Case: 1:12-cv-05152 Document #: 1 Filed: 06/27/12 Page 1 of 39 PageID #:1

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION DONALD J. LANPHERE, JR., ) ) Plaintiff, ) v. ) ) TERRY SCHWABE, ) TOM LAWRENCE, and ) STEVE LUNDGREN, ) ) Defendants. ) __________________________________________ )

Civil Action No.: Hon. Judge: Magistrate Judge:

JURY TRIAL DEMANDED

COMPLAINT Plaintiff DONALD J. LANPHERE, JR. (hereinafter Don Lanphere), by his undersigned attorneys, for his complaint against Defendants TERRY SCHWABE, TOM LAWRENCE, and STEVE LUNDGREN (hereinafter collectively the Defendants), states and alleges as follows: Cause of Action 1. This action arises from the Defendants fraud and inequitable conduct in obtaining U.S. Design Patent No. US D651,355 S (the 355 patent) and in subsequently using this invalid patent as an excuse or justification to infringe upon the rights of or otherwise unfairly compete with Don Lanphere, thereby causing substantial damage to Don Lanphere as a result of this fraud, inequitable conduct and unfair competition. 2. There is an actual case or controversy regarding the validity and use of the '355 patent. The
Defendants are knowingly using an invalid patent to unfairly compete with Don Lanphere. The Defendants have also attached a copy of the 355 patent as Exhibit A to their Counterclaims against Don

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Lanphere in a co-pending lawsuit between the parties hereto, namely Civil Action No. 10-4774 pending in this Court.

Parties 3. Plaintiff Don Lanphere is an individual, U.S. citizen residing at 1741 Ridgewood Ln. E., Glenview, Illinois 60025. 4. Upon information and belief, Defendant Terry Schwabe is an individual, U.S. citizen residing in East Moline, Illinois, and has an address at 767 Fifty-Second Avenue, Suite 203, Moline, Illinois 61265. 5. Upon information and belief, Defendant Tom Lawrence is an individual, U.S. citizen residing in Moline, Illinois, and has an address at 767 Fifty-Second Avenue, Suite 203, Moline, Illinois 61265. 6. Upon information and belief, Defendant Steve Lundgren is an individual, U.S. citizen residing in Lenexa, Kansas, and has an address at 15621 W. 87th Parkway, Lenexa, Kansas, 66219. Jurisdiction and Venue 7. This action arises under the provisions of the Patent Laws, Rules and Regulations, 35 U.S.C. 271 et seq., 37 C.F.R 1.56, under 15 U.S.C. 1125 et seq., under the Declaratory Judgments Act, 28 U.S.C. 2201 et seq., and related state and/or common law. 8. This Court has jurisdiction of these claims under, inter alia, the provisions of 28 U.S.C. 2201, 2202, 1338, 1367, under the Patent Laws, Rules and Regulations, 35 U.S.C. 1 et seq., and 37 C.F.R 1.56 et seq., and under the Lanham Act, 15 U.S.C. 1501 et seq. 9. Venue is proper in this District under, inter alia, the provisions of Section 1391 of Title 28, United States Code.

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Background Facts 10. On January 15, 2008, United States Patent No. D559,502S (the 502 patent),

entitled Helmet-Shaped Hat with Facemask, was duly and legally issued to Don Lanphere, the named inventor and sole owner of the subject matter claimed in the 502 patent. A true and correct copy of the 502 patent is attached hereto as Exhibit A. 11. Effective March 7, 2011, United States Copyright Registration No. VA-1-768-794

(the 794 Copyright) entitled Helmet Shaped Hat With Flexible Removable Facemask was duly and legally registered to Don Lanphere, the author and sole copyright claimant of sculpture/3-D artwork subject matter in the 794 Copyright. A true and correct copy of the 794 Copyright is attached hereto as Exhibit B. 12. In the late summer/early fall of 2009, an acquaintance of Don Lanphere, Mr. Todd

Potter, introduced him to Terry Schwabe, Tom Lawrence and Steve Lundgren, who agreed to secure for Don Lanphere the necessary licenses to gain accesses to the collegiate market for, and to act as a distributor of Don Lanpheres patented and copyrighted Huddle Hat products. The defendants accepted an inventory of approximately 10,000 of Don Lanpheres Huddle Hat products, after informing Don Lanphere that they would quickly obtain the necessary licenses and begin distributing the patented products during the 2009 college football season. 13. Around this time, a number of Don Lanpheres Huddle Hat products were distributed

to, used by and/or sold to one or more third parties or otherwise publicly used or disclosed to the public. The defendants were well aware of Don Lanpheres Huddle Hat products and the public disclosure of the Huddle Hat products.

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14.

After the inventory of Don Lanpheres Huddle Hat products was ready for sale, Don

Lanphere repeatedly asked these defendants when they would start distributing the patented products. The defendants repeatedly kept telling Don Lanphere that they would start shipping the Huddle Hat products within just a few days. Despite their assurances that the Huddle Hat products would soon be distributed, days turned to weeks and the Huddle Hat products were never distributed. 15. After the defendants breached their agreement with Don Lanphere to obtain licenses

for, and to market and sell Don Lanpheres Huddle Hat products, the defendants extorted $8000 from Don Lanphere before they would allow Don Lanphere to pick up and leave with his inventory of Huddle Hat products. 16. Upon information and belief, the defendants then decided to make and sell a modified

version of the Huddle Hat product as their own helmet-shaped hat with removable flexible face mask. The defendants modified version of Don Lanpheres Huddle Hat product is called the Fanaticap. 17. On July 2, 2010, the defendants filed a design patent application on their Fanaticap

product. On December 27, 2011, the defendants were issued U.S. Design Patent No. US D651,355 S on this application (the 355 patent). A true and correct copy of the 355 patent is attached hereto as Exhibit C. 18. Upon information and belief, the Fanaticaps helmet shaped hat is substantially the

same overall shape as the Huddle Hat products helmet shaped hat. Further upon information and belief, the Fanaticaps removable flexible face mask is substantially the same overall shape as a well known NFL face mask known as the Schutt EGOP.

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19.

Upon information and believe, the Fanaticap is an obvious combination of the Huddle

Hat products helmet-shaped hat with a removable flexible face mask in the shape of a well known NFL face mask. Further, any slight variances thereto are simply an obvious matter of design choice. As such, the 355 patent is invalid in view of this obvious combination. 20. Pursuant to 37 C.F.R 1.56, each of the defendants and their attorneys had a duty of

candor and good faith in dealing with the U.S. Patent & Trademark Office (USPTO), which included a duty to disclose to the USPTO all information known to that individual to be material to patentability. Each of the defendants acknowledged this duty in their Declarations filed with the 355 patents application. 21. Upon information and belief, during the prosecution of the 355 patents application,

the defendants filed four information disclosure statements disclosing various prior art to the USPTO. 22. Upon information and belief, during the prosecution of the 355 patents application,

the defendants and/or their attorneys had knowledge of the Huddle Hat product, yet despite filing four information disclosure statements, intentionally failed to disclose the Huddle Hat product to the USPTO. 23. Upon information and belief, the defendants and/or their attorneys knew or should

have known that the Huddle Hat products were material to patentability of the Fanaticap. As such, the defendants and/or their attorneys violated their duty of disclosure and breached their duty of candor and good faith in dealing with the USPTO by failing to disclose the Huddle Hat products to the USPTO in any one of their four information disclosure states or in a subsequent information disclosure statement.

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24.

Upon information and belief, through the defendants and/or defendants attorneys

intentional failure to disclose the Huddle Hat product to the USPTO, the defendants and/or their attorneys practiced or attempted to practice fraud on the Office and/or violated their duty of disclosure through bad faith and/or intentional misconduct. 25. Upon information and belief, during the prosecution of the 355 patents application,

the defendants and/or their attorneys had knowledge of the well known NFL face mask known as the Schutt EGOP, worn by many NFL stars such as Eric Dickerson and Deion Sanders, yet despite filing four information disclosure statements, intentionally failed to disclose the NFL face mask known as the Schutt EGOP to the USPTO. 26. Upon information and belief, the defendants and/or their attorneys knew or should

have known that the well known NFL face mask known as the Schutt EGOP was material to patentability of the Fanaticap. As such, the defendants and/or their attorneys violated their duty of disclosure and breached their duty of candor and good faith in dealing with the USPTO by intentionally failing to disclose the well known NFL face mask known as the Schutt EGOP to the USPTO in any one of their four information disclosure states or in a subsequent information disclosure statement. 27. Upon information and belief, through the defendants and/or defendants attorneys

intentional failure to disclose the well known NFL face mask known as the Schutt EGOP to the USPTO, the defendants and/or their attorneys practiced or attempted to practice fraud on the Office and/or violated their duty of disclosure through bad faith and/or intentional misconduct. 28. Further, during the course of the litigation of Civil Action No. 10-4774, the defendants

and their attorneys have asserted that Don Lanpheres 502 patent is invalid in view of various prior art

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references. A true and correct copy of the defendants Final Invalidity Contentions regarding the

the 502 patent is attached hereto as Exhibit D. The assertions made by the defendants and their attorneys in their Final Invalidity Contentions clearly is information known to these individual to be material to patentability. 29. The Defendants assertions in their Final Invalidity Contentions are an admission

against interest with respect to the patentability of their Fanaticap. By their own reasoning in their Final Invalidity Contentions, and in view of the Huddle Hat products, the Defendants knew or should have known that their 355 patent is obvious in view of known prior art. 30. Upon information and belief, during the prosecution of the 355 patents application,

the defendants and/or their attorneys had knowledge of their Final Invalidity Contentions, yet despite filing four information disclosure statements, intentionally failed to disclose their Final Invalidity Contentions to the USPTO. 31. Upon information and belief, the defendants and/or their attorneys knew or should

have known that their Final Invalidity Contentions were material to patentability of the Fanaticap. As such, the defendants and/or their attorneys violated their duty of disclosure and breached their duty of candor and good faith in dealing with the USPTO by intentionally failing to disclose their Final Invalidity Contentions to the USPTO in any one of their four information disclosure states or in a subsequent information disclosure statement. 32. Upon information and belief, through the defendants and/or defendants attorneys

intentional failure to disclose their Final Invalidity Contentions to the USPTO, the defendants and/or their attorneys practiced or attempted to practice fraud on the Office and/or violated their duty of disclosure through bad faith and/or intentional misconduct. Upon information and belief, the

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above described fraudulent actions and/or omissions of the defendants and/or their attorneys were intention, willful, wanton and in bad faith. 33. In view of the defendants above described fraud and inequitable conduct in

intentionally failing to disclose information known to be material to patentability, the 355 patent is therefore invalid. 34. Upon information and belief, the Defendants have the knowledge or should have the

knowledge that the 355 patent is invalid for one or more of the above described reasons. Despite this knowledge, the Defendants have used the fact the 355 patent issued, albeit fraudulently, as a justification to infringe upon Don Lanpheres rights in and to the Huddle Hat products, as part of or in support of their counterclaims against Don Lanphere in of Civil Action No. 10-4774, to obtain one
or more collegiate licenses for their Fanaticaps and to sell their Fanaticaps, and to otherwise unfairly compete with Don Lanphere, all to the severe damage and detriment of Don Lanphere.

COUNT I Declaration of Invalidity of the 502 Patent based on Prior Art 35. 36. Don Lanphere repeats and realleges paragraphs 1-34 as though fully stated herein. An actual and justiciable controversy has arisen and now exists between Don

Lanphere and the defendants concerning whether the 355 patent is invalid. 37. The 355 patent is invalid for failure to comply with one or more provisions of the

Patent Laws of the United States, including, without limitation, 35 U.S.C. 102 and 103. 38. Absent a declaration that the 355 patent is invalid, the defendants will continue to

wrongfully maintain and use the 355 patent, and notify others of the 355 patent, in violation of the laws and contrary to the public policy of the United States, and will thereby continue to cause Don

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Lanphere irreparable injury and damage. 39. Because the above activities and actions have created an actual and justiciable

controversy, Don Lanphere seeks a declaration that the 355 patent is invalid. COUNT II Declaration of Invalidity due to Inequitable Conduct 40. 41. Don Lanphere repeats and realleges paragraphs 1-39 as though fully stated herein. An actual and justiciable controversy has arisen and now exists between Don

Lanphere and the defendants concerning whether the 355 patent issued as a result of the defendants and/or their attorneys fraud and inequitable conduct during the prosecution of the 355 patent. 42. The 355 patent is invalid due to the defendants and/or the defendants attorneys

willful, intentional and bad faith violation of their duty of candor and good faith in dealing with the USPTO, under the provisions of the Patent Laws, Rules and Regulations, including, without limitation, 37 C.F.R. 1.56. 43. Absent a declaration that the 355 patent was fraudulently obtained through

inequitable conduct and is therefore invalid, the defendants will continue to wrongfully maintain and use the 355 patent, and notify others of the 355 patent, in violation of the laws and contrary to the public policy of the United States, and will thereby continue to cause Don Lanphere irreparable injury and damage. 44. Because the above activities and actions have created an actual and justiciable

controversy, Don Lanphere seeks a declaration that the 355 patent is invalid. COUNT III Fraud on the Patent Office

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45. 46.

Don Lanphere repeats and realleges paragraphs 1-44 as though fully stated herein. The Defendants and/or their attorneys knowingly and intentionally withheld and did

not disclose to the USPTO, with the intent to deceive, the above describe information material to the patentability of their Fanaticap as applied for in the 355 patents application. 47. The defendants and/or their attorneys knew of the above described material

information, knew that it was material, and made a deliberate and intentional decision to withhold it. 48. information. 49. Therefore, the defendants and/or their attorneys misconduct resulted in the unfair The USPTO would have refused the claim of the 355 patent based on this material

benefit of receiving an unwarranted claim/patent. 50. Defendants fraudulent conduct as aforesaid has caused great and irreparable injury to

Don Lanphere, and unless the 355 is invalidated and held unenforceable, it will continue to cause Don Lanphere great and irreparable injury. COUNT IV Federal Unfair Competition 51. 52. Don Lanphere repeats and realleges paragraphs 1-50 as though fully stated herein. The Defendants fraudulent procurement and use of a knowingly invalid patent has

resulted in unfair competition with Don Lanphere. 53. The acts of the Defendants complained of herein constitute are in violation of Section

43 of the Lanham Act, 15 U.S.C. 1125. 54. Defendants have, and on information and belief intend to continue to, willfully

engage in unfair competition under the federal law by the acts complained of herein, in complete

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disregard of Don Lanpheres rights. 55. On information and belief, the Defendants actions complained of herein were

committed willfully and intentionally. 56. As a result of the foregoing alleged actions of the Defendants, the Defendants are

being unjustly enriched and Don Lanphere has been and is being injured and damaged. Unless the foregoing actions of the Defendants are restrained by this Court, Don Lanphere will continue to be irreparably harmed, damaged and injured. COUNT V Common Law Unfair Competition 57. 58. Don Lanphere repeats and realleges paragraphs 1-56 as though fully stated herein. The acts of the Defendants complained of herein constitute unfair competition in

violation of the common law. 59. Defendants have, and on information and belief intend to continue to, willfully and

intentionally engage in unfair competition under the common law by the acts complained of herein, in complete disregard of Don Lanpheres rights. 60. As a result of the foregoing alleged actions of the Defendants, the Defendants are

being unjustly enriched and Don Lanphere has been and is being injured and damaged. Unless the foregoing alleged actions of the Defendants are restrained by this Court, Don Lanphere will continue to be irreparably harmed, damaged and injured. JURY DEMAND Pursuant to Federal Rule of Civil Procedure 38(b), Plaintiff demands a trial by jury as to all issues so triable in this action.

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WHEREFORE, plaintiff Don Lanphere prays that this Court enter judgment against the Defendants as follows: A. B. That the 355 patent is invalid under 35 U.S.C. 102 and/or 103; That the 355 patent is invalid and unenforceable due to the defendants and/or their

attorneys inequitable conduct; C. That the Defendants and/or their attorneys committed fraud on the USPTO and violated

their duty of candor and good faith in dealing with the Office; D. That the Defendants have been and continue to compete unfairly with Don Lanphere

by obtaining the 355 patent through inequitable conduct and through their use of a knowingly invalid patent; E. That this Court award damages adequate to compensate Don Lanphere for the

Defendants fraud on the patent office; F. That this Court award damages adequate to compensate Don Lanphere for the

Defendants unfair competition; G. H. That this is an exceptional case pursuant to 35 U.S.C. 285 and 15 U.S.C. 1117; That this Court award costs and reasonable attorneys fees pursuant to 35 U.S.C.

285 and 15 U.S.C. 1117; and I. That this Court preliminarily, permanently and finally enjoin the Defendants, their

agents, officers, servants, employees, attorneys, successors, companies, customers and assignees, and all those in active concert or participation with them, from competing unfairly with Don Lanphere; J. That this Court grant all other relief as this Court may deem just and proper. Respectfully submitted,

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DONALD J. LANPHERE, JR.

Date: June 27, 2012

By:

s/Charles T. Riggs Jr. One of the Attorneys for Plaintiff

Timothy T. Patula (patula@patula.com) Charles T. Riggs Jr. (riggs@patula.com) PATULA & ASSOCIATES, P.C. 116 S. Michigan Ave., 14th Fl. Chicago, Illinois 60603 (312) 201-8220

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EXHIBIT A

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EXHIBIT B

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EXHIBIT C

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EXHIBIT D

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