Illinois Tool Works v. Keen - Complaint

Case: 1:16-cv-04097 Document #: 1 Filed: 04/06/16 Page 1 of 10 PageID #:1
IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
Illinois Tool Works Inc.,

a Delaware corporation,
Plaintiff,
v.
KEEN Inc.,
a Delaware corporation,
Defendant.
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Civil Action No.
COMPLAINT FOR PATENT INFRINGEMENT

AND BREACH OF CONTRACT
Plaintiff, Illinois Tool Works Inc. (ITW), through its attorneys, complains of KEEN
Inc. (KEEN) as follows:
I.
NATURE OF THE ACTION

1. This is a patent infringement action to stop defendant, KEENs, infringement of
plaintiffs United States Patent No. 6,415,482, entitled Attachment for a Zipper Cord,
(hereinafter, the 482 patent), and for monetary damages for past infringement of the 482
patent and plaintiffs United States Design Patent No. D436,556 entitled, Attachment for a
Zipper Cord (hereinafter the D556 patent). Copies of the patents are attached hereto as
Exhibits I and II, respectively. Collectively, the patents are referred to as the Patents-In-Suit.
II.
THE PARTIES
2. Plaintiff, ITW, is a Delaware corporation with an office and place of business in this
District, at 155 Harlem Avenue, Glenview, IL 60025.

3. Defendant, KEEN, is a Delaware corporation with an office and place of business
located at 515 NW 13th Avenue, Portland, OR 97209, that does business throughout the United
States under the trade name KEEN Footwear.
4.
KEEN distributes and sells footwear, including shoes and sandals, in this District
and elsewhere, throughout the United States through national retail outlets, local retail stores,
mail-order catalog stores and over the Internet.
III.
JURISDICTION AND VENUE

5.
This is an action for patent infringement arising under the Patent Laws of the
United States, Title 35 of the United States Code.

6. This Court has subject matter jurisdiction under 28 U.S.C. 1331 and 1338(a).
7. This Court has personal jurisdiction over KEEN because, among other things, it
transacts business in this judicial District. It offers for sale and sells products in this District via
the Internet.
8. Venue is proper in this District under 28 U.S.C. 1391(b)(d) and 1400(b) because
a substantial part of the events giving rise to the claims occurred in this judicial District, and
KEEN has committed acts of infringement in this District.
IV.
THE PATENTS-IN-SUIT
9.
ITW is the owner of all rights under the 482 patent (Exhibit I), duly and legally
issued on July 9, 2002.

10.
The 482 patent is a utility patent with claims directed to a cord attachment device
which forms a continuous loop of a length of cord by attachment to the free ends of the cord.
11.
ITW is the owner of all rights existing under the D556 patent (Exhibit II) duly
and legally issued on January 23, 2001, which expired at the end of its term on January 23, 2015.
12.
The D556 patent is a design patent directed to the unique aesthetic design
features of the cord attachment device illustrated in the Figures of the D556 patent.
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13.
V.
KEEN holds no rights under the Patents-in-Suit and is not a licensee of ITW.
RELEVANT FACTS
14.
Through its NEXUS Division, located in this District, ITW has, and continues to,
market a line of cord attachment devices under the Aerohead brand, which are the subject of
the Patents-In-Suit.
15.
In or about September 2010, ITW observed that certain KEEN footwear then
marketed, included cord attachment devices similar in design, structure and function to the ITW
cord attachment device of the Patents-in-Suit.
16.
In 2010, KEEN was not a purchaser of cord attachment devices from ITW, nor
was it a licensee of ITW.

17.
By letter dated September 28, 2010, a representative of ITW notified KEEN of
the Patents-in-Suit, and of KEENs infringement, and provided pictures of cord attachment
devices on KEEN footwear as well as Aerohead cord attachment devices made and sold by the
NEXUS Division of ITW. (Exhibit III).
18.
On February 24, 2011, following a meeting between representatives of the parties,
counsel for ITW wrote to counsel for KEEN seeking resolution of the claim of infringement of
the ITW Patents-in-Suit (Exhibit IV).
19.
Subsequent negotiations between ITW and KEEN lead to an agreement
memorialized by a letter from ITWs counsel to KEENs counsel, dated August 3, 2011,
(Exhibit V), under which KEEN agreed to pay ITW $25,000.00 and ITW agreed to forego
seeking damages for infringing pieces sold prior to August 3, 2011, specifically conditioned on
KEEN discontinuing any additional infringing sales of cord attachment devices covered by the
Patents-in-Suit.
20.
The agreement provided that if KEEN desired to use or sell cord attachment
devices that fall under ITWs D556 patent or 482 patent, KEEN would obtain such products
from ITW NEXUS for so long as the patents remained in effect.
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21.
In or about November 2011, KEEN paid ITW $25,000.00 and became a customer
of ITWs NEXUS Division for Aerohead cord attachment devices.

22.
On information and belief, subsequently, KEEN began to use cord attachment
devices in its footwear not supplied by ITW. Such cord attachment devices infringe the Patentsin-Suit.
23.
On June 16, 2015, counsel for ITW notified KEEN by letter to Tim Naylor,
General Counsel for Fuerst Group, Inc., acting on behalf of KEEN, that infringing (counterfeit)
products sold on certain KEEN products could not be allowed to continue. (Exhibit VI).
24.
KEEN did not respond to June 16, 2015 letter, nor did it cease its infringing
activities.
25.
On November 20, 2015, representatives of ITW purchased a pair of KEEN model
ARROYO II mens shoes in this District from an REI retail store in Schaumburg, IL
(Exhibit VII).
26.
A comparison of the cord attachment devices on the KEEN shoes purchased
November 20, 2015 and Aerohead cord attachment devices sold to KEEN by ITW is shown at
Exhibit VIII. Such comparison confirms that the cord attachment devices on the KEEN shoes
purchased November 20, 2015 were not obtained from ITW NEXUS.
27.
KEEN maintains an Internet website, www.keenfootwear.com, available in this
District and elsewhere, on which it advertises and offers for sale footwear which can be
purchased directly from KEEN through processes available on the website.
28.
On February 9, 2016, Order No. K2302737 was placed on the KEEN website
from within this District for a pair of model ARROYO II mens BlackOlive/Bombay Brown
shoes. (Exhibit IX).
29.
On or after February 9, 2016, KEEN fulfilled Order No. K2302737 by causing
delivery within this District of a pair of model ARROYO II mens BlackOlive/Bombay Brown
shoes. (Exhibit X).
30.
On information and belief, the cord attachment devices on the shoes delivered in
fulfillment of Order No. K2302737 (Exhibit X) also were not obtained from ITW NEXUS.
31.
Since the initial contact by ITW and throughout numerous communications,
discussions and negotiations, KEEN never denied infringement of the Patents-in-Suit or

challenged the validity of ITWs patents.
VI.
COUNT I: INFRINGEMENT OF THE 482 PATENT

32.
ITW realleges and incorporates by reference the foregoing paragraphs of this
Complaint, as though fully set forth herein.

33.
Upon information and belief, KEEN has infringed the 482 Patent, either literally
or under the doctrine of equivalents by importing, using, selling, or offering for sale, directly, or
through intermediaries, in this District and elsewhere in the United States, devices connecting
ends of a cord to form a continuous loop that infringe at least claims 1 and 16 of the 482 Patent.
34.
In particular, regarding claim 1, the cord attachment devices of the KEEN product
of Exhibit III, the KEEN Model ARROYO II mens shoe of Exhibit VIII, and the KEEN
model ARROYO II mens shoe purchased February 9, 2016, include: a female element with
a passageway therethrough, including first guide elements and first detent elements; a male
element to be received in the passageway, the male element including second guide elements
to engage the first guide elements and second detent elements for engaging the first detent
elements; wherein the first guide elements include at least one guide slot formed on an
internal wall of the female element and wherein the second guide elements include at
least one guide ridge formed on an external surface of the male element; the male element
further including cord channels for receiving ends of a cord and securing the ends of the cord
when the male element is received in said passageway of the female element; and wherein
pulling the cord tightens a grip on the ends of the cord in said cord channels.
35.
In particular, regarding claim 16, the cord attachment devices of the KEEN
product of Exhibit III, the KEEN Model ARROYO II mens shoe of Exhibit VIII, and the
KEEN model ARROYO II mens shoe purchased February 9, 2016, include: a female portion
including a first face that includes a guide channel; a second face opposite the first face; a
first support and a second support separating the first face and the second face; a passageway
formed between the first support and the second support; and a first detent element; and a
male portion including an exterior surface terminating in a first member and a second member;
a shank centrally positioned on the male portion and extending from said first member and
the second member, the shank including opposite first and second sides, a longitudinal guide
ridge received by the guide channel of the female portion, and a boss portion extending from
an end of the shank; a first cord channel defined by the first member, the boss and the first
side of the shank, the first cord channel being constructed and arranged to receive a first end
of a cord; a second cord channel defined by the second member, the boss and the second side
of the shank, the second cord channel being constructed and arranged to receive a second end
of a cord; and a second detent element positioned on the boss and adapted to detent engage
the first detent element.
36.
On information and belief, the cord attachment devices on the KEEN product of
Exhibit III, the KEEN model ARROYO II mens shoe of Exhibit VIII and the cord attachment
devices shown on the KEEN model ARROYO II mens shoe purchased February 9, 2016
(Exhibit X) satisfy each and every element of at least claims 1 and 16 of the 482 patent and
therefore infringe the 482 patent.
VII.
37.
COUNT II: INFRINGEMENT OF THE D556 PATENT

Complaint, as though fully set forth herein.

38.
On information and belief, KEEN has infringed the D556 patent during its life by
importing, making, using, selling, or offering for sale, directly or through intermediaries, in this
District and elsewhere in the United States, devices connecting the ends of a cord to form a
continuous loop that appropriate the unique aesthetic design features of the cord attachment
device illustrated in the Figures of the D556 patent.
39.
Exhibit XI, left-side, shows Fig. 3 of the D556 patent depicting certain unique
ornamental features of the cord attachment device of the ITW D556 patent, in particular, the
arrowhead shape of the female component.
40.
Exhibit XI, right-side, shows the cord attachment device on KEEN footwear from
2010, Exhibit III, with the same unique ornamental arrowhead shape as the female component of
the D556 patent.
41.
Exhibit XII, left-side, shows Fig. 3 of the D556 patent depicting certain unique
shape of the male component thereof.
42.
Exhibit XII, right-side, shows the cord attachment device on the KEEN footwear
from 2010, Exhibit III, with the same unique ornamental shape of the male component as the
D556 patent.
43.
Exhibit XIII, left-side, shows Fig. 3 of the D556 patent depicting certain unique
arrowhead shape of the female component thereof.
44.
Exhibit XIII, right-side, shows the cord attachment device on the KEEN footwear
from November 2015, Exhibit VIII, with the same unique ornamental arrowhead shape of the
female component as the D556 patent.
45.
Exhibit XIV, left-side, shows Fig. 3 of the D556 patent depicting certain unique
shape of the male component thereof.
46.
Exhibit XIV, right-side, shows the cord attachment device on the KEEN footwear
from 2015, Exhibit VIII, with the same unique ornamental shape of the male component as the
D556 patent.
47.
The various Figs. of the D556 patent (Exhibit II) depict the overall unique
ornamental features and appearance of the cord attachment device of the ITW D556 patent.
Exhibit III illustrates that the cord attachment device on the KEEN footwear from 2010 includes
the overall unique ornamental features and appearance of the ITW D556 patent.
48.
The various Figs. of the D556 patent (Exhibit II) depict the overall unique
ornamental features and appearance of the cord attachment device of the ITW D556 patent.
Exhibit III illustrates that the cord attachment device on the KEEN footwear from 2015 includes
the overall unique ornamental features and appearance of the ITW D556 patent.
49.
On information and belief, KEEN imported, used, sold or offered for sale
footwear, including its model ARROYO II mens shoes with cord attachment devices as
shown in Fig. VIII prior to the expiration of the D556 patent, which included the unique
ornamental arrowhead shape of the female component of the D556 patent and the unique
ornamental shape of the male component of the D556 patent.
50.
On information and belief, an ordinary observer would deem the cord attachment
devices of the KEEN footwear of Exhibit III as substantially similar to the claimed design of the
D556 patent, and hence, constitute an infringement of the D556 patent.
51.
On information and belief, an ordinary observer would deem the cord attachment
devices of the KEEN footwear of Exhibit VIII as substantially similar to the claimed design of
the D556 patent, and hence, constitute an infringement of the D556 patent.
52.
On information and belief, KEEN continued to appropriate the unique design
features of the cord attachment device of the D556 patent for a period commencing in at least
2010, until expiration of the D556 patent, earning illegal profits on footwear incorporating the
patented design.
VIII. COUNT III: BREACH OF CONTRACT
53.
complaint as though fully set forth herein.

54.
On information and belief, KEEN imported, used and sold, or offered for sale,
cord attachment devices on its footwear received from sources other than ITW NEXUS that fall
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under ITWs D556 patent and 482 patent in contravention of its agreement with ITW
memorialized in the letter dated August 3, 2011.
55.
Such action constitutes a breach of contract causing injury to ITW and resulted in
illegal profits to KEEN.

IX.
PRAYER FOR RELIEF

WHEREFORE, ITW prays for relief as follows:
1. A judgment against KEEN that it has infringed one or more claims of the 482 Patent.
2. A judgment against KEEN that it has infringed the D556 Patent during its life.
3. A judgment preliminarily and permanently enjoining KEEN and its officers,
directors, agents, servants, employees, affiliates, attorneys and all others in privity or in concert
with them, including but not limited to its parent company and its subsidiaries, divisions,
successors and assigns, from further infringement of the 482 Patent.
4. A judgment against KEEN for an accounting awarding ITW all damages adequate to
compensate ITW for KEENs infringement of the 482 Patent, no less than a reasonable royalty.
5.
A judgment against KEEN pursuant to Title 35 USC 289 ordering KEEN to
disgorge its illegal profits on footwear incorporating the patented design of the D556 patent.
6. A judgment against KEEN that it breached its contract with ITW and an award to
ITW of its damages, both actual and consequential.
7.
A judgment against KEEN that its infringement was willful and an award of
attorneys fees.
8. A judgment that this was an exceptional case pursuant to Title 35 USC 285 and
an award of treble damages to ITW.
9. A judgment against KEEN awarding pre-judgment interest, and post judgment
interest.
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10. An award of costs and expenses in this action.

11. An award of such other relief as this Court may deem just and appropriate.
X.
DEMAND FOR JURY TRIAL

Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, ITW hereby demands a
trial by jury for all issues so triable.
April 6, 2016
/Wesley O. Mueller/
Wesley O. Mueller, IL Bar No. 6199650
Robert V. Jambor, IL Bar No. 1322222
LEYDIG, VOIT & MAYER, LTD.
Two Prudential Plaza
180 N. Stetson, Suite 4900
Chicago, IL 60601Telephone: (312) 616-5602
Facsimile: (312) 616-5700
wmueller@leydig.com
rjambor@leydig.com
Attorneys for the Plaintiff Illinois Tool Works Inc.
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Case: 1:16-cv-04097 Document #: 1-1 Filed: 04/06/16 Page 1 of 12 PageID #:11

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Case: 1:16-cv-04097 Document #: 1 Filed: 04/06/16 Page 1 of 10 PageID #:1

IN THE UNITED STATES DISTRICT COURT

Illinois Tool Works Inc.,

Civil Action No.

COMPLAINT FOR PATENT INFRINGEMENT

NATURE OF THE ACTION

District, at 155 Harlem Avenue, Glenview, IL 60025.

Case: 1:16-cv-04097 Document #: 1 Filed: 04/06/16 Page 2 of 10 PageID #:2

JURISDICTION AND VENUE

United States, Title 35 of the United States Code.

issued on July 9, 2002.

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was it a licensee of ITW.

By letter dated September 28, 2010, a representative of ITW notified KEEN of

On February 24, 2011, following a meeting between representatives of the parties,

Subsequent negotiations between ITW and KEEN lead to an agreement

Case: 1:16-cv-04097 Document #: 1 Filed: 04/06/16 Page 4 of 10 PageID #:4

of ITWs NEXUS Division for Aerohead cord attachment devices.

On November 20, 2015, representatives of ITW purchased a pair of KEEN model

A comparison of the cord attachment devices on the KEEN shoes purchased

KEEN maintains an Internet website, www.keenfootwear.com, available in this

On or after February 9, 2016, KEEN fulfilled Order No. K2302737 by causing

Case: 1:16-cv-04097 Document #: 1 Filed: 04/06/16 Page 5 of 10 PageID #:5

Since the initial contact by ITW and throughout numerous communications,

discussions and negotiations, KEEN never denied infringement of the Patents-in-Suit or

COUNT I: INFRINGEMENT OF THE 482 PATENT

ITW realleges and incorporates by reference the foregoing paragraphs of this

Complaint, as though fully set forth herein.

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COUNT II: INFRINGEMENT OF THE D556 PATENT

Complaint, as though fully set forth herein.

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On information and belief, KEEN continued to appropriate the unique design

ITW realleges and incorporates by reference the foregoing paragraphs of this

complaint as though fully set forth herein.

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illegal profits to KEEN.

PRAYER FOR RELIEF

A judgment against KEEN pursuant to Title 35 USC 289 ordering KEEN to

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10. An award of costs and expenses in this action.

DEMAND FOR JURY TRIAL

trial by jury for all issues so triable.

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