Williamsburg Furniture v. Lippert Components - Complaint

USDC IN/ND case 3:20-cv-00110-RLM-MGG document 1 filed 10/21/19 page 1 of 36
UNITED STATES DISTRICT COURT

For the District of Delaware
WILLIAMSBURG FURNITURE, INC., )

Plaintiff, )
)
v. ) CASE NO.: _______________________
)
LIPPERT COMPONENTS, INC., ) Judge: ___________________________
Defendant. )
) JURY TRIAL DEMAND
)
COMPLAINT FOR
DECLARATORY JUDGEMENT OF NON-INFRINGEMENT, AND
FALSE ADVERTISING AND UNFAIR COMPETITION UNDER 15 U.S.C. §1125(a)
The Plaintiff, Williamsburg Furniture, Inc. (“Williamsburg”), for its Complaint against the
Defendant, Lippert Components, Inc. (“Lippert”), alleges as follows:
THE NATURE OF THE ACTION
1. This lawsuit seeks a declaratory judgement against Lippert, confirming that Williamsburg
does not infringe U.S. Patent No. 8,739,330 (“the ‘330 patent”), because that patent is invalid and/or
unenforceable. This lawsuit also seeks judgement against Lippert for false advertising and unfair
competition, through Lippert’s allegations of patent infringement by Williamsburg to customers of
Williamsburg, which caused damages to be sustained by Williamsburg in the form of lost sales and
increased costs of doing business. A copy of the ‘330 patent is attached hereto as Exhibit 1.
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THE PARTIES TO THE ACTION
2. Williamsburg is incorporated under the laws of the State of Indiana, and has its principal
place of business at 2096 Cheyenne Street, Nappanee, Indiana 46550.
3. Lippert is incorporated under the laws of the State of Delaware, and has a principal place
of business at 3501 County Road 6 East, Elkhart, Indiana 46514. Lippert has a Registered Agent
address of 251 Little Falls Drive, Wilmington, Delaware 19808.
JURISDICTION AND VENUE
4. As detailed further below, Lippert has threatened Williamsburg with patent infringement
litigation, based upon products which Williamsburg is now and has been selling. Williamsburg
denies that patent infringement, and an actual controversy has arisen and now exists between the
parties in that regard. Williamsburg seeks a judicial declaration that it does not infringe Lippert’s
patent, and an order enjoining Lippert from making such accusations about Williamsburg to third
parties. Accordingly, this Court has subject matter jurisdiction under 28 U.S.C. §§1331, 1338(a),
2201, and 2202.
5. As detailed further below, Lippert has made false and/or misleading representations of
fact to customers of Williamsburg, which misrepresent the nature, characteristics, and/or qualities
of products sold by Williamsburg, and Williamsburg believes it has been damaged by such actions
of Lippert. Accordingly, Williamsburg alleges that Lippert has violated 15 U.S.C. §1125(a)(1)(B),
and this Court has subject matter jurisdiction under 28 U.S.C. §§1331 and 1338(a) and (b).
6. This Court has personal jurisdiction over Lippert because Lippert has purposefully
incorporated itself and maintained its existence under the laws of the State of Delaware, and it
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conducts business in the State of Delaware, and Lippert purposefully avails itself of the privileges
of doing business in the State of Delaware. Thus, Lippert resides in the State of Delaware. The State
of Delaware is within this judicial district. Accordingly, venue is proper in this Court under 28
U.S.C. §1391(b)(1).
BACKGROUND FACTS AS TO CONDUCT BETWEEN THE PARTIES
7. Williamsburg makes and sells certain tri-fold sofas/beds, which convert from seating sofas
to sleeping beds, and are typically sold for use in a recreational vehicle (“RV”). Williamsburg sells
these under its “Visionary” model name. Prior to May 1, 2019, Patrick Industries, Inc., (“Patrick”)
purchased such products made by Williamsburg, through its subsidiary, Praxis Group LLC. Patrick
transferred these Williamsburg products to Allure Furniture, LLC (“Allure”). Allure is a customer
of Williamsburg for the tri-fold sofa/beds, and resells those products to third parties (such as RV
manufacturers) as a distributor for Williamsburg. Patrick had previously been threatened with
infringement of the ‘330 patent by Lippert on account of these tri-fold sofa/beds, but had agreed to
pay Lippert a license fee to allow it to continue to sell those products. A copy of the license
agreement between Lippert and Patrick is attached hereto as Exhibit 2. Patrick paid the royalties due
on the tri-fold sofa/beds it transferred to Allure.
8. On May 1, 2019, Lippert sent a letter to Allure accusing it of infringing the ‘330 patent
because of its offering to sell the tri-fold sofa/beds it obtained from Patrick. That letter included a
copy of the ‘330 patent and a “claim chart,” particularizing the infringement, as it would need to be
in litigation. Lippert demanded that Allure “cease and desist” from that infringement. A copy of
that demand letter is attached hereto as Exhibit 3.
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9. Prior to or substantially contemporaneous with sending the demand letter to Allure, Ryan
Smith, a Vice-President of Lippert and one of the named inventors on the ‘330 patent, telephoned
Chad Cunningham of Allure and asserted to Mr. Cunningham that both Allure and Williamsburg
were infringing upon the ‘330 patent. In response to these allegations by Lippert, on May 10, 2019,
Allure and Williamsburg informed Lippert through counsel that its allegations of patent infringement
were erroneous, because Patrick had paid the royalties due for the tri-fold sofa/beds which Allure
had, and Lippert’s patent rights, if any, were then “exhausted” under the “first sale doctrine.” A copy
of that response is attached hereto as Exhibit 4.
10. In reply, on May 22, 2019 (and with a response reminder on June 14), Lippert contended
that the royalties had not been paid, and demanded either proof of that payment or that
“Williamsburg will cease and desist from infringing activity.” Otherwise, “Lippert will be moving
forward against Allure and Williamsburg.” A copy of that reply is attached hereto as Exhibit 5.
11. In response, on June 21, 2019, Williamsburg more specifically addressed the royalty
payment issue for the past products, and then turned to address the infringement issues related to
future products, now recognizing more fully the extent of Lippert’s accusation to cover “the tri-fold
sofas purchased by Allure from all sources,” not merely those previously obtained from Patrick. A
copy of that response is attached hereto as Exhibit 6. In particular, Williamsburg expressly stated
that it is:
“not paying Lippert anything, and they are not stopping any activity based upon the
‘330 patent. These bold refusals are based upon the blatant invalidity of the ‘330
patent and the probable fraud by Lippert both in obtaining the ‘330 patent and in
asserting it against Patrick Industries.”
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Williamsburg then backed up these conclusions with a detailed factual report on the true nature of
the “prior art” and the prosecution history of the application for the ‘330 patent. Williamsburg
concluded the response by stating
“we require from Lippert and express and unequivocal statement that it will not seek
to enforce the ‘330 patent against [Williamsburg],” and that “[I]n order to mitigate
the damage already caused by Lippert’s statements to Heartland about our products,
we will NOT be keeping that statement confidential.”
“Heartland” in that context referred to Heartland Recreational Vehicles, a RV manufacturer to whom
the accused tri-fold sofa/beds made by Williamsburg had been offered for sale.
12. On July 19, 2019, when Lippert had even by that time provided no reply to the June 21
letter, counsel for Williamsburg telephoned counsel for Lippert and again requested Lippert’s
agreement not to sue Williamsburg for infringement of the ‘330 patent. Lippert’s counsel had no
word back from Lippert indicating agreement, as of the date of that telephone call. On August 8,
2019, a follow up email was sent to Lippert’s counsel in that regard. Lippert’s counsel then
responded on August 9 by stating that “I’ve been specifically instructed not to communicate with you
on my client’s behalf while the parties are negotiating directly.” Williamsburg’s counsel
immediately informed Lippert’s counsel via return email that there were no such negotiations. A
copy of the email thread in that regard is attached hereto as Exhibit 7.
13. At no time since did Lippert retract its accusations of patent infringement against
Williamsburg, or agree that it would not sue Williamsburg for infringement of the ‘330 patent.
During June of 2019, Lippert did contact Earl Williams at Allure to see if Allure would be taking
over the license agreement Patrick had in place with Lippert for the ‘330 patent. Allure did not agree
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to do that. Williamsburg was not involved in those discussions, nor were there any other direct
negotiations between Williamsburg and Lippert concerning the ‘330 patent.
14. Both before and after receiving the June 21, 2019 response, Lippert contacted Heartland,
and other potential and actual customers for Williamsburg’s tri-fold sofa/bed, and told those third
parties that they should not purchase the Williamsburg product, and instead they should purchase
Lippert’s competing sofa/bed because:
a. The tri-fold sofa/bed infringed the ‘330 patent,
b. If they purchased that tri-fold sofa-bed, their continued supply of that product was
at risk, because Lippert was going to file a lawsuit and shut down production
of those products, and/or
c. They would be at legal risk themselves if they bought the tri-fold sofa/bed.
As a result of these and similar false statements of fact by Lippert, RV manufacturers who would
otherwise have purchased the Williamsburg tri-fold sofa/bed, either directly or indirectly (through
Allure), did not do so. Further, as a result of these and similar false statements of fact by Lippert,
Williamsburg (either directly or indirectly through its customer and distributor, Allure) was forced
to incur additional costs and efforts to keep its existing customers for those products from ceasing
purchases of more the tri-fold sofa/beds. These actions by Lippert violate 15 U.S.C. §1125(a)(1)(B).
15. After receiving the June 21, 2019 response, Lippert made no effort to correct or
withdraw its prior false statements to customers of Williamsburg, concerning the accusations that
Williamsburg’s tri-fold sofa/bed products infringe the ‘330 patent, or that Lippert would be suing
Williamsburg to shut down the supply of those products. No other effort was made by Lippert to
mitigate the damage done to Williamsburg by Lippert’s false statements about Williamsburg’s tri-
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fold sofa/beds.
16. Lippert and its related business entities have filed numerous patent infringement lawsuits
against many parties. A copy of the PACER report for Lippert, showing NOS 830 cases (for patent
infringement) is attached hereto as Exhibit 8. Accordingly, a threat by Lippert to sue for patent
infringement is a credible threat that such a lawsuit may be filed.
17. Lippert does not always sue promptly for patent infringement. For example, on
September 17, 2008 Lippert accused MOR/ryde of patent infringement, as shown in Exhibit 9
attached hereto. On December 3, 2008, MOR/ryde provided a detailed response explaining why the
accused products did not infringe upon Lippert’s patent, a copy of which is attached hereto as Exhibit
10. Lippert provided no response at all to MOR/ryde until February 4, 2014, when it had hired a
different law firm and renewed the threat of patent infringement litigation, without any further
comment regarding MOR/ryde’s previous explanation, as shown in Exhibit 11 attached hereto. In
the meantime, MOR/ryde had substantially increased its sales of accused products. Ultimately,
Lippert sued MOR/ryde for patent infringement, on October 30, 2014, Case No. 3:14-cv-01999 in
the United States District Court for the Northern District of Indiana. Accordingly, Lippert’s silence,
even for several years, and even in the face of significant countervailing evidence by an accused
infringer, is no assurance that it will not later sue for patent infringement, at a point in time when the
potential infringement damages can be much higher.
18. Accordingly, Williamsburg has a reasonable and good faith belief that it and/or its
customers will be sued for patent infringement by Lippert, based upon products made by
Williamsburg and for which Williamsburg may be liable to defend and/or indemnify its customers.
Williamsburg denies that infringement, and a case of actual controversy now exists between the
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parties, within the subject matter and personal jurisdiction of this court.
BACKGROUND FACTS AS TO THE ‘330 PATENT AND RELEVANT PRIOR ART
19. The “effective filing date” for the ‘330 patent is January 30, 2012, because the
application for the ‘330 patent was filed on January 28, 2013, based upon a provisional patent
application filed on January 30, 2012.
20. More than one year before January 30, 2012, the invention claimed in the ‘330 patent
was publicly disclosed, in public use, on sale, and otherwise available to the public, as a result of
actions taken by third parties having no connection or relation to any of the named inventors of the
‘330 patent, and who did not obtain the subject matter of the claimed invention directly or indirectly
from any of the named inventors.
21. More specifically, Patrick Edward Hutmacher is an adult, at least 72 years of age, and
a citizen of the United States of America, residing at 573 Shoreline drive, Grayslake, Illinois, 60030.
During 2010, Mr. Hutmacher was a consultant for Flair Interiors Inc., of 1010 Eisenhower Drive
South, Goshen, Indiana 46526 (“Flair”). In that capacity, on August 24, 2010, he visited a furniture
store located at 4618 West Elm Street, McHenry, Illinois 60050, seeking ideas for new products
which could be sold by Flair, and possibly by Shoehorn Furnishings, LLC, of Quincy, Illinois, a
business which he co-owned. While at that McHenry store, he purchased the tri-fold chair/bed
shown in the four photographs A-D below:
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A.
B.
9
C.
D.
22. The person shown in Photograph B is Mark Hryniewieki, who sold Mr. Hutmacher the
chair/bed at the McHenry store, and who Mr. Hutmacher understand to be the store owner.
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23. Photographs A-D were taken at or about 2:41:25 PM on August 24, 2010 by Mr.
Hutmacher, using his Apple iPhone 3GS. Mr. Hutmacher normally kept a photographic record of
the pictures he had taken for business and other purposes, and that record automatically included the
GPS location of the picture, time, date, etc., which were recorded for those pictures as they were
taken, in the manner shown below:
This particular record is for one of the pictures of the tr-fold chair bed of Photographs A-D.
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24. After purchasing the tri-fold chair/bed shown in Photographs A-D and one other product
(a sleeper/storage unit) from the McHenry furniture store, Mr. Hutmacher brought them to Flair for
consideration as the basis for new as products to be made by Flair. As it turns out, Flair did decide
to manufacture the other product for him to sell through Shoehorn Furnishings, a product he called
the “Continental” model. However, while the tri-fold chair/bed was placed in Flair’s showroom and
offered for sale, starting on or about September 9, 2010, no actual commercial sales resulted, at least
to his knowledge. Mr. Hutmacher assumes the bed shown in Photographs A-D was ultimately sold
or given by Flair to an employee or related party, but only as the item itself and not and the basis for
volume purchases.
25. On September 9, 2010, Mark Hryniewieki from the McHenry furniture store brought a
second tri-fold chair/bed of the same type to Flair, in an attempt to work out a business arrangement
for the supply of such products to Flair. No such arrangement was ultimately entered into, but that
chair/bed was also placed in the Flair showroom to see if any RV customers were interested in
purchasing products of that type from Flair. The following photographs show that second chair/bed
as displayed in Flair’s showroom on September 9, 2010:
E.
12
F.
G.
H.
13
I.
J.
The time, date, location record for these photographs is as shown:
14
26. In approximately Spring of 2011, with no commercial sales for this type of tri-fold
chair/bed having occurred through Flair, Mr. Hutmacher took the chair shown in Photographs E-J
to Williamsburg to attempt to interest them in making such products. He met with Gus and Lance
Feiler at Williamsburg in Nappanee, Indiana. At that time, Gus expressed little interest in such
products, but Lance indicated to Mr. Hutmacher that he believed it had potential. It is Mr.
Hutmacher’s understanding that Lance then used this product as the basis for the wider tri-fold
sofa/bed product that Williamsburg marketed under the “Visionary” model name. Mr. Hutmacher
recalls seeing a prototype of that Visionary product in approximately October, 2011, which was
proposed to him for sale by Shoehorn Furnishings, although he understood that Williamsburg would
also be marketing that product to the RV industry.
27. On September 15, 2011, Mr. Hutmacher saw a similar tri-fold chair/bed offered for sale
at the Shanghai Furniture show, this one having been made by Bada Baqiang Furniture Co., of
Langfandg, China. The following photographs show that product:
K.
15
L.
M.
The time, date, location record for these photographs is as shown:
16
28. Mr. Hutmacher himself, through his Shoehorn Furnishings business, displayed the tri-
fold chair/bed product made by Williamsburg at the High Point Furniture Show, on October 23,
2011. Attached is a photograph of that product for sale at the show:
N.
The time, date, location record for that photograph is as shown:
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29. It is Mr. Hutmacher’s understanding from discussions with Mark Hyrniewieki, that the
tri-fold chair/beds shown in Photographs A-D and E-J were made by a furniture company in Turkey
and imported into the United States.
30. A copy of Mr. Hutmacher’s executed affidavit attesting to the facts of ¶21-29 is attached
hereto as Exhibit 12.
31. Timothy Mark Hooley is an adult, at least 64 years of age, and a citizen of the United
States of America, residing at 3703 St. Andrews Place, Elkhart, Indiana 46517.
32. During 2010, Mr. Hooley was employed by Flair Interiors Inc., of 1010 Eisenhower
Drive South, Goshen, Indiana 46526 (“Flair”). His position within Flair was Director of
Engineering/Product Development.
33. Mr. Hooley recalls that in the Fall of 2010, probably September, Patrick Hutmacher
arranged for Flair to receive the tri-fold chair/bed shown in the following photographs:
E.
18
F.
G.
19
H.
I.
20
J.
34. These photographs show the tri-fold chair/bed in the Flair showroom in Goshen, Indiana,
which Mr. Hooley recognizes from having passed through that showroom many times at work.
35. The tri-fold chair/bed shown in these photographs was placed in the Flair showroom in
the Fall of 2010, and was offered for examination by and sale to any of the potential customers
passing through that showroom. Mr. Hooley recalls the tri-fold chair/bed being in that showroom
for approximately six months, because he noticed it there frequently, as he passed through that
showroom.
36. Shortly after receiving that tri-fold chair bed, Flair began to experiment with
modifications to that product to make it more acceptable to the recreational vehicle market. Mr.
Hooley supervised those modifications. Later in the Fall of 2010, Flair created a tri-fold sofa/bed
prototype based upon the tri-fold chair/bed, but designed to be wider so as to fit more than one
person. In late 2010, Flair also placed that tri-fold sofa/bed in its showroom in Goshen, Indiana, to
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offer it for examination by and sale to any of the potential customers passing through that showroom.
37. During 2010, including in the Fall of that year, potential customers (as well as other
persons coming into Flair’s place of business) frequently entered that showroom and were able to
view the products that Flair was offering for sale.
38. A copy of Mr. Hooley’s executed affidavit attesting to the facts of ¶31-37 is attached
39. Laurence George Feiler, III, (“Mr. Feiler”) is an adult, at least 73 years of age, and a
citizen of the United States of America, residing at 5204 Old Gallows Way, Naples, Florida 34105.
40. During 2011, Mr. Feiler was President of Williamsburg Furniture, Inc., of 2096
Cheyenne Street, Nappanee, Indiana 46550. In that capacity, in approximately February or March
of 2011, Patrick Hutmacher met with he and Lance Feiler at the Williamsburg place of business and
showed them the actual two tri-fold chair/bed products which are depicted in the photographs below:
A.
22
B.
C.
23
D.
E.
24
F.
G.
25
H.
I.
26
J.
41. At that time, Mr. Hutmacher presented these two products to Williamsburg, and
attempted to interest Williamsburg in manufacturing and selling such products both for Shoehorn
Furnishings to resell, and for Williamsburg to sell directly to the RV industry. Initially, Mr. Feiler,
himself, was not very interested in doing so because he was involved in developing and marketing
an air bed product to the RV industry. However, Lance expressed to Mr. Feiler his interest in these
tri-fold chair/bed products at the outset, and Lance promptly began to develop a related, wider
product, a tri-fold sofa/bed product for RV use.
42. Lance developed a prototype tri-fold sofa/bed product using essentially the same
structural mechanism as was used in the tri-fold chair/beds (allowing for the wider size), and Mr.
Feiler and Lance showed that prototype to various persons of Forest River, Inc., and of Coachmen
Industries later in 2011 in an effort to interest them in purchasing such products from Williamsburg.
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Mr. Feiler had previously been contacted by Coachmen, and informed that they were not completely
satisfied with the air mattress sleeper products they had been purchasing from Lippert Components,
Inc., and Mr. Feiler was seeking to offer Williamsburg products as a replacement for those Lippert
products. As a result, Coachmen agreed to purchase the new tri-fold sofa/bed product from
Williamsburg, and Williamsburg applied the “Visionary” model name to that product.
43. In the Fall of 2011, Williamsburg provided a Visionary tri-fold sofa/bed to Coachmen
for use in a travel trailer to be displayed and offered for sale at the 2011 R.V.I.A trade show in
Louisville, Kentucky. That trade show took place from November 29, 2011 until December 1, 2011.
The Visionary products was a replacement for the prior Lippert sleeper products in the Coachmen
travel trailers. The Visionary product was on display in a Coachmen travel trailer during that 2011
trade show, and is shown in the following photographs taken at that trade show:
O.
28
P.
Q.
29
R.
44. The advertisement shown in Photograph “R” and the “hang tag” attached hereto as
Exhibit 16 (and shown attached to the tri-fold sofa/bed in Photographs O-Q) were created to promote
the Visionary products at that 2011 R.V.I.A. trade show.
45. On November 28, 2011, Williamsburg had its attorney mail a patent application to the
United States Patent and Trademark Office (“USPTO”), seeking patent protection for design aspects
of the Visionary product, but not seeking patent protection for the structural mechanism found in the
tri-fold chair/beds brought to Williamsburg by Patrick Hutmacher. The USPTO received that
application and granted a formal filing date of December 9, 2011. Later, on June 17, 2014, the
USPTO granted a patent, D707,055, on one of the Visionary designs disclosed in the patent
application. This information is confirmed in the internet Public Pair records of the USPTO for
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patent application serial number 29/395,171.
46. It is Mr. Feiler’s understanding from discussions with Coachmen and noting
Williamsburg’s sales of Visionary products at that point in time, that the Visionary products
displaced Lippert air mattress sleeper products in Coachmen travel trailers, in that Williamsburg
received sales from Coachmen which had previously been made by Lippert.
47. A copy of Mr. Feiler’s executed affidavit attesting to the facts of ¶39-46 is attached
48. A copy of the first page of U.S. Design Patent 707,055, issued on June 17, 2014, is
attached hereto as Exhibit 15.
49. The tri-fold chair/bed shown above in Photographs A-J contain substantially the same
structure recited in Claim 1 of the ‘330 patent, with the exception that the photographs show a
“chair” of normally narrower width than would be considered a “sofa,” as set forth in the preamble
of the ‘330 patent.
50. The tri-fold sofa/bed shown above in Photographs O-R contains substantially the same
structure recited in Claim 1 of the ‘330 patent. The tri-fold sofa/bed created by Flair and offered for
sale in the Flair showroom in the Fall of 2010, as described in ¶36 above, contained substantially the
same structure recited in Claim 1 of the ‘330 patent.
BACKGROUND FACTS AS TO LIPPERT’S ALLEGED INVENTION
OF THE ‘330 PATENT
51. Upon information and belief:
a. Lippert became aware of the Williamsburg tri-fold sofa/bed, and sales of that
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product to Coachmen, prior to November 29, 2011,
b. Lippert attended the 2011 R.V.I.A. trade show in Louisville, KY, and saw the
Williamsburg tri-fold sofa/bed at that trade show,
c. Lippert first conceived of the claimed invention of the ‘330 patent after becoming
aware of the Williamsburg tri-fold sofa/bed,
d. Lippert first reduced to practice the claimed invention of the ‘330 patent after
becoming aware of the Williamsburg tri-fold sofa/bed,
e. Prior to inventing the claimed subject matter of the ‘300 patent, Lippert discovered
that it lost sales to Coachmen as a result of the Williamsburg tri-fold sofa/bed, and
f. Lippert failed to inform the United States Patent and Trademark Office
(“USPTO”) that the Williamsburg tri-fold sofa/bed was relevant prior art and material with
respect to patentability of the claimed subject matter of the ‘330 patent.
52. Ryan Smith was an officer and/or managing agent of Lippert during prosecution of the
application for the ‘330 patent. Ryan Smith is not an original inventor of the claimed subject matter
of the ‘330 patent. Ryan Smith became aware of the Williamsburg tri-fold sofa/bed prior to January
30, 2012. Ryan Smith was associated with and participated in the filing and prosecution of the
application for the ‘330 patent. Ryan Smith did not inform the USPTO that the Williamsburg tri-
fold sofa/bed was relevant prior art, or that it was material to patentability with respect to claimed
subject matter of the ‘330 patent. The Williamsburg tri-fold sofa/bed was not cumulative of
information that was of record in the application for the ‘330 patent, as to the scope and content of
prior art or as to inventorship. The Williamsburg tri-fold sofa/bed establishes a prima facie case of
unpatentability as to at least one claim of the ‘330 patent. The USPTO would not have allowed at
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least Claim 1 of the ‘330 patent if it had known about the Williamsburg tri-fold sofa/bed as prior art.
53. Ryan Smith signed a Declaration which was filed with the USPTO in connection with
the application for the ‘330 patent, attesting that he was an “original inventor” of a claimed invention
in the application. A copy of that Declaration is attached hereto as Exhibit 17. Mr. Smith was not
allowed to sign that Declaration unless he had reviewed and understood the contents of the patent
application, and was aware of his duty of disclosure under 37 C.F.R. 1.56.
54. Acting on both his and Lippert’s behalf, Mr. Smith intentionally filed the Declaration
for the purpose of obtaining the ‘330 patent with himself listed as one of the inventors. Mr. Smith
knew or should have known that he was not an original inventor of the claimed subject matter in that
patent application. Mr. Smith knew or should have known that the USPTO would not issue the ‘330
patent with him listed as an inventor unless he signed and filed that Declaration. Mr. Smith, on
behalf of himself and Lippert, executed and filed with Declaration with the specific intent that the
USPTO rely upon the accuracy of Mr. Smith’s statements in the Declaration, including Mr. Smith’s
assertion therein that he was one of the inventors. The USPTO did rely upon the Declaration in
allowing the patent application and listing Mr. Smith as one of the inventors on the ‘330 patent.
Correct inventorship was material to the prosecution of the application for the ‘330 patent. The
USPTO would not have allowed the ‘330 patent and listed Mr. Smith as one of the inventors if he
has not filed the Declaration. As a result of Mr. Smith’s submission of a false Declaration to the
USPTO, the ‘330 patent is defective for listing incorrect inventorship. Mr. Smith filed the
Declaration with himself listed as one of the inventors at least in part because he believed being
named on the ‘330 patent would increase his prestige, provide financial gain, and/or provide greater
likelihood of career advancement.
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PATENT INVALIDITY AND UNENFORCEABILITY
55. The ‘330 patent is invalid under 35 U.S.C. §102(a) (pre-AIA) because the claimed
invention was known and used by others in this country before the invention thereof by the applicant
for the patent. Specifically, Williamsburg was manufacturing and displaying a substantially identical
tri-fold sofa/bed and offering it for sale prior to Lippert’s alleged invention of the ‘330 patent.
56. The ‘330 patent is invalid under 35 U.S.C. §102(b) (pre-AIA) because the claimed
invention was in public use and on sale in this country more than one year prior to the date of the
application for patent in the United States. Specifically, Flair was displaying and using a
substantially identical tri-fold sofa/bed to solicit sales in its showroom in the Fall of 2010.
57. The ‘330 patent is invalid under 35 U.S.C. §102(f) (pre-AIA) because Ryan Smith did
not himself invent the subject matter sought to be patented.
58. The ‘330 patent is invalid under 35 U.S.C. §103 because the differences between the
claimed invention of the ‘330 patent and the prior art tri-fold chair/bed purchased by Mr. Hutmacher
on August 24, 2010 are such that the claimed invention as a whole would have been obvious, before
the “invention” of the ‘330 patent was made, to a party having ordinary skill in the art to which that
invention pertains.
59. The ‘330 patent is unenforceable due to the inequitable conduct of Lippert and/or Mr.
Smith in failing of their respective duties of disclosure and in fraudulent conduct during the
prosecution of the application for the ‘330 patent.
TRIAL BY JURY
Williamsburg requests that, to the fullest extent permitted by law, all of the issues in this case
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be tried by a jury.
RELIEF SOUGHT FROM THIS COURT
Williamsburg requests that this Court enter judgement in favor on Williamsburg and against
Lippert, granting the following relief:
a. a Declaration that the Williamsburg tri-fold sofa/bed does not infringe the ‘330
patent,
b. a Declaration that the ‘330 patent is not valid and/or is not enforceable,
c. an injunction against Lippert making any allegations to any third party that the tri-
fold sofa/bed infringes upon the ‘330 patent,
d. an award of damages against Lippert for violating Williamsburg’s rights under 15
U.S.C. §1125(a) and causing injury to Williamsburg, and
e. all such other relief as the Court may deem just and proper.
Dated: October 21, 2019 Respectfully submitted,
/s/ James M. Lennon

James M. Lennon (No. 4570)
DEVLIN LAW FIRM LLC
1526 Gilpin Avenue
Wilmington, DE 19806
Telephone: (302) 449-9010
Facsimile: (302) 353-4251
jlennon@devlinlawfirm.com
Ryan M. Fountain (pro hac vice to be filed)

420 Lincoln Way West
Mishawaka, IN 46544
35
Telephone: (574) 258-9296

Facsimile: (574) 247-1237
ryanfountain@aol.com
Attorneys for Plaintiff Williamsburg Furniture, Inc.
36
USDC IN/ND case 3:20-cv-00110-RLM-MGG document 1-1 filed 10/21/19 page 1 of 17
EXHIBIT 1
EXHIBIT 2
EXHIBIT 3
EXHIBIT 4
RYAN M. FOUNTAIN
ATTORNEY AT LAW
420 LINCOLN WAY WEST 2 28 WEST HIGH STREET
MISHAWAKA, INDIANA 46544-1902 ELKHART, INDIANA 46516-3176
TELEPHONE: (574) 258-9296
TELEFAX: (574) 247-1237
EMAIL: RYANFOUNTAIN@AOL.COM
May 10, 2019
Eric T. Jones
Reising Ethington P.C. Via Email and Postal Mail
755 West big Beaver Road, Suite 1850
Troy, Michigan 48084
Re: Lippert v. Allure and Williamsburg

U.S. Patent 8,739,330
Dear Mr. Jones:
I represent Allure Furniture, LLC and Williamsburg Furniture, Inc. Your letter of May 1,
2019 to Chad Cunningham of Allure has been referred to me for response. In addition, prior to that
letter, Ryan Smith, a Vice President of Lippert and the co-inventor of the ‘330 patent, made
allegations via telephone to Allure that Williamsburg Furniture is an infringer of Lippert’s patent.
Presumably, he was referring to the ‘330 patent, although he gave no specific patent number to
Allure at that time. I have been retained to respond to his interference as well.
As I am sure you are aware (and if not, Lippert certainly is), Allure recently purchased a
number of tri-fold sofas from Patrick Industries, Inc. Allure is re-selling these sofas to its customers,
including Heartland Recreational Vehicles (to whom it appears that Lippert also made
representations of this infringement by Allure, in an attempt to block those sales and to divert the
sales to Lippert). Although the photograph attached to the copy of your May 1 letter is not clear, I
assume these are the same sofas you are referring to. Some of the tri-fold sofas purchased by Allure
were manufactured by Williamsburg, and some were manufactured by other parties. It is my
understanding that these sofas manufactured by Williamsburg were the ones Mr. Smith asserted were
an infringement of Lippert’s patent.
Patrick previously entered into a license agreement with Lippert, whereby it pays to Lippert
royalties for the tri-fold sofas sold by Patrick which Lippert previously contended were infringing
its patents. It is my understanding that Patrick is current in its license fees, and any such fees due
for the tri-fold sofas purchased by Allure have been or will be paid by Patrick in due course.
Certainly, your letter made no assertion that Patrick is in breach of that license.
Accordingly, regardless of any issues of patent infringement, validity, or enforceability,
1
Lippert is barred as a matter of law, under the “First Sale Doctrine,” from asserting any claim of
patent infringement against either of my clients for these sofas. If you contend otherwise, please
explain why in return correspondence to me.
Sincerely,
s/ Ryan M. Fountain
Ryan M. Fountain
2
EXHIBIT 5
EXHIBIT 6
RYAN M. FOUNTAIN
ATTORNEY AT LAW
420 LINCOLN WAY WEST 2 28 WEST HIGH STREET
MISHAWAKA, INDIANA 46544-1902 ELKHART, INDIANA 46516-3176
TELEPHONE: (574) 258-9296
TELEFAX: (574) 247-1237
EMAIL: RYANFOUNTAIN@AOL.COM
June 21, 2019
Eric T. Jones
Reising Ethington P.C. Via Email and Postal Mail
755 West big Beaver Road, Suite 1850
Troy, Michigan 48084
Re: Lippert v. Allure and Williamsburg

U.S. Patent 8,739,330
Dear Mr. Jones:
Further to your emails of May 22 and June 14 in this matter, we have been expressly
informed by Patrick Industries that all of the license fees which were due have in fact been timely
and fully paid. Apparently, that may not have been clear to your contact at Lippert previously,
because of a “charge back” credit applied by Patrick in an unrelated matter. However, for the
reasons discussed below, we have not required Patrick to provide us any “proof” of this payment,
beyond its written representation to us that this has been done. From our perspective, the license fee
payment issue is solely between Lippert and Patrick at this point.
Your email of May 22 appears to have expanded upon the allegations and demands of the
May 1 letter to Allure, in that it requested “written assurance” that my clients “will cease and desist
from infringing activity.” That seems to refer to future infringement based upon some products other
than those we purchased from Patrick. You will recall from my letter of May 10, 2019, we had
previously not bothered with the substantive patent issues since we had clear exemption as a
purchaser from a licensee. Seeing Lippert’s threat now more broadly, we now turned our attention
to the substantive merits of the ‘330 patent. Our investigation has taken some time, and is only
partially complete at present, but we have enough evidence to draw certain definite conclusions.
Briefly, my clients are not paying Lippert anything, and they are not stopping any activity,
based upon the ‘330 patent. These bold refusals are based upon the blatant invalidity of the ‘330
patent and the probable fraud by Lippert both in obtaining the ‘330 patent and in asserting it against
Patrick Industries. Further, Lippert’s allegations of infringement made against my clients’ customers
appears to be intentional interference with contractual relations, an actionable tort under the laws of
the State of Indiana.
1
The relevant facts are as follows:
The effective filing date of the ‘330 patent is January 30, 2012.
However, in the Fall of 2010, Williamsburg entered into discussions with Coachmen
Industries of Middlebury, Indiana (a division of Forest River, Inc.), regarding an alternative to the
air bed product which Coachmen was at that time purchasing from Lippert. In 2011, Williamsburg
created its “Visionary Sleeper” product (now referred to as “Visionary I”), and offered that product
for sale to Coachmen.
Coachmen purchased the Visionary Sleeper product and installed it into a travel trailer that
was displayed and offered for sale at the R.V.I.A. (Recreational Vehicle Industry Association) trade
show in Louisville, KY, which opened to the public on November 29, 2011. Photos of the
Williamsburg product as demonstrated on that trailer at that trade show are as follows:
2
3
Also, on display at that trade show, was the following brochure of the Visionary Sleeper
product, placed on a counter-top in the travel trailer:
Immediately prior to that trade show, on November 28, 2011, Williamsburg mailed a patent
application for this product to the USPTO (United States Patent and Trademark Office). The
USPTO file history confirms delivery of this application by the Postal Receipt stamp on the upper
right corner of the transmittal letter. Since the application was sent by ordinary mail, rather than
Express Mail, the official “Filing Date” is the USPTO processing date of December 9, 2011.
Documentation of this is available for your inspection on-line at the USPTO Public PAIR web site.
Further, the patent application was granted by the USPTO, and U.S. Patent D707,055 was issued on
that invention, dated June 17, 2014. Please note that the principle patent drawings are identical to
the largest product photo shown in the brochure copied above.
Many of Lippert’s officers, managers, and other employees were present at this 2011 R.V.I.A.
trade show. It cannot be doubted that at least some of Lippert’s representatives inspected the
Coachmen products at that show. It cannot be doubted that Lippert was aware in 2011 that
Coachmen replaced the air bed it was previously buying from Lippert with the Visionary Sleeper
now being offered by Williamsburg. It seems most likely that Lippert became aware of the details
of the Visionary Sleeper product in 2011, months before Lippert filed the application for the ‘330
patent. It seems most likely that someone at Lippert saw the Visionary Sleeper at the 2011 R.V.I.A
show, and examined its workings and structure. What I have not yet been able to ascertain is
4
whether or not Ryan Smith himself (a named inventor of the ‘330 patent) saw the Visionary Sleeper
at the 2011 R.V.I.A. show, but I have been working on obtaining witness testimony in that regard.
Obviously, if litigation between our clients arises, Mr. Smith will be one of the first persons deposed,
under penalties of perjury.
The Visionary Sleeper is not identical in structure to the product disclosed in the specification
of the ‘330 patent. However, it operates in the same way, and it literally reads on at least Claim 1
of the ‘330 patent, assuming the words of that claim are to be interpreted in “plain English.”
As you can see, Williamsburg’s patent is a “design patent,” rather than a “utility patent.” The
reason that Williamsburg did not file a utility patent application for that product is because
Williamsburg copied the operable structure for that product from a prior tri-fold product, at least one
of which was obtained for inspection and analysis from a third party on or about August 24, 2010.
Williamsburg then created a novel sofa design using that prior art operable structure. Photos of the
prior product from that time are as follows:
5
6
This prior art product appears to have been made in Poland by MP Company, and then imported into
the United States for sales. Our investigation into the current location of MP is not complete.
Similar products were also made for many years by Istakbal Furniture Company, located in
“Melikgazi Kayseri, Turkiye,” and then imported for sale into the United States. We did contact the
U.S. attorneys for Istakbal to obtain additional details about the pedigree of this trifold chair/bed, but
we were referred to its counsel in Turkey in that regard. That investigation is continuing.
Again, the MP product is not absolutely identical in structure to the product disclosed in the
‘330 patent. However, it operates in the same way, and it literally reads on at least Claim 1 of the
‘330 patent, assuming the words of that claim are to be interpreted in “plain English,” but for the fact
that it is more of a chair than a sofa. We do not yet have evidence that Lippert was aware of the MP
or Isakbal products back in 2010. However, these products appear to have been in wide-spread use
for about twenty years, particularly in Europe. Thus, Lippert may have been aware of them prior to
filing the application for the ‘300 patent.
Accordingly, I have concluded that the ‘330 patent is clearly invalid at least under 35 U.S.C.
7
§102(b) (pre - AIA) since the subject matter of its claims was on sale and publicly disclosed more
than a year prior to the effective filing date of the patent application, January 30, 2012. Moreover,
to the extent that Lippert saw the Williamsburg product and based its “invention” on that product,
the ‘330 patent is likely invalid also under 35 U.S.C. 101, since Ryan Smith did not actually invent
the subject matter being claimed. My analysis with respect to Jeremy Seniff’s contribution to the
claimed invention is not yet complete, but it appears thus far he should not have been listed at all,
since he simply acted as a “draftsman” for Mr. Smith, if anything. Certainly, the Lippert commercial
product and the Williamsburg product have some structural differences, but those differences are not
claimed in the ‘330 patent and would clearly not be considered sufficiently “inventive” by the
USPTO to warrant issuance of a patent. Further analysis of invalidity under 35 U.S.C. §103 has been
suspended at this time.
More distressingly, however, is the apparent violation of 37 C.F.R. §1.56 by Mr. Smith
(and/or Lippert), who was required to swear under penalties of perjury to the USPTO that he knew
of his obligations to disclose relevant prior art. Given the strong similarity between the commercial
products and the timing of events, it is extremely unlikely that Lippert’s “invention” of the ‘330
patent was “coincidentally” conceived without any knowledge of the Williamsburg prior art product.
However, neither Mr. Smith nor anyone else at Lippert who was involved in the prosecution of the
application of the ‘330 patent made any disclosure at all to the USPTO about the Williamsburg
product. Moreover, seeking to enforce the ‘330 patent against Patrick Industries, despite having
knowledge of the Williamsburg prior art product, would probably amount to common law fraud,
entitling Patrick Industries to not just a return of the license fees, but possibly triple that amount
(plus attorneys fees), under Indiana law, as a crime victim. See, e.g., IC 34-24-3-1. For now,
however, my clients will leave that issue between Lippert and Patrick. I do, however, commend to
Lippert’s consideration the honorable practice of Mr. Pletcher in voluntarily refunding patent
royalties to RV licensees when his kitchen slide-out patent was shown to have been invalid under
similar circumstances some twenty years ago. As Lippert is aware, the RV industry is rather small
in some respects, and people tend to remember things.
Normally, I would conclude my response at this point with the expectation that Lippert would
just “go away” in light of this information, and no further response on your part would be expected.
However, Lippert has a litigation track record here which we cannot ignore. For example, Lippert
threatened MOR/ryde with patent infringement on September 11, 2008. To which, MOR/ryde
responded in detail on December 3, 2008 showing evidence of non-infringement, and then Lippert
remained totally silent until 2014, when it changed law firms and filed a lawsuit for alleging
infringement against MOR/ryde for the same patent and products, Civil Case No. 3:14-cv-1999 in
the U.S. District Court for the Northern District of Indiana. During the intervening period, a key
percipient witness had died, and the unavailability of that witness adversely affected MOR/ryde’s
ability to defend itself. We are not going to let that happen here.
Further, Lippert has a long history of filing patent infringement lawsuits against competitors.
To my knowledge, none of these lawsuits has ever gone to trial, but they linger on and on, bleeding
time and resources of the competitors. Further, Lippert has used the mere existence of these lawsuits
to harass and worry the customers of those competitors, with allegations that the products they
8
purchase are soon to be “no longer available.” We are not going to let that happen here either.
Therefore, we require from Lippert an express and unequivocal statement that it will not seek
to enforce the ‘330 patent against my clients (a “covenant not to sue”). In order to mitigate the
damage already caused by Lippert’s statements to Heartland about our products, we will NOT be
keeping that statement confidential. Absent this remedy, a clear and present threat of litigation by
Lippert remains (regardless of any future silence by Lippert) which my client must address to protect
themselves and their customers.
Sincerely,
s/Ryan M. Fountain
Ryan M. Fountain
9
EXHIBIT 7
EXHIBIT 8
EXHIBIT 9
EXHIBIT 10
RYAN M. FOUNTAIN
ATTORNEY AT LAW
420 LINCOLN W AY W EST
MISHAW AKA, INDIANA 46544-1902
TELEPHONE: (574) 258-9296
TELEFAX (574) 256-5137
December 3, 2008
Dean A. Monco
Wood Phillips
500 West Madison Street, Suite 3800
Chicago, Illinois, 60661
Re: Lippert Components - MOR/ryde International

U.S. Patent 7,296,821
Dear Mr. Monco:
Further to my letter of September 11, 2008, I have obtained and reviewed a copy
of the file history of the ‘821 patent from the United States Patent and Trademark Office
(“USPTO”) records, together with copies of the prior patents cited of record in that case.
In addition, I discovered and reviewed various prior art references not disclosed to the
USPTO, as well as examined the Equaflex product literature and the actual Trailair
products supposedly embodied by the claims of the ‘821 patent.
Summary of Conclusions:
Lippert has accused MOR/ryde of infringing upon the ‘821 patent. Lippert’s claims
are without merit for several reasons. As a matter of law, in order to infringe upon a patent,
the patent must first have been validly issued by the USPTO, and the patent must not have
been obtained from the USPTO by inequitable conduct, and then, the accused product
must have each and every element of a claim of the patent, either literally or under the
doctrine of equivalents. In this case, MOR/ryde uncovered significant evidence that the
‘821 patent was not validly issued by the USPTO because of material prior art and
information known to Lippert at the time the patent application was pending which it did not
disclose to the USPTO under circumstances which evidence inequitable conduct.
However, it is even more clear that the accused MOR/ryde product, the CRE/3000,
does not infringe the claims of the ‘821 patent even if that patent was valid and enforceable
because the CRE/3000 provides a superior suspension system without using certain key
elements and features required by the claims of the ‘821 patent and by having an
assembly that functions differently and with different results than the “invention” of the ‘821
patent. In particular, the CRE/3000 does not use a “pivotally mounted” equalizer arm and
its shock absorbing material is not “encapsulated” between a side plate and an equalizer
1
arm. Instead, the CRE/3000 uses a linearly translating beam and distributes the rubber
load over the full length of one side of the shock absorbing material. A detailed analysis
follows.
Background Legal Issues:
To put this dispute in proper perspective, as a matter of patent law the claims of a
patent can only be infringed if the patent was validly issued by the USPTO and if the
actions of the patentee or inventor in obtaining the patent from the USPTO do not render
the patent unenforceable, such as by inequitable conduct. Thus, there are three separate
legal requirements (validity, enforceability, and infringement) to be met before MOR/ryde
could be considered liable to Lippert for any damages. If Lippert fails any one of those
requirements, it has no valid basis for complaint. In this case, MOR/ryde believes that the
evidence of non-infringement alone is sufficient to resolve this matter. However, we did
uncover significant evidence that the ‘821 patent is invalid and unenforceable as well, and
that will be touched on briefly in passing.
First, according to the official file history of the ‘821 patent, there was no prosecution
of the patent application itself. The Examiner allowed the claims with no Office Action
commenting on the prior art. That is, of course, rather unusual. The Manual of Patent
Examining Procedure and the Code of Federal Regulations, Title 37, makes it clear that
a detailed comparison of the prior art to the claim language, resulting in at least one and
often two Office Actions, is the norm. However, here the Examiner issued the Notice of
Allowability “responsive to the application filed.” Thus, we must assume that the
statements of fact made in that application were relied upon by the Examiner and form the
basis for his decision to allow the claims. However, certain of the “facts” stated by Lippert,
particularly facts describing the state of the prior art, were false and knowingly so.
For example, Figure 1 of the patent, shown below,
2
was described in the patent as “currently used on trailers” and “has been in use without a
single design change for at least the past forty (40) years.” Both assertions are, of course,
not true and blatantly misleading. While there may be isolated instances of such
equalizers being used even at this late date, that design had been clearly superceded by
many prior design changes, as shown by Trailair’s own products and by the products of
MOR/ryde which Lippert has been competing with for many years. To suggest to the
Examiner, as Lippert did in the patent application, that it was novel to “dampen or absorb
the harsh shocks and vibrations coming off the rear end” of the equalizer is to pass off
many years of technology by others as Lippert’s own.
Certainly, Lippert did file Information Disclosure Statements with the USPTO which
included prior patents showing some of the prior art developments in shock absorbing
equalizers. Had the Examiner studied these prior patents in detail it could have been clear
to him that Lippert’s representations of fact in the patent application were false. However,
there is no evidence in the official file history that a detailed analysis was made and that
the Examiner did discover the falsity (note, for example, the conspicuous omission of the
Examiner’s signature of the PTO 1149 forms indicating the date he would have considered
those prior patents). In fact, when filing these Information Disclosure Statements, Lippert
expressly refused to admit “that a search has been made” for material prior art or that any
of those prior cited patents “is, or is considered to be, material to patentability” (see, for
example, the November 28, 2005 letter of Lippert’s attorney to the Examiner). Thus, there
was no reason given by Lippert to the USPTO for the Examiner to have studied the prior
patents closely.
However, the truth is that Lippert actually did make a patentability search for
material prior patents. From the information I found, it appears that this search was
conducted by or under the direction of the law firm of Trexler, Bushnell, et al., in Chicago,
IL. Moreover, there was substantial prior art which was material to the concept of
combining equalizers with shock absorbers and of which Lippert was very well aware but
about which Lippert failed to inform the Examiner. For example, Lippert did not bring to
the Examiner’s attention certain of the MOR/ryde prior art with which Lippert was then
competing in the market. Had this information been made clear to the Examiner and had
Lippert not made the false representations of fact in its patent application, it seems certain
that the Patent Examiner would have determined that the system suggested by Lippert for
the ‘821 patent was no more than the predictable use of prior art elements according to
their established functions. As a result, the claims of the patent application would have
been rejected under 35 U.S.C. §103, especially in light of the recent U.S. Supreme Court
decision of KSR Int’l. v. Teleflex, Inc., 550 U.S. 398, 127 S. Ct. 1727, 167 L. Ed 2d 705
(2007).
Lippert may argue that had that rejection been made, it could have amended the
claims somehow to still obtain a valid patent. We will never know. And we will never know
if those amended claims would define anything similar to the CRE/3000. Lippert failed its
express duty under 37 C.F.R. §1.56 to be candid with the USPTO and bring prior art to the
3
attention of the USPTO in good faith. Lippert did so even though its own inventor, Dale
Fenton, had expressly acknowledged that duty in the Declaration he signed on August 19,
2005, and filed with the USPTO three days later. Accordingly, the ‘821 patent was
obtained by inequitable conduct which may render it unenforceable as a matter of well
established and long standing law. See, e.g., Precision Instrument Mfg., Inc. v. Automotive
Maintenance Mach., Co., 324 U.S. 806, 65 S. Ct. 933, 89 L. Ed. 1381 (1945)(traditional
doctrine of “Unclean Hands” bars enforcement if patent obtained through fraud or
inequitable conduct). Moreover, even if the undisclosed prior art was relevant and material
only to a single claim of the original patent application, under the All Claims Rule the entire
patent falls. J.P. Stevens & Co., Inc., v. Lex Tex Ltd., Inc., 747 F. F2 1553, 1560-61 (Fed.
Cir. 1984).
However, in presenting this information to you, MOR/ryde is not suggesting it is the

only evidence we have of misconduct in the ‘821 patent prosecution. MOR/ryde is also not
suggesting to you that we have mentioned in this letter even the most material of the prior
art and information which we have found against patent validity. In light of the non-
infringement analysis below, there is no need to. Further, in light of the highly litigious
conduct of Lippert demonstrated in recent years against other parties and the frequent use
of “submarine” patents in legal proceedings, it would be foolish for MOR/ryde to give up its
legal rights under 28 U.SC. §2201 for efficient judicial resolution. We are, however, putting
you on notice that invalidity and unenforceability are a viable defenses and giving you
enough evidence to know that those defenses should be taken seriously.
The Non - Infringement Analysis:
I understand from your letter of September 17 that at this time Lippert is asserting
infringement by NORCO of “at least independent claims 1 and 14." However, Claims 1
and 14 are the only independent claims of the ‘821 patent. As a matter of law, if the
CRE/3000 products are not within the scope of those claims, they do not infringe any of
the other, dependent claims of the patent either.
Comparing the independent claims and referring to the elements defined in the
patent specification, Claim 1 requires a vehicle suspension system equalizer to have each
of the following elements:
a. A first plate (104a) pivotally mounted to the frame of the vehicle,
b. A second plate (104b) fixedly secured to the first plate,
c. An equalizer arm (108) pivotally mounted to the first plate, and
d. A shock absorber (116a) generally encapsulated between the second
plate and the equalizer arm.
Claim 14 requires each of these same elements, plus other features (such as an axle
spring) which MOR/ryde does not typically sell with the CRE/3000. Accordingly, the
broadest scope of the ‘821 patent claims (assuming they are valid and enforceable) is
defined by Claim 1. If the CRE/3000 is not within the scope of that claim, it does not
4
infringe the ‘821 patent.
The ‘821 patent shows an embodiment of Claim 1 in Figures 33 and 36:
In operation, the Lippert device shifts position as shown in Figure 37:
5
In contrast, the CRE/3000 which was shown in your Attachment 2 has this construction:
You sent me a picture of the CRE/3000 with your accusation of patent infringement,
so I assume you can readily verify the accuracy of this drawing by looking at the actual
product in your hands. Since your letter of September 17, 2008, all of the CRE/3000
products have been modified to use a flat sided bolt (4), such as a conventional hex sided
bolt, for the reasons discussed below.
6
As can be seen by comparing these two sets of drawings, the CRE/3000 is pivotally
mountable to the frame of the vehicle, and the spring carrier (3) does have a front and back
flat surface which could serve some of the functions of the first and second plate of the
device of Claim 1. However, the similarities end there. The beam arm (1) of the CRE/3000
does not pivot with respect to the spring carrier. Instead, the beam arm slides linearly along
the path defined by the slot in the beam arm and as confined by bolt (4) which passes
through that slot. Rubber spring (2) rests flush against the top flange of the beam arm and
fills the space of the spring carrier to as to preclude pivoting of the beam arm about the bolt
(4). When the vehicle springs cant up or down, the connection of those springs to the beam
arm results in pivoting of the spring carrier about the vehicle frame in the same manner as
many of the conventional equalizers shown in the patents Lippert sent to the USPTO. The
relative position of the beam arm to the spring carrier, does not rotate in response to that
spring motion, it translates linearly along the slot path.
As proof of this, MOR/ryde has now removed the smooth shafted bolt(4) shown in
the drawing above and replaced it with a flat sided bolt or hex sided bolt. Those new bolts
physically preclude pivoting of the beam arm about the spring carrier. If there was any such
pivoting inherent in the CRE/3000 design, use of the new bolts would render the CRE/3000
product inoperative. However, at this point in time, each and every one of the CRE/3000
products in the field, with customers, and in inventory has been so modified, and each and
every one of those products continues to fully function as it did previously. We assume that
you can get your hands on one of these modified products as easily as you did the first
version and see for yourself that the product works as we have described it if you cannot
sufficiently envision the simple geometric effect of a flat sided bolt in the flat sided slot (the
elements can slide relative to each other, but not pivot).1
Now, let’s see the CRE/3000 in use and under a load:
1
Obviously, this rapid response to disprove Lippert’s assertions was possible
because there have been very few of the CRE/3000 products actually made, used, or
sold. Still, Lippert has full access to them from the customers in common.
7
It is also clear both from these CRE/3000 drawings and from the product sample you
have that the rubber spring of the MOR/ryde product is not encapsulated. Indeed, it could
not function if it was encapsulated because compression of the rubber spring and its
resulting extrusion out of the open spring carrier sides, into plain view, and along the length
of the beam arm is essential to its use and intentional by its design. In contrast, Figure 37
of the ‘821 patent shows that the shock absorber (116a) of that device does not extrude out
of the shock plates 110, 112 when it is compressed.
As a supplemental matter, it appears that the ‘821 device can only accomplish its
function using an encapsulated shock absorber if it incorporates a plurality of such shock
absorbers. However, that aspect of the invention is missing from the requirements of the
claims. Naturally, this brings to mind another reason why the ‘821 patent is invalid, namely
defective claiming under 35 U.S.C. §112. Further, along the lines of §112 deficiencies, the
“second plate” and the “equalizing arm” do not actually create the encapsulating of the
Lippert device; it is instead the shock plates 110 and 112 which accomplish that function.
From the standpoint of the non-infringement analysis, however, if we interpret the claims
in light of the specification so as to preserve patent validity and incorporate those features
by reference into the claims, then it is clear that the CRE/3000 products also do not infringe
because they have no such encapsulating shock plates. Instead, the rubber spring is free
to move by extrusion out of confinement in response to equalizer loading.
Clearly then, there is no literal infringement here, since the accused products are
missing at least two of the required features of the ‘821 patent. As a matter of law, the only
other way the CRE/3000 products could be considered to infringe upon the ‘821 patent is
under the Doctrine of Equivalents, meaning that the accused product does substantially the
same thing, and in substantially the same way, and to accomplish substantially the same
results as the claimed invention. However, as explained next, that does not happen here
either.
Both products are intended to equalize vehicle loading and absorb shocks. If we
assume that the device of the ‘821 patent actually works, then both products do
substantially the same thing. However, the ‘821 device uses at least two pivotal motions
(the plate to the frame and the equalizer arm to the plate) to create a compound pivot in
response to uneven loading. Further, the ‘821 device uses a plurality of separate shock
absorbers, one for each of two equalizer arms. In contrast, the CRE/3000 products allow
conventional pivoting about the frame and use linear translation of a single beam equalizer
arm against a single rubber shock absorber. Thus, the two products work in a different way.
This difference in operation is substantial because it provides significantly different

results in terms of cost and product reliability over time. For example, as shown in Figure
37 of the ‘821 patent, the rubber shock absorber is subject to uneven compression,
resulting in localized deformation stresses which deteriorates its useful life. In contrast, the
CRE/3000 products distribute the compressive force more evenly over a single, wider shock
absorber, permitting that shock absorber to have a longer and more consistent useful life
and/or permitting more cost effective materials to be used for the shock absorber. Similarly,
8
the use of a single, linearly translating beam as an equalizer arm can provide substantial
cost savings in initial production and in maintenance or repair of the assembly over time,
as compared to a more complex assembly of multiple, pivoting equalizer arms with
attendant shock plates for encapsulation.
Clearly then, there is no infringement here under the Doctrine of Equivalents either.
I trust this puts the matter to rest and allows the two companies to continue on with normal
competition in the market, leaving the courthouse out of that environment.
Sincerely,
Ryan M. Fountain
9
EXHIBIT 11
EXHIBIT 13
AFFIDAVIT OF TIMOTHY MARK HOOLEY
I, Timothy Mark Hooley, hereby testify and affirm under penalties of perjury that the
following is true and correct based upon my personal knowledge, information, recollection, and/or
belief, and if called upon to testify I would confirm under oath that:
1. I am an adult, 64 years of age, and a citizen of then United States of America, residing at
3703 St. Andrews Place, Elkhart, Indiana 46517.
2. I have been informed that there is a patent dispute between Lippert Components, Inc., and
Williamsburg Furniture, Inc., involving a tri-fold sofa/bed.
3. During 2010, I was employed by Flair Interiors Inc., of 1010 Eisenhower Drive South,
Goshen, Indiana 46526 (“Flair”). My position within Flair was Director of Engineering/Product
Development.
4. I recall that in the Fall of 2010, probably September, Patrick Hutmacher arranged for Flair
to receive the tri-fold chair/bed shown in the following photographs:
A.
1
B.
C.
2
D.
E.
3
F.
4. These photographs show the tri-fold chair/bed in the Flair showroom in Goshen, Indiana,
which I recognize from having passed through that showroom many times at work.
5. The tri-fold chair/bed shown in these photographs was placed in the Flair showroom in
the Fall of 2010, and was offered for examination by and sale to any of the potential customers
passing through that showroom. I recall the tri-fold chair/bed being in that showroom for
approximately six months, because I noticed it there frequently, as I passed through that showroom.
6. Shortly after receiving that tri-fold chair bed, Flair began to experiment with modifications
to that product to make it more acceptable to the recreational vehicle market. I supervised those
modifications. Later in the Fall of 2010, Flair created a tri-fold sofa/bed prototype based upon the
tri-fold chair/bed, but being wider so as to fit more than one person. In late 2010, Flair also placed
that tri-fold sofa/bed in its showroom in Goshen, Indiana, to offer it for examination by and sale to
any of the potential customers passing through that showroom.
4
EXHIBIT 14
AFFIDAVIT OF LAWRENCE GEORGE FEILER, III
I, Laurence George Feiler, III (“Gus Feiler”), hereby testify and affirm under penalties of
perjury that the following is true and correct based upon my personal knowledge, information,
recollection, and/or belief, and if called upon to testify I would confirm under oath that:
1. I am an adult, 73 years of age, and a citizen of then United States of America, residing at
5204 Old Gallows Way, Naples, Florida 34105.
2. I have been informed that Lippert Components, Inc., has threatened enforcement of U.S.
Patent No. 8,739,330 against Allure Furniture, LLC, and Williamsburg Furniture, Inc.
3. During 2011, I was President of Williamsburg Furniture, Inc., of 2096 Cheyenne Street,
Nappanee, Indiana 46550. In that capacity, in approximately February or March of 2011, Patrick
Hutmacher met with myself and Lance Feiler at the Williamsburg place of business and showed us
the actual two tri-fold chair/bed products which are depicted in the photographs below:
A.
1
B.
C.
2
D.
E.
3
F.
G.
4
H.
I.
5
J.
4. At that time, Mr. Hutmacher presented these two products to Williamsburg, and attempted
to interest us in manufacturing and selling such products both for Shoehorn Furnishings to resell, and
for Williamsburg to sell directly to the recreational vehicle (“RV”) industry. Initially, I, myself, was
not very interested in doing so because I was involved in developing and marketing an air bed
product to the RV industry. However, Lance expressed to me his interest in these tri-fold chair/bed
products at the outset, and he promptly began to develop a related, wider product, a tri-fold sofa/bed
product for RV use.
5. Lance developed a prototype tri-fold sofa/bed product using essentially the same structural
mechanism as was used in the tri-fold chair/beds (allowing for the wider size), and we showed that
prototype to various persons of Forest River, Inc., and of Coachmen Industries later in 2011 in an
effort to interest them in purchasing such products from Williamsburg. I had previously been
6
contacted by Coachmen, and informed that they were not completely satisfied with the air mattress
sleeper products they had been purchasing from Lippert Components, Inc., and I was seeking to offer
Williamsburg products as a replacement for those Lippert products. As a result, Coachmen agreed
to purchase the new tri-fold sofa/bed product from us, and we applied the “Visionary” model name
to that product.
6. In the Fall of 2011, Williamsburg provided a Visionary tri-fold sofa/bed to Coachmen for
use in a travel trailer to be displayed and offered for sale at the 2011 R.V.I.A trade show in
Louisville, Kentucky. That trade show took place from November 29, 2011 until December 1, 2011.
The Visionary products was a replacement for the prior Lippert sleeper products in the Coachmen
travel trailers. The Visionary product was on display in a Coachmen travel trailer during that 2011
trade show, and is shown in the following photographs taken at that trade show:
K.
7
L.
M.
8
N.
7. The advertisement shown in Photograph “N” and the attached “hang tag” were created
to promote the Visionary products at that 2011 R.V.I.A. trade show.
8. On November 28, 2011, Williamsburg had its attorney mail a patent application to the
United States Patent and Trademark Office (“USPTO”), seeking patent protection for design aspects
of the Visionary product, but not seeking patent protection for the structural mechanism found in the
tri-fold chair/beds brought to us by Patrick Hutmacher. The USPTO received that application and
granted a formal filing date of December 9, 2011. Later, on June 17, 2014, the USPTO granted a
patent, D707,055, on one of the Visionary designs disclosed in the patent application. This
information is confirmed in the internet Public Pair records of the USPTO for patent application
serial number 29/395,171.
9
EXHIBIT 15
EXHIBIT 16
urniture illiamsburg
by Design
Innovationthrough
isionarySleeper
Williamsburg’s Visionary Sleeper design enhances
function, maximizes integrated storage and sleep area
while providing seating and sleeping comfort.
Quality Features to Consider:
• the Visionary Sleeper is available in various sizes and designs.
• Our Visionary Sleeper is built from quality selected hardwood and sheet goods
which are precision cut on computerized routers and assembled with
inter-locking technology for a solid heavy duty foundation.
• Seating area utilizes heavy duty steel springs engineered to be durable, while
enhancing comfort.
• Our Visionary Sleeper mechanism is made of
powder coated heavy gauge steel for ease of
function and longevity.
• Proudly crafted in the heartland of the USA.
• Patent Pending. You’ll appreciate the integrated
storage space.
A Williamsburg Limited Two-Year Warranty applies to the frame, springs, cushion materials
and any mechanical parts. Fabrics are warranted by the fabric mill. For full warranty details,
ask your Williamsburg sales representative or visit www.williamsburgfurnitureinc.com
Williamsburg Furniture Inc. 2096 Cheyenne St. • Nappannee, IN 46550
case 3:20-cv-00110-RLM-MGG document 1-16 filed 10/21/19
Phone 574-773-7711 • Fax 574-773-5244
isionarySleeper
case 3:20-cv-00110-RLM-MGG document 1-16 filed 10/21/19
by Williamsburg Furniture
At Williamsburg
Furniture we take pride in our
heritage of engineering highly
innovative ideas with functional
1
designs to provide our customers
with the comfort, features and
value they expect. Established in
1992, we have grown to expand
our product line into many facets
of today’s residential, commercial,
hospitality and recreational seating
markets. Manufacturing products Lift and
Pull Forward
that meet and exceed your specific
2
requirements, is always our goal...
and our privilege.
Quick & Easy Conversion...

the Visionary way
Step 1: Remove the sofa
back cushions.
Step 2: Locate the two hidden
hand-holds centered on each
3
half of the sofa front, along
the mid-seam.
Step 3: Lift and pull forward to
fully expand the base. Once
opened, a large convenient Back
storage bay is revealed in the Folds Down
base – great for storage of

bedding items.
Step 4: Next fold the hinged
sofa back forward over the
storage bay.
Step 5: Insert the back
cushions (backside up) into
4
the resulting space. Insert
Back Cushions
That’s it...
so quick, so easy!
5
illiamsburg urniture
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Williamsburg Furniture v. Lippert Components - Complaint

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USDC IN/ND case 3:20-cv-00110-RLM-MGG document 1 filed 10/21/19 page 1 of 36

UNITED STATES DISTRICT COURT

WILLIAMSBURG FURNITURE, INC., )

Defendant, Lippert Components, Inc. (“Lippert”), alleges as follows:

THE NATURE OF THE ACTION

competition, through Lippert’s allegations of patent infringement by Williamsburg to customers of

THE PARTIES TO THE ACTION

place of business at 2096 Cheyenne Street, Nappanee, Indiana 46550.

address of 251 Little Falls Drive, Wilmington, Delaware 19808.

JURISDICTION AND VENUE

2201, and 2202.

BACKGROUND FACTS AS TO CONDUCT BETWEEN THE PARTIES

on the tri-fold sofa/beds it transferred to Allure.

that demand letter is attached hereto as Exhibit 3.

of that response is attached hereto as Exhibit 4.

asserting it against Patrick Industries.”

concluded the response by stating

we will NOT be keeping that statement confidential.”

“Heartland” in that context referred to Heartland Recreational Vehicles, a RV manufacturer to whom

copy of the email thread in that regard is attached hereto as Exhibit 7.

negotiations between Williamsburg and Lippert concerning the ‘330 patent.

Lippert’s competing sofa/bed because:

a. The tri-fold sofa/bed infringed the ‘330 patent,

of those products, and/or

infringement is a credible threat that such a lawsuit may be filed.

comment regarding MOR/ryde’s previous explanation, as shown in Exhibit 11 attached hereto. In

potential infringement damages can be much higher.

BACKGROUND FACTS AS TO THE ‘330 PATENT AND RELEVANT PRIOR ART

application filed on January 30, 2012.

from any of the named inventors.

shown in the four photographs A-D below:

taken, in the manner shown below:

as displayed in Flair’s showroom on September 9, 2010:

The time, date, location record for these photographs is as shown:

also be marketing that product to the RV industry.

Langfandg, China. The following photographs show that product:

The time, date, location record for these photographs is as shown:

2011. Attached is a photograph of that product for sale at the show:

The time, date, location record for that photograph is as shown:

and imported into the United States.

hereto as Exhibit 12.

view the products that Flair was offering for sale.

hereto as Exhibit 13.

product, a tri-fold sofa/bed product for RV use.

the Visionary products at that 2011 R.V.I.A. trade show.

patent application serial number 29/395,171.

hereto as Exhibit 14.

attached hereto as Exhibit 15.

of the ‘330 patent.

same structure recited in Claim 1 of the ‘330 patent.

BACKGROUND FACTS AS TO LIPPERT’S ALLEGED INVENTION

OF THE ‘330 PATENT

51. Upon information and belief:

product to Coachmen, prior to November 29, 2011,

Williamsburg tri-fold sofa/bed at that trade show,

aware of the Williamsburg tri-fold sofa/bed,

becoming aware of the Williamsburg tri-fold sofa/bed,

respect to patentability of the claimed subject matter of the ‘330 patent.

likelihood of career advancement.

PATENT INVALIDITY AND UNENFORCEABILITY

not himself invent the subject matter sought to be patented.

prosecution of the application for the ‘330 patent.

RELIEF SOUGHT FROM THIS COURT

Lippert, granting the following relief: