Case 1:19-cv-02248 Document 1 Filed 04/17/19 Page 1 of 7 PageID #: 1

1 ABELMAN, FRAYNE & SCHWAB

Michael Aschen (MA 6336)
2 Anthony J. DiFilippi (AD 7870)
666 Third Avenue
3
New York, New York 10017
4 Telephone: (212) 949-9022
Fax: (212) 949-9022
5 Emails: maschen@lawabel.com
ajdifilippi@lawabel.com
6
7 Attorneys for Plaintiff Teknor Apex Company
8 UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
9
10 TEKNOR APEX COMPANY,
19 Civ. ______________
11 Plaintiff,
COMPLAINT FOR
12 -against- PATENT INFRINGEMENT,
FALSE ADVERTISING, and
13
RAY PADULA HOLDINGS, UNFAIR COMPETITION
14
Defendants.
15
16
NATURE OF THE ACTION
17
1. This is an action for patent infringement arising under Title 35 of the United States
18
Code, for false advertising arising under Title 15 of the United States Code, and for related common
19
20 law claims for unfair competition arising under the laws of the State of New York.
21 THE PARTIES

22 2. Plaintiff Teknor Apex Company ("Teknor") is a corporation organized and existing

23
under the laws of the State of Rhode Island with offices at 505 Central Avenue, Pawtucket, RI
24
02861.
25
3. Teknor is a material science and custom compounder providing vinyl, thermoplastic
26
27 elastomers, nylon, colorants, and other specialty compounds and esters to domestic and international
28 customers. Teknor is also America’s leader in hose technology and innovation and has several lines

of consumer garden and industrial hoses.

1
 Case 1:19-cv-02248 Document 1 Filed 04/17/19 Page 2 of 7 PageID #: 2

1 4. Defendant Ray Padula Holdings ("Padula") is a New York corporation with offices at

2 135 Pinelawn Road, Melville, New York 11747.

3
5. Padula manufactures and sells consumer lawn and garden products throughout the
4
United States, including within this judicial district.
5
JURISDICTION AND VENUE
6
7 6. This action arises under the patent laws of the United States, 35 U.S.C. § 100, et seq.,

8 including 35 U.S.C. §§ 271 and 281, and the United States Trademark Act of 1946, as amended, 15
9 U.S.C. §§ 1051, et seq., (“Lanham Act”).
10
7. This Court has jurisdiction over plaintiff’s claims arising under 28 U.S.C. §§ 1331 and
11
1338(a) because they involve a federal question and because plaintiff seeks relief under the Patent
12
Act, including remedies for patent infringement, and under the Lanham Act.
13
14 8. This Court also has diversity jurisdiction over this action pursuant to 28 U.S.C. §

15 1332(a) because plaintiff does not share a state of citizenship with the defendant and the amount in
16 controversy exceeds $75,000, exclusive of interest and costs.
17 9. Defendant is subject to personal jurisdiction in the State of New York and in this
18
Judicial District. Venue is proper in this Judicial District under 28 U.S.C. §§ 1391(c) and 1400(b).
19
FACTS COMMON TO ALL CAUSES OF ACTION
20
10. United States Design Patent No. D786,668S ("the ‘668 Patent") was duly and legally
21
22 issued on May 16, 2017, and assigned to the International Paper Company thereafter. The’668 Patent
23 is valid, subsisting, and in full force and effect. A true and correct copy of the’668 Patent is attached
24 hereto as Exhibit 1.
25
11. Teknor is and was at all relevant time the exclusive licensee of the ‘668 Patent with
26
the right to enforce the patent.
27
12. The’668 Patent shows and claims an ornamental design for an octagonally shaped
28
product container.

2
 Case 1:19-cv-02248 Document 1 Filed 04/17/19 Page 3 of 7 PageID #: 3

1 13. Teknor has not assigned or licensed any rights in the’668 Patent to Padula.

2 14. Upon information and belief, Padula has imported, used, offered for sale, sold and/or
3
sells, or caused to do the same, octagonally shaped product containers in this Judicial District, that
4
employ a design that infringes the’668 Patent (the “Accused Containers”).
5
15. Teknor sells a garden hose identified by its ZERO-G trademark.
6
7 16. The ZERO-G garden hose packaging includes an original work of literary authorship

8 (the “ZERO-G Copy”).

9 17. Teknor is the exclusive owner of all right and title to the ZERO-G Copy.
10
18. Statutory copyright subsists in the ZERO-G Copy pursuant to Title 17 of the United
11
States Code.
12
19. Teknor has complied with the provisions of the Copyright Act with respect to the
13
14 ZERO-G Copy and was the owner of the exclusive copyright therein at all relevant times.
15 20. Teknor's exclusive right in and to the ZERO-G Copy is of great economic value.

16 21. The text of the “Accused Containers” copies and infringes Teknor’s copyright in the
17 ZERO-G Copy.
18
22. Padula advertised and promoted its FlexLite Premium Duty Lightweight Hose and
19
couplings on its website, at http://www.raypadula.com/products/gardenhose/flexlite/#, by displaying
20
photographs of Teknor’s zero-G® hose and couplings, thereby leading consumers to falsely believe
21
22 that Padula’s FlexLite Premium Duty Lightweight Hose and couplings have the appearance and
23 qualities of Teknor’s zero-G® hose and couplings.
24 23. Padula has knowingly and willfully infringed Teknor’s ‘668 Patent and its copyright in
25
the ZERO-G Copy, in violation of the Patent Act and Copyright Act.
26
24. Padula infringed Teknor’s patented design and ZERO-G Copy, and displayed
27
photographs of Teknor’s zero-G® hose and couplings on its website with the purpose and intent of
28
damaging, trading upon, and profiting from Teknor’s publicity, reputation, and good will.

3
 Case 1:19-cv-02248 Document 1 Filed 04/17/19 Page 4 of 7 PageID #: 4

1 FIRST CAUSE OF ACTION FOR

DIRECT INFRINGEMENT OF THE “668 PATENT
2
25. Plaintiff repeats and realleges each and every allegation contained in paragraphs 1-24
3
4 of the Complaint as though they were fully set forth herein.
5 26. This cause of action arises under the patent laws of the United States (i.e., Title 35,
6 United States Code, § 100, et seq.).
7
27. Upon information and belief, Padula has imported, used, offered for sale and/or sold,
8
or caused to do the same, the Accused Containers within the United States.
9
28. Padula's importation, use, offer for sale and/or sale of the Accused Containers
10
11 constitutes direct infringement of the ‘668 Patent, in violation of 35 U.S.C. § 271(a).
12 29. Teknor has suffered irreparable injury from Padula's infringement of the ‘668 Patent,
13 which cannot be adequately compensated for by monetary damages. Unless Padula's acts of
14
infringement of the’668 Patent are enjoined by the Court pursuant to 35 U.S.C. § 283, Teknor will
15
continue to suffer irreparable injury.
16
SECOND CAUSE OF ACTION FOR
17 FALSE ADVERTISING UNDER 15 U.S.C. § 1125
18
30. Plaintiff repeats and realleges each and every allegation contained in paragraphs 1-29
19
of the Complaint as though they were fully set forth herein.
20
31. This cause of action arises under § 43(a) of the Lanham Act, 15 U.S.C. § 1125.
21
22 32. Padula’s advertisement and promotion of its FlexLite Premium Duty Lightweight

23 Hose and couplings by displaying photographs of Teknor’s zero-G® hose and couplings on its
24 website is a false statement of fact concerning the FlexLite Premium Duty Lightweight Hose and
25
couplings.
26
33. Upon information and belief, Padula’s display of photographs of Teknor’s zero-G®
27
hose and couplings on its website has led a substantial segment of consumers to falsely believe that
28

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 Case 1:19-cv-02248 Document 1 Filed 04/17/19 Page 5 of 7 PageID #: 5

1 Padula’s FlexLite Premium Duty Lightweight Hose and couplings has the appearance and qualities of
2 Teknor’s zero-G® hose and couplings.
3
34. By displaying photographs of Teknor’s zero-G® hose and couplings on its website
4
Padula’s made a material misrepresentation likely to deceive a substantial segment of relevant
5
consumers and influence their purchasing decision.
6
7 35. Upon information and belief, Padula intended that potential customers consider the

8 false information described above when making purchasing decision.

9 36. As a direct and proximate cause of the forgoing conduct of Padula, Teknor has been
10
damaged in an amount not totally ascertainable, and will continue to suffer irreparable injury to its
11
goodwill, rights, and businesses unless and until Padula (and others in active concert with it) are
12
restrained from continuing their wrongful acts.
13
14 37. The acts of Padula complained of herein were performed intentionally and render this

15 case exceptional so as to justify an award of attorneys' fees pursuant to 15 U.S.C. § 1117(a).

16 THIRD CAUSE OF ACTION FOR UNFAIR COMPETITION
17 38. Plaintiff repeats and realleges each and every allegation contained in paragraphs 1-37
18
of the Complaint as though they were fully set forth herein.
19
39. This count arises under the common law of the State of New York.
20
40. Upon information and belief, Padula’s acts as alleged herein were undertaken in bad
21
22 faith and constitute unfair competition under the common law of the State of New York.
23 41. As a proximate result of the acts of Padula’s alleged herein, Plaintiff has suffered and
24 continues to suffer damage to its business, goodwill, reputation and profits, while Padula is benefiting
25
at Plaintiff’s expense.
26
PRAYER FOR RELIEF
27
WHEREFORE, Plaintiff prays for a judgment in its favor as follows:
28

5
 Case 1:19-cv-02248 Document 1 Filed 04/17/19 Page 6 of 7 PageID #: 6

1 (a) that the manufacture, importation, use, offer for sale and/or sale of the Accused

2 Containers infringe the’668 Patent;

3
(b) that the Court preliminarily and permanently enjoin Padula, its affiliated companies,
4
divisions and its officers, directors, agents, servants, employees, dealers and customers, present or
5
prospective, and those in active concert or participation therewith, from offering, manufacturing,
6
7 importing, installing, using, offering for sale or selling, or inducing others to sell, import, install, use,
8 offer for sale or sell within the United States, the Accused Container, or other items embodying the
9 subject matter of or otherwise infringing the’668 Patent;
10
(c) that Padula’s display of photographs of Teknor’s zero-G® hose and couplings on its
11
website constitutes false advertising in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125;
12
(d) that the Court preliminarily and permanently enjoin Padula, its affiliated companies and its
13
14 officers, directors, agents, servants, employees, dealers and customers, present or prospective, and
15 those in active concert or participation therewith, from displaying photographs of Teknor’s zero-G®
16 hose and couplings on its website;
17 (e) that the Court preliminarily and permanently enjoin Padula, its affiliated companies
18
and its officers, directors, agents, servants, employees, dealers and customers, present or prospective,
19
and those in active concert or participation therewith, from unfairly competing with Teknor in any
20
manner whatsoever;
21
22 (f) that the Court require an accounting;

23 (g) that the Court award Teknor monetary damages to compensate it for Padula’s
24 infringement of the ‘668 Patent, pursuant to 35 U.S.C. § 284;
25
(h) that the Court award Teknor additional statutory damages to compensate it for each
26
use and application by Padula of the design covered by the ’668 Patent to any article of manufacture
27
pursuant to 35 U.S.C. § 289;
28

6
 Case 1:19-cv-02248 Document 1 Filed 04/17/19 Page 7 of 7 PageID #: 7

1 (i) that the Court award Teknor monetary damages to compensate it for Padula’s acts of

2 false advertising;
3
(j) that the Court award Teknor monetary damages to compensate it for Padula’s acts of
4
state common law unfair competition;
5
(k) that the Court award prejudgment and post judgment interest and costs to Teknor;
6
7 (l) that the Court declare this an exceptional case pursuant to 35 U.S.C. § 285 and 15

8 U.S.C. § 1117(a), and award Teknor its attorneys' fees;

9 (m) that the Court order a recall and destruction of all the Accused Containers, and that
10
Padula shall report in writing, under oath to the Court, that such delivery and destruction occurred;
11
and
12
(n) for such other and further relief as the Court may deem appropriate.
13
14 Dated: April 17, 2019 ABELMAN, FRAYNE & SCHWAB
New York, New York
15 /s/ Michael Aschen
Michael Aschen (MA 6336)
16 Anthony J. DiFilippi (AD 7870)
666 Third Avenue
17 New York, New York 10017
18 Phone: (212) 949-9022
maschen@lawabel.com
19 ajdifilippi@lawabel.com
20 Attorneys for Plaintiff
21
22
23
24
25
26
27
28

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Case 1:19-cv-02248 Document 1-1 Filed 04/17/19 Page 2 of 2 PageID #: 9
 Case 1:19-cv-02248 Document 1-2 Filed 04/17/19 Page 1 of 2 PageID #: 10

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

UNITED STATES DISTRICT COURT

for the
Eastern District
__________ of of
District New York
__________

)
)
)
TEKNOR APEX COMPANY, )
Plaintiff(s) )
)
v. Civil Action No.
)
)
)
)
RAY PADULA HOLDINGS, )
Defendant(s) )

SUMMONS IN A CIVIL ACTION

To: (Defendant’s name and address)

Ray Padula Holdings

135 Pinelawn Road
Melville, New York 11747

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 plaintiff’s attorney,
whose name and address are:

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.

DOUGLAS C. PALMER
CLERK OF COURT

Date:
Signature of Clerk or Deputy Clerk
 Case 1:19-cv-02248 Document 1-2 Filed 04/17/19 Page 2 of 2 PageID #: 11

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 individual’s 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 individual’s 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:
Server’s signature

Printed name and title

Server’s address

Additional information regarding attempted service, etc:

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