David W. Axelrod, OSB #750231 Email: daxelrod@schwabe.com Devon Zastrow Newman, OSB #014627 Email: dnewman@schwabe.com Schwabe, Williamson & Wyatt, P.C. 1211 SW 5th Ave., Suite 1900 Telephone: 503.222.9981 Facsimile: 503.796.2900 Attorneys for Plaintiff, Warn Industries, Inc. IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF OREGON PORTLAND DIVISION WARN INDUSTRIES, INC., a Delaware corporation, vs. Plaintiff, HARBOR FREIGHT TOOLS USA, INC., a Delaware corporation; CENTRAL PURCHASING, LLC, a California limited liability company, d/b/a HARBOR FREIGHT TOOLS; and DOES 1-3, Defendants. COMPLAINT FOR PATENT INFRINGEMENT DEMAND FOR JURY TRIAL No. 3:13-cv-919 COMPLAINT Plaintiff, Warn Industries, Inc. ( Warn ) brings this Complaint for patent infringement against Defendant Harbor Freight Tools USA, Inc., Central Purchasing, LLC, doing business as Harbor Freight Tools, and Does 1-3, and alleges as follows: Page 1 -
NATURE OF THE ACTION 1. This is an action for patent infringement arising under the patent laws of the United States, including 35 U.S.C. 271 and 281-285. 2. This lawsuit pertains to the Defendants infringement of Plaintiff s U.S. Patent Nos. 7,850,145 (the 145 Patent ) and D571,973 S (the 973 Patent ), collectively, the Warn Patents. 3. Warn seeks injunctive relief and damages against Defendants. THE PARTIES 4. Plaintiff Warn Industries, Inc. ( Warn ) is a Delaware corporation with its principal place of business at 12900 S.E. Capps Road, Clackamas, Oregon 97015. Warn designs, manufactures and markets equipment and accessories for use in both industrial and recreational settings and is a recognized brand in utility and construction use products. 5. Upon information and belief, Defendant Harbor Freight Tools USA, Inc. is a Delaware corporation having a principal place of business at 26541 Agoura Road, Calabasas, California 91302. Defendant Harbor Freight Tools USA, Inc. does business as Harbor Freight Tools. Defendant Harbor Freight Tools USA, Inc. has qualified to do business in the state of Oregon. 6. Upon information and belief, Defendant Central Purchasing, LLC is a California limited liability company with its principal place of business located at 3491 Mission Oaks Blvd., Camarillo, California 93012. Upon information and belief, Central Purchasing, LLC, is a subsidiary of Harbor Freight Tools USA, Inc. Central Purchasing, LLC, has registered to do business in Oregon under the assumed business name Harbor Freight Tools and operates retail stores in Oregon under the Harbor Freight Tools trade name. Defendants Harbor Freight Tools USA, Inc. and Central Purchasing, LLC, are collectively referred to herein as Harbor Freight. 7. Upon information and belief, Harbor Freight does not manufacture products but sources them from manufacturers, including foreign manufacturers in China. Harbor Freight Page 2 -
advertises its business as Quality Tools at Ridiculous Prices and maintains a website through which it conducts retail sales of products. 8. Upon information and belief, Does 1-3 are one or more entities affiliated with or working in conjunction with Harbor Freight to manufacture, import, distribute, advertise, and/or sell the infringing products. JURISDICTION AND VENUE 9. Warn s cause of action for patent infringement against Harbor Freight arises under the Patent Laws of the United States, 35 U.S.C. 101 et seq., including 271, 281-85. This Court has original jurisdiction over this subject matter pursuant to 28 U.S.C. 1331 and 1338(a). 10. This Court has personal jurisdiction over Harbor Freight Tools USA, Inc. because it is a corporation qualified to and doing business under the laws of the State of Oregon. This Court has personal jurisdiction over Central Purchasing, LLC because it is a corporation qualified to and doing business under the laws of the State of Oregon through its assumed business name, Harbor Freight Tools. Furthermore, this Court has jurisdiction over the Harbor Freight entities and Does 1-3 because those entities have infringed each of the Warn Patents in this district by selling and offering for sale infringing products in their retail stores in Portland and Milwaukie or by inducing others to do so. Upon information and belief, Harbor Freight also offers or has offered the infringing products for sale through advertising materials circulated to potential customers in this District and maintains an Internet site available to consumers within this District on which it advertises its products. 11. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(b) & (c) and 1400(b). Harbor Freight resides in this district and, upon information and belief, has committed acts of infringement in this district by selling and offering to sell products that infringe one or more claims of the Warn Patents from its operations within this judicial district. Page 3 -
FACTUAL BACKGROUND 12. Warn owns all right, title, and interest in U.S. Patent No. 7,850,145 ( the 145 Patent ), entitled PORTABLE PULLING TOOL, which was duly and legally issued to Warn by the United States Patent and Trademark Office on December 14, 2010. 13. The 145 Patent claims a portable pulling tool for lifting and pulling, with a unique gear configuration. The tool further contains a motor control system configured to automatically shut off the motor when a predetermined current load is detected. 14. Warn owns all right, title, and interest in U.S. Patent No. D751,973 S ( the 973 Patent ) entitled PORTABLE PULLING TOOL, which was duly and legally issued to Warn by the U.S. Patent and Trademark Office on June 24, 2008. The 973 Patent has a single claim that covers the ornamental design for the pulling tool as shown and described in the figures incorporated into the 973 Patent. Figure 1 of the 145 Patent is shown below: 15. Warn sells its patented pulling tool under the trade name PullzAll. At all Page 4 -
material times and prior to Harbor Freight s first infringement, Warn complied with the requirements of 35 U.S.C. 287 with regard to the 145 and 973 Patents by fixing on the products and/or associated packaging the URL of an Internet posting accessible to the public without charge that associates the PullzAll products with the 145 and 973 patents. 16. Harbor Freight sent and offers for sale in Oregon the product depicted in the Harbor Freight advertisement attached as Exhibit 1: 1000 LB. CAPACITY 2-IN-1 PORTABLE PULLER/WINCH under the trade name Badland. A copy of the same advertisement on Harbor Freight s website offering the product for sale (the window shown on top of the advertisement is a pop-up that is displayed when the cursor hovers over the product) is attached as Exhibit 2. The Badland winch is shown below: 17. Warn, suspecting the Badland winch to be a copy of its patented PullzAll products, purchased one of the winches for study from a Harbor Freight store in Milwaukie, Oregon. The Badland winch infringes the Warn Patents. Page 5 -
COUNT I INFRINGEMENT OF UNITED STATES PATENT 7,850,145 18. Warn restates and realleges each of the allegations of paragraphs 1-17 as if fully set forth at length. 19. Harbor Freight and Does 1-3 import into and/or sell and offer for sale in the United States winches that infringe at least claims 1, 9, 13, 14, 21, and 23 of the 145 Patent under 35 U.S.C. 271. By these actions, upon information and belief Does 1-3 have also induced or contributed to infringement of the 145 Patent by other persons or entities, including their customers and affiliates. 20. Harbor Freight and Does 1-3 are not licensed or otherwise authorized by Warn to make, use, import, sell, or offer to sell any winch product claimed in the 145 Patent and their conduct is, in every instance, without Warn s consent. 21. Warn is entitled to recover from Harbor Freight and Does 1-3 the damages sustained by Warn as a result of their wrongful acts in an amount subject to proof at trial, including lost profits and an amount not less than a reasonable royalty, together with interest and costs as fixed by this Court under 35 U.S.C. 284. 22. The infringement by Defendants of the 145 Patent will continue to cause Warn irreparable injury and damage for which there is no adequate remedy at law unless and until Defendants are enjoined from infringing the 145 Patent. 23. Upon information and belief, Defendants infringement of the 145 Patent has been and continues to be willful as the product is a direct copy of Warn s PullzAll. Accordingly, this is an exceptional case under 35 U.S.C. 285 and Warn is entitled to enhanced damages, attorneys fees and litigation expenses incurred. Page 6 -
COUNT II INFRINGEMENT OF UNITED STATES PATENT D751,973 S 24. Warn restates and realleges each of the allegations of paragraphs 1-23 as if fully set forth at length. 25. Harbor Freight and Does 1-3 import into, sell and/or offer for sale in the United States winches that infringe the 973 Patent under 35 U.S.C. 271. By these actions, Does 1-3 have also induced or contributed to infringement of the 973 Patent by other persons or entities, including their affiliates and customers. 26. Harbor Freight and Does 1-3 are not licensed or otherwise authorized by Warn to make, use, import, sell, or offer to sell any winch product whose design is covered by the 973 Patent and their conduct is, in every instance, without Warn s consent. 27. Warn is entitled to recover from Harbor Freight and Does 1-3 the damages sustained by Warn as a result of Harbor Freight s and Does 1-3 s wrongful acts in an amount subject to proof at trial, including lost profits and an amount not less than a reasonable royalty, together with interest and costs as fixed by this Court under 35 U.S.C. 284. 28. The infringement by Harbor Freight and Does 1-3 of the 973 Patent will continue to cause Warn irreparable injury and damage for which there is no adequate remedy at law unless Defendants are enjoined from infringing the 973 Patent. 29. Upon information and belief, Defendants infringement of the 973 Patent has been and continues to be willful as the product is a direct copy of Warn s PullzAll. Accordingly, this is an exceptional case under 35 U.S.C. 285 and Warn is entitled to enhanced damages, attorneys fees and litigation expenses incurred. Page 7 -
PRAYER FOR RELIEF WHEREFORE, Warn respectfully requests that the Court enter judgment in its favor against Defendants, granting the following relief: A. A declaration that the 973 and 145 Patents are valid and enforceable; B. A judgment and declaration that Defendants have infringed the 973 and 145 Patents literally and/or under the doctrine of equivalents; C. A grant of permanent injunction pursuant to 35 U.S.C. 283, enjoining Defendants and their agents, servants, officers, directors, employees, affiliated entities and all persons in active concern or participation with them from continued infringement of the 973 and 145 Patents; D. An award of damages adequate to compensate Warn for Defendants infringement of the 973 and 145 Patents; E. An award to Warn equal to any profits that Warn lost due to Defendants infringement of the 973 and 145 Patents; F. Enhancement of the damage award based on Defendants willful infringement of the 973 and 145 Patents; G. An award of costs and attorneys fees pursuant to 35 U.S.C. 285, and an assessment of interest, including prejudgment interest; and H. Such other relief as this court deems to be just and equitable. Page 8 -
DEMAND FOR JURY TRIAL Pursuant to Fed. R. Civ. P. 38(b), Warn respectfully requests a trial by jury of all issues so triable. Dated this 3 rd day of June, 2013. Respectfully submitted, By: s/ Devon Zastrow Newman Devon Zastrow Newman, OSB #014627 David W. Axelrod, OSB #750231 Telephone: 503.222.9981 Facsimile: 503.796.2900 Of Attorneys for Plaintiff, Warn Industries, Inc. Trial Attorney: David W. Axelrod Page 9 -