Case: 2:14-cv-00164-EAS-NMK Doc #: 1 Filed: 02/14/14 Page: 1 of 7 PAGEID #: 1 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF OHIO EASTERN DIVISION VICTORIA'S SECRET STORES BRAND MANAGEMENT, INC., Four Limited Parkway Reynoldsburg, Ohio 43068, and, LA SENZA CORPORATION, 900-1959 Upper Water Street Halifax, Nova Scotia, Canada B3JN2, Plaintiffs, v. Civil Action No.: 2:14-cv-164 MAIDENFORM, LLC, 1000 E. Hanes Mill Road Winston-Salem, North Carolina 27105, Defendant. COMPLAINT FOR DECLARATORY JUDGMENT OF PATENT INVALIDITY AND NON-INFRINGEMENT Victoria's Secret Stores Brand Management, Inc. ("Victoria's Secret"), and La Senza Corporation ("La Senza") (collectively, "Plaintiffs"), by and through their attorneys, bring this action for declaratory judgment and allege against Maidenform, LLC ("Maidenform" or "Defendant") as follows: NATURE OF THE ACTION 1. This is an action for declaratory judgment under the Federal Declaratory Judgments Act, 28 U.S.C. 2201 and 2202. Plaintiffs seek declarations that, pursuant to the patent laws of the United States, U.S. Patent No. 8,262,433 owned by Maidenform is invalid and that Plaintiffs are not infringing that patent.
Case: 2:14-cv-00164-EAS-NMK Doc #: 1 Filed: 02/14/14 Page: 2 of 7 PAGEID #: 2 THE PARTIES 2. Victoria's Secret is a Delaware corporation with offices at Four Limited Parkway, East Reynoldsburg, Ohio, 43068, and is doing business in the State of Ohio and in this judicial district. 3. La Senza is a Canadian corporation with offices at 900-1959 Upper Street, Halifax, Nova Scotia, Canada B3J3N2, and is doing business in the State of Ohio and in this judicial district. 4. On information and belief, Defendant Maidenform is a Delaware limited liability corporation that is registered to do business in the State of Ohio. On information and belief, Maidenform is the sole assignee and owner of U.S. Patent No. 8,262,433 (the "'433 Patent"). A copy of the '433 Patent is attached as Exhibit A. JURISDICTION AND VENUE 5. Jurisdiction is proper in this Court under 28 U.S.C. 1331 and 1338(a). On information and belief, this Court has personal jurisdiction over Maidenform, and Maidenform has constitutionally sufficient contacts with the State of Ohio so as to make personal jurisdiction proper in this Court. On information and belief, Maidenform is registered to do business in Ohio, and it has been, and is now, directly and through its agents and intermediaries, doing business continuously and systematically in this judicial district. 6. Venue is proper in this judicial district under 28 U.S.C. 1391 and 1400(b). Maidenform is subject to personal jurisdiction in this district. FACTS 7. Victoria's Secret is a leading retailer of women's intimate apparel, including brassieres. One such Victoria's Secret brassiere is known as the BOMBSHELL brassiere. The 2
Case: 2:14-cv-00164-EAS-NMK Doc #: 1 Filed: 02/14/14 Page: 3 of 7 PAGEID #: 3 BOMBSHELL brassiere is categorized as a "push-up" brassiere. Such brassieres give the wearer the appearance of having enhanced cleavage. 8. La Senza is a corporate affiliate of Victoria's Secret, and is also a retailer of women's intimate apparel, including brassieres. La Senza also sells a push-up brassiere, the HELLO SUGAR brassiere. 9. Maidenform has alleged that Victoria's Secret and La Senza are infringing the '433 patent through sales of the BOMBSHELL and HELLO SUGAR brassieres. 10. On November 29, 2012, Maidenform's attorney sent a letter to La Senza claiming that the HELLO SUGAR brassiere infringed the '433 patent. Maidenform demanded that unless La Senza took a license, La Senza must stop making, selling, and importing the product, and if it did not, Maidenform would consider seeking all available legal remedies, including injunctive relief, recovery of profits, treble damages, and attorney fees. A copy of Maidenform's November 2012 demand letter is attached as Exhibit B. 11. La Senza responded to Maidenform's counsel. It explained that it did not believe that the '433 patent was valid or, therefore, infringed. Counsel for La Senza confirmed this information to counsel for Maidenform in a letter of March 18, 2103. A copy of that letter is attached as Exhibit C. La Senza's letter also noted that the same conclusion applied as well to Victoria's Secret products. 12. Counsel for Maidenform did not respond to the March 18, 2013 letter addressing the invalidity of the '433 patent. 13. In January and February 2014, Maidenform again asserted that Victoria's Secret should pay a royalty based on the '433 patent. When Victoria's Secret declined, Maidenform threatened that it could "tie [Victoria's Secret] up in court for a long time." 3
Case: 2:14-cv-00164-EAS-NMK Doc #: 1 Filed: 02/14/14 Page: 4 of 7 PAGEID #: 4 14. The 433 Patent is invalid for failure to comply with the provisions of 35 U.S.C. 102 and 103. The following prior art references comprise exemplary invalidating references that render all of the claims of the '433 Patent invalid: a. Japanese patent application No. 2003-213503 b. International Application Publication No. WO 2007/001019; and c. U.S. Patent No. 6,918,812. 15. An actual and justiciable controversy exists between Victoria's Secret and Maidenform, and between La Senza and Maidenform, regarding the validity, scope, and alleged infringement of the '433 patent. This controversy is established by Maidenform's threat of legal action in its November 29, 2012 letter to La Senza and its more recent demand to Victoria's Secret for a patent licensing fee and threat of litigation. forth. COUNT I DECLARATORY JUDGMENT THAT THE '433 PATENT IS INVALID 16. Paragraphs 1-15 of this Complaint are incorporated herein as if expressly set 17. The 433 Patent is invalid for failure to comply with at least the provisions of 35 U.S.C. 102 and 103. The following prior art references comprise exemplary invalidating references that render all of the claims of the '433 Patent invalid a. Japanese patent application No. 2003-213503 b. International Application Publication No. WO 2007/001019; and c. U.S. Patent No. 6,918,812. On information and belief, other prior art will be identified during discovery. Plaintiffs reserve their rights to identify and assert additional prior art as may become available or apparent during pretrial proceedings. 4
Case: 2:14-cv-00164-EAS-NMK Doc #: 1 Filed: 02/14/14 Page: 5 of 7 PAGEID #: 5 18. As evidenced by Maidenform's demands for a patent licensing fee and threats of litigation, a substantial controversy between the parties as to whether the '433 patent is valid or infringed. 19. The controversy has sufficient immediacy and reality to warrant the issuance of a declaratory judgment. 20. A judicial declaration is necessary and appropriate at this time in order that Victoria's Secret and La Senza may ascertain their rights and duties with respect to the '433 patent. forth. COUNT II DECLARATORY JUDGMENT THAT DEFENDANTS ARE NOT INFRINGING THE '433 PATENT 21. Paragraphs 1-15 of this Complaint are incorporated herein as if expressly set 22. Victoria's Secret's brassieres do not infringe any of the claims of the '433 patent, directly or indirectly, either literally or by the doctrine of equivalents. 23. La Senza's brassieres do not infringe any of the claims of the '433 patent, directly or indirectly, either literally or by the doctrine of equivalents. 24. As evidenced by Maidenform's demands for a patent licensing fee and threats of litigation, a substantial controversy between Victoria's Secret and Maidenform, and between La Senza and Maidenform, as to whether the '433 patent is valid or infringed. 25. The controversy has sufficient immediacy and reality to warrant the issuance of a declaratory judgment. 26. A judicial declaration is necessary and appropriate at this time in order that Victoria's Secret and La Senza may ascertain their rights and duties with respect to the '433 patent. 5
Case: 2:14-cv-00164-EAS-NMK Doc #: 1 Filed: 02/14/14 Page: 6 of 7 PAGEID #: 6 PRAYER FOR RELIEF WHEREFORE, Victoria's Secret and La Senza pray for a judgment against Defendant Maidenform as follows: (a) For a declaration that the 433 patent is invalid; (b) For a declaration that Victoria's Secret does not does not infringe the 433 patent directly or indirectly, either literally or by the doctrine of equivalents; (c) For a declaration that La Senza does not does not infringe the 433 patent directly or indirectly, either literally or by the doctrine of equivalents; (d) For a declaration that this is an exceptional case under 35 U.S.C. 285 and award Plaintiffs their attorneys' fees and expenses in this action; (e) (f) Award Plaintiffs their costs in this action; and For such other relief as the Court may deem just and proper. Dated: February 14, 2014 /s/ Keith Shumate Keith Shumate (0056190) Heather Stutz (0078111) Squire Sanders (US) LLP 2000 Huntington Center 41 South High Street Columbus, Ohio 43215 614.365.2700 keith.shumate@squiresanders.com heather.stutz@squiresanders.com Lynn Rzonca (pro hac vice pending) Ballard Spahr LLP 1735 Market Street Philadelphia, Pennsylvania 19103 6
Case: 2:14-cv-00164-EAS-NMK Doc #: 1 Filed: 02/14/14 Page: 7 of 7 PAGEID #: 7 215.665.8500 rzoncal@ballardspahr.com 7