USDC IN/ND case 3:16-cv-00559-JD-MGG document 1 filed 08/22/16 page 1 of 12

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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF INDIANA

Lifetime Industries, Inc.

53208 Columbia Drive
Elkhart, IN 46514

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Plaintiff,
v.
Trim-Lok, Inc.
6855 Hermosa Circle
Buena Park, CA 90622
Defendant.

Civil Action No. 3:16-cv-559

JURY TRIAL DEMAND

COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff, Lifetime Industries, Inc. (LTI, Plaintiff), by and through the undersigned
counsel, files this Complaint for Patent Infringement against, Trim-Lok, Inc. (Defendant), and
hereby alleges as follows:

NATURE OF THE ACTION

1.

This is a civil action for patent infringement. Plaintiffs claims are based on the

unauthorized, infringing manufacture, use, sale, and offer for sale by Defendant of seal products
including, for example, components for a two-part seal for a slide-out room.

THE PARTIES
2.

Plaintiff is a corporation organized and existing under the laws of the State of

Minnesota having a principal place of business at 53208 Columbia Drive, Elkhart, Indiana 46514.
3.

Defendant is a corporation organized and existing under the laws of the State of
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California having a principal place of business at 6855 Hermosa Circle, Buena Park, California,
90622, a sales office at 1507 South Olive Street, South Bend, Indiana 46619, and a manufacturing
and distribution facility at 1642 Gateway Court, Elkhart, Indiana 46514.

JURISDICTION AND VENUE

4.

This is an action for patent infringement of United States Patent No. 6,966,590

(the 590 patent) arising under the provisions of the Patent Laws of the United States, 35
U.S.C. 271, 281 and 283-285. Plaintiff owns the 590 patent and holds rights to sue and
recover damages for infringement thereof, including past infringement. This Court has subject
matter jurisdiction pursuant to 28 U.S.C. 1331 and 1338(a).
5.

Defendant makes, offers for sale, and sells infringing products and components of

infringing products which are the subject of the patent infringement cause of action set forth
herein.
6.

Defendant has committed acts of patent infringement, including making, offering

for sale, and selling infringing products and components within this judicial District.
7.

This Court has personal jurisdiction over Defendant. Defendant does and has done

substantial business in this District by having a manufacturing and distribution facility in this
District. Defendants facility distributes products, including those that infringe Plaintiffs 590
patent, and places them into the stream of commerce. Defendant has committed and continues to
commit acts of patent infringement in this District.
8.

Venue is proper in this Court pursuant to 28 U.S.C. 1391 and 1400(b) because

Defendant is subject to personal jurisdiction in this District and has committed and continues to
commit acts of patent infringement that give rise to the claims alleged within this District.

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PATENT-IN-SUIT
9.

On November 22, 2005, the United States Patent and Trademark Office duly and

legally issued the 590 patent titled Two-Part Seal for a Slide-Out Room. A true and correct
copy of the 590 patent is attached to this Complaint as Exhibit A.
10.

All maintenance fees for the 590 patent which have come due have been paid and

the patent has not expired. The 590 patent has not been found invalid by any court or agency.
11.

Various manufacturers, including Forest River, Inc. (Forest River) manufacture

and sell recreational vehicles and mobile living quarters (RV) from facilities in Elkhart County,
Indiana. A network of distributors and resellers offer RVs manufactured by Forest River for sale
to the general public.
12.

Plaintiff currently produces, sells, and distributes two-part seals covered by the

590 patent (collectively, LTI Seals). The LTI Seals include a mounting portion and a separate
bulb portion that slidably connects to the mounting portion. LTI Seals as covered by the 590
patent are shown in Exhibit B.
13.

Defendant makes, uses, sells, and offers for sale a seal (Accused Product) that,

once installed on an RV, infringes one or more claims of the 590 patent under United States law.
The Accused Product is shown in Exhibit C.
14.

On July 15, 2016, the Accused Product was discovered by Henry Lace, an

application technician for the Plaintiff, during a routine visit at Forest River. The Accused
Product was located in an area of Forest Rivers manufacturing facility in a location where slideout seals are installed.
15.

The Accused Product, as observed by Henry Lace, was located in a container

bearing the name Trim-Lok. Further, the Accused Product was marked with other information
that tied it to Defendant at spaced intervals along its length.
16.

Defendants offers for sale of the Accused Product were disclosed to

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representatives of the Plaintiff when representatives of Forest River referred to price quotes from
Defendant for the Accused Product during a meeting with representatives of the Plaintiff.
17.

Andrew Busch (Busch), an engineer previously employed by Plaintiff, left

Plaintiff on or around March 1, 2013. Busch had knowledge of the 590 patent and products
covered thereby. Busch participated in the design of the LTI Seals while employed by Plaintiff.
Within one month of leaving employment with Plaintiff, Busch began employment with
Defendant. Defendant had notice of the 590 patent at the time Busch began employment with
Defendant. Busch was employed by Defendant before June 2013 and continues to be employed
by Defendant at their facility in Elkhart, Indiana.
18.

Daryl Torrey (Torrey), an engineer previously employed by Plaintiff, left

Plaintiff on or around May 3, 2013. Torrey had knowledge of the 590 patent and the products
covered thereby. Torrey participated in the design of the manufacturing equipment and tooling
for LTI products covered by the 590 patent while employed by Plaintiff. Within one month of
leaving employment with Plaintiff, Torrey began employment with Defendant. Torrey was
employed by Defendant prior to June 2013 and continues to be employed by Defendant at their
facility in Elkhart, Indiana.
19.

Torrey or Busch, with knowledge of the 590 patent, contributed to or designed the

Accused Product.
20.

Defendant did not make Accused Product prior to Defendants employment of

Busch or Torrey.
21.

Defendant hired Busch and Torrey for the purpose of making seals for the RV

industry and exploiting relationships they had with existing customers of the Plaintiff.
22.

Defendant gained knowledge of Plaintiffs 590 patent from at least one former

LTI employee before June 2013. Further, Plaintiff became aware of the 590 patent when
Plaintiff filed a Complaint for Patent Infringement in this District on August 12, 2013 for another
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product infringing the 590 patent (see Lifetime Industries, Inc. v. Trim-Lok, 3:13-cv-00819RLM-MGG (N.D. Ind 2013)). The complaint and exhibits specifically explained the 590 patent
in detail and included allegations of infringement.
23.

The explanation of the 590 patent and prior allegations of infringement put

Defendant on notice that the Accused Product infringed the 590 patent.
24.

It is commonplace in the RV industry for suppliers of seals to make routine visits

to RV manufacturing locations for assistance with seal installation or to directly install seals for
troubleshooting and training purposes.

This is especially the case with newly introduced

products.
25.

At least one representative, agent, or employee of the Defendant visited an

Elkhart, Indiana, Forest River manufacturing plant where RVs are manufactured in or around July
2016. This individual was acting on behalf of the Defendant. While at Forest River, Defendants
representative, agent, or employee assisted with the installation, directed the installation, or
directly installed the Accused Product on an RV having a slide-out room.
26.

Defendant was aware Forest River would only use the Accused Product on RVs

having slide-out rooms. The RV at Forest River used for installation of the Accused Product was
chosen because it had a slide-out room.
27.

Defendant has submitted quotes, provided samples, sold, or offered for sale the

Accused Product to Forest River, who manufactures RVs with slide-out rooms. The quotes were
specifically directed towards products and components that infringed the 590 patent.
28.

Defendant had knowledge that its Accused Product infringed the 590 patent

before Defendant made, sold, or offered it for sale.

29.

Defendant has not offered to buy or license the 590 patent from Plaintiff.

30.

Defendant has solicited sales of the Accused Product to RV manufacturers,

specifically for use with sealing slide-out rooms.

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COUNT 1: DIRECT INFRINGEMENT OF THE 590 PATENT

31.

Paragraphs 1 through 30 of Plaintiffs Complaint are incorporated into Count 1 of

Plaintiffs Complaint as if fully set forth herein.

32.

Defendant, without authorization by Plaintiff, has directly infringed and continues

to infringe at least one claim of the 590 patent in violation of 35 U.S.C. 271(a), literally or by
doctrine of equivalents by making, using, offering for sale, or selling the Accused Product on
RVs, or by combining the Accused Product with RVs having slide out rooms in the United States.
33.

Claim 1 of the 590 patent covers a resilient seal used in combination with mobile

living quarters, which includes RVs. An RV, according to Claim 1, has a slide-out room defining
an interior space, and having a first sidewall having an exterior side with an opening through the
first sidewall in which the slide-out room is shifted between open and closed positions. The
slide-out room includes a second sidewall spaced from the first sidewall and an end wall defining
interior space within the slide-out room. The slide out room includes a peripheral flange that
overlaps the first sidewall when the slide-out room is in its closed position. The seal, according
to Claim 1, has a mounting portion attached to the first sidewall along the opening and a separate
bulb portion. The bulb portion is slidably connected to the mounting portion for compressible
contact with the flange of the exterior wall when the slide-out room is in its closed position. The
Accused Product is manufactured for use with an RV with a slide-out room and was found to be
installed by persons other than Plaintiff on a Forest River RV in combination with a slide-out
room. The Accused Product requires a mounting portion (Ex. B, Mounting Portion), which was
attached to the first sidewall. The Accused Product has a separate bulb portion (Ex. B, Bulb
Portion) that is slidably connected to the mounting portion (Ex. B, Mounting Portion). As
installed on the RV at Forest River, the bulb portion has compressible contact with the flange of
the exterior wall. As installed, the Accused Product contains each and every element of Claim 1,
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and therefore infringes Claim 1.
34.

Combining the Accused Product with an RV having a slide-out room infringes

Claim 1. Defendant installed the Accused product on an RV, making the combination of Claim 1
and therefore Defendant infringed Claim 1.
35.

Claim 2 of the 590 patent depends from Claim 1 and further specifies a tongue

and groove connection between the bulb and mounting portion. The Accused Product utilizes a
tongue and groove design to connect the bulb portion to the mounting portion (Ex. B, Tongue &
Groove). The Accused Product that Defendant combined with an RV contains each and every
element of Claim 2, and therefore infringes Claim 2.
36.

Claim 6 of the 590 patent covers a method of attaching a seal to mobile living

quarters having a slide-out room defining an interior space, and having a first sidewall having an
exterior side with an opening through first sidewall in which the slide-out room is shifted between
open and closed positions. The slide-out room includes a second sidewall spaced from the first
sidewall and an end wall defining interior space within the slide-out room. The slide out room
includes a peripheral flange that overlaps the first sidewall when the slide-out room is in its
closed position. The seal includes an elongated mounting portion and an elongated bulb seal
portion, Claim 6 includes the following steps:
a) affixing the mounting portion to the first wall adjacent to the opening using both
adhesive and mechanical fasteners;
b) attaching the bulb seal portion to locate the bulb portion in compressed engagement
with and between the first sidewall and the flange when the slide-out room is in its closed
position;
c) sliding the bulb seal along the attached mounting to a selected position; and
d) maintaining the selected position of the bulb seal portion to the mounting portion by
fastening the bulb seal portion to the mounting portion.
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Defendant installed the Accused Product according to the steps of Claim 6, and therefore
infringes Claim 6.
37.

Defendant will knowingly and intentionally continue to engage in infringing

behavior unless enjoined by this Court and has made, offered for sale, and sold the infringing
Accused Product after knowing of the 590 patent.

COUNT 2: INDUCED INFRINGEMENT OF THE 590 PATENT

38.

Paragraphs 1 through 37 of Plaintiffs Complaint are incorporated in Count 2 of

Plaintiffs Complaint as if fully set forth herein.

39.

Defendant, without authorization by Plaintiff, has knowingly and intentionally

induced and continues to induce Forest River to infringe at least one claim of the 590 patent in
violation of 35 U.S.C. 271(b), by encouraging Defendants customers, resellers, or distributors,
to make, use, offer for sale, or sell the Accused Product in combination with RVs having slide-out
rooms in the United States.
40.

Defendant knowingly and intentionally caused Forest River to incorporate the

Accused Product into RVs having slide-out rooms and intentionally caused Forest River to
commit acts which constituted direct infringement of the 590 patent. The activities of the
Defendant with regard to Forest River constituted induced infringement by the Defendant.
41.

The Accused Product as installed on an RV directly infringes at least one claim of

the 590 patent. Forest Rivers making, using, offering for sale, and selling of an RV having the
Accused Product constitutes direct infringement of the 590 patent.
42.

Defendant intentionally targeted Forest River to incorporate the Accused Product

into RVs with slide-out rooms, knowing that incorporating the Accused Product on an RV
infringed the 590 patent. Defendant intended Forest River to incorporate the Accused Product
into an RV having a slide-out room and infringe the 590 patent.
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43.

Defendant influenced Forest River to include the Accused Product as a component

of their RVs, knowing that such combination would fulfill all elements of at least one claim of the
590 patent.

Further, Defendant fully intended to encourage anothers infringement by

encouraging the use of the Accused Product on RVs with slide-out rooms.
44.

Defendant, Employees, representatives, or agents provided Accused Product and

assisted or directed the installation of the Accused Product at Forest River, knowing the
installation of Accused Product infringed the 590 patent. Defendant has, through its activities
relating to the installation of the Accused Product, shown intent to induce infringement of the
590 patent by Forest River.
45.

Defendants intent to make, use, offer for sale, or sell the Accused Product was

specific for use on RVs having slide-out rooms. Defendant only solicited sales of the Accused
Product to Forest River for making RVs with slide-out rooms, knowing the installation of the
product would result in direct infringement of the 590 patent.
46.

It can be inferred from the Defendants sales calls, providing of quotes, visits, and

installation of the Accused Product on RVs with slide-out rooms that Defendant intended Forest
River to infringe the 590 patent.
47.

By supplying Forest River with the Accused Product, Forest River incorporated

the Accused Product into an RV and therefore was induced to infringe the 590 patent.

COUNT 3: CONTRIBUTORY INFRINGEMENT OF THE 590 PATENT

48.

Paragraphs 1 through 47 of this Complaint are incorporated in Count 3 of

Plaintiffs Complaint as if fully set forth herein.

49.

Defendant, without authorization by Plaintiff, has and continues to knowingly and

intentionally contribute to infringement by Forest River of at least one claim of the 590 patent in
violation of 35 U.S.C. 271(c), by making, using, offering for sale, or selling the Accused
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Product on RVs with slide-out rooms in the United States. Such making, using, offering for sale,
or selling the Accused Product to Forest River with the knowledge that it is especially adapted for
infringing use and with the intent that another party infringes the patent constitutes contributory
infringement by Defendant.
50.

The Accused Product as installed on an RV directly infringes at least one claim of

the 590 patent.

51.

Forest Rivers making, using, offering for sale, or selling of an RV having the

Accused Product constitutes direct infringement.

52.

The Accused Product is not a staple article of commerce suitable for non-

infringing use; the Accused Product has no use apart from sealing a slide-out room. The Accused
Product contains features only useable for sealing a slide-out room and serves no use apart from
that application. Defendants customers, including Forest River, only use the Accused Product
on their RVs having slide-out rooms.
53.

Defendant intended Forest River to infringe the 590 patent by assisting with the

installation of the Accused Product in an infringing manner. Intent is demonstrated by production

of the Accused Product, quotes for the same, and sales calls to Forest River regarding the
Accused Product with Defendants knowledge that Forest River would infringe the 590 patent
when Forest River installed the Accused Product on RVs having slide-out rooms.
54.

Defendants intent to make, use, offer for sale, or sell the Accused Product was

specific for infringing use on RVs having slide-out rooms. Defendant only solicited sales of the
Accused Product to Forest River for making RVs with slide-out rooms, knowing the installation
of the product would result in direct infringement of the 590 patent.
55.

Defendant, knowing of the 590 patent and that the Accused Product would

infringe, took active steps to contribute to anothers infringement by assisting RV manufacturers

with installation of the Accused Product in their RVs having slide-out rooms.
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56.

Defendant was aware Forest River could only use the Accused Product in an

infringing manner on RVs having slide-out rooms.

DEMAND FOR JURY TRIAL
Pursuant to Federal Rules of Civil Procedure 38(b), Plaintiff demands a trial by jury.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff respectfully prays that this Court enter judgment in its favor:
a) declaring the 590 patent is directly infringed by Defendant;
b) declaring the Defendant induced infringement of the 590 patent;
c) declaring the Defendant has contributorily infringed the 590 patent;
d) declaring Defendants infringement of the 590 patent has been willful;
e) declaring Defendant be preliminarily and permanently enjoined from manufacturing,
using, selling and offering to sell the infringing product in the United States prior to the
expiration of the 590 patent;
f) declaring this case is exceptional within the meaning of 35 U.S.C. 285;
g) awarding damages adequate to compensate it for Defendants infringement of the 590
patent including lost profits, but in an amount no less than a reasonable royalty, and that
such damages be trebled according to 35 U.S.C. 284;
h) awarding all costs and expenses of this action, including reasonable attorneys fees; and
i) awarding Plaintiff such further relief as the Court may deem just, necessary, and
proper.

S/Michael D. Marston
Michael D. Marston

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Dated: August 22, 2016

Respectfully submitted,
S/Michael D. Marston___
Michael D. Marston
[email protected]
Garrick T. Lankford
[email protected]
Botkin & Hall, LLP
Suite 400, Jefferson Centre
106 East Jefferson Blvd.
South Bend, IN 46601-1913
Phone: (574) 234-3900
Facsimile: (574) 236-2839
Attorneys for Plaintiff

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