Case 2:16-cv-00526-DSC Document 1 Filed 04/27/16 Page 1 of 8 IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA WELL SERVICE GROUP, INC., MATTHEW WHEELER, CHRIS ALLEN and SHANA L. HONEYCUTT, Personal Representative of the Estate of Lee Farrell Honeycutt, v. Plaintiffs, TIRE CONVERSION TECHNOLOGIES, INC., Defendant. Civil Action No. Electronically Filed COMPLAINT Plaintiffs, Well Service Group, Inc. ( Well Service, Matthew Wheeler, Chris Allen, And Shana L. Honeycutt, Personal Representative of the Estate of Lee Farrell Honeycutt (collectively Plaintiffs, by and through their counsel, aver the following in support of its Complaint against Defendant, Tire Conversion Technologies, Inc. ( Tire Conversion or Defendant : JURISDICTION AND VENUE 1. This is a civil action for patent infringement of United States Patent No. 9,016,980 ( the 980 Patent arising under the patent laws of the United States. A copy of the 980 Patent is attached hereto as Exhibit A. Subject matter jurisdiction is conferred on this Court pursuant to 28 U.S.C. 1331 and 1338(a. 2. Personal jurisdiction and venue are proper in this District pursuant to 28 U.S.C. 1391(b, 1391(c, and/or 1400(b.
Case 2:16-cv-00526-DSC Document 1 Filed 04/27/16 Page 2 of 8 3. Upon information and belief, Defendant has transacted business in this Commonwealth on a substantial and continuous basis and particularly in this District and has shipped equipment directly or indirectly into or through this Commonwealth and this District at least through its agreement to produce the containment berm product called the Stronghold Berm for Plaintiff Well Service Group, Inc. 4. Defendant has sold the containment berm product called the Stronghold Berm, which is covered by at least claims 1 and 17-19 of the 980 Patent in this Commonwealth and this District to Plaintiff Well Service Group, Inc. 5. Defendant has caused harm in this District by its acts of patent infringement, including those occurring outside of this District by, among other things, negating the exclusivity granted to Plaintiff Well Service by an exclusive license agreement to the 980 Patent. THE PARTIES 6. Plaintiff Well Service Group, Inc. is a Pennsylvania corporation having a principle place of business at 9152 Route 22, Blairsville, Pennsylvania 15717 and the exclusive licensee of the 980 Patent. 7. Plaintiff Matthew Wheeler is an individual having a residence at 308 Lakewood Drive, Longview, Texas 75604 and an inventor and licensor of the 980 Patent. 8. Plaintiff Shana L. Honeycutt is the personal representative and administrator of the Estate of Lee Honeycutt, a now deceased inventor and licensor of the 980 Patent 1 9. Plaintiff Chris Allen is an individual having a residence at 4365 Berwick Township Road, Columbia Crossroads, Pennsylvania 16914 and an inventor and licensor of the 980 Patent. 1 Chris Allen, Matthew Wheeler, and the late Lee Honeycutt shall hereinafter collective be referred to as the Inventors. 2
Case 2:16-cv-00526-DSC Document 1 Filed 04/27/16 Page 3 of 8 10. Upon information and believe, Defendant Tire Conversion Technologies, Inc. is a New York corporation having a principle place of business at 874 Old Albany Shaker Road, Latham, New York 12110. BACKGROUND 11. In November 7, 2013, Well Services entered into an exclusive license agreement with the Inventors of the 980 Patent and Stronghold Containment Systems, LLC, inventors Matthew Wheeler and Lee Honeycutt s Texas limited liability company, for an exclusive license to then pending United States Patent Application No. 13/688,517 ( the 517 Application and any patents issuing therefrom or from any related patents and/or applications ( the Exclusive License Agreement. 12. On April 28, 2015, the 517 Application was duly issued as the 980 Patent, entitled Apparatus for Drilling Site Containment, to the Inventors. Subject to the rights granted to Well Service in the Exclusive License Agreement, at all times subsequent to April 28, 2015, the Inventors (and/or the Estate of Lee Honeycutt in the case of Inventor Honeycutt have owned the entire right, title, and interest to the 980 Patent. 13. As exclusive licensee pursuant to the Exclusive License Agreement, Well Service has the right to enforce the 980 Patent and to include the Inventors as plaintiffs in this action. 14. Subsequent to execution of the Exclusive License Agreement, Well Service entered into an agreement with Tire Conversion for supply of the Stronghold Berm product covered by the 980 Patent. As part of this arrangement, Well Service purchased and owned the molds Tire Conversion would use to manufacture the Stronghold Berm product. Line drawing representations of the Stronghold Berm product produced by these molds are attached hereto as Exhibit B. 3
Case 2:16-cv-00526-DSC Document 1 Filed 04/27/16 Page 4 of 8 15. Well Service is the owner of a pending design patent application covering the product produced by these molds, United States Design Patent Application No. 29/511,047. 16. In April of 2015, Well Service was made aware of inquiries by third parties to Tire Conversion concerning the potential manufacture of the Stronghold Berm product. As a result, Well Service reminded Tire Conversion that the Stronghold Berm product was a patented product and subject to the Exclusive License Agreement, and that Tire Conversion was prohibited from manufacturing and selling the Stronghold Berm product to any third parties. 17. In response, Tire Conversion acknowledged that Well Service was the owner of the tooling, namely the molds and key blocks, used to manufacture the Stronghold Berm. Tire Conversion promised not to use these molds and key blocks for manufacturing any product for any third parties. 18. Contrary to its acknowledgment and promises made nearly a year earlier, in March 2016, Tire Conversion manufactured and sold approximately 1000 units of the Stronghold Berm using, upon information and belief, the Well Service-owned molds and key blocks to one of Well Service s top competitors, Extreme Plastics Plus, Inc. in Fairmont, West Virginia, thereby infringing the 980 Patent. Further by using the Well Service-owned molds and key blocks, Tire Conversion has converted Well Service s property to its own unauthorized and unlawful use. 19. Tire Conversion s actions have caused damage and irreparable harm to Well Service and Inventors by at least negating Well Service s exclusivity to make, have made, use, sell, offer for sale and/or import products utilizing the claimed inventions of the 980 Patent. 4
Case 2:16-cv-00526-DSC Document 1 Filed 04/27/16 Page 5 of 8 COUNT I (Patent Infringement of U.S. Patent No. 9,016,980 in Violation of 35 U.S.C. 271 20. Plaintiffs repeat, re-allege and incorporate by reference the averments contained in paragraphs 1 through 19 of this Complaint as if fully stated herein. 21. On information and belief, Tire Conversion has and directly infringe at least claims 1 and 17-19 of the 980 Patent, both literally and under the doctrine of equivalents, in violation of 35 U.S.C. 271(a by making, using, offering for sale, and/or selling a containment berm product having a base with a bottom surface, top surface, and groove disposed in the top surface, a key block having a top with plurality of edges and a bottom, wherein the bottom of the key block has a polygonal shape, wherein the key block is shaped to fit in the groove in such a way as to create tension in a sheet material positioned between the base and the key block such that the base and the key block hold the sheet material in place when a force parallel to the bottom surface is applied to the sheet material, and wherein the edges of the top of the key block are substantially flush with the top surface of the base when the key block is placed in the groove such that the base and the key block hold the sheet material in place when the force parallel to the bottom surface is applied to the sheet material, including, but not limited to, the Stronghold Berm product. Such infringement will continue unless enjoined by the Court 22. Upon information and belief, with knowledge of the 980 Patent, the Exclusive Licensing Agreement, and Well Service s ownership of tooling materials, Tire Conversion has actively induced and continues to actively induce the direct infringement of its customers, including, but not limited to Extreme Plastics Plus, Inc., in violation of 35 U.S.C. 271(b. Such induced infringement will continue unless enjoined by the Court. 23. On information and belief, Tire Conversion has actively induced this infringing activity by encouraging customers to purchase and install the Stronghold Berm and similar 5
Case 2:16-cv-00526-DSC Document 1 Filed 04/27/16 Page 6 of 8 products knowing that such products, when constructed and/or installed will directly infringe the 980 Patent or remaining willfully blind to the fact that such products, when constructed and/or installed will directly infringe the 980 Patent. Accordingly, Tire Conversion specifically intends to cause direct infringement of the 980 Patent by its customers, including, but not limited to, Extreme Plastics Plus, Inc. 24. On information and belief, Tire Conversion contributes to the infringement of its customers by making, using, offering for sale, and/or selling at least a base and key block according to at least claims 1 and 17-19 of the 980 Patent knowing such components to constitute a material part of the invention of the 980 Patent and are not staple articles or commodities of commerce suitable for substantial non-infringing uses, or remaining willful blind to such facts. Accordingly, Tire Conversion contributes to the direct infringement of the 980 Patent by its customers, including, but not limited to, Extreme Plastics Plus, Inc. 25. As a result of Tire Conversion s infringement of the 980 Patent, Plaintiffs have suffered damages in an amount to be determined at trial and have been irreparably damaged and will continue to be irreparably damaged by reason of Tire Conversions infringement of the 980 Patent unless this Court enjoins the infringing acts of Tire Conversion. 26. Moreover, with knowledge of the 980 Patent, the Exclusive License Agreement, and Well Service s ownership of tooling materials, Tire Conversion s activities described herein and infringement of the 980 Patent has been willful and deliberate and constitute willful infringement of the 980 Patent under 35 U.S.C. 284. COUNT II (Conversion 27. Plaintiffs repeat, re-allege and incorporate by reference the averments contained in paragraphs 1 through 26 of this Complaint as if fully stated herein. 6
Case 2:16-cv-00526-DSC Document 1 Filed 04/27/16 Page 7 of 8 28. By using Well Service s molds and key blocks, ownership and exclusivity of which was acknowledged by Tire Conversion to belong to Well Service, to manufacture and sell the Stronghold Berm product at least to Extreme Plastics Plus, Inc., Tire Conversion has deprived Well Service of and interfered with its superior property and possessory right in the molds and key blocks without Well Service s consent or other legal justification. 29. Given knowledge of the 980 Patent, the Exclusive License Agreement, and Well Service s ownership and exclusivity of the tooling materials, such deprivation and interference, was an intentional exercise of domino or control over Well Service s property. 30. Accordingly, Tire Conversion s actions constitute conversion. WHEREFORE, Plaintiffs pray for judgment that: A. The 980 Patent has been infringed by Tire Conversion, and such infringement has been willful and deliberate; B. The 980 Patent is valid and enforceable; C. Plaintiffs are awarded damages to be paid by Tire Conversion adequate to compensate Plaintiffs for Tire Conversion s infringement, plus pre-judgment and post-judgment interest, costs, and expenses; D. Plaintiffs are awarded three times their damages, plus pre-judgment and postjudgment interest, for such infringement pursuant to 35 U.S.C. 284; E. Tire Conversion is liable for the tort of conversion for converting Plaintiff Well Service s molds and key blocks; F. Tire Conversion, its affiliates, officers, directors, employees, agents, licensees, subsidiaries, successors and assigns, and any and all persons acting in privity or in concert with 7
Case 2:16-cv-00526-DSC Document 1 Filed 04/27/16 Page 8 of 8 any of them is preliminarily and permanently enjoined from making, using, importing, offering for sale, and/or selling any products that infringe the 980 Patent. G. The Court declares this to be an exceptional case under 35 U.S.C. 285 and awards Plaintiffs their attorneys fees, costs and expenses in this action; and H. The Court grant to Plaintiffs such other and further relief as the Court may deem just and proper. DEMAND FOR JURY TRIAL Pursuant to Rule 38 of the Federal rules of Civil Procedure, Plaintiffs hereby demand a trial by jury for all issues triable by a jury. Respectfully submitted, THE WEBB LAW FIRM Dated: April 27, 2016 s/ John W. McIlvaine John W. McIlvaine (PA ID No. 56773 Anthony W. Brooks (PA ID No. 307446 One Gateway Center 420 Ft. Duquesne Blvd., Suite 1200 Pittsburgh, PA 15222 412.471.8815 412.471.4094 (fax jmcilvaine@webblaw.com abrooks@webblaw.com Attorneys for Plaintiffs 8