Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 1 of 20 PageID #:1 IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION ) ) FELLOWES, INC., ) ) Civil Action No.: Plaintiff, ) ) JURY TRIAL REQUESTED vs. ) ) MICHILIN PROSPERITY COMPANY, LTD., ) ) INTEK AMERICA, INC. ) ) Defendants. ) ) COMPLAINT Plaintiff, FELLOWES, INC. ( FELLOWES ) files this Complaint against Defendants MICHILIN PROSPERITY COMPANY, LTD. ( MICHILIN ) and INTEK AMERICA, INC. ( INTEK ) and in support thereof alleges as follows: NATURE OF THE CASE 1. FELLOWES seeks legal and equitable remedies against MICHILIN for (1) infringement of U.S. Utility Patent No. 7,942,352 (the 352 patent ); (2) infringement of U.S. Design Patent No. D611,089 (the 089 patent ); (3) unfair competition arising under the Lanham Act, 15 U.S.C. 1125(a); (4) unfair competition in violation of Illinois common law; (5) violation of the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505/1, et seq.; and (6) violation of the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/1, et seq., all resulting from actions and conduct as set forth herein. 2. FELLOWES seeks legal and equitable remedies against INTEK for infringement
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 2 of 20 PageID #:2 of U.S. Design Patent No. D611,089 (the 089 patent ). PARTIES 3. FELLOWES is a corporation organized and existing under the laws of the state of Illinois, with a principal place of business located at 1789 Norwood Avenue, Itasca, Illinois, 60143. 4. On information and belief, MICHILIN is a corporation existing under the laws of Taiwan with a principal place of business at 5F., 11 SanNing St., SanChung City, Taipei Hsien, 241 Taiwan, R.O.C. 5. On information and belief, INTEK is a corporation existing under the laws of California with a principal place of business at 18528 South Dominquez Hills Drive, Rancho Dominquez, California 90220. 6. FELLOWES is a global manufacturer and marketer of workspace products and solutions that enhance the security, organization, and productivity in today s workplace. 7. FELLOWES is credited with inventing the personal shredder and continues as a significant innovator in the industry, bringing new shredder technologies to the market on a regular basis. 8. On information and belief, MICHILIN makes paper shredders, including the offending products, overseas and imports those products into the United States. 9. On information and belief, MICHILIN sells paper shredders, including the offending products, in the United States. 10. On information and belief, INTEK makes paper shredders, including the offending products, overseas and imports those products into the United States. 11. On information and belief, INTEK sells paper shredders, including at least some 2
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 3 of 20 PageID #:3 of the offending products, in the United States. 12. On information and belief, the offending products are sold to office and computer products retailers, wholesalers, mail order and Internet catalog companies, and wholesale clubs around the world, including in the United States and within this District. JURISDICTION AND VENUE 13. This is an action for patent infringement arising under the United States patent laws, 35 U.S.C. 1 et seq. 14. This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. 1331 and 1338. This Court has supplemental jurisdiction to the state law claims under 28 U.S.C. 1367 because the state law claims are so related to claims in the action within such original jurisdiction that they form part of the same case or controversy under Article III of the United States Constitution. 15. On information and belief, this Court has personal jurisdiction over MICHILIN pursuant to 735 ILCS 5/2-209 et seq. and the Due Process Clause of the Fourteenth Amendment of the United States, due at least to MICHILIN S substantial business in this forum, including sales of the offending products. On information and belief, this Court has personal jurisdiction over MICHILIN because, among other things, it transacts business in this District, at least by offering to sell, selling and/or advertising the offending products in such a way as to reach customers in Illinois and this judicial District through the websites of third party retailers (e.g., staples.com, officemax.com) and retail stores located in this District (e.g., Staples and OfficeMax). On information and belief, MICHILIN does business with and has offered for sale and sold shredders to OfficeMax, which is headquartered in this judicial district. On information and belief, MICHILIN has specifically committed acts of infringement in this judicial District. 3
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 4 of 20 PageID #:4 16. On information and belief, this Court has personal jurisdiction over INTEK pursuant to 735 ILCS 5/2-209 et seq. and the Due Process Clause of the Fourteenth Amendment of the United States, due at least to INTEK s substantial business in this forum, including sales of the offending products. On information and belief, this Court has personal jurisdiction over INTEK because, among other things, it transacts business in this District, at least by offering to sell, selling and/or advertising the accused products in such a way as to reach customers in Illinois and this judicial District through the Internet via its own website (e.g., goecolife.com) and the websites of third party retailers (e.g., Staples.com, Officemax.com), and through retail stores located in this District (e.g., Staples and OfficeMax). On information and belief, INTEK does business with and has offered for sale and sold shredders to OfficeMax, which is headquartered in this judicial district. On information and belief, Defendant has specifically committed acts of infringement in this judicial District. 17. On information and belief, MICHILIN and INTEK are subject to the Court s general jurisdiction, based on their regularly conducting business and other persistent courses of conduct, and/or deriving substantial revenue from goods and services provided to persons or entities in this District. 18. Venue properly lies in this district pursuant to 28 U.S.C. 1391 and 1400(b) for at least the reasons that a substantial part of the events giving rise to these claims occurred in this District, because FELLOWES has suffered injury in this District, and because MICHILIN and INTEK reside in this District to the extent the patent venue statute defines residing to include committing acts of patent infringement in this District. In addition and to the extent required, venue properly lies in this Court pursuant to Illinois venue law, 735 ILCS 5/2-101, in that this is a county in which some part of the transactions occurred out of which the cause of action arose 4
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 5 of 20 PageID #:5 and because, to the extent MICHILIN and/or INTEK are considered non-residents, an action may be commenced in any county. FACTS The Asserted Patents 19. On May 17, 2011, the 352 patent, entitled Shredder With Rotatable Device For Moving Shredded Materials Adjacent the Outlet issued to inventors Tai Matlin and Jakub Krynski and assignee FELLOWES. Since the issue date, the 352 patent has been at all times valid and enforceable. 20. A true and correct copy of the 352 patent is attached as Exhibit A. 21. FELLOWES has been the assignee and owner of all right, title, and interest in the 352 patent since it issued. 22. On March 2, 2010, the 089 patent, entitled TOP SURFACE OF A SHREDDER issued to inventors Tai Matlin and Eric Gach and assignee FELLOWES. Since the issue date, the 089 patent has been at all times valid and enforceable. 23. A true and correct copy of the 089 patent is attached as Exhibit B. 24. FELLOWES has been at all times the assignee and owner of all right, title, and interest in the 089 patent since it issued. The Offending Shredders 25. On information and belief, MICHILIN manufactured, sold, used, imported, and/or offered for sale a shredder labeled Staples Minimate 6-Sheet Cross-Cut Shredder (hereinafter the Minimate ) with model number SPL-NXC6PDA and item number 893738. 26. A true and correct representative image of the Minimate is attached as Exhibit C. 27. On information and belief, the Minimate shredder has been offered for sale in the 5
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 6 of 20 PageID #:6 Northern District of Illinois and throughout the United States under the Staples name by Staples, Inc. 28. On information and belief, MICHILIN manufactured, sold, used, imported, and/or offered for sale a shredder labeled 8 Sheets Mini Diamond Cross Cut paper/cd/credit Card shredder with Stainless Steel Basket, Wooden Surface (hereinafter the Wooden Surface shredder ) with model number SPL-QW80S. 29. A true and correct representative image of the Wooden Surface shredder is attached as Exhibit D. 30. On information and belief, the Wooden Surface shredder has been offered for sale in the Northern District of Illinois and throughout the United States under the Staples name by Staples, Inc. 31. On information and belief, MICHILIN manufactured, sold, used, imported, and/or offered for sale a shredder labeled GOECOLIFE / 18 Sheet Capacity / Cross Cut / Under Desk Shredder (hereinafter the GOECOLIFE shredder ). 32. On information and belief, INTEK has manufactured, sold, used, imported, and/or offered for sale a GOECOLIFE shredder. 33. On information and belief, Intek owns the U.S. trademark registration 3,946,019 for GOECOLIFE for Paper sheets containing lubricating oil for use in paper and media shredders for the purpose of lubricating the shredder. 34. On information and belief, Intek owns the U.S. trademark application 77947546 for GOECOLIFE.COM for Providing online retail store services featuring a wide variety of goods of others having environmental or progressive attributes, namely, lubrication sheets for paper and media shredders, and paper and media shredders. 6
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 7 of 20 PageID #:7 35. A true and correct representative image of the GOECOLIFE shredder is attached as Exhibit E. 36. On information and belief, the GOECOLIFE shredder is offered for sale in the Northern District of Illinois and throughout the United States under the Costco name by Costco Wholesale Corporation. 37. The offending products include, but are not limited to the Minimate, the Wooden Surface shredder, and the GOECOLIFE shredder. 38. On information and belief, MICHILIN manufactured, sold, used, imported, and/or offered for sale shredders that have been offered for sale in the United States by Staples, Inc. ( Staples ) under the Staples brand name and by Costco Wholesale Corporation under the GOECOLIFE brand name. 39. On information and belief, INTEK sold, used, imported, and/or offered for sale shredders that have been offered for sale in the United States by Staples, Inc. ( Staples ) under the Staples brand name and by Costco Wholesale Corporation under the GOECOLIFE brand name. 40. On information and belief, MICHILIN exported into the United States, solicited sales, and sold shredders, including the Minimate, the Wooden Surface shredder, and the GOECOLIFE shredder, in the United States. 41. On information and belief, MICHILIN exported into the United States, solicited sales, and sold shredders, including the Minimate, the Wooden Surface shredder, and the GOECOLIFE shredder, in the United States, including within the Northern District of Illinois. 42. On information and belief, INTEK imported into the United States, solicited sales, and sold shredders, including the GOECOLIFE shredder, in the United States, including within 7
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 8 of 20 PageID #:8 the Northern District of Illinois. 43. On information and belief, MICHILIN continues to export into the United States, solicit sales, and sell shredders, including the Minimate, the Wooden Surface shredder, and the GOECOLIFE shredder, in the United States. 44. On information and belief, MICHILIN continues to export into the United States, solicit sales, and sell shredders, including the Minimate, the Wooden Surface shredder, and the GOECOLIFE shredder, in the United States, including within the Northern District of Illinois. 45. On information and belief, INTEK continues to import into the United States, solicit sales, and sell shredders, including the GOECOLIFE shredder, in the United States, including within the Northern District of Illinois. 46. Staples brand shredders are sold by Staples in the United States, including within the Northern District of Illinois. 47. On information and belief, MICHILIN has applied for certification by the Underwriters Laboratory Inc. within the past sixteen months. 48. On information and belief, MICHILIN and or its customers have applied for certification by the Underwriters Laboratory Inc. for the Minimate, the Wooden Surface shredder, and the GOECOLIFE shredder. 49. The corporate headquarters for Underwriters Laboratory Inc. is located in the Northern District of Illinois. 50. On information and belief, a substantial part of the events and damages giving rise to this action occurred in the Northern District of Illinois. 51. On information and belief, MICHILIN has established contacts with the forum and purposefully availed itself of this jurisdiction by committing and continuing to commit acts 8
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 9 of 20 PageID #:9 of patent infringement and unfair competition in the Northern District of Illinois, and elsewhere in the United States. The Safe Sense Patented Technology 52. On February 16, 2010, U.S. Utility Patent No. 7,661,614 (the 614 patent ), entitled Shredder throat safety system issued to inventor Tai Matlin and assignee FELLOWES. 53. A copy of the 614 patent is attached as Exhibit F. 54. FELLOWES has been the assignee and owner of all right, title, and interest in the 614 patent since it issued. 55. Since February 2006, FELLOWES has successfully marketed the 614 patented technology as Safe Sense technology. 56. The 614 patent specification describes the Safe Sense technology as instantly stopping the shredder 10 with a proximity sensor to detect the presence of a person or thing (e.g., animal or inanimate object) in proximity to the opening 36. In layman s terms, the technology is a safety feature embedded in the opening collar of the shredder designed to detect the presence of a person or pet based on the natural capacitance generated by all warm-blooded animals. The detected capacitance change is used to signal the shredder to turn off. Michilin s Unfair Competition 57. Since its introduction into the market each FELLOWES shredder manufactured with the Safe Sense technology has been manufactured and marketed with a unique shredder top design to create a specific visual association of the presence of Safe Sense technology. This virtual appearance of the Safe Sense technology is created by designing the top of the shredder with the appearance of contrasting textures or materials. More specifically, FELLOWES designed all shredder s having Safe Sense technology with a high gloss, 9
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 10 of 20 PageID #:10 reflective surface surrounding the opening of the shredder (i.e. the collar) in conjunction with a more subdued, flat surface appearance on the remaining top of the shredder surface. 58. A true and correct copy of examples of FELLOWES unique shredder design described above incorporating the Safe Sense technology is attached as Exhibit G. 59. FELLOWES was awarded the previously referenced 089 patent for this unique shredder surface design. 60. Since its introduction in 2006, FELLOWES has sold more than $250 million of shredders in the United States that incorporate the Safe Sense technology and the unique, patented design. 61. Over the years customers have come to associate the unique Safe Sense design to represent the existence of the FELLOWES Safe Sense technology. 62. Upon information and belief, MICHILIN intentionally designed shredder models DQW80L and SPL-QW80S with the unique design to mislead customers into thinking the MICHILIN offending products are FELLOWES shredder products that incorporate the FELLOWES Safe Sense technology. 63. United States Patent No. 7,040,559 (the 559 patent ) is entitled Shredder With Lock For On/Off Switch and issued on May 9, 2006. 64. FELLOWES and MICHILIN are direct competitors in the shredder market, and been engaged in multiple lawsuits relating to shredder technology. For example, FELLOWES and MICHILIN have previously been involved in a patent case involving a safety related patent owned by FELLOWES. 65. FELLOWES has been the assignee and owner of all right, title, and interest in the 559 patent since it issued. 10
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 11 of 20 PageID #:11 66. The 559 patent claims a safety feature for a paper shredder. 67. In a previous litigation with Fellowes, MICHILIN confirmed that it infringed at least one claim of the 559 patent. 68. In Civil Action No. 2:06cv289 with Judge Doumar in the Eastern District of Virginia, MICHILIN admitted that it infringed at least one claim of Fellowes 559 patent. 69. Upon information and belief, these MICHILIN shredders do not include any safety feature similar to the FELLOWES Safe Sense technology. COUNT I PATENT INFRINGEMENT OF U.S. PATENT NO. 7,942,352 70. FELLOWES incorporates paragraphs 1 through 69 above by this reference, as though fully set forth herein. 71. On information and belief, MICHILIN has directly infringed, contributorily infringed, and/or actively induced infringement of the 352 patent by making, using, importing, offering for sale, and/or selling in the United States, including to customers in the Northern District of Illinois, at least Minimate shredders covered by one or more claims of the 352 patent. 72. On information and belief, MICHILIN s infringement of the 352 patent has been and continues to be deliberate and willful, and such infringement will continue unless MICHILIN is enjoined by this Court. 73. As a consequence of MICHILIN s infringement complained of herein, FELLOWES has been damaged and will continue to sustain damages by such acts in an amount to be determined at trial and will continue to suffer irreparable loss and injury. COUNT II PATENT INFRINGEMENT OF U.S. PATENT NO. D611,089 74. FELLOWES incorporates paragraphs 1 through 73 above by this reference, as though fully set forth herein. 11
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 12 of 20 PageID #:12 75. On information and belief, MICHILIN and INTEK have directly infringed, contributorily infringed, and/or actively induced infringement of the 089 patent by making, using, importing, offering for sale, and/or selling in the United States, including to customers in the Northern District of Illinois, shredders, including at least the Wooden Surface shredder and the GOECOLIFE shredder, covered by the 089 patent. 76. On information and belief, MICHILIN s and INTEK s infringement of the 089 patent have been and continues to be deliberate and willful, and such infringement will continue unless MICHILIN and INTEK are enjoined by this Court. 77. As a consequence of MICHILIN s and INTEK s infringement complained of herein, FELLOWES has been damaged and will continue to sustain damages by such acts in an amount to be determined at trial and will continue to suffer irreparable loss and injury. COUNT III FEDERAL UNFAIR COMPETITION TRADE DRESS INFRINGEMENT 78. FELLOWES incorporates paragraphs 1 through 77 above by this reference, as though fully set forth herein. 79. Prior to the Defendants first sale of their infringing products, including the products infringing the 089 patent, FELLOWES introduced into the marketplace a novel, unique, and inherently distinctive shredder design, namely the look and feel of the Safe Sense technology shredders referred to herein as Safe Sense Trade Dress. Representative images of FELLOWES shredders that include the Safe Sense Trade Dress are attached as Exhibit G. 80. FELLOWES is the owner of all right, title, and interest in and to the Safe Sense Trade Dress, including the right to bring suit for past, present, and future infringement, and to collect past, present, and future damages. 12
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 13 of 20 PageID #:13 81. FELLOWES has continuously used the Safe Sense Trade Dress to designate its products that incorporate the Safe Sense technology. 82. FELLOWES has developed a local and national reputation and a high degree of goodwill associated with its use of the Safe Sense Trade Dress. 83. As a result of the long, continuous, and wide spread use, promotion and advertising of the Safe Sense Trade Dress, it has become associated with FELLOWES, it has also acquired a secondary meaning, and has become an asset of substantial value as a symbol of FELLOWES, its quality name, its quality services, its quality products, and its goodwill. 84. The Safe Sense Trade Dress is distinctive. 85. The Safe Sense Trade Dress is nonfunctional. 86. On information and belief, since at least 2010, MICHILIN has marketed, offered for sale, and sold their shredders, including the infringing shredders, model numbers DQW80L and SPL-QW80S, in this District and throughout the United States. A true and correct picture of the accused products are attached as Exhibits D & E, respectively. 87. MICHILIN S accused shredders have the same look and feel as the look and feel of the Safe Sense Trade Dress. 88. MICHILIN S accused shredders share significant similarities with and infringes upon FELLOWES strong and distinctive Safe Sense Trade Dress. Moreover, the accused shredders have and continue to directly compete with the FELLOWES shredders that incorporate the Safe Sense Trade Dress. 89. On information and belief, MICHILIN intentionally advertises, offers for sale, and sells in a manner designed to confuse the public into mistaking the MICHILIN accused shredders with the FELLOWES Safe Sense shredders with the Safe Sense Trade Dress. As 13
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 14 of 20 PageID #:14 such, MICHILIN S accused shredders falsely represent to the trade and customers that MICHILIN S accused shredders originate from FELLOWES, and that MICHILIN and its accused shredders are in some manner affiliated with FELLOWES. 90. On information and belief, due to the striking similarities between the MICHILIN accused shredders and FELLOWES Safe Sense Trade Dress, there is a likelihood of confusion by customers and others who deal with MICHILIN or the accused shredders as to the source of the goods offered by MICHILIN and its retail customers. 91. On information and belief, MICHILIN has intentionally and willfully infringed FELLOWES Safe Sense Trade Dress by passing off the accused shredders as those of another, causing a likelihood of confusion or of misunderstanding as to the source, sponsorship, approval, or certification of the MICHILIN accused shredders. 92. On information and belief, MICHILIN has intentionally and willfully represented that accused shredders have sponsorship, approval, characteristics, and benefits that they do not have from FELLOWES. 93. On information and belief, MICHILIN has intentionally and willfully represented that the accused shredders are of a particular standard and quality on par with FELLOWES Safe Sense Trade Dress and that the accused shredders are the same style or model. 94. On information and belief, MICHILIN has profited from its use, offer for sale and sales of shredders similar in look and feel to the FELLOWES shredders depicted in Exhibit G. 95. The Safe Sense Trade Dress was first used by FELLOWES before MICHILIN first marketed and sold their infringing shredders. 96. MICHILIN has and continues to offer for sale and sell shredders similar in look and feel to FELLOWES Safe Sense Trade Dress shredders. 14
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 15 of 20 PageID #:15 97. On information and belief, when MICHILIN first began manufacturing, using, offering for sale, and selling their infringing shredders, MICHILIN knew that FELLOWES had long been using its Safe Sense Trade Dress and that FELLOWES owned the Safe Sense Trade Dress. 98. On information and belief, MICHILIN has profited from its use, offer for sale, and sales of infringing shredders similar in look and feel to shredders depicted in Exhibit G. 99. MICHILIN S advertising, use, and offer for sale of the infringing shredders depicted in Exhibits D & E, and designs similar thereto, falsely describe and represent MICHILIN as being sponsored by, approved by, or affiliated with FELLOWES. MICHILIN has caused, with knowledge of such false designation of origin or description or representation, such designs to be used in interstate commerce. 100. MICHILIN has willfully promoted its businesses in interstate commerce using a confusing simulation of the FELLOWES Safe Sense Trade Dress in such a manner so as to falsely designate an origin or an association with FELLOWES, with the Safe Sense Trade Dress, and with FELLOWES goodwill, so as to cause confusion or mistake among purchasers as to the true origin, source, sponsorship, or affiliation of MICHILIN S goods, all to MICHILIN S profit and to FELLOWES monetary damage. FELLOWES has been irreparably harmed by MICHILIN S use of such false designation and misrepresentation. 101. MICHILIN S acts, as set forth above, constitute unfair competition, false designation or origin, and false description in violation of 15 U.S.C. 1125(a), Section 43(a) of the Lanham Act. 102. MICHILIN will, if not enjoined by this Court, continue its acts of unfair competition by the use of the false designation and false representations set forth above, which 15
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 16 of 20 PageID #:16 acts have caused, and will continue to cause FELLOWES immediate and irreparable harm. Pursuant to 15 U.S.C. 1116 and Fed. R. Civ. P. 65(a), FELLOWES is entitled to an Order of this Court enjoining MICHILIN S unlawful activities. FELLOWES has no adequate remedy at law. 103. As a result of MICHILIN S conduct set forth above, FELLOWES is entitled, pursuant to 15 U.S.C. 1117, to a judgment for: (1) MICHILIN S profits; (2) damages sustained by FELLOWES; (3) treble damages; (4) such sum as the Court deems just; (5) attorney s fees; (6) costs of this action; and (7) interest. COUNT IV UNFAIR COMPETITION IN VIOLATION OF ILLINOIS COMMON LAW 104. FELLOWES incorporates paragraphs 1 through 103 above by this reference, as though fully set forth herein. 105. MICHILIN S acts, as set forth above, constitute unfair competition, false designation or origin, and false description in violation of Illinois common law. 106. MICHILIN will, if not enjoined by this Court, continue its acts of unfair competition by the use of the false designation and false representations set forth above, which acts have caused, and will continue to cause FELLOWES immediate and irreparable harm. FELLOWES is entitled to an Order of this Court enjoining MICHILIN S unlawful activities. FELLOWES has no adequate remedy at law. 107. As a result of MICHILIN S conduct set forth above, FELLOWES is entitled to all relief afforded to it under Illinois common law, including, but not limited to, attorneys fees, and for any such other relief as the Court deems equitable and just COUNT V VIOLATION OF THE ILLINOIS CONSUMER FRAUD AND DECEPTIVE BUSINESS PRACTICES ACT, 815 ILCS 505/1, ET SEQ 16
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 17 of 20 PageID #:17 108. FELLOWES incorporates paragraphs 1 through 107 above by this reference, as though fully set forth herein. 109. MICHILIN S acts, as set forth above, constitute unfair competition, false designation or origin, and false description in violation of 815 ILCS 505/et seq. 110. MICHILIN will, if not enjoined by this Court, continue its acts of deceptive business practices and fraud by the use of the false designation and false representations set forth above, which acts have caused, and will continue to cause FELLOWES immediate and irreparable harm. FELLOWES is entitled to an Order of this Court enjoining MICHILIN S unlawful activities. FELLOWES has no adequate remedy at law. 111. As a result of MICHILIN S conduct set forth above, FELLOWES is entitled to all relief afforded to it under the Illinois Consumer Fraud Act including, but not limited to, attorneys' fees, and for any such other relief as the Court deems equitable and just. COUNT VI VIOLATION OF THE ILLINOIS UNIFORM DECEPTIVE TRADE PRACTICES ACT, 815 ILCS 510/1, ET SEQ. 112. FELLOWES incorporates paragraphs 1 through 111 above by this reference, as though fully set forth herein. 113. On information and belief, alleges that the foregoing conduct amounts to an unlawful and/or unfair business practice by MICHILIN within the meaning of the Illinois Uniform Trade Practice Act 510/et seq. 114. As a result of MICHILIN S conduct set forth above, FELLOWES is entitled to all relief afforded to it under the Illinois Uniform Deceptive Trade Practices Act including, but not limited to, attorneys' fees, and for any such other relief as the Court deems equitable and just. PRAYER FOR JUDGMENT AND RELIEF WHEREFORE, FELLOWES respectfully requests judgment and relief as follows: 17
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 18 of 20 PageID #:18 (a). Pursuant to 35 U.S.C. 271, a determination that MICHILIN has directly infringed, contributorily infringed, and/or actively induced infringement of claims of the 352 patent; (b). Pursuant to 35 U.S.C. 271, a determination that MICHILIN and INTEK have directly infringed, contributorily infringed, and/or actively induced infringement of claims of the 089 patent; (c). Pursuant to 35 U.S.C. 283, an order that MICHILIN and those in privity with MICHILIN be preliminarily and permanently enjoined from infringing the 352 patent through the manufacture, use, import, offer for sale, and/or sale of infringing shredders; (d). Pursuant to 35 U.S.C. 283, an order that MICHILIN, INTEK, and those in privity with them be preliminarily and permanently enjoined from infringing the 089 patent through the manufacture, use, import, offer for sale, and/or sale of infringing shredders; (e). Pursuant to 35 U.S.C. 284, an award of damages adequate to compensate FELLOWES for infringement of the 352 patent, but in no event less than a reasonable royalty, together with prejudgment interest, costs and disbursements as fixed by the Court; (f). Pursuant to 35 U.S.C. 284, an award of damages adequate to compensate FELLOWES for infringement of the 089 patent, but in no event less than a reasonable royalty, together with prejudgment interest, costs and disbursements as fixed by the Court; (g). Pursuant to 35 U.S.C. 284, an award increasing damages up to three times the amount found or assessed for infringement of the 352 patent by MICHILIN due to the willful and deliberate nature of the infringement; 18
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 19 of 20 PageID #:19 (h). Pursuant to 35 U.S.C. 284, an award increasing damages up to three times the amount found or assessed for infringement of the 089 patent by MICHILIN due to the willful and deliberate nature of the infringement; (i). That MICHILIN, its corporate officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with it, be preliminarily and permanently enjoined and restrained: (i). from using any shredders similar in look and feel to the shredders attached as Exhibit G; or any other designation or trade dress confusingly similar to Safe Sense Trade Dress; and (ii). from otherwise infringing upon FELLOWES rights in and to its Safe Sense Trade Dress and from otherwise unfairly competing with FELLOWES in any manner; (j). That an accounting be conducted and judgment be rendered against MICHILIN for: (i). all profits received by MICHILIN from its sales of any and all shredders similar in look and feel to the shredders represented in Exhibit G pursuant to 15 U.S.C. 1117 et. seq. and common law; and (ii). actual compensatory damages in an amount not presently known, but to be computed during the pendency of this action; U.S.C. 1117; (k). That such damages assessed against MICHILIN be trebled as provided by 15 (l). Pursuant to 35 U.S.C. 285, a determination that this is an exceptional case and an assessment of reasonable attorneys fees; (m). An award of pre- and post-judgment interest as permitted; and 19
Case: 1:11-cv-06192 Document #: 1 Filed: 09/06/11 Page 20 of 20 PageID #:20 (n). Such other and further relief as the Court deems equitable and just. DEMAND FOR JURY TRIAL Plaintiffs demand a trial by jury on all issues. Dated: September 6, 2011 FELLOWES, INC. By its Attorneys, _/s/peter J. Shakula Peter J. Shakula pjshakula@woodphillips.com Wood Phillips 500 West Madison Street Suite 3800 Chicago, Illinois 60661 Telephone: 312-876-1800 Facsimile: 312-876-2020 Co-counsel - pending admission William P. Atkins (VA Bar # 47562) Robert M. Fuhrer (VA Bar # 76750) PILLSBURY WINTHROP SHAW PITTMAN LLP 1650 Tysons Boulevard McLean, Virginia 22102 Telephone: 703.770.7900 Facsimile: 703.770.7901 20