IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF NORTH CAROLINA

STATESVILLE DIVISION VON DREHLE CORPORATION, ) ) Plaintiff, ) ) v. ) Civil Action No. 5:14-cv-51 ) AMERICAN SPECIALTIES, INC., ) (Jury Trial Demanded) ) Defendant. ) ___________________________________ )

COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff, von Drehle Corporation (“Plaintiff” or “von Drehle”) brings this action against

American Specialties, Inc. (“Defendant” or “ASI”), and for its causes of action alleges as

follows:

PARTIES

1. Plaintiff von Drehle is a corporation organized and existing under the laws of the

State of North Carolina with its principal place of business in Hickory, North Carolina.

2. Upon information and belief, Defendant ASI is a corporation organized and

existing under the laws of the State of New York with a principal place of business in Yonkers,

New York.

JURISDICTION AND VENUE

3. This is an action for patent infringement under 35 U.S.C. §§ 271 and 281-285.

4. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and

1338(a). Additionally, Plaintiff and Defendant are citizens of different states and the amount in

controversy exceeds, exclusive of interest and costs, the sum specified by 28 U.S.C. § 1332.

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5. Personal jurisdiction over ASI is proper pursuant to North Carolina General

Statute § 1-75.4 and controlling principles of due process. Upon information and belief, ASI has

transacted and solicited business in North Carolina and in this district relating to the infringing

products alleged herein and has committed acts of infringement in this state and district by

importing, offering to sell and/or selling products infringing one or more of the patents-in-suit, to

one or more customers in this state and district, and/or by offering for sale and/or selling such

infringing products to North Carolina residents. Further, ASI’s infringement of the patents-in-

suit as alleged herein has caused Plaintiff to suffer harm and damages in North Carolina and this

district, which is a result that was reasonably foreseeable to the Defendant when Defendant

placed the infringing articles into the stream of commerce through an established channel of

distribution.

6. Venue properly lies in this district pursuant to 28 U.S.C. § 1400(b) because the

Defendant has committed acts of infringement in this district. Venue also properly lies in this

district under 28 U.S.C. § 1391(b)(2) and/or (3) because either a substantial part of the events or

omissions giving rise to the causes of action alleged herein or a substantial part of the property

that is the subject of the action is in this district, and this Court has personal jurisdiction over the

Defendant.

FACTUAL BACKGROUND

Plaintiff’s Products

7. von Drehle provides quality paper towel and tissue products as well as innovative

dispensers for commercial and away-from-home markets throughout the country. von Drehle

designs, develops, manufactures, and distributes paper towel and tissue dispensers, including but

not limited to center pull paper towel dispensers.

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Plaintiff’s Patents

8. On July 18, 2000, the United States Patent and Trademark Office duly and

lawfully issued United States Patent No. 6,089,499 (“the ‘499 Patent”), entitled “Dual Roll,

Center Pull, Paper Toweling Dispenser.” A true and correct copy of the ‘499 Patent is attached

hereto as Exhibit A. Plaintiff, by assignment, is the lawful owner of the ‘499 Patent, including

the right to sue for and recover for past, present, and future infringement thereof.

9. On April 11, 2006, the United States Patent and Trademark Office duly and

lawfully issued United States Patent No. 7,025,301 (“the ‘301 Patent”), entitled “Dispenser.” A

true and correct copy of the ‘301 Patent is attached hereto as Exhibit B. Plaintiff, by assignment,

is the lawful owner of the ‘301 Patent, including the right to sue for and recover for past, present,

and future infringement thereof.

10. Plaintiff has spent considerable time, effort, and resources developing and

promoting its products embodying the inventions of the patents-in-suit.

Defendant’s Products

11. von Drehle has become aware that ASI is making, using, offering for sale, selling

and/or importing products, namely Recessed Pull Core Towel Dispensers and Waste Receptacles

(#04693, #04693-6, #04693-9, and #046934) (hereinafter “Dispensers”) that infringe one or

more claims of the ‘499 and ‘301 patents as alleged herein below.

12. On October 7, 2013, von Drehle sent a letter to ASI giving notice to ASI of von

Drehle’s ‘499 and ‘301 patents in view of Dispensers sold by ASI.

13. On October 22, 2013, von Drehle sent a second letter to ASI regarding the ‘499

and ‘301 patents.

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14. On October 23, 2013, Charles La Barbera of ASI sent an email to Raymond von

Drehle acknowledging receipt of von Drehle’s letter of October 7th and stating that ASI would

investigate and get back to von Drehle shortly.

15. On December 19, 2013, von Drehle’s counsel sent a letter to Mr. La Barbera of

ASI asking about the status of ASI’s investigation.

16. On December 30, 2013, La Barbera sent an email to von Drehle’s attorney stating

that he (La Barbera) had “referred this matter to our attorney at the Law Offices of Robert R.

Strack” and “I anticipate he will respond shortly.”

17. On December 31, 2013, von Drehle’s counsel sent a letter to Mr. Strack to advise

Mr. Strack of the prior correspondence between von Drehle and ASI and to ask Mr. Strack when

von Drehle might receive a response.

18. As of April 15, 2014, von Drehle had not received a response from ASI or its

attorney. ASI has not communicated to von Drehle that it does not infringe the ‘499 or ‘301

patents. ASI has not communicated to von Drehle that the ‘499 patent and/or the ‘301 patent are

invalid.

COUNT I (Infringement of U.S. Patent No. 6,089,499)

19. Plaintiff hereby restates and incorporates by reference paragraphs 1-18 as if fully

set forth herein.

20. Defendant has imported, made, used, offered for sale, and sold in the United

States Dispensers which infringe at least claim 10 of Plaintiff’s ‘499 patent.

21. Defendant has had knowledge of Plaintiff’s rights in the ‘499 patent at least as a

result of the prior correspondence between von Drehle and ASI as set forth in paragraphs 12-18

hereinabove. Upon information and belief, ASI continues to import, make, use, offer for sale

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and/or sell in the United States the infringing Dispensers. Accordingly, Defendant’s

infringement is willful and deliberate.

COUNT II (Infringement of U.S. Patent No. 7,025,301)

22. Plaintiff hereby restates and incorporates by reference paragraphs 1-18 as if fully

set forth herein.

23. Defendant has imported, made, used, offered for sale, and/or sold in the United

States Dispensers which infringe at least claims 1-4 and 6-8 of Plaintiff’s ‘301 patent.

24. Defendant has had knowledge of Plaintiff’s rights in the ‘301 patent at least as a

result of the prior correspondence between von Drehle and ASI as set forth in paragraphs 12-18

hereinabove. Upon information and belief, ASI continues to import, make, use, offer for sale

and/or sell in the United States the infringing Dispensers. Accordingly, Defendant’s

infringement is willful and deliberate.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff von Drehle respectfully requests that it be granted judgment

against Defendant ASI:

A. That ASI has infringed one or more claims of United States Patent No. 6,089,499;

B. That ASI has infringed one or more claims of United States Patent No. 7,025,301;

C. That ASI be preliminarily and permanently enjoined from infringing Plaintiff’s

patents;

D. Awarding von Drehle damages in an amount adequate to compensate von Drehle for

ASI’s infringement of von Drehle’s patents, including lost profits or reasonable

royalties, and costs, prejudgment and post-judgment interest;

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E. Finding that ASI’s infringement is and has been willful and deliberate and awarding

von Drehle treble damages pursuant to 35 U.S.C. § 284;

F. Finding that this is an exceptional case within the meaning of 35 U.S.C. § 285 and

awarding von Drehle its reasonable attorneys’ fees;

G. Awarding von Drehle such further and other relief as the Court deems just and

equitable.

JURY DEMAND

Plaintiff requests a trial by jury with regard to all issues for which a trial by jury is

allowed.

Respectfully submitted this 16th day of April, 2014.

s/John P. Higgins

John P. Higgins (N.C. State Bar No. 17442) Justin A. Jernigan (N.C. State Bar No. 38920) John C. Nipp (N.C. State Bar No. 23406) ADDITON, HIGGINS, PENDLETON & ASHE, P.A. 11610 N. Community House Rd. Charlotte, NC 28277-2199 Tel: (704)945-6704 Fax: (704)945-6735 Email: jhiggins@ahpapatent.com Attorneys for Plaintiff von Drehle Corporation