Case 3:15-cv-01494

Document 1

Filed 08/07/15

Page 1 of 6

Devon Zastrow Newman, OSB #014627

Email: dnewman@schwabe.com
SCHWABE, WILLIAMSON & WYATT, P.C.
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Facsimile: 503.796.2900
David Ludwig, VSB No. 73157, pro hac vice pending
Email: dludwig@dbllawyers.com
DUNLAP BENNETT & LUDWIG PLLC
211 Church Street, SE
Leesburg, VA 20175
Telephone: 703.777.7319
Facsimile: 703.777.3656
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
PORTLAND DIVISION

No. __________

PAUL E. CALDWELL,
Plaintiff,

COMPLAINT FOR PATENT

INFRINGEMENT

vs.
DEMAND FOR JURY TRIAL
HANEY ENTERPRISES, LLC,
Defendant.

COMES NOW Plaintiff Paul E. Caldwell (Plaintiff), by counsel, in support of this

Complaint against Defendant Haney Enterprises, LLC (Defendant) for patent infringement,
states as follows:
NATURE OF THE ACTION
1.

This is an action for patent infringement arising under the patent laws of the

United States, including 35 U.SC. 271, 281-285 and 289.

Page 1 -

COMPLAINT FOR PATENT INFRINGEMENT

PDX\119820\163828\DZN\16285537.1

SCHWABE, WILLIAMSON & WYATT, P.C.

Attorneys at Law
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:15-cv-01494

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Page 2 of 6

PARTIES
2.

Plaintiff is an individual citizen of the State of Alabama and resides at 139 River

Run Road, Childersburg, AL 35044.

3.

Defendant is a Kentucky limited liability corporation having its principal place of

business at 817 Broadway, Barlow, Kentucky 42024.

JURISDICTION AND VENUE
4.

Plaintiffs cause of action for patent infringement against Defendant arises under

the patent laws of the United States, 35 U.S.C. 101 et seq., including 271, 281-285 and
289. This court has original jurisdiction pursuant to 28 U.S.C. 1331 and 1338(a).
5.

This Court has personal jurisdiction over Defendant because Defendant has

infringed Plaintiffs patent in this district by selling an infringing product distillery equipment
to a customer who resides in Hillsboro, Oregon. The customer, Big Bottom Distillery, LLC,
currently uses the infringing product in this district; the product is installed on Big Bottom
Distillery, LLCs premises. Defendant has offered its infringing products for sale to other
potential customers, including in this district, through the two internet sites Defendant maintains
that are available to consumers within this district, and from which Defendant shipped product to
Big Bottom Distillery. Defendants advertising efforts targeted toward consumers in this district
include attending the American Distilling Institute conference in Seattle in 2014 and 2015 to
promote the infringing product to consumers in the Pacific Northwest.
6.

Venue is proper in this District pursuant to 28 U.S.C. 1391 (b) & (c) and

1400(b). Defendant has infringed Plaintiffs patent in this district by selling and offering to sell
products in this district. The infringing product is installed and in use in this district.
FACTUAL BACKGROUND
Page 2 -

COMPLAINT FOR PATENT INFRINGEMENT

PDX\119820\163828\DZN\16285537.1

SCHWABE, WILLIAMSON & WYATT, P.C.

Attorneys at Law
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:15-cv-01494

Document 1

Filed 08/07/15

Page 3 of 6

7.

Plaintiff is a manufacturer and distributor of distilling equipment.

8.

On December 30, 2014, United States Design Patent No. D720,425 (the 425

patent) was issued to Plaintiff for a distillation tank faade. Plaintiff has owned all right, title,
and interest in the 425 patent at all times since it was issued and continues to own the 425
patent. A copy of the 425 patent is attached to this Complaint as Exhibit A.
9.
across

Defendant produces and distributes distilling equipment and supplies to customers

the

United

States

through

their

websites

www.hillbillystills.com

and

www.hbscopper.com.
10.

On or about May 17, 2013, Plaintiff and Defendant began doing business with

each other. Defendant sold Plaintiffs distillation tanks through its website and Plaintiff and
Defendant manufactured a number of distillation tanks together.
11.

On or about July 31, 2013, Plaintiff and Defendant ended their professional

relationship.
12.

On August 9, 2013, Plaintiff filed a design patent application for which the 425

patent was eventually issued.

13.

On or about October 7, 2013, Plaintiff informed Defendant and Defendants

counsel that Plaintiff had submitted a patent application covering his distillation tank faade
design and demanded that Defendant cease selling, marketing, and manufacturing distillation
tanks that infringed on Plaintiffs design.
14.

Upon information and belief, Defendant continues to manufacture, market, and

distribution distillation tanks containing elements that infringe the 425 patent. Upon information
and belief, Defendant has sold the distillation tanks that infringe upon the 425 patent to Big

Page 3 -

COMPLAINT FOR PATENT INFRINGEMENT

PDX\119820\163828\DZN\16285537.1

SCHWABE, WILLIAMSON & WYATT, P.C.

Attorneys at Law
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:15-cv-01494

Document 1

Filed 08/07/15

Page 4 of 6

Bottom Distilling LLC, an Oregon limited liability corporation having its principal place of
business at 21420 NW Nicholas Ct, Ste D-9, Hillsboro, Oregon 97124.
15.

Thus Defendant is, among other things, manufacturing, using, selling, and/or

offering the distillation tank product, which infringes upon the 425 patent, and which has been
sold to, and is presently being used in, this judicial district.
COUNT I INFRINGEMENT OF U.S. DESIGN PATENT NO. D720,425
16.

Plaintiff realleges and incorporates by reference the allegations set forth in

paragraphs 1-15.
17.

Defendant has infringed and continues to infringe the 425 patent within this

judicial district by making or selling whiskey stills that embody the patented invention disclosed
in the 425 patent, in violation of 35 U.S.C. 271 and 289.
18.

Defendant is not licensed or otherwise authorized by Plaintiff to make, use,

import, sell or offer to sell any distillation faade that embodies the patented invention disclosed
in the 425 patent, and its conduct is, in every instance, willful and without Plaintiffs consent.
19.

The design of Defendants faade so closely resembles the invention disclosed in

the 425 patent that an ordinary observer would be deceived into purchasing Defendants faade
in the mistaken belief that it includes the invention disclosed in the 425 patent. Defendant will
continue to manufacture and sell its infringing faade unless enjoined by this Court.
20.

Defendant has profited through infringement of the 425 patent. As a result of

Defendants unlawful infringement, Plaintiff has suffered and will continue to suffer damage.
Due to Defendants infringement, Plaintiff is entitled to recover from Defendant damages
adequate to compensate for the infringement in an amount subject to proof at trial, but in no
event less than a reasonable royalty, together with interest and costs as fixed by this Court under
Page 4 -

COMPLAINT FOR PATENT INFRINGEMENT

PDX\119820\163828\DZN\16285537.1

SCHWABE, WILLIAMSON & WYATT, P.C.

Attorneys at Law
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:15-cv-01494

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Page 5 of 6

35 U.S.C. 284. Alternatively, Plaintiff is entitled to recover Defendants total profits from the
sale of its infringing facades pursuant to 35 U.S.C. 289.
21.

On information and belief, Defendants infringement of the 435 Patent is willful

and deliberate, entitling Plaintiff to enhanced damages and reasonable attorneys fees and costs.
22.

On information and belief, Defendant intends to continue its unlawful infringing

activity, and Plaintiff will continue to suffer irreparable harm from such unlawful infringing
activity, for which there is no adequate remedy at law, unless Defendant is enjoined by this
Court.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays for relief as follows:
1.

A declaration that the 425 patent is valid and enforceable;

2.

For a judgment and declaration that Defendant has infringed the 425 patent;

3.

For a judgment awarding Plaintiff compensatory damages as a result of

Defendants infringement of the 425 patent, together with interest and costs, and in no
event less than a reasonable royalty;
4.

For a judgment declaring that Defendants infringement of the 425 patent has

been willful and deliberate;

5.

Enhancement of the damage award based on Defendants willful infringement of

Plaintiffs patent pursuant to 35 U.S.C. 284 .

6.

For and pre-judgment interest on the amount of the award;

7.

For judgment declaring that this case is exceptional and awarding Plaintiff its

expenses, costs, and attorneys fees in accordance with 35 U.S.C. 284 and 285 and
Rule 54(d) of the Federal Rules of Civil Procedure;
Page 5 -

COMPLAINT FOR PATENT INFRINGEMENT

PDX\119820\163828\DZN\16285537.1

SCHWABE, WILLIAMSON & WYATT, P.C.

Attorneys at Law
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:15-cv-01494

8.

Document 1

Filed 08/07/15

Page 6 of 6

For judgment that, pursuant to 35 U.S.C. 289, Defendant is liable to Plaintiff to

the extent of Defendants total profit, and an award corresponding to such a judgment;
9.

For the granting of a permanent injunction enjoining Defendant and its agents,

servants, officers, directors, employees, affiliated entities and all persons in active
concern or participation with them from further acts of infringement pursuant to 35
U.S.C. 283; and
10.

For any other or further relief the Court deems just and proper.

Dated this 7th day of August, 2015.

Respectfully submitted,
SCHWABE, WILLIAMSON & WYATT, P.C.

By:

/s/ Devon Zastrow Newman

Devon Zastrow Newman, OSB No. 014627
Telephone: 503.222.9981
Facsimile: 503.796.2900

David Ludwig, VSB No. 73157

DUNLAP BENNETT & LUDWIG PLLC
Trial Attorney: Devon Zastrow Newman
Of Attorneys for Plaintiff

Page 6 -

COMPLAINT FOR PATENT INFRINGEMENT

PDX\119820\163828\DZN\16285537.1

SCHWABE, WILLIAMSON & WYATT, P.C.

Attorneys at Law
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900

Case 3:15-cv-01494

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EXHIBIT A - Page 1 of 4

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EXHIBIT A - Page 2 of 4

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EXHIBIT A - Page 3 of 4

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EXHIBIT A - Page 4 of 4

Case 3:15-cv-01494

rs44

(Rev

r2lr2)

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Page 1 of 1

CIVIL COVER SHEET

urposeolinitiatingthecivil docketsheet, (S[EINST]UCTIqNSoNNEn'PAclioFTHISFORM)

L (a) PLAINTIFFS

DEFENDANTS
Haney Enterprises, LLC

Paul E. Caldwell

Plaintifl

(b)

County of Residence of First Listed

Talladeoa
(DXCDPT IN U.S, PLA]NTIFF CASES)

County ofResidence ofFirst Listed Defendant

Ballard
(lN U.S, PI]1tN7Il;'F CASDS ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND TNVOLVED

(C)

Attorneys (Firm

Attorneys (lf Known)

Namc, Address, ond Telephone Number)

Devon Zastrow Newman; Schwabe, Williamson & Wyatt, P.C.

1211 SW Fifth Avenue, Suite 1900
Portland, OR 97204 503-222-9981

IL

BASIS OF JURISDICTION
ts3

USGovemrent
Plaintiff

Ol

(Ptace an

"x"

IIL

in otrc Box onty)

CITIZENSHIP OF PRINCIPAL PARTIES

Qtace an

"x"

in one Boxlor Ptointlf

nd One Bru [or Delendont)

Only)
PTF DEF
PTF DEF
E I O I IncorporatedorPrincipalPlace O 4 tr4
CilizenofThisslate

(For Diversily Cases

FederalQuestion
(U.5, Government Nol q Pqrly)

ofBusiness ln This State

I 4

D 2 US Covement

citizenofAnotherstate O 2

Diversity
(Indcte Citzenship olParles in Iten

Defendml

Incorporatednr/PrincipalPlace

O 5 O5

ofBusiness In ADother State

D3

Citizen or Subject ofa

NATURE OF SUIT

D 2

III)

E 3

o 6 06

ForeignNation

qn "X" in One Box

l(

O I l0 Insurance

O
O
O
O

PERSONAL INJURY

PERSONAL INJURY
D 3 l0 Airplme

Marine
O 315 Airplane Produot
130 Miller Act
Liability
140 Negotiable lnstrument
O 320 Assault, Libel &
150 Recovery ofOverpayment
Slander
& Enforcement of Judgmenl
D 330 Federal Employers'
l5l Medicue Act
120

Liability
D 340 Mmne
D 345 Muine Product
Liability

of Velerm's Benefits
160 Stockholders' Suits

190 Other Contract

195 Contral Product Liability
196 Franchise

D
O
O
O

350 Motor Vehicle

355 Motor Vehicle
Product Liability
360 Other Personal

O
O

362 Persona.l hrjury Mcdical Malpractice

440 Other Cvil Rights

O 441 Voting
O 442 Employment
O 443 Housrng/

230 Rent Lease & Ejctmont

240 To-ts to Lard
245 1-on Product Lrability
290 All Other Real Proprty

ofProperty
690 Olher

2l

USC 881

Accommodatiols
D 445 Amer w/Disabilities Enployment
O 446 Aner. w/Disabilitics Other
D 448 Education

0
D

370 Othor Fraud

371 Truth in Lending
380 Other Personal
Property Dmage
385 Propefy Dmage
Product Liability

422 Appeal 28 USC 158

423 Withdawal
28 USC 157

710

Act
720 Labor/Magement

O
D
O
O

740 Railway Labor Act

751 Fmily md Medical
Leave Act
790 Other Labo Litigation
791 Employee Retiremcnt

lncomo Securify Act

Habeas Corpus:
463 Alicn Detainee
510 Motions to Vacate
Sentence
530 Gcneral
535 Death Penalty

861
862
863
864
86s

fl
O
D

O
O

820 Copyrights
830 Pafent
840 Tradenark

D
D

t, RtR

Relations

Other:
O 540 Mmdanus & Other
D 550 Civil Rights

D
D

O
D

368 Asbestos Pcsonal

lnjury Product

PRISONER PETITTONS

D 2l0LandCondemnation
D 220 Foreclosurc

625 Drug Relaled Seizure

Liability
PERSONAL PROPERTY

Injury

Phmaceutical
Personal njury
Product Liability

152 Recovery ofDefaulted

Student Loans
(Exoludes Veterans)
153 Recovery ofovcrpayment

365 Personal [njury Product Liability

367 Helth Ctrel

HrA(1395f

Black Lung (923)

DIwc/DIww (aos(g))
SSID Title XVI
RSI (40s(g))

D
D
D

375
400
410
430
450
460
470

False Ctaims At
Statc Reapportionment

Antitrust
Bmks md Bmking
Comrnerce
Deportation
Racketeer Influenccd and

Comrpt Organzatiors
480 Consurcr Credit
490 Cable/Sat TV
850 Securities/Commoditis/
Exchange
890 Othcr Statutory Alio[s
891 Agricultural Acts
893 Enviorunsntal Matters
895 Fredom oflnfomration

Act

O
FEDERL TAX SUI1S

89 ArbitratioD
899 Admiristrative Pocedure

Act/Review or Appeal of
Agency Decision
950 Constitutionaliry of

O 870Taxes(US Plaintiff
or Defendilt)

871 IRS-Third Party

26 USC 7609

Stte Statutes

IJuvlIGI'r{ I T(,N

D
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462 Naturalization Application

465 Other Immigration

Actions

555 Prison Condition

560 Civil Dotainee -

Condilions of
Confincment

v. ORIGIN

xl

Original

(Place an

"X" in one

D2

Proceeding

Box only)

Removed from
State Court

J3

Patent

VII

STED IN

juils.lictional stututes unless dversU)

Multidistrict
Litigation

(See n$truclons):

DEMAND

CHECK YES only if demanded in cornplaint:

JURY

P,

DEMAND: X Yes

DOCKET NUMBER

JUDGE
OF ATTORNEY

DAIE

t.7.20 I

RECEIPT #

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0 6

unctive relief

LINDER RULE 23, F R Cv

RELATED CASE(S)
IF ANY

District

cause

ement; da

fl cuncr IF THrs IS A cLASS ACTIoN

COMPLAINT

5 Transfened from

Reopened

289

35 USC

CAUSE OF ACTION Brief

VIII.

Appellate Court

Statute under which you are fil ing (Do not

Cite the U

VI.

ll 4 Reinstated or D

Remanded from

AMOUNT

APPLYING IFP

JUDCE

MAG JUDCE

O No

Case 3:15-cv-01494

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Page 1 of 2

AO 440 (Rev. 06/12) Summons in a Civil Action

UNITED STATES DISTRICT COURT

for the

District
of Oregon
__________
District
of __________
Paul E. Caldwell

Plaintiff(s)

v.
Haney Enterprises, LLC, a Kentucky limited liability
corporation

Defendant(s)

)
)
)
)
)
)
)
)
)
)
)
)

Civil Action No.

SUMMONS IN A CIVIL ACTION

To: (Defendants name and address) Haney Enterprises, LLC
c/o Robert Matthew Haney, Registered Agent
839 Broadway
Barlow, Kentucky 42024

A lawsuit has been filed against you.

Within 21 days after service of this summons on you (not counting the day you received it) or 60 days if you
are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
P. 12 (a)(2) or (3) you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiffs attorney,
whose name and address are: Devon Zastrow Newman
Schwabe, Williamson & Wyatt, P.C.
1211 SW Fifth Avenue, Suite 1900
Portland, OR 97204

If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
You also must file your answer or motion with the court.

CLERK OF COURT

Date:
Signature of Clerk or Deputy Clerk

Case 3:15-cv-01494

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Page 2 of 2

AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)

Civil Action No.

PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
This summons for (name of individual and title, if any)
was received by me on (date)

I personally served the summons on the individual at (place)

on (date)

; or

I left the summons at the individuals residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date)

, and mailed a copy to the individuals last known address; or

I served the summons on (name of individual)

, who is

designated by law to accept service of process on behalf of (name of organization)

on (date)

; or

I returned the summons unexecuted because

; or

Other (specify):
.
My fees are $

for travel and $

for services, for a total of $

0.00

I declare under penalty of perjury that this information is true.

Date:
Servers signature

Printed name and title

Servers address

Additional information regarding attempted service, etc:

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