Cooper
6100 Rockside Woods Boulevard
Suite 440
Independence, Ohio 44131
216-264-4075
lcooper@medleybehrens.com
(Admitted pro hac vice)
/s/ Michael P Padden

Michael P. Padden
2 N. LaSalle Street, 12th Floor
Chicago, Illinois 60602
(216) 301-2276
mpadden@pearne.com
Attorneys for Plaintiff Discovery Inc.
PEARNE & GORDON LLP
Respectfully submitted,
Plaintiff hereby demands a trial by jury on issues so triable.
JURY DEMAND
otherwise appropriate in the circumstances, including punitive or exemplary damages.
9.
connection with this action.
an order awarding Plaintiff its reasonable attorneys fees, expenses, and costs incurred in
8.
in a constructive trust for the benefit of Plaintiff.
acts of patent infringement and/or other violations of law as alleged herein be deemed to be held
7.
sort derived from acts of patent infringement and/or other violations of law as alleged herein.
6.
EXHIBIT A
Case: 1:16-cv-04156 Document #: 9-1 Filed: 07/15/16 Page 1 of 18 PageID #:51
EXHIBIT B
Infringement of US Patents of Discovery Inc. by LISI

STORAGE BASKETS at CHICAGO HOUSEWARES SHOW
In particular, you have a large quantity of STORAGE BASKETS on display at your

booth at the Chicago Housewares Show that infringes one or more of Discovery, Inc.s patents.
Because these products are a clear infringement of my clients patents, you must immediately
U.S. Design Patent No. D675,825

Other pending design and utility patent applications.
We represent Mr. Mark Levie, Owner of Discovery Inc., in connection with his
intellectual property matters. It has come to our attention that you are presently displaying and
selling products that infringe on valid U.S. Patents that are held by Discovery Inc. at the Chicago
Housewares Show. Copies of the relevant patents are attached and include:
Dear Mr. Li and Mr. Lam:
Re:
Mr. Randy Li
Mr. Alan Lam
Lisi Group (Holdings) Limited
Workshop 06 & 07
36th Floor King Palace Plaza
No. 52A Sha Tsui Road, Tsuen Wan
New Territories, Honk Kong
Via Email to: alan@lisi.com.hk

lisi@lisi.com.hk
marketing@lisigroup.com.hk
DISC-0028
March 7, 2016
URGENT MATTER
Lorri W. Cooper
(216) 487-7047
-2-
March 7, 2016
Enclosures
Lorri W. Cooper
Very truly yours,
This letter is written without prejudice to any of Mr. Levies rights or remedies, all of
which are hereby expressly reserved.
We must have your written confirmation and compliance with the demands of this letter
by no later than March 8, 2016. Assuming that you meet these demands, we will contact you
regarding an appropriate resolution of this matter. Otherwise, we will advise our client of the
necessity to pursue legal action against you without further notice to you.
4.
Destroy any such products that are present in the United States and provide
evidence concerning same.
3.
Confirm that you will not display such goods in any catalog or promotional
materials for goods that will enter or be otherwise viewable in the United States.
2.
Identify each product sold or to be sold by you which in any way infringes
Discovery, Inc.s Patents in the United States and cancel any such orders immediately.
1.
Provide written confirmation that you will immediately and permanently cease
and desist from further importing, exporting, manufacturing, purchasing, selling, offering for
sale, distributing, advertising, or in any way dealing any STORAGE BASKET products in the
United States.
Discovery, Inc. and Mr. Levie must protect their valuable rights. Thus, to avoid further
legal action, we hereby demand that you:
Your display of products for sale in the United States is an infringement of my clients
patents and renders you liable for damages and an injunction. If you do not immediately remove
the products at issue from your display booth, we will take immediate action against you,
including reporting you to the relevant authorities. Your display of such products for sale in the
United States will have a detrimental and potentially irreversible, negative impact on my client.
Thus, you must cease and desist immediately from showing, selling, or otherwise displaying
your STORAGE BASKET products at the Show.
remove any such products from your booth and immediately cease the sale of such goods in
the United States. Photographs of the infringing goods at your booth are attached and will and
can be used as proof of infringement.
Mr. Randy Li
Mr. Alan Lam
EXHIBIT C
Infringement of US Patents of Discovery Inc. by LISI

STORAGE BASKETS at CHICAGO HOUSEWARES SHOW
United States Statute 35 U.S.C. 271 provides:
Further to my letter to you of March 7, I understand that you have removed the infringing
STORAGE BASKETS from you display at the CHICAGO HOUSEWARES SHOW. However,
it has come to our attention that their remains a back room showing of the baskets to potential
customers. A witness has informed us that Mr. Lam was seen showing the baskets to customers
privately. Thus, it appears that your infringement is ongoing and willful, making you liable for
treble damages. This activity must stop. As previously noted, your infringing storage baskets
are not legally present in the United States because they represent a direct infringement of
Discovery Inc.s patents.
Dear Mr. Li and Mr. Lam:
Re:
Mr. Randy Li
Mr. Alan Lam
Lisi Group (Holdings) Limited
Workshop 06 & 07
36th Floor King Palace Plaza
No. 52A Sha Tsui Road, Tsuen Wan
New Territories, Honk Kong
Via Email to: alan@lisi.com.hk

lisi@lisi.com.hk
marketing@lisigroup.com.hk
DISC-0028
March 9, 2016
URGENT MATTER
Lorri W. Cooper
(216) 487-7047
-2-
March 9, 2016
Enclosures
Lorri W. Cooper
Very truly yours,
The infringing STORAGE BASKETS must be removed entirely from your booth and
disposed of immediately and you must stop showing the baskets to potential customers. We are
still awaiting an official response from you concerning your next steps in order to avoid a
lawsuit. Please remedy this situation as soon as possible.
whoever without authority makes, uses, offers to sell, or sells any patented
invention, within the United States or imports into the United States any patented
invention during the term of the patent therefor, infringes the patent.
Mr. Randy Li
Mr. Alan Lam

Discovery Inc. v. Lisi Group - Complaint

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Discovery Inc. v. Lisi Group - Complaint

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Discovery Inc.

(Discovery or Plaintiff) is a corporation organized under the

consumers in the United States and Canada.

Limited, alleges as follows:

FIRST AMENDED COMPLAINT

Discovery Inc., a California corporation

IN THE UNITED STATES DISTRICT COURT

Case: 1:16-cv-04156 Document #: 9 Filed: 07/15/16 Page 1 of 8 PageID #:43

Discovery has developed a distinctive family of storage baskets known as the

Discoverys HANDI BASKETSTM have a distinctive appearance, which includes

The design of Discoverys baskets is protected by various design patents,

described, in part, as follows:

consumers and their popularity continues to grow.

New Territories, Hong Kong, China.

YinZhou Investment & Business Incubation of Ningbo, Zhejiang Province, China.

YinZhou Investment & Business Incubation of Ningbo, Zhejiang Province, China.

Case: 1:16-cv-04156 Document #: 9 Filed: 07/15/16 Page 2 of 8 PageID #:44

On March 6, 2016 Plaintiff attended the International Home and Housewares

Home and Housewares Show at McCormick Place:

Case: 1:16-cv-04156 Document #: 9 Filed: 07/15/16 Page 3 of 8 PageID #:45

On March 7, 2016, Plaintiff gave Defendants notice of infringement by letter from

When Plaintiff learned of Defendants private back room showings of the

immediately and permanently cease.

Case: 1:16-cv-04156 Document #: 9 Filed: 07/15/16 Page 4 of 8 PageID #:46

Despite notice of the 931 patent and Plaintiffs claim of infringement,

play and substantial justice.

JURISDICTION AND VENUE

Case: 1:16-cv-04156 Document #: 9 Filed: 07/15/16 Page 5 of 8 PageID #:47

Plaintiff repeats and realleges the allegations of paragraphs 1 through 14 of this

COUNT I -- DESIGN PATENT INFRINGEMENT

Venue in this Court is proper under 28 U.S.C. 1391 and 1400(b).

Plaintiff has been damaged and continue to be damaged by Defendants

After a reasonable opportunity for further investigation or discovery, it is likely

is enjoined by this Court.

infringement of the 931 patent, in an amount to be determined at trial.

violation of 35 U.S.C. 271.

complaint as if fully set forth at length.

for claims relating to its conduct here.

Case: 1:16-cv-04156 Document #: 9 Filed: 07/15/16 Page 6 of 8 PageID #:48

An injunction permanently enjoining each Defendant, their directors, officers,

An order requiring the impounding and destruction of all products in the

prejudgment and post-judgment interest at the maximum rate allowed by law.

by Plaintiff and/or any applicable statutory damages, including disgorgement of Defendants

Defendant has complied with this Courts injunction and order.

the activities prohibited in subparagraphs (a) and (b) above.

the 931 patent; and

Directly or indirectly infringing the 931 patent;

WHEREFORE, Plaintiff prays for the following relief:

Case: 1:16-cv-04156 Document #: 9 Filed: 07/15/16 Page 7 of 8 PageID #:49

Dated: July 15, 2016

MEDLEY, BEHRENS & LEWIS LLC

/s/ Michael P Padden

PEARNE & GORDON LLP

Plaintiff hereby demands a trial by jury on issues so triable.

otherwise appropriate in the circumstances, including punitive or exemplary damages.

connection with this action.

in a constructive trust for the benefit of Plaintiff.

Case: 1:16-cv-04156 Document #: 9 Filed: 07/15/16 Page 8 of 8 PageID #:50

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